Wangwealth Pty Ltd

[2023] ATMO 157

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2260881 (class 19) – AUSFRAME BEAM - in the name of Wangwealth Pty Ltd

Delegate:

Sheona Robertson

Representation:

Applicant: Sean McManis of Davies Collison Cave Pty Ltd

Decision:

2023 ATMO 157

Trade Marks Act 1995 (Cth) – section 33 proceeding – section 44 considered – trade mark deceptively similar to earlier registered trade mark – no evidence of use filed – trade mark application rejected.

Background

1. This decision follows an ex parte hearing requested by Wangwealth Pty Ltd (‘Applicant’) under s 33 of the Trade Marks Act 1995 (‘the Act’) in relation to the following application:

Trade Mark Number: 2260881

Trade Mark: AUSFRAME BEAM (‘Trade Mark’)

Priority date: 8 April 2022

Specification of Goods:

Class 19: Building timber; Timber building products; Construction elements of timber; Timber products for use in building; Timber for building; Non-metallic frames for buildings; Non-metallic building frames (‘Goods’)

1. The application was examined under s 31 of the Act and adverse examination reports dated 28 September 2022, 1 November 2022, 22 December 2022, 22 February 2023 and 27 March 2023 raised and maintained a s 44 ground for rejection. The examiner cited Australian trade mark registration number 1845252 for the following trade mark:

(‘Cited Mark’)

1. The Cited Mark is registered in respect of the following goods:

   Class 6: Armoured windows having metal frames; Door frames of metal; External door frames of metal; Frames of metal; Frames of metal for doors; Metal frames; Ready made door frames made of metal; Security door frames of metal for buildings; Steel hinged door frames; Metal door fittings; Metal door handles; Metal door hardware (‘Cited Goods’)

2. Following receipt of the examination report dated 27 March 2023, the Applicant requested to be heard. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and was heard by video conference on 4 September 2023. Sean McManis of Davies Collison Cave Pty Ltd presented submissions on the Applicant’s behalf.

3. Prior to the hearing, on 25 August 2023, the Applicant filed its written submissions (‘Applicant’s Submissions’). They were accompanied by copies of the written submissions in response to the s 44 ground for rejection that were previously filed during the examination stage of the application.

4. I note that the ground for rejection under s 44 must be considered afresh and that the Trade Mark is subject to a presumption of registrability under s 33 of the Act. As such, I must accept an application for registration unless satisfied, on the balance of probabilities, that there are grounds under the Act for rejecting it or that the application has not been made in accordance with the Act.

Discussion

1. Section 44 of the Act relevantly provides:

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

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

   (ii)  a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. Registration of the Trade Mark must be rejected if, subject to subsections (3) and (4), the Cited Mark:

   i.is in the name of a person other than the Applicant;

1. has a priority date which is earlier than the priority date of the Trade Mark;

2. is substantially identical with, or deceptively similar to, the Trade Mark; and

3. is in respect of goods which are similar to those of the Trade Mark.

1. The Cited Mark is registered by another person and has a priority date of 17 May 2017, which is earlier than the priority date of the Trade Mark. Requirements (i) and (ii) are satisfied.

2. In relation to requirement (iv), s 14(1) of the Act provides that goods are ‘similar’ to other goods if they are the same, or of the same description, as the other goods.

Goods of the same description

1. The Goods are concerned with building timber, timber building products, and non-metallic building frames in class 19. The Cited Goods are concerned with window, door and other frames of metal, and metal door fittings and hardware in class 6.

2. It is well established that the primary criteria for assessing whether goods are of the same description are:

   i.the nature of the goods;

1. the respective uses of the articles;

2. the trade channels through which the commodities are respectively bought and sold.[1]

   [1] Jellinek's Application (1946) 63 RPC 59, Romer J.

1. With respect to the degree of similarity between the Goods and the Cited Goods, the Applicant notes the timber building products of the Applicant are not the same as the metal frames of the owner of the Cited Mark. While I agree with the Applicant’s position that the respective goods are not the same, there are clearly similarities in their nature and uses. Each product is sturdy and durable and is intended to be used in the construction or enhancement of various structures. Even if building products made of metal and building products made of materials other than metal are not always substitutable, it is foreseeable that a single structure would be made using a range of products made of both metal and non-metal materials.

