Trayon Campers Pty Ltd v Larkenlea Nominees Pty Ltd as Trustee for GCI Group

[2022] ATMO 92

TRADE MARKS ACT 1995

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

Re:Oppositions by Trayon Campers Pty Ltd to registration of trade mark application numbers 2015117 (6,12) - GCI TRAYTEC and 2015118 (6,12) - GCI TRAYTEC figurative - both in the name of Larkenlea Nominees Pty Ltd as trustee for GCI Group

Delegate:	Louise Tuohy
Representation:	Opponent:  Ben Fitzpatrick of counsel instructed by Spruson & Ferguson Applicant:  Sam Hallahan of counsel instructed by Davies Collison Cave
Decision:	2022 ATMO 92 Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds under sections 42(b), 58 and 60 nominated – sections 58 and 60 pressed – none established – trade marks to proceed to registration

Background

1. These oppositions are brought by Trayon Campers Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark applications in the name of Larkenlea Nominees Pty Ltd as trustee for GCI Group (‘Applicant’):

   Application Number:             2015117

   Trade Mark:  GCI TRAYTEC (‘Trade Mark 1’)

   Filing Date:  11 June 2019

   Specification:  Class 6: Canopies (structures) of metal; Canopies of metal incorporating fixed or movable slats; Containers made of metal for mounting on vehicles (not specifically adapted for vehicles); Lockable boxes of metal for tools (empty); storage units of metal for use in vehicles (not specifically adapted for vehicles); aluminium trays for mounting on vehicles (not specifically adapted for vehicles)

   Class 12: Aluminium trays for mounting on vehicles; aluminium canopies for mounting on vehicles, trays and canopies for single and dual cab vehicles; containers made of metal for mounting on vehicles (specifically adapted for vehicles); storage units of metal for use in vehicles (specifically adapted for vehicles)

   And

   Application Number:             2015118

   Trade Mark:   (‘Trade Mark 2’)

   Filing Date:  11 June 2019

   Specification:  Class 6: Canopies (structures) of metal; Canopies of metal incorporating fixed or movable slats; Containers made of metal for mounting on vehicles (not specifically adapted for vehicles); Lockable boxes of metal for tools (empty); storage units of metal for use in vehicles (not specifically adapted for vehicles); aluminium trays for mounting on vehicles (not specifically adapted for vehicles)

   Class 12: Aluminium trays for mounting on vehicles; aluminium canopies for mounting on vehicles, trays and canopies for single and dual cab vehicles; containers made of metal for mounting on vehicles (specifically adapted for vehicles); storage units of metal for use in vehicles (specifically adapted for vehicles)

   (Collectively the ‘Trade Marks’)

2. The trade mark applications were examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 12 February 2020 for Trade Mark 1 and 13 March 2020 for Trade Mark 2.

3. On 14 April 2020 the Opponent filed Notices of Intention to Oppose the registration of the Trade Marks, followed by its Statements of Grounds and Particulars (‘SGPs’) on 12 May 2020. On 30 July 2020 the Applicant filed Notices of Intention to Defend the opposition of the Trade Marks.

4. Thereafter the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5. Once the time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 24 May 2022 by way of video conference. Benjamin Fitzpatrick of counsel appeared for the Opponent. Sam Hallahan of counsel instructed by Carly Mansell and Nicholas Butera of Davies Collison Cave appeared for the Applicant.  Oral submissions were supplemented by the parties’ written submissions prior to the hearing.  

   Grounds of Opposition, Relevant Date and Onus

6. In the SGPs the Opponent nominated grounds of opposition under ss 42, 58 and 60 of the Act. In the hearing the Opponent only pressed the grounds under ss 58 and 60. The Opponent did not pursue the ground of opposition under s 42, which I treat as abandoned and have not considered.

7. The date at which the rights of the parties are to be determined is 11 June 2019 (‘Relevant Date’) being both the filing and priority dates of the Trade Marks.

8. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

   Evidence

9. The same evidence was filed in respect of each opposition.

   Evidence in Support

   ·Declaration of Scholtz van der Walt, Owner and Director of the Opponent, made on 28 October 2020 with Exhibits 1 to 10 (‘First van der Walt declaration’).

   Evidence in Answer

   ·Declaration of Cameron John Lawn, General Manager of the Applicant, made on 2 February 2021 with Exhibits 1 and 2 (‘Lawn declaration’).

   Evidence in Reply

   ·Declaration of Scholtz van der Walt, made on 15 June 2021 with Exhibit 1 (‘Second van der Walt declaration’).

