Sustainable Technologies Australia Limited v Pilkington (Australia) Limited

[1999] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Sustainable Technologies Australia Limited to the registration of trade mark application number 619342 in the name of Pilkington (Australia) Limited for the word trade mark SMART GLASS in Class 19

Background
Application number 619342 was filed on 23 December 1993, in the name of Pilkington (Australia) Limited (the applicant).  The application was for the registration of the trade mark SMART GLASS and, following amendment to the statement of goods during examination, covered:

"Glass used in building; annealed glass; laminated glass; toughened glass; mirrored glass; patterned glass; reinforced glass; none of the foregoing being glass which is clever, intelligent or able to adapt/react to various sets of conditions " in Class 19.

Subsequent to examination, the application for the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 23 May 1996.

A notice of opposition to the trade mark’s registration was filed by Sustainable Technologies Australia Limited (the opponent), on 30 July 1996.  The notice of opposition listed a number of grounds.  The grounds finally relied upon were confirmed as such by the opponent's attorney in his written submissions made in lieu of an appearance at the hearing.  Of those, the grounds which I can infer as being valid under the Trade Marks Act 1995 (the present Act), are under ss.41, 43, 42, 58, and 62.  Accordingly, those grounds are the subject of this decision and the reasons for it.

The applicant requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  The opponent did not attend the hearing but relied instead upon written submissions from its attorney, Mr Paul Grant of Paul A Grant and Associates.  Appearing at the hearing on behalf of the applicant was Mr Michael Squires of Phillips Ormonde & Fitzpatrick.

The Evidence
The evidence in support includes a declaration by Ronald Evans, who declares that he had carried out research on behalf of the opponent's attorney in relation to the word SMART and its use in connection with glass and windows, and describes his findings.  Exhibited to his declaration are copies of material related to this research.  Next is a declaration by Sylvia Tulloch, joint Managing Director of the opponent, who discusses her discovery of the use of the present trade mark by the applicant and her belief that it is a generic term in relation to glass and windows.  Annexed as exhibits to her declaration are a copy of a brochure featuring the applicant's goods and a letter from a trader regarding the use of the term.  Then there is a declaration by Gavin Tulloch, joint Managing Director of the opponent, who discusses his credentials and background in the trade, and his work in relation to "smart window" technology.  Exhibited to his declaration are copies of related media items and various technical data and papers on the subject.  Next is a declaration by Paul Grant, a patent attorney, who declares as to his activities and conclusions in relation to the examination of the present application and also the present opposition.  Included as exhibits are copies of media articles related to "smart" technology.  Next is a declaration by Michael Tribe, an architect, who discusses the concept of "active" and "passive" technologies, in relation to building - specifically windows and glass - and the use of the word "smart" in association with that industry.  Then there is a declaration by John Bell, an Associate Professor in Mechanical Engineering at the Queensland University of Technology, who declares as to his knowledge of the use of the terms "smart windows" and "smart glass", and his work and research in relation to electrochromic glazing.  Completing the evidence in support is the declaration by Maureen Doughty, a Senior Researcher of John Fairfax Publications Pty Ltd, who outlines a search made of print media for the word "smart" on behalf of the opponent's attorney and who exhibits to her declaration some of her results.

The evidence in answer includes a declaration by Nicholas Brennan, the Company Secretary of the applicant, who relates the history and extent of the applicant's use of the subject mark on various glass products which, he says, do not include those with electrochromic properties.  Exhibited to his declaration are some information brochures, adhesive labels, photographs of vehicles and sales centres, and promotional material, all exhibiting the mark, and sales and promotional financial information in relation to goods sold under the mark.  Next is a declaration by Kristin Van Delft, an employee of the applicant's attorney, who says she conducted a search of the Trade Marks Office records for marks which include the word "smart" and exhibits copies of that search.  Then there are declarations by: Leonard Lohen, the managing director of Rylock Pty Ltd; Duncan Ross, National Marketing Manager - Building Glass Division of O'Brien Glass Industries Limited; John Fraraccio, Director of Stevens Glass (Croydon) Pty Ltd; and Richard Patterson, Managing Director of Halrand Pty.  These declarants variously state that they have a good knowledge of the building glass trade, attest to never having heard of the term SMART GLASS used in a generic or descriptive sense and, despite having heard of "switchable" glazings, declare that they have not heard of the term " smart glass" used in conjunction with them.

