Accentuation Pty Limited v Accenture Global Services GmbH

[2004] ATMO 6

TRADE MARKS ACT 1995

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

Re:      Opposition by Accentuation Pty Limited to registration of trade mark application 855248 (9, 16, 35, 36, 37, 41, 42) - ACCENTURE - in the name of Accenture Global Services GmbH.

Delegate:	Mary Skivington
Representation:	Opponent: Ms Carmen Champion, of counsel, instructed by Hodgkinson And McInnes, Patent and Trade Mark Attorneys. Applicant: Mr Ross McLean, solicitor with Baker & McKenzie, Solicitors And Attorneys.
Decision:	(1) Grounds of opposition under section 44 established in respect of classes 16, 35, 41 and some services in class 42. Trade mark may proceed to registration for a restricted range of goods and services. (2) Costs awarded against the applicant

Background

1. Echitaa Properties, B.V., a Dutch corporation, filed an application to register the trade mark, ACCENTURE, in seven classes, on 27 October 2000. The application claims a Convention priority date of 6 October 2000.

2. Acceptance of the trade mark for the following goods and services was advertised in the Official Journal of Trade Marks on 8 February 2001:

Class	Goods and Services
9	Computer software for use in designing, installing and executing mainframe and client/server application programs, for integrating the financial, manufacturing and sales functions of a business, and for managing customer service and support functions of a business.
16	Pamphlets, books, newsletters, brochures, magazines, reports, journals, manuals and guides in the field of business management, information technology, and computerised information processing.
35	Business management consulting; business consulting; business process management and consulting; business marketing consulting services; procurement services namely, purchasing computer hardware and software for others; providing information in the fields of business management consulting, business consulting; business project management in the fields of information systems design, specification, procurement, installations, and implementation; business acquisitions consulting; analysis services, namely, market analysis; business appraisals; conducting business and market research surveys; business information services in  the field of business change management, business process management, business strategic management and planning services, and business technology; business management planning; business merger consultation; business networking; conducting business research and surveys; business supervision; commercial and industrial management assistance; economic forecasting and analysis; personnel management consultation; preparing business reports; arranging and conducting trade shows and conferences in the field of business and business management; providing information in the field of business consulting.
36	Financial affairs; monetary affairs; venture capital financing; information in the field of finance; analysis services, namely, financial analysis.
37	Installation, implementation, maintenance, and repair services with respect to computers, computer systems, computer networks and computer hardware.
41	Educational services, namely, conducting courses, seminars, workshops, and classes in the fields of computer software development and implementation, computer software usage, business, and business operations and distributing course materials in connection therewith; developing educational materials for others in the fields of computer software development and implementation, computer software usage, business, and business operations.
42	Mediation services; providing information in the fields of information technology, computers, and computer systems; consulting in the areas of computers, computer systems and computer systems design; computer services, namely, design of computers systems for others; computer services, namely, providing databases in the fields of business consulting, information technology, computers and computer systems; information technology consulting services; computer software design for others; computer site design; installation, implementation, maintenance, and repair  services with respect to computer software.

1. Accentuation Pty Limited, who I will refer to as 'the opponent' or 'Accentuation', filed a notice of opposition on 8 May 2001, citing grounds of opposition that fall within the provisions of sections 44 and 60 of the Trade Marks Act 1995, ('the Act'). The opponent is the owner of trade mark number 746008, filed on 13 October 1997, for the trade mark, ACCENTUATION. Accentuation's  application has had a somewhat chequered history in that it was advertised as lapsed on 17 June 1999 but was subsequently revived on 15 February 2001 and advertised as accepted for registration on 22 March 2001.

2. On 14 June 2001, an application to record the assignment of the subject trade mark, ACCENTURE, to Accenture Global Services GmbH, who from here on I will refer to as 'the applicant' or 'Accenture' was filed. The deed of assignment is dated 20 December 2000. The assignment was duly recorded on the Register on 20 June 2001.

