1 Juniper Holdings No. 3 Pty Ltd v Juniper Property Holdings No. 15 Pty Ltd

[2017] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Juniper Holdings No. 3 Pty Ltd & Juniper Holdings No. 4 Pty Ltd to registration of trade mark applications 1678555(36) & 1678556(43) - SOUL BOARDWALK - in the name of Juniper Property Holdings No. 15 Pty Ltd.

Delegate:

Katrina Brown

Representation:

Opponent: Blake Knowles of Cullens Patent & Trade Mark  

               Attorneys
Applicant: Ben Gardiner of counsel instructed by Chris Maher of  
                King & Wood Mallesons

Decision:

2017 ATMO 92
Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 60 and 44 - s 44 established – registration of trade marks refused.

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (‘the Act’) by Juniper Holdings No. 3 Pty Ltd (‘Juniper 3’) and Juniper Holdings No. 4 Pty Ltd (‘Juniper 4’) (‘the Opponents’) to registration of the following trade marks (‘the Trade Marks’) in the name of Juniper Holdings No. 15 Pty Ltd (‘the Applicant’):

Trade Mark No:	1678555	1678556
Trade Mark:	SOUL BOARDWALK
Filing Date:	4 March 2015
Specification:	Class 36: Management and leasing of commercial real estate premises used for retail shops, restaurants, snackbars, cafes, bistros, foodhalls, and exhibitions; services rendered by real estate agents in connection with the leasing of commercial retail shops, restaurants, snack-bars, cafes, bistros, food-halls, and exhibitions; leasing of retail outlet units and space for the provision of restaurants	Class 43: Provision of facilities for exhibitions

1. These are the relevant details of the trade mark applications as they currently stand.

2. The trade mark applications were examined as required under s 31 of the Act. No grounds for rejection were identified during examination. Acceptance of the Trade Marks was advertised in the Australian Official Journal of Trade Marks on 23 July 2015.

3. For each application the Opponents filed Notices of Intention to Oppose on 22 September 2015 followed by Statements of Grounds and Particulars (‘SGPs’) on 27 October 2015. The SGPs were found to be partially inadequate. On 10 November 2015, the Opponents filed rectified SGPs.

4. The Applicant filed Notices of Intention to Defend these oppositions on 16 December 2015.

5. In due course, the parties filed evidence in support of the oppositions, evidence in answer and evidence in reply.

6. The matter came before me, a delegate of the Registrar of Trade Marks, on 7 August 2017. Blake Knowles of Cullens Patent and Trade Mark Attorneys made oral submissions on behalf of Juniper 4 and provided written submissions on behalf of Juniper 3. Ben Gardiner of Counsel instructed by Chris Maher of King & Wood Mallesons made oral submissions on behalf of the Applicant.

Grounds of opposition and onus

1. The Opponents nominated grounds of opposition under ss 42(b), 44 and 60 of the Act.

2. The Opponents bear the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponents establish one of the grounds of opposition in relation to all of the services claimed in the trade mark applications, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].

4. The date at which the rights of the parties are to be determined is 4 March 2015 (‘the Relevant Date’) being the priority date of the trade mark applications.[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

Evidence

1. For their evidence, the parties rely on the following declarations.

Evidence in support

• Declaration of Tien Thanh Thuy Nguyen (Corporate lawyer for Juniper 3 and Juniper 4) made on 24 March 2016 with Annexures A to H (‘Nguyen 1’).

Evidence in answer

• Declaration of Jonathan Craig O’Brien (Managing Director of the Gold Coast and regional Queensland offices of CBRE Asia Pacific, a commercial real estate company) made on 22 July 2016 in reference to trade mark application number 1678555 with Exhibits JCO-01 to JCO-05 (‘O’Brien 1’).

• Declaration of Jonathan Craig O’Brien (Managing Director of the Gold Coast and regional Queensland offices of CBRE Asia Pacific, a commercial real estate company) made on 22 July 2016 in reference to trade mark application number 1678556 with Exhibits JCO-01 to JCO-03 (‘O’Brien 2’).

Evidence in reply

• Declaration of Tien Thanh Thuy Nguyen (Corporate lawyer for Juniper 3 and Juniper 4) made on 30 September 2016 with Exhibits 1 to 23 (‘Nguyen 2’).

Relationship between the parties

1. The parties to this opposition are part of a group of companies known as the Juniper Development Group (‘Juniper Group’). In 2011, the Juniper Group developed a residential and retail complex in Surfers Paradise, Australia. The complex contains a shopping centre and residential tower which are connected via a walkway and share a carpark.

