Standards Australia Ltd v NHP Electrical Engineering Produsts Pty Ltd

[2010] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Standards Australia Ltd to registration of trade mark applications 1245141, 1245142 and 1246520 - ISO SOCKET, ISO CONNECT and ISO logo - filed in the name of NHP Electrical Engineering Products Pty Ltd.

Delegate:	Deirdre O’Brien
Representation:	Decision on the written record
Decision:	2010 ATMO 56 S52 oppositions. Grounds pursuant to sections 41, 42(b), 43, 44, 58, 59, 60 and 62A not established. Trade marks may be registered.

Background

1. Trade mark applications 1245141, 1245142 and 1246520 by NHP Electrical Engineering Products Pty Ltd (‘the applicant’) to register the word trade marks ISO SOCKET and ISO CONNECT and an ISO logo were advertised for possible registration in the Australian Official Journal of Trade Marks in October 2008. At the request of Standards Australia Ltd (‘the opponent’) the statutory three month period for opposing registration was extended by three months.  On 20 April 2009, within the time allowed, the opponent filed notice of opposition to the registration of each trade mark.

2. The opponent nominated the same grounds in each of its notices of opposition, namely those pursuant to sections 41, 42(b), 43, 44, 58, 59, 60 and 62A of the Trade Marks Act 1995 (‘the Act’).

3. To support its oppositions the opponent filed and served a declaration by Brandon Gien made 17 July 2009 with exhibits BG-1 to BG-22 attached.  As evidence in answer to the oppositions the applicant filed and served a declaration by Alessandro Coslovich made 13 November 2009 with exhibits AC-1 to AC-3 attached.

4. Neither party requested a hearing when given the opportunity to do so.  Nor did they file written submissions.

5. I have been delegated by the Registrar of Trade Marks to decide the oppositions pursuant to section 55 of the Act. Section 55(1) provides:

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

6. My decision is based on the written record, namely the notices of opposition and the evidence filed and served by each party.

   Opponent’s Evidence

7. The opponent says the letters ISO stand for the International Organization for Standardization, a world-wide federation of national standards bodies established in 1947 with the opponent (then Standards Association of Australia) as a founding member (paragraph 8 of Gien declaration). 

8. Information about the work of the International Organization for Standardization is at Exhibit BG-5. An article dated 10 February 2009 and titled “ISO is a well-known mark” (author unknown) says that:

   The object of ISO is to promote the development of standardization and related activities in the world with a view to facilitating international exchange of goods and services, and to developing cooperation in the spheres of intellectual, scientific, technological and economic activity. The results of ISO technical work are published as International Standards. The scope of ISO covers standardization in all fields except electrical and electronic engineering standards.

   …

   ISO standards add value to all types of business operations. They contribute to making the development, manufacturing and supply of products and services more efficient, safer and cleaner and make trade between countries easier and fairer. ISO standards also serve to safeguard consumers, and users in general, of products and services. Standardization with regard to film speed codes, telephone and banking cards, international freight containers and country codes are a few examples of ISO standards that have been widely adopted.

   …

   Interest in ISO standards and standardization activities is considerable. This is illustrated by the following: the ISO Web site ( receives on average more than one million visitors from more than 220 countries per month who load more than 260 GBytes of information from the site.

9. The opponent has a memorandum of understanding with the Commonwealth of Australia to take a leading role in the development of Australian standards (Exhibit BG-1) in accordance with the “Agreement on technical barriers to trade” by members of the World Trade Organization (Exhibit BG-2). As well as being the Australian representative on the International Organization for Standardization, the opponent is also the Australian representative on the International Electrotechnical Commission and the Pacific Area Standards Congress. 

10. The opponent is “responsible for ensuring that the Australian viewpoint is considered in the formulation of International Standards and that prevailing International Standards are utilized when preparing Australian Standards wherever possible” (paragraph 6 of Gien declaration).  It has “developed a wide range of Standards and Standards-related products, including several Australian adoptions of ISO Standards” (paragraph 7 of Gien declaration).

11. The opponent says that it “has the responsibility of protecting the ‘ISO’ brand in Australia” (paragraph 8 of Gien declaration).  It says (paragraph 10 of Gien declaration) that:

    The ‘ISO’ brand is very well known internationally and within Australia. This reputation has developed as a result of the significant use of the ‘ISO’ brand in the promotion and implementation of ISO Standards and through activities related to ISO Standards over many years.

