Allan George McCormac v Adventure World Pty Ltd

[2017] ATMO 154

TRADE MARKS ACT 1995

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

Re:Opposition by Allan George McCormac to registration of trade mark application 1719292(30) – DRIVER REVIVER - filed in the name of Adventure World Pty Ltd.

Delegate:	M Cooper
Representation:	Opponent: Written submissions from Minter Ellison Applicant: McIntosh IP
Decision:	2017 ATMO 154 Opposition under s.52 of the Trade Marks Act 1995: s.44 considered – trade mark substantially identical with earlier registered mark and for closely related goods – no evidence of concurrent use or other circumstances - registration refused

Background

1. This matter concerns an opposition by Allan George McCormac (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Adventure World Pty Ltd (‘the Applicant’):

   Application Number: 1719292

   Trade Mark: DRIVER REVIVER (‘the Trade Mark’)

   Filing Date: 4 September 2015

   Class 30: Cookies; Biscuits (‘the Goods’)

2. The Trade Mark was examined and advertised as accepted for possible registration on 28 January 2016 in the Australian Official Journal of Trade Marks.

3. On 29 March 2016, Allan George McCormac (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. On 29 April 2016, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42, 44, 58, 60 and 62A of the Act.

4. On 15 June 2016 the Applicant filed a Notice of Intention to Defend.

5. The Opponent did not file his Evidence in Support by the due date of 27 September 2016. The Applicant was advised of this on 7 October 2016 and given three months from that date to file its Evidence in Answer. On 6 January 2017 the Applicant requested an extension of time, to 7 February 2017, within which to file its Evidence in Answer. On 18 January 2017 a delegate of the Registrar of Trade Marks advised the Applicant that she intended to refuse the extension of time. The Applicant was given until 1 February 2017 to either request a hearing or to file further reasons in support of the extension of time application. The Opponent was also advised of this. The Applicant did not request a hearing nor file any further reasons. On 16 February 2017 the delegate formally refused the extension of time application and advised the parties that the evidence stages were completed. The parties were given one month to request a hearing on the substantive opposition and pay the required fees. They were further advised that, if there was no request for a hearing, a decision would be made on the written record.

6. On 17 March 2017 the Opponent provided written submissions seeking that the statutory declaration of Allan George McCormac, made 2 November 2016, with exhibits AGM-1 to AGM-11(‘McCormac declaration’) and as filed with his earlier trade marks (Trade Mark Nos. 1690022 and 1692876), be allowed into evidence in this matter. This application is discussed further below.

7. On 7 April 2017 IP Australia wrote to the parties noting that neither party had requested a hearing and advising that the matter would be allocated to a delegate to decide the substantive matter. The parties were given one month from the date of the letter to file submissions.

8. On 21 April 2017 IP Australia again wrote to the parties noting the Opponent’s late filed material (see paragraph 6 above) and advised that the delegate who decided the substantive matter would also decide whether there was a ‘compelling case’ to allow this material into proceedings. The parties were further advised that if the delegate so decided then the Applicant would be given an opportunity to comment.

9. No response or any further material was provided. No party requested a hearing. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide.

Opponent’s late filed evidence

1. As noted above, on 17 March 2017, the Opponent’s legal representatives sought that additional material, namely, the McCormac declaration, be allowed, out of time, into evidence.

2. The Opponent’s representative claimed in submissions that the Opponent could not afford to pay the required legal fees to prepare evidence in support of the opposition. It was also asserted to be in the public interest to allow the material because the Register ‘needs to be a true reflection of the marketplace.’ Further submissions were made however they were largely a reiteration of the particulars supporting the grounds set out in the SGP. There is little before me which substantiates the Opponent’s lack of funds or demonstrates how the public interest would be promoted by inclusion of the material sought to be filed.

3. I have had regard to the Trade Marks Office Manual of Practice and Procedure (‘the Manual’), in particular, Part 51, paragraph 2 which states:

   It is in the public interest that opposition proceedings are conducted as efficiently and predictably as possible. The Registrar expects the parties to file their evidence in the statutory periods allowed for that purpose. However the Registrar is aware that, despite the parties’ best endeavours, it may not always be possible to do so.  Accordingly the Registrar may extend the statutory period for filing evidence.  The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) limited the circumstances under which an extension of time may be granted.  Those circumstances are stated in regulations 5.15, 9.18, 17A.34K, 17A.48T and apply for extensions of evidentiary periods which commenced on or after 15 April 2013.