2. On 25 October 2012, receivers were appointed to the Applicant and five other companies within the Juniper Group. Receivers were not appointed to the Opponents.

3. On or about 3 March 2013, the Applicant and the Opponents entered into a Trade Mark and Domain Name Licence. This agreement is reproduced at Annexure D to Nguyen 1. Under this agreement, the Applicant is licensed to use a number of the Opponents’ trade marks, including the trade marks set out at [20] of this decision.

Section 44

1. Section 44 of the Act relevantly provides:

    (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)  it 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.

…

1. The Opponents must establish that SOUL BOARDWALK is substantially identical with or deceptively similar to another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods.

2. In support of this ground the Opponents nominated the following trade marks in the SGPs:

Trade Mark No.	Trade Mark
1045789	Soul
1045802
1045804
1045868	Soul
1049500
1049501	SOUL
1057067	Soul Queensland
1057068	Soul Gold Coast
1057069	Soul Oceanfront
1057229	Soul Oceanfront Hotel
1057230	Soul Waterfront Apartments
1057231	Beach Soul Hotel
1057232	Beach Soul Apartments
1057233	Queensland Soul Apartments
1057234	Australian Soul Apartments
1067148	SOUL SURFERS PARADISE
1529452	SOUL AUSTRALIA

1. In the written submissions for the hearing, the Opponents stated that they would not be relying on the following trade marks: 1045802; 1045868; 1049500 and 1049501.

2. In the written submissions for the hearing and also at the hearing, the Opponents indicated that they would be focusing on the following trade marks nominated in the SGPs (‘the Opponents’ Trade Marks’):

Trade Mark No.	Trade Mark	Filing Date	Services
1045789	SOUL	11 March 2005	Class 36: Property services including but not limited to the provision, sale, management, and letting of residential and/or commercial land and/or premises Class 37: Caretaking of residential and/or commercial land and/or premises
1057069	SOUL OCEANFRONT	26 May 2005	Class 36: Property services including but not limited to the provision, sale, management, letting of residential and/or commercial land and/or premises Class 37: Caretaking of residential and/or commercial land and/or premises
1529452	SOUL AUSTRALIA	4 December 2012	Class 36: Property services in relation to the management of real estate properties; property services in relation to the letting and rental of accommodation; Accommodation bureaux (apartments); Accommodation letting agency services; property services relating to the operation of management rights; provision, sale, and, letting of residential and/or commercial land and/or premises; sale, appraisal, leasing, rental, development, acquisition of property, land, residential/commercial premises and other real estate for residential, commercial, industrial, recreational, resort and tourism purposes; real estate brokerage; administration and sale of land assets; insurance services; accommodation services including accommodation management, and rental of apartments and flats; consultancy and advice in relation to the aforesaid services; rental or lease of real estate, commercial and residential premises; subdivision of land for residential, retail and residential community activities, including recreational, landscaping, sporting parks, parks, gymnasium, halls, libraries, learning centres, retail and food outlets Class 43: Provision of food and drink; temporary accommodation; cafes; provision of facilities for conventions, exhibitions and conferences; room hire; takeaway food and drink services; restaurants; hotels; motels; cafes; canteens; snack bars; catering services; bar services; provision, letting, rental and reservation of temporary accommodation; hotels, motels, and resort services

1. The Opponents stated that the reason for focusing on these three trade marks is that if I am not satisfied that the requirements of s 44(2) are met in respect of them, it is unlikely that I would reach a different conclusion in relation to the remainder of the trade marks nominated in the SGPs. During the hearing, Counsel for the Applicant agreed with this summation. As do I.

2. Each of the Opponents’ Trade Marks is held in a name other than that of the Applicant: trade mark numbers 1045789 and 1057069 are in the name of Juniper 4; trade mark number 1529452 is in the name of Juniper 3. Each of the Opponents’ Trade Marks has a priority date earlier than that of the Trade Marks.

3. The next consideration is whether the respective services are similar because as French J said in Registrar of Trade Marks v Woolworths:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.[4]

   [4] [1999] FCA 1020 [39].

Similar services

1. Pursuant to s 14(2) of the Act similar services are services that are the same or of the same description.

2. The test for determining similar services has generally been equated with the similar goods test set out in Jellinek’s Appn.[5] The factors to be considered include the nature and respective uses of the services and the trade channels through which the services are made available to the consumer. 

   [5] (1946) 63 RPC 59.

3. The Applicant accepts that the services for which it seeks registration fall within the scope of the services claimed by one or more of the Opponents’ Trade Marks.