10. As a preliminary matter the Applicant’s written submissions objected to inclusion of the Second van der Walt declaration arguing that it is not evidence in reply and contains no documentary evidence to support any statements made therein. At the hearing the Opponent argued that the Second van der Walt declaration is a response to Lawn declaration and goes to two issues, being instances of confusion relevant to the s 60 ground and the parties’ attendance at the same trade shows.

11. In this matter, I consider the absence of any documentary evidence significantly diminishes the probative value of the Second van der Walt declaration. Furthermore, the evidence in the Second van der Walt declaration does not affect the outcome of my decision for reasons which will become apparent.

    The Opponent

12. The Opponent is an Australian, family owned and run company based on the Sunshine Coast in Queensland.

13. The Opponent designs and manufacturers slide on campers (which can be mounted on the tray of a ute or on suitable trailers), along with related products and accessories.

    The Applicant

14. The Applicant is part of a group of companies, ‘the GCI Group’ based in Yatala, Queensland.

15. The Applicant designs and manufacturers alloy ute trays and canopies for affixing to single and dual cab vehicles.

    Legislative Background and Reasoning

    Section 60

16. Section 60 of the Act provides:

    60  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.

17. In the SGPs the Opponent particularises the s 60 ground of opposition as follows:

    The Opponent and its predecessor in title have used the mark TRAYTEK in Australia since around 2006 in relation to structures for mounting on motor vehicle trays and trailers and related products, including slide-on campers, and the mark has acquired a reputation in Australia. Because of that reputation use of the opposed mark would be likely to deceive or cause confusion.

18. To satisfy s 60 of the Act the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Marks. The Opponent must then establish that because of that reputation use of the Trade Mark would deceive or cause confusion.

19. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[3] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [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…13F10F[4]

    [3] [2000] FCA 1335, [81].

    [4] [1992] FCA 159, [118].

20. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[5]

    [5] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

21. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …15F12F[6]

    [6] [2000] FCA 1587, [91].

22. In the present case, the Opponent relies on its TRAYTEK trade mark for the purposes of s 60. In response, the Applicant’s position is that the Opponent has not met the evidentiary onus to prove a reputation in Australia for the TRAYTEK trade mark.

23. The Opponent manufacturers and sells slide-on campers and TRAYTEK campers is one of its models. The First van der Walt declaration states that ‘Tray-Tek Campers’ were originally developed by Darrell and Linda White in 2001, when they built a tin box for their 4 x 4 trayback ute and placed a tent on top. A plan was then sketched for a camper with a hard roof and a tailgate. The first prototype was built in 2005.  

24. Darrel and Linda White then registered the business name ‘Tray-Tek Campers’ on 22 October 2008. Exhibit 1 is an extract from the Australia Securities & Investments Commission showing details of the business name registration. On 23 November 2013 the Opponent purchased the ‘Tray-Tek Campers’ business and Exhibit 2 contains a redacted copy of the Business sale agreement.

25. The Business sale agreement included the website domain name Exhibit 3 provides three extracts of this website obtained from the internet archiving service ‘Wayback Machine’ which are dated between January 2011 and May 2013. The extracts show use of the TRAY-TEK trade mark in relation to slide on campers.

26. The First van der Walt declaration states that in 2013 the Opponent registered the domain name Exhibit 4 provides six extracts of this website obtained from the ‘Wayback Machine’ which are dated between May 2014 and April 2019. The extracts show use of the TRAYTEK trade mark in relation to campers. Exhibit 5 provides a copy of a tax invoice from Comworks Media & First In Int. Marketing for final payment (paid) for the website development for Traytek campers, dated 2 December 2013.

27. The First van der Walt declaration states that the Opponent has social media presence with Facebook and Instagram accounts created in 2012 and 2013 respectively. Exhibit 9 provides two extracts from the Facebook handle TRAYON CAMPERS dated in June 2015 with photos showing a slide-on camper bearing the TRAYTEK trade mark. One of these posts was taken at the Brisbane Caravan and Camping Super Show which was held between 3 to 9 June 2015.

28. The First van der Walt declaration provides further examples of the Opponent’s advertising activities. Exhibit 7 is a copy of a brochure that was distributed in Australia in 2014. Exhibit 8 are copies to two tax invoices from ‘Ink to Image’ dated August 2014 and September 2015. The 2014 invoice is for graphic design services and the 2015 invoice is for graphic design and production costs for 5000 brochures bearing the TRAYTEK trade mark.

