TRADE MARKS ACT 1995

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

Re:	Proposal to revoke acceptance of trade mark applications numbers 1203412(17, 37) – INSULFLEX – and 1286234(17) - INSULFLEX INSULATION and device - in the name of Insulflex Insulation Pty Ltd.

Delegate:	Alison Windsor	
Representation:	Applicant – John Hennessy of counsel	
Decision:	2010 ATMO 14
Section 38 –deletion of certain goods from the specifications in class 17 does not remove similar goods or goods of the same description – section 44 ground for rejection still applies – reasonable in all the circumstances to revoke acceptances.	
Background
1.	Insulflex Insulation Pty Ltd (“the applicant”) filed applications to register the following two trade marks:
Application number: 1203412	Application number: 1286234	
Filed:  10 October 2007	Filed:  23 February 2009	
Trade Mark:  Insulflex	Trade Mark:  	
Class 17:  Insulating materials for insulation against heat; insulating materials for insulation against sound; heat resistant fabrics (insulation); insulating polymeric materials for acoustic insulation; insulating polymeric materials for thermic insulation; insulation material for roofing; materials for acoustic insulation; materials for insulation (other than building glass); materials for wall insulation systems; metal foil for insulation; polyester fleece for acoustic insulation; polyester fleece for thermal insulation
Class 37:  Insulation of roofing	Class 17:  Insulating materials for insulation against heat; insulating materials for insulation against sound; heat resistant fabrics (insulation); insulating polymeric materials for acoustic insulation; insulating polymeric materials for thermic insulation; insulation material for roofing; materials for acoustic insulation; materials for insulation (other than building glass); materials for wall insulation systems; metal foil for insulation; polyester fleece for acoustic insulation; polyester fleece for thermal insulation	
Advertised accepted:  26 March 2009	Advertised accepted:  25 June 2009	

2.	
The applications were examined as required by section 31 of the Trade Marks Act 1995 (“the Act”) and an initial report was issued on each.  Both of these reports notified the applicant that its applications could not be accepted because of the existence of an earlier dated registration for the word INSULFLEX.  This registration is number 588687 which claims the following goods in class 17 “extruded rubber and synthetic rubber products for insulating pipes and tubing included in class 17”.  The provisions of section 44 of the Act therefore applied.
3.	The applicant responded to the initial reports on application 1203412 via a letter which requested an amendment to the goods specification in class 17 in order to overcome the section 44 grounds for rejection raised by the examiner.  After some correspondence with the examiner about suitable wording, the specification was eventually amended via the addition of the following words:  “none of the foregoing being products for insulating pipes and tubing”.  The application was then accepted for possible registration.
4.	In respect of application 1286234, the examiner advised the applicant that it could overcome the section 44 ground for rejection by amending the goods specification via the same exclusion as had been applied to the earlier application.  The goods specification in class 17 was amended in due course and the application accepted for possible registration.
5.	On 22 July 2009, the Registrar received a letter from Callinans, a firm of patent and trade mark attorneys, requesting that the acceptances of the applicant’s two trade marks be revoked.  Because it is relevant to the decision in this matter, I will include the text of the letter in full:
We request that acceptance of each of the above-identified Applications be revoked, under the provisions of subsection 38(1) of the Trade Marks Act.  In that regard, we would asset that, for the reasons to be explained hereinafter in more detail, neither of the said Applications should have been accepted taking into account all the circumstances which existed when those Applications were accepted. 
A reference to the Register will reveal registered Trade Mark No.588687 for the mark “INSULFLEX” in class 17, for a listing of goods which reads as “Extruded rubber and synthetic rubber products for insulating pipes and tubing included in Class 17.  We would assert that the trade marks the subject of each of Application Nos 1203412 and 1286234 are substantially identical with or deceptively similar to the trade mark registered under No. 588687.  We would further assert that the goods and services involved in each of Applications Nos.1203412 and 1286234 are goods of the same description as those goods in Trade Mark No.588687 and/or services that are closely related to those goods.  As such, we would assert that usage of either of the trade marks the subject of the said Applications Nos. 1203412 and/or 1286234 ought to be held to constitute infringement of Trade Mark No.588687.
