A & G Insurance Services Pty Ltd v Stratton Finance Pty Ltd

[2016] ATMO 106

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by A & G Insurance Services Pty Ltd to registration of trade mark application no. 1565827 (35, 36, 39) - STRATTON SIMPLY SMARTER FINANCE (and Device) - in the name of Stratton Finance Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Written submissions from King & Wood Mallesons. Applicant: Andrew Sykes of Counsel instructed by EKM Patents & Trade Marks.
Decision:	2016 ATMO 106 Opposition under section 52 of the Trade Marks Act 1995 – ground pursued under section 44 – ground not established – trade mark to proceed to registration.

Background

1. Stratton Finance Pty Ltd (‘the Applicant’) filed a trade mark application under the provisions of the Trade Marks Act 1995 (‘the Act’) on 8 July 2013. The current details of the trade mark application are:

   Trade Mark No: 1565827

   Trade Mark:

(‘the Trade Mark’)

Specification of Services:

Class 35:

Advertising; business management; business administration; office functions; administration of the business affairs of franchises; business advisory, assistance and consultancy relating to franchising; franchising consultancy and business support services; franchising services (group purchasing, group advertising); accounting; drawing up of statements of accounts; commercial administration of the licensing of goods and services for others; administrative processing of purchase orders; commercial information and advice for consumers (consumer advice shop); cost price analysis; business appraisals; business advice and assistance; business management assistance; outsourcing services (business assistance); commercial or industrial management assistance; auditing; book-keeping; professional business consultancy; business management consultancy; business organisation consultancy; business planning consultancy; business information; business inquiries; business investigations; business research; commercial information agencies; presentation of goods on communication media, for retail purposes; price comparison services; compilation of information into computer databases; invoicing; advisory services for business management; advisory services relating to business planning; advisory services relating to commercial planning; business planning; tax planning (accountancy); office machines and equipment rental; rental of business machines; procurement services for others (purchasing goods and services for other businesses); administration relating to business planning; sales promotion for others; sponsorship search; market reporting consultancy; market reporting services; preparation of business reports; preparation of commercial reports; preparation of economic reports; preparation of reports for marketing; car dealerships (vehicle sales); vehicle dealerships (sales); facilitating the trade exchange of goods and services; vehicle procurement services; organisation and management of customer loyalty programmes
Insurance; financial affairs; monetary affairs; real estate affairs; insurance information; insurance consultancy; insurance underwriting; accident insurance underwriting; car insurance underwriting; vehicle insurance underwriting; car insurance services; vehicle insurance services; motor vehicle insurance services; health insurance underwriting; life insurance underwriting; marine insurance underwriting; insurance services relating to property; home insurance; travel insurance; provision of equipment guarantee insurance; brokerage advisory services relating to insurance; insurance brokerage; credit account insurance brokerage; financial services; financial analysis; financial consultancy; financial information; financial management; financial sponsorship; clearing, financial; financial evaluations; repair costs evaluation (financial appraisal); fiscal valuations; property valuation; advisory services relating to financial planning; financial planning; personal financial planning services; tax financial planning; financial leasing; provision of equipment finance; advisory services relating to finance; advisory services relating to investment finance; personal and corporate finance services; providing finance for credit sales; provision of finance; provision of lease-purchase finance facilities; raising of finance; research services relating to finance; trade finance services; brokerage; financial brokerage; brokerage services relating to financial instruments; real estate brokerage; pawn brokerage; securities brokerage; investment brokerage; mortgage banking and brokerage; brokerage services relating to debt instruments; commercial mortgage brokerage; brokerage of finance; vehicle brokerage; rental of real estate; rental of accommodation; rental of buildings; rental of offices (real estate); rental of property; rent collection; banking; home banking; mortgage banking; capital investments; charitable fund raising; organization of collection; financing services; car financing; vehicle financing; vehicle lease financing; lease-purchase financing; hire-purchase financing; financing of property development; loans (financing); instalment loans ; car loans; vehicle loans; financing of home loans; financing of personal loans; guarantee loans; guaranteeing loans; loans against securities; mortgage loans; provision of loans; provision of real estate loans; provision of commercial loans; provision of consumer loans; provision of home loans; provision of industrial loans; loans services for property investment; credit bureaux; debt collection agencies; debt collecting; debt factoring; debt management services; recovery of debts; debt restructuring; real estate services; real estate agencies; real estate appraisal; real estate management; fiduciary; fiscal assessments; fund investments; electronic funds transfer; guarantees; housing agents; issuing of travellers checks (cheques); leasing of real estate; leasing of property; leasing of buildings; lending against security; mutual funds; provident fund services; safe deposit services; savings bank services; surety services; trusteeship; deposits of valuables; investment planning; vehicle warranty services; preparation and analysis of financial reports; preparation of credit rating reports; provision of credit rating; factoring; factoring services for invoices; invoice discounting services; commercial mortgages; provision of financial information via an online calculator; provision of online financial calculators; provision of online mortgage repayment calculators

