AEG Ogden Pty Ltd

[2017] ATMO 9

TRADE MARKS ACT 1995

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

Re:In the matter of Australian Trade Mark Application 1641882 for ICC Sydney in the name of AEG Ogden Pty Ltd.

Delegate:

Hearing Officer: Debrett Lyons

Representation:

Applicant: Cooper Grace Ward Lawyers

Decision:

2017 ATMO 9

Sec. 33: refusal to register; sec. 44: conflicting prior trade marks; sec. 44(3)(a) considered but not applied on the facts. Registration refused.

Background

1. On 20 August 2014 (“the Priority Date Date”) AEG Ogden Pty Ltd (“the Applicant”) applied under the Trade Marks Act 1995 (“the Act”) to register ICC Sydney (“the Trade Mark”) in classes 35, 41 and 43.

2. The application was examined as required by section 31 of the Act. An Examiner’s first report dated 18 November 2014 raised grounds for rejecting the Trade Mark under sections 39, 42 and 44 of the Act.

3. Section 44 of the Act, concerned with earlier conflicting rights[1], presents the abiding issue considered further in this decision. The ground for rejection under section 39 of the Act was raised because the letters “ICC” are an acronym for the International Criminal Court in The Hague and the class 43 services (as filed; later amended) included “legal and judicial activities”. The ground for rejection under section 42 of the Act was raised because use of the letters “ICC” in a trade mark requires formal consent under the Major Sporting Events (Images and Indicia) Protection Act 2014.

   [1] Initially raised because of all of earlier Australian trade mark registration nos. 888807, 921821, 1035260, 1063407, 1085305, 1085308, 1085355, 1234147, 1374877, 1444090, 1447443, 1447445, 1510952, 1541669, 1554450, 1554512, 1566325 and 1566326.

4. Over the course of correspondence between the Applicant’s representative and the Examiner resulting in another three examination reports, the grounds for refusal under section 39 and 42 were waived and all but two (registration nos. 888807 and 1234147) of the original section 44 cited marks waived as grounds for refusal under that section. At that point the Examiner suggested a hearing as the possible way forward.

5. A hearing was requested by which time the application had been amended so as to delete classes 35 and 41 in their entirety and limit the class 43 services to: “Provision of facilities for conventions; Provision of facilities for exhibitions; Provision of conference facilities; all of the aforementioned excluding legal and judicial activities” (“the Services”).

6. Details of the registrations maintained as an ongoing ground for refusal under section 44 are:

Regn No	Trade Mark	Priority Date	Goods/Services
888807	ICC INTERNATIONAL COURT OF ARBITRATION	20 Aug. 2001	Class 9: Computer programs and software, publications in digital form, all recorded on data media or provided on-line from databases or on the internet. Class 16: Printed products; publications; instructional or teaching material. Class 41: Publishing of books, newspapers and texts; organisation and running of seminars, colloquiums, conferences and conventions; education and training relating to the resolution of disputes; information relating to the aforesaid services. Class 42: Legal services; legal administration of expertise procedures; alternative dispute resolution services (adr); amicable dispute resolution services (adr); arbitration, conciliation, mediation; pre-arbitral referee services; writing of texts; rental of access time to a computer database.
1234147	30 Oct. 2007	Class 9: Computer programs, computer software, in the fields of international business and commercial transactions, import-export services and electronic commerce services; publications, audio and visual presentations and films in electronic form recorded on data carriers, or provided on-line from a computer database or the Internet Class 16: Printed matter, printed publications, photographs, stationery; instructional and teaching materials (except apparatus) Class 35: Advertising, business management, business administration, business information and advisory services; office functions; import-export services; computer database compilation; provision of business information services, online or using the Internet, from databases of businesses and business services; organisation of exhibitions for commercial or advertising purposes; business surveys, opinion polling, economic forecasting; market studies and research; customs clearance services; tax and taxation advice, information and consultancy services Class 36: Insurance; financial affairs; monetary affairs; rental/leasing of office space; customs guarantee services; verification and authentication of cheques, bills of exchange, banknotes, documentary credits and any other financial or payment instruments; insurance policies and insurance against the risks of commercial fraud and misdemeanours; financial advisory services relating to tax Class 41: Educational and training services; organising and conducting exhibitions, seminars, lectures, presentations, colloquia, conferences and congresses; production of audio, video and film recordings; writing and publication of books, journals and texts, in any medium, including in electronic form; news reporter services; provision of information relating to the aforesaid services Class 45: Legal services; legal advice, information and administration services concerning settlement of disputes; alternative dispute resolution (ADR) services; arbitration, conciliation and mediation services; pre-arbitral referee services; dispute resolution services, including nomination of arbiters and experts; services for the authentication, for legal and contractual purposes, of any document and in particular commercial and official documents, including title deeds, invoices, contracts; pre-contractual legal information and consultation services on the terms and conditions of contracts in the fields of commerce and of transport; expert legal advice in the fields of commerce and of transport; legal services, investigative and preventive services in the fields of commercial fraud, forgery, piracy and counterfeiting; legal research, consultancy and intellectual property information services, namely, organisation of an international network of lawyers and specialist consultants in intellectual property and a network of providers of technology designed to prevent fraud, forgery, piracy and counterfeiting; information in the field of intellectual property; representation, lobbying and advocacy vis-a-vis States and inter-governmental organisations with a view to the adoption of legal measures and provisions to promote the development of international trade; legal research and investigation; consultancy relating to security; provision of any of the aforesaid services on-line