4. For the sake of clarity, in the terms sets out in s 14 of the Act and the relevant authorities, I consider the following services claimed by the Trade Marks to be the same and or similar to the services claimed by the Opponents’ Trade Marks.

Trade Marks

Opponents’ Trade Marks

1678555

Class 36: Management and leasing of commercial real estate premises used for retail shops, restaurants, snackbars, cafes, bistros, foodhalls, and exhibitions; services rendered by real estate agents in connection with the leasing of commercial retail shops, restaurants, snack-bars, cafes, bistros, food-halls, and exhibitions; leasing of retail outlet units and space for the provision of restaurants.

1045789 & 1057069

Class 36: Property services including but not limited to the provision, sale, management, letting of residential and/or commercial land and/or premises.

1529452

Class 36: Numerous property services relating to the management and leasing of residential and commercial premises (the exact claim is set out at [19] of this decision).

1678556

C   Class 43: Provision of facilities for exhibitions.

1529452

Class 43: Provision of facilities for conventions, exhibitions and conferences.

1. The Opponents also made submissions as to the similarity of claims in class 43 for the provision of facilities for exhibitions to the various property services claimed by the Opponents’ Trade Marks in class 36. It is not necessary for me to consider the merits of the argument as it does not alter the outcome of these matters.

2. The remaining question to be answered under s 44(2) is whether the Trade Marks are substantially identical or deceptively similar to the Opponents’ Trade Marks.

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:

   [t]hey 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.[6]

   [6] (1963) 109 CLR 407, 414.

2. The parties agree that this is the test for substantial identity. Although, as is often the case, the parties disagree as to the outcome reached by applying the agreed test to the circumstances of the current matters. Each of the parties has provided further judicial authority to support their position that the trade marks are or are not substantially identical.

3. The Opponents draw my attention to the recent decision by the Full Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’)[7] where the following trade marks were found to be substantially identical:

[7] [2017] FCAFC 83.

1. The Opponents also point to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[8] where the Court held that CAIRNS HARBOUR LIGHTS was substantially identical to HARBOUR LIGHTS.

   [8] [2017] FCAFC 56.

2. I do not consider these cases to be analogous to the matters before me. The additional words in each of the cases, is a reference to a specific geographical location or is directly descriptive of the services claimed. As pointed out by the Applicant’s Counsel, in Pham the words ‘clinical imaging’ and ‘radiology’ are ‘merely descriptive and incapable of distinguishing one radiological service from another’.[9]

   [9] Pham [51].

3. In the matters before me, the additional word ‘boardwalk’ is not directly descriptive of the services claimed in classes 36 and 43. Nor is it a reference to a specific geographical location in the same sense as the word ‘Cairns’. At best the word ‘boardwalk’ evokes the idea of a walkway along a beach or waterfront.

4. In support of its view, the Applicant provides the following three examples where the trade marks were found not to be substantially identical:

• METRO v WOOLWORTHS METRO[10]

• YELLOW v YELLOW DUCK[11]

• AUSTRALIA POST v DIGITAL POST AUSTRALIA.[12]

  [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 (‘Woolworths’).

  [11] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156.

  [12] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153.

1. I do not consider these cases to be analogous to the matters before me either. In Woolworths the trade marks were found not to be substantially identical (or deceptively similar) due to the degree of notoriety or familiarity of the word ‘Woolworths’ in Australia. The evidence provided in the current matters does not satisfy me that either party enjoys the degree of notoriety or familiarity that is referred to in Woolworths.

2. With respect to the other two examples provided by the Applicant, the additional word changes the overall meaning of the trade marks. In the YELLOW example, the impression given by the trade mark YELLOW is that of a colour whereas the impression given by the trade mark YELLOW DUCK is that of a duck that is yellow.  

3. Turning to the matters at hand, on a side by side comparison the word ‘boardwalk’ cannot be overlooked. It is a two syllable word that is not a reference to a specific geographical location or directly descriptive of the services claimed. I cannot find, on a visual or aural basis that there emerges a total impression of similarity or resemblance between SOUL BOARDWALK and any of the Opponents’ Trade Marks. In my opinion the trade marks are not substantially identical.

Deceptively similar

1. Section 10 of the Act defines a ‘deceptively similar’ trade mark 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 Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd Windeyer J provided the following insights on deceptive similarity:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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].[13]

   [13] [1963] HCA 66 [13].

3. Consideration of the essential features of the Trade Marks and the Opponents’ Trade Marks is a convenient starting point in determining the question of deceptive similarity. In Saville Perfumery Ltd v June Perfect Ltd Lord Greene MR stated:

   [t]he mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.[14]

   [14] (1941) 58 RPC 147, 162.