12. In this regard the article at Exhibit BG-5 says that:

    [T]he ISO mark … is a highly recognized worldwide trademark with a reputation for integrity and neutrality

    …

    ISO has registered its trademarks in Switzerland where its headquarters is situated, and in 149 other jurisdictions. National bodies in each of the member countries are responsible for protecting ISO’s trademarks and ISO has retained the services of professional firms to search and report on incidents of infringement. When it finds an infringement, the ISO Central Secretariat refers the matter to the relevant member organization.

13. The opponent promotes the activities of the International Organization for Standardization in its magazine called Up (paragraph 15 of Gien declaration).  It says the magazine produced by the International Organization for Standardization entitled ISOFocus is available in Australia (paragraph 12 of Gien declaration).  It says ISO Standards have been distributed in Australia for many years and have been available for purchase on the Internet since 1999 (paragraph 13 of Gien declaration).  It provides evidence of ISO Standards being available at the website in 1999 (Exhibit BG-8). It also provides examples of its own standards and the International Standards of the International Organization for Standardization and the International Electrotechnical Commission that can currently be purchased from the website  (Exhibit BG-14).

14. The opponent says (paragraph 20 of Gien declaration) that:

    Standards produced by ISO (other than joint standards) are identified by a reference number consisting of the prefix ‘ISO’ followed by a number. The last four digits of the reference number indicate the year in which the particular Standard was first published.

15. The opponent provides examples of Australian organisations promoting their accreditation in accordance with standards ISO 9001 and ISO 14001 (Exhibit BG-9).

16. The opponent points to examples of use of the letters ISO by the applicant (Exhibits BG-19 to 22).  The opponent notes that the goods of the opposed applications will be used in a range of electrical and electronic applications whereby the goods must comply with the relevant standards (paragraph 23 of Gien declaration).  It acknowledges that the standards pertinent to electrical and electronic engineering are developed by the International Electrotechnical Commission (‘IEC’) but says “ISO and IEC have … developed a number of joint standards in areas of overlap” (paragraph 17 of Gien declaration).  It says (paragraph 21 of Gien declaration) that:

    Joint standards, such as joint ISO and IEC standards are identified by a reference number consisting of the prefix identifying the relevant standards developer (in this case, ‘ISO/IEC’) followed by a number. Again, the last four digits of the reference number indicate the year in which the particular Standard was first published.

17. The last paragraph of the Gien declaration is in the nature of submissions.  It says:

    The use of the ‘ISO’ brand (which is well known in relation to Standards) in connection with the Applicants products, through the use of ‘ISO SOCKET’, ‘ISO CONNECT’ and the ‘ISO’ logo respectively, is likely to suggest or represent to members of the public that those products have been generally approved or authorized by ISO or that the Applicant is somehow affiliated with ISO. Neither the Applicant nor its products have any such approval from or affiliation with ISO.

    Grounds of opposition

18. The opponent has the onus of establishing its opposition (Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430 at 433). I do not know which of the grounds in its notices of opposition it considers are supported by the evidence. The only ground which is capable of being established without evidence is that pursuant to section 44 of the Act. That is because the opponent identified the earlier trade mark on which this ground is based. All the other grounds require evidence and/or submissions to be made out.

19. I consider the opponent’s evidence does not support the grounds pursuant to sections 41, 59 and 62A and I find they have not been established. With respect to the other grounds it is convenient for me to start with the section 43 ground.

    Section 43 – trade mark likely to deceive or cause confusion

20. Section 43 provides:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

21. The Registrar’s delegate in Playboy Enterprises International v Auszan Pty Ltd (2006) 68 IPR 332 noted at page 337 that:

    [A] sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles or signifies a particular sign which is so ubiquitous, of longstanding, or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular person, entity or event or connoting a particular meaning (whether or not that particular sign has trade mark significance).   

22. From the evidence and my own knowledge it is common for Australian businesses to advertise the fact that they are complying with relevant standards for their goods and services.  Those standards could be the Australian Standards developed by the opponent and/or the International Standards developed by the ISO and by the IEC.  For many Australians the capital letters ISO mean “International Standards Organisation”.  Indeed the Macquarie Dictionary has an entry to this effect.  Although that is not the correct name of the International Organization for Standardization, it is the way the letters ISO are understood by Australians.  They connote the international organisation responsible for developing international standards in relation to a variety of products and services.