3. Registration of ACCENTUATION was opposed by the applicant for registration of the subject trade mark, ACCENTURE, however, on 23 October 2003, four days before the matter was scheduled for hearing, Accenture withdrew its opposition to registration of the trade mark. ACCENTUATION is now registered for the following services:

Class	Services
35	Business consultation to individuals and organisations; consultation in business communication behaviours and processes including interpersonal communication, organisational communication, management communication, leadership communication and strategic communication; providing information in connection therewith; all the above covering written and face-to-face communication.
41	Educational services, namely, conducting courses, seminars, workshops, and classes in the fields of interpersonal, business, organisational and strategic communication; individual coaching in interpersonal, business and strategies  communication, presentation skills, media skills; distributing course materials and information in connection therewith; determining needs, designing, writing and facilitating skills development programs; all the above covering written and face-to-face communication.

1. The table below shows the chronology of events up until the filing of the notices of opposition to registration of these two trade marks:

13 October 1997

17 June 1999
27 October 2000

8 February 2001

15 February 2001
22 March 2001

  8 May 2001
 14 June 2001

  20 June 2001    
  21 June 2001

Trade mark application number 746008 was filed by Accentuation Pty Limited.
Application 746008 advertised as lapsed.
Trade mark application number 855248 filed by Echitaa Properties, B.V., claiming a priority date of 6 October 2000.
Acceptance of 855248 advertised in the Official Journal of Trade Marks.
Trade mark application number 746008 was revived.
Acceptance of 746008 advertised in the Official Journal of Trade Marks.
Registration of 855248 opposed by Accentuation Pty Limited.
An application to record the assignment of 855248 to Accenture Global Services GmbH was filed.
The assignment of 855248 was recorded on the Register.
Registration of 746008 was opposed by Accenture Global Services Gmbh

1. The evidentiary phases of the opposition process were completed by 9 August 2003 and on 25 September 2003 the opponent requested a hearing. As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney on 27 October 2003.

2. The opponent was represented by Ms Carmen Champion, of counsel, instructed by Hodgkinson and McInnes, Patent and Trade Mark Attorneys. The applicant was represented by Mr Ross McLean, a solicitor with Baker & McKenzie, Solicitors and Attorneys.

   The Evidence

3. The opponent's evidence comprises three statutory declaration, with Exhibits TN01 to TN23 attached to the first of the three declarations, made by Nicolle Tessier, Director of Accentuation Pty Ltd and respectively dated 8 August 2001, 11 June 2003, and 7 August 2003, and a statutory declaration made by Chris Gray, Managing Director of ICON International Communications Pty Ltd on 8 July 2003.

4. The applicant's evidence comprises two statutory declarations. The first of these was made by Brett Chapman Doyle, a Solicitor and Partner of Baker & McKenzie, (at that time) on 7 November 2002. Exhibits A to F  are attached to this declaration. The second declaration with Exhibits A to L and TLP-1 to TLP-4 was made by Teresa Loyola Poggenpohl, a Partner of Accenture LLP on 3 December 2002.

   Opponent's Evidence

5. Ms Tessier, who is the Director of the opponent, declares that in 1991 she formed a business trading as Accentuation and that in 1996 the business became an incorporated body known as Accentuation Pty Limited. She reports that since 1991 she has controlled the operations of Accentuation. Ms Tessier declares that the opponent applied to register the trade mark ACCENTUATION on 13 October 1997. She declares that Accentuation provides management, consultancy and education services in the fields of organisational and corporate communications to corporations, including large multi-national corporations. Ms Tessier declares that one of Accentuation's clients since 1995 has been Andersen Consulting, now renamed Accenture, which is a company related to the applicant. Ms Tessier avers that Accentuation has provided its services in locations throughout Australia including Sydney, Brisbane, Perth, Adelaide and Tasmania. Ms Tessier reports that the opponent's services are promoted via entries in the Yellow Pages™ and White Pages™, use of the trade mark on stationery, brochures and information kits, website usage since January 2001 and by word of mouth recommendation.

6. Exhibit NT23 is a letter dated 8 May 2001, from Accenture to Accentuation, which in part reads,

   In light of recent events, I am sure you will understand that Accenture cannot continue to provide work with Accentuation.

