Accenture Global Services GmbH v SanEmpero Group International Pty Ltd

[2011] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Accenture Global Services GmbH to registration of trade mark application 1247659 (35, 36, 37, 41, 42, 45) - ACCENTRO - filed in the name of SanEmpero Group International Pty Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Julian Cooke of Counsel instructed by Baker & McKenzie, Lawyers. Applicant: Hal Altan of Counsel instructed by Accentro Legal, Solicitors.
Decision:	2011 ATMO 77 Section 52 opposition: Grounds pressed under sections 44 and 60 of the Act - grounds established – trade mark refused and costs awarded against Applicant.

Background

1. The trade mark application that is the subject of this opposition was filed by SanEmpero Group International Pty Ltd (‘the Applicant’) on 20 June 2008. The current details of that trade mark are:

Accentro

Class 35: Compiling real estate brokerage listings; organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; real estate auctioneering

Class 36: Advisory services relating to real estate ownership; advisory services relating to real estate valuations; agency services for the leasing of real estate property; appraisal of real estate; brokerage of real estate; capital investment in real estate; commercial real estate agency services; consultation services relating to real estate; evaluation of real estate; financial evaluation (insurance, banking, real estate); insurance services relating to real estate; leasing of real estate; management of real estate; property leasing (real estate property only); providing information, including online, about insurance, financial and monetary affairs and real estate affairs; provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; provision of real estate loans; real estate acquisition (for others); real estate administration; real estate advisory services; real estate agencies; real estate agency services; real estate agents services; real estate appraisal; real estate appraisals (valuations); real estate assessment (financial); real estate brokerage; real estate brokers; real estate broking; real estate consultancy; real estate financing; real estate insurance services; real estate investment; real estate investment advice; real estate investment management; real estate investment services; real estate lease renewal services; real estate lease surrender services; real estate leasing; real estate licensing; real estate management; real estate selection and acquisition (on behalf of others); real estate valuations; rental of offices (real estate); rental of real estate; rental of serviced offices (real estate); renting real estate; research services relating to real estate; stock and station agencies (real estate services); subdivision of real estate (real estate services); valuation of real estate

Class 37: Building and construction of real estate subdivisions and developments; real estate development

Class 41: Legal education services

Class 42: Designing and planning of real estate subdivisions and developments; real estate planning; real estate surveys

Class 45: Administration of legal estates; administration services (legal) for businesses; bailiff services (legal services); compilation of legal information; information services relating to legal matters; legal advice; legal advocacy services; legal consultancy services; legal enquiry services; legal information research services; legal information services; legal investigation services; legal lobbying services; legal mediation services; legal research; legal services; legal services relating to wills; legal support services; licensing of computer software (legal services); personal advice services relating to matrimonial matters (non-legal); personal legal services; professional legal consultations relating to franchising; providing information, including online, about legal services; provision of information relating to legal services; provision of legal information; provision of legal research; provision of legal services; registration services (legal); advisory services relating to the law; guarding of real estate

1. The trade mark was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 October 2008, following which, Accenture Global Services GmbH (‘the Opponent’) filed a notice of opposition to the Applicant’s trade mark on 21 April 2009 nominating all possible grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

2. The evidence filed and served in relation to the opposition proceedings comprised the following declarations:

   Evidence in Support

   ·     Statutory Declaration of Teresa Poggenpohl (Executive Director of the Opponent) dated 15 January 2010 with annexures ‘A to U’ (‘Poggenpohl’).

   Evidence in Answer

   ·     Statutory Declaration of Lawrence Liwei Lin (Director of the Applicant) dated 18 August 2010 with annexure ‘A’ (‘Lin’).

   Evidence in Reply

   ·     Statutory Declaration of Judith King (Paralegal for Baker & McKenzie, Solicitors) dated 17 December 2010 with annexures ‘A to C’ (‘King’).

3. The attorneys for the Opponent subsequently advised that only sections 44 and 60 of the Act would be pressed as grounds of opposition. Written submissions were then prepared and served by both parties prior to the hearing. On 9 June 2011, I heard this matter in Sydney as a Delegate of the Registrar of Trade Marks. The Opponent was represented by Mr Julian Cooke of Counsel and instructed by Baker & McKenzie. Mr Hal Altan of Counsel instructed by Accentro Legal represented the Applicant.

4. While accepting that the balance of probabilities was the relevant standard of proof for trade mark opposition proceedings, Mr Altan made reference to Justice Bennett’s comments in Torpedoes Sportswear v Thorpedo Enterprises[1] regarding whether a trade mark should ‘clearly not be registered’. This view was a tentative one made by the Full Federal Court in Lomas v Winton Shire Council[2] in relation to an appeal to the Court under section 56 of the Act. It is worth noting that this higher standard of proof has been discussed by Justice Gyles in Pfizer Products v Karam[3] and revisited by Justice Lander in Hills Industries v Bitek[4]. Both cases provide detailed arguments on the issue, but Gyles J noted that the Full Federal Court is yet to apply ‘clearly not be registered’ or to turn on the difference between the standards of proof.

