Alliance Consultants Pty Ltd

[2000] ATMO 64

TRADE MARKS ACT 1995

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

Re:Trade mark application number 767656 (9, 16, 35, 41, 42) - emortgage- in the name of ALLIANCE CONSULTANTS PTY LTD.

Background

Trade Mark application number 767656 was filed on 17 July 1998, in the name of Alliance Consultants Pty Ltd ("the applicant"). A representation of the trade mark, the subject of this application, is given below:

The applicant seeks to register the trade mark in respect of the following goods and services:

Class 9 - Computer hardware and computer software;

Class 16 - Printed matter relating to computer hardware and computer software;

Class 35 - Business consultancy, information and advisory services; the compilation and/or the provision of information and advice relating to business, business management, personnel, employment, working practices and development of human resources management role profiles;

Class 41 - Provision of education and consultancy services (including on-line information services) in the field of electronic commerce;

Class 42 - Services for commercial interaction in a global computer network.

The application was duly examined and grounds for rejection were raised by the examiner under section 41 and section 44 of the Trade Marks Act 1995 ("the Act"). The examiner also queried the nature of the services claimed by the applicant in class 42, under the description "Services for commercial interaction in a global computer network". Three reports issued during examination, with the advice of the Principal Examiner being sought at the second report stage. However, the grounds for rejection were maintained in the third and final report, notwithstanding evidence of use tendered by the applicant on 11 April 2000.

The grounds for rejection of this application, as described by the examiner in the reports, indicate that the word emortgage refers to the character of the application goods and services. The basis of this objection, under section 41 of the Act, is that the word signifies goods and services in relation to mortgages in electronic form (eg. online or via the internet). The examiner maintained that the mark had little inherent adaptation to distinguish the applicant's goods and services and, despite further submissions and evidence in a declaration by Robert Lindsay Kennett, the examiner continued to maintain the grounds for rejection pursuant to subsection 41(5) of the Act.

A second substantive ground for rejection exists under section 44 of the Act, involving trade mark application 760709. The cited application has been accepted for registration in respect of the following goods and services:

Class 9 - Computer hardware and computer software;

Class 16 - Printed matter relating to computer hardware and computer software;

Class 35 - Business consultancy, consultancy (including information services) in the field of electronic commerce, information and advisory services; the compilation and/or the provision of information and advice relating to business, business management, personnel, employment, working practices and development of human resources management role profiles;

Class 38 - Telecommunications;

Class 41 - Provision of education in the field of electronic commerce.

A representation of the cited trade mark is provided below:

Similarly, in spite of the applicant's submissions regarding honest concurrent use and the evidence contained in the Kennett declaration, the grounds for rejection under section 44 of the Act were maintained by the examiner. The matter regarding the description of services in class 42 also remains at issue.

Faced with these continuing objections, the applicant sought a decision on the written record, relying upon submissions made during examination and the evidence included in the Kennett declaration. No further submissions or evidence were filed by the applicant.

Evidence and submissions

The applicant relies upon the declaration of Robert Lindsay Kennett to substantiate its claim for use of the trade mark, in terms of both section 41 and paragraph 44(3)(a). Mr Kennett is a director of the applicant and a partner of Kelly & Co Lawyers (agents for the applicant), the applicant being an associated entity with Kelly & Co Lawyers. Mr Kennett states that the applicant entered into a joint venture with the owner of the cited trade mark application, in or around February 1998. The purpose of this joint venture was to 'scope and develop a product to be known as "eMortgage".

The joint venture failed in May 1998. However, Mr Kennett states that both parties have continued, separately, to develop their respective products and trade marks, with the full knowledge and consent of the other party. Mr Kennett says that the trade marks of the respective parties are not in conflict with one another, the cited trade mark being applied to goods and services in relation to 'a human resource package with associated workflow products for use on the internet'.

In terms of actual use of the trade mark, Mr Kennett states that prototype demonstration screens have been prepared and shown to a dozen Australian legal firms and to a major Australian financial institution. An example of the demonstration screens is provided under cover of the applicant's submissions of 31 January 2000, being a paper copy of a 'Powerpoint' presentation. The trade mark appearing in the 'Powerpoint' presentation differs slightly in appearance from the trade mark the subject of this application. However, the difference does not, in my opinion, have an effect on the matters relevant to these proceedings.