We would Assert that in the absence of prior use, honest concurrent use or other special circumstances, neither of Applications Nos. 1203412 nor 1286234 should have been allowed to proceed to acceptance, since the trade marks the subject thereof are clearly substantially identical with or deceptively similar to the trade mark registered under No.588687.  Usage of either of the trade marks the subject of those Applications will be likely to deceive or cause confusion in the minds of the relevant section of the purchasing public
In the light of the circumstances explained above, we would assert that the decisions to accept the said Applications Nos.1203412 and 1286234 were manifestly wrong, in obvious disregard of established case law precedents and authorities.  
6.	Following receipt of this letter, the two acceptances were considered afresh by an examination team leader, as is the usual practice within the Office.  Following some discussion with other senior examination staff, and some further research and investigation of the goods claimed in the applications, the team leader wrote to the applicant’s representative advising that he proposed to revoke the acceptances because: 
In accepting the exclusion of the goods of the previously cited trade mark registration 588687, which led to the acceptance of this application, the respective nature, use and trade channels of the goods/services claimed were not given full consideration.  As a result there are still goods/services covered by your client’s claim which would be considered to be of a similar description or closely related to the goods claimed by prior registration 588687 and are likely to be believed by a general consumer of such goods to originate from the same or related trade sources.   
7.	The team leader also noted that the trade marks are substantially identical (in the case of 1203412) or deceptively similar (in the case of 1286234) to the registered trade mark.  Bearing these factors in mind he stated that the trade mark applications did not meet the requirements of section 44 of the Act.  Therefore, he said, having taken into account all the circumstances that existed when the applications were accepted, he considered it reasonable to revoke the acceptances.
8.	The applicant asked to be heard on the matter of the proposed revocation.  I was delegated to hear the matter in Canberra on 4 February 2010.  John Hennessy of counsel, instructed by Hazan Hollander, solicitors and intellectual property lawyers, appeared for the applicant via telephone conference.
Applicant’s submissions
9.	Prior to the hearing the applicant provided me with a statutory declaration made by Ian Raymond Cubitt, managing director of the applicant.  Mr Hennessy provided written submissions and advised that he would be relying on the Cubitt declaration at the hearing.  
10.	Mr Hennessy began his submissions by drawing my attention to the contents of the Cubitt declaration.  Mr Cubitt attests to 38 years experience in the building industry and says that insulation is a major part of that industry.  He says he has worked in the insulation industry since 2005 and has been involved with the applicant since its inauguration as a company in 2007.  
11.	Mr Cubitt says that the applicant produces and supplies a range of reflective foil insulation, fiberglass insulation and woolglass insulation products to consumers in residential, commercial and industrial construction industries.  He says these products are all developed by the applicant specifically for use in roof, wall and under-floor insulation only.  The applicant sells products to consumers in New South Wales, Victoria, Queensland and South Australia.  Annual turnover is several millions of dollars per year, and is increasing.  Mr Cubitt gives his opinion that the goods the applicant sells are different from those of the cited proprietor, and from his experience he says that he considers they operate through different trade channels.  
12.	Mr Hennessy then went on to consider the contents of the trade mark application file and the actions within the Office leading up to the team leader’s decision to issue a letter proposing to revoke acceptance of the two applications.  After a consideration of the file contents, Mr Hennessy submitted that the proposal to revoke acceptance of the applications was a result of nothing more than a difference of opinion between the examiner and the team leader.  He referred specifically to an entry in the Trade Marks Office Manual of Practice and Procedure (“the Manual”) which reads:
The delegate should not simply rely on the submissions of a third party in deciding whether to revoke acceptance but should rely instead on clear and independently verified information, preferably in documented form.
13.	Mr Hennessy submitted that the information appearing on the examination file did not meet the requirements of “clear and independently verified information”.  He said that the information on the file was flimsy, at least as far as the applicant was able to ascertain from the material it had been able to access.  He specifically commented that the language used by the examiners in their e-mail communications was not emphatic or definite in purpose, leading to a suggestion that they were not truly convinced by the evidence and information they had found.  
