TWM Imports Pty Ltd v Hangzhou Great Star Industrial Co., Ltd

[2018] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by TWM Imports Pty Ltd to registration of trade mark application 1731813 (6, 8, 9, and 20) – MILLERS FALLS (Fancy) - filed in the name of Hangzhou Great Star Industrial Co., Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Andrew Sykes of Counsel instructed by Tom Winter, Solicitor

Applicant: Written Submissions by Griffith Hack

Decision:

2018 ATMO 61

Trade Marks Act 1995 (Cth) - Section 52 opposition: Section 52 opposition: s 60 considered – ground established – registration refused

Background

1.  This is an opposition brought by TWM Imports Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Hangzhou Great Star Industrial Co., Ltd (‘Applicant’). 

Application Number:

1731813

Filing Date:

2 November 2015

Goods:

Class 6: Joists of metal; Hooks (metal hardware); Bolts of metal; Clothes hooks of metal; Ironmongery; Locks of metal, other than electric; Vice claws of metal; Tool boxes of metal, empty; Tool chests of metal, empty; Latticework of metal; Sleeves (metal hardware); Clips of metal for cables and pipes; Door scrapers; Vice benches of metal; Rings of common metal for keys; Padlocks; Silver solder; Soldering wire of metal; Washers of metal; Box fasteners of metal; Shims; Brads; Screws of metal; Pins (hardware); Rivets of metal; Nuts of metal; Couplings of metal for chains; Fittings of metal for windows; Fittings of metal for furniture; Hooks of metal for clothes rails; Bands of metal for tying-up purposes; Bindings of metal

Class 8: Abrading instruments (hand instruments); Agricultural implements, hand-operated; Garden tools, hand-operated; hand tools, hand-operated; Lifting jacks, hand-operated; Trowels; Trowels (gardening); Knives; Scissors; Graving tools (hand tools); Table cutlery (knives, forks and spoons)

Class 9: Measures; Rulers (measuring instruments); Clinometers; Measuring apparatus; Plumb bobs; Plumb lines; Automatic indicators of low pressure in vehicle tires (tyres); Batteries, electric; Barometers; Measuring devices, electric; Protection devices for personal use against accidents

Class 20: Furniture; Display stands; Racks (furniture); Shelves for storage; Containers, not of metal (storage, transport); Bins, not of metal; clips, not of metal, for cables and pipes; Work benches; Vice benches, not of metal; saw benches (furniture); Signboards of wood or plastics; Coathooks, not of metal; Bolts, not of metal; Letter boxes, not of metal or masonry; Tool handles, not of metal; House numbers, not of metal, non-luminous; Hooks, not of metal, for clothes rails; Furniture fittings, not of metal; Curtain rings; Nuts, not of metal; Curtain holders, not of textile material; Curtain rollers; Curtain rails; Curtain rods; Curtain hooks; Curtain tie-backs; Clothes hooks, not of metal; Stools

(collectively ‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

Endorsements:

Evidence and/or other circumstances provided under subsection 41(4).

2.  Following the examination process, the application’s acceptance for possible registration was advertised on 11 August 2016 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 6 October 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 25 October 2016. The SGP raised grounds of opposition under ss 42(b), 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 30 November 2016.

Evidence and Submissions

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 4 March 2017.  This evidence consists of a declaration made on 7 February 2017 by Thomas William Minnett, Managing Director of the Opponent, with Annexures A to F (‘Minnett 1’). 

4.  The Applicant filed Evidence in Answer (‘EIA’) on 4 July 2017.  This evidence consists of a declaration made on 3 July 2017 by Chi Xiaoheng, Chief Executive Officer of the Applicant, with Exhibits CX-1 to CX-4 (‘Xiaoheng Declaration’). 

5.  The Opponent filed Evidence in Reply (‘EIR’) on 7 September 2017.  This evidence consists of a declaration made on 5 September 2017 by Thomas William Minnett (‘Minnett 2’),  a declaration made on 4 September 2017 by Bruce Andrew Yarwood, an employed salesperson of the Opponent, with Annexure BAY-1 (‘Yarwood Declaration’), a declaration made on 1 September 2017 by Paul John Ostwald, Contract Support Officer for Moreton Bay Shire Council (‘Ostwald Declaration’), and a declaration made on 1 September 2017 by Thomas Paul Winter, legal practitioner representing the Opponent, with Annexures TW-1 to TW-4 (‘Winter Declaration’). 

6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 5 October 2017 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 4 April 2018 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 1 February 2018 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 20 March 2018 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 8 March 2018 (‘Applicant’s Submissions’) at the same time indicating that it would not be present at the oral hearing.  At the hearing Andrew Sykes of Counsel instructed by Tom Winter represented the Opponent, appearing in person.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

8.  The Opponent is a company that was incorporated in 1993 that operates in the tool and machinery sector. The Opponent is the applicant for the trade mark listed in the table below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark are sought to be registered are collectively referred to as the (‘Opponent’s Goods’). 