7. Ms Tessier declares that since the launch of the name and trade mark, ACCENTURE, there have been instances of confusion with the opponent's trade mark because of the similarity in the words themselves and the colours and font types used. She reports eleven instances of confusion of which she has been made aware. The Tessier 2 declaration contains the total revenue figures for the years 1991 to mid 2003 and the advertising expenditure for the five years 1998 to 2002. These indicate that the opponent is a relatively small but steadily growing enterprise. The Tessier 3 declaration contains further reported instances of confusion between the trade marks ACCENTURE and ACCENTUATION either because of the similarity in the words or because it was assumed that the companies must be related.

8. Chris Gray, who is the Managing Director of ICON International Communications Pty Ltd, declares that he was engaged by the opponent, in April 2001, to implement a structured brand marketing and public awareness campaign for its business. He reports that this was timed to coincide with the opponent's 10-year history in the marketplace. Mr Gray declares that before being engaged by Accentuation he had become aware of the marketing campaign launched by Andersen Consulting to alert and acquaint the Australian marketplace with its name change to Accenture. He declares that this campaign included a saturation advertising program involving the print and television media, outdoor advertising, promotional and publicity activities and an extensive media relations campaign. He reports that his subsequent investigations and those of his staff  'across various media, industry and business contacts revealed a high level of brand confusion'. He declares that his professional advice to Accentuation was not to proceed with its marketing campaign because the saturation marketing by Andersen Consulting of the name change to Accenture was too great a barrier to success. Mr Gray declares that one of the concerns was that ACCENTUATION might be perceived as copying ACCENTURE because of the 'vast expenditure' being undertaken to launch the ACCENTURE brand.

   Applicant's Evidence

9. Brett Chapman Doyle, a solicitor and, at that time, a partner with Baker & Mckenzie, who act for the applicant in these proceedings, declares that in September 2000 his firm was instructed by its Chicago Office to conduct a trade mark search for the proposed trade mark ACCENTURE, on behalf of Andersen Consulting, now known as Accenture. He reports that the search located trade mark 746008 and disclosed that it was lapsed. Exhibit 'A' is a copy of Mr Doyle's memorandum to the Chicago Office in which he states that the prospects for registration of the trade mark ACCENTURE in classes 9, 16, 35, 36, 37, 41 and 42 'are good'. The remaining exhibits to this declaration are Trade Marks Office database printouts related to trade marks 746008 and 855248, copies of correspondence from IP Australia to Baker McKenzie concerning their requests for copies of documentation under the Freedom of Information Act 1982, from the file of trade mark number 746008, the copied  documents and a copy of  the response from IP Australia in relation to a request for revocation of acceptance of trade mark number 746008.

10. Teresa Loyola Poggenpohl who is a partner of Accenture LLP, formerly known as Andersen  Consulting LLP, a Director of the applicant and the Director of Global Advertising and Brand Management for the entire Accenture organisation, declares that her responsibilities include management of the trade mark ACCENTURE and marketing, associated with the ACCENTURE rebranding process. She avers that her company is one of the world's leading management consulting and technology services organisations. Ms Poggenpohl declares that on 7 August 2000, Andersen Consulting was notified of the successful outcome of an arbitration against Andersen Worldwide and Arthur Andersen and as part of the final award that released Andersen Consulting from further obligations to Andersen Worldwide and Arthur Andersen, Andersen Consulting was required to cease using the name Andersen Consulting by 31 December 2000. Ms Poggenpohl reports that her company ran a renaming competition amongst employees, which was won by an employee in Norway who suggested the word ACCENTURE, because 'my company places an accent, on the future.' The new name, she declares, was announced in London, on 27 October 2000, although the official commencement date was 1 January 2001. A major promotion of the trade mark ACCENTURE accompanied its launch in Australia. Ms Poggenpohl declares that promotional activities included a mailout of a promotion package to client senior executives, a golf tournament in Melbourne covered by local and international television and the print media, an airship displaying the trade mark which flew over Melbourne and Sydney for about two months, sponsorship of theatre productions and sponsorship of a triathlon series. In addition to print and television advertising, Ms Poggenpohl declares that advertising included the repainting of a Melbourne tram to carry the trade mark and a one week media buy-out of all illuminated posters displayed in bus stops in the Sydney CBD. Ms Poggenpohl attests to a knowledge of the applicant's dealings with Accentuation, although she does not declare when she first became aware of this. She reports that Accenture Australia has not received notice of any instances of confusion with the trade mark ACCENTUATION.

