Titanium Caravans Australia Pty Ltd

[2022] ATMO 107

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2154481 (Class 12) – TITANIUM CARAVANS - in the name of Titanium Caravans Australia Pty Ltd

Delegate:

M. Cooper

Representation:

Applicant: Luke Merrick of counsel instructed by NextGen Legal Pty Ltd

Decision:

2022 ATMO 107

Trade Marks Act 1995 (Cth) – s 38 proceeding – proposal to revoke acceptance - s 41 and s 44 objections – whether application should not have been accepted – acceptance not revoked.

Background

1. This matter concerns a request by Titanium Caravans Australia Pty Ltd (‘the Applicant’) to be heard in relation to a proposal by the Registrar of Trade Marks (‘Registrar’) to revoke acceptance of its below trade mark application under s 38 of the Trade Marks Act 1995 (Cth) (‘the Act’):

Trade Mark No:	2154481
Trade Mark:	TITANIUM CARAVANS (‘Trade Mark’)
Filing date:	9 February 2021
Specification:	Class 12: Caravans; Mobile homes (caravans); Motor caravans; Vehicles in the nature of caravan. (‘Goods’)

1. On 27 April 2021, an adverse examiner’s report was sent to the Applicant in respect of the above application. It cited s 44 objections based on trade marks 1537980 and 2136184. In response, the Applicant filed the statutory declaration of Jason Grech, the Applicant’s Director, with annexures A to J. After consideration, the examiner was satisfied that this material established evidence of prior continuous use sufficient to accept the Trade Mark under the provisions of s 44(4). On 10 August 2021 a letter of acceptance was sent to the Applicant’s legal representative and the acceptance was advertised.

2. On 2 November 2021, a delegate of the Registrar wrote to the Applicant proposing to revoke the acceptance of the Trade Mark under s 38 of the Act (‘revocation letter’). The revocation letter further indicated that the revocation would occur within one month unless the Applicant responded with written submissions or requested to be heard. The nature of the s 41 and s 44 grounds for rejection are explained as follows:

   s41(3) of the Trade Marks Act:

   The primary element of the trade mark is the word "TITANIUM CARAVANS", titanium is an element with low corosion (sic), high density and strength. While it is not the most common element to make things like Caravans out of in their entirety, a consumer would none the less either believe upon seeing the words "TITANIUM CARAVAN" that the caravans either feature, or have a titanium element, rather than seeing it as a badge of origin prima facie.

3. And further:

   s44 of the Trade Marks Act:

   While I note evidence has been supplied in relation to a few of the citations supplied, trade mark 1093092 TITANIUM should have also been raised as a s44 ground for rejection, featuring a variety of similar claims, including automotive accessories/parts etc in class 12. In addition, upon reviewing the evidence supplied to overcome the other citations. The majority of the evidence is not substantially identical to the mark as applied for - instead featuring a "claw" or 3 striped line device. Evidence of use of a trade mark needs to be substantially identical to that being applied for. While some of the evidence does feature the wording TITANIUM CARAVANS" (sic) without this device, it is relatively little in comparision (sic) to that with the device featured. If/when revocation is completed, you will be supplied with an additional 15 months from the date of that report in order to overcome these issues. You will also be supplied with additional information on overcoming s41 grounds for rejection via evidence

4. The Applicant requested a hearing on the proposed revocation and the matter came before me, as a delegate of the Registrar, on 18 May 2022 by video conference. The Applicant was represented by Luke Merrick of counsel, instructed by Roxanne Hart of NextGen Legal Pty Ltd.

5. Written submissions were provided prior to the hearing in accordance with directions. Reference was made to the statutory declaration of Joseph Grech and associated annexures (provided at the examination stage), the examination records as well as the revocation panel’s deliberations.[1] In summary the Applicant contends that the s 41 and s 44 issues identified by the panel require factual inquiries which, on the material provided, the panel did not undertake, nor did they engage in any meaningful way with the relevant legal tests. Their deliberations reflect a mere difference of opinion and as such do not found a proper basis on which to revoke the acceptance. Addressing the requirements of ss 41 and 44 and the relevant authorities, the Applicant further contends that ‘Titanium’ is used in the Trade Mark in an allusive or metaphorical sense to indicate strength and light weight, and that the Goods are not relevantly similar to those of the trade mark 1093092 as identified by the panel. It follows, the Applicant submits, that I cannot be positively satisfied that the Trade Mark should not have been accepted.

   [1] Released to the Applicant following an application under Section 217A of the Act and appended to the submissions.

