Wagner Spraytech Australia P/L v Anest Iwata Australia P/L
[2009] ATMO 32
•15 May 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Wagner Spraytech Australia Pty Ltd to registration of trade mark application 1113062(7,8) - PAINT SMART AND BORDER DEVICE - in the name of Anest Iwata Australia Pty Ltd.
Delegate: | Claudia Murray |
Representation: | Opponent: Chris Round, Middletons, Law Firm, Melbourne Applicant: Michael Hall, of Counsel, instructed by Brett Doyle, Minter Ellison, Lawyers, Sydney |
Decision: | 2009 ATMO 32 Section 52 opposition: sections 42(b), 58 and 60 – opposition successful under sections 58 and 60 – application refused - costs awarded against applicant. |
Background
Anest Iwata Australia Pty Ltd, then known as Cormack Anest Iwata Pty Ltd (‘the applicant’) filed trade mark application number 1113062 on 11 May 2006, for the trade mark:
The application was filed in classes 7 and 8 of the International (Nice) Classification of Goods and Services in respect of:
Class: 7 Air compressors, airbrushes for painting, painting spray guns, painting pumps, paint tanks, airless spray units, automatic painting machines, electrostatic painting machines, flow coating machines and painting robots; parts for all the aforementioned goods
Class: 8 Hand tools and hand implements in this class; painting-related hand tools and hand implements in this class; parts and fittings in this class for all the aforementioned goodsNo grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. It was advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 14 September 2006.
On 12 December 2006, Wagner Spraytech Australia Pty Ltd (‘the opponent’) filed notice of opposition to registration of the trade mark. Nineteen grounds of opposition were listed in the notice.
Evidence in support, evidence in answer and evidence in reply were duly served and filed. On 9 September 2008, the Office received a request from the opponent for the opposition to be heard. After some delay, a hearing was held before me, as a delegate of the Registrar of Trade Marks, in Canberra, on 10 February 2009. Mr Chris Round of Middletons, Melbourne represented the opponent via video link. Mr Michael Hall of Counsel, instructed by Mr Brett Doyle of Minter Ellison, Sydney, represented the trade mark applicant by telephone.
Evidence
The evidence in relation to this opposition comprises:
Evidence in Support
ØStatutory declaration of John Stewart Elder Berwick, with Annexures 1 to 17, dated 28 June 2007 (‘First Berwick declaration’).
Evidence in Answer
ØStatutory declaration of Karl Andrew Isherwood, with Annexures A to J, dated 10 March 2008.
Evidence in Reply
ØStatutory declaration of John Stewart Elder Berwick, with Annexures 1 to 10, dated 26 June 2008 (‘Second Berwick declaration’)
A brief history of the Australian opponent company, which was first registered in 1977, can be drawn from the First Berwick declaration. It is one of a number of companies in the Wagner Group, all subsidiaries of Wagner Retail Holding AG, which was founded in Germany in 1947 by Joseph Wagner. Mr Berwick describes how the opponent operates two separate divisions. The Decorative Finishing Division provides paint application and redecorating equipment plus solar lamps for the Do-It–Yourself market as well as equipment for the machine application of paints, lacquers, plaster and render in the painting contractor business. The Industrial Solutions Division is a specialized provider of systems and components in industrial surface technology, offering high technology, high quality equipment and systems for the application of powder and liquid media.
Mr Berwick declares (at paragraph 7):
In the year 2000, the Wagner Group invented the trade marks “PAINT FAST. PAINT SMART” and “PAINT SMART”. The trade marks were designed to communicate the Wagner Group’s primary value proposition of using its product technology for clever and quicker painting and also achieving a superior finish. The trade marks were first used in the USA in the year 2000.
Mr Isherwood’s declaration in answer describes the adoption of the applied-for ‘PAINT SMART Logo’, which he says was principally created by him, in late 2005. Sales of products under the new logo began in 2006. Prior to this, the applicant had sold painting products and equipment under the trade mark CORMACK, but it was felt that this family name had ‘diminished relevance in the current market’. The new name and logo were developed ‘as a result of internal discussion about strengthening brand image, recall and penetration within the paint equipment industry.’[1]
[1] Statutory declaration of Karl Andrew Isherwood dated 10 March 2008, paras 3-5.
After the formal exchange of evidence, at the opponent’s instigation, the Registrar issued to the applicant a Notice Requiring Production of Documents, dated 8 August 2008. The notice required production of all documents relating to the applicant’s trade enquiries and searches made prior to its adoption of the opposed trade mark. The applicant supplied material in response to the notice on 5 September 2008, and this has been made available to the opponent. I will make brief reference to this material later.
Grounds of opposition
Before the hearing, the opponent indicated that, of the many grounds of opposition listed in its notice, it intended to rely only upon those under sections 42(b), 58, 60 and 62A, and would abandon the rest. In the event, given the subject application’s filing date of 11 May 2006, the application provision of new section 62A[2] (‘Application made in bad faith’) rendered it unavailable to the opponent, and at the hearing, Mr Round abandoned that ground as well. I will now deal with the remaining grounds of opposition pressed at the hearing, in the order they were argued by the opponent.
