Air Express International (Australia) Pty Limited v Australian European Insurance (Brokers) Pty Ltd

[1999] ATMO 118

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Air Express International (Australia) Pty Limited to registration of trade mark applications 755767(36) and 755768 (36) - AEI - filed in the name of Australian European Insurance (Brokers) Pty Ltd.

Trade mark applications 755767 and 755768 were filed on 24 February 1998 by Australian European Insurance (Brokers) Pty Ltd, in respect of services described as insurance services including insurance services to transport industries. Australian European Insurance (Brokers) Pty Ltd, (hereafter AEI (Brokers)) is an Australian company located at 33 Berry Street, North Sydney, New South Wales.  The trade mark claimed under 755767 consists of the plain letters aei.  The trade mark claimed under 755768 consists of the same letters, but in the following format:

Both trade marks were examined and, on 25 June 1998, the Registrar of Trade Marks advertised, in the Official Journal of Trade Marks, that the marks were accepted for registration.  I shall refer to them as the application trade marks. 

Within the statutory period of three months, Air Express International (Australia) Pty Limited filed notices of opposition to the registration of the application trade marks. Air Express International (Australia) Pty Limited (hereafter Air Express) is located at 23 O’Riordan Street, Alexandria, New South Wales. 

Evidence in support of the opposition is a declaration by Jeremy D. Zeitlyn

Evidence in answer to the opposition is a declaration by Stephen Arthur Bennett.

There was no evidence in reply.

At the request of Norton White, lawyers and notaries, who act on behalf of the opponent, the Registrar appointed a hearing which took place in Sydney on 11 October 1999.  Mr Miles Condon of counsel, instructed by Mr John Fitzpatrick of Norton White, appeared on behalf of the opponent, Air Express.  Ms Carmen Champion of counsel, instructed by Spruson and Ferguson, appeared on behalf of the applicant, AEI (Brokers).  The hearing was before me.

Background   

The Opponent’s history

The opponent’s history is set down in the Zeitlyn declaration.  Mr Zeitlyn has been with Air Express, or its parent company, since 1975 and has been a managing director since 1984.   Air Express is the registered owner of trade mark number 326966, below.  This trade mark is

registered as of 1 February 1979 in class 39, in respect of:

Transporting goods, storing goods, services connected with the function of aerodromes, packaging and parcelling of goods before dispatch, information about journeys or the transport of goods, information relating to tariffs, timetables and methods of transport

I shall refer to trade mark 326966 as .

Air Express is also the registered owner of 326965 326968 and 328363. These marks are modifications of 326966 and cover similar transport and storage services in class 39.  They are shown below. Nothing hangs on the particulars of the services so I will not quote them.

326965

326968

328363

Mr Zeitlyn gives a brief account of how the freight forwarding, transport and storage industry operates.  He says[1] it is normal for these service providers to offer insurance as a part of their regular service. Usually, however, the service providers will not underwrite the risk themselves but will act as intermediary between the underwriter and the customer. He says[2] that, since 1975, Air Express has offered insurance as part of its service.  He then goes on to expand this statement with the comment[3] that the opponent’s parent company Air Express International Corporation was the first person to use the trade mark “AEI” in Australia in respect of the service of arranging insurance.  As opposed to the previous statement that might appear to indicate that Air Express actually provides insurance, this implies that Air Express only acts as an intermediary.

[1] Paragraph 7

[2] Paragraph 9

[3] Paragraph 10

Air Express has used its  trade mark since 1959, in Australia, to identify its transport and storage services[4].  It first provided air transport only, but extended over time to both ocean and road transport.  Its services are now available in all States.  The Australian revenue claimed by Air Express is substantial. So too are the amounts it expends on advertising.  By 1998 when AEI (Brokers) filed the trade mark applications, Air Express, says Mr Zeitlyn, had acquired a high profile reputation among users of transport and storage services.

[4] Paragraph 11

Appended to the Zeitlyn declaration is a copy of a deed constituting the settlement instrument of proceedings No 387 in 1997 in the Federal Court — Air Express International (Australia) Pty Limited and another v Australian European Insurance (Brokers) Pty Limited.  It indicates that AEI (Brokers) is the registered owner of a third trade mark - 726954 - registered as of 31 January 1997. This is the device mark:

Under the terms of the Deed, AEI (Brokers) is to refrain from applying trade mark 726954 unless its full company name, or business name, appears in close proximity to that mark. In addition, clause 2.4 of the Deed states:

Brokers undertakes to use its best endeavours to immediately clarify with customers of the Air Express Entities or Brokers any confusion concerning or belief that:

(a)the products and services offered by Brokers are in some way affiliated with, or have the sponsorship or approval of the Air Express Entities; or

(b)     Brokers is in some way affiliated with the Air Express Entities.