4. The submission, seeking that the additional material be allowed, is not a request for an extension of time under any of the above provisions. Rather, it is a request to introduce material well outside the evidentiary stages provided for in the Trade Marks Regulations 1995 (‘the Regulations’). I note that the Opponent has at all times been legally represented yet there is no explanation as to his reasons for not seeking to avail himself, at any earlier stage, of the extension of time provisions available under the Regulations. Even if I accept that he has had financial difficulty, his failure to take any action post-lodgment of the Notice of Intention to Oppose and the SGP is not adequately explained by a lack of funds. This is particularly so given the fact that the McCormac declaration, in relation to his other trade mark applications, was sworn on 2 November 2016.

5. I have also had regard to the Manual at Part 51, paragraph 2.6 which provides:

   The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered.

   Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party.  The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account.  The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

   The issues the filing party needs to address in its submissions include:

   ·    Why the evidence was filed after the due date

   ·    If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier

   ·    What the evidence shows

   ·    Why that information is crucial to the delegate’s decision

   ·    Why it is in the public interest to have the information considered

   ·    What is the balance of convenience for the parties if the information is considered.

6. None of the above issues was adequately addressed in the Opponent’s late-filed submissions.

7. In all the circumstances, including the significant amount of time that has elapsed since the evidence in support stage, the opportunities available to the Opponent to request an extension of time and the fact that the McCormac declaration was made in November 2016, I am not satisfied that there are any satisfactory and/or substantiated reasons provided such as to establish a compelling case for the admission of the material.

8. For all the above reasons, I have decided not to allow the late-filed material in evidence. I will now proceed to decide the matter on the properly filed material.

Grounds of Opposition and Onus

1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]

2. As noted above, the Opposition grounds claimed in the SGP are those under sections 42, 44, 58, 60 and 62A of the Act. The SGP claims that the Opponent owns the trade mark and relies on the Australian trade mark registrations 1690022, 1692876, 1690030 and 1692279 for the s.44 ground of Opposition.

3. The time at which a ground of opposition must be established is the date of filing of the application for registration[2]. In this case that date is 4 September 2015.

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]

The Evidence

1. As mentioned above, no evidence has been properly filed by either party in this opposition. I will therefore base my decision on the information contained in the SGP and relevant submissions made by the Opponent’s representative. I shall initially consider the ground of opposition under section 44 of the Act, this being the only ground of opposition claimed in the SGP that may be established without the provision of evidence.

Discussion

1. Section 44 of the Act 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.

   ….

2. The SGP expressed the opposition ground based on section 44 of the Act as follows:

   DRIVER REVIVER is substantially identical with or deceptively similar to:

   (a)   DRIVER REVIVER, the Australian Trade Mark Application Nos. 1690022 and 1692876 (Applications)[3] and

   (b)   (Trademark device) Australian Trade Mark Registration Nos. 1690030 and 1692279 (Registrations)

   which cover services that are closely related to the goods covered by the Application, the priority dates of which are earlier than the priority date of the application.

   [3] Now registered but pending at the date of the SGP

3. In order to establish the section 44 ground of opposition in respect of subsection 44(1), on the evidence in this case, the Opponent must demonstrate, subject to subsections (3) and (4), that the Applicant’s trade mark:

   ·     issubstantially identical with or deceptively similar to a trade mark pending or registered by another person

   ·     in respect of similar goods or closely related services (s.44(1)(a), and

   ·     has a priority date not earlier than that of the other trade marks (s.44(1)(b).

4. As previously noted, in relation to the priority date, the Applicant’s trade mark application was filed on 4 September 2015. The Opponent’s trade marks were filed earlier than this, on 4 May 2015 (1690030), 5 May 2015 (1690022), 8 May 2015 (1692279) and 14 May 2015 (1692876) respectively. Therefore s.44(1)(b) is met.

5. The details of the Opponent’s trade marks follow.

6. In relation to trade mark 1690030:

   Trade Mark: 

   Filing date: 4 May 2015

   Specification of Services:

   Class 43: Arranging for the provision of food; Consultancy, advisory and information services in relation to the provision of food and drink; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation.

7. In relation to trade mark 1690022:

   Trade Mark:DRIVER REVIVER

   Filing date: 5 May 2015

   Specification of Services:

   Class 43: Arranging for the provision of food; Consultancy, advisory and information services in relation to the provision of food and drink; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation.

8. In relation to trade mark 1692279:

   Trade Mark:

   Filing date: 8 May 2015

   Specification of Services:

   Class 35: Advertising; Promotional services; Sponsorship (promotion and marketing services).

