CLEARLIGHT INVESTMENTS PTY LTD v SANDVIK MINING AND CONSTRUCTION OY [2016] ATMO 7 (29 January 2016)

In 20 August 2013, a Finnish company, Sandvik Mining and Construction OY (the applicant) filed a trade mark application in Australia for the term “SANREMO” for Class 9 and Class 42 goods and services in relation to mining, drilling, and construction. The application was accepted for registration by the examiner in 27 March 2014, but was subsequently opposed by an Australian company, Clearlight Investments Pty Ltd (the opponent.)

The opponent relied on various grounds and filed evidence consisted of declarations attesting its own use of the brand “San Remo” covering a wide range of goods related to food (but most notably pasta). The opponent has been operating in Australia since the early 1950s. It first registered its mark in 18 November 1952 and has a reasonably sized portfolio of Australian registered trade marks otherwise. It was clear from the evidence that the opponent has made extensive use of the SANREMO trade mark on various pasta and food-related products since the early 1950s, had engaged in significant advertising expenditure, and built a reputation for the trade marks within the context of pasta and related goods in Australia.

The applicant, on the other hand, is a mining and construction firm with subsidiaries in over sixty countries, employs more than forty-seven thousand workers and makes sales in more than 130 countries. The applicant explained in its evidence that the SANREMO name was coined from the words “Sandvik Remote Monitoring,” and was used extensively for their remote monitoring systems and productivity reporting services in relation to mining, drilling, and construction. The mark is said to have been used in Australia by the applicant since 2010. The applicant also presented evidence of mention of their “Sanremo”-branded goods on various internet sites.

On the face of it, this should have been enough for the applicant to be successful. A period of use of three years with no confusion (and who would confuse the sources of origin of respectively “pasta” and “mining equipment” both labelled “San Remo”?) might in other circumstances have been enough to fend off the opposition. But the opponent was, with respect, very clever. The hearing officer decided there was no need to consider other grounds of opposition besides the non-distinctiveness ground. This is because the hearing officer decided that the term “San Remo” is not capable of distinguishing the applicant’s goods or services with regard to the classes it was being registered for, because “SAN REMO” is also the name of a well-known Italian city with a population of over 57 thousand individuals and a strong reputation as a tourist destination. The hearing officer decided that the average Australian consumer would readily associate the term with the place, instead of a contraction of the words “Sandvik Remote Monitoring.”

Evidence of use of the mark by the applicant on websites was discounted by the hearing officer, because the websites were located outside of Australia and the applicant apparently could not account for the number of Australian “hits” to the website. This is unfortunate. The hearing officer said, “Nor does the evidence provided sufficiently demonstrate that the Trade Mark has acquired a meaning related to the applicant which overshadows its meaning as a geographical name to Australian consumers in the marketplace.” Further, “I note that the statements in the Bolejko declaration in regards to the number of goods and services sold have not been supported by the evidence through the provision of receipts or by providing specific details of exactly what goods and services have been sold and the total revenue generated. Instead, I am provided with unsupported statements and an approximation of the price range the applicant charges its customers for goods and services provided under its SANREMO trade mark.”

The hearing officer also addressed the lack of a space between the words “SAN” and “REMO” in the spelling of the applicant’s trade mark, noting that it would not have altered Australian consumers’ understanding or pronunciation of the mark:

“I consider that a consumer of ordinary intelligence and education would either know of the Italian city, San Remo, or if not, would, on an application of simple linguistic rules, deconstruct the Trade Mark into the elements “san” and “remo”, or perhaps, “san”, “re”, “mo”. I therefore consider it more likely than not that an ordinary member of the Australian public would have reason to think that the Trade Mark was a simple coalescence of SAN REMO…. I also do not believe that the deletion of the space between the words alters how the Australian consumer would perceive or pronounce the SANREMO trade mark. I am supported in this reasoning by the decision Richard Jelacic v Leafguard Gutter Systems Inc where the Delegate stated at [13]:

The fact that the words LEAF and GUARD are conjoined in the opposed trade mark, does not alter my consideration under section 41, as it is only a minor alteration.”

The hearing officer gave little weight to the applicant’s claims that its goods and services are of a “highly technical and specialised” nature with regard to surface top-hammers and down the hole drill rigs. The hearing officer decided that the goods and services that the applicant sought registration for are too broad that they could encompass trade outside of surface top-hammers and down hole drill rigs.

This is a reminder of the perils of filing a trade mark application that is too broad in nature. Australian trade mark practice (in stark contrast to US trade mark practice) allows marks to be filed with a broad specification and thereby obtain a broad scope of protection. Here is an example of that utility working against the applicant.

The applicant’s argument that their use of the trade mark for five years “without any interference from other traders means it does not conflict with other trader’s legitimate rights” was also dismissed, as the opponent not only opposed the current trade mark registration but had in 2013 opposed another application made by the applicant (AU TM 1345062) as well.

In the end, the hearing officer was satisfied that the opponent has established their grounds for opposition and has recommended that the registration be refused under s 55 of the Act. It seems that this matter primarily fell over for the applicant due to insufficiently helpful evidence, and an opponent who prudently exploited that.