Solar-Mesh Pty Ltd v Glen Raven Mills Inc

[1997] ATMO 78

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:       Trade mark applications numbers 635016(37) and 635017(17) -  Sunbrella -  lodged in the name of Solar-Mesh Pty Ltd and opposition by Glen Raven Mills, Inc.

ON 14 July 1994, Solar-Mesh Pty Ltd (Solar-Mesh), now of Archerfield in Queensland, applied to register the trade mark Sunbrella for services in class 37  and goods in class 17. The applications were numbered 635016 and 635017 respectively and, on 5 October 1995, the Registrar advertised both marks as accepted. The accepted statement of services on 635016(37) reads:

construction of insulated enclosures; insulation of buildings and outdoor areas

and the statement of goods on 635017(17) reads:

screen mesh for protection from solar radiation and for thermal insulation.

635016(37) and 635017(17) were accepted under the provisions of section 44 of the now repealed Trade Marks Act 1955. Section 241 of the Trade Marks Act 1995 states that the provisions of the Trade Marks Act 1955 continue to govern these opposition proceedings.  All references from here on will be to the 1955 Act.
Glen Raven Mills, Inc., (Glen Raven)  a North Carolina corporation of 1831 North Park Avenue, Glen Raven, North Carolina in the USA, opposes both applications. The opposition includes grounds of  distinctiveness, and capacity to distinguish, but Glen Raven produced neither evidence nor submissions to support them. It confined its opposition to the ground that 635016(37) and 635017(17) are barred from registration by a number of its registered and pending trade marks, and that registration of 635016(37) and 635017(17) would cause deception and confusion.  To support these grounds, it lodged two declarations, one from David A. Edgerton of Greensboro, North Carolina, USA; and one from Phil Reeves of Brookvale, New South Wales.
Solar-Mesh lodged answering evidence.  This is a declaration from its Managing Director and General Manager, Kenneth Clyde Ivory of Archerfield, Queensland.
Glen Raven did not serve evidence in reply, but on 12 August 1996, through its attorney, Watermark of Melbourne, it applied for the opposition to be heard.  This request, and the Registrar’s response, generated a good deal of correspondence, which I shall come to below. The outcome of this exchange was that I scheduled and conducted the hearing of the opposition in Canberra on 2 September 1997.  Mr Peter Armatage of the Melbourne office of Blake Dawson Waldron, lawyers, attended on behalf of the opponent. Mr Ivory tendered only written submissions on behalf of Solar-Mesh,

The section 33 ground

Glen Raven’s notice of opposition cites six marks which, it claims, give rise to objections under the provisions of sections 33 and 28 of the Trade Marks Act 1955.  These are as follows:

number	trade mark	class	goods or services covered by the trade mark
410554	sunbrella	23	yarns and threads
463214	sunbrella	25	sun visors, sun hats and all other goods in this class
464621	sunbrella firesist	24	fabrics in the piece included in class 24
472520	sunbrella	18	bags, purses, wallets, cases, being goods in class 18
628915	23	yarns and threads and all other goods in class 23
700140	sunbrella	24	textiles and textile goods, not included in other classes;  bed and table covers

All of these marks are current registrations with the exception of 700140 which is an application. 

Section 33 of the Trade Marks Act 1955, so far as it is relevant,  reads as follows:

33(1)   Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first mentioned trade mark is, or will be, earlier than the  date of the registration of the second-mentioned trade mark

(2)    Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

In considering each trade mark which Glen Raven has cited in its grounds, there is  essentially a three-fold enquiry.

·   Is (or will) the registration date of the citation be earlier than the registration date for 635016(37) and 635017(17)?

·   Is the cited mark substantially identical with or deceptively similar to 635016(37) or 635017(17)?

·   Are the goods or services of the cited mark the same, of the same description or closely related to the goods or services claimed under 635016(37) or 635017(17)?

Registration date

The last of the cited marks, 700140, is an application and, if registered, its registration date will be January 1996. If 635016(37) and 635017(17) proceed they will be entitled to a registration date in July 1994. 700140 therefore does not constitute an objection in terms of section 33.
All of the other marks cited by Glen Raven are registered trade marks with dates of registration prior to July 1994.   The five registered citations therefore all satisfy the first criterion.