1. When the matter came to be set down for a hearing date the Applicant requested that the issues be decided on the basis of written submissions only and, as a delegate of the Registrar of Trade Marks, I was appointed to decide the matter.

   Discussion

2. Section 33 of the Act relevantly provides that:

   (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 under this Act for rejecting it.

   …

   (3) If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

3. Section 33 embodies a “presumption of registrability” under which the Registrar must accept an application for registration of a trade mark unless satisfied there are grounds for rejecting it.

4. In addition to the correspondence between the Office and the Applicant’s representative to which I have referred already, the material on which my decision is based comprises two Statutory Declarations in support of the application by Mr Geoff Donaghy, the “Group Director of Convention Centres” for the Applicant.  The First Donaghy Declaration (“Donaghy 1”) was made on 20 January 2016 during examination of the application.  The Second Donaghy Declaration (“Donaghy 2”) was made on 7 November 2016 with the stated intention of updating and supplementing Donaghy 1 in anticipation of this decision.  I take note, too, of the Applicant’s written submissions made in its 7 November 2016 cover letter to Donaghy 2.

   Section 44

5. So far as is relevant, section 44 provides:

   44Identical etc. trade marks

   (1)…

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)… ; 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 services see subsection 14(2).

   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.

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

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

   (b) …;

   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.

   (4)…

6. The priority dates of the two cited registrations are earlier than that of the Trade Mark.  Neither of the trade marks of those registrations is “substantially identical” to the Trade Mark but there is a question as to whether one or both are “deceptively similar”. 

7. Section 10 of the Act provides 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”. However, the courts have held that the logic of section 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is logically antecedent to the assessment of the deceptive similarity of the compared trade marks.[2]  In particular, it has been said that the closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.[3]

   [2] See, French J in the case of Registrar of Trade Marks v Woolworths [1999] FCA 1020 [39]. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second

   [3] Op. cit. [40] where French J endorsed the words of Wilcox J in the court below (Woolworths Ltd v Registrar of Trade Marks [1998] FCA 1268.)

8. In essence the conflict is between that part of the Services described as “Provision of facilities for conventions; Provision of facilities for exhibitions; Provision of conference facilities” and (i) the class 41 services of regn. 888807 described as “organisation and running of seminars, colloquiums, conferences and conventions”; and (ii) the class 41 services of regn. 1234147 described as “organising and conducting exhibitions, seminars, lectures, presentations, colloquia, conferences and congresses”.

9. Section 14(2) of the Act states that services are similar to other services (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services.

10. The services are not identical but clearly there is an issue as to whether they are “of the same description”, an expression not defined in the Act but judicially treated in much the same way as the determination of goods of the same description, an expression which has received a great deal of attention over the years.[4]

    [4] See, for example, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 567 where the Full Federal Court (Burchett, Sackville and Lehane, JJ) accepted that “subject to any necessary modification” the principles applicable to whether two sets of goods were goods of the same description also applied in relation to services.

11. The factors I must consider, then, would include such things as the nature of the respective services, what the services are normally used for and whether the services are ones which one might reasonably expect one trader to provide under the same or similar trade mark.  In so doing I should bear in mind the words of Lord Evershed MR in Re Lyons & Co Ltd’s Application [1959] RPC 120 (at 128):

    By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods … The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited … lend some support to the view that the phrase “goods of the same description” ought not to be given too restrictive a construction — not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.

12. I find that the Services are of the same description as the relevant class 41 services of the earlier registrations already cited. Further, for the purposes of section 10 of the Act to which I have already referred, I find that the compared services are not just of the same description but are also closely linked.

13. French J stated in the case of Registrar of Trade Marks v Woolworths [1999] FCA 1020 (at [40]) that:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

14. As to the question of deceptive similarity, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[5] Windeyer J said:

    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] HCA 51; (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.

