Univar Inc v Urban Republic Pty Ltd

[2020] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Univar Inc. to registration of trade mark application number 1863409 (class 35) – Hexagonal device - in the name of Urban Republic Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: No submissions Applicant: No submissions
Decision:	2020 ATMO 69 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 58, 60 and 62A – s 44 established – registration refused

Background

1. These written reasons concern an opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth).[1] On 9 August 2017 (‘Relevant Date’), Urban Republic Pty Ltd (‘Applicant’) applied for registration of a trade mark, details of which follow:

   Trade Mark:    (‘Trade Mark’)

   Specification of services:     Class 35: Distribution of goods (not being transport services) and wholesale of goods; Retailing of goods (by any means) (‘Applicant’s Services’)

   [1] All references to a Section in these reasons are references to sections of the Trade Marks Act 1995 (Cth).

2. The Trade Mark was examined by this office, accepted for possible registration and advertised for opposition purposes. On 2 March 2018 Univar Inc. (‘Opponent’) filed notice that it intended to oppose registration of the Trade Mark, and then within a month filed a Statement of Grounds and Particulars (‘SGP’) offering the outline of its case. This office gave the SGP to the Applicant, who responded on 24 May 2018 with notice that it intended to defend its Trade Mark from opposition.

3. The Opponent filed evidence in support on 31 August 2018 then the Applicant filed evidence in answer on 7 December 2018. The Opponent did not take the opportunity afforded to it by this office to file evidence in reply. This office then invited either party to seek an oral hearing or file written arguments. Each did neither. The matter was set down to be decided on the papers and has been allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks.

Evidence

1. The evidence filed consists of the following declarations:

   Evidence in support

   Cindy Caditz, Legal Counsel for the Opponent, made 30 August 2018 with exhibits JC-1 to JC-6

   Evidence in answer

   Ai Lin Yong, Managing Director of the Applicant, made 7 December 2018 with exhibits ALY-1 and ALY-2

2. The Opponent’s evidence provides a significant amount of detail in relation to the Opponent’s business activities. This information would go to several of the available grounds of opposition in its SGP, but it unnecessary for me to bring them out in any detail here since I have decided the opposition in its favour on the basis of its earlier registered trade mark. It is enough to note that the evidence establishes that the Opponent is a very large distributor of chemicals and ingredients across the world, including Australia.

3. The Applicant’s evidence asserts that it began trading in 2009 under the plain word mark URBAN REPUBLIC, distributing decorative boards and panels for caravans. No corroborating material supporting this claim has been offered, though nothing in particular is likely to turn on this aspect of the Applicant’s history. The next assertion is that the Applicant started using the Trade Mark in September 2015 in relation to ‘decorative boards and panels, plywood, timber for furniture frames, polyester fabric, white boards and electronic products and accessories’. This assertion finds limited support in the two invoices included in evidence. The first, dated 4 November 2016, was for polyester fabric being sold to what is presumably a caravan manufacturer or upholsterer. The second, dated 3 November 2016, appears to relate to acrylic panelling and trim. The quantity of goods and price in the second invoice are negative. These negatives are not explained, though it may indicate that the goods were not in fact sold to the recipient. The declarant then annexes an extract from the Applicant’s website as it appeared on 7 December 2017, illustrating several categories of goods: decorative panels, plywood, white boards, timber, polyester and electronics. The Applicant’s evidence in answer finishes with statements from the declarant that the Applicant was not aware of the Opponent prior to the commencement of this opposition, and that there have been no instances of actual confusion brought to its attention.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A. The onus is on the Opponent to establish one or more of those grounds on the balance of probabilities.[2] The rights of the parties are determined as they existed at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Discussion: s 44

1. Since registration of the trade mark is only in relation to services, s 44(2) is relevant to this ground of opposition. I have included this provision below:

   44  Identical etc. trade marks

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. There are four main elements to s 44(2), all of which require there to be another mark that has been registered or applied for with this office. The Opponent has nominated two of its own trade marks as being of relevance to this ground of opposition. Since I have found that s 44 is established in relation to registration number 952458, it has not been necessary to consider whether it is also established in relation to registration number 976617. The relevant details of the former are:

   Trade Mark:   (‘Opponent’s Mark’)

   Specification of services:     Class 39: Distributorship services (transportation)  including distributorship services in the field of chemicals and pesticides, and chemical and pesticide applicators, and industrial and commercial chemicals; storage services, including storage of industrial chemical waste; transportation of industrial chemical waste; arranging for the disposal of industrial chemical waste including transportation of industrial chemical waste from generators thereof to authorised disposal sites (‘Opponent’s Services’)

   Priority date:  1 May 2003

3. The Opponent’s Mark is of course not in the name of the Applicant and its priority date is earlier than the Relevant Date, satisfying two of the four elements. Turning to whether the marks too nearly resemble one another, the test for whether marks are substantially identical is to be carried out

   side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or similarity that emerges from the comparison.[4]

   [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

4. To assist with this side by side comparison both marks appear together below:

1. There is no need to work through any lengthy analysis of similarities and differences here—these marks are substantially identical. That there are no documented instances of actual confusion to date has not been factored into my analysis of substantial identity. That is a relevant consideration when deciding on deceptive similarity, an aspect of this provision which I have not needed to consider.

2. The final element of this ground of opposition requires me to assess whether the Applicant’s Services are similar to the Opponent’s Services. The starting point is to note the definition in s 14(2):

   14  Definition of similar goods and similar services

   (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

3. The Opponent’s ‘Distributorship services (transportation)’ and the Applicant’s ‘Distribution of goods (not being transport services)’ are difficult to divide up conceptually. The fact that the respective claims to distribution/distributorship appear in different classes ‘does not in itself show [they] are not of the same description’.[5] The established test for whether services are ‘of the same description’ requires looking into their respective nature, uses and trade channels.[6] Both are concerned with ‘distribution’. The most apt definition of this word appearing in the Macquarie Dictionary relates to ‘the transporting, marketing, merchandising, and selling of a product.’ The Opponent’s claim, when read as a whole, appears to refer to transportation as an alternative definition of the claim, while the Applicant’s expressly seeks to disclaim ‘transport services’. In that context I consider the Opponent’s claim eclipses that of the Applicant. That is, the Applicant seeks registration in respect of distribution in respect of ‘the…marketing, merchandising, and selling of a product’ while the Opponent has registration for distribution in terms of ‘the transporting, marketing, merchandising, and selling of a product’. As such I find that this aspect of the Applicant’s Services are of the same description as the Opponent’s Services.

   [5] Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, 90 (Latham CJ).

   [6] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 243-4 (Burchett, Sackville and Lehane JJ).

4. As for the remaining claims in the Applicant’s Services, I find that the wholesale and retail of goods are similar to the Opponent’s claims to ‘Distributorship services’.[7]

   [7] Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615, 625 (Wilcox J).

5. The Applicant’s evidence suggests that because the Opponent’s business is focused on distribution of chemical products, and the Applicant focuses on caravan related goods, that they might be distinguished in this way. Such an approach is not available to me under this ground of opposition. I am required to take the parties’ respective claims as they appear in their specifications, and consider how each of these marks might properly be used within the bounds of those claims.[8] While the Opponent’s Services refer in quite specific terms to chemicals, pesticides and industrial chemical waste, the opening of the claim is not so qualified. It is cast in the very broad terms I have discussed above. Even if the Applicant was to amend its claim to the distribution of only the goods listed on its website, it could not overcome the breadth of the Opponent’s Services. As such, I have not invited the Applicant to pare back its claims.

   [8] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362 (Mason J).

6. Having found the services in comparison to be similar, and that being the final element of s 44, I find the ground of opposition has been established.

Decision

1. I am required to decide whether to refuse to register the Trade Mark having regard to the extent to which any ground of opposition has been established.[9] Since the Opponent has established the ground of opposition under s 44, I refuse to register the Trade Mark.

   [9] Trade Marks Act 1995 (Cth) s 55.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
29 April 2020