Substantial identity and deceptive similarity

Substantial identity depends on a side by side comparison of the marks in question. The cited trade marks 410554(23) 463214(25) and 472520(18) each comprise the word sunbrella. The subject application are for the word Sunbrella.  The only difference is that the Glen Raven versions are rendered in upper case, and the Solar-Mesh marks are in lower case with an initial upper case ‘S’.   The rendering of case does little (if anything) to differentiate otherwise identical words, and I find that Sunbrella is substantially identical with each of these Glen Raven marks.  
The two remaining Glen Raven registrations are 464621(24), the word mark sunbrella firesist,  and 628915(23) the device mark .   While the essential element in both of these marks is the word sunbrella, they each incorporate a significant additional element.  When the Solar-Mesh trade mark,  Sunbrella,  is compared side by side with these marks, visual and aural differences are clearly apparent.  In 464621(24) it is the word firesist.  In 628915(23), it is an umbrella device the handle of which serves as a ‘LL’.  These differences differentiate Sunbrella in the side by side comparison and  I do not find Sunbrella substantially identical to either sunbrella firesist or .  The test for deceptive similarity, however, does not depend on a side by side comparison, but on an assessment of the impression that the respective marks will make upon and remain with members of the purchasing public[1].  The essence of this question is whether purchasers seeing Sunbrella and knowing the sunbrella firesist and marks, would assume that goods and services under these trade marks all come from a single trade origin.  I think there is no doubt that they would.  In all three marks the distinctive and identifying word  sunbrella predominates . The coined word firesist, I believe, indicates fire resistance and the trade mark sunbrella firesist will be seen to identify sunbrella products which feature fire resistant properties. While the trade mark Sunbrella makes no reference to fire resistance properties, it is the strongest trade mark element in the SUNBRELLA FIRESIST mark, and manifestly will be seen to indicate goods from the same trade origin. The only difference between Sunbrella and the trade mark  , is that the Glen Raven mark incorporates a pictorial illustration. A customer familiar with the  mark, who encountered the mark Sunbrella on the same goods or services, would surely take it to be a plain text version of the graphic mark. The similarity between the subject marks Sunbrella and the two Glen Raven marks sunbrella firesist and  would, I think, cause purchasers to assume a common origin and I find Sunbrella is deceptively similar to these two marks.
In sum I find the Solar-Mesh Sunbrella marks are either substantially identical with or deceptively similar to Glen Raven’s registered trade marks 410554, 463214, 464621, 472520,  628915.

[1] Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd, 58 CLR 641 at 658

Similarity of goods and services

This brings me to the last criterion - the question of the similarity of goods and services.
The tests for same goods, and goods of the same description have been  long and well established.   The test for comparison between goods and services has been less worked through.  Nevertheless, the principles are settled.  As explained in Australian Law of Trade Marks and Passing Off , Shanahan D.R.[2],

[2] Australian Law of Trade Marks and Passing Off , Shanahan D.R, The Law Book Company Limited, Sydney, 1990, 2nd edition., p191

The expression ‘goods of the same description’ is … a term of art, implying a relationship between goods such that they would be seen by purchasers as having the same trade origin if sold under deceptively similar marks [or for that matter, substantially identical marks].  The classification in the Fourth Schedule to the Trade Marks Regulations has no bearing on this question;  a single class may contain goods which are not of the same description while goods in one class may well be of the same description as goods in another class.  The question is one of fact to be looked at from a business and commercial point of view in the light of principles laid down by the courts.

The principles laid down by the courts in the main hark back to criteria established by Romer J. in Jellinek’s Application - the panda Case[3].  His Honour identified three tests - first, the nature of the goods, second, the purpose for which those goods are to be used, and third, the trade channels through which the goods are bought and sold.   Not one of these factors in itself is likely to be determinative - the questions must be looked at in toto and, as Mr Shanahan points out, from a realistic business and commercial point of view.   In considering whether services and goods are closely related, the same general principles apply - they too must be considered in realistic business terms on their nature, their purpose, and the trade channels through which they are supplied.
Turning then to the issues at hand.  Having found that the two pending trade marks, Sunbrella (in classes 37 and 17) are either substantially identical with or deceptively similar to five of the Glen Raven trade marks, I must now consider whether the Solar-Mesh class 37 services - construction of insulated enclosures; insulation of buildings and outdoor areas - and the class 17 goods - screen mesh for protection from solar radiation and for thermal insulation­ - are closely related to, or of the same description as, the goods or services of the five Glen Raven registrations.  It is convenient to consider the Solar-Mesh class 17 goods first and to follow this with a consideration of the Solar-Mesh class 37 services, and I will deal with them in that order.  
The Solar-Mesh class 17 goods are screen mesh for protection from solar radiation and for thermal insulation.   These I must compare with yarns and threads (410554 and 628915);  sun visors, sun hats and all other goods in class 25 (463214);  fabrics in the piece included in class 24 (464621);  and bags, purses, wallets and cases (472520).