   [1] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; (2003) 59 IPR 318: (2003) AIPC 91- 919 at [16-22] and [130].

   [2] Lomas v Winton Shire Council (2002) FCAFC 413; (2003) AIPC 91-839 [at 17].

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146.

   [4] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94; (2011) AIPC 92-409.

5. In general, the relevant standard of proof to be applied in the Court should not differ from that applied to oppositions before the Registrar of Trade Marks. While in the context of the acceptance of a trade mark, Justice French said in Woolworths[5]:

   But the Court on appeal from the Registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the Registrar is required to adopt. 

   [5] Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499 [at 33].

6. Having differing standards of proof before the Registrar and the courts may have undesirable consequences. For example, an unsuccessful applicant may be tempted to commence an appeal to the Federal Court from a decision of the Registrar where the Opponent/Respondent’s standard of proof may be more onerous.

7. This point is clearly a live (and unresolved) issue of law. In the absence of clear authority from the Full Bench of the Federal Court or from the High Court of Australia, it is the practice of this office (and was accepted by both parties) that the relevant standard is on the balance of probabilities. It was also accepted that the Opponent bore the relevant onus of establishing one of the following pursued grounds.

   Discussion

8. Section 44 of the Act relevantly states:

   (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.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

9. The Opponent contended that ACCENTRO is deceptively similar to the Opponent’s trade mark registrations nos. 855248 and 894768:

ACCENTURE

The two identical trade mark registrations of the Opponent have earlier priority dates (being 6 October 2000 and 12 November 2001 respectively) than the Applicant’s trade mark and are registered for following goods and services:

Class 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

Class 16:

Pamphlets, books, newsletters, brochures, magazines, reports, journals, manuals and guides in the field of business management, information technology, and computerized information processing

Class 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

Class 36:

Financial affairs; monetary affairs; venture capital financing; information in the field of finance; analysis services, namely, financial analysis

Class 37:

Installation, implementation, maintenance, and repair services with respect to computers, computer systems, computer networks and computer hardware

Class 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

Class 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; computers 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. The Opponent’s evidence demonstrates use of ACCENTURE in relation to consultancy, information technology and business development services. On the other hand, the Applicant declares that its focus is on legal, real estate and educational services. Despite the apparent difference in actual use, some of the respective goods and services specifications in the trade marks are quite broad in scope, and this breadth is where the potential for conflict lies. As Justice French said in Registrar of Trade Marks v Woolworths Ltd[6]: the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained”.

   [6] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].

2. With the possible exception of classes 37, 41 and 42 in the Applicant’s services specifications, there are similarities between the Applicant’s services and those of the Opponent. For example, “compiling real estate brokerage listings” is similar to “market analysis” and “conducting business and market research”  in Class 35.

3. With regard to class 36 of the application, the items “real estate investment”, “capital investment in real estate”, “real estate financing” and “financial evaluation (insurance, banking, real estate) are encompassed either within “financial affairs” or “financial analysis”. The Applicant’s “Legal mediation services” in class 45 are also similar to the Opponent’s class 42 item “Mediation services”.

4. In relation to the deceptive similarity between trade marks, Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[7] found:

   the 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.

   And in Clark v Sharp[8] the consideration included:

   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

   [7] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

   [8] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

5. While it appears that neither trade mark ACCENTRO nor ACCENTURE has a recognisable English meaning, I do note that the Applicant’s trade mark contains the following endorsement:

   The applicant has advised that a translation of the ITALIAN word ACCENTRO appearing in the trade mark is CENTRE OF OR CENTRAL TO EVERYTHING.

6. I find that the existence of the meaning for ACCENTRO does not influence my later findings in any significant way. It is more likely that the majority of Australian consumers would view both ACCENTRO and ACCENTURE as invented words.

7. The distinctive prefix “Accent-” is identical in both trade marks, with the sole difference residing in the suffixes of the respective trade marks. In London Lubricants[9]it is said that:

   …the tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [9] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK).

8. An imperfect recollection of either trade mark is likely to result in deception or confusion amongst Australian consumers utilising one of the conflicting services. As Luxmoore LJ said inRystaLtd’s Application[10]:

   …Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher ofelocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   [10] RystaLtd’s Application (1943) 60 RPC 87 (at 108-109).

