Advantage Resourcing Europe B.V.

[2012] ATMO 40

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1351491(35) ADVANTAGE TECHNICAL RESOURCING, 1351493(35), ADVANTAGE STAFFING, 1351494(35) ADVANTAGE RESOURCING, 1351495(35) ADVANTAGE PROFESSIONAL - in the name of Advantage Resourcing Europe B.V.

Delegate:

Debrett Lyons

Representation:

Applicant: Tracey Berger of Spruson & Ferguson

Decision:

2012 ATMO 40

Section 33 proceedings – s44: similar services – trade marks deceptively similar – applications rejected.

Background

1.     This decision under section 33 of the Trade Marks Act 1995 (‘the Act’) concerns a ground for rejection recited by a trade mark examiner against the following four trade mark applications:

Application No.	Trade Mark	Class
1351491	ADVANTAGE TECHNICAL RESOURCING	35
1351493	ADVANTAGE STAFFING	35
1351494	ADVTANGE RESOURCING	35
1351495	ADVANTAGE PROFESSIONAL	35

(‘the Applications’ and ‘the Trade Marks’ as the context requires)

2.     The Applications were made on 16 March 2010 in respect of the following services (‘the Services’):

Employment agency services; employment counselling and recruiting; employment hiring, placement, staffing and career networking services; employment outplacement services; temporary employment agency services; consultation in the field of human resources for business; management personnel staffing, placement and recruitment services; employee leasing, relocation and information services; employee administrative services; on-site employee and staffing management services; vendor management services; personnel outsourcing services.

3. The examiner of trade marks maintained an objection to registration under subsection 44(2) of the Act because of trade mark registration 1310286 (‘the Cited Registration’), details of which follow:

Registration No:             1310286

Priority Date:                   17 July 2009

Services:Class 35:             Business information, advisory and consultancy services; business management and organization information, advisory and consultancy including preparing commercialization assessments, developing and implementing commercialization strategies, advising on licensing arrangements, negotiating commercial arrangements, managing contracts, risk management, advising on corporate governance, advising on exit strategies and due diligence and project management; franchise consulting and advising; sponsorship, marketing and/or competition services, consulting and advising; business advice relating to franchising; advisory services for the establishment and operation of franchises; franchise services including business management, sales, recruitment, advertising, marketing documentation, territory analysis, site selection, administration and business development; services for the provision of statistical information; business and company administration services; company secretarial services; executors of estates, businesses, property, securities and pension and other employee benefit plans; job placement and recruitment services; human resource management; accounting and book keeping services, taxation services; arranging price quotations for others; business referral services; advertising and marketing services; publicity and promotional services; promoting and/or organising of and/or sponsorship services for shows, concerts, lecturers, conferences, displays, exhibitions and seminars; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services

Class 45:             Legal services; provision of legal services; provision of legal support services; provision of legal advice; legal consultancy services; legal advisory services; legal information services; legal research and due diligence services; legal auditing services (legal services); legal compliance services (legal services); legal enquiry services; legal advocacy services; legal services relating to family law; legal services in relation to wills, estates and trusts; company secretarial services; legal services relating to commercial law, corporate law, franchise law, competition law, taxation law; legal services relating to sponsorships, competitions, marketing and permits; conveyancing; legal services in relation to real estate and property; legal services in relation to criminal law; legal services in relation to occupational health and safety; legal services in relation to industrial relations law; litigation services; litigation support services; litigation advice; mediation and arbitration services; legal dispute management and resolution services; patent and trade mark attorney and agency services; legal portfolio management including managing intellectual property portfolios; assisting businesses with legal compliance; providing information, advisory and consultancy services, including by electronic means and via a global network, about all the aforesaid services.

(‘the Cited Services’)

Trade Mark:  ADVANTAGE PARTNERS              (‘the Cited Mark’)

4.     That ground for rejection was maintained through several reports after which Advantage Resourcing Europe B.V. (‘the Applicant’) asked to be heard.  As a delegate of the Registrar of Trade Marks, I heard the Applicant’s submissions in Sydney on 17 February 2012.  Ms Tracey Berger of Spruson & Ferguson, Patent and Trade Mark Attorneys, represented the applicant.

The Submissions

5. Ms Berger provided a written summary of her oral submissions. In short, the Applicant’s position was that “the Trade Marks are not deceptively similar to the Cited Trade Mark, or in the alternative, … the provisions of Section 44(3)(b) of the Act [apply]”.  In considering those submissions I was asked to take account of (i) the perceptible differences between the Trade Marks and the Cited Trade Mark; (ii) the use by other traders of the word “ADVANTAGE” in connection with the Services; and (iii) the Applicant’s asserted rights in the word “ADVANTAGE” based on its Registration Nos. 1351492, 1351509 and 1351510.

6.     The Applicant also asked me to have regard to two recent decisions of the Office in the cases of American Airlines, Inc v  Member Advantage Pty Ltd (2011) ATMO 13, and American Airlines, Inc v AdvantageCard Pty Ltd [2012] ATMO 6 which I am told are authority for the proposition that the word “ADVANTAGE” was found to be common to the relevant trade and so given diminished weight in the comparison of the trade marks in those cases.

