Thetford BV v Dometic Sweden AB

[2024] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by Thetford BV to registration of trade mark application number 2137356 (classes 18, 20, 22, 24) – KAMPA – in the name of Dometic Sweden AB

Delegate:	Nicholas Barbey
Representation:	Opponent: Henry Hughes IP Ltd Applicant: Spruson & Ferguson
Decision:	2024 ATMO 31 Trade Marks Act 1995 (Cth) – opposition under s 52 – s 60 pursued – not established – trade mark may proceed to registration subject to the resolution of any pending oppositions

Background

1. This decision concerns an opposition brought by Thetford BV[1] (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   [1] On 3 June 2022 the then opponent, Thetford Corporation, requested an amendment to the opponent’s name pursuant to s 53 of the Trade Marks Act 1995 (Cth) from Thetford Corporation to Thetford BV.

   Trade mark:  KAMPA (‘Trade Mark’)

   Number:                  2137356 (‘Application’)

   Owner:  Dometic Sweden AB (‘Applicant’)

   Priority date:[2]                   19 May 2020 (‘Relevant Date’)

   Specification:        Class 18: carrying bags; all-purpose carrying bags; bags; back packs; rucksacks; holdalls; cases; luggage; wallets; pouches; straps; articles of luggage; umbrellas; parasols; sun parasols; rain parasols; walking sticks

   Class 20: mirrors; picture frames; wardrobes; ladders, non-metallic; movable steps, non-metallic; hangers (clothes-); portable water carriers (containers) made of plastics; portable waste water carriers (containers) made of plastics; non-metal wheel chocks; shower curtain rails

   Class 22: washing lines; bags for packaging, storage and transport; sacks for packaging, storage and transport; rope ladders; ropes; string; nets; textile draught excluders; parts, fittings and accessories for all the aforesaid goods included in this class

   Class 24: textiles; textile goods (excluding textile goods for camping); bed linen, bed covers, sheets, and blankets, all excluding such goods for use in relation to camping; towels; quick dry towels; beach towels

   [2] Based on convention number 40-2020-0082430 (Republic of Korea).

1. The acceptance of the Trade Mark for possible registration was advertised on 16 March 2021. A notice of intention to oppose was filed on 14 May 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 June 2021. The Applicant filed a notice of intention to defend on 3 September 2021.

2. The only evidence adduced in this proceeding was Evidence in Support (‘EIS’) and this was filed on 7 December 2021. A hearing by way of written submissions was subsequently requested. The Opponent’s submissions, prepared by David Moore of Henry Hughes IP Ltd, were filed on 21 April 2023 (‘Opponent’s Submissions’). The Applicant’s submissions, prepared by Francesca Colubriale and Danielle Spath of Spruson & Ferguson, were filed on 28 April 2023 (‘Applicant’s Submissions’).

3. The matter has been allocated to me, a delegate of the Registrar of Trade Marks (‘Registrar’), to decide based on the abovementioned materials.

Grounds of opposition, onus and standard of proof

1. The SGP nominated a single ground of opposition under s 60 of the Act. To be successful, the Opponent bears the onus of establishing this ground.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [4] Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

Evidence

1. The following evidence was filed:

EIS

• Affidavit made on 16 December 2021 by Petrus Struijs (Chief Financial Officer of Thetford Corporation) with attachments PS-1 to PS-3 (‘Struijs Affidavit’).
• Declaration made on 2 December 2021 by Daniel Dunn (General Manager of Thetford Australia Pty Ltd) (‘Dunn Declaration’).

EIS

1. According to the Struijs Affidavit, the Thetford Corporation (‘Thetford’) ‘provides quality products and services to the manufacturers and users of mobile vehicles throughout the world’.[5] It is declared that Thetford has been making toilets for recreational vehicles since 1964 and it commenced offering ‘products internationally under the CAMPA trade mark in 1998 and under the CAMPA-POTTI trade mark in 2011’.[6] These trade marks have been promoted by Thetford ‘using a range of methods’ including on product packaging as well as via websites.[7] Screenshots of four websites are provided as examples of such promotion.[8]

   [5] Struijs Affidavit, [4].

   [6] Ibid [8].

   [7] Ibid [9].

   [8] Ibid Attachment PS-2.

2. The Struijs Affidavit states that products bearing ‘CAMPA’ or ‘CAMPA POTTI’ (together ‘Campa Marks’) are sold throughout the world including in Taiwan, Europe and the United Kingdom. It is claimed that the Opponent’s products are also ‘sold in Australia through retailers of camping and outdoor pursuits equipment’ and a screenshot from the website accessible at <tentworld.com.au> (‘Tentworld Screenshot’) is provided to support this.[9] Global sales figures, recorded in Euros, for products sold under or by reference to the Campa Marks between 2015 and 2021 have also been provided.

   [9] Ibid [11].

3. The Struijs Affidavit explains that Thetford Australia Pty Ltd (‘Thetford Aus’) is a subsidiary of Thetford which services the Australian and New Zealand markets. Thetford Aus was incorporated in 2006 and, since that time, Thetford Aus ‘has expanded its presence in the Australian market to become a major player with over 600 dealers, retailers and service agents around Australia and New Zealand’.[10]

   [10] Ibid [7].