In respect of confusion between the application trade marks and the marks, Mr Zeitlyn reports that he first became aware that AEI (Brokers) used the letters AEI in 1997 when he received, from a customer, one of AEI (Brokers) insurance pamphlets.  He was told that the customer had expressed confusion to the effect:

I am confused about this brochure because I thought AEI meant Air Express International.  Now I have discovered that another company is using the name AEI.  Who is the real owner of the name?

According to Mr Zeitlyn, this was not an isolated instance, but no further details are recorded.

The Applicant’s history

The history of AEI (Brokers) is briefly set down in the Bennett declaration.  Mr Bennett is a director of the company and he has been with AEI (Brokers) since its formation in 1983.  Both of the application trade marks, he says, have been in use in all States and Territories of Australia since 1983.  The company’s business is laid out in exhibit “F”.  AEI (Brokers), as general practitioners, transact all classes of insurance protection, specialising (inter alia) in professional indemnity insurance, loss control, fire and theft, workers’ compensation, motor vehicle, property, public, motor fleet, engineering and aircraft insurance; directors’ and office legal liability; risk management; life insurance, financial planning and finance broking.   AEI (Brokers) markets these insurance services through personal representation and by means of direct mail, by advertising in industry journals, by distribution of brochures and by third party referrals.  Mr Bennett says his company has no knowledge of any confusion arising from AEI (Brokers) use of its trade marks.  He claims, however, that the application trade marks are widely recognised as being associated with AEI (Brokers) in relation to insurance broking services.

Grounds of opposition

All told, six grounds are supported. Three rely on the grounds of rejection set down in sections 42, 43 and 44 of the Trade Marks Act 1995.  A fourth ground is that, contrary to section 58, AEI (Brokers) is not the owner of the application trade marks,. The issue of deception and confusion is broadly stated and both Mr Condon and Ms Champion submit on the basis that this implies section 60. I accept that it does. The Notice of Opposition, however, enunciates one ground as “such other grounds as the Registrar … may see fit to allow” and under this head Mr Condon cites section 41 and introduces argument that the application trade marks are not capable of distinguishing.  Ms Champion argues that I should not allow those submissions. Section 41 may, however, be encompassed by that wide formulation, and I observe that, had Ms Champion been concerned about any element of ambush, she could have applied for leave to serve further evidence. At the end of the day I think that Ms Champion’s argument becomes a side issue and, in view of the fact that I consider it useful for me to address Mr Condon’s submissions in respect of section 41, I intend to do so. 

Further grounds of opposition cited by Air Express are that use of the application trade marks would constitute passing off; that registration of these trade marks would prejudice Air Express in the conduct of its business; that their use would be contrary to the Trade Practices Act; and that AEI (Brokers) has not discharged its onus to show that its trade marks should proceed to registration. These grounds, however, are outside the exhaustive grounds specified under Division 2 of Part 5 of the Act. 

I shall deal with the grounds under section 41, 42, 43, 44, 58 and 60 in that order.

The section 41 ground

Section 41(3) reads:

(3)       In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The question of trade marks consisting of three letters has long been an issue for the Registrar.  Under the old law, the Trade Marks Act 1955, where it was a question of whether a trade mark was distinctive, three letter marks were, in the main, treated as not prima facie qualified for registration.  This view was in line with Lord Parker’s dictum[5]  that “initials are even less adapted for trade mark purposes than names”.  Under the old legislation, it was the Registrar’s practice, prima facie, to accept three letter marks only if the letters formed a pronounceable word.   The test under the new law, however, is not whether the trade mark is distinctive, but whether it is capable of distinguishing.  The Registrar, to this end, has adopted a new practice based on an assessment of the likelihood of others’ needs to use letters, particularly as initials.  It is useful for me to quote from the Trade Marks Office Draft Manual of Practice and Procedure - at 22.9.

[5] W & G case, (1913) 30 RPC 660 at 672

9. Letters
Trade marks consisting of one or two letters are prima facie unfit for registration because of a common need for their use in the general market place. The likelihood of other traders needing to use simple unembellished combinations of one or two letters in the form of initials or abbreviations is quite high. One or two letter trade marks, unless represented in a very unusual manner, possess little inherent adaptation to distinguish and can only be registered with significant evidence of use in terms of subsections 41 (5) and (6). There is likely to be less need for use of combinations of three or more letters and such trade marks are prima facie capable of distinguishing. For information on how the courts have treated letter trade marks, see Registrar of Trade Marks v W & G Du Cross Ltd, "W & G" case 29 RPC 74 and RPC 653.