    Grounds of Opposition

11. At the hearing Ms Champion pressed grounds of opposition under the provisions of sections 44 and 60 of the Act.

    Submissions and the law

    Subsections 44(1) and (2)

12. Section 44 provides that a trade mark application must be rejected if the applied-for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar goods or similar services or goods and services that are closely related.

13. Mr McLean submitted that the first stated ground in the notice of opposition states that 'the opposed mark is substantially identical with or deceptively similar to, the opponent's trade mark application number 746008, for the word ACCENTUATION, which has an earlier priority date'. He argued that no such ground of opposition exists because section 44 has an additional requirement that the opponent's prior application must be in relation to similar goods and services or closely related goods and services. Mr McLean said that section 52(4) of the Act makes it clear that registration can only be opposed on grounds set out in the Act and on no other grounds. The stated ground, he said, should be dismissed as it is not a valid ground of opposition.

14. Grounds of opposition are frequently couched in fairly general terms rather than specific terms. In this case the notice of opposition identified a particular trade mark alleging that it is substantially identical with or deceptively similar to the subject mark and that it has an earlier priority date. It is clear to me at least, that while it could have been more specifically worded, the opponent raised a ground of opposition under section 44. I think it would be unduly pedantic of me to decide that a ground of opposition was invalid merely because it failed to adhere to the precise wording of the allowable grounds of opposition specified in the Act.

15. Ms Champion conceded that in line with the relevant tests for substantial identity, set down by Windeyer J, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407, ACCENTUATION and ACCENTURE are not substantially identical. However, she argued that the trade marks are deceptively similar.

16. Section 10 of the Act states that 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.

17. In support of her submissions that the trade marks are deceptively similar Ms Champion referred to London Lubricants (1920) Limited's Application, 1925 42 RPC 264 where Sargant LJ said, that in a comparison of trade marks the first syllable of a word is, as a rule, far the most important for the purpose of distinction. Ms Champion observed that the first six letters of each trade mark form the same known word. She said that the dominant or essential feature or idea of each trade mark is the prefix ACCENT and further noted that the emphasis or stress would be placed on the word ACCENT when each of the trade marks is pronounced. She submitted that any difference in pronunciation and appearance of the marks must be balanced against 'the idea of the marks'. Ms Champion submitted that support for this argument may be found in Jafferjee v Scarlett, (1937) 57 CLR 115, where Latham CJ cited from Lord Herschall's Committee's report at pages 121 and 122 ,

    Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

18. Finally Ms Champion submitted that the trade marks are so similar, that per Registrar of Trade Marks v Woolworths, 45 IPR 411, there is 'a real tangible danger of deception or confusion'.

19. Mr McLean submitted that the opponent's evidence shows that its customers are large sophisticated companies and that  its services are specialised and chosen with care so that in this context the differences between the trade marks are more than sufficient to avoid the likelihood of confusion. He noted that the applicant's trade mark is not a known word whereas the opponent's trade mark is a well known word with a defined meaning. He said that ACCENTUATION is a word suitable for use as a trade mark for the opponent's services as it conveys some meaning in relation to them whereas the applicant's trade mark, ACCENTURE, is an invented word that conveys no obvious message. Mr McLean argued that care must be taken not to concede any monopoly to the opponent in the word ACCENT and that the proper comparison is between the words as a whole. He said that in deciding the matter I should have regard for the principles established in such cases as Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik & Others,  (2002) 56 IPR 182 at 218, Pianotist Co.'s Appn, (1906) 23RPC 774 at P777 and Australian Woollen Mills Ltd v F S Walton & Co. Ltd  (1937) 58 CLR 641 at 658.