   Legislation

6. Section 38 of the Act provides as follows:

   Revocation of acceptance

   (1)     Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)       the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)       it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)     If the Registrar revokes the acceptance:

   (a)       the application is taken to have never been accepted; and

   (b)       the Registrar must examine, and report on, the application as necessary under section 31; and

   (c) sections 33 and 34 again apply in relation to the application.

7. Therefore, the Act provides a discretion to revoke an acceptance if I am satisfied that, having regard to all the circumstances at the time, it should not have been accepted and, if so, it is reasonable to revoke it, also taking into account all of the circumstances. The existence of a valid ground for rejection would indicate that a trade mark should not have been accepted.

   Section 41

8. Generally speaking, s 41 requires that a trade mark be rejected if it is not inherently adapted to distinguish (or is insufficiently inherently adapted to distinguish) the applicant’s goods and services from those of others.

9. According to the oft-cited statement of Kitto J in Clark Equipment Co v Registrar of Trade Marks, inherent adaptation to distinguish is to 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.[2]

   [2] [1964] HCA 55; (1964) 111 CLR 511, 514.

10. The above passage was approved by the majority in the High Court decision of Cantarella Bros v Modena Trading (‘Cantarella’),[3] describing the assessment as follows:

    determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

    As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, … Once the “ordinary signification” of a word ... is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[4]

    [3] [2014] HCA 48; (2014) 254 CLR 337 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

    [4] Ibid [70]-[71].

11. Having regard to the above tests, the ordinary signification of the Trade Mark is of a caravan made of titanium. While ‘titanium’ has an ordinary English language meaning,[5] it is not a direct reference to the composition of a caravan and its use in a descriptive sense does not mean it lacks capacity to distinguish.[6] There is no evidence it is a ‘sign’ ‘ordinarily used’ to indicate ‘the kind, quality, quantity, intended purpose, value … or some other characteristic’ of caravans. There is nothing in the material before me establishing or even suggesting that other traders might legitimately need to use ‘titanium’ in respect of their caravans for the sake of its ordinary meaning.[7] On this basis, I accept the Applicant’s submission that its use of ‘titanium’ is ‘evocative of strength’ and is therefore properly characterised as allusive or metaphorical in relation to the Goods.[8] In this context, a s 41 ground for rejection does not arise.

    [5] Macquarie Dictionary (online at 23 June 2022) ‘titanium’ (def 1) noun a metallic element, grey or silvery and lustrous, occurring combined in various minerals, and combining low density with high strength and resistance to corrosion, especially at high temperatures; used in metallurgy to remove oxygen and nitrogen from steel to toughen it, and as a structural material in aircraft and space vehicles.

    [6] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 310 [49], (1991) 30 FCR 326, 335 (Lockhart J); Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874, [23] (Hill J).

    [7] The examiner’s search report reveals several other trade marks which use ‘titanium’, most pertinently its use on several Ford car models, however this use is again allusive and not use of the word for its ordinary meaning.

    [8] Cantarella (n 3), [73].

12. Overall, considering all the circumstances at the time of acceptance of which I am aware, including the examiner’s file, the filed evidence and the presumption of registrability in s 33 of the Act,[9] the examiner’s conclusion that there was no s 41 ground for rejecting the Trade Mark seems sound. I am not satisfied that a ground for rejection exists under s 41 of the Act. It follows that I am not satisfied that the Trade Mark should not have been accepted on this basis.

    [9] As the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, at page 146, explained ‘if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour’

    Section 44

13. The s 44 ground for rejection requires findings that the trade mark applied for issubstantially identicalwith or deceptively similar to another registered (or sought to be registered) mark; is in respect of similar goods or closely related services; and has a priority date not earlier than that of the other mark/s. Even if these elements are satisfied, this ground for rejection may be overcome if the Applicant establishes that s 44(3) or s 44(4) apply.

14. File records show that the examiner considered several trade marks in this regard, however the adverse report on 27 April 2021 cited trade marks 1537980 and 2136184 (‘cited marks’). Trade mark 1537980, ‘Crusader Titanium’, specifies ‘non-motorised caravans’ in class 12. Trade mark 2136184, , specifies ‘Trailers (vehicles)’ in class 12. As previously noted, the Applicant provided the Grech declaration and associated annexures in response, satisfying the examiner that relevant prior use was established and s 44(4) applied. The Trade Mark was accepted and endorsed on this basis.