The opponent served further evidence, which includes a declaration by David Oppenheim, an architect, who declares as to his interest and expertise in relation to energy efficient buildings, and also as to his belief of the generic use of the terms "smart windows" and "smart glass" in relation to the electrically (sic) controlled transparency of glass.  Next is a declaration by Colin Forster, the General Manager of James Hardie Windows Pty Ltd, who says that he is aware of the use of the present mark by the applicant and that this use has caused confusion amongst the sales staff of his company.  He also says that he is aware of the use of the term "smart glass" by the opponent in a descriptive sense, in relation to the electronically (sic) controlled transparency of glass, and that this use is appropriate.  The next declaration is from Steven Szokolay, an architect, who works as a consultant in relation to architectural energy and environmental issues.  He discusses the theory of energy efficient buildings, and his belief as to the generic meaning and synonymous use of the terms "smart windows" and "smart glass" in the trade.  He exhibits to his declaration copies of several scientific papers on thermally efficient windows.  Finally, there is a declaration by Geoffrey Smith, a Professor of Applied Physics, who declares as to his eminence in relation to the field of advanced glazing systems, including switchable glazing using electrochromic devices, and to his knowledge in relation to the generic use of the terms "smart windows" and "smart glass" to refer to such technology.  He exhibits to his declaration several scientific papers on the subject.

The applicant also served further evidence.  This comprised a declaration by John Wilkins, the Business Development officer of the applicant, who refutes and discusses the allegations by Colin Forster made in the opponent's further evidence.  These allegations concerned confusion encountered by the staff of James Hardie Windows Pty Ltd.  He also talks about training for those staff to ameliorate the problem.  He also says that "electrically (sic) switchable or adaptive/reactive glass products" are not generally commercially available in Australia.  Attached as exhibits to his declaration are copies of correspondence regarding the alleged confusion by James Hardie staff, a questionnaire and a media article regarding the last mentioned goods.

Submissions
Mr Grant, in his written submissions on behalf of the opponent, addressed each of the grounds relied upon in the notice of opposition.  He pointed to what he called the opponent's strong evidence to support its claim that the terms "smart glass" and "smart windows" are descriptive and interchangeable terms used in relation to the controllable transparency of glass or windows.  He said that such glass was technologically advanced, as shown by the opponent's declarants - scientists, architects and energy conservation specialists - who provided expert advice on the topic.  In contrast, he said, the applicant's evidence came from local glass merchants who would not be aware of these terms.  He referred, as precedent, to marks which he said had been rejected for being misdescriptive of the goods which they covered, such as SARILLA - Schweppes Ltd v E.Rowlands Pty Ltd (1913) 16 CLR 162, VITAMIN - J.Kitchen & Sons Pty Ltd v Inman (1939) 9 AOJP 1383 (Reg.), LETHORITE - Lyon Shoe Pty Ltd's Appl'n (1946) 16 AOJP 1725 (Reg.), and ORLWOOLA - H N Brock & Co Ltd's Appn (1909) 26 RPC 850 - amongst others. He said that a descriptive mark could not be made registrable by disclaiming its descriptive meaning or by excluding goods of the same description, or related goods, of which it is descriptive.

Mr Grant also briefly commented on the other legitimate grounds raised in the notice of opposition.  Regarding the opponent's claim that the applicant was not the owner of the mark, he said that this was the case because it was a descriptive term of art in the public domain and not a trade mark.  He further said that the application had been amended in a manner contrary to the provisions or intent of the Act by excluding from the goods those items related to "smart" technology, making the statement of goods "fatally unclear".  He concluded by saying that the registration of the mark would be contrary to the public interest because it the term was essentially deceptive and confusing.