Number	Trade Mark	Priority Date	Goods
1820703	MILLERS FALLS	17 Jan 2017	Class 6: Metal cattle crushes; metal sheep lick feeder; vehicle ramps of metal; oil drainage containers of metal; metal brackets; metal rails; bars of metal; bars for metal railings; metal scaffolding; metal holder for rolls of plastic wrap; metal stand for metal drums; metal saw stands; plaster board sheet lifters of metal; metal stands for metal lathes; portable tool boxes of metal; metal storage boxes; metal storage racks; metal gun safes; metal stirrer blades for use with stirrer power tools; metal cages for wild animals; metals stands with rollers; Class 7: Power tools; electric power tools; portable electric power tools, including circular saws, belt sanders, disc sanders, nibblers, rotary hammers, polishers, metal cutting shears, stirrers and drills; hydraulic power tools; hydraulic presses; hydraulic jacks; loading cranes; air compressors; cement mixers (machines); hydraulic log splitters; log splitters (machines); post hole diggers (machines); earth augers (machines); star picket drivers (machines); stump grinders (machines); jack hammers (machines); drill blade sharpeners (machines); saw blade sharpeners (machines); metal blade sharpeners (machines); meat cutting bandsaws (machines); meat mincers (machines); log saws (machines); wood chippers (machines); trench diggers (machines); sprayers (machines); engine driven water pumps; generators; engine driven generators; lawnmowers (machines); machine motors; agricultural apparatus (other than tractors), including hay bale spears, bucket chain ditching machines, rotary tillers, tillers, drag harrows, disc harrows, grader blades, rippers, levelling bars, subsoilers, carry-alls, spreaders, stone burriers, cultivators, tractor buckets, tractor scoops, lawn aerators, tractor trailers, tractor tipping trailers, rotary mowers, box blades, tractor hay rakes, rotary sieves, tractor landscaper rakes, tractor land rakes, trolley sprayer; fork lift attachments for front-end loaders; stands for engines; cleaning brushes (parts of machines); vehicle lifts; vehicle positioning apparatus; vehicle parking apparatus; pumps for changing oil (electric); high pressure washers; vacuum cleaners; sand blast cleaners (machines); electric hoists; vibrating plates (machines); drill presses (machines); bench grinders (machines); machines for rolling and bending metal; machines for bending metal pipes; metal lathes (machines); chain saw sharpeners (machines); polishing discs (parts of machines); exhausters being suction ventilators; hole saw drill bits for use with power drills; hydraulic rams; bearing pulley apparatus for use with hydraulic rams; Class 8: Hand tools, including screw drivers, spanners, ratchet wrenches, drive sockets, torque multipliers, tube benders, steel benders, bending brakes, screw thread taps, screw thread dies, rebar cutters, pulley and bearing separators; hand-operated jacks; hand-operated cranes; hand-operated star picket drivers; hand-operated post drivers; lawn sweepers (hand-operated); hand-operated engine levelers; hand-operated tools for tyre changing; hand operated vices; hand operated lever hoists; Class 9: Electrical apparatus (other than generators) for use in energy supply; electrical leads; electrical connections; electrical plugs; water proof electrical plugs; electrical sockets; water proof electrical sockets; electrical switches; electrical power adaptors; electrical power outlet boxes; jump cables; emergency jump start apparatus; battery testers; electric scales; floor scales; Class 11: electric cooling fans; electric fans for ventilation; ventilating fans; room fans; suction ventilators; hoses adapted for use with suction ventilators; Class 12: Trolleys (mobile carts); service trolleys; wheeled trolleys for supporting the human body during vehicle maintenance; forks for fork lift trucks; trailer dollies; wheel dollies; vehicle covers (fitted); pallet transfer trucks; jockey wheels for vehicles; vehicle wheels; pneumatic tyres for vehicle wheels; wheelbarrows; go-karts (motorised); Class 16: plastic wrap; Class 17: non-metallic flexible hoses; non-metallic pressure hoses; rubber stops; articles made of rubber for preventing movement of wheels; articles made of rubber for covering cables; carpark markers made of rubber; Class 19: Sand for use in sand blast cleaning; Class 20: Metal cabinets for industrial use; air hose reels (non-mechanical and not of metal); reels (not of metal, non-mechanical, for flexible hoses); work benches; Class 21: non-electric floor sweepers; wash tubs; storage boxes for household use; Class 22: Vehicle covers (not fitted); straps made of rubber

9.  Minnett 1 contains the claims/statements set out below.  In addition, at paragraph 5 it provides a list of goods for which the Opponent has continuously used the Opponent’s Trade Mark for and the year of first use.