2. In my view, the goods are likely to be sold through the same trade channels. To my knowledge, building products of the relevant kind are often sold by the same or competing traders. A customer seeking building products made of metal is likely to encounter building products not made of metal in the same catalogue, at the same wholesale or retail outlet, or on the same website.

3. On balance, I am satisfied that the Goods are of the same description as the Cited Goods. It follows that a person would likely conclude that the respective products, sold under deceptively similar or substantially identical brands, could originate from the same trade source.

4. It is now necessary for me to consider, for the purposes of requirement (iii), whether the Trade Mark is substantially identical with, or deceptively similar to, the Cited Mark.

Substantially identical

1. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   In considering whether marks are substantially identical they should, I think, be compared 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 dissimilarity that emerges from the comparison.[2]

   [2] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

2. The marks are reproduced in the table below:

Trade Mark	Cited Mark
AUSFRAME BEAM

1. On a side by side comparison, there are notable differences between the marks. Both marks contain the letters ‘AUS’ and ‘FRAME’. I consider the differences between the term ‘AUSFRAME’ and the conjoined words ‘AUSSIEframe’ would not be overlooked on a close comparison of the marks, notwithstanding that both terms are, to an extent, descriptive in the context of both the Goods and the Cited Goods. The additional words ‘MADE IN OZ’ and the visual features of the Cited Mark, and the addition of the word ‘BEAM’ in the Trade Mark, further differentiate the marks. Having regard to these differences I am not satisfied that a total impression of resemblance[3] emerges from a comparison between the Trade Mark and the Cited Mark, such that they may be considered to be substantially identical.

   [3] Ibid.

Deceptive similarity

1. Section 10 of the Act defines “deceptively similar” as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. In Shell, Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] Ibid [13].

3. The impression of the respective marks as a whole[5] must be considered, including the size and prominence of word and device elements and their relationship to each other.[6] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[7]

   [5] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [6] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

   [7] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

4. It is true that elements of a trade mark that are descriptive or in common use in the trade should be afforded less weight for comparative purposes.[8] However, ‘the authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison’.[9] Much depends on the circumstances.

   [8] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR).

   [9] Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

5. What must be considered is the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Mark and of the Cited Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

6. The main contentions in the Applicant’s Submissions against a finding of deceptive similarity were as follows:

   i.       The registration for the Cited Mark does not grant a monopoly in the words ‘AUSSIE’ and ‘FRAME’ because these words are descriptive and non-distinctive;

1. ‘AUSSIEframe’ is not the essential feature of the Cited Mark. The distinctive character of the Cited Mark comes from the device of a stylised map of Australia; and

2. The Trade Mark is not the equivalent of the words ‘AUSSIEframe’,

and for these reasons, the differences between the marks are sufficient to prevent confusion. I am not persuaded by these submissions.

1. In my view, the Trade Mark is visually, aurally and conceptually similar to the Cited Mark. Both marks contain a combination of what is likely to be perceived by the ordinary consumer as descriptive terms: ‘AUS’ or ‘AUSSIE’ indicating that the goods are Australian in origin and ‘FRAME’ describing the main form of the goods. While the conjoining of the terms ‘AUS’ and ‘FRAME’ in the Trade Mark does import a modicum of distinctive character to the Trade Mark, the degree of distinctiveness is not as significant as claimed by the Applicant. Being essentially the same words, ‘AUSFRAME’ and ‘AUSSIEframe’ are conceptually identical. The impression given by both marks is of frames that are Australian in origin.

2. The ‘AUS’ and ‘FRAME’ components of the Trade Mark are wholly encompassed within the Cited Mark, in close relation to one another. Despite the additional elements in each mark, it is foreseeable that the common element of the terms ‘AUS’ and ‘FRAME’ in close association would lead the relevant buying public to believe the respective goods emanate from the same trade source, for the following reasons.

3. The term ‘AUSFRAME’ is clearly the essential feature of the Trade Mark. The addition of the word ‘BEAM’ in the Trade Mark does not diminish the aural and visual dominance of the ‘AUSFRAME’ element of the Trade Mark, because of its monosyllabic nature and its secondary positioning in the Trade Mark, and because ‘BEAM’ is descriptive in the context of the Goods.