Mr Squires, in his submissions on behalf of the applicant, first addressed the ground that the mark was not capable of distinguishing.  He said that the statement of goods, to be covered by the present mark, specifically excluded goods which were "clever, intelligent or able to adapt or react to various sets of conditions".  He referred to the words of Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case), in arguing that the process to be followed, in determining a mark's eligibility under s.41, is to first decide whether the mark is to any extent inherently adapted to distinguish the designated goods.  He also cited Kitto J in Clark Equipment Co v Registrar of Trade Marks 111 CLR 511, regarding the tests outlined in that case to determine whether a mark is so adapted. In any case, Mr Squires said, there was a plethora of SMART marks on the Register, many of which had gained registration under the Trade Marks Act 1955 (the 1955 Act), which Act had required a more stringent test than did the present Act.  He said that, here, it was not likely that traders in the specified goods would wish to use the words in the mark in a manner which would infringe its registration.  He said that the exclusion sought in the specification of goods had been deliberate in order to indicate that the goods comprised only "passive" glass products, not the "active" goods which the opponent had said the mark referred to.  He said that the opponent had filed three different types of evidence in attempting to show that the mark was not adapted to distinguish.  This had been general evidence relating to the word "smart"; evidence relating to the alleged use of the term "smart glass" on certain goods; and evidence of the use of the term "smart windows" in relation to certain goods.

Mr Squires conceded that word SMART had achieved a degree of popularity in the community, particularly in relation to electronic or computer controlled apparatus.  However, he pointed to many existing instances on the Trade Marks Register of such combinations as SMART MODEM, SMART LIGHT and SMART GRASS which he said were comparable to the present instance.  He said that, in any case, there was little hard evidence of use of the words SMART GLASS, in relation to glass with controllable properties, with many of the opponent's declarants offering only opinion and conjecture.  He said that most of the opponent's evidence pointed to the more appropriate term as being SMART WINDOWS.  He said that it was important to note that the opponent's evidence, where it had been suggested that the words GLASS and WINDOWS were interchangeable in relation to controllable glass windows, came from academic or architectural sources and not from those directly involved in the selling of commercial building glass.  In any case, he said, these claims were countered by the applicant's trade evidence which showed the opposite.

Mr Squires said that the applicant had amended the statement of goods to specifically exclude glass which could be considered, "clever, intelligent or able to adapt/react to various sets of conditions".  Therefore, the use of the term as a trade mark here could not then be said to be descriptive of the goods it covered.  He said that the applicant had offered a further, more specific, exclusion to the statement of goods but the opponent had been unwilling to withdraw its opposition.  He submitted that the examples of marks, cited by the opponent, which had been refused registration on the basis of their being misdescriptive of goods were mainly those where there was no scope for purchasers to ensure, prior to purchase, that they were receiving what they believed they had paid for.  He said that this was not the case here as any ambiguous inferences had been negated by exclusions to the statement of goods.

The real rest, he said, was whether or not other traders would wish to honestly use the mark on the presently restricted statement of goods.  He said that this had not been shown by the opponent's evidence, which had come from mainly non-trade sources, as opposed to the applicant's evidence from people in the trade who had experienced no deception or confusion in relation to the mark used on the relevant goods.  He said that s.122 showed that the grant of registration here would not preclude the opponent's use in good faith of the term SMART GLASS to describe its own controllable transparency glass product.  In any case, he said, those words would not be the natural reference to glass which had "switchable" properties and there were many more apt alternatives to be found in the opponent's own evidence.

With respect to the possibility that I should find that the mark is only, to some small extent, adapted to distinguish the goods covered by the application and needed to consider, in the light of satisfactory evidence of use or any other circumstances, the mark's registrability under s.41(5), Mr Squires pointed to what he said was the very substantial use of the mark on the relevant goods.  He said that the evidence clearly showed that the applicant used the words SMART GLASS as a trade mark and not in a generic sense.  This evidence included declarations by people in the relevant trade which were not disputed by the opponent.  He said that all of this showed that the mark was factually distinctive.