23. However such connotation is limited to the capital letters without any embellishment.  With application 1246520 the applicant has applied to register the trade mark depicted below in respect of a range of electrical and electronic goods:

24. The letters ISO represented in this fashion carry no connotation of the “international organisation responsible for developing international standards”. To persons unfamiliar with the applicant’s goods the trade mark will most likely be seen as the word ‘is’ followed by a bisected letter ‘o’. To persons familiar with the applicant’s goods it will be seen as the applicant’s trade mark, an indication of trade source. I find the opponent has not established the section 43 ground with respect to application 1246520.

25. The trade marks of applications 1245141 and 1245142 are the expressions ISO SOCKET and ISO CONNECT respectively.  Again the applications seek registration for a range of electrical and electronic goods. The question is whether Australian consumers would be likely to believe trade marks comprising the capital letters ISO followed by a word alluding to the electrical and electronic goods on which they are to be used, refer to an ISO Standard or indicate that the goods have been endorsed by the “international organisation responsible for developing international standards”.

26. The evidence shows the standards of the International Organization for Standardization are identified by the letters ISO followed by a number.  The only evidence of the International Organization for Standardization using the letters ISO immediately followed by a word is in the title of its magazine ISOFocus (Exhibits BG-6 and 7),  in reference to its standards as in the expression “ISO Standards” and as the title of its printed guides such as “ISO Guide 30:1992” (Exhibit BG-15). 

27. The opponent refers to the inclusion of the words ‘connect’ and ‘socket’ respectively in the titles of International and Australian standards (paragraph 19 of Gien declaration).  Of the examples of ISO Standards provided (Exhibit BG-15) I could only find one use of ‘connect’ but there were many ISO Standards containing words such as ‘connector’, ‘connection’ and ‘connecting’ in their titles.  There were also many examples of ‘socket’ being used in the titles of ISO Standards (Exhibit BG-16).  However the evidence shows that if products comply with an ISO Standard, the standard is identified without reference to title as in “ISO 9001:2000 Accredited” or “certified to AS/NZS/ISO 1400 Standard” (Exhibit BG-9). 

28. The opposed trade marks are not in the nature of ISO STANDARD or ISO ENDORSED or ISO CERTIFIED or the letters ISO followed by a number, all of which would unequivocally connote an association with, or endorsement by, the International Organization for Standardization.  Moreover, as the applicant points out (paragraph 11 of Coslovich declaration) and the opponent acknowledges (paragraph 17 of Gien declaration) it is the International Electrotechnical Commission (IEC) which develops International Standards in the fields of electrical and electronic engineering. 

29. Electrical and electronic goods which comply with an International Standard of the IEC would be described in much the same manner as Exhibit BG-21 shows the applicant has done with respect to its isolating switches (see below).

30. The applicant says its goods have been sold in Australasia under the opposed trade marks and under trade marks of similar format, namely ISO SWITCH and ISO PLUG, for some time and that it is not aware of any instances of confusion or deception (paragraph 14 of Coslovich declaration).

31. I consider the letters ISO in the trade marks ISO SOCKET and ISO CONNECT may bring to mind the “international organisation responsible for developing international standards” but I am not satisfied their presence in trade marks to be used on electrical and electronic goods would be likely to deceive or cause confusion.

32. I find the opponent has not established the section 43 ground with respect to applications 1245141 and 1245142.

    Section 44 – trade mark substantially identical or deceptively similar to an earlier trade mark

33. Section 44(1) provides:

    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

34. In its notices of opposition the opponent identified the following registered trade mark as basis for this ground.

Regn no.	Priority date	Trade mark series	Goods in class 16
620381	17.01.1994	Printed matter

