Capital Safety Group EMEA and 3M Company v Classic Supplies Pty Ltd  ATMO 10
On 22 January 2019, the Australian Trade Marks Office handed down its decision regarding opposition of the Trade Mark PROTECTAWARE belonging to our client, Capital Safety Pty Ltd. The Trade Mark covers a range of goods including protective clothing, footwear and related products.
The Opponents, Capital Safety and 3M, were the owners of two prior registered Trade Marks: PROTECTOR and PROTECTA. The PROTECTOR Trade Mark covers similar protective clothing and footwear products whereas the PROTECTA Trade Mark covers safety equipment and fall arrest systems.
The decision was handed down in our client’s favour and all six of the Opponents’ grounds under sections 42(b), 44, 58, 59, 60 and 62A of the Trade Marks Act 1995 were dismissed.
The decision provides a useful analysis of:
comparison of Trade Marks which incorporate a common descriptive term;
issues relating to use and ownership of Trade Marks between subsidiary companies.
The key statements by Hearing Officer Nicholas Smith are summarised below:
While both sets of goods are for the protection of workers, they are of a very different nature.
The goods are unlikely to be produced by the same manufacturer.
The goods have very different target markets, with protective clothing having a fairly broad market among workers and employers while safety equipment are used in very specialised employment almost exclusively by employers.
The goods are unlikely to be sold through the similar trading channels, although they possibly could be.
PROTECTAWARE v PROTECTOR: Trade Marks not deceptively similar
The shared element PROTECT is descriptive and common to the trade when considering the context of the goods, and is therefore discounted in the comparison.
The Opponents should not be granted a monopoly over use of the term PROTECT in respect of protective clothing.
Any confusion between the marks stems from use of a descriptive term and not from the similarity of the Trade Marks.
Hearing Officer Smith held that the Opponents had not discharged their evidentiary onus to establish that the Applicant did not intend to use the Trade Mark (paragraph 60).
The Applicant’s Evidence showed that use of the PROTECTAWARE Trade Mark had been by a subsidiary company and that it intended to authorise the PROTECTAWARE Trade Mark to the subsidiary at the time of application.
Hearing Officer Smith was not satisfied that the Applicant’s subsidiary company had an earlier claim to ownership of the PROTECTAWARE Trade Mark (paragraph 65).
The Opponents failed to establish that the first use of the PROTECTAWARE Trade Mark by the subsidiary company was anything other than use authorised by the Applicant.
There was no evidence that the mark was chosen to take advantage of the reputation of PROTECTA or PROTECTOR, as opposed to the inherent combination of PROTECT and AWARE.
The Trade Marks are used for different goods.
There was no evidence of unscrupulous, underhanded or unconscientious conduct in filing the application.