Acorn Capital Ltd v Acorns Grow Incorporated
[2023] ATMO 74
•9 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Acorn Capital Ltd to registration of trade mark application number 2018837 (class 9) – ACORNS GROW - in the name of Acorns Grow Incorporated
| Delegate: | Benjamin Goldsworthy |
| Representation: | Opponent: Jeremy Herz of Herbert Smith Freehills Applicant: Campbell Thompson of Counsel instructed by Marquette Intellectual Property Pty Ltd |
| Decision: | 2023 ATMO 74 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 60 and 42(b) – deceptive similarity and close relationship between designated goods and earlier trade mark’s services – s 44 established – trade mark application refused. |
Background
On 26 June 2019 (‘Relevant Date’) Acorns Grow Incorporated (‘Applicant’) filed trade mark application 2018837 for ACORNS GROW (‘Trade Mark’) for the following goods:
Class 9: downloadable software application for the purpose of individual consumers to track the profitability of their financial portfolios and process investments in small dollar value increments, excluding mutual funds, the foregoing for use with mobile and web-enabled devices
(‘Designated Goods’)
The Trade Mark was examined under s 33[1] and advertised for acceptance on 1 July 2020. On 1 September 2020 Acorn Capital Ltd (‘Opponent’) filed a Notice of Intention to Oppose and on 30 September 2020 filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 23 December 2020.
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
On 25 May 2021 the Opponent filed its Evidence in Support (‘EIS’). On 13 October 2021 the Applicant filed Evidence in Answer (‘EIA’). The Opponent did not file Evidence in Reply.
The parties both requested to be heard after the period for evidence ended. The parties filed submissions by the respective due dates and I heard the matter by teleconference on 15 March 2023. Jeremy Herz and Casey Hogan from Herbert Smith Freehills appeared on behalf of the Opponent. Campbell Thompson of Counsel and Sarah Poole from Marquette Intellectual Property Pty Ltd appeared on behalf of the Applicant.
Grounds, onus and relevant date
The SGP nominated grounds of opposition under ss 42(b), 44 and 60. The Opponent bears the onus of establishing at least one ground of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot J).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The EIS consists of a declaration by Matthew Sheehan, Investment Director for the Opponent, dated 24 May 2021 with Exhibits MS-1 to MS-41. The EIA consists of a declaration of Sarah Poole, the Applicant’s lawyer, dated 13 October 2021 with Exhibits SAP-1 to SAP-12.
Consideration
Section 44
Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
The Opponent’s submissions rely on the following registered trade marks for the s 44 ground:
| Trade Mark Number | Opponent’s Trade Marks |
| 1368514 | ACORN CAPITAL (‘Earlier Trade Mark’) |
| 1368517 | |
| 1368516 |
The designated services of the Opponent’s Trade Marks are as follows:
Class 36: Financial services including financial evaluation and financing; investment services including investment management and research; capital investment including provision of investment funds and capital to others; information, advisory and consultancy services provided in relation to the aforesaid
The priority date of each of the Opponent’s Trade Marks are earlier than that of the Trade Mark and each also have an owner other than the Applicant. The main points of contention are: (1) whether the Trade Mark is substantially identical with, or deceptively similar to any of the Opponent’s Trade Marks; and (2) whether the Designated Goods are ‘closely related’ to any of the services of the Opponent’s Trade Marks. It will be seen that I have needed only consider these issues in respect of the Earlier Trade Mark.
Deceptive similarity
I now consider whether the trade marks are deceptively similar. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (‘Australian Woollen Mills’), Dixon and McTiernan JJ explained:
… in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained… …In deciding this question, the marks ought not, of course, 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 effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.[4]
[4] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
I must compare the respective whole trade marks,[5] with regard to essential or distinguishing features,[6] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[7] Actual reputation of a trade mark or an owner is not relevant. Rather, of importance is the effect and meaning of the spoken trade marks,[8] especially their effect or impression produced on the mind of ordinary consumers.[9] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[10] Ultimately, what is required is a real tangible danger of confusion.[11] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[12] Actual instances of deception or confusion are of great weight though not required.[13] I am mindful of the comments of French J in in Woolworths that there should be one practical judgment and the above issues should not necessarily be considered in isolation.[14]
[5] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J) (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[6] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[7] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).
[8] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[9] Ibid [51] and [67], citing Australian Woollen Mills (n 4).
[10] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
[11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Woolworths (n 5) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[12] Woolworths (n 5) [50] (French J); Southern Cross ibid 594-595. See also, Australian Woollen Mills (n 4) 658.
[13] Self Care (n 8) [29]; Australian Woollen Mills (n 4) 658 (Dixon and McTiernan JJ).