7.     The Applicant submitted that:

The Cited Trade Mark co-exists with various other marks encompassing the word “ADVANTAGE” or a phonetically equivalent word, for identical or similar services in Class 35, and in the name of different traders including registrations 894941 ADVANTEDGE, 1067289 HR ADVANTAGE, 1177231 KF ADVANTAGE and 1331407 ADVANTAGE SA, among others. 

The Applicant submits that the perceptible differences between its Trade Mark and the Cited Trade Mark is no less than the perceptible differences between the above co-existing registrations and the Cited Trade Mark, where, for example, the only additional elements are two letter words with no attributable meaning i.e. SA (Registration No. 1331407 ADVANTAGE SA) and KF (Registration No. 1177231 KF ADVANTAGE).

Consumers are no more likely to confuse the services provided under the Applicant’s Trade Marks with those of the Cited Registrant, than they are with any of the other “ADVANTAGE” (or phonetically equivalent) marks co-existing on the Register.  Consumers are clearly capable of distinguishing between numerous “ADVANTAGE” marks for Class 35 services, owing to the perceptible differences, and accordingly, are also capable of distinguishing the Applicant’s Trade Marks and Services. 

8. In relation to section 44(3)(b) of the Act, it was submitted that:

… the Register supports the co-existence of the Trade Mark with the Cited Marks. In Rivers (Australia) Pty Ltd v River Island Clothing Co. Limited (2011) ATMO 28, the Hearings Officer refers to the decision in Re Unilever plc’s Application to register the trade mark PHOENIX [2001] ATMO 39, which in turn refers to the following words by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579:

“I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.”

The Hearings Officer in the Unilever case then comments:

“The [above-quoted] paragraph is important. Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.”

The Cited Trade Mark currently co-exists with various other trade marks, in the name of different traders, encompassing the word “ADVANTAGE” or a phonetically equivalent word, for identical or similar services in Class 35.  These include Registration Nos. 894941 ADVANTEDGE, 1067289 HR ADVANTAGE, 1177231 KF ADVANTAGE and 1331407 ADVANTAGE SA, among others.  All of the aforementioned marks co-exist with the Cited Trade Mark for overlapping services and accordingly, the Trade Marks should also be able to co-exist.

Further, the additional elements present in each of the Applicant’s Trade Marks sufficiently distinguish them from the Cited Trade Mark and is no less distinctive than some of the other elements of the registered marks which co-exist with the cited registration including for example, Registration Nos. 1331407 ADVANTAGE SA where the only additional element is SA and 1177231 KF ADVANTAGE where the additional element is KF. 

Further, the Applicant is the registered proprietors of the following trade marks: ADVANTAGE SCIENCE (Registration No. 1351492), ADVANTAGE HIRE THINKING (Registration No. 1351509) and ADVANTAGE XPO (Registration No. 1351510).  Each registration covers services in Class 35 that correspond with the services covered by the Trade Marks.  The Applicant therefore has concurrent rights in the word “ADVANTAGE”, alongside the Cited Registrant.

It is the Applicant’s submission that the existence of its three registered trade marks, i.e. Registration Nos. 1351492 ADVANTAGE SCIENCE, 1351509 ADVANTAGE HIRE THINKING and 1351510 ADVANTAGE XPO clearly establish that its Trade Marks containing “ADVANTAGE” can also co-exist with the Cited Mark.

Discussion

9. Subsection 44(2) of the Act provides:

Identical etc. trade marks

(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) 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 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.

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.

10. The Cited Trade Mark has an earlier priority date than the Applications and the Cited Services are similar (if not the same) services as the Services of the Applications. Accordingly, the remaining issue for me to decide is whether the trade marks are deceptively similar (there being no question of their substantial identity) and in that respect section 14 of the Act directs that the question for me to answer is whether the trade marks are so similar that when used for the respective services, that similarity is likely to lead to confusion or deception.

11.   In Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015, Moore, Sackville and Emmett JJ explained:

For example, in Aristoc Ltd v Rysta Ltd [1945] AC 68, the House of Lords held that the respondents were not entitled to register ‘Rysta’ as a trade mark in respect of stockings in the face of the appellants’ ‘Aristocrat’ registered mark for the same goods. Viscount Maugham (with whom Lords Thankerton and Wright agreed) adopted (at 86) the reasoning in the dissenting judgment of Luxmoore LJ in the Court of Appeal: Rysta Ltd’s Application (1943) 60 RPC 87. Luxmoore LJ said (at 108-109):

‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. 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 of elocution. 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 assistance ministering to that person’s wants.’

12.   Deceptive similarity is to be assessed according to the test set out in Shell Company of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415 per Windeyer J. :

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "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 the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "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" (1937) 58 CLR, at p 658.

13. I do not find that the two earlier decisions of the Registrar to which I was referred assist the Applicant as it had hoped. Both decisions concerned oppositions under section 55 of the Act brought by American Airlines, Inc. and based on its ownership of various trade marks containing the word ADVANTAGE.