In relation to the s.43 ground, that there was some connotation within the mark which could lead to deception and confusion, Mr Squires said that the word "connotation" referred to a secondary or implied meaning in the mark.  This, he said was not the case here, despite some claims in the opponent's evidence of an aptness for description of glass having controllable transparency qualities.  He reviewed this evidence, drawing my attention to what he said were some anomalies and suspiciously parallel statements.  He said that many of the opponent's declarants did not say that they were confused or, if they did, they did not say why.  He said that the normal buyers of the applicant's goods, which were not electrically switchable, would not regard the words SMART GLASS as being anything but a trade mark.

On the other allegedly valid grounds in the opposition, Mr Squires said that the applicant was the owner of the trade mark because it had not been shown in the evidence that any other party had used the mark as a trade mark on the relevant goods prior to the applicant's own use.  He said that, additionally, there was nothing to show that the application, or any other document, had been amended contrary to the Act.  Finally, he submitted that here was also nothing shown in the opponent's case regarding the applicant's use being contrary to law pursuant to s.42(b).

He concluded his submissions by seeking costs in favour of the applicant.

Analysis
As I have previously stated, in giving the reasons for my decision in this opposition matter, I will only deal with what are legitimate grounds under the present Act to which the evidence relates and to which Mr Grant relied upon in the making of his written submissions.  These are:

Section 41
This section of the Act, as it is relevant here, states:

Trade mark not distinguishing applicant's goods or services

(1)  …

(2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)  The Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)  if the Registrar is then satisfied that the trade mark does or will distinguish the designated goods or services - the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c)  if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6)  If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)  if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant - the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)  in any other case - the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Her Honour, Branson J observed in the Oregon case, supra, that, in applying the provisions of s41, and in deciding whether a trade mark is capable of distinguishing, the Registrar has three options.  He or she may conclude:

(a)that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c)that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Justice Branson continued, at 504:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

The explanatory notes to the present Act expand on the meaning of the term "inherently adapted to distinguish".  They say, inter alia:

Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)  the kind, quality, quantity, intended purpose, value, geographic origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

In the present case, despite initial objections by the examiner under s.24 of the 1955 Act, that the trade mark was descriptive and non-distinctive, it was eventually reconsidered under s.41 of the present Act.  Then, following submissions by the applicant and an amendment to the statement of goods, and without resort to the application of sub-sections (5) and (6) of s.41, it was accepted as being registrable under sub-section 41(3) because it was assessed as having sufficient inherent adaptation to distinguish the applicant's goods from those of other traders.

The opponent has claimed that the term SMART GLASS is a descriptive term of art which signifies glass which incorporates controllable transparency.  I have considered the submissions and evidence from both sides on this point.  The declarants in the opponent's evidence refer to the use of the word SMART in relation to glass which includes the feature of controllable switching to restrict light passing through.  However, I am of the opinion that the evidence falls short in establishing that both the terms SMART WINDOWS and SMART GLASS are commonly used in a descriptive sense to refer to electrochromic glazing.  Most technical references in the evidence mention the expression SMART WINDOWS, and the opponent's declarants appear to accept that term as being apt to describe the technology.  Further, while most of the opponent's declarants say that they believe that expression to be synonymous or interchangeable with the phrase SMART GLASS, there is little, if any, supporting evidence to corroborate this assertion.