1. In the Pianotist case , supra Parker J listed certain rules of comparison. He said,

   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 a normal way as a trade mark for the goods of the respective owners of the marks."

2. I do not agree, in this case, that confusion is less likely because one trade mark consists of a known word and the other consists of a coined word. Although ACCENTURE is a coined word it looks and sounds like a real word. It conforms with the rules by which English words are formed, '-ture' being a noun-forming word-final element occurring, for instance, in many words such as culture, signature, legislature or investiture. ACCENTUATION and ACCENTURE are both longer than the average English word in common usage. In my experience it is the first syllables of such words that are likely to be retained in the memory while the final elements may be only imperfectly recalled. ACCENTUATION and ACCENTURE both convey a similar idea in that they clearly relate to the stress or emphasis laid upon, or the importance or significance attached to something. I think it is likely, that as was held in Jafferjee v Scarlett, (1937) 57 CLR 115, the shared 'idea' of these trade marks is the feature by which they will be recalled rather than the precise details of each trade mark. The services of both parties are likely to be required on a from time to time basis rather than a daily basis and are as likely to be accessed as the result of personal recommendation as by a search through relevant directories, so that the chances of confusion resulting from imperfect recollection are significantly higher than they would be if the services were to be required more frequently.

3. In respect of ACCENTUATION and ACCENTURE the observations of  Lord Radcliffe in the Privy Council in de Cordova v Vick Chemical Co, (1951) 68 RPC 103 at 106, are particularly relevant. He said,

   The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.

4. The significant detail in both trade marks is the word ACCENT and it is this detail rather than the exact suffix by which each of these trade marks will be recalled. While, as yet, none of the examples of confusion to which Ms Tessier refers in her first and third declarations appear to have resulted in a significant loss of business for the opponent, they do provide compelling evidence that consumers find the trade marks ACCENTURE and ACCENTUATION confusingly similar. I find that these trade marks are deceptively similar. While I have made this assessment on the basis of the trade marks as filed I note that the likelihood of deception is markedly increased by the manner in which both trade marks are used. In use, both marks begin with a lower case letter 'A'. There is an accent on this letter in ACCENTUATION, (earlier use shows the trade mark with an acute accent on the first letter 'c') and in ACCENTURE there is an accent on the letter 'T'. The trade marks of both parties are rendered in a similar colours and both parties use similar colours for emphasis in their promotional materials.

5. Given that I have found these trade marks to be deceptively similar, I will now determine if the goods and services specified in the subject application are similar or closely related to the services specified in the opponent's registration. The opposing parties are in disagreement here, with Ms Champion stating that the goods and services are closely related, and Mr McLean arguing that the services of the opponent's registration are limited to those in respect of communication and therefore, in his opinion,  not closely related to the applicant's goods in classes 9 and 16. He further argued that the opponent's services are clearly not the same or of the same description as the applicant's services in classes 36, 37 and 42. Finally Mr McLean did not concede that there was an overlap in the services in classes 35 and 41.

6. Section 14 of the Act defines similar goods and similar services. Similar goods are the same or of the same description. Similar services are likewise the same or of the same description. However, closely related goods and services are not defined in the Act.

7. Some assistance in determining if goods and services are closely related may be found in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co 1 IPR 265, where Lockhart J listed some examples of goods and closely related services. He said,

   It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

8. Additional help is provided in Registrar of Trade Marks v Woolworths Ltd 45 IPR, the Metro case, at paragraph 38, where French J said,

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

9. The software comprehended by the applicant's goods in class 9 is specifically for computer application programs and not of the same description as software used for educational purposes in the conduct of courses, seminars or workshops on interpersonal communications. The opponent's software is not closely related to the educational services provided by the opponent.