29. The First van der Walt declaration states that the Opponent’s products are sold throughout Australia through its head office on the Sunshine Coast in Queensland as well as a number of authorised dealers including Melbourne Camper Trailers, Camperact, Get Ya Tray On and Barossa Offroad Campers & Accessories.

30. The First van der Walt declaration provides confidential sales figures for the goods bearing the TRAYTEK trade mark since 2014. Exhibit 6 are extracts from the Opponent’s internal accounts system for invoiced sales of TRAYTEK campers. The invoices are dated from January 2014 to March 2019 and show 9 sales of campers bearing the TRAYTEK trade mark to Australian customers and 1 sale to a customer in Switzerland.    

31. In my assessment of the evidence before me, I find that the TRAYTEK trade mark has only been used in relation to slide on campers. Advertising of the goods bearing the TRAYTEK trade mark is limited to a dedicated website, social media accounts, a trade show and brochures. However, no website metrics have been provided, the Opponent’s social media accounts are in the name of TRAYON CAMPERS and only show use of the TRAYTEK trade mark in two Facebook posts and the extent of its brochure distribution is not provided.

32. The sales figures provided do not provide a breakdown of sales up to the Relevant Date. The Opponent’s invoices dated between 2014 to 2019 show sales of campers bearing the TRAYTEK trade mark sold in Australia up the Relevant Date, however the invoices have sequential numbering, as such I can assess that only 9 units have been sold over a five year period.  Moreover, the Opponent’s claim that its products are sold through a number of authorised dealers is not supported by evidence showing these dealers have sold or promote the TRAYTEK branded campers.

33. In relation to the reputation held by the Opponent’s predecessors, no evidence of sales or advertising figures have been provided and the only evidence of advertising was through a website.

34. The market for camper trailers and other recreational vehicles is on the roll in Australia. In this case there is little evidence of customer appreciation of the TRAYTEK trade mark and there are insufficient sales and advertising from which a reputation may be inferred.

35. As such, the evidence before me is insufficient to establish that the TRAYTEK trade mark had acquired a reputation in Australia, as a matter of fact. It follows that consideration of s 60(b) becomes unnecessary and I find that the Opponent has not established this ground of opposition in respect of either application.

    Section 58

36. Section 58 of the Act provides:

    58  Applicant not owner of trade mark

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

37. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. In order to succeed under this ground of opposition the Opponent must establish three factors. These are:

    ·the trade mark relied upon by the Opponent is at least substantially identical to the Trade Marks;[7]

    ·the claimed goods are considered to be the ‘same kind of thing’ as the goods and/or services for which the trade mark relied upon by the Opponent has been used;[8] and

    ·a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the applications to register or (b) any actual use of the Trade Marks in Australia by the Applicant.[9]

    [7] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).

    [8] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

38. In the SGPs the Opponent particularises the s 58 ground of opposition as follows:

    The Opponent and/or its predecessor in title is the first user of the mark TRAYTEK in Australia in connection with goods which are identical to or of the same kind as the goods for which the opposed mark seeks registration. As such, the Applicant is not the owner of the opposed mark in Australia.

39. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[10] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

    [10] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

40. For the purpose of comparison, I have reproduced the respective trade marks below:

Trade Mark 1	Trade Mark 2	TRAYTEK trade mark
GCI TRAYTEC	TRAYTEK

1. On a side by side comparison there are clear differences between the respective trade marks. Trade Mark 1 contains the plain letters GCI and the word TRAYTEC, Trade Mark 2 contains the letters GCI inside an oval with flat sides and indented bottom, with the word TRAYTEC sitting under the indented bottom, all inside a rectangle. In both Trade Marks the word TRAYTEC ends in the letter C. In comparison the TRAYTEK trade mark is the plain word TRAYTEK which ends in the letter K. For these reasons, I find that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity.

2. Given all three requirements outlined at [37] of this decision must be satisfied in order to establish this ground of opposition, consideration of the remaining requirements is not required.

3. The Opponent has not established the ground of opposition under s 58 of the Act in respect of either application.

   Decision

4. Section 55 of the Act provides:

   55  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.

5. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark numbers 2015117 and 2015118 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the applications should be in accordance with the Court’s order or direction.

   Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here.

2. In respect of trade mark 2015117 I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Regulations.

3. In respect of trade mark 2015118 I award costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd [2001] ATMO 78.

   Louise Tuohy
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   9 June 2022