14.   Neither opposition succeeded under section 44.  The American Airlines trade marks included:

AADVANTAGE

AADVANTAGE GOLD

AADVANTAGE PLATINUM

AADVANTAGE EXECUTIVE PLATINUM

15.   In the case of American Airlines, Inc v Member Advantage Pty Ltd (2011) ATMO 11 opposition was to the following trade mark:

16.   In the case of American Airlines, Inc v AdvantageCard Pty Ltd (2012) ATMO 6 the Hearing Officer considered opposition to the following trade marks under application:

17.   In the former case, the Hearing Officer wrote:

… I consider the fact that the word “advantage” is misspelt as “aadvantage” in the Opponent’s trade mark(s) is an important distinguishing factor, particularly as the misspelling occurs at the beginning and given also the extreme rarity of words in English which commence with the letters “aa” and I thus think the presence of the distinctive device element in the Trade Mark is an important additional distinguishing factor in this case, whether or not I were to accept Mr Ziehlke’s submission that the element MEMBER appearing in the Trade Mark should be disregarded. Indeed, I note Mr Kelly’s oral submission that not only the word “member” alone, but even the combined words “member advantage” were effectively descriptive in relation to the Services, but that their combination with the device element nevertheless rendered the Trade Mark as a whole distinctive and readily distinguishable from the marks of the Opponent’s Registration.

18.   In the latter case, the Hearing Officer reasoned that:

The common feature of the Trade Marks and the Opponent’s cited trade marks is the word ‘advantage’. The word ‘advantage’ is an everyday English word. The Opponent’s evidence in Exhibit EJZ-1 (relating to the trade mark examiner’s search results for the Applicant’s trade mark application 1339212 ADVANTAGEcard) to Ziehle details some 11 trade marks that incorporate the word ‘advantage’ and are registered or sought to be registered in relation to loyalty or reward programs.

The word ‘advantage’ does seem to be a word ‘common to the trade’, and is a word suggestive of the services provided. Additionally, the emphasis to the ‘AD-’ prefix caused by the graphic ‘frame’ device combined with the ‘-card’ suffix of the Trade Marks, in comparison with the idiosyncratic double-A prefix of the Opponent’s trade marks would likely cause differing recollections of the respective marks in the minds of consumers.

I am not satisfied that there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of services in question come from the same source. The ground of opposition under section 44 has not been established.”

19.   In this case I am concerned with trade marks which are undifferentiated by get-up and the notional uses of the trade marks extends to renditions of the trade marks in the same common types.  The word ADVANTAGE is present in all of the marks and the elements which differentiate them are the word 'PARTNERS' in the Cited Trade Mark and the words 'TECHNICAL RESOURCING', 'STAFFING', 'RESOURCING' and 'PROFESSIONAL' in the Trade Marks.  To my mind the shared element is the one by which the services will be known and identified and occurs at the beginning of the trade marks.  This shared word is followed by one which is entirely unadapted to distinguish the Services of the Applicant from those of the Cited Trade Mark and is most unlikely to be perceived as differentiating between the trade marks in any way.  They are words that directly describe the specified Services, or in the case of 'PARTNERS', describe the entity providing the Cited Services, and must therefore be almost completely discounted.  Even if the word ADVANTAGE is common to the trade, the compared trade marks are deceptively similar because the other words present in them do not differentiate between them and clearly do not differentiate to the extent of the other trade mark elements in the previous decisions on which the Applicant sought to rely.

20.   This reasoning and conclusion is reinforced by the Register itself since it was seen appropriate to accept for registration the Applicant’s trade marks set out below in the face of the Cited Registration since those trade marks are differentiated by additional words or getup bearing no direct reference to the Services: 

Registration No.	Trade Mark	Services
1351492	ADVANTAGE SCIENCE	Same specification as the Applications (cl 35)
1351509	Same specification as the Applications (cl 35)
1351510	Same specification as the Applications (cl 35)

21.   The litmus test was that expressed by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at 88:

The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

22.    I am satisfied that there is a real, tangible danger of deception or confusion occurring in this instance in the sense that use of the Trade Marks will result in a number of persons being caused to wonder whether it might not be the case that the services come from the same source. 

23. I find the Trade Marks to be deceptively similar to the Cited Mark and so I find that a basis for rejection of the Applications exists under section 44(2) of the Act. Nevertheless, I am asked to suspend that finding and pay regard to section 44(3)(b) which provides that:

(3)       If the Registrar in either case is satisfied:
(a)       …; 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.

Note:    For limitations see section 6.

24.    The rationale provided by the Applicant for the exercise of the Registrar’s discretion is expressed in submission as “concurrent rights in the word ‘ADVANTAGE’, alongside the Cited Registrant.”  It is argued that the alleged concurrent rights stem from the three registrations belonging to the Applicant set out in paragraph 20 above.

25. I do not see special circumstances. What I see is what I have already expressed: prior acceptances based upon matter which distinguishes the trade marks of those registrations from the Cited Mark but which is at variance with the additional matter within the Applications. I do not consider that registration of those marks has given the Applicant any special position vis-à-vis the word ADVANTAGE. I see no reason to apply section 44(3)(b).

Decision

26. Section 33 of the Act provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

27.   I reject the applications.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

23 April 2012