9. Mr Cooke also referred to a previous decision of the Registrar from 2004 involving the Opponent, namely, Accentuation v Accenture Global Services[11]. In that matter, Hearing Officer Skivington found the trade marks ACCENTUATION and ACCENTURE were deceptively similar, noting in particular, that the significant detail in both trade marks was the word “accent” and that “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.”

   [11] Accentuation Pty Ltd v Accenture Global Services GmbH [2004] ATMO 6; (2004) 62 IPR 432; (2004) AIPC 91-970.

10. Taking the above issues into consideration, I find that the Applicant’s and the Opponent’s trade marks are deceptively similar. The Lin declaration does not provide any evidence of prior use, honest concurrent use or other circumstances which might trigger subsections 44(3) or 44(4) of the Act.

11. During the hearing, Mr Altan suggested that if I find the trade marks to be deceptively similar, a refinement of the Applicant’s services would be in order. Mr Altan did not provide further detail as to what such a refinement of the services may encompass, evidently preferring to leave it to the Registrar’s discretion. However, in view of the outcome of the following section 60 ground, any attempt to refine the services to overcome section 44 would become redundant. I find that a notional use of the Applicant’s trade mark on the relevant services is likely to result in a real and tangible risk of confusion in the marketplace. The ground for rejection under section 44 has been established for some of the Applicant’s services.

1. Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. A successful opposition under section 60 of the Act requires the Opponent to establish the existence of a reputation before the priority date of the application (in this instance, 20 June 2008) of another trade mark such that the use of the Applicant’s trade mark would be likely to deceive or cause confusion in Australia. To satisfy this requirement, it is not necessary for the Opponent to establish that the trade marks are deceptively similar, nor that the goods and services are similar or closely related, although either of those matters – if found to be present – would have an influence on the determination of the question. The reputation in the Opponent’s trade mark(s) must be sufficient for a real likelihood of confusion to occur should the Applicant’s trade mark be used in the Australian marketplace.

3. According to Poggenpohl, the Opponent is a management consulting, technology services and outsourcing organisation with offices in more than 200 cities around the world, including Australia. Originally named Andersen Consulting, the Opponent began using the name ACCENTURE in relation to its services in Australia in January 2001. At that point, substantial promotional material was sent to existing clients in Australia displaying the new trade mark.

4. Since 2001, the trade mark ACCENTURE (appearing with or without a device element) has been displayed in television advertisements, on advertisements at Sydney bus stops and on the sides of Melbourne trams, at a number of major Australian airports and on an airship flying over Melbourne and Sydney. In addition, the Opponent exhibited advertisements of ACCENTURE in the publications Australian Financial Review and Business Review Weekly in 2002. The Opponent also acted as a financial sponsor for the Sydney and Melbourne Theatre Companies and for the Australian National Triathlon Series (also named the Accenture Triathlon Series).

5. The Opponent owns more than 1,000 trade mark registrations for ACCENTURE around the world. The figures for the worldwide income amassed under the Opponent’s trade mark are impressive, but there is no indication of the annual Australian income. That information was intentionally excluded from Poggenpohl, as it was deemed by the Opponent to be confidential information.  

6. In ConAgra Inc v McCain Foods (Aust) Pty Ltd[12], Justice Lockhart commented:

   But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

   [12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234.

7. In its field, the Opponent has an impressive Australian reputation which has been constantly developing over seven years. As the Opponent offers outsourcing services this activity means that it reaches a wider range of companies and departments who are all exposed to the Opponent’s trade marks. Allowing for the fact that the Applicant’s declared focus is on legal, real estate and educational services, the nature of the Opponent’s services is such that it is likely to continue extending the range of services offered under its trade marks.

8. In relation to the strength of the reputation in the Opponent’s trade marks, even the Lin declaration concedes (at 10-11):

   The “Accenture” trade mark has been extensively promoted and advertised worldwide, including in Australia, and

   The “Accenture trade mark has been used in relation to a variety of goods and services.

   …

   The Applicant does not dispute any of those matters, nor does the Applicant dispute that the Opponent has established goodwill and reputation of its “Accenture” trade mark.

9. I find that the Opponent has discharged the onus of establishing a substantial reputation in its trade mark in Australia before the priority date of the Applicant’s trade mark. Due to the extent of that reputation, I find that if the Applicant’s trade mark ACCENTRO were to be used on any of the claimed services, deception or confusion in the marketplace would be the likely result. The ground of opposition under section 60 of the Act has been established on the balance of probabilities.

   Decision

10. Section 55(1) of the Act provides:

    (1) Unless the proceedings are discontinued or dismissed, 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.

11. The Opponent has established those grounds of opposition under the Act. I refuse to register trade mark application no. 1247659: Accentro.

    Costs

12. The Applicant has been unsuccessful in this matter and the Opponent is entitled to costs. To that end, I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    11 August 2011