The Law
14.	Section 33 of the Act governs acceptance and rejection of an application after its examination.  It provides for the Registrar to accept the application for possible registration if satisfied that the application has been made in accordance with the Act and there are no grounds for rejecting it.
15.	Revocation of acceptance is governed by section 38 of the Act, as amended by the Intellectual Property Laws Amendment Bill 2006, and reads as follows:
Revocation of acceptance
Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a)  the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b)  it is reasonable to revoke the acceptance, taking account of all the circumstances
16.	The amended section 38 clarifies that the Registrar is able to take account of any circumstances that existed which should have prevented acceptance of a trade mark. Contrary to previous provisions, it is important to note that there is nothing in the amended legislation that limits the Registrar in what she may consider. Previously the ambit of the Registrar was construed narrowly and focused on those cases involving ‘error and omission’ or ‘special circumstances’.  This, however, is no longer the case.
17.	My decision in this case goes to the issue of whether the original acceptances were unsound, taking into account all of the circumstances that existed at the time the applications were accepted and whether, in the face of those circumstances, it is reasonable to revoke the acceptances.  The circumstances include those of which the Registrar was cognisant, as well as any unknown but relevant circumstances which existed at the time.  As a delegate of the Registrar, I am not restricted in what I may consider as long as it is relevant to the matter in hand.
Discussion
18.	This matter will be determined by a consideration of whether the provisions of section 44(1) of the Act still adversely applied to the applications at the time they were accepted.  Section 44 relevantly provides:
Identical etc. trade marks
44.(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.
Note 1:  For deceptively similar see section 10.
Note 2:  For similar goods see subsection 14(1).
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 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.

44.(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) 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 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 goods see subsection 14(2).
Note 3:  For priority date see section 12.
19.	I note here that I am considering this matter in respect of the goods claimed in class 17.  While application 1203412 also includes a claim for “Insulation of roofing” in class 37, I am satisfied that there was and is no ground for rejection relevant to the services in that class.
Examination and reporting
20.	I have reviewed the examination files for both of the applicant’s trade marks.  In both cases the examiner searched the Register via the ATMOSS search engine and discovered the existence of registration 588687.  In the initial report on each application the registration was raised as a ground for rejection under the provisions of section 44 of the Act.  The reasons given for the registration being raised as a ground for rejection are as follows:

1203412
Your trade mark is identical to the conflicting trade mark because they both share the sole word INSULFLEX.  Consumers are likely to believe that the goods from both trade marks come from a single proprietor.
AND
The broad claim of goods in your trade mark encompasses the goods in the cited registration.

1286234
Your trade mark closely resembles the conflicting trade mark because the main and distinguishing element of each mark is the word INSULFLEX. Although the subject mark also contains the word INSULATION and an impeller device, when the marks are considered as wholes these are not sufficient to differentiate one mark from the other. Customers with a recollection of the earlier mark are likely to, on encountering your mark, assume the goods originate from the same trade source.
AND
The broad claim of goods in your trade mark encompasses the goods in the cited registration.
21.	In respect of application 1203412, the examiner used the Google® search engine to conduct general research in respect of the word INSULFLEX.  This research showed a small number of incidences of the word being used by other traders in various parts of the world, apparently as a trade mark.  As far as I am able to see, at the initial examination stage there was no specific research conducted in respect of insulation products per se.  
22.	The applicant’s agent responded to the first report and said “We are instructed by our client that its business does not involve products for the insulation of pipes and tubing and consequently it consents to the amendment of its specification of goods …”.  The agent then quoted the existing goods specification, and at the end highlighted the following phrase:  “none of the foregoing including products for insulating pipes and tubing”.  
23.	The examiner responded and advised that the ground for rejection under section 44 could be withdrawn if the exclusion phrase was amended to read “none of the foregoing being products for insulating pipes and tubing”.  The applicant agreed to this amendment and the application was accepted for possible registration shortly after.
24.	In respect of application 1286234, I note that no research was conducted using Google® or any other search engine.  On the worksheet, however, the examiner has crossed a check box on the sheet on a line reading “No s41 research done as trade mark inherently capable of distinguishing”. 
25.	The examiner suggested in the first report that the applicant could overcome the citation of 588657 by applying the same exclusion agreed to on the earlier dated application.  The applicant agreed to this suggestion, and the application was accepted for possible registration shortly after receipt of the correspondence.  