[3] Jellinek’s Application (1946) 63 RPC 59.

Nature                   By its nature, screen mesh for protection from solar radiation and for thermal insulation, is an insulating product constructed from screen mesh which protects from the sun, and which insulates against heat loss and heat accumulation.  Yarns and threads may be used in the manufacture of these items, but even if they are, they are of a very different nature. Screen mesh protections are woven or moulded materials - yarns and threads are strands or filaments. 

A similar difference exists for class 25 goods - clothing and footwear. These too, by nature, are quite different from insulating and protection mesh screens. 

So too are bags, purses, wallets and cases.  

Fabrics in class 24, however, stand in a rather different position. The screen mesh protections nominated in the Solar-Mesh applications, cover screen mesh in the form of both woven or extruded fabric piece goods. Goods of this kind in class 17 include asbestos cloth, fibreglass fabric for insulation, and other solar protection fabrics such as shade cloths, so long as they are manufactured as screens or mesh. The goods nominated in the Glen Raven class 24 registration also encompass screen or mesh fabrics. They include, for example, net and mesh fabrics used for upholstery and soft furnishings. Some furnishing fabrics, particularly curtain fabrics, are, moreover, manufactured with insulating, solar protection and with fire retardant properties. Among these goods are fabrics (woven and non-woven) manufactured from hemp, polymers and fibreglass.   These class 24 fabrics of the Glen Raven trade mark 464621, I find, do share a common nature with the insulating and solar protection fabrics encompassed under the Solar-Mesh claim of screen mesh for protection from solar radiation and for thermal insulation. 

Purpose  Next is the question of use or purpose of the goods.  The Solar-Mesh screen mesh for protection will clearly be used for protection from solar radiation and for thermal insulation.  Yarns and threads may be specifically manufactured with insulating and temperature tolerating properties and come within the scope of insulating materials in class 17.  Yarns and threads in class 23, however, are not insulating yarns and threads.  Insulated cloth is not, on the whole, manufactured from them and there is no evidence that they are otherwise used for the same purpose as the subject goods, screen mesh for protection from solar radiation and for thermal insulation. 

Clothing and footwear may have insulating and protecting functions, but are not used for the same purpose as the solar protection and heat insulating mesh in class 17.

Bags, purses, wallets and cases are not purchased for their solar protection or heat insulating properties, and clearly are not used for the same purposes as the Solar-Mesh class 17 goods. 

Again, however, the class 24 goods stand apart.  Piece goods in class 24 may well be bought for the purpose of protecting against solar radiation, and heat accumulation or heat loss.  Many soft furnishing textiles feature these qualities, and significantly are purchased principally for the purpose of protection against solar radiation or to control heat loss or gain. I find that, in common with the goods of the Solar-Mesh class 17 application, goods within the scope of the Glen Raven registration 464621, fabrics in the piece, may indeed be used for protection from solar radiation and for thermal insulation.

Trade Channels   Because of the various differences in nature and use described above, I do not consider that the trade channels through which screen mesh for protection from solar radiation and for thermal insulation are likely to pass will be the same as those for yarns and threads, clothing and footwear, or bags, purses, wallets and cases. 

There remains, however, the question of the class 24 textiles.  It is, I think, common knowledge that textile piece goods generally come to the end user from the textile manufacturers though upholstery services, curtain manufacturers, fabric specialist retailers and drapery departments of department stores. Many of the goods comprehended by class 17 and described as screen mesh protection from solar radiation and for thermal insulation do not, to my knowledge, come through these channels. This description covers material ranging from textile piece goods such as shade cloth and other insulating textile goods, through to insulating mesh in rigid sheet form. For the purposes of a comparison with class 24 textiles, it is the cloth screen/mesh that most concern me.  In the main, these goods will not pass through the same trade channels as furnishing fabrics. They are not generally available through upholstery or curtain manufacturing services.  They are not sold in general fabric shops, or through drapery departments of department stores. However, some of the goods mentioned above, such as insulated fibreglass fabric in class 17, and non- insulated fibreglass fabric in class 24; insulated woven textiles in class 17 and insulated furnishing fabrics in class 24; and insulated extruded fabrics in class 17 and extruded fabrics in class 24, would appear to share a good deal in manufacturing and marketing channels. Clearly these class 17 goods may be products which are only intended to be sold to industry, and in that guise they will not sit side by side in retail outlets with class 24 textile lines.  However, insulated goods are also sold direct to the public, and in outlets specialising in garden and landscaping supplies, and indoor and outdoor furnishings, it seems to me probable that woven and non-woven fabrics in a range of insulated and non insulated styles are likely to derive from common manufacturing sources, and be available side by side in retail outlets. In retail outlets specialising in garden supplies and indoor and outdoor furniture I would expect that varieties of shade cloths comprehended by the Solar-Mesh statement would be sold alongside furnishing fabrics and in particular the kind of fabrics used for outdoor furnishings.  My conclusion on the question of the textiles in the Glen Raven class 24 registration, 464621, is that they will share trade channels with the goods nominated in the Solar-Mesh class 17 claim.