10. The applicant's goods in class 16 include 'pamphlets, books, newsletters, brochures, magazines, reports, journals, manuals and guides in the field of business management'. The opponent's services include, 'business consultation .......interpersonal communication, organisational communication, management communication  .... written and face to face communication' in class 35 and in class 41 'educational services, ....in the fields of interpersonal, business, organisational and strategic communication; media skills; ....designing, writing and facilitating skills development programs'. A vital component of business management is the ability to communicate effectively and written course material is an integral component of the provision of  training in effective communication. Written materials may incorporate books, manuals, brochures and pamphlets, newsletters and other written guides. Without the use of written materials it would be difficult if not impossible to provide educational services. I find that these goods and services are closely related.

11. In Jellinek's Appn, (1946) 63 RPC 59, Romer J defined the tests for consideration in a determination of whether goods are of the same description. They are whether the respective goods are of the same nature, whether they are used by the same people for the same purposes and whether the trade channels are the same. These tests may also be applied in a determination of services of the same description.

12. Mr McLean argued that the opponent's services in classes 35 are limited to services in respect of 'communication'. I consider that as the specification is set out, the first item, 'Business consultation to individuals and organisations;' is a separate, broadly defined item in a list of items. If I am wrong about this, and the final words in the specification, 'all the above covering written and face-to-face communication', do qualify the first item, I am satisfied that the words themselves do not restrict or limit the services to communication services. Given this conclusion it is clear that the business consulting services provided by the opponent are the same as the various business consulting services provided by the applicant.

13. Both parties provide educational services by means of courses, seminars and workshops and develop their own educational materials. The nature of their services are the same although the subject matter of their training may  be  different. Both parties aim to develop employable skills in individuals. Educational establishments constantly seek to improve and extend the range of courses on offer and the courses that both parties offer would frequently be traded through the same trade channels. I consider that given the general nature and purposes of the services and the fact that such services are traded through similar trade channels such as professional consultants and business and technical colleges they are services of the same description.

14. The applicant's services in class 36 are specialised services provided by actuaries, accountants and the like. They are different in nature, required for different purposes and the trade channels are different. I consider that these services have no nexus of similarity with the opponent's business and educational services. Likewise the applicant's services in class 37 will be provided by specialist technicians whose skills are different in nature from those required to provide the opponent's services. They are required for different purposes and the trade channels are dissimilar. I find that these services are not services of the same description.

15. The applicant's services in class 42 include mediation services. Although they are a specific service and in a different class from the opponent's services in class 35, I consider that they are a subset of business consultation services and organisational and management communication services. They are services that fall within the same description. The applicant's remaining services in class 42 deal with information and consultation services in the fields of information technology, computers and computer systems, computer services and software and site design services. Such services are different in nature from the opponent's services and are used for different purposes and traded through different channels. They are not services of the same description.

16. French J in Registrar of Trade Marks v Woolworths, 45 IPR 411 at 426 said:

    The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

    And at 428:

    ..the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

17. Given the deceptive similarity between the trade marks ACCENTURE and ACCENTUATION and the similarity in respect of some of the goods and services I find that the section 44 grounds of opposition have been established in respect of the goods in class 16 and the services in classes 35 and 41 and in respect of mediation services in class 42.

    Subsection 44(3)

18. Mr McLean submitted that if the section 44 (1) and (2) grounds were made out in respect of some of the goods or services then it would be proper to apply the 'other circumstances' provisions of subsection 44(3)(b). He submitted that the applicant adopted the trade mark without knowledge of the earlier filing of ACCENTUATION and that since filing the applicant has made 'massive use' of its mark ACCENTURE. He argued that the 'potential for confusion will have evaporated as people are more aware of ACCENTURE as a mark and of the size and nature of its business.' I think it is likely, given the extent of its advertising campaign, that many consumers would now be aware of ACCENTURE, however that does not in my opinion reduce the likelihood of deception occurring between these trade marks. What it does do, I think, is increase the likelihood of consumers being confused into thinking that ACCENTUATION is connected in some way to the now more familiar ACCENTURE. In John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 113 the Assistant Comptroller said:

    ....no limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.

19. I accept Mr McLean's submission that the applicant was unaware of the earlier filing of ACCENTUATION when it adopted the trade mark ACCENTURE, because at that time ACCENTUATION was lapsed. Mr McLean said that the trade marks have now co-existed for three years and that any inconvenience the opponent would suffer by registration of this application is small relative to the inconvenience the applicant would suffer if registration of its trade mark were refused.