Class 36:

Class 39: Transport; travel arrangement; rental of vehicles; rental of cars; leasing of vehicles; leasing of cars; management of vehicle fleets

1. The Trade Mark was examined under section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 5 February 2015.

2. A Notice of Intention to Oppose was filed by A & G Insurance Services Pty Ltd (‘the Opponent’) followed by a Statement of Grounds and Particulars on 18 March 2015 setting out a sole ground of opposition under section 44 of the Act.

3. Following the filing of the Notice of Intention to Defend by the Applicant, the evidence stages commenced, resulting in the filing of the evidence set out below:

Evidence in Support

• Statutory Declaration of Bill Ladas (Special Counsel at King & Wood Mallesons) made 10 July 2015 with exhibits BL-1 to BL-4.

Evidence in Answer

• Declaration of Mathew James Kilham (Chief Information Officer, Executive Director and part-owner of the Applicant) made 22 October 2015 with exhibits MJK-1 to MJK-26.

• Declaration of Christopher Cao (Trade Marks Attorney for the Applicant) made 22 October 2015 with exhibits CC-1 to CC-10.

1. Both Applicant and Opponent requested to be heard and a hearing date was set for 3 November 2016. I was allocated the matter to decide in my capacity as a delegate of the Registrar of Trade Marks and I set out a timetable for the provision of written submissions.

2. I heard the opposition to the Trade Mark in Canberra on 3 November 2016. Andrew Sykes of Counsel appeared on behalf of the Applicant and the Opponent did not make an appearance, having elected to rely solely on its written submissions.

Onus and Reasons

1. The Opponent bears the onus of establishing the ground of opposition on the civil standard of the balance of probabilities.[1] As mentioned above, the ground of opposition pursued is that under section 44 of the Act.

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)…

   (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.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

2. The Opponent owns a number of trade marks and relied upon the following ones owned by Auto & General Holdings Pty Ltd (‘the cited trade marks’) in pursuit of this ground of opposition:

Trade Mark No.	Trade Mark	Priority Date	Classes of Services
1530747	Simply Smarter Insurance	11 December 2012	36, 37
1555042	2 May 2013	35, 36
1555043	BUDGET DIRECT SIMPLY SMARTER INSURANCE	2 May 2013	35, 36

1. The cited trade marks were filed before the Trade Mark and claim (amongst other things) insurance services and related financial services in class 36. For brevity I find that the Applicant’s insurance services in class 36 of its specification are the same or of the same description[2] as the services of the cited trade marks in that class. That being the case, this matter will primarily turn on the similarity (or otherwise) of the respective trade marks.

   [2] See the definition of ‘similar services’ under section 14(2) of the Act.

‘Deceptively Similar’

1. On a side-by-side comparison[3] the Trade Mark is not substantially identical to any of the cited trade marks and the Opponent did not press this aspect of section 44. However, the Opponent’s written submissions did argue that the Trade Mark was ‘deceptively similar’[4] to the cited trade marks. On that question, I refer to the oft-quoted authority in the case of Australian Woollen Mills Ltd v F. S. Walton and Company Ltd where Dixon and McTiernan JJ explained:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[5]

   [3] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, (414-415).