    [5] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].

15. In this case the compared trade marks share a common element – the letters “ICC” – which is inherently adapted to distinguish.  In each case the added matter is not of source distinguishing value.  In the case of the Trade Mark it is the geographical placename, Sydney.  In the case of regn. 888807 it is the descriptive words “INTERNATIONAL COURT OF ARBITRATION” and in the case of regn. 1234147 it is an embellishment of the two letters “C” so as to suggest a globe device of no special interest.  In my finding, a member of the public knowing none of the trade marks is likely to be confused by the trade marks simply because of the commonality of the letters “ICC”.

16. I find that the Trade Mark is deceptively similar to the trade marks of both of the earlier registrations and so I find that a ground for rejection exists under section 44 of the Act, subject to what is now said of section 44(3)(a).

    Evidence of use

17. Section 44(3)(a) is concerned with honest concurrent use of two marks which are otherwise deceptively similar and permits me to accept the application for the registration of the Applicant’s Trade Mark subject to conditions or limitations that I may think proper to impose. The Applicant has relied upon this provision.

18. Two preliminary observations are necessary.  The first is that the touchstone for the concurrent use is the Services as now cast (and not broader or different services, such as those originally circumscribed by the application when it was filed).  For convenience I have restated those Services here:

    “Provision of facilities for conventions; Provision of facilities for exhibitions; Provision of conference facilities; all of the aforementioned excluding legal and judicial activities”

19. The second observation – seemingly trite – is the section 44(3)(a) in fact requires proof of the concurrency of use of the relevant trade marks.

20. Those constraints are the undoing the Applicant’s argument under section 44(3)(a). Putting to one side all that might have been said in Donaghy 1 during examination of the application, Donaghy 2 is said to be an update of the Applicant’s position at 7 November 2016.

21. Donaghy 2 states that:

    “The International Convention Centre in Sydney (ICC Sydney) officially opens to the general public on 19 December 2016 as the Asia Pacific’s premiere business events precinct. A range of select events have (sic) already been successfully held in this facility and ICC Sydney has been undertaking the contracting and planning of over 400 events since the Mark was first used on 4 December 2013. Events have been booked and are being planned as far in advance as May 2026. 

    The Mark has been continually used since 4 December 2013 to promote the services which will be provided by ICC Sydney and in the process of ICC Sydney engaging as a convention centre through booking, scheduling and hosting national and international events and exhibitions. A significant number of Hiring Agreements for events have already been entered into with third parties since December 2013, and the Mark has been used successfully and without confusion from the market, continually throughout this process and public engagement. Exhibit B lists some of the public events and exhibitions that have been organised to date. The majority of events that have been organised are private events such as annual meetings and corporate lunches, of which there are many.

    While ICC Sydney had not officially commenced the holding of events at the time the mark was filed, there had been nearly a year of prior use of the Mark, and expenditure in relation to the Mark, in regards to promoting the facilities of ICC Sydney and booking and planning of events. Therefore, the Mark was used in relation to services that related to the provision of facilities for conventions, concerts and exhibitions.

    Significant expense goes into branding and promoting facilities such as convention centres prior to the official venue opening and trade marks are used consistently throughout the event organising phase. Indeed, significant reputation attaches to trade marks during this phase when third parties are looking for a suitable venue to hold their event as many events are required to be booked and planned years in advance of the event date. In commercial reality (sic) the Mark was being used as soon as ICC Sydney was held out to the market as a convention centre, exhibition and theatre venue. The matter of the physical premises not being built at this time does not detract from this.

    Already, the Mark is being used in the provision or support of theatre, exhibition and convention centre services: through marketing material for business development purposes; and in order to identify ICC Sydney to customers, general public and suppliers for event booking and operational purposes.”

1. Donaghy 2 states under the heading “Evidence of honest concurrent use” that:

   “Since 4 December 2013, the Mark has been used or referred to in more than 80 media releases issued by or in association with the Applicant, ICC Sydney, Darling Harbour Live and its partners, various departments of the NSW Government, other organisations including Business Events Sydney, the International Association of Convention Centres, Exhibition & Event Association of Australasia, Sydney Renewable Power Company, Sydney Kings basketball franchise and Pride in Diversity (a national employer support program for LGBTI workplace inclusion), and events such as Robocup (the world’s biggest annual robotics event), Sibos (the world’s largest financial conference) and a Keith Urban concert. Exhibit C contains copies of such media releases.

   The above advertisement and promotional material demonstrates the strong association between the Mark and the convention and exhibition centre, and theatre services of ICC Sydney, and public use and awareness of the Mark in association with the services and facilities to be provided in connection with the Mark. The Applicant has gone to significant effort to establish this reputation through extensive marketing and promoting of the services in connection with the Mark and other trade marks of the Applicant.