20. An applicant who opts to use its trade mark prior to registration does so at its own risk. The applicant as a client of the opponent since 1995 when it traded under the name Andersen Consulting, was aware of the opponent as a provider of similar services under the trade mark ACCENTUATION. Accenture chose to launch its trade mark with a 'saturation marketing' campaign in the full knowledge of the opponent's trade mark and thus took a calculated risk. This does not create an 'other circumstance' that would make it proper to apply the provisions of subsection 44(3)(b).  Indeed, a large corporation that knowingly opts to use a similar trade mark in respect of similar services in a similar location to that of another smaller trader would appear to be operating with  a blatant disregard for the common law rights of the smaller trader.

21. Mr McLean submitted that the opponent knew of the applicant's intention to begin using the trade mark ACCENTURE and did nothing. The facts do not bear this out. Accentuation, on learning of the applicant's intention to use the trade mark, immediately sought to revive its application to register the trade mark ACCENTUATION, which had lapsed due to unforseen and unfortunate circumstances but which, nonetheless, had been in continuous use since 1991.

22. Mr McLean argued that the opponent's trade mark would not have been revived if the office were of the view that the trade marks are deceptively similar. Unfortunately I do not know if the applicant's trade mark was considered prior to the revival of ACCENTUATION. The file merely carries an unsigned file note stating, 'CPI search re-done - no citations'. This regrettable departure from the normal practice of filing a copy of the search strategy used and an extract list showing the trade marks considered, means that I have no way of ascertaining if ACCENTURE  was considered at all in the revival process.

23. I find that there are no circumstances in this case that would allow the provisions of subsection 44(3)(b) to be applied.

    Section 60

24. In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark that has acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark on which the opponent relies to be registered or the subject of an application for registration.

25. I have already found that the trade marks are deceptively similar. Ms Champion submitted that the evidence establishes that at the relevant date the opponent had acquired the necessary reputation in its trade mark and that there is credible evidence of deception and confusion having occurred. Mr McLean argued that at the relevant date the applicant's reputation was 'very modest' and did not meet the requirements for section 60. In support of his arguments he relied on Unilever v Livingstone, (2001) 53IPR 568 and the SAP v Sapient case [1999] 48 IPR 593.

26. The opponent's customers are large high profile companies and its trade mark has been in continuous use since 1991. However, its revenue although steadily increasing each year is still only modest. The amount spent on advertising is low and its website was not up and running until after the relevant date. While reputation may accrue from a variety of sources, as was observed by Kenny J, in McCormick & Co v Mary McCormick, 51 IPR 102, he also said,

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

27. Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. While the opponent has a number of high profile customers I have no clear idea of the breadth of exposure of the opponent's trade to the wider community of potential customers. There are no trade declarations attesting to the opponent's reputation. It is one thing to provide services under a particular trade mark but it is quite another to show that in so doing the trade mark has amassed a reputation which is sufficient to lead consumers into deception or confusion if another trader uses a trade mark that is substantially identical or deceptively similar. On the basis of the evidence before me, I am not satisfied that the requisite reputation existed at the relevant date. Accordingly this ground of opposition has not been established.

    Decision

28. I find that the opponent has established grounds of opposition under subsection 44(1) and (2) of the Act. These grounds apply to the goods in class 16 and the services in classes 35 and 41 and also to mediation services in class 42. My decision in relation to the applicant's trade mark, as it stands, must be to refuse registration. However, provided that the applicant, within fourteen days of the date of this decision, consents to restrict its specification of goods and services by the deletion of classes 16, 35 and 41 and by the deletion of mediation services in class 42, the trade mark may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

1. Both parties have sought a favourable award of costs. It is usual for costs to follow the event, and as the opponent has been successful to a significant degree I award costs against the applicant, Accenture Global Services GmbH, in accordance with Schedule 8 of the Trade Marks Regulations 1995.

   Mary Skivington
   Hearing Officer
   Trade Marks Hearings
   30 January 2004