American Airlines, Inc. v Platinum Freight Management Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by American Airlines, Inc. to registration of trade mark application 1655982 (36,39) – PLATINUM ADVANTAGE – in the name of Platinum Freight Management Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: S.T. Chrysanthou of Counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys. Applicant: no attendance; written submissions only.
Decision:	2017 ATMO 51 Trade Marks Act 1995: s52 proceedings: ss42(b), 44 and 60 pressed – s44 established; trade mark refused.

Background

In these proceedings under the Trade Marks Act 1995 (‘the Act’) Platinum Freight Management Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

Application No: 1655982
Priority Date: 2 November 2014

Services:Class 36: Customs brokerage.
Class 39: Transport and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing . (‘the Services’)

Trade Mark: PLATINUM ADVANTAGE (‘the Trade Mark’)

Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

The Trade Mark was examined as mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.
American Airlines, Inc. (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘the SGP’).
The Applicant then filed a Notice of Intention to Defend.
The parties subsequently filed Evidence in Support, Evidence in Answer, and Evidence in Reply as detailed below after which a hearing was convened in Canberra on 7 March 2017.
At the hearing the Opponent was represented by S.T. Chrysanthou of Counsel, instructed by Brett Lewis of Davies Collison Cave, Patent & Trade Mark Attorneys (also in attendance). Ms Chrysanthou made oral submissions to supplement the written submissions already made in accordance with my pre-hearing directions letter.
The Applicant was not represented at the hearing and relied on the written submissions of Peter McRae, Director of the Applicant, made in accordance with my directions prior to the hearing.
Also in attendance at the hearing were Don Bradfield of the Opponent and Andrew Avsec of Brinks, Gilson & Lione LLP, the Opponent’s US representatives.

SGP, Onus and Outline of the Opposition

The Opponent bears the onus of establishing a ground of opposition. The standard of proof is the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663.
The grounds of opposition pressed by the Opponent in its written submissions and at the hearing are listed in the SGP and correspond with sections 42(b), 44 and 60 of the Act.
The date at which the grounds of opposition must be established is the Priority Date of the application.[2]
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
In broad terms, the grounds of opposition pressed are conditioned by claims of misrepresentation or confusion or deception of one kind or another, premised on the Opponent’s asserted trade mark rights.
In that regard, the Opponent is the owner of the registered trade marks shown below (‘the Opponent’s Marks’):

AADVANTAGE

AADVANTAGE PLATINUM

AADVANTAGE EXECUTIVE PLATINUM

The Opponent states that is the world’s largest airline and has operated under the name “American Airlines” since 1934.
It states that in 1981 it introduced a travel rewards scheme under the name AADVANTAGE (‘the Rewards Scheme’) by virtue of which members receive various benefits.
In 1992 those benefits accrued in line with three newly created classes of membership: AADVANTAGE GOLD, AADVANTAGE PLATINUM, and AADVANTAGE EXECUTIVE PLATINUM.
Further, the Opponent states that it has offered cargo services as well as passenger services.
The Opponent maintains that the services protected by the Opponent’s Marks are similar to the Services and that the Trade Mark is deceptively similar to the Opponent’s Marks.
Moreover, it submits that the Opponent’s Marks have been used in Australia and because of the reputation they have so acquired, use of the Trade Mark would be likely to cause confusion or deception amongst the Australian public.
The Applicant broadly denies those allegations. It states that it is a licensed customs brokerage and freight forwarding company and the owner of a number of registered trade marks all including the word “platinum” as their formative element (‘the PLATINUM – formative Marks’).
The Applicant asserts that it has used the Trade Mark since 2004 and that there has been no confusion between the Services offered under the Trade Mark and those offered by reference to the Opponent’s Marks.
The Applicant posits that no confusion is likely since the Applicant offers non-passenger related services whilst the Opponent’s Marks are used in relation to the Rewards Scheme directed, by its nature and on the evidence, towards passengers.
Further, the Applicant argues that this distinction informs the extent of the Opponent’s claim to a reputation in Australia in the Opponent’s Marks.

The Evidence

The parties filed and served evidence in accordance with the Trade Mark Regulations 1995.

the Opponent’s evidence in support being a Statutory Declaration of Suzanne Rubin (Vice-President – Consumer Insight and Loyalty of AA) made 7 December 2015 (“Rubin”) together with Exhibits SR-1 to SR-49; and
the Applicant’s evidence in answer being a Statutory Declaration of Peter McRae made on 22 March 2016 (“McRae”) together with Exhibits PFM-1 to PFM-8; and
the Opponent’s evidence in reply being Statutory Declarations of Bridget Blaise-Shamai (Managing Director of Customer Loyalty and Insight AA) made on 6 June 2016 (“Shamai”) together with Exhibits BBS-1 to BBS-5; and of Andros Chrysiliou (former Lawyer for AA) made 23 May 2016 (“Chrysiliou”) together with Exhibits AC-1 to AC-10.

A further Statutory Declaration of Peter McRae was filed out of time on 30 June 2016.[3]
[3] On 4 August 2016 IP Australia wrote to the Applicant, its letter stating in part: “I refer to your declaration of 30 June 2016. You have requested consideration of the Declaration of Peter McRae dated 30 June 2016 (filed on Objective Connect on 30 June 2016) pursuant to Regulation 21.19. Regulation 21.19 only applies if the officer who is to hear and decide the merits of the opposition considers the information to be relevant and intends to take it into account as allowed by Regulation 21.15(4). The onus is on you to make a compelling case for the evidence to be considered.”
A third Statutory Declaration of Peter McRae, made on 27 February 2017, together with Exhibits PFMPM-118 to PFMPM-122, was filed out of time just prior to the hearing.
The Opponent has objected to the admissibility of these out of time declarations, a matter to which I will return later so far as is required.

Reasoning

Section 44

Putting to one side for now the provisions of subsections 44(3) or 44(4), section 44 relevantly 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)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
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.
Therefore, to establish a ground of opposition under section 44(2) the Opponent must show all of the following:
·     a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the Applicant, and in relation to which the Trade Mark is either substantially identical or deceptively similar;
·     the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and
·     the priority date(s) of the trade mark(s) of the other person is (are) earlier than that of the Trade Mark.
The registrations detailed below (‘the Registrations’) all belong to the Opponent and are relied upon for the purposes of section 44. They are for one or another of the Opponent’s Marks and all have earlier priority dates than that of the Trade Mark.

Date	No.	Mark	Classes(es)
20.2.96	702934	AADVANTAGE PLATINUM	39: Transportation of passengers by air, including providing a program of bonus flights for frequent travellers
1.12.97	753045	AADVANTAGE EXECUTIVE PLATINUM	39: Transportation services, namely providing a program of bonus flights for frequent travellers
7.3.00	826664	35: Promoting the goods and services of others by means of an incentive awards program, whereby