[14] Woolworths (n 5) [40].
The Opponent asserts that the Trade Mark is at least deceptively similar to the Earlier Trade Mark and that the plural sense of the word ‘ACORN’ makes little difference. It presses a linguistic and conceptual relationship between words ‘CAPITAL’ and ‘GROW’. It argues that the trade marks convey a similar idea to each other because of this. The Applicant counters that the word ‘GROW’ when viewed in the text of the pluralised form of the word ‘ACORN’, make for a whole compound which produces a different idea and meaning for the ordinary consumer, providing sufficient differentiation. It asserts the Trade Mark is a total package of words evoking the idea of acorns growing into oak trees. It contrasts this idea with the simple conception of a single ‘ACORN’ set beside the descriptive word ‘CAPITAL’. The Applicant asserts this different idea results, even after considering the descriptiveness of the word ‘CAPITAL’.
Even if the word ‘GROW’ would not escape notice, the word ‘ACORN’ likely has a strong impact on the minds of ordinary consumers. Whilst some consumers might note it, even those persons might think of ‘GROW’ as an extension of the Earlier Trade Mark’s services. Often greater emphasis is attributed to the beginning of a trade mark.[15] ‘ACORN’ is an essential feature of both trade marks. Indeed, for the Earlier Trade Mark it is the essential feature, noting the descriptive nature of the word ‘CAPITAL’.
[15] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, 279 (Sargant LJ). See also, C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561, [35] (Finn J); Re Johnson and Johnson v Laurence Nash Kalnin and Medical Industries Australia Pty Limited [1993] FCA 210, [23] (Gummow J); Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505, 511 (Burchett J).
Since the respective specifications of goods and services have a financial nature, the word ‘ACORN’ is a distinctive word. The Applicant provides evidence showing the word ‘ACORN’ is in common use for the industry.[16] However, the Opponent submits that, even if ‘ACORN’ is widely used in the industry, the evidence provided does not support that it is so common, or otherwise such, that it should be displaced from being the essential feature or its impact should be so discounted that there would not be deceptive similarity. It adds that ‘GROW’ is a descriptive word, also commonly used in the relevant trade, providing some evidence. I agree with the Opponent’s submissions. I do not view the addition of the word ‘GROW’ as impacting greatly the emphasis or identity conveyed. The Applicant also asserts a specialised nature for the goods and services, as they relate to financial goods and services, so a higher consumer attentiveness is likely. However, there is no evidence of this and indeed smaller investment increments (as specifically claimed in the Designated Goods) may encourage less attentiveness due to the lower capital risks involved. It is not relevant that actual use of the Opponent might be limited to more sophisticated and more attentive clientele. What matters is the possible notional use if the Trade Mark achieves registration.
[16] Applicant’s Submissions, [20].
The Applicant relies on a number of cases which involve comparison of word-combinations[17] with courts not finding deception or confusion likely. The Opponent counters noting that all elements of the trade marks in those cases were descriptive, unlike here. My reading of these cases is most did feature descriptive elements, and those which did not involved trade marks having individual combinations which made the trade marks overall individually distinctive. These cases also did not involve highly adapted leading elements as here and the additional distinctive elements in each of those cases were likely of some impact for the purpose of the comparison. As the Applicant asserts, I must consider the trade marks as respective wholes. However, at its core the comparison is concerned with the effect and meaning.[18] I agree that the word ‘ACORN’ is not descriptive, or at least not on the level of the words for these cases. The ordinary consumer in these cases would be left with a more defined meaning and discrete idea than for the trade marks before me, possibly because of the descriptive nature of the words in those cases. Here, the word ‘ACORN’ is a dominant, striking and impactful leading element, of high prominence, with minimal to no descriptive nature. Regarding the Applicant’s reference to the single judge decision in Energy Beverages LLC v Canteralla Bros Pty Ltd, I note that the Full Federal Court reversed this decision shortly after the hearing, finding the trade mark ‘MOTHER’ was deceptively similar to ‘MOTHERSKY’. In doing so the Court emphasised that, ‘[a]lthough “mother” might be a commonly used word (as the primary judge found…), it is not, in any way, descriptive of [the relevant goods]. … MOTHER, as a trade mark, is inherently distinctive when used in respect of such goods’.[19] Where common elements are the distinctive elements there is added force that the risk of confusion is elevated, even more so where the differing elements are descriptive. In Samuel Smith & Son Pty Ltd v Pernod Picard Winemakers Pty Ltd, also referenced by the Applicant, Charlesworth J noted that an invented combination of words removed the impugned sign from the idea or impression conveyed by the other trade mark. I am satisfied that the effect of the combination here does not and would not so remove the idea or impression for the Designated Goods. ‘ACORN’ is of a striking effect on the whole for both trade marks such that there is a real risk of confusion. I distinguish the cases referred to by the Applicant.