   [4] Section 10 of the Act defines the expression ‘deceptively similar’.

   [5] (1937) 58 CLR 641, (658).

2. For the purposes of this opposition, I will compare the Trade Mark with cited trade mark no. 1530747: ‘Simply Smarter Insurance’. If I find that the Trade Mark is not deceptively similar to that trade mark, it follows that the Trade Mark would not be deceptively similar to the remaining cited trade marks, which feature additional differentiating word elements. In any event, should I have found the respective trade marks deceptively similar, I note in any event that the evidence indicates the Trade Mark was used for relevant services before the filing date of the remaining two cited trade marks.   

3. Turning to the visual aspects of the trade marks in question, the Trade Mark features a number of elements, especially the prominent name ‘Stratton’ and the inclusion of a sizable device. Appearing underneath in a much smaller font size (albeit in capital letters) is the expression ‘SIMPLY SMARTER FINANCE’. It is this presence of this element within the Trade Mark that is of principal concern to the Opponent.  

4. The cited trade mark consists solely of the expression ‘Simply Smarter Insurance’ without embellishment. Accordingly, similarity between the Trade Mark and the cited trade mark begins and ends with the expression ‘Simply Smarter’ followed by a term describing the nature of the service provided.

5. On an aural comparison, relevant consumers would have no option but to use the expression ‘Simply Smarter Insurance’ when purchasing those insurance services. However, the same cannot be said of the Trade Mark. As the first part of a trade mark is generally considered the most important for the purposes of comparison[6], it is much more likely that relevant consumers would recall the Trade Mark by the name ‘Stratton’ rather than by the smaller slogan that follows it. That, however, is not the end of the matter.

   [6] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, (279).

The distinctiveness of the common element

1. In the Frigiking Trade Mark case[7], it was said that the court’s deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’. Matter which is common to the trade should be to some extent discounted in the comparison between two trade marks.[8] However it cannot be completely ignored, particularly where one of the trade marks consist solely of the shared non-distinctive material. The following assessment from Broadhead’s Application[9] is apposite here:

   [W]here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that (nor did the Assistant-Comptroller, as I read his decision, make it so appear) that you must treat the words as though the common part was not there at all.

   [7] [1973] RPC 739, [752].

   [8] Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 58 RPC 127.

   [9] (1950) 67 RPC 215.

2. To emphasize the nature of the common element ‘Simply Smarter’, the declaration of Christopher Cao contains evidence of that expression appearing on the websites of other Australian traders[10] along with extracts from the Register of Trade Marks featuring trade marks from various industries incorporating similar expressions.[11] The expression is, on its face, laudatory and one that other traders would ordinarily desire to use in the course of trade.

   [10] Exhibit CC-6 to the Christopher Cao declaration.

   [11] Exhibit CC-5 to the Christopher Cao declaration.

3. Having made that observation, I note that an adverse examination report was raised in respect of the Opponent’s trade mark on 18 March 2013 under section 41 of the Act. The Opponent then provided evidence sufficient for the examiner to be satisfied that the provisions of section 41(5) of Act[12] could be applied. That evidence is before me and attached as exhibits to the declaration of Bill Ladas. In other words, it was found that the Opponent’s trade mark did or would distinguish its claimed services from the services of other traders.

   [12] Section 41 as it stood prior to amendments to that section brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012. (Schedule 6, Item 113).

4. The Opponent additionally argued the elements ‘Stratton’ and ‘Simply Smarter Finance’ in the Trade Mark were both distinctive and cited Australian case authority on trade marks consisting of more than one independently distinctive element.[13] The Opponent then submitted that:

   [T]he SIMPLY SMARTER FINANCE element of the Applicant’s Mark is being used as a separate trade mark. The evidence set out in the Second Kerr declaration describes at [10] how it is common in the insurance industry for a house mark and tag line to function as separate but related brands. This are [sic] other consumer-facing industries which use tag lines similarly, including famous trade marks, for example in respect of clothing (NIKE JUST DO IT), fast food (MCDONALDS I’M LOVIN IT) and retail outlets (MYER MY STORE).

