Thomas Magnete GMBH v Gardner Denver Thomas, Inc

[2018] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by Thomas Magnete GMBH to registration of trade mark application 1264811 (7) - THOMAS - in the name of Gardner Denver Thomas, Inc.

Delegate:	Cristy Condon
Representation:	Opponent: Russell Waters of Phillips Ormonde Fitzpatrick Applicant: Francesca Colubriale of Spruson and Ferguson
Decision:	2018 ATMO 95 Trade Marks Act 1995 (Cth) – opposition under s 52 – s 41 – distinctiveness of surname – s41(5) established - evidence of use insufficient Trade Mark application refused

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by Thomas Magnete GMBH (‘the Opponent’) to registration of the following trade mark:

Trade Mark No:	1264811
Trade Mark:	THOMAS (‘the Trade Mark’)
Applicant:	Gardner Denver Thomas, Inc.  Ltd (‘the Applicant’)
Filing Date:	26 September 2008
Specification:	Class 7: Vacuum pumps, liquid pumps, air and gas compressors, blowers; parts and accessories for all the aforesaid goods (‘the Applicant’s Goods’)
Endorsement:	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. Provisions of subsection 41(5) applied

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 18 November 2010.

   3. The Opponent filed a Notice of Intention to Oppose on 7 February 2011 (‘the Notice’). I note that this opposition matter commenced prior to changes made to the Act, effective 15 April 2013. At this time there was no requirement for the Opponent to file a Statement of Grounds and Particulars or for the Applicant to file a Notice of Intention to Defend. [1]

   [1] The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduced the Statement of Grounds and Particulars and the Notice of Intention to Defend and this statute came into force on 15 April 2013.

2. In due course the parties filed evidence in support of the opposition and evidence in answer.

3. This opposition matter has been suspended numerous times because the parties were trying to reach an agreement. It seems that no agreement was reached and the matter eventually came before me, a delegate of the Registrar of Trade Marks, on 22 February 2018. Francesca Colubriale, assisted by Khajaque Kortian of Spruson and Ferguson, made oral submissions on behalf of the Applicant. Russell Waters of Phillips Ormonde Fizpatrick made oral submissions on behalf of the Opponent. Each party also filed written submission in accordance with my directions prior to the hearing. 

   Grounds of Opposition and Onus

4. The Notice specifies grounds of opposition under sections 39, 41, 42(a), 42(b), 43, 44, 58, 58A, 59, 60, 61, 62(a), 62(b) and 62A of the Act. However, the Opponent has subsequently indicated both in its written submissions and during the oral hearing that it is pressing the opposition grounds under sections 41 and 44 of the Act only. For the sake of completeness I find that the remaining grounds in the Notice have not been established.

5. The Opponent bears the onus of establishing a ground of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

6. The date at which the rights of the parties are to be determined is 26 September 2008 being the filing date of the trade mark application. If I am satisfied that the Opponent has established either of the remaining grounds of opposition it is not necessary that I decide the other ground.

   Evidence

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].

7. The parties rely on the following evidence:

   Evidence in support

   • Declaration of Dr René Schulz (Team Manager for Patents of the Opponent) made on 4 November 2011 with Exhibits RS-1 to RS-7 (‘Schulz Declaration’)

   Evidence in answer

   • Declaration of Keri McNeill (Manager Sales of the Applicant) made on 20 September 2012 with Exhibits KM-1 to KM-5 (‘McNeill Declaration’)

   Discussion and Reasons

   10. At the time the application was accepted, section 41 of the Act relevantly provided[4]:

   [4] Section 41 was repealed and re-enacted by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The changes to section 41 clarify that the presumption of registrability does apply to section 41.

   41 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 so 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 to any extent 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.

   11.     However, as for any other ground of opposition the onus is on the Opponent to make its case under section 41. Therefore, the Opponent must establish that the Trade Mark is not capable of distinguishing the Applicant’s Goods.

   12.     The approach to whether a trade mark is inherently adapted to distinguish was considered by Kitto J in the case of Clark Equipment Co v Registrar of Trade Marks (‘Clark’)[5]

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   …

   [T]he question [is] whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. ^[6]

   [5] (1964) 111 CLR 511.

   [6] Ibid, at [513–514].

   13.        More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[7] noted the following part of Kitto J’s test:

   in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess

   [7] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

   14. In broad terms the Opponent argues under this ground that the Trade Mark is not capable of distinguishing the Applicant’s Goods and that the evidence filed during the examination stage was not sufficient to accept the Trade Mark for possible registration under the provision of section 41(5) of the Act. Accordingly, it says the application for the Trade Mark must be refused.