9. In relation to trade mark 1692876:

   Trade Mark:DRIVER REVIVER

   Filing date: 14 May 2015

   Specification of Services:

   Class 35: Advertising; Promotional services; Sponsorship (promotion and marketing services)

Similar goods or closely related services

1. I note the discussion of French J in Registrar of Trade Marks v Woolworths Ltd. ('Woolworths’) in which he said:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. 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:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."[4]

   [4] Registrar of Trade Marks v Woolworths Ltd. (1999) 93 FCR 365; [1999] FCA 1020 [39]

2. As was observed in Qantas Airways Ltd. v Edwards (‘Qantas’) in relation to this comment:

   Rather … his Honour was addressing the calculus for determining, within the context of a s 44 objection, the question of deceptive similarity, not the question of whether goods or services are “closely related”. This was the point of his Honour saying that “it will not always be necessary to dissect that judgment”—that is, whether the resemblance between the marks renders them deceptively similar—“into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services”.

   As his Honour then explains, this is because the Registrar or the Court might be satisfied, in the given case, that, on comparison, the marks are so dissimilar that deception or confusion is unlikely to arise, regardless of the closeness of the relationship between the goods and services.

   The matter can be tested in this way. Take the case of a mark registered for communication services. Can it be suggested seriously that an application for the very same mark in respect of, say, veterinarian supplies, has the consequence for s 44 of the Act that the communication services and veterinarian supplies are “closely related” because the marks are identical? Other examples abound.[5]

   [5] Qantas Airways Ltd v Edwards [2016] FCA 729 [119-120]

1. On this basis, and on the facts of this opposition, I shall initially consider the nature of the relationship between the Applicant’s goods and the Opponent’s services.

2. The specification for the Trade Mark claims the goods ‘Cookies; biscuits’. Conversely, the Opponent’s trade marks relate to the provision of services, that is: ‘Arranging for the provision of food; Consultancy, advisory and information services in relation to the provision of food and drink; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation’ (1690022 and 1690030) and ‘Advertising; promotional services; sponsorship (promotion and marketing services)’ (1692279 and 1692876).

3. The comments of French J (with whom Tamberlin J agreed) in Woolworths are apposite:

   … The 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. …[6]

   [6] (1999) 93 FCR 365; [1999] FCA 1020 [37].

4. His Honour also said that “closely related” is a term of wider import than “similar”.[7]

   [7] Ibid.

5. In relation to the services in the specification of the Opponent’s trade mark nos 1692279 and 1692876, I am not satisfied that there is the required close relationship. As Yates J said in Qantas:

   At this stage of the analysis, it is important to concentrate on the specification of the prior, allegedly conflicting registration that is deployed in the s 44 opposition. This is particularly where the “services” of the prior registration are broadly defined and potentially all-encompassing because of the use in the specification of expressions such as “advertising, marketing and merchandising services”—the very services relied on here. So expressed, these services are not directed to the activity of advertising, marketing or merchandising in any particular line of trade or commerce or in respect of any particular goods or services. Literally, the services of “advertising, marketing and merchandising”, individually or collectively, can be provided in respect of any goods or services whatsoever. So understood, how is it then said, based on the scope of the specification of the prior registration alone—for this is the analysis required by s 44 of the Act—that the specified goods or services are “related”, or more still “closely related”, to the goods or services for which application is made in respect of the opposed mark?

   …..

   What is it then, in the present case, that makes “advertising, marketing and merchandising services” and more particularly (on the appellant’s case) “merchandising services”, services that are “related” to “clothing; footwear; headwear; shirts; T-shirts” beyond the fact that each of the respondent’s goods is capable of being, along with a vast range of other goods and services, the subject of “advertising, marketing and merchandising”? The answer is, in truth, nothing. The respondent’s goods are no more and no less related to “advertising, marketing and merchandising services” than any other goods or services that can be advertised, marketed or merchandised. How then is it said that the appellant’s services are “closely related” to the respondent’s goods? The simple fact is that, in the present case, there is no close relationship between the two for the purposes of s 44(1)(a)(i) of the Act.[8]

   [8] Qantas Airways Ltd v Edwards [2016] FCA 729 [124]-[126].

6. The issue is whether the Applicant’s goods are closely related to the Opponent’s services as specified in its Trade Mark registration nos. 1692279 and 1692876. In line with the above reasoning, I have considered what it is about ‘cookies; biscuits’ that might characterise them as “related” to ‘Advertising; promotional services; sponsorship (promotion and marketing services)’. While the Applicant’s goods are capable of being, along ‘with a vast range of other goods and services’, the subject of advertising and promotion and marketing, given the paucity of material before me, there is no apparent close relationship. On this basis, in relation to the Opponent’s registered trade marks 1692279 and 1692876, the s.44 ground of opposition has not been established.

1. Conversely, with regard to the Opponent’s Trade Mark registration nos. 1690022 and 1690030, the Opponent’s services include the ‘provision of food and drink’ which notionally includes the provision of the Applicant’s goods.