[17] Samuel Smith & Son Pty Ltd v Pernod Picard Winemakers Pty Ltd [2016] FCA 1515 (Charlesworth J) where it was held that ‘THE SIGNATURE’ and ‘BAROSSA SIGNATURE’ were not deceptively similar; Health World Limited v Shin-Sun Australia Pty Ltd [2005] FCA 5 (Cooper J) and Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (Jacobson J) where ‘INNER ‘HEALTH PLUS’ and ‘HEALTHPLUS’ were held as not deceptively similar; Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157 (Yates, Abraham and Rofe JJ) where ‘JAZZ CORNER HOTEL’ and ‘CORNER HOTEL’ were not considered deceptively similar; Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153 (North, Middleton and Barker JJ), where ‘AUSTRALIA POST’ was compared with ‘DIGITAL POST AUSTRALIA’ and found not deceptively similar; Energy Beverages LLC v Canteralla Bros Pty Ltd [2022] FCA 113, [32] (Halley J) where ‘MOTHERSKY’ was held as not deceptively similar to ‘MOTHER’; and Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ), where ORO was not deceptively similar to combination trade marks including ‘CREMA D’ORO’ and ‘STELLA D’ORO’ because they were seen as readily forming a composite trade mark, see [15]. Mr Campbell also variously drew my attention to the decision of the High Court in Self Care (n 8), which was handed down the morning of the same day as I heard the parties.
[18] Self Care (n 8) [51] and [67]. In applying what was said in Self Care (n 8) Jackman J in The Agency Group Australia Limited v HAS Real Estate Pty Ltd [2023] FCA 482, [73] noted that, ‘it is relevant to take into account on the question of deceptive similarity whether elements of the rival marks have a descriptive character’.
[19] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [167] (Yates, Stewart and Rofe JJ).
I do not equate the words ‘GROW’ and ‘CAPITAL’. However, the word ‘GROW’ for the ordinary consumer merely qualifies a well-adapted identity in the word ‘ACORN’ in a way which describes the desirable wealth impacts of using the goods or services of the trader. Whilst the trade marks do not convey an identical concept, I am satisfied that even as a totality, the word ‘GROW’ is likely to be received by a sufficient number of persons as part of the Trade Mark in a descriptive sense or otherwise not of an effect dispelling the real and tangible danger of confusion. This is especially so when I consider the context of the Designated Goods and accounting for the imperfect recollection of ordinary consumers. The similarities of the trade marks are such that relevant persons would be caused to wonder whether the goods come from a single trade source and there is a real and tangible danger of confusion. I am satisfied that the trade marks are deceptively similar.
Comparison of Designated Goods and the Earlier Trade Mark’s services
I must also consider whether the Designated Goods of the Trade Mark are in relation to goods which are closely related to the Earlier Trade Mark’s services. Specifically, I must consider whether downloadable software applications for individual consumers to track the profitability of their financial portfolios and process investments in small dollar value increments are closely related to the provision of financial and investment services.
On this question, French J in Woolworths is often cited as having noted that:
[t]he term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[20]
[20] Woolworths (n 5) ibid [37] (French J, Tamberlin J agreeing).
Justice French also stated that the relationship between goods and services may, and perhaps in most cases, will, be defined by the function of the service with respect to the goods.[21] Where the designated services necessarily involve the use or sale of goods it is more likely that those goods and services will be perceived as closely related.[22] The nature, function and circumstances of the trade, such as trade channels, are also relevant. I also note that it is the notional use that can be made in a normal and fair manner that I must consider.[23] Accordingly, it matters not whether evidence of actual use of the Opponent has been provided.[24] The likelihood of consumer association of services with the goods, because they are generally offered by the same people also appears to be a relevant factor.[25]
[21] Woolworths (n 5) ibid [38] (French J). See also, Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) 490.
[22] Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co (1983) 1 IPR 265, 277 (Lockhart J).
[23] Re Smith Hayden & Co Ltd (1946) 63 RPC 97, 101 (Evershed J).
[24] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487 (Kennet J) (‘Ragopika’).
[25] Ragopika ibid [40] (Kennet J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd [2021] FCA 1512, [33] (Charlesworth J).