    Cited marks

15. In relation to the cited marks, both are owned by persons other than the Applicant and have priority dates earlier than the Trade Mark. I accept that the designated goods of both marks might be regarded as the same or similar to the Goods and the marks might be reasonably regarded as at least deceptively similar[10]. It is therefore necessary to also consider the application of s 44(3) or (4), as did the examiner.

    [10] Although I note cited mark 2136184 lapsed on 22 May 2022 so the s44 objection is in any event overcome.

16. Section 44(4) provides that, despite an adverse finding under s 44(1) or (2), ‘the Registrar may not reject the application because of the existence of the other trade mark’ if ‘satisfied that the applicant [has] continuously used [its] trade mark’ since before the priority date of the application to register the earlier mark.

17. To establish prior continuous use under s 44(4), while a particular quantum of use is not specified, something more than ‘slight’ evidence of use in the relevant period is required.[11] This however ‘does not mean in the case of a sale of goods, a sale every week or even every month’[12] but that the applicant has maintained use of the Trade Mark (as a trade mark) from before the registration date of the other mark and ending on the priority date of the Trade Mark. In this case the Applicant is required to demonstrate use of the Trade Mark in the period starting before 29 January 2013 (earliest registration date, for trade mark 1537980) up to 9 February 2021, the date of this application to register (‘the relevant period’).

    [11] Telstra Corporation v Next IP Distribution Pty Ltd [2012] ATMO 69, [55].

    [12] Smith Bartlet and Co v British Pure Oil, Grease and Carbide Co Ltd (1934) 51 RPC 157, 163 (Maugham J).

18. At the hearing the Applicant took me to several instances of Trade Mark use in the Grech declaration and its annexures. I have closely considered these materials. While some of the use shown is clearly use as a business name,[13] or use of the Applicant’s other trade mark 1962082 (‘the logo mark’),[14] I accept that the annexures demonstrate more than ‘slight’ use of ‘Titanium Caravans’ as a badge of origin in connection with the Goods over the relevant period.

    [13] See annexure B; Shahin Enterprises Pty Ltd v ExxonMobil Oil Corp [2005] FCA 1278 [73] (Lander J).

    [14] For example the company t-shirts at annexure I are clearly emblazoned with the logo mark.

19. In this context I note the following evidence:

    ·     A receipt dated 6 September 2012 for the purchase deposit on a ‘titanium caravan’ (annexure A);

    ·     Emails in September 2012 and January 2013 in which the owner introduces himself to dealers stating that he has ‘just opened Titanium Caravans’ and to which he attaches a slide show entitled ‘titanium caravans’ (annexure E) displaying his various caravan models.

    ·     Weekly ad performance data sent to [email protected] on 26 October 2012 from Carsales Network, for its ‘Titanium Rembrandt’ advertisement (annexure F). Other extracts from annexure F show advertising and promotion under the heading ‘Titanium Caravans’ and the promotion of Titanium Caravans on the Applicant’s website [15]

    ·     The first Wayback machine[16] capture is dated 20 August 2013 (annexure A) and displays ‘Welcome to titanium caravans’ underneath a picture of one of the Applicant’s caravans displaying the word ‘Titanium’.

    ·     Several Annexures[17] also show the Applicant’s Facebook page, headed ‘Titanium Caravans’ from which it advertises and promotes its caravans. Extracts are provided for each year, dated variously from 23 August 2012 until 1 November 2019, which display and promote the Goods. They also show the use of the words ‘Titanium Caravans’ on the side of two of the Applicant’s vehicles. While the Facebook pages and the caravans frequently also prominently display the logo mark, such use does not preclude appreciation of ‘Titanium Caravans’ from acting in its own right as a badge of origin for the Goods.[18] Additional use of the Trade Mark is shown for 2020 and 2021 in Google search results at annexure E and marketing materials at annexure F.

    ·     Letters from third party business associates of the Applicant who variously state that they promote Titanium Caravans ‘with great pride’ and that Titanium Caravans ‘is one of the popular names sought after by caravan owners for its high-quality finishing’ (annexure D). In 2017 a customer comment is displayed that ‘We are on the road again in our Titanium Caravan’ (annexure H).

    [15] The annexures demonstrate that the Applicant offered and promoted the Goods through the website: Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519; 87 IPR 300; [2010] FCA 664, [153] (Kenny J).

    [16] While I note various reservations as to the use of Wayback machine evidence, nothing before me contraindicates the relevance or dates of the material provided. I consider it probative of the issues before me and have accorded it due weight.

    [17] Particularly Annexure C, also Annexure G.