   From 15 January 2016 to 11 October 2016, the Mark has been referred to or mentioned in more than 1600 separate news and other media articles published online and in print, in Australian sources as well as international locations such as the United Kingdom, United States of America, China, India, Hong Kong, Singapore, United Arab Emirates, Turkey, Netherlands, Mexico and Argentina. Exhibit D provides instructions on how to access an online file transfer platform which contains a spreadsheet file particularising these media mentions.

   In addition to online and traditional print media, the Mark has been referred to, mentioned or displayed in scores of television and radio programs. Exhibit E contains hard copies of example coverage and the online file transfer platform referred to in paragraph 14 and Exhibit C contains example media clips of such coverage.

   In the period 17 January 2016 to 30 September 2016, the Applicant in conjunction with its partners has expended approximately $329,309 in direct advertising costs (Exhibit F) to promote ICC Sydney and the Mark.

   The Mark and the logos developed in conjunction with the Mark, being application numbers 1641885 and 1641884 (the Logos), have continued to be used extensively in marketing and promotional materials in relation to ICC Sydney. Examples of the ongoing widespread use of the Mark include:

   ICC Sydney’s flagship publication ‘Sydney Views’ (Exhibit G). Sydney Views is a bi-annual publication distributed locally, nationally and internationally by direct mail (to approximately 15,550 clients and stakeholders), Electronic Distributed Mail (EDM) (to a database of 13,000), website and social media (which reaches an audience of 23,336); various fact sheets regarding ICC Sydney (Exhibit H) issued to all prospective clients and customers of ICC Sydney (including one for distribution to the Chinese market); an ICC Sydney community newsletter (Exhibit I) distributed monthly via EDM and website, locally, nationally and internationally to clients and stakeholders; and an interactive brochure (a hard copy is contained in Exhibit J) distributed to all prospective clients and customers of ICC Sydney.

   The Mark […] has been used extensively by third parties promoting events, exhibitions and concerts held at ICC Sydney. Exhibit K contains examples of such promotional material, however this list continues to grow as new shows are released to the market. The Mark is not only used for branding purposes, but also to inform consumers and the public as to the location of the event. This use of the Mark as a geographical reference point and landmark further demonstrates its widespread use by and benefit to the public and the general understanding held by consumers that the Mark refers to ICC Sydney.”

2. To the extent that Donaghy 2 was sworn to update and elaborate upon information already provided to the Office in Donaghy 1, it is a complete statement of the facts necessary to evaluate the Applicant’s submission based on section 44(3)(a).

3. Those facts foreshadowed (since Donaghy 2 was sworn before the fact) that a convention centre in Sydney bearing the Trade Mark as its name would officially open on 19 December 2016.  Assuming that it did so on that date, it follows that provision of the Services (as opposed to the myriad other contracting, planning, marketing and promotional activities well described that occurred up to that date) would have only been  possible over the last seven weeks.   

4. In the case of John Fitton & Company Limited's application for a trade mark (1949) 66 RPC 110 the Assistant Comptroller listed five criteria of relevant to honest concurrent use, being:

   ·the degree of confusion likely between the trade marks in question;

   ·whether instances of confusion have in fact occurred;

   ·the honesty or otherwise of the concurrent use;

   ·the extent of use in duration, area and volume; and

   ·the relative inconvenience that would be caused to the respective parties if the applicant's trade mark should be registered or not registered.

5. Although there is no evidence touching on the matter, I accept that the Trade Mark was adopted “honestly”.   I accept the Applicant’s sworn statement that there have been no instances of confusion up to the point when that statement was made.  Nevertheless, almost all else weighs against the Applicant.  The time frame for concurrent use is so very narrow that no reliable conclusions can be drawn.  There is no evidence at all of the concurrent use of the relevant trade marks.  The prima facie risk of confusion between the trade marks is, in my assessment, significant.

6. In terms of s44(3) the onus is on the applicant to establish its case to the Registrar’s satisfaction. I do not consider that the evidence is sufficient to satisfy the Registrar that section 44(3)(a) should be applied in this case.

   Decision

7. Section 33 of the Act has been set out earlier. For the reasons given I have found that a ground for rejection of the Trade Mark exists under section 44 of the Act.

8. Under section 33, I must therefore refuse to register trade mark application number 1641882. If, however, the Registrar is served with a notice of appeal within one month from the date of this decision I direct that the disposition of the application be in accordance with the Court’s direction or order.

   Debrett Lyons

   Hearing Officer

   Trade Marks Hearings

   6 February 2017