The Opponent asserts that the Designated Goods are closely related to the Earlier Trade Mark’s services as the Earlier Trade Mark’s services are delivered by the Designated Goods. Also, the Opponent turns to the meaning of the words in each specification, which suggests a common object and specificity. It asserts financial services providers commonly offer software to deliver their services, especially for management of financial and investment portfolios. It also notes the electronic nature of the financial system, with heavy reliance of software infrastructure. The question of a close relationship between goods and services is an evaluative exercise, whose outcome is likely to depend on the evidence presented.[26] The Opponent provides some evidence of a link between major financial services providers and goods concerning trading, tracking and management of investments. However, distilling even just the language of the Designated Goods, the object services for ‘…individual consumers to track the profitability of their financial portfolios and process investments in small dollar value increments, excluding mutual funds…’ would likely be impossible or impractical without software applications. Small scale investments are often conducted by readily accessible applications such as on a computer or mobile phone. Telephone or human brokers would clearly not be realistic for such small transactions. Whilst not all financial services require software applications, the services referenced in the language of the Designated Goods are specified as only so provided. On 18 March 2021 a delegate of the Registrar of Trade Marks decided Acorn Capital Ltd v Acorns Grow Inc[27] (‘Earlier Decision’) in relation to trade mark application 1823572 for ‘ACORNS’ for identical goods. The opposition was successful and the trade mark was refused. I agree with the Earlier Decision that the language of the Designated Goods is capable of being interpreted as downloadable software for the purpose of an individual to track the profitability of their financial portfolio held with a financial institution and that this is the very thing that consumers might consider doing when using such an institution’s mobile phone application.[28] What the delegate said about the reality of convergence of technology and services and prevalence mobile phone technology is also apposite here.[29] This reality would influence consumers into considering there being a single origin.[30]
[26] Ragopika (n 24) [48], citing decisions of this office in Holder of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169, Kicking Horse Coffee Co. Ltd [2018] ATMO 193, McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22, Bickfords Australia Pty Ltd v Frank Ward [2008] ATMO 84 and Societe Des Produits Nestle SA v Cosi Sandwich Bar, Inc [2002] ATMO 11.
[27] [2021] ATMO 21.
[28] Earlier Decision, [30].
[29] Earlier Decision, [32]. See also Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 (Bennet J), where the convergence of technology was considered relevant.
[30] Earlier Decision, [30] and [32].
The Applicant asserts that the Earlier Decision did not give proper weight to the breadth of the respective claims and relies on Qantas Airways Limited v Edwards (‘Qantas’).[31] Qantas concerned whether ‘advertising, marketing and merchandising services’ were closely related to ‘clothing, footwear and headwear’, with the court finding they were not. The Opponent says Qantas requires something more than mere containment to establish a close relationship. It says the ‘all-encompassing’ services of the Earlier Trade Mark mean a similar result to Qantas should follow.[32] It also notes the Earlier Trade Mark’s services do not mention technology or software. I agree with the Earlier Decision that ‘financial services’ are not ‘all-encompassing’ in the same way as the services in Qantas and that here there is a higher specificity in the nature and purpose of the Designated Goods. However, I also add that Qantas concerned a different relationship. Here, there are more aligned natures and functions. The Designated Goods are the means for delivery of various services of the Earlier Trade Mark, whereas in Qantas the goods were not necessarily a method for delivery of the relevant services. In Qantas the consumer would not equate the goods and services as being essentially synonymous in the same way as consumers would for the claims before me. The Applicant asserts the evidence does not show the services are necessarily or even mostly delivered by software. I agree that many such services are not delivered by software. However, the Designated Goods could not somehow be divorced from provision of a financial service. Indeed, the language of its specification confirms they would cease to exist without the various services.[33] This is not a case of goods merely being an input into supply of a service,[34] it is a likely expectation of the consumer for delivery by goods. The function here is so close that in many notional instances consumers would likely consider delivery as being one and the same thing. The Opponent’s evidence reflects that ‘investment services’ likely involve delivery by software in various ways that consumers can process transactions for, or track and manage, their portfolios such that they are likely to think that there is a single trade source.
[31] [2016] FCA 729 (Yates J) (‘Qantas’).
[32] Qantas ibid [106]-[129], especially [110]-[115].
[33] Re Aussat Pty Ltd (1993) 27 IPR 309, 313 (Hearing Officer Thompson).
[34] Notaras v Barcelona Pty Limited [2019] FCA 4, [337] (Robertson J).
I am satisfied that the Designated Goods are closely related to the designated services of the Earlier Trade Mark.
I am satisfied that the requirements of s 44(1) are established. The Applicant filed no evidence regarding ss 44(3) or 44(4) and I am not otherwise satisfied that these sections would apply. Accordingly, the s 44 ground of opposition is established.
Decision
Section 55 relevantly provides:
55 Decision
(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.
The Opponent has established the ground of opposition under s 44. I refuse to register trade mark 2018837.
Costs
The Opponent has sought costs, which generally follow the event. I award costs against the Applicant in accordance with schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
9 June 2023
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