Turning now to the Solar-Mesh class 37 services construction of insulated enclosures; insulation  of buildings and outdoor areas - these too I must compare with yarns and threads (410554 and 628915);  all goods in class 25 (463214);  fabrics in the piece included in class 24  (464621);  bags, purses, wallets and cases (472520).

Nature                    Construction of insulated enclosures, and the insulation of buildings and outdoor areas are, I think, essentially building and insulating services.  In the normal course of delivery, these services would not rely on yarns or threads, and would not be expected to produce them. The same applies in respect of clothing. Some construction services would incorporate clothing manufacture but I am not prepared to put that interpretation on the term construction of insulated enclosures - I am only prepared to treat that service as a building service. 

Class 24 fabric, on the other hand, might at first glance appear to comprehend goods that are associated with the construction of insulated enclosures and buildings, but class 24 fabrics are not for building purposes. Class 24 fabrics are general textiles. Some of them, particularly those designed for use as soft furnishings, may be treated with insulating properties. However, insulating fabrics per se are not in class 24, they are in class 17.  Insulating fabrics in Class 17 may well have a nexus with building services, but class 24 fabrics, I think, do not. I therefore find that the fabrics nominated in Glen Raven’s sunbrella firesist trade mark are not closely associated with construction of insulated enclosures or insulation of buildings and outdoor areas.  
Likewise, I do not see that the nature of bags, purses, wallets and cases  renders them in any way associated with construction of insulated enclosures, or insulation of buildings and outdoor areas. Construction of insulated enclosures, the insulation of buildings and outdoor areas I find, are not, by their nature, services which are closely associated with any of the goods which fall within the scope of the five Glen Raven trade mark registrations.

Purpose  Without again considering these goods statement by statement, I think it is clear that none of them - yarns, clothing, textile fabrics or bags and purses - will generally be used for a purpose that brings them into close association with construction of insulated enclosures, or insulation of buildings and outdoor areas.

Trade Channels    Finally, I think it is likely that none of these goods would be expected to be available through the same trade channels as the services for construction of insulated enclosures, or insulation  of buildings and outdoor areas. I do not find that there is anything in the Glen Raven evidence to show a business connection between any of its goods and the Solar-Mesh services claimed in class 37. 

The end point of the section 33 ground of opposition is then, that I have found that only one of the Glen Raven registrations stands up as an objection. That is the trade mark sunbrella firesist which is registered in class 24 for fabrics in the piece.  This mark has an earlier registration date than the subject applications could achieve.   The subject trade marks, Sunbrella, I find are deceptively similar to sunbrella firesist.  And the goods claimed in the second of the subject applications, screen mesh for protection from solar radiation and for thermal insulation, I have found, are goods of the same description as some of the goods comprehended in the statement fabrics in the piece. The section 33 ground of opposition therefore succeeds in respect of trade mark application 635017(17). I have not found, however, that there is a sufficient link between construction of insulated enclosures, or insulation of buildings and outdoor areas - the services comprehended in the application to register Sunbrella in class 37 - to hold that these services are closely related to class 24 fabrics in the piece. I find therefore that the section 33 ground of opposition does not succeed in respect of 635016(37).