In any case, the applicant here has amended its statement of goods to specifically exclude, "… glass which is clever, intelligent or able to adapt/react to various sets of conditions", leaving only "Glass used in building; annealed glass; laminated glass; toughened glass; mirrored glass; patterned glass; reinforced glass…".  I think that this exclusion is an unambiguous and understandable explanation of the goods sought to be covered.  Therefore, notwithstanding any arguments regarding the alleged misdescriptiveness of the mark, if it is used with glass which does not have controllable transparency qualities, I cannot see any reference to the qualities of the glass in the term SMART GLASS - other than perhaps, as the Principal Examiner who reviewed the case prior to acceptance said, as an "…allusive reference to 'fashionable' glass".  However, such a conclusion is not the only possibility.  It could be inferred that the glass is "smart" because it reduces the passage of light due to being tinted or treated in some way, or that the purchaser is "smart" in purchasing glass which incorporates passive solar exclusion.  Such allusions are not necessarily fatal to the applicant's case because a trade mark need not be absolutely unsuggestive - Burroughs Wellcome & Co's Trade Mark (1904) 21 RPC 217. Although the mark, when dissected in this way, might be said to have some reference to the goods, I think that, as a whole, it has sufficient inherent adaptation to distinguish those items.

Given the above, I am satisfied that, when used as a trade mark, the term SMART GLASS is capable of distinguishing the applicant's glass from those of others - especially given the specific exclusion of reactive or externally controlled glass.  I am of the opinion that, if the trade mark suffers to some extent from reduced inherent adaptation to distinguish, it is not so lacking that it needs the support of evidence of use.  I therefore dismiss this ground of opposition.

Section 43
This section of the Act reads:

Trade mark likely to deceive or cause confusion

43.  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.

In determining this ground, I note that the word "connotation" is a new term in Australian trade mark legislation.  The following are two dictionary definitions which interpret the ordinary meaning of that word:
Macquarie Dictionary:

1. the act or fact of connoting.  2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word "bum" has connotations of vulgarity.

Oxford English Dictionary:

1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s.43 must therefore concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.

The trade mark here is the term SMART GLASS.  It is necessary, for the purposes of s.43, to look at the mark in the context of the goods, which is glass with a specific exclusion of, "glass which is clever, intelligent or able to adapt/react to various sets of conditions".   There is little, so far as I can see, in the meaning of the words in the mark which has any reference to these goods.  There is, I concede, an allusion to glass which is "smart" in some way, as I have discussed in relation to the s.41 ground of opposition, but I think that it is ambiguous as to what that word means in this particular combination.  Accordingly, there is nothing in the mark which, to my mind, would cause deception or confusion if it is used on the goods included in the specification.

Notwithstanding the foregoing, I have already found, under s.41, that the trade mark is inherently adapted to distinguish the present statement of goods because it does not directly refer to those goods.  I must therefore address the question, raised by the opponent's attorney, as to whether the phrase SMART GLASS is, alternatively, misdescriptive of goods which do not have controllable transparency qualities.  If this was the case, then it could offend under s.43 by causing deception or confusion due to some connotation in the mark.  The opponent has said that the term SMART GLASS, when used in relation to windows or glass, means that these goods can have their properties manipulated by external means.  However, I have already found that there is a degree of doubt as to whether that term is suitable for direct description and that the phrase SMART WINDOWS would appear to be the more appropriate term of art.  Again, as I have already said, some of the opponent's declarants have said that they believe the expressions to be synonymous, but the documentary evidence does not appear to generally support this, the overwhelming term being shown as SMART WINDOWS.

The danger of being misled by any connotation within the trade mark must be immediate and the tests lie in the perceptions of the ordinary person.  As stated by Warrington L.J., Imperial Tobacco Co. (of Great Britain & Ireland) Ltd's Trade Mark, (1915) 32 RPC 361, and quoted with approval in Joseph Bancroft & Sons Co. v. Registrar of Trade Marks (1957) 99 CLR 453:

I ask myself first of all without knowing anything more about the case, but treating myself as I think that I am entitled to do, as a man who knows something about the ways of the world and the ways of trades people, and the ways of people who buy goods, whether if I saw the Prince of Wales Feathers used as a Trade Mark on a packet of goods, it would suggest to me that that meant to represent, or was calculated to lead to the belief that the person who has put that trade mark on the goods held some special warrant of authority from the Prince of Wales? I do not think that it would be for a moment. What it would suggest to me would be, that the man thought that it was an attractive trade mark which would make his goods not only attractive, but more than that, would distinguish his goods from those of other people in the same trade, being used as a Trade Mark.