Ms Wong of Kelly & Co acted on behalf of the applicant. During the course of examination, Ms Wong submitted that the mark emortgage was inherently adapted to distinguish the goods and services provided for under the mark. She said it was not likely that other traders will want to use the mark in connection with similar goods and services. Notwithstanding this opinion, Ms Wong said that the application satisfied the provisions of subsection 41(6), as the trade mark had been used before the date of filing (17 July 1998). Ms Wong referred to both the Kennett declaration and the example 'Powerpoint' presentation, as evidence that the applicant's trade mark was capable of distinguishing.

In regard to the grounds for rejection under section 44, Ms Wong argued (with reference to Shell Co of Aust Limited v Esso Standard Oil (Aust) Limited[1]), that the two trade marks were neither substantially identical nor deceptively similar. Ms Wong submitted that the differences in the words following the 'e' device (ie. mortgage and people) were significant and as such, the overall impression of the two marks would not cause deception or confusion in the minds of ordinary persons.

[1] (1963) 109 CLR 407.

Grounds for rejection

Section 41

In brief, section 41 directs that, if a trade mark is not capable of distinguishing the applicant's goods from the goods or services of other traders, the application must be rejected (subsection 41(2)).

Branson J in Blount Inc v Registrar of Trade Marks[2] analyses the operation of section 41 and this analysis is confirmed by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks[3]. In accordance with the findings of Branson J, subsections (3) to (6) of section 41 of the Act are concerned with the process of determining whether a trade mark is capable of distinguishing the applicant's goods or services from those of other traders. In applying these provisions, the first step is to decide whether the trade mark is to any extent inherently adapted to distinguish the designated goods. The second step is only taken if the Registrar is not satisfied that the trade mark is 'capable of distinguishing', solely on the basis of the inherent qualities of the mark. This latter step requires the Registrar to consider the effect of the use, or intended use, of the mark and any other relevant circumstances, which may serve to satisfy the Registrar that the trade mark is either 'capable of distinguishing', or that it does so distinguish the goods or services as being those of the applicant.

[2] (1998) 40 RPC 498.

[3] (2000) AIPC ¶91-539.

The question of whether a trade mark is inherently adapted to distinguish can be answered with reference to the long standing test set down by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks[4] (the michigan case). The directives of Kitto J, in regards to the michigan case, have recently been discussed by Deputy Registrar Helen Hardie in Re Application by Estee Lauder Cosmetics Limited[5]. In discussing the directives of his Honour, Deputy Registrar Hardie makes reference to a collection of case law[6], relevant to the question of inherent adaptation to distinguish, and concludes:

[4] (1964) 111 CLR 511 at 514.

[5] IP Aust, H R Hardie, 12 May 2000, as yet unreported.

[6] Eastman Photographic Materials Company Ltd Appn (1898) 15 RPC 476; Reg of TM v W & G Du Cros Ltd (1913) 30 RPC 660; F H Faulding & Co Limited v Imperial Chemical Industries of Aust and NZ Ltd (1965) 112 CLR 537; Ocean Spray Cranberries Inc v Registrar of Trade Marks, supra.

In line with the unwavering principles that trade mark registrations should not interfere with honest traders' rights to use the language, I read Justice Kitto's statement as a directive that the test of whether a trade mark is adapted to distinguish is whether others will wish to use that mark in connection with their own goods and services, for the sake of its ordinary signification. In the case of descriptive words, it is whether other traders will wish to use the word for the sake of its ordinary descriptive meaning. This reading is confirmed by his Honour's follow up statement that the more apt a word is to describe the goods, the less inherently apt it is to distinguish them.

To determine the inherent qualities of the subject trade mark, I must consider whether other traders will wish to use the word emortgage in connection with their own goods and services, for the sake of its ordinary significance, and in the context of any use of the word that other traders may fairly want to make.