[2] Introduced into the Act by Item 35 of Schedule 1 to the Trade Marks Amendment Act 2006, which commenced on 23 October 2006.
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To succeed on this ground, absent any evidence of use by the applicant before the priority date of its application, (as is the case here), the opponent must be able to demonstrate use prior to that date, of the same or a substantially identical trade mark, in relation to the same goods.[3]
[3] Re Hicks Trade Mark (1897) 22 VLR 636.
From the outset, there was no dispute between the parties as to whether their respective goods of interest were anything other than what may fairly be described as ‘the same’. The identity of the goods being thus established, the remaining issues for determination were whether the opponent has used an identical, or substantially identical, trade mark on those goods, prior to the filing date of the application.
The accepted test for substantial identity involves side-by-side visual comparison of the relevant trade marks[4]. A finding of substantial identity means that ‘in a real sense a claim to proprietorship of the one [trade mark] extends to the other.’[5] In his submissions, Mr Round listed several Trade Marks Office decisions[6] which, he said, were on all fours with his argument that the opponent’s plain word trade mark PAINT SMART and the opposed PAINT SMART device trade mark were substantially identical. Mr Hall, for the applicant, argued to the contrary that the opponent’s trade mark was ‘not the same mark as the opposed logo.’
[4] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414-5.
[5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd, 31 IPR 375, at 391.
[6] For example: Warner-Lambert Co. v Harel (1995) 32 IPR 189, George Weston Foods Limited v Peerless Holdings Pty Limited [1999] ATMO 102 (8 October 1999).
I accept the opponent’s submissions upon this point. I do not see, in the get-up of the opposed trade mark, anything other than use of a stylized border device and word font, designed to draw the eye to the words PAINT SMART, which are the only words in the trade mark. It follows that these are the words by which the trade mark would be identified by the public. Mr Hall emphasized the applicant’s claims about the highly discerning nature of its particular customer base of painting ‘enthusiasts’. Nevertheless, I believe it would be a wholly unrealistic expectation of those customers to imagine that they would readily (or ever) assume any difference in derivation between painting equipment bearing the plain words PAINT SMART, and that bearing the same words presented in a border device. The trade marks are substantially identical.
The final matter for determination under section 58 was hotly debated at the hearing. This turned on whether the opponent did actually use the words PAINT SMART as a trade mark, prior to the applicant’s use of the opposed PAINT SMART device mark. Mr Hall argued that, despite the opponent’s claim that its parent company invented the trade mark in 2000 and first used it in the USA that year, its evidence did not demonstrate at any point use in Australia of the words PAINT SMART in anything other than a descriptive, non trade mark sense. He submitted that:
In the early uses of PAINT SMART by Wagner, there is no use as a badge of origin or as a distinguishing mark but [only uses] as an exhortation or slogan. They fall short of making a connection between the products and Wagner. At most they are blandishments or puffery designed to grab the attention of potential customers who want to paint smart.
The opponent, for its part, relied upon the two Berwick declarations and accompanying exhibits as providing conclusive evidence that the words were indeed used as a trade mark, and that their use commenced in Australia at a date earlier than the applicant’s filing date of 11 May 2006.
I have carefully considered the evidence and both parties’ submissions upon this issue. I agree with the applicant that much of the evidence shows use in advertising material of the opponent’s other trade mark slogan, PAINT FAST. PAINT SMART, and that the use in question is frequently in close conjunction with its house mark, WAGNER. The goods themselves appear to only bear the WAGNER name. However, I am satisfied that the evidence, and in particular the second Berwick declaration, does demonstrate a separate and continuing use of the words PAINT SMART on various forms of promotional material for the opponent’s painting tools and machines. The Second Berwick declaration dates this use from ‘Spring 2004’ onwards, and this is supported by the annexed examples of PAINT SMART brochures containing statements such as ‘Prices valid until 30 November 2004 or while stocks last’ and ‘Special offers valid from 5 June to 11 August 2006 or while stocks last’. As the opponent pointed out, use of the words PAINT SMART as a trade mark, rather than purely descriptive use, is reinforced in the brochures via a continuing SMART theme, with references to SMART DEALS, SMART TALK and SMART TIPS.
In Malibu West, Inc v Catanese [2000],[7] Finkelstein J made these remarks about trade mark ownership:
While a local trader can deliberately adopt a foreign trade mark not previously used in this country, such action described by Williams J in Re Registered Trade Mark "Yanx" (at 202) as "sharp business practice", the court is inclined to regard this practice with suspicion and to "frown on these borrowings from abroad" (Aston v Harlee Manufacturing Co at 400 per Fullagar J). This is especially so where one of the local trader's motives in adopting the foreign mark is to prevent the foreign owner's use in this country. The corollary is that courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co at 400; Moorgate Tobacco at 432; Riv-Oland Marble Co v Settef SpA at 353-354. As Williams J said in Seven-Up Co at 211:
"The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia."
[7] Malibu West, Inc v Catanese [2000] FCA 1141 (18 August 2000) ) (2000) 51 IPR 134, paragraph 28.