I appreciate that the opponent's declarants may be expert in relation to the science of the active manipulation of the properties of glass.  However, taking into account the relative costs of the two sets of goods, where purchasers could be expected to take great care in the selection of building glass, I do not think that ordinary buyers of either party's goods would be deceived or confused as to what they were getting if they were confronted with the present mark.

Accordingly, I cannot agree that there is any connotation in this mark which would mean that its use, in relation to any kind of glass, could lead to deception and confusion amongst purchasers.  I find, therefore, that the opponent is unsuccessful on this ground of its opposition.

Section 42
The relevant part of s.42 relied upon here reads:

Trade mark scandalous or its use contrary to law

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

(a)  …

(b) its use would be contrary to law.

Mr Grant has alleged that the mark is essentially deceptive and confusing and is therefore contrary to the public interest (and presumably law).  However, I have already found that the mark is not deceptive and confusing under s.43 and there is no evidence or any credible submissions that the mark is in any way contrary to law.  There is also nothing to suggest that the applicant has broken any other law in relation to this trade mark.  I therefore find that the opponent fails on this ground of its opposition.

Section 58
This section reads:

Applicant not owner of trade mark

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

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)the person claims to be the owner of the trade mark; and

(b)one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Ownership depends on a combination of authorship and first use and, as per Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1949) 78 CLR 601, may be claimed either on the basis of use of the trade mark, in relation to the nominated goods or services, or on the basis of the making of an application for registration. However, that ownership is limited to "the same kind of thing" - as per Holroyd J in Hicks’ case (1897) 22 VLR 636. Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods of a particular trader are being offered for sale, in Australia, under the trade mark.

In the opponent's submissions and evidence, the contention has been that the disputed term is a generic term referring to glass which can be externally controlled to change its ability to transmit light.  These goods have been specifically excluded by the applicant from the statement of goods,  However, I agree that the applicant's goods, being inactive glass intended for inclusion in buildings, must be considered "the same kind of thing" as building glass which has a capacity to have its properties manipulated.

However, the dispute of a claim of ownership of a mark will only succeed, where the opponent can show that the word or words it relies upon as being owned by itself or another person - or, in this case, as being in the public domain - is substantially identical with the mark, the subject of the application for registration.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91- 049 at 38,114, when referring to the concept of proprietorship in the 1955 Act, and to Shell Co. (Aust.) Ltd v Rohm and Haas, supra, Gummow J. said:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

The opponent here has claimed that the terms SMART GLASS and SMART WINDOWS, are interchangeable and are both used as a descriptive term in the trade.  Given this, the opponent is claiming that the applicant is not the owner of the mark because it is a term of art relating to glass and not because that party first used the mark itself on the same goods.  However, the opponent's evidence is not convincing as to the generic nature of the term SMART GLASS, the majority of the evidence pointing to the words SMART WINDOWS as being the appropriate reference in common use.

Notwithstanding this, the primary purpose of this section of the Act is to dispute the ownership of a trade mark.  The applicant is claiming - through applying for and using the presently applied for mark - to be its owner and there does not appear to be any argument that any other party has used those words first as a trade mark on any goods.  In fact the opponent is claiming the opposite - that no one would want to use it as a trade mark, given its descriptive nature.

I find then that the opponent has failed to overcome the applicant's claim to ownership of the subject mark and that this leg of opposition must fail.

Section 62
The part of this section relied upon by the opponent reads:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:
(a)   that the application, or a document filed in support of the application, was amended contrary to this Act;

The opponent has alleged here that an amendment requested by the applicant to the statement of goods covered by the mark was somehow not in accordance with the legislation.  I can find no credible support for this in the opponent's evidence or submissions.

I therefore dismiss this leg of opposition.

Conclusion
I have found that the opponent has not been successful on any ground on which it relied in the notice of opposition.  I therefore dismiss the opposition as a whole.  It follows that, subject to any appeal from the decision, the application should now proceed to registration.

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official scale.

Ian Forno
Hearing Officer

21 October 1999