26.	It is clear that the examiner, at the time of the initial examination of each application, was of the opinion that the applicant’s goods specification included goods which were similar to the goods for which the registered trade mark claimed a right.  It is also clear that the examiner considered the exclusion the applicant had proposed clearly removed this conflict.  
27.	The letter received from the cited proprietor’s agent obviously raised questions about whether or not the exclusion sufficiently separated the goods specifications.  Revocation has been proposed because the senior staff member was satisfied that the goods specifications of both parties included similar goods, and as a result the provisions of section 44 still applied.  Whether this is indeed the case is what I have to investigate and decide.
The applicant’s goods claim 
28.	For convenience, I will quote the applicant’s goods claims in class 17 as they currently appear on the electronic record:  
Insulating materials for insulation against heat; insulating materials for insulation against sound; heat resistant fabrics (insulation); insulating polymeric materials for acoustic insulation; insulating polymeric materials for thermic insulation; insulation material for roofing; materials for acoustic insulation; materials for insulation (other than building glass); materials for wall insulation systems; metal foil for insulation; polyester fleece for acoustic insulation; polyester fleece for thermal insulation; none of the foregoing being products for insulating pipes and tubing
29.	Section 44 refers specifically to “similar goods or closely related services”.  Similar goods are defined by section 14(1) of the Act as follows:
(1)  For the purposes of this Act, goods are similar to other goods:  
	(a) if they are the same as the other goods; or 
	(b) if they are of the same description as that of the other goods.
30.	The applicant has claimed a very broad range of insulation materials.  The specific materials claimed are designed for insulation against heat and cold as well as against noise.  The amendment applied in order to secure acceptance has removed from this claim any insulation materials designed for insulating pipes and tubing.  The question to be decided is whether the goods remaining in the specification are similar to, or of the same description as, rubber insulation products designed specifically for pipes and tubing.
31.	In Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592 Dixon CJ, at paragraph 5 of his decision, said:
There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59.  Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold.  Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek's Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372.  Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.”
32.	The applicant submitted that its goods were different from those of the cited proprietor, and the more so because all goods designed for insulating pipes and tubes have been excluded from the specification.  Specifically, Mr Cubitt says, at paragraph 26 of his declaration, the applicant sells the following types of insulation:
•	Reflective foil insulation and tape which is used in the industry to stop the movement of heat.  It is used in roof insulation, wall insulation and under-floor insulation.
•	Woolglass insulation which is used for thermal insulation in roof, wall and under-floor applications.  It may also be used as insulation for large diameter air conditioning pipes.
•	Fibreglass insulation as thermal insulation for roof, wall and under-floor applications.
33.	I note that the applicant’s goods claim for class 17 is much broader than the range specified in the declaration.  Mr Cubitt refers to this matter indirectly in his paragraph 30 which reads as follows:
The Applicant operates a website at the URL www.insulflex.com.au (‘the Applicant’s website’).  The applicant’s website is still under construction and includes a page whereby potential customers can contact the Applicant for more information.  This page allowed potential customers to request information on various types of insulation, including ‘Pipe Insulation’ and ‘Acoustic Insulation’.  The applicant does not provide these products to customers.  Many companies in the building industry that are involved in insulation are involved in all types of insulation.  The purpose of including these ‘Pipe Insulation’ and ‘Acoustic Insulation’ options was to gain a broader range of customers for the Applicant.  In no other place on our website does it contain information relating to pipe insulation or acoustic insulation.  The reference to ‘Pipe Insulation’ and ‘Acoustic Insulation’ has now been removed from the Applicant’s website.
34.	I consider Mr Cubitt makes an important point in this paragraph, though I am not sure he is aware of just how important it may prove to be.  He says “many companies in the building industry that are involved in insulation are involved in all types of insulation” [emphasis added.]. If indeed this is the case, then there is likely to be an assumption on the part of consumers that all insulation products will be available through any single supplier and likewise that the installation of all those products will be available through a single operator.  
35.	In Jellinek, noted previously, three factors were to be considered when determining whether goods could be described as “of the same description” as other goods.  These factors were the nature and use of the goods and the trade channels through which they are bought and sold.  