   15.     It is not whether other traders are currently using that name in the course of trade that I must consider, but rather, in the words of Kitto J: “the common right of the public to make honest use of words forming part of the common heritage, - for the sake of the signification they ordinarily possess”.[8] An Internet search for uses of the Trade Mark can be useful, but it is by no means decisive in deciding whether or not a ground for rejection under section 41 should apply.

   [8] See Clark (1964) 111 CLR 511 at 514.

   16.     When I consider the likelihood that another trader with the name ‘THOMAS’ would wish to use the name in connection with his or her goods and/or services. I find that the more common the surname, the less inherent adaptation it will have. This is not conclusive however as the question of whether a surname is common in terms of its numerical value, that is the frequency of its occurrence in the Australian population, is only one of the factors that I should consider. Other factors (specific to this matter) include:

   ·The nature of the goods and whether they are specialised or found on the shelves of big hardware stores.

   • Whether the Trade Mark has other meanings that potential purchasers would attribute to it in terms of the Applicant’s Goods.
   • Is the market for the Applicant’s Goods highly regulated such that the Applicant’s Goods cannot be easily produced?
   • Is it commonplace for other traders to use a surname in connection with the goods? For example a legal firm typically adopts the names of the partners as the badge of origin for the legal services.

   17.     I am satisfied that ‘THOMAS’ is an Australian surname and around the time this opposition commenced it occurred 27,276 times on the Australian electoral roll.

   18.     The Applicant’s Goods are vacuum pumps, liquid pumps, air and gas compressors, blowers and parts and accessories for all the aforesaid goods. I do not consider these goods to be specialty items but I do think they would be the type of goods available for sale anywhere from large hardware stores such as Bunnings® or Home Hardware® to more specialty stores supplying dental supplies.

   19.      I note that the Applicant states that the ‘Thomas Products’ are available for sale to original equipment manufacturers. However its goods are not confined to those trade channels. My consideration must take into account all the trade channels that other traders of like goods would use.

   20.     That said, ‘THOMAS’ is a common Australian surname and a recognised given name. I cannot see potential purchasers attributing another meaning to the Trade Mark.

   21.     The manufacture of the Applicant’s Goods is not highly regulated and nothing in the evidence supports the idea that there may be obstacles to the production of the Applicant’s Goods.

   22.     In my opinion, the Applicant’s Goods are quite broad and it would be quite an undertaking to determine that it was commonplace for other traders to use a surname in connection with the Applicant’s Goods. However, I am satisfied it is reasonably likely that other traders would desire (without improper motive) to use a surname in connection with at least some of the Applicant’s Goods.

   23.     Considering the multi-layered factors above I am satisfied that the ordinary signification of the Trade Mark is that of a surname and that it is one that other traders will desire to use in connection with their own similar goods.

   24. Accordingly, I conclude that a prima facie case for the ground of opposition under section 41(5) is established.

   25. In order to decide whether the Trade Mark may nonetheless be registered under the provisions of section 41(5) I turn to the evidence.

   26.      The examiner considered a declaration by Keri McNeill dated 10 September 2010 (‘McNeill 2’) and I note that this has been filed in evidence by the Opponent and can be found in Exhibit RS-4 to the Schulz Declaration.

   27.     In his declaration Mr Shultz states:

   Upon reviewing Exhibits A and B to the Mc Neill declaration, I did not locate any examples of use of the trade mark THOMAS per se which is the Opposed trade mark.

   In each instance, the trade mark THOMAS appears with a device above it and the words A Gardner Denver Product beneath the word THOMAS.

   Further, no evidence has been given as to the date of marketing material provided in Exhibit A and there is no Australian contact information on the material which might be expected if the marketing materials were circulated in Australia.[9]

   [9] Shultz at, [19] – [20].

   28.     I have considered the evidence in McNeill 2 and for brevity I am unable to find any use of the Trade Mark applied for. This declaration shows only use of the Applicant’s  trade mark. I am not satisfied on the basis of that declaration that the Trade Mark meets the provisions of sub-s 41(5)(b). Thus, I turn to the Applicant’s evidence filed in opposition proceedings.

   The Applicant’s Evidence

   29.     Keri McNeill is employed by Gardner Denver Industries Australia Pty Ltd as Manager Sales of the Thomas division and she has provided evidence on behalf of the Applicant. In the McNeill declaration she says:

   Gardner Denver Australia is a related company of Gardner Denver Thomas, Inc. Both companies are wholly owned subsidiaries of Gardner Denver, Inc.