I do not intend to suggest that this is an example of an applicant ‘borrowing from abroad’, as described above. Argument under the new ground of opposition dealing with an application being made in bad faith (section 62A) was not available to the opponent, although it clearly had intended to press that ground. Further, despite Mr Round’s submissions that the applicant must have been aware of the activities of a long-standing competitor in such a specialized field, no such inferences can be drawn from the material provided in response to the Registrar’s notice for production issued during proceedings. Given the nature of the trade mark, and the goods to which it is applied, I believe it to be quite possible that two traders in the field may have independently arrived at its adoption, without any ‘borrowing’ as such having occurred.
That said, the opponent has claimed prior ownership of the trade mark PAINT SMART, and has supported that claim in evidence. I find the ground of opposition under section 58 to be established.
Section 60
The subject trade mark application was filed before a significant amendment to section 60 came into force on 23 October 2006. Accordingly, the pre-amendment version of the section applies.[8] At that time, section 60 read:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
[8] Apple Computer Inc. v Todaytech Group Pty Ltd, 2007 ATMO 40
The comparison is between an existing substantially identical or deceptively similar trade mark that ‘had acquired a reputation in Australia’, and the opposed trade mark. The relevant date for assessing the reputation of the opponent’s mark is the filing date of the applicant’s trade mark, 11 May 2006. It is not a requirement of section 60 that the trade mark relied upon by an opponent is either an applied-for or registered trade mark, merely that it has acquired a reputation as at the priority date of the opposed trade mark.
In relation to this ground, the opponent sought to rely upon both its common law PAINT SMART trade mark, and also the PAINT FAST. PAINT SMART trade mark, arguing substantial identity or deceptive similarity with the opposed trade mark, and a demonstrated reputation in both its marks.
I have already found the PAINT SMART trade mark to be substantially identical with the opposed trade mark. I also accept the opponent’s argument that the PAINT FAST. PAINT SMART trade mark is deceptively similar to the opposed mark. The applicant argued that the PAINT FAST element coming first in the opponent’s trade mark established the identity of the phrase, and also served to make the length, rhythm and idea of the two marks quite distinct. While this may be true of other word elements in other circumstances, I cannot agree that the inclusion of such unprepossessing words as PAINT FAST in the opponent’s trade mark slogan is by any means sufficient to allow such differentiation here.
In Sports Cafe Ltd v Registrar of Trade Marks [1998][9], the Full Federal Court compared the plain words THE SPORTS CAFE with the following word and device trade mark:
[9] Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998), at 5; (1998) 42 IPR 552, at 557
In circumstances parallel to those present here, the court found a similarity of look, sound and meaning between the trade marks led unambiguously to a finding of deceptive similarity.
With regards to reputation, the parties turned to familiar precedent, each claiming its support for their opposing positions. Kenny J in McCormick & Co v Mary McCormick (2001)[10], quoted with approval the following discussion, by Hearing Officer Iain Thompson[11], about how reputation can be developed:
[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 the 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.
[10] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129
[11] See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436.
Clearly, an opponent's reputation can accrue from a variety of sources. However, as Kenny J continues:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[12]
[12] McCormick & Co v Mary McCormick (2001) op. cit.
I have found above that the opponent had used its PAINT SMART trade mark prior to the filing date of the opposed application. However, that use by no means equates to a demonstrated reputation at that time. By contrast, the evidence detailed in the two Berwick declarations has satisfied me that, at the time the opposed trade mark was filed, their existed in the opponent’s PAINT FAST. PAINT SMART trade mark a significant reputation in its demonstrably specialized field, sufficient for a finding that use of the opposed trade mark on the relevant goods was likely to result in, at the very least, confusion of the relevant public. I find the opponent’s ground of opposition under section 60 to have succeeded in relation to its latter slogan trade mark.
Section 42(b)
The opponent made only very brief submissions in relation to its ground of opposition under section 42(b). That section of the Act provides:
An application for the registration of a trade mark must be rejected if:
...
(b) its use would be contrary to law.
The opponent argued that the relevant law in this case is section 52 of the Trade Practices Act 1974, which deals with misleading or deceptive conduct. Subsection 52(1) states:
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
While I am mindful that I have found for the opponent upon the question of deception and confusion in terms of section 60, I do not believe a positive finding at the higher threshold of section 42(b) need naturally flow from this. Further, the opponent has placed no evidence before me which might have swayed this view. As French J has relevantly observed:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.[13]
[13] Registrarof Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) at paragraph 47; (1999) 45 IPR 411.
I find that the ground of opposition in terms of section 42(b) has not been made out.
Decision
Subsection 55(1) of the Act provides:
(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.
Note:For limitations see section 6.
The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has recently referred to the standard of proof required in terms of a ‘balance of probabilities’.[14] I find that the opponent has met the onus upon it, in terms of the grounds of opposition under sections 58 and 60 argued at the hearing. Accordingly, and subject to a successful appeal from my decision, I refuse to register trade mark application number 1113062.
[14] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, Anest Iwata Australia Pty Ltd.
Claudia Murray
Hearing Officer
Trade Marks Hearings
15 May 2009
7
0