4. As regards the Cited Mark, it is clear the term ‘AUSSIEframe’ is the visual focal point given its size and dominant position above the device. Customers will naturally refer to the words ‘AUSSIEframe’ when ordering the Cited Goods.[10] It is highly unlikely that consumers would refer to the Cited Mark by the additional matter in the mark, being the device or the tagline ‘made in oz’. This additional matter merely reinforces the ‘AUSSIEframe’ component of the mark by conveying the Australian origin of the Cited Goods.

   [10] See, eg, Hardings Manufactures Pty Ltd v Golden Crumpet Co A/Asia (Extended) Pty Ltd (1987) 8 IPR 147, 154 (Reg).

5. The Applicant claims that the map device used in the Cited Mark is striking because of the ‘vacant quadrilateral splitting the map to remove the part normally occupied by South Australia and the southern part of the Northern Territory’.[11] The Applicant submits that is it this feature of the Cited Mark that is most likely to be noticed and remembered. In my view, the simple shape of the quadrilateral does not add a particularly striking character to the device. This quadrilateral shape is common to building frames such as doors or windows and goes some way to reinforcing the nature of the Cited Goods. While the device is not entirely plain in nature, it essentially illustrates the words ‘AUSSIEframe’. Overall, the additional matter in the Cited Mark does not alter the overall impression created by the term ‘AUSSIEframe’ so as to sufficiently distinguish the Cited Mark from the Trade Mark.

   [11] Applicant’s written submissions dated 19 November 2022, 2.  

6. The Applicant’s Submissions cite a number of cases in support of argument (i) specified at paragraph [25] of this decision in relation to the extent of the monopoly granted by registration of the Cited Mark. It is important to note that as the Cited Mark has been granted registration it is entitled to protection, even if the extent of such protection must be narrowly interpreted. There is a danger in over-emphasis on the impact of the descriptiveness of elements of the Cited Mark on the rights granted by registration; namely, that of impermissibly conflating the test of deceptive similarity with the test for inherent capacity to distinguish under s 41 of the Act.

7. It is also appropriate to consider the surrounding circumstances, including the prospective purchasers and uses for the relevant goods.[12] It is the notional scope of the goods that is to be considered. Owing to the broad manner in which the Goods are described, the Goods are not limited to high value products such as timber beams for the construction of buildings. Claims such as ‘timber products for use in building’ include high volume, low value products such as small timber dowels. The Cited Goods are similarly broad. The claims for ‘metal door fittings’ and ‘metal door hardware’ would include high volume, low value products such as latches, hinges, strike plates and door stops. Because purchases of such low value products are likely to involve less scrutiny there is a risk, in respect of at least some of the relevant goods, that consumers would be caused to wonder or infer that the Goods came from the same source as the Cited Goods, or had some connection to the Cited Mark. Further, given the similarity between the Goods and the Cited Goods discussed in paragraph [13] of this decision, notionally at least the Applicant may be selling products bearing the Trade Mark in the same markets and to the same types of consumers as those of the Cited Mark. It is foreseeable that a customer, having purchased an ‘AUSSIEframe’ branded product and being faced with building products from the Applicant, would be deceived or confused as to whether the goods emanate from the same trade source.  

   [12] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

8. Considering the above, I am satisfied that the Trade Mark and the Cited Mark are deceptively similar and requirement (iii) of paragraph [7] of this decision is satisfied. There are limited differences between the marks having regard to their essential elements.[13]

   [13] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [56] (Greenwood, Jagot and Beach JJ).

9. For completeness, I note no evidence has been filed that would enable a finding of prior use or honest concurrent use pursuant to s 44(3)(a) or s 44(4) of the Act, nor am I aware of any other circumstances that would make it proper to accept the application pursuant to s 44(3)(b) of the Act.

10. Accordingly, I am satisfied that a ground for rejection exists under s 44 of the Act.

Decision

1. Section 33 of the Act relevantly provides:

   (1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a) the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it.

   (2) The Registrar may accept the application subject to conditions or limitations.

   (3) If the Registrar is satisfied that:

   (a) the application has not been made in accordance with this Act; or

   (b) there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

2. I am satisfied that there is a ground for rejection under s 44 of the Act. Accordingly, I reject trade mark application number 2260881 in accordance with s 33(3) of the Act.

3. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the application be in accordance with the court’s direction or order.

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

13 October 2023