1. The goods of the opposed applications are electrical and electronic goods in class 9, namely:

   Electrical and electronic instruments, apparatus and equipment in this class, including: isolation switching apparatus and devices, including safety isolation switches, load break switches, main switches, and isolators; motor control and starting equipment in this class; electrical and electronic switchboard instruments and meters in this class; relays; circuit breakers including moulded case circuit breakers; photo-electric devices in this class; electrical fuses; contactors including bar contactors; electrical and electronic timing apparatus and instruments in this class; electrical cable ducting and conduit; electrical cables; electrical branch boxes; electrical cell switches; circuit closers; connectors; electrical distribution boards, boxes and consoles; electrical and electronic switches, including limit switches, time switches, main switches, push-button switches and cam switches; cage clamp connectors; enclosures; residual current devices; panel boards; terminals; non-contact voltage indicators, surge diverters; power distribution products, including circuit protection devices, multi- purpose panelboards, load-break switches, switch-fuses and fuses, MCBs, RCDs and RCBOs, type-tested modular switchboard systems, flexible busbars and accessories, fusegear, arc detect relays, transfer switches; motor control products, including motor control and protection products, variable speed drives, soft starters, bar contactors and protection relays, 4pole motor control devices; automation and communication products and systems, including I/O systems, control, motion and visualization systems and products, field bus systems, micro PLCs, human machine interfaces, specialty PLC modules and programming software; control and switching products  and systems, including control and signalling units, electronic timers and solid state relays, control relays, time controls, safety isolation switches, pushbutton and control stations, rotary cam switches, crane joystick controllers, pendant controls; safety and protection goods and systems, including safety interlock, failsafe relays and trip-wire switches, safety light curtains, pull-wire switches, trapped key systems; power quality products and systems, including power factor control systems, surge diverters, power capacitors, power factor regulators, harmonic tuned reactors, power supplies; sensing and detection products, including limit and proximity switches, proximity and level sensors, beam and fibre-optic sensors; monitoring and display products, including analogue and digital panel meters, sirens and warning devices, signalling and rotating beacons, tower lights, monitoring relays; enclosures and termination displays, including cabinets and enclosures, cage clamp terminals and connectors, cable glands,  plugs and sockets, anti-condensation heaters, cable ducting; and parts of and accessories for such goods as are included in this class

2. It is convenient to first consider whether these goods are similar to the goods of registration 620318.

1. The term “similar goods” is defined in section 14(1) of the Act as follows:

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

2. The factors to be considered in deciding whether goods are of the same description were summarised by Romer J in Jellinek's Application (1946) 63 RPC 59 as the nature of the goods, their respective uses and the trade channels through which they are bought and sold. The goods of the opposed applications and those of the earlier registration differ in their nature, use and trade channels. They are not similar goods.

3. I find the opponent has not established the section 44 ground for any of the opposed applications.

   Section 58 - Applicant not owner of trade mark

4. Section 58 provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

5. This ground of opposition will be made out if the opponent can establish that another person was the first to use the same, or substantially identical, trade mark as the opposed trade marks in Australia in relation to the same kind of thing. The requirement for use on ‘the same kind of thing’ comes from Hicks’s Trade Mark (1897) 22 VLR 636, where Holroyd J said at page 640:

   In order to substantiate his application to be placed on the Register for this word, he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name.  If there is anyone else who would be interfered with by the registration ... in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the Register for that trade mark.

6. The evidence shows the International Organization for Standardization has used the composite trade mark  and the word trade marks ISO and ISOFocus in Australia on printed information about international standards.  None of this use is in relation to the “same kind of thing” as the electrical and electronic goods of the opposed applications. 

7. I find the opponent has not established the section 58 ground for any of the opposed applications.

   Section 60 – use of trade mark likely to deceive or cause confusion because of reputation of another trade mark in Australia

8. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

9. The priority dates of the opposed applications are 5 June 2008 for applications 1245141 and 1245142 and 16 June 2008 for application 1246520.

10. The opponent says “the ‘ISO’ brand” is well known in relation to standards (paragraph 24 of Gien declaration).  I agree to the extent that in any consideration about the standard or quality of products and services, most Australians will be aware the capital letters ISO indicate the international organisation responsible for developing international standards.  However that does not equate to ISO having a reputation as a trade mark in Australia as required by section 60(a).

11. Section 17 of the Act defines a trade mark as follows:

    A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

12. In The Coca-Cola Company v All-Fect Distributors Ltd (1999) 47 IPR 481 the Full Federal Court said at pages 489-490 that:

    Use as a ‘trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of ‘trade mark’ in s17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

13. The High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 noted at paragraph 44 that:

    [T]he reference in s 17 to “the course of trade” encompasses the idea that use of a trade mark is use in respect of “vendible articles”. A mark is used only if it is used “in the course of trade”.