36.	Looking at the nature and use of the goods - both the cited proprietor and the applicant deal in goods which are designed as and for insulation.  It is immaterial whether the goods are woolglass or rubber – the nature of the goods is insulation material and their use is for insulation against heat, cold or noise.  It appears from Mr Cubitt’s comments in his declaration that the trade channels for the different insulation products are likely to be the same.  
37.	The research information which was added to the application file supports the conclusion that insulation providers are likely to provide a range of insulation products.  One of the examples is from a company in Victoria which specifies on its website that they are specialists in home, industrial and commercial insulation.  The site says that they have insulation for walls, ceilings and floors, as well as acoustic insulation products and pipe lagging.  Other examples show similar ranges of insulation products.  I have no reason to assume that these references are exceptions to the general rule within this trade.
38.	Mr Cubitt gave his opinion that insulation for piping and insulation for roofs, walls and floors are considered different products in the hardware industry.  He specified that insulation for piping would be found in the plumbing department of a hardware store (such as Bunnings®), while insulation for roofs, walls and floors would be found in a different area of the store.  Having personal experience of the store in question, I agree with this comment.
39.	However, I do not consider the fact that the pipe insulation can be found on one shelf and the roof insulation on another clearly separates the producers of the goods, especially when both bear the identical trade mark.  It is obvious from the applicant’s evidence, its submissions and the other material before me, as well as my own knowledge, that the sale of insulating materials is not confined to hardware stores.  I am satisfied that insulation for pipes and tubes are goods of the same description as insulation for roofs, walls and floors.  
40.	I have found the applicant’s goods specifications as currently recorded consist of insulation products which are of the same description as the extruded rubber and synthetic rubber products for insulating pipes and tubing which forms the claim for the registered trade mark.  I am satisfied that grounds for rejecting these two applications exist under the provisions of section 44 of the Act and that it is reasonable in the current circumstances that the acceptances of these applications should be revoked.  
Registrar’s discretion in revoking a trade mark
41.	Given the circumstances surrounding the examination and acceptance of these applications, I consider the proposal to revoke the acceptances was and is entirely reasonable.  However, the wording of section 38 provides the Registrar with a discretion in the matter of revoking acceptance of a trade mark.  Section 38(1) states that the Registrar may revoke acceptance under the circumstances specified in the section.  As the Registrar’s delegate, even if I have found that the acceptances unsound, unless I am satisfied that revocation is reasonable in all the circumstances, I may choose to allow the applications to proceed to registration or to opposition, as the case may be.
42.	In this instance, I do not consider it appropriate to do anything other than revoke these acceptances.  I am satisfied that the applicant’s goods are of the same description as those of the cited proprietor.  It appears to me that the examiner was not aware that the exclusion suggested by the applicant and applied to the goods specification would not exclude all the goods which are similar to or of the same description as the very specific goods which are subject of the cited registration.  
43.	Allowing the applications to proceed to registration in their current form is, to my mind, a recipe for deception and confusion in the marketplace.  Respectively, the trade marks are identical and deceptively similar to that of the cited registration.  The goods are of the same description.  Mason J in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362; 1 ALR 443 at 450 observed:
…The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
44.	Taking into account these comments, and given the very broad range of goods the applicant has claimed in its applications, I am satisfied that the provisions of section 44 continue to apply adversely to these two applications.  The appropriate and reasonable course of action is to revoke the acceptances, and return the applications to the examination section for further examination and reporting.  While this may cause the applicant some grief, it is not fatal to the application.  The applicant has the option of providing evidence of use to support a claim for honest concurrent use as allowed by the provisions of paragraph 44(3)(a).  Paragraph 44(3)(b) allows for acceptance to be made on the basis of other circumstances and there are also the prior use provisions provided by sub section 44(4).  All of these options are properly canvassed in the examination forum.
Decision 
45.	I direct that the acceptances of applications 1203412 and 1286234 be revoked one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that the revocation shall not occur until the appeal has been discontinued, or in the event of a decision of the court, that the applications be subject to that order.

Alison Windsor
Hearing Officer
Trade Marks Hearings
11 February 2010