    [18] Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390, [186] (Allsop J).

20. Overall, I am satisfied that, in the context in which the phrase ‘Titanium Caravans’ appears in the materials provided by the Applicant, its use would generally have been understood by consumers as indicating a connection in the course of trade between the Goods and the Applicant. The evidence also establishes this use continued from 2012 (before the registration of the earliest cited mark) throughout the relevant period. The declaration also indicates significant and increasing sales figures over this period.

21. I am satisfied that the Applicant (and its predecessor) have used and maintained use of the Trade Mark in the relevant period, in relation to the Goods, and the examiner’s decision to apply s 44(4) was soundly based. While the revocation letter states that the Trade Mark use demonstrated was minimal and insufficient to justify acceptance under s 44(4), this finding is not reflected in the revocation panel’s considerations and on my assessment, assisted by the Applicant’s further submissions, the evidence indicates otherwise. In this context I am not satisfied that any error or unreasonableness in the examiner’s decision has been identified such as would warrant the Trade Mark’s revocation.

22. Therefore, taking into the circumstances that existed when the application was accepted, as previously noted, I am not satisfied that the Trade Mark should not have been accepted on this basis.

    Trade mark 1093092

23. The revocation letter states that the examiner should have, but failed to, cite trade mark 1093092 in this regard.

24. In relation to trade mark 1093092, as observed by the Applicant, an inspection of the examiner’s search report demonstrates that he did extract and consider this trade mark. He concluded that the goods/services were different.

25. The goods of the trade mark 1093092, for the word ‘Titanium’, are specified as follows:

    Class 9: batteries in this class including automotive batteries; automotive battery testing equipment in this class; none of the foregoing being goods containing titanium.

    Class 12: Automotive parts, equipment and accessories in this class; vehicle tyres and parts, equipment and accessories therefor; vehicle wheels and parts, equipment and accessories therefor; none of the foregoing being goods containing titanium.

26. Sub-section 14(1) of the Act defines goods as being similar to other goods if they are the same as those other goods or if they are of the same description as those other goods. This is to be assessed by reference to the nature and origin of the goods; the uses and intended uses of the goods and the trade channels through which they are bought and sold.[19] While trade mark 1093092 includes goods in the same class as those of the Trade Mark, it does not necessarily follow that they are the same or similar.[20]

    [19] See Re Jellinek’s Application (1946) 1A IPR 393, 403 (Romer J); Reckitt & Colman (Aust) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84, 94 (Dixon J).

    [20] Trade Marks Office Manual of Practice and Procedure Part 26, paragraph 26.4 ‘Classification is not necessarily the determining factor in considering the similarity of goods or services. Two similar trade marks may be registrable in the one class for goods which have no nexus of similarity.’

1. The Applicant contends that caravans and automotive parts (and the other goods) are different. ‘They do not compete with each other in the same market, a caravan is purchased for recreational activities whereas an automotive part is acquired for the purpose of servicing or enhancing a vehicle. A caravan would typically be acquired through a specialist dealer, whereas automotive parts can be acquired through a range of service providers.’ 

2. While caravans might include or use batteries, automotive parts, equipment and accessories, including wheels and tyres, it does not follow that they are the same or of the same description as caravans. As the Applicant submits, the nature of the goods is different. A caravan is a complete vehicle, not a ‘part’ or accessory put in or on a vehicle. A caravan is used by people for work or recreational purposes, not as a part for maintaining, repairing or accessorising a vehicle. While some parts and accessories might be available from caravan wholesalers or retailers, they are mainly sold through several different providers such as mechanics, tyre shops and auto retail stores. Overall, even if the Trade Mark and mark 1093092 are characterised as substantially identical, I do not consider that the Goods are the same or relevantly similar for the purposes of s 44. The examiner’s conclusion in this regard seems sound and I am not satisfied that there is a s 44 ground for rejecting the Trade Mark in relation to trade mark 1093092. It follows, taking into account the circumstances as they existed, and of which I am aware, at the time of acceptance, I am not satisfied Trade Mark should not have been accepted on this basis.

   Decision

3. For the above reasons and taking into account all the circumstances that existed when the application was accepted as previously noted,[21] I am not satisfied that the application should not have been accepted. Given this, it is unnecessary to proceed to consider whether revocation is reasonable. Accordingly I decide not to revoke the acceptance of the Trade Mark.

   [21] Paragraph 15

   Mary-Ann Cooper

   Oppositions and Hearings

   Trade Marks and Designs
   29 June 2022