   …

   I was employed by Thomas Industries Australia from June 2000 until July 2005 when the parent of Thomas Industries Australia, Thomas Industries, Inc., was acquired by Gardner Denver, Inc., the parent of the Applicant. In connection with the acquisition, Thomas Industries Australia Pty Ltd subsequently changed its name to Gardner Denver Industries Australia Pty Ltd…on 28 February 2007…

   Thomas Industries Australia was incorporated on 26 April 2000 and has promoted and distributed Thomas Products in Australia on behalf of the Applicant or its predecessors in title, including Thomas Industries, Inc., since May 2000.[10]

   [10] McNeill, [6] to [7].

   30.     Ms McNeill also says:

   The Applicant and its predecessors in title have been manufacturing and distributing pumps and compressors for OEMs (original equipment manufacturers) and end users under or by reference to the trade mark ‘Thomas’ (‘Thomas Products’) since (at least) 1953. The current range of Thomas Products includes pumps and compressors for many applications including laboratory equipment, medical equipment and beverage dispensing equipment. Thomas Products are currently sold in (at least) the United States, Canada, Europe, the United Kingdom, Asia, Australia, and South America.[11]

   [11] McNeill, [4].

   31.     At paragraph 8 of the McNeil Declaration, Ms McNeill refers to the contents of Exhibit KM-2. She claims that the exhibit contains emails sent by her, or her colleagues, on behalf of Thomas Industries Australia to its existing and potential customers from 2002 in respect of ‘Thomas Products’ (this is a general reference and these are not explicitly claimed as being the same as the Applicant’s Goods).

   32.     The problem with these emails is that they do not show use of the Trade Mark applied for. In each instance the product information sent with the emails contains the trade mark (the ‘Thomas Pumps and Compressors trade mark’). In a few of these emails the writer refers to a customer query about a ‘Thomas model’ but for the purpose of section 41(5) this is not sufficient to show use of the name ‘THOMAS’ as a trade mark. It is plainly evident that the other aspects of the Thomas Pumps and Compressors trade mark (above) are not able to be reproduced in the text of an email.

   33.     Exhibit KM-3 to McNeill is a copy of a tax invoice for a ‘Diaphragm Comp/Vac Pump’ which falls within the Applicant’s Goods but the trade mark appearing on this invoice is:

   34.     Exhibit KM-4 to McNeill is a list of the principal subsidiaries of Gardner Denver, Inc. as at December 31, 2011 and does not contain any trade mark representation that has a ‘THOMAS’ element.

   35.     Exhibit KM-5 to McNeill is a copy of pages from the ‘ and ‘ websites as at 17 September 2012. Ms McNeil says, at paragraph 12 of her declaration, that these websites were a vehicle to promote the Applicant’s ‘Thomas Products’.

   36.     The webpages in KM-5 contain the following trade marks: and. There is one instance where I can see the name ‘THOMAS’ applied to what I assume is one of the Applicant’s pumps or compressors, and it appears on the brochure called ‘Pump and Compressor Solutions for OEM Customers Worldwide’. Even then, ‘THOMAS’ is applied to these goods with a device element as shown here:.

   37.     I also note that on most occasions when these webpages mention ‘THOMAS’ in plain text they are referring to ‘Thomas’ as the company name. On the very last page of Exhibit KM-5 ‘THOMAS’ appears in a trade mark form but it is shown with the red device element over the letters M, A and S. (See the last representation in the paragraph above).

   38.     The McNeill declaration also provides at paragraph 11 the ‘total sales of Thomas Products in Australia’ between the years 2000 and 2011 (excluding 2002). These sales are impressive but I also note that the unit price of the Applicant’s Thomas products, which may include the Applicant’s Goods, is high and ranges between $300 and $3,000 per item. However, it is not clear what products have been sold in Australia and which of the Applicant’s trade marks was used to generate these sales.

   39.     Having considered all of the  evidence, I have no doubt that the Applicant, or its predecessors, have been selling ‘Thomas Products’ in Australia, however, I am not satisfied that the Trade Mark is capable of distinguishing the Applicant’s Goods from those of other traders. This is because the evidence does not show that the Applicant has used the name ‘THOMAS’, per se, to such an extent that it can act as a badge of origin for the Applicant’s Goods.

8. The ground of opposition under s 41 of the Act is established.

   Decision

   41. At the time the application was accepted section 55(1) of the Act provided:

   (1)  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.

   42.     Given the Opponent has established a ground of opposition. I refuse to register trade mark application number 1264811.

   Costs

   43.     The parties sought costs. As the successful party, the Opponent is entitled to costs. In respect of Trade Mark 1264811 I award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995.

   Cristy Condon
   Hearing Officer
   Trade Mark and Designs Hearings & Oppositions
   21 June 2018