Allshelter Pty Ltd v Price and Speed Containers Pty Limited [2015] ATMO 113 (26 November 2015)

On 16 May 2013, industrial supplies distributor Price and Speed Containers Pty Limited (the applicant) filed a registration in Australia for the trade mark ‘igloo shelters’. This covered “non-metallic shelters” under class 19.

A Notice of Intention to Oppose was filed by Allshelter Pty Ltd (the opponent) in 14 November 2013. The opponent alleged that it had been using the terms ‘igloo’ and ‘igloo shelters’ for a line of relocatable shelters since inception in 1999. The applicant, on the other hand, only started using the applied for mark in 2006.

What sort of goods were actually the subject of this dispute? The opponent provides that answer in its evidence by reference to a promotional blurb on its website:

“Whatever you call it, whether it be a Site Shelter, Container Domes, Dome Shelter, Site Shelter, Igloo Shelter, Container Shelter, Container Cover, Dome Container Shelter, Shipping Container Roof, All Shelter, Shelter Station, Container Shed or just a Shelter Thingo that goes on Containers…”

The use of this vernacular description is to be admired as it is perhaps how many consumers would actually describe the goods.

The opponent’s case hinged on, first, its earlier use of the terms ‘igloo’ and ‘igloo shelters’ with regard to goods covered in class 19, and, second, establishing that neither of the two terms are inherently adapted to distinguish the applicant’s products from those of its competitors.

The opponent provided evidence that included Internet search results demonstrating that the word ‘igloo’ is being used descriptively by third parties with regard to large steel-framed and canvas-covered demountable sheds. This was accepted by the hearing officer as proof that the terms were being used by other traders in relation to class 19 goods. The hearing officer discussed this in his reasons for decision:

“It is apparent in the above passage that the term ‘Igloos’ may be viewed as being used as a description of the nature of the goods rather than as a trade mark. Additionally, the fact that, at the commencement of its manufacture of the goods and its use of the term ‘igloos’, the Applicant could state that ‘Igloos are currently being used in locations all over Australia and New Zealand …’ strongly suggests that, at the time that the Applicant commenced the use of the term ‘Igloos’, it was also being used by others.”

This meant that the terms are not capable of distinguishing the applicant’s goods from those of other traders, and that allowing registration would give the applicant unfair monopoly over a descriptive word.

The applicant argued that other traders’ use of the terms were not widespread. But as the hearing officer pointed out, that this is to be expected, as the field that the parties are trading in is very specialised field in Australia, with only a select number of traders.

One of the interesting things to note about this matter is evidence of how the website of the opponent was constructed: the opponent instructed its website designer to include the word ‘igloos’ as an embedded term on its website as a part of the following suite of terms:

“Allshelter, Shelter, Cover, COLA, Container Mounted, Igloo, Workshop, Shade, Relocatable, Structure, Sail”

The hearing officer did not blink at the proposition that embedded words on a website, not capable of being seen by humans but only “perceptible” to search engine algorithms, constituted use of a trade mark.

Things were looking very good for the opponent… and then the hearing officer observed:

“I also note that the force of the Opponent’s arguments in relation to this ground might also be viewed as being somewhat blunted by its own filing under application 1584342 to register the trade mark IGLOO SHELTERS for goods similar to the Goods.”

This is more than a mere tactical error. It is an awkward thing for an opponent to argue that a trade mark should not be permitted to proceed to registration on the basis of the mark being descriptive, in circumstances where the opponent has concurrently applied for the same mark. At best, the opponent looks silly and has torpedoed its own application. At worst, the opponent has spiked both its opposition and its application.

Merely looking silly prevailed in this instance as the opponent was ultimately successful –

“I am satisfied that the evidence, taken as a whole, shows that at the relevant date the terms ‘igloo’ or ‘igloo shelters’ were used within the parties’ trade to indicate that their goods are tarpaulin shelters. I am satisfied by the Opponent’s evidence that traders other than the parties used the term ‘igloo’ or ‘igloo shelters’ in relation to the Goods before the priority date only to state that those goods are tarpaulin shelters. While use of the Trade Mark by traders other than the parties before the priority date was not widespread, it must also be noted that this is a very specialised field of trade in Australia with not many traders within it.”