9.1 One and two letter trade marks.

One and two letter trade marks without significant get up are not prima facie registrable. …

9.2 Three or more letter trade marks

Trade marks consisting of three or more letters are prima facie capable of distinguishing unless they lack inherent adaptation to distinguish because they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned. The issue of pronunciation is not relevant. …

The submission from Mr Condon is that the application trade marks are merely part of the applicant’s trade name and he cites re Application by American Tobacco Company[6] as support. That case, however, finds that the words the american tobacco company are generic and are therefore not capable of distinguishing one American tobacco company from another.  The AEI trade marks in suite do not suffer from a generic application of that kind. The American Tobacco Company case is therefore not to the point. The evidence of the opposition certainly establishes that there is indeed one other service provider with the same initials.  However, I think that a single example is not enough to find that the Registrar’s practice in relation to three letter marks is not a good one.  AEI has not been shown to have any meaning that renders it not capable of distinguishing and I do not agree with Mr Condon that the fact it coincides with the initials of the company name of its owner indicates that it lacks that capacity. In short, I do not think it is likely that many other insurance suppliers and brokers are likely to want to use the initials AEI. I therefore find that, in terms of section 41, there is no ground for rejection.

The section 42 ground

Section 42 reads:

[6] 35 IPR 98

42. An application for the registration of a trade mark must be rejected if:

(a)  …

(b)  its use would be contrary to law.

Mr Condon’s submissions are based on the allegation that the application trade marks have the capacity to engender confusion and deception (a matter that will be examined in due course, below).  On that premise, he says, use of these marks would be contrary to law. 

Section 42(b), however, does not have this broad application. A trade mark is contrary to law only if there is an illegality inherent in the mark itself[7]. As per the findings of Lloyd-Jacob J[8], section 42(b) only operates where use of a trade mark will necessarily be illegal. The provisions of the Trade Marks Act 1995 (as the Trade Marks Act 1955) make provision for some marks to be registered despite the fact that they have the capacity to engender confusion and deception. A finding of deception and confusion is therefore not enough to make out a ground that relies on section 42.

There is nothing to show that use of the application trade marks would be in breach of any legislation, or any findings of the Courts. 

I find that this ground is not made out, and accordingly, I dismiss it.

[7] Shanahan D.R., Australian Law of Trade Marks and Passing Off, The Law Book Company Ltd, 2nd edit., Sydney 1990 p145

[8] Arthur Fairest Ltd's Appn (1951) 68 RPC 197

The section 43 ground

One ground of opposition claims that use by the Applicant of the Opposed Trade Mark[s] in relation to the Services would be likely to deceive or cause confusion.  This brings in the provisions of section 43 which reads:

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The deception and confusion identified in this section, however, is deception and confusion that comes about as the result of a connotation in the trade mark, and there is neither submission nor evidence that the connotation in the two application trade marks is anything more than the three letters AEI, or that those three letters represent any kind of meaning, either as an acronym or a word. 

I dismiss this ground.

The section 44 ground

Section 44 - so far as it is relevant - reads:

44. (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)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.

As a preliminary point here, I need to address submissions from Mr Condon in respect of onus.  He refers me to Jafferjee v Scarlett[9] and to directives first from Latham CJ at 119 and second from Dixon J at 124, that the applicant must sustain the burden of excluding a real likelihood of confusion between the marks. Ms Champion, on this point, was of like mind. However, the new law, and section 44 in particular, has recently been considered in depth in Registrar of Trade Marks v Woolworths, the Metro case[10]. French J’s finding is that section 44 is governed by the provisions of section 33. His Honour says[11]

[9] (1937) 57 CLR 115

[10] [1999] FCA 1020 (29 July 1999)

[11] paragraph 24

The mandatory language of s33 gives effect to the intention, expressed in the Second Reading Speech, that there is to be a presumption of registrability when the application is examined by the Registrar of Trade Marks. This is a shift from the position under the previous law whereby the onus was on the applicant to establish registrability - Jafferjee v Scarlett (1937) 57 CLR 115 at 119 and 126.