The subject mark consists of the combination of the letter e, on a disc, and the word mortgage. The word mortgage refers directly to the nature of the goods and services of the applicant, in all five classes applied for. The letter e is a widely used and known prefix in the context of 'electronic communications' (in particular the World-Wide Web). The prefix e is used to indicate goods or services provided electronically (eg. online or via the internet). There is, to my knowledge, a growing collection of descriptive words, prefixed by the letter e, which are used to describe goods and services available online. These words are emerging as part of our ever-changing vocabulary and include such words as: ecommerce; ebusiness; ebanking; emarketing; etrading; etailing (ie. eretailing) - to name just a few. The general public, in my view, is now aware of this construction and readily apply the letter 'e' to mean 'electronic', where such a meaning is intended.

In light of the above, I must conclude that the word emortgage, when viewed in the context of the application goods and services, refers directly to the character of those goods and services as being in relation to online mortgage documentation and preparation, and the advisory services related thereto. The word emortgage is not, therefore, prima facie capable of distinguishing the applicant's goods and services from similar goods and services of other traders.

However, the subject mark consists of something more than the word emortgage solus. The manner of representation of the letter e (on a disc in an elevated position) is sufficient, I believe, to increase the likelihood of the word being perceived as and used as a trade mark. The manner of representation, therefore, adds (to the mark) some degree of inherent adaptation to distinguish. On this basis, I agree with the position taken during examination. That is, the provisions of subsection 41(5) could be applied to enable acceptance of the application, provided the applicant can establish sufficient use or intended use of the trade mark, or any other relevant circumstances, as provided for by subsection 41(5).

In the present case, I have found that the trade mark is only to some extent inherently adapted to distinguish the application goods and services. On this basis, I would expect that the other relevant considerations (ie. the evidence and/or other circumstances) would need to play an increased role, in terms of satisfying the Registrar of the mark's capacity to distinguish.

At the time of Mr Kennett's declaration (7 April 2000), the "eMortgage" product had not yet reached the market place, despite the fact that the concept and product had been conceived in February 1998. There is no evidence of actual sales of goods, or the provision of services, bearing the trade mark. Furthermore, the exposure of the trade mark itself, in the market place, appears to have been limited - there being only a handful of prototype demonstrations to a small number of potential customers.

In light of my conclusion that the subject trade mark possesses little inherent adaptation to distinguish, I do not believe the evidence of use before me is sufficient to establish that the trade mark emortgage is capable of distinguishing the applicant's goods and services. The demonstrated use of the mark and the information in regards to the intended use of the mark is, I believe, insufficient to support acceptance of the application under the provisions of subsection 41(5). I, therefore, find that the grounds for rejection pursuant to section 41 of the Act, be maintained.

Section 44

In so far as is relevant to the present application, section 44 of the Act reads:

Identical etc. trade marks

44.(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) 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.

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.

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

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

Please note - the provisions of subsection 44(4), dealing with prior use, are not applicable to the present case and, as such, I have not included them here.

In terms of the goods and services of both parties, the specifications of the respective trade marks of both parties are alike. The goods and services of the subject application, barring those included in class 42, are included within the specifications of cited application 760709. The context of the comparison under section 44 involves 'notional use' on all of the goods and services within the respective specifications (Smith Hayden & Co Ltd's application)[7]. The Registrar cannot consider the actual manner of use of the marks. The fact that the goods and services provided under the cited trade mark may be related to 'human resources', as Mr Kennett has declared, has no bearing on the considerations relevant to section 44. On this basis, I consider the applicant's goods and services to be similar and/or closely related to those covered by the cited application. I will also note, here, that the cited application, having been filed on 28 April 1998, has an earlier priority date than the present application (of 17 July 1998).

[7] (1946) 63 RPC 97.

The matter therefore comes down to whether or not the competing trade marks are substantially identical with, or deceptively similar to, each other. These tests are conveniently laid out in such cases as Australian Woollen Mills v F S Walton & Co Ltd[8] and Shell Co (Aust) Ltd v Esso Standard Oil Ltd, supra. To put it simply, the test relevant to a finding of substantial identity requires a total impression of similarity to emerge from a side by side comparison between the two marks. Whereas, the test relevant to a finding of deceptive similarity does not require that the trade marks be compared side by side, the comparison is one of general recollection and idea.

[8] (1937) 58 CLR 641.

To compare the marks in question side by side, as per the tests outlined in the above-mentioned cases, it is clear the applicant's mark is not substantially the same as the epeople mark (the subject of the cited application).