·     The Opponent’s Trade Mark was first used by a company called Ingersoll Rand for various power tools in the 1970s and 1980s before being abandoned.  The Opponent was incorporated in 1993 and registered the business name ‘Millers Falls’ in 1994.

·     Minnett 1 provides evidence of the revenue earned by the Opponent from the sales of goods bearing the Opponent’s Trade Mark from 1996 onwards.  The Opponent also provides annual gross advertising expenditure figures for promoting goods under the Opponent’s Trade Mark. 

·     The Opponent has promoted its goods bearing the Opponent’s Trade Mark through product catalogues distributed by mail and trade fairs, flyers, printed advertisements and advertisements over the Internet.  The flyers were supplied by the Opponent as an addendum to product catalogues, in response to enquiries and as cross-promotional material accompanying invoices.  The Opponent’s Trade Mark is displayed on the packaging of the Opponent’s Goods.  

·     The Declarant first became aware of the Applicant in approximately 2016 when customers and staff drew his attention to advertisements appearing on the Internet in respect of a retail operator, Supercheap Auto, that had previously sold products branded with the Opponent’s Trade Mark and was now selling products branded with the Trade Mark.  Customers of the Opponent have indicated their confusion at the existence of product sold under the Trade Mark.

10.       Collectively the revenue of the Opponent from sales of goods bearing the Opponent’s Trade Mark is significant.  While advertising expenditure is obviously significantly less than the Opponent’s revenue and in certain years, quite limited, collectively the advertising expenditure from 1996 to the relevant date is not insignificant.

11.       Minnett 2 (in reply) questions the evidence in the EIA of the Applicant’s sales in Australia of goods under the Trade Mark.  It notes that the invoices/sales confirmation documents frequently refer to other trade marks or make no reference to the Trade Mark.  In addition 13 of the 16 documents that are annexed to the Xiaoheng Declaration and are said to be invoices are in fact sales confirmation documents which is not evidence of actual sales.  Minnett 2 is supported by the Yarwood Declaration and the Winter Declaration.  Mr Yarwood notes that the various codes on the invoice and sales confirmation documents annexed to the Xiaoheng Declaration actually refer to house brands of Supercheap Auto, the retailer, and hence these products would not have displayed the Trade Mark.  In the Ostwald Declaration, Mr Ostwald, a former employee of Supercheap Auto, gives evidence that supports the evidence of Mr Yarwood and states that during his time as an employee of Supercheap Auto (which ended in 2010) the company did not purchase any products from the Applicant bearing the Trade Mark.

12.       The Ostwald Declaration also notes that certain products annexed to the Xiaoheng Declaration and stated to be sold in Australia were in fact unlikely to be sold in Australia.  For example the Xiaoheng Declaration provides a photo of a tape measure said to be sold in Australia.  This tape measure uses exclusively imperial measurements and, according to Mr Ostwald, is thus very unlikely to be sold in Australia.

13.       Minnett 2 also notes that the Opponent sells a variety of hand tools, such as spanners, which are in direct competition with the hand tools sold by the Applicant under the Trade Mark, including spanners. 

The Applicant

14.       The Applicant is a company based in China.  It was established in 2001, while its predecessor (and now subsidiary) Hangzhou Great Star Tools Co. Ltd. was established in 1993.  

15.       The Xiaoheng Declaration contains the following claims/statements: 

·     The Applicant has filed applications for the Trade Mark in the USA, China and Canada, with the earliest applications being made in 2009.

·     The Applicant has used the Trade Mark in Australia since at least 2007 for goods, mostly being hand operated tools, such as screwdrivers, block planes, saws, and chisels.

·     Most of the goods sold by the Opponent under the Opponent’s Trade Mark are mechanical products and power tools while the goods sold under the Trade Mark by the Applicant are hand tools that are not sold under the same channel or purchased by the same class of consumer.

Grounds of Opposition, Onus and Standard of Proof

16. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of the abovenamed grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should this decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

17.       The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 2 November 2015 (‘relevant date’), being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

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

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 60

18. Section 60 of the Act is reproduced below:

Section 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.

19. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[4] 

[4] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

20.       In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used 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’.[5]  Her Honour 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 …[6]

[5] [2000] FCA 1335, [81].

[6] (1992) 33 FCR 302, 343.

21.       On the subject of reputation Kenny J 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 sales or turnover of goods sold under that 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 of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[7]

[7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

22. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[8] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[9]

[8] (2000) 50 IPR 1.

[9] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

23.       Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[10]

[10] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

24.       The Opponent has particularised the ground of opposition in the SGP as follows: 

At and before the Priority Date the Opponent had established a reputation in Australia in word trade mark MILLERS FALLS in relation to the Goods[11].