The section 28 ground

The claim in the notice of opposition is that use by the applicant of its trade mark on goods for which registration is sought would be likely to deceive or cause confusion in the trade having regard to the opponent’s trade marks and the use and reputation of those trade marks.
This ground relies on section 28 of the Act which reads:

A mark -

(a)          the use of which would be likely to deceive or cause confusion;
(b)          the use of which would be contrary to law;
(c)          which comprises or contains scandalous matter; or
(d)          which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

I have found that the application trade marks are either substantially identical or deceptively similar with five of the opponent’s registered trade marks.  Through evidence put in support of the opposition, Glen Raven means to establish that by the time Solar-Mesh applied for the registration of 635016(37) and 635017(17) it had an established reputation in trade marks comprising or containing sunbrella, and the application of the Sunbrella marks to goods and services claimed in the Solar-Mesh applications would lead to deception and confusion. 
Evidence of the Glen Raven reputation is provided by the Edgerton and Reeves declarations. Mr. Edgerton has worked for Glen Raven for some 30 years and attests to the fact that Glen Raven  has manufactured and exported an extensive array of synthetic and natural yarns, and fabrics in the piece, for many years and, on these goods, it has used its sunbrella trade marks. From 1967 Glen Raven has sold goods into the Australian market. Through the 1970s and 1980s these sales comprised shipments of yarns which, as opposed to fabrics,  constituted a worthwhile trade. Australian tariffs precluded profitable trade in piece goods.  The yarns were therefore shipped to local companies, processed into cloth, and sold under various of Glen Raven’s sunbrella trade marks.
The local use of the Glen Raven trade marks established through Mr. Edgerton and Mr. Reeves’ evidence,  however, is not extensive. Mr Edgerton says that two Australian companies, Bradmill Textiles Ltd and Brella Pty Ltd, converted Glen Raven yarns and fibres into cloth and by this means, from 1970, local sales of SUNBRELLA fabrics took place. Apart, however, from a collection of somewhat inconclusive invoices which make reference to trade marks such as glenspun, monsanto firesist and dolan, but not to SUNBRELLA FIRESIST or SUNBRELLA, there is no supporting evidence of this use. Mr Edgerton gives no indication of turnover. He exhibits a collection of Glen Raven advertisements in journals and magazines from 1992 to 1994. A number of these magazines are available locally. Two[4] have a significant Australian circulation. Most have a very limited circulation[5]. Advertising across these journals apparently only commenced in 1991.[6]
Mr Reeves attests to local sales of cloth under the SUNBRELLA labels in 1992 - 1995.  Over this time just a little more than 100 metres was sold each year. He says that since 1993 various other Glen Raven products have been included in Australian sales catalogues. He points in particular to examples of SUNBRELLA and speciality fabrics, which he describes as having a wide variety of applications, including as boat and sail covers, spray dodgers, and sun awnings.
For the purposes of section 28, it is reputation at the date of the Solar-Mesh applications which is relevant - that is July 1994.
This evidence fails to show that, prior to 1992, the use and promotion of the Glen Raven marks succeeded in establishing any significant reputation in products other than, perhaps, in yarns and threads. To 1992 there is very little demonstrated Australian use of SUNBRELLA on other products.  As far as I can see there was one advertisement in 1991 in Architectural Record - a magazine with an Australian circulation of 221[7].  Further, the indication that the fabric goods came to the market through two other companies, Bradmill Textiles and Brella, raises the question of whether any goodwill developed, attached to Glen Raven or to the Australian companies, Bradmill Textiles and Brella.
The evidence of use post 1992 similarly does not satisfy me that Glen Raven has such reputation that use by Solar-Mesh of its trade marks, will lead to deception and confusion. Although by 1994 Glen Raven fabrics had been on the market for three years, total sales had only reach 350 metres[8]. Advertising was very restricted. As I have mentioned, the magazines carrying advertisements had low circulation.  The rate of publication moreover, was also low, varying from between one advertisement for each of the years 1992, 1993 and 1994, to a rate of three or four per year.[9]   Further, a significant component of this advertising was for marine goods (boat and spray covers and spray dodgers) in a yachting magazine[10]  and I question whether a reputation generated in respect of these goods is likely to impact on trade marks used on the application goods and services.
Considering the evidence on the whole, Glen Raven has not succeeded in showing that it has any goodwill which is likely to be adversely affected by the trade marks Sunbrella in either class 37 or 17.  I do not think that, as a result of the reputation established there is any tangible risk of deception and confusion.  I find, therefore that, leaving aside my decision (above) in respect of the class 33 ground and the deceptive similarity between Sunbrella in class 17 and Glen Raven’s class 24 registered trade mark SUNBRELLA FIRESIST,  the opposition claim re deception and confusion does not hold up.
In recent years, however, section 28 has been the subject of actions in the High Court and the Federal Court, and the judgements have established that paragraph (a) of section 28, is to be read conjunctively with paragraph (d). In 1996 confirmation comes from Tamberline J. in Canon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company, 36 IPR 88 at 101. His Honour says:

[4] Neptune Yachting (41,000) and Country Living (5,189)

[5] Architectural Record (251) Fabric & Architecture (23) and Interior Design (38): with the exception of Neptune Yachting and Country Living, the next 12 of the journals mentioned have an average Australian subscription list of 50

[6] Edgerton - paragraph 10

[7] Edgerton - paragraph 10 and exhibit DAE  IX

[8] Reeves paragraph 4

[9] Edgerton - paragraph 10

[10] Neptune Yachting

Notwithstanding the diverse opinions expressed by members of the High Court in the  New South Wales Dairy Corp. case[11],  I consider that I should follow the views expressed by the full Federal Court in that case, with the result that in the case presently before me the opponent to the application for registration is required to demonstrate “blameworthy conduct”. 

[11] New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company ,  18 IPR 385

The full Federal Court in the New South Wales Dairy Corp. case concluded that, as a matter of interpretation, s28(a) was qualified by s28(d) and that ‘blameworthy conduct’ was one, but not the only, circumstance which could render a mark ‘not entitled to protection in a court of justice’.

Glen Raven’s solicitor, Mr Armatage, submitted that I should find Solar-Mesh blameworthy on the basis that it had adopted its trade marks with the intent of deceiving and confusing buyers into thinking that its goods were produced by Glen Raven.  This, I find, is not supported by any evidence, and amounts to nothing more than speculation.  Further, it seems to me that sunbrella is not an entirely unexpected word for traders to develop if they deal with shading equipment.  In addition to the current parties, applications to register the word sunbrella or sombrello show up on the Trade Mark Office data base in the names of at  least seven additional different applicants.
I do not find that there is any evidence that the Solar-Mesh applications are tainted with blameworthy conduct, and therefore I find that the section 28 (d) is not made out and the section 28 ground must fail.

Decision

I dismiss all of the grounds of this opposition except for the section 33 ground raised against trade mark application number 635017(17). I find in respect of this mark, that Sunbrella is deceptively similar to Glen Raven’s class 24 registered trade mark number 464621 SUNBRELLA FIRESIST and that the statement of goods screen mesh for protection from solar radiation and for thermal insulation describes goods which are goods of the same description as those nominated in the SUNBRELLA FIRESIST registration.
I therefore refuse to register trade mark application number 635017(17).
I dismiss the opposition against trade mark application number 635016(37)

Costs

Finally, I come to the matter of costs. 
As I mentioned at the outset, the scheduling of the hearing of this opposition generated a good deal of correspondence.  Briefly, Glen Raven requested the hearing in August 1996 and paid the scheduled fee.  Its agent asked that the hearing be conducted in Melbourne.  Solar-Mesh,  however, is located in Brisbane, and  in accordance with office practice, both sides were advised that if the representatives or the parties are in different States, hearings are held in Canberra - except where the parties agree to another venue. Mr Ivory, Managing Director and General Manager of Solar-Mesh, protested.  He argued that the hearing should be set down for Brisbane.  Mr Ivory was again advised of the policy and, moreover, of the requirement that in order to attend the hearing he was required to pay the prescribed fee.  It was also pointed out that if he elected not to participate at hearing, he could rely on written submissions, in which event he would not be required to pay the hearing fee.  If he advised me that he was not going to attend,  or was going to attend by telephone conference link, the hearing would be set for Melbourne and thus costs, to some extent, would be expected to be curbed. 
Mr Ivory maintained his opposition to a Melbourne hearing. He declined to pay the hearing fee, and he declined to advise me whether he would make a personal appearance at the hearing. Consequently I was obliged to set the hearing down for Canberra.  In the event, he did not attend  but relied on written submissions. Mr Armatage, for the opponent, appeared in person.
I have found that the opposition has succeeded in respect of only one of the two trade mark applications.  Where an opposition succeeds against one mark and fails against another, I would in the main, be inclined not to award costs.  Here, however, the approach taken by the applicant has resulted in considerable and, I consider, unnecessary expense to the opponent. Accordingly, I have decided that in respect of the successful opposition to trade mark 635017(17), Glen Raven should have its costs. 

Helen R. Hardie
Deputy Registrar
16 December, 1997