   [13] E.g. Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438, [26]-[38].

5. While it is possible for two trade marks to operate concurrently, I do not consider that the expression ‘Simply Smarter’ with the addition of a descriptive word is prima facie capable of operating as a badge of origin in its own right. The Opponent nevertheless highlights the evidence showing the Applicant’s past use of ‘Simply Smarter Finance’ independently of the other elements of the Trade Mark. As Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc:

   …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.[14]

   [14] (1973) 129 CLR 353, (362); 1 ALR 443, (450).

6. The Opponent then highlighted a decision by the English High Court of Justice in Bulova Accutron Trade Mark[15] where the trade mark ‘ACCURIST’ in relation to clocks and watches was held to be deceptively similar to a composite trade mark consisting of the words ‘BULOVA ACCUTRON’. Putting aside the fact that the onus in that case was on the applicant to satisfy the court that there would be no reasonable likelihood of confusion (and the opposite is true here), each decision is made on its own particular circumstances using the governing principles of trade mark law at the time. In that regard:

   The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.[16]

   [15] [1969] RPC 102.

   [16] Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application [1968] HCA 72; (1968) 118 CLR 128, (139).

7. Ultimately, I am not considering the registrability of the expression ‘Simply Smarter Finance’ which forms but one element of the Trade Mark. That expression is the subject of a separate trade mark application filed by the Applicant (no. 1749966). This opposition concerns the registration of the Trade Mark as applied for, and it is that trade mark the Applicant will enjoy statutory rights in, should it be registered. The comparison between trade marks is largely one of fact and degree and the appropriate approach was set out in the case of Clark v Sharp:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[17]

   [17] (1898) 15 RPC 141, (146).

1. The placement and context of the common element within the Trade Mark is relevant,[18] and in the Trade Mark it is dwarfed by the appearance of the name ‘Stratton’. I am not satisfied that the shared element ‘Simply Smarter…’ which on its face has limited inherent adaptation to distinguish the services has retained its identity within the Trade Mark as an essential feature. Other factors relevant to the consideration were highlighted by Lord Parker in Re Pianotist Co Ltd’s Application:[19]

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in normal way as a trade mark for the goods of the respective owners of the marks.

   [18] See REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559, [234].

   [19] (1906) 23 RPC 777.

2. The financial and insurance services within the conflicting specifications are quite broad and are likely to be provided to a wide range of potential customers. Having said that, I consider the nature and kind of Australian consumers who enlist insurance and financial services would be sufficiently attentive and aware of the differences and similarities between the trade marks in question. In that context, the differences between the trade marks would mean that deception or confusion is unlikely to occur.  

3. If a trade mark has become distinctive or capable of distinguishing particular services (such as the cited trade mark has in this case) consumers may be more likely to notice changes to the mark.[20] Due to the visual and aural differences between the parties’ respective marks, I find that the relevant consumer who imperfectly recalled the Trade Mark is unlikely to remember the tagline ‘Simply Smarter Finance’ when encountering the cited trade mark. Similarly, a previous customer of insurance or financial services under the cited trade mark is unlikely to perceive a connection to, or association with, the Trade Mark.

   [20] See Australian Postal Corporation v Digital Post Australia (No.2) [2012] FCA 862, [59].

4. As to whether the use of a trade mark is ‘likely to deceive or cause confusion’ French J in Registrar of Trade Marks v Woolworths Ltd[21] observed:

   The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

   [21] (1999) 45 IPR 411, (426).

5. I find that the ‘probability’ of deception or confusion arising from the use of the Trade Mark on the claimed services would be trivial at best. The Trade Mark is not, in my view, deceptively similar to the cited trade marks, and I find on balance that the ground of opposition under section 44 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

1. The Opponent has not established a ground of opposition. I direct that trade mark application no. 1565827 may proceed to registration one month from the date of this decision.

2. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant in this matter has been successful. I therefore award costs against the Opponent under section 221 of the Act and in line with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Oppositions and Hearings
28 November 2016