[11] defined as the Applicant’s Goods in this decision.

a)    The Opponent has continuously used the word trade mark MILLERS FALLS in relation to the same goods or goods that are the same kind of thing as the GOODS in Australia since 1993.

b)   The Opponent has developed such a reputation through significant sales of goods marked with the word trade mark MILLERS Falls in all states and territories over a significant period of time.

c)    Further particulars will be provided in the Opponent’s Evidence in Support.

Because of the Opponent’s reputation in the word trade mark MILLERS FALLS the use of the Trade Mark would be likely to deceive or cause confusion

1. The EIS demonstrates the longstanding use of the Opponent’s Trade Mark in respect of a variety of hand and power tools, including saws, polishers, angle grinders, drill kits and drill presses.  While sales and advertising of a particular product in any particular year may not have been particularly large, given the significant sales and some advertising of a wide variety of hand and power tools bearing the Opponent’s Trade Mark by the Opponent over a 20 year period, I am satisfied that at the relevant date the Opponent’s Trade Mark is likely to have acquired some reputation in the tools, machinery and hardware goods market.  While the level of advertising of goods bearing the Opponent’s Trade Mark is not high, I note that the Opponent does not retail its products directly to the general public, rather it is a wholesaler who supplies retailers (who may then choose to advertise the Opponent’s goods directly to the public).

   26.     The Applicant submits that the Registrar should discount the evidence of sales and advertising of products featuring the Opponent’s Trade Mark because the Opponent’s Trade Mark is used in conjunction with other marks and slogans, such as ‘TWM’ or ‘WORKER’.  The EIS shows the usage of the Opponent’s Trade Mark over a wide variety of goods, over a considerable period of time, in various configurations, including with the slogans/marks referred to above.  While the Opponent has used the Opponent’s Trade Mark in conjunction with various other slogans and marks, the question is ultimately whether the evidence demonstrates that the Opponent’s Trade Mark is acting, in its own right, as a badge of origin notwithstanding the presence of other indicia[12] and then whether the Opponent’s Trade Mark has the asserted reputation under s 60(a).

   [12] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 425.

2. I do not accept the Applicant’s submissions that the various goods sold by the Opponent are not sold by reference to the Opponent’s Trade Mark, nor that by reason of the use of other marks on the packaging the Opponent’s Trade Mark lacks reputation.  When considering the evidence of the packaging (and advertising) featuring the Opponent’s Trade Mark I find that the Opponent’s Trade Mark is acting as a badge of origin in its own right and (given its longstanding use across a large number of goods in the tools, machinery and hardware goods market) would have acquired a reputation in its own right in that market.

3. It is not sufficient that the Opponent merely establishes that its trade mark has a reputation. I must also be satisfied that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[13]

   [13] (1937) 58 CLR 641, 658.

4. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[14]

   [14] [1979] RPC 410, 423 (citations omitted).

   30. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[15]

   [15] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are applicable to s 60 of the Act.

   31.       In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[16]

   [16] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

   32.       In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[17]

   [17] [2012] ATMO 124 at [40].

   33.       In the present case the Trade Mark and Opponent’s Trade Mark are essentially identical.  While I accept the Applicant’s evidence that its present use of the Trade Mark is mainly in hand tools and much of the Opponent’s sales and reputation is in respect of more expensive and complex power tools purchased by a different class of consumer the Trade Mark is sought to be registered for a broad range of goods including hand tools, electric tools and other goods used in wood and metal work.  There is also clearly some cross-over in the goods sold by both parties; indeed both parties have sold essentially identical products to the retailer Supercheap Auto.  Furthermore, having considered the evidence of both parties, it appears to be common for trade marks used in respect of power tools to also be used in respect of hand tools and vice versa, such that a consumer familiar with a power tool brand could see the same brand used in respect of hand tools and think that the products were offered by the same entity.  This is particularly the case in respect of smaller power tools operated by hand, such as power drills and screwdrivers.

   34.       I consider that consumers familiar with the reputation of the Opponent’s Trade Mark and its use across a wide variety of hand and power tools over a 20 year period in Australia are also likely to purchase goods that fall within the Applicant’s Goods.  I consider it likely that a number of those persons would see the Trade Mark used on any one of the Applicant’s Goods and be caused to wonder whether it might not be the case that goods bearing the Opponent’s Trade Mark and goods bearing the Trade Mark come from the same source.

   35. I find that the use of the Trade Mark for the Applicant’s Goods would be likely to deceive or cause confusion. I find that the Opponent established the ground of opposition pursuant to s 60 of the Act.

   Decision

   36. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

   Costs

   37. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   1 May 2018