4. In the submissions for the hearing, the Applicant states the following in respect of the Opponents’ Trade Marks:

   In this case, the central feature of the marks relied upon by the Opponents is the word SOUL. It stands alone in each of these marks or is only qualified by highly descriptive words indicating geographic location…[15]

   [15] Applicant’s Hearing Submissions 9 [50].

5. I take this to mean that the Applicant agrees with the Opponents in so far as the word ‘soul’ is the essential feature of the Opponents’ Trade Marks. The parties are not in such agreement as to the essential feature of the Trade Marks.

6. The Opponents submit that the essential feature of the Trade Marks is the ‘highly distinctive word SOUL’. The Opponents’ provide a dictionary definition of the word ‘soul’ and go on to state:

   This word has no descriptive or laudatory qualities in relation to the relevant services. When used in relation to the relevant services, it could only be perceived as a distinctive brand.

   The additional material in the Opposed Marks [the Trade Marks], namely, the word “BOARDWALK” is descriptive material…In relation to the relevant services, BOARDWALK simply indicates that accommodation and property services are provided on or near a waterfront.[16]

   [16] Opponents’ Hearing Submissions 8 [22].

7. To further support their position the Opponents point me to Exhibits 4, 5, 6, 7, 8 and 9 of Nguyen 2 which show the Soul Boardwalk precinct being referred to as Soul. In particular, I am pointed toward the following reference made by the Applicant:

   Retail precinct position at the entry way of the 288 Luxury Apartments at Soul allowing retailers to benefit from the high calibre owners and holiday makers in the apartments above.[17]

   [17] Opponents’ Hearing Submissions 10 [30].

1. In my opinion this example does not show the retail precinct being referred to as Soul. Rather it describes the positioning of the retail precinct at the entry way of the residential tower named Soul. Furthermore, given that the parties have a licensing agreement under which the Applicant is licensed to use the Opponents’ Trade Marks, I would not find examples of the Applicant doing just that very persuasive evidence in the matters before me.

2. The Applicant submits that the word ‘soul’ is not highly distinctive:

   It is not a made up or fancy word. It is a common English word with a widely understood meaning. It is not “unusual” or “arbitrary”.

   …

   Like SOUL, BOARDWALK is a common English word with a clear meaning. Contrary to the Opponents’ submissions, however, it is not descriptive of the services for which the Applicant seeks registration and it does not “simply indicate that accommodation and property services are provided on or near a waterfront locations”. It is evocative of the ocean or other outdoor location, perhaps, and therefore may be suggestive of the type of location from which the services might be provided from but it cannot be put any higher than that.[18]

   [18] Applicant’s Hearing Submissions 11 [65].

3. I agree with the Applicant that the words ‘soul’ and ‘boardwalk’ are English words with an understood meaning. The fact that the words are ordinary English words does not preclude a finding of deceptive similarity. The following was stated in Crazy Ron’s Communication Pty Ltd v Mobileworld Communications Pty Ltd:

   the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark.[19]

   [19] [2004] FCAFC 196 [79].

4. In my opinion, the word ‘soul’ is an essential element of the Trade Marks. It is the first element[20] and has no descriptive relevance in relation to the services. The addition of the word ‘boardwalk’ does not dilute the prominence of the word ‘soul’. The identity of ‘soul’ is not subsumed into the meaning of the Trade Marks as a whole.  I am satisfied that ‘soul’ is an essential element of the Opponents’ Trade Marks and also of the Trade Marks.

   [20] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264.

5. Furthermore, in my opinion this gives rise to a real and tangible danger of contextual confusion[21] whereby the common and essential element in all of the trade marks, namely the word ‘soul’, may induce traders and the public into believing that the trade marks emanate from the same source. I am satisfied that the Trade Marks are deceptively similar to the Opponents’ Trade Marks.

   [21] Ravenhead Brick Co Ltd v Ryabon Brick & Terracotta Co Ltd (1937) 54 RPC 341.

6. The Applicant does not rely on s 44(3) or 44(4) of the Act and as such it has not put forward any evidence sufficient to establish prior use, honest concurrent use or other circumstances.

7. I am satisfied that the ground of opposition under s 44 of the Act has been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   …

2. The Opponents have established the grounds of opposition under section 44 of the Act.

3. As I have found that a ground of opposition under the Act has been established, it is unnecessary for me to consider the remaining grounds that were argued. Those grounds, and any others under the Act, would be available to the Opponents to pursue in the event that this decision is appealed.

Costs

1. The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Trade Mark Hearings
23 August 2017