TECHNIP ENERGIES FRANCE - [2024] ATMO 23

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReInternational Registration 1600199 - Australian Trade Mark Application number 2191255 (7, 9, 11, 12, 37, 39, 40, 42) – Offshore C-Hub – in the name of TECHNIP ENERGIES FRANCE.

Delegate: Debrett Lyons

Representation: Holder: Gadens Lawyers

Decision: 2024 ATMO 23
Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia
Background

On 24 December 2020, TECHNIP ENERGIES FRANCE[1] (‘Holder’) applied to extend protection to Australia of International Registration 1600199 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’). Such an application is referred to as an International Registration Designating Australia (‘IRDA’). The current details of the IRDA appear below:
[1] Then, TECHNIP FRANCE.

Application No.:

2191255

International Reg.

1600199

Filing Date:

24 December 2020

Priority Date

23 October 2020

Goods and Services:
Class 7: Handling apparatus (loading and unloading) for carbon dioxide, in liquid or gaseous form; arms for loading and unloading.

Class 9: Technical monitoring device, namely, electronic monitors that measure carbon dioxide in geological reservoirs.

Class 11: Apparatus for liquefying carbon dioxide, namely, a refrigeration system containing humidifiers, heat exchangers, and heat pumps.

Class 12: Ships for transporting liquid carbon dioxide.

Class 37: Construction, installation, maintenance and repair services relating to the underground storage of carbon dioxide.

Class 39: Storing carbon dioxide, in liquid or gaseous form; underground storage of carbon dioxide; storing carbon dioxide in water tables, depleted wells, depleted beds or geological reservoirs; storing carbon dioxide offshore; transporting carbon dioxide, in liquid or gaseous form; transporting carbon dioxide by boat; transporting liquid carbon dioxide by sea; organizing transportation of carbon dioxide; loading liquid carbon dioxide; unloading liquid carbon dioxide; tandem unloading of liquid carbon dioxide; transferring liquid carbon dioxide; storing liquid carbon dioxide in ships; collecting carbon dioxide.

Class 40: Liquefying carbon dioxide; treating carbon dioxide; heating carbon dioxide; advisory services relating to processing and handling carbon dioxide.

Class 42: Engineering of equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide; research and development on equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide.

(‘Holder’s Goods and Services’)

Trade Mark:

Offshore C-Hub

(‘Trade Mark’)

The IRDA was examined as required under reg 17A.12 of the Regulations. On 3 August 2021, IP Australia wrote to the International Bureau with a Notice of Provisional Refusal of the IRDA, identifying classification issues and raising a ground for rejection pursuant to s 41 of the Act in respect of (all) the Holder’s Goods and Services. With respect to the s 41 ground, the examiner stated that the Trade Mark is not capable of distinguishing the specified goods and services because
OFFSHORE is defined by the Macquarie Dictionary as being or…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] ATMO 23
Decision Date: 9 February 2024

CaseChat Overview and Summary

This decision concerns an application by Technip Energies France for an international registration of a trade mark to be extended to Australia. The application was opposed by an unnamed party on the grounds that the trade mark was a direct reference to the character or quality of the goods and services for which it was sought to be registered, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). The hearing officer, Debrett Lyons, was tasked with determining whether this ground of opposition was established.

The central legal issue before the hearing officer was whether the trade mark, as applied for, possessed an ordinary signification that directly referred to the character or quality of the relevant goods and services. This required an assessment of the common meaning or meanings of the trade mark in the context of the goods and services.

The hearing officer found that the trade mark did not have an ordinary signification that directly referred to the character or quality of the goods and services. Relying on ordinary dictionary definitions and the material presented by the opponent, the hearing officer concluded that no particular ordinary signification could be identified, let alone one that would amount to a direct reference to the character and quality of the holder's goods and services. Consequently, the hearing officer did not need to consider the second step of the test established in *Cantarella Bros Pty Ltd v Modus Projects Pty Ltd* [2014] FCA 1042.

As the hearing officer was not satisfied that a ground for rejecting the international registration application existed under section 41 of the Act, the application was accepted for possible extension of protection in Australia. The hearing officer, acting as a delegate of the Registrar, accordingly accepted the application and notified the International Bureau.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

I do not accept that the Trade Mark has the signification identified by the examiner. I cannot, either through the use of ordinary dictionary definitions or the material identified by the examiner, identify any particular ordinary signification of the Trade Mark, and certainly not one that would amount to a direct reference to the character and quality of the Holder’s Goods and Services. As such, I do not need to consider the second of the two steps established by Cantarella, and I find that the ground for rejection has not been established. Decision As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so and the International Bureau will be notified accordingly.Debrett LyonsHearing OfficerOppositions and Hearings9 February 2024

Ratio Decidendi

Legal Principle Established

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Delegate:	Debrett Lyons
Representation:	Holder: Gadens Lawyers
Decision:	2024 ATMO 23 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia

Application No.:	2191255
International Reg.	1600199
Filing Date:	24 December 2020
Priority Date	23 October 2020
Goods and Services:	Class 7: Handling apparatus (loading and unloading) for carbon dioxide, in liquid or gaseous form; arms for loading and unloading. Class 9: Technical monitoring device, namely, electronic monitors that measure carbon dioxide in geological reservoirs. Class 11: Apparatus for liquefying carbon dioxide, namely, a refrigeration system containing humidifiers, heat exchangers, and heat pumps. Class 12: Ships for transporting liquid carbon dioxide. Class 37: Construction, installation, maintenance and repair services relating to the underground storage of carbon dioxide. Class 39: Storing carbon dioxide, in liquid or gaseous form; underground storage of carbon dioxide; storing carbon dioxide in water tables, depleted wells, depleted beds or geological reservoirs; storing carbon dioxide offshore; transporting carbon dioxide, in liquid or gaseous form; transporting carbon dioxide by boat; transporting liquid carbon dioxide by sea; organizing transportation of carbon dioxide; loading liquid carbon dioxide; unloading liquid carbon dioxide; tandem unloading of liquid carbon dioxide; transferring liquid carbon dioxide; storing liquid carbon dioxide in ships; collecting carbon dioxide. Class 40: Liquefying carbon dioxide; treating carbon dioxide; heating carbon dioxide; advisory services relating to processing and handling carbon dioxide. Class 42: Engineering of equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide; research and development on equipment and systems for collecting, liquefying, storing, processing, transporting and packaging carbon dioxide. (‘Holder’s Goods and Services’)
Trade Mark:	Offshore C-Hub	(‘Trade Mark’)