In terms of deceptive similarity, the most recent comments in regard to this matter have been made by French J in Registrar of Trade Marks v Woolworths[9]. In that judgement, Justice French outlined how the provisions of section 33 of the Act govern the operation of section 44. Section 33 requires the Registrar to accept the application unless satisfied either that the application has not been made in accordance with the Act or that there are grounds for rejecting it. The question for the Registrar is not whether consumers might be confused (in terms of speculating about common origin or connection), but whether there is a reasonable likelihood that they will be confused. A determination of this kind includes consideration of the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought/sold or provided, and the character of the probable purchasers of the goods and services.

[9] 45 IPR 411.

The marks in question share a memorable visual element, being the letter 'e' on a disc. The features which constitute the 'e disc' (eg. size, prominence, script) are identical in both trade marks. This device forms a large part of each mark and is an essential feature of each mark. The curved line present in the cited mark does not alter the appearance of the 'e disc' to any significant extent, so as to detract from the immediate impression created by the disc. Thus, even when allowing for the imperfect recollection of one of the marks, I believe the 'e disc' features will be recalled, as opposed to the remaining, less significant, features of the each mark. The words mortgage and people, which form the remaining features of the particular marks, refer directly to the character of the goods and services provided for under each mark and do not form a memorable or striking constituent.

It may not be the case that one mark is confused for the other. However, I consider there is a strong likelihood that a substantial number of people will be confused into believing the two trade marks denote goods and services which share the same trade origin. This principle of contextual confusion is set out in John Fitton & Co. Ltd's Application[10], where E. Chisholm, the Assistant-Comptroller, commented:

[10] 66 RPC 110, at 113.

With reference to the nature of the confusion alleged, the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same source.

With regard to the applicant's claim of honest concurrent use, Mr Kennett declares that the initial conception and development of the "eMortgage" product and trade mark transpired as a result of a joint venture between the applicant and the owner of the cited trade mark. Mr Kennett goes on to state that both parties have continued, separately, to develop their respective products and trade marks, but with the full knowledge and consent of the other party. The goods and services to which the cited trade mark applies are described by Mr Kennett as 'a human resource package with associated workflow products for use on the internet.' There is no similarity or conflict, Mr Kennett says, between the products and the trade marks of the two companies.

In light of the circumstances surrounding the relationship between the applicant and the owner of the cited trade mark, I cannot dispute the honesty of adoption and fair manner of use of the applicant's trade mark. Nor can I ignore the particulars regarding the use and application of the trade marks in question by each proprietor. On the matter of deceptive similarity, Justice French in the Registrar of Trade Marks v Woolworths, supra, considered the main concern to be the identification and protection of commercial products and services, rather than that of the protection of consumers (although it did remain a concern). Thus, despite the limited use of the applicant's trade mark, I consider that the two trade marks could, realistically, co-exist in the market place. I am therefore willing to accept a letter of consent from the owner of the cited trade mark, as a means of overcoming the grounds for rejection under section 44. The provisions of paragraph 44(3)(b) of the Act would thus apply.

Classification of services

The matter of the description of services in class 42 remains unresolved. For the sake of completeness, I will comment briefly on the applicant's claim in this regard.

The applicant has claimed, in class 42, the description - Services for commercial interaction in a global computer network. The extent of services included in class 42 is extremely wide, so too are those encompassed by the above-mentioned description claimed by the applicant. Not only is the ambit of the applicant's claim very broad, it is somewhat ambiguous in respect of the type of services that may be covered by such a description. I consider therefore that the specification lacks clarity and that a more suitable statement is required.

Decision

I have found that the trade mark, the subject of this application, is not prima facie capable of distinguishing the applicant's goods and services. Further, I have found the applicant has failed to establish that the trade mark is capable of distinguishing its goods and services under the provisions of subsection 41(5) of the Act.

In terms of section 44, I have found the applicant's trade mark to be deceptively similar to the trade mark the subject of cited application 760709. However, I consider the grounds for rejection under section 44 could be overcome by means of a letter of consent from the owner of application 760709 and the provisions of paragraph 44(3)(b) applied.

As I have found that a ground for rejection under section 41 of the Act must be maintained, as a delegate of the Registrar, I hereby reject trade mark application 767656.

Michelle Edlington
Senior Examiner

28 June 2000