14. The opponent’s evidence shows ISO Standards can be purchased by Australians as can subscriptions to the magazine ISOFocus.  The trade mark used to identify the International Organization for Standardization as the source of these publications is  (Exhibits BG-6, 7, 14, 15 & 16).  However there are no figures in evidence of the number of sales of ISO Standards to Australian customers or the number of visits from persons located in Australia to the websites where ISO Standards may be purchased or the number of persons in Australia who subscribe to ISOFocus.    

15. I am not satisfied from the evidence that ISO has a reputation as a trade mark in Australia. Accordingly, I find the section 60 ground has not been established.

    Section 42 - Trade mark scandalous or its use contrary to law

16. Section 42 provides:

    An application for the registration of a trade mark must be rejected if:

    (a)the trade mark contains or consists of scandalous matter; or

    (b)its use would be contrary to law.

17. The opponent is relying on the ground contained in section 42(b). It says (paragraph 24 of the Gien declaration) that:

    The use of the ‘ISO’ brand (which is well known in relation to Standards) in connection with the Applicants products, through the use of ‘ISO SOCKET’, ‘ISO CONNECT’ and the ‘ISO’ logo respectively, is likely to suggest or represent to members of the public that those products have been generally approved or authorized by ISO or that the Applicant is somehow affiliated with ISO. Neither the Applicant nor its products have any such approval from or affiliation with ISO.

18. This leads me to consider whether the applicant’s use of the opposed trade marks would be contrary to sections 52 and 53 of the Trade Practices Act 1974 (‘TPA’) which respectively prohibit misleading or deceptive conduct and the making of false or misleading representations by corporations.

19. For the purposes of section 42(b) it is use of the opposed trade mark(s) which must be contrary to the TPA (Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at page 21). The opponent has pointed to examples of the applicant’s use of catalogue numbers for its load-break switches such as “ISO 4100” (Exhibit BG-19). Elsewhere the evidence shows the applicant has used the unembellished capital letters ISO as shorthand for “isolating” when used on electrical “safety isolating switches” (Exhibit BG-21) or as a trade mark in expressions such as “Complete ISO product family”, “ISO merchandise” or “ISO Promotion Video” (Exhibit BG-22).

20. Whether such conduct would contravene section 52 or 53 of the TPA is not at issue here. I need to decide whether the applicant’s use of any of the opposed trade marks , ISO CONNECT and ISO SOCKET on electrical or electronic goods would mislead or deceive, or is likely to mislead or deceive, or indicates an association with the International Organization for Standardization that does not exist.

21. In Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 79 IPR 174, an appeal to the Full Federal Court, Tamberlin J stated at page 184 that:

    The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled.

22. More is required than the possibility of members of the public being confused. Gibbs CJ in Parkdale Custom Built Furniture Pty Limited v Puxu Pty Ltd (1982) 149 CLR 191 said at page 198:

    In McWilliams Wines Pty Limited v McDonald’sSystem of Australia Pty Limited (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

23. I have already found with respect to the section 43 ground that there is nothing inherent to the opposed trade marks which indicates an association with the International Organization for Standardization that would be likely to confuse or deceive. However the opponent’s evidence of how the applicant has used the trade marks may show otherwise.

24. There is no use of the trade marks ISO CONNECT and ISO SOCKET in evidence.  With respect to the trade mark , Exhibit BG-21 seems to show the applicant’s first use of the capital letters ISO was in a descriptive sense, as shorthand for the electrical “isolating switches” sold under the NHP trade mark (see below). 

25. At some stage the applicant seems to have decided to use ISO as a trade mark for a range of NHP products.  Exhibit BG-22 (below) refers to “ISO Plugs & Sockets (NHP) coming soon”.

26. This exhibit also shows being used as a trade mark along with the expression “Industrial Strength Options” to indicate the meaning of ISO.  There is nothing in this manner of use which would result in a “not insignificant number of persons in the Australian community” believing the goods have met ISO Standards or are in some way associated with, or endorsed by, the International Organization for Standardization. 

27. I find the opponent has not established the section 42(b) ground of opposition.

    Decision

28. As I have found no grounds of opposition have been established, it is my decision that trade mark applications 1245141, 1245142 and 1246520 may proceed to registration one month from the date of this decision.  If the Registrar is served with a notice of appeal before the trade marks are registered, I direct that registration shall not occur until the court so orders or the appeal has been discontinued.

    Deirdre O’Brien
    Delegate of the Registrar of Trade Marks
    30 June 2010