10.  The Dunn Declaration states that Thetford Aus ‘routinely receives enquiries from Australian consumers asking for CAMPA or CAMPA-POTTI products’.[11] Mr Dunn asserts that the Campa Marks ‘are known brands in Australia’ and he believes that ‘[c]onsumers in the camping, caravan and RV sectors will be familiar with’ these marks.[12] It is Mr Dunn’s understanding that products branded with the Campa Marks are ‘available to Australian consumers through the online retailer Amazon’.[13] Mr Dunn also mentions ‘that prior distributors may have imported and sold CAMPA and CAMPA-POTTI branded products in Australia’ but he was unable to locate any records of such sales.[14]

Discussion

[11] Dunn Declaration, [5].

[12] Ibid.

[13] Ibid [6].

[14] Ibid [7].

Section 60

11. Section 60 of the Act relevantly provides:

Trade mark similar to trade mark that has acquired a reputation in Australia
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.

12.  To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

13.  This opposition ground was particularised in the SGP as follows:

The opponent was founded in 1963 and has grown to become a global corporation. The opponent’s Australian subsidiary - Thetford Australia Pty Ltd – was incorporated in 2006 and is headquartered in Victoria. The opponent has used the trade marks CAMPA and CAMPA POTTI internationally for decades in relation to portable toilets, toilet tissue and tank treatment products. The opponent’s CAMPA and CAMPA POTTI trade marks have been promoted online and via television.

Sales and promotion of products under the CAMPA and CAMPA POTTI trade marks, including overseas sales and promotion, have resulted in a reputation existing in Australia in the trade marks.

This reputation pre-dates the filing date of the opposed application. The opponent’s goods are similar to at least some of the goods for which registration is sought by the applicant.

In view of the reputation which exists in the CAMPA and CAMPA POTTI trade marks, use of the applicant’s KAMPA mark would be likely to deceive or cause confusion.

1. Accordingly, reliance is placed on the Campa Marks as underpinning this ground of opposition. From the outset, I note that each trade mark nominated must be considered and assessed separately for the purposes of s 60 of the Act.[15] As such, even if the evidence establishes that a reputation exists for ‘CAMPA’, it does not follow that a reputation also exists for
   

   [15] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J).

   ‘CAMPA POTTI’.

Reputation

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[16] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... .[17]

   [16] [2000] FCA 1335, [81] (‘McCormick’).

   [17] [1992] FCA 159, [118] (‘ConAgra’).

16.  Further, Kenny J observed in McCormick that:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[18]

[18] McCormick (n 16) [86].

17.  The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[19] Meanwhile, the existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[20]

[19] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[20] ConAgra (n 17) [77].

18.  The Opponent contends that a ‘reputation exists in Australia in the Opponent’s marks CAMPA and CAMPA-POTTI in relation to portable toilets and related portable products for dealing with waste’.[21] To support this, reliance is placed on the global sales figures provided coupled with the purported international use of ‘CAMPA’ and ‘CAMPA-POTTI’ since 1998 and 2011, respectively. In contrast, the Applicant submits that neither of the Campa Marks had acquired a reputation in Australia by the Relevant Date. It is critical of the EIS noting that most statements relied on by the Opponent are not supported by any documentary evidence. With respect to the documentary evidence that was filed, the Applicant claims that this material does not appear to show use of either Campa Marks in Australia.[22]

[21] Opponent’s Submissions, [8(i)].

[22] Applicant’s Submissions, [28].

19.  In my assessment, the evidence falls well short of establishing that either of the Campa Marks had acquired a reputation in Australia as at the Relevant Date. Broadly speaking, the EIS has four significant deficiencies which are fatal to the Opponent’s prospects of establishing this ground. First, the claims made by each declarant are generally not supported by any evidence and thus they amount to little more than bare assertions. For example, the Dunn Declaration fails to provide any evidence whatsoever to support Mr Dunn’s statements. Second, the website screenshots provided are not dated before the Relevant Date and, with the exception of one, they do not appear to be specifically targeted at Australian consumers.[23] Third, the Tentworld Screenshot does not demonstrate use of the Campa Marks. Instead, it simply reveals the existence of Thetford’s ‘Porta Potti’ brand. Fourth, the annual turnover and global sales figures are given in a lump sum form without any breakdown regarding the nature or quantity of products sold. There is also no indication as to what proportion of these figures, if any, pertain to the Australian marketplace and the EIS is silent as to any advertising or promotional figures relating to goods provided under either of the Campa Marks. In short, the EIS provides no basis to infer that any reputation which may exist overseas has spilled over into the Australian market.

[23] See Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471, [43] (Merkel J).

20. For the above reasons, the EIS fails to establish, as a matter of fact, that either of the Campa Marks had acquired a reputation amongst a significant or substantial number of Australian consumers before the Relevant Date. It follows that consideration of s 60(b) of the Act is not required.

21. The s 60 ground of opposition has not been established.

Decision

22. Section 55 of the Act relevantly provides:

Decision
(1)  Unless subsection (3) applies to the proceedings, 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.

23.  The Opponent has not established its ground of opposition. Subject to the resolution of any pending oppositions, trade mark application 2137356 may proceed to registration. If the Registrar is served with a notice of appeal, I direct that the registration shall not occur until the appeal has been decided or discontinued and the disposition of the Application should be in accordance with the court’s order or direction.

Costs

24. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
20 February 2024

and Edelman JJ).