2. Whether particular foods are closely related to the service of providing food was further discussed by French J in Woolworths:

   In Rowntree plc v Rollbits Pty Ltd, [(1988) 10 IPR 539], registration was sought for a trade mark in respect of foods which included biscuits, cakes and pastry goods. The same applicant also sought registration of a service mark with respect to services rendered or associated with restaurants, takeaway food stores and other retail food outlets which sell and promote prepared food and drinks for consumption. Both applications were accepted but opposed. On appeal by the opponent from the decision of the registrar, Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33(1).[9] His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under s 33(2) of the 1955 Act must be answered in the same way as the question under s 33(1), his Honour said at 546:

   ...I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.” [10]

   [9] Predecessor provision to s.44

   [10] At [39]

3. Acknowledging the difference in the factual contexts, (that is, this matter only involves the one trade mark application in respect of goods), I am satisfied that the services contemplated by the Opponent are the provision of food and drink, which includes biscuits, the same description of the goods for which the Applicant seeks trade mark registration.[11] It follows, on the above analysis, that I am satisfied the Applicant’s goods are ‘closely related’ to the Opponent’s services as specified in Trade Marks 1690022 and 1690030.

[11] By way of analogy, a recent similar finding was made in Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust [2016] ATMO 76, [63] in relation to goods including sushi and services including the provision of food and drink.

‘Substantially identical with or deceptively similar to’

1. The remaining issue for consideration and determination is whether the Applicant’s Trade Mark is ‘substantially identical with or deceptively similar to’ the Opponent’s marks.

2. In the context of this Opposition, given the findings above and below, it is only necessary to consider this issue in relation to the Opponent’s trade mark 1690022.

3. In considering the meaning of ‘substantially identical’, the term is not defined in the Act but the accepted test was stated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, as follows:

   In considering whether marks aresubstantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.[12]

   [12] (1963) 109 CLR 405 [414].

4. A side by side comparison of the Applicant’s Trade Mark and the Opponent’s mark 1690022 demonstrates that they are identical. Both use the same words and are in capitals. Neither is stylised in any way.

5. On this basis I find that the Applicant’s trade mark is ‘substantially identical with’ the Opponent’s registered trade mark 1690022.

6. In this context, the comments of the Court in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co are relevant:

   It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. [13]

   [13] [1983] FCA 145; (1983) 48 ALR 511 [522].

7. Further, the comments in Qantas are also pertinent. His Honour considered the applicable case law, as well as a 1979 article by F J Smith, then the Registrar of Trade Marks and Designs, concerning the notion of closely related goods and services.

   In his paper (at 119), Mr. Smith gave the following examples of where conflict between competing marks for goods and services might arise:

   It is evident that in certain cases there is likely to be confusion if similar trade marks are used by different proprietors, one for services and the other for goods. So for example, the use of identical or deceptively similar marks in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributed to the same source. Motor vehicles and a vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of “closely related goods and services” as it will occur in so 23, 33 and 36 of the amended [1955] Act. [14]

   [14] [2016] FCA 729 [106]-[129] Emphasis added in bold

8. In the current matter the Trade Mark is claimed in respect of a prepared food (biscuits) and an identical mark is registered for services in which a notional fair use contemplates the provision, among other things, of that type of prepared food. Seen in this context, I consider that confusion is highly likely and it is an entirely plausible notion that a customer for the Applicant’s goods, that is, biscuits featuring the Trade Mark would mistakenly attribute the source of those goods to be the same as the Opponent’s identically marked, ‘Driver Reviver’ services, providing food and drink.

9. Having considered the facts and relevant authorities discussed above, I am satisfied that the Trade Mark is “substantially identical with” the Opponent’s mark which is registered in respect of closely related services. Therefore s.44(1)(a) is met. Together with the findings in paragraph 25, it follows that the grounds of opposition in s.44(1) have been established on the basis of the Opponent’s trade mark no. 1690022.

10. In relation to subsection (3) of s.44, the Applicant made no claim nor provided any evidence which may establish concurrent use of the Trade Mark or any other circumstances which indicate that the trade mark application might be accepted.

11. With regard to subsection (4) of s.44, there is no claim or any evidence before me which indicates that the Applicant or its predecessor in title have continuously used the trade mark for any period such that it may be accepted under that provision.

12. For the above reasons, I find that the Opponent has established the ground of opposition under section 44 of the Act.

13. Given that the Opponent has established one ground of opposition in relation to the Trade Mark, there is no requirement for me to consider the remaining grounds particularised in the SGP. In the event of an appeal to this decision, it will be open to the Opponent to additionally pursue those grounds and the others available under the Act.

Decision

1. Section 55 of the Act relevantly provides:

   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.

   Note: For limitations see section 6.

2. Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1719292.

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

1 December 2017