Turning then to the criteria of section 44. The opposition will here succeed if it shows that the trade mark has a priority date earlier than the application trade marks; that the application trade marks are substantially identical with, or deceptively similar to, the  trade mark; and the services claimed under the application trade marks are similar to the services comprehended by the registration.  

There is no disagreement regarding priority.  is entitled to a 1979 date.  The application trade marks both claim 24 February 1998. 

Likewise, it seems to me that Ms Champion has no real disagreement with the proposition that the application trade marks AEI and are either substantially identical or deceptively similar to .  In view of the fact that the essential element of each of these marks is the letter group AEI, that the marks all look and sound similar, and that the only material difference is the lettering styles in the mark, I think the finding that the marks are at least deceptively similar, is inescapable. 

The success or failure of the section 44 ground therefore hangs on the one question of the similarity or otherwise of the services. These, on the one hand, are the services claimed in the AEI (Brokers) pending applications:

Insurance services including insurance services to transport industries

and, on the other, the services claimed by Air Express:

Transporting goods, storing goods, services connected with the function of aerodromes, packaging and parcelling of goods before dispatch, information about journeys or the transport of goods, information relating to tariffs, timetables and methods of transport.

Mr Condon here refers me to a Registry decision issued by E.G.Hancock in 1985[12]. In this case, at p 271, Mr Hancock identifies the long established factors for deciding whether services are services of the same description. These, deriving from Romer J in Jellinek’s Application[13], are (1) the nature of the services, (2) their purpose and (3) the trade channels through which the respective services are delivered.   Applying those principles, Mr Hancock found that travel services were services of the same description as insurance services. However, in preliminary comments he says:

[12] American Express v NV Amev (1983-1985) 5 IPR 267.

[13] (1946) 63 RPC 59

Whilst it is clear from the evidence that the provision or procurement of travel insurance is one of the many facilities offered by travel agents to their customers I do not think that it can be inferred from this alone that travel services as a whole and general insurance services must therefore be similar in nature or that they must necessarily have the same or similar purposes.  Insurance is designed to serve many industries which, in the normal trading sense, might otherwise be totally unconnected to the insurance industry.  It would for example, be absurd to equate the nature and purpose of insurance with that of the rural industry simply because crops and livestock may … be insured against loss or damage.  The insurance and the rural industries have nothing more in common as regards their nature and purpose than either of those industries have with the nature and purpose of the travel industry. 

Mr Hancock then goes on to consider the particular comparison, of insurance and travel services, in light of the opponent’s evidence.  This evidence was particularly aimed to show that these services are delivered via the same trade channels.  The facts satisfied Mr Hancock that various agencies provided both travel and insurance services.  He says, at p272

According to … evidence, which is supported by a large amount of published literature issued by or about the various financial institutions … it appears also that the national automobile clubs … provide travel services as well as life and general insurance and other financial services on a very large scale.   There is no doubt that these organizations are as well known for insurance as they are for the other services they provide, including travel services.  Like the banks, the automobile clubs provide their services either directly or through subsidiary companies whose connections with their parents are for the most part publicly identified by the same or similar corporate names and trade marks.  Thus throughout the evidence there appear references to Westpac Travel Services, ANZ Travel Services, RACV travel and Insurance Services, NRMA Travel and Insurance Services … there can be no doubt that the services thus provided would be understood by the public as emanating from the same source.  The conclusion to be drawn from the evidence is that a travel service offered to the public under the name or trade mark of any well known financial institution, be it a bank, insurance company, or otherwise, would be taken by the public as being a service provided by that institution.

American Express v NV Amev was thus decided on its facts. Contrary to his preliminary observations that while many industries are associated with the insurance industry, and have nothing in common regarding nature purpose or modes of delivery, Mr Hancock found, on the evidence, that travel services and insurance services are services of the same description. 

The evidence before me is not comprehensive.  Any supporting published literature is confined to material published by the parties themselves.   Mr Condon however, directs my attention to various places in the Air Express material.  At paragraph 9 Mr Zeitlyn says:

Since at least 1975 insurance has been offered as part of the service provided by Air Express or Air Express Corporation in Australia, and the trade mark “AEI” has been used to identify that service in Australia.

The support for this assertion, however, is scant.  Exhibit “D”, as Mr Condon submits, indicates the broad nature of the Air Express transport and storage services.  Part of Exhibit “D” is an Air Express information brochure.  It includes an introduction which appears to relate to the opponent’s parent company, but which I think I may assume, also describes the services delivered by Air Express.  It reads

AEI diverse customer base includes pharmaceutical and sensitive electronic component manufacturers, heavy industrial and earthmoving equipment companies to foodstuffs and fashion exporters. 

Whether if be worldwide air or ocean forwarding services, local or cross frontier road operations or warehousing and distribution, on a local or global basis, AEI has a service option which can be tailored to meet your specific needs.

This brochure then goes on to give some details of the various service components.  So far as I can see, and indeed, so far as Mr Condon was able to point to, the only instance where insurance is mentioned is under a page headed OCEAN SERVICES.  This general tenor of this page is broad descriptive information.  It says:

AEI offers complete door to door ocean services through a dedicated network of offices strategically located in the major shipping centres of the world. …

AEI Ocean Services can offer an array of full-container-load and less-than-container-load services…

Our experienced staff can provide complete documentation, customs clearance, warehousing, trucking and door to door all risk marine insurance services.

Ms Champion says that this statement should not be taken as evidence that Air Express is an insurance provider. First, she says that Mr Zeitlyn states that transport suppliers act as intermediaries but not as underwriters and that the statement that Air Express offers insurance should be understood in this light. She submits that the evidence on the whole indicates that the service provided by Air Express is nothing more than simply arranging for insurance and that it is not evidence that Air Express itself provides insurance. Her second point is that, in accordance with section 21 of the Insurance Act 1973, insurance services may only be provided by authorised persons and there is no evidence that Air Express has that authority.

I agree with Ms Champion that the Air Express evidence does not establish that it is in the business of providing insurance services.  That is not to say that insurance services might not be an adjunct to freight and transport services. Clearly insurance services are required for freight in transit and in storage. But this is no more than the relationship identified by Mr Hancock in respect of insurance services and the rural industry where there is a need to insure stock and crops. However, in contrast to the evidence before Mr Hancock showing identical trade channels for insurance and travel services, the evidence here falls well short of showing that insurance services and transport and storage services utilize identical channels. It does not address the wider industry scene at all. Nor does it satisfactorily establish that Air Express offers insurance services. There is no evidence of any transactions involving insurance services, and only one brief and unspecific mention of insurance services in the opponent’s literature. Taking that fact together with Mr Zeitlyn’s seemingly inconsistent statements that:

·     transport and storage providers do not normally underwrite insurance risks, but act as intermediaries between the underwriter and the customer

·     since 1975 insurance has been offered as part of the service provided by Air Express and its parent company, and

·     the parent company, Air Express Corporation, uses the  trade marks in respect of arranging insurance

I agree with Ms Champion that the opponent’s evidence can only be read as showing that Air Express acts as an intermediary. This finding is fortified by the lack of any evidence to show that Air Express has authority to provide insurance.  In contradistinction to Mr Hancock’s finding in respect of insurance and travel services, I am not satisfied that insurance and transport and storage services are delivered through the same trade channels.

The conclusion I come to is that, in respect of insurance services, transport and storage services are different in their nature, in their purpose, and in the trade channels through which they are delivered. For the purposes of section 44, therefore, they are not similar services.

On this finding the section 44 ground fails.

Before turning from this issue, I need however, to comment on submissions from Mr Condon concerning the effect of the Deed mentioned above. It records an undertaking by AEI (Brokers) not to use one of its trade marks, 726954, without its company names in close proximity; and to act to annul any instances of confusion.  Mr Condon argues that this is tacit acknowledgment by AEI (Brokers) that the application trade marks are confused with the trade marks. He says that while the opponent does not hold out this evidence in support of the section 42(b) ground, it does submit it as evidence in support of the section 44 ground. Ms Champion disagrees. She says that the statement must be seen as nothing more than a position adopted for the purpose of concluding or avoiding litigation.

In the event, having found that the respective services are not similar, this submission is no longer material.  However, I believe that it is useful to record that I agree with Ms Champion’s submission and, in the alternative, even had I found the services to be similar, I would not have accorded any weight to the evidence of the Deed.

The section 58 ground.

This section reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

In re Hicks Application[14], Holroyd J said:

[14] (1897) 22 VLR 636

If there is anyone else who would be interfered with by the registration of the word "Empress" in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark….

Ownership may therefore be supplanted by a person who has a superior claim for the same trade mark, used in respect of the same kind of thing.

The use that Air Express relies on is use in respect of shipping and transport services.  I have found that these services are not similar services to the insurance services claimed in the application trade marks.  They are therefore not the same kind of thing.  On that finding the section 58 ground fails.  

The section 60 ground

Section 60 reads:

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

(a)     it is substantially identical with or deceptively similar to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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

I have found in respect of the section 44 grounds, that the application trade marks are at least deceptively similar to .  The remaining question for the purposes of section 60 is the whether, prior to the subject application date of 24 February 1998, Air Express had acquired a reputation in its trade mark , and, because of that reputation, the use of the application trade marks would be likely to deceive or cause confusion.

For evidence of reputation, Air Express relies on the Zeitlyn declaration.  The facts of use are not in dispute.  Air Express (or its parent organisation) has carried on business in Australia, and used its trade mark to identify its transport and storage services since 1959. It operates these services in all States, it advertises through trade journals, and it displays its trade mark on all letterheads, invoices, brochures, road vehicles and signage.  It also features on banners and flags used at Air Express facilities, and at trade shows.  Mr Zeitlyn asserts that Air Express has a high profile use amongst users of transport and storage services.

Ms Champion challenges the evidence on the basis that any acquired reputation demonstrated is strictly confined to transport and storage services.  She also submits that Air Express has failed to adduce evidence that the opponent’s use of its mark has created such a perception in the public mind, that use of the application trade marks on insurance services would be taken as an indication that those services too, emanated from Air Express.

Reputation is clearly not simply a matter of revenue, or of years of use. As discussed by Richardson J in Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[15], it is a matter of awareness, cognisance or knowledge.  The Zeitlyn declaration gives revenue and years of use, but as Ms Champion submits, it does not address the question of the degree to which that use has translated into reputation.  I have Mr Zeitlyn’s statement that Air Express promotes its trade marks through trade journals and directories, through use on road vehicles, building signs, brochures, banners and flags on business sites and at trade fairs.  There is, however, no indication whatsoever of what those trade journals are, how often the advertisements appear, what the advertisements say, or how widely the journals are distributed throughout Australia.  There is no information about the directories — how and when they are published, or to whom they are directed.  There is no indication of the number of road vehicles which carry the trade marks, or the extent to which those vehicles may be expected to be visible across the country.  While I note some eight Australian addresses listed in Mr Zeitlyn’s exhibit “D” there is no account of the number of buildings that carry signage - where those buildings are located - or the number of people who can be expected to be cognisant of that signage and the trade mark thereon.  And there is no record of the number or location of trade fairs in which Air Express has participated. 

[15] [1979] RPC 410 at 424

Neither is there any support from any member of the trade or from any customer to confirm Mr Zeitlyn’s assertion that Air Express has a high profile reputation among users of transport and storage services.

In sum, I find the evidence filed in support of this opposition fails to show that, at the date of application, Air Express had acquired, in Australia, such a reputation that use of the application trade marks would be likely to lead to confusion or deception.  I acknowledge that there has been significant use — but I have not been shown that that use translates into the such awareness, cognisance or knowledge of the trade mark that use by AEI (Brokers) of the application trade marks, in respect of insurance services, would be likely to deceive or cause confusion.  Applying the directives of Kitto J per the Southern Cross case[16] and French J per the Metro case[17] I am not satisfied that there is any real tangible danger of deception or confusion occurring.  Likewise I am not satisfied that use of the application trade marks will cause a number of persons to wonder whether it might not be the case that the AEI (Brokers) insurance services and the Air Express transport and storage services are connected or come from the same source.

[16] (1954) 91 CLR 592 at 594-5

[17] [1999] FCA 1020 (29 July 1999) paragraph 50

In coming to this conclusion, I have not lost sight of the Zeitlyn evidence that instances of confusion have occurred, nor of directives from Dixon and McTiernan JJ[18] that evidence of actual cases of deception, if forthcoming, is of great weight.  Mr Zeitlyn’s evidence, however, is hearsay and is not supported by any documentation.  Furthermore, it is balanced against Mr Bennett’s statement (again hearsay and unsupported) that AEI (Brokers) has no knowledge of confusion arising from the marketing and promotion of insurance services under the application trade marks.  In the circumstances, I do not think I can give weight to either statement. 

[18] Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd, (1937) 58 CLR 641 at 658:

I therefore dismiss the opponent’s section 60 ground.

Decision

I have not found that any one of the opposition grounds is established. Accordingly the opposition fails and I dismiss it.

Subject to any appeal, I direct that trade mark applications numbers 755767 and 755768 proceed to registration.

Costs

AEI (Brokers) is entitled to its costs and I direct that Air Express pay such costs as AEI (Brokers) is entitled to as per the provisions of the official scale. 

Helen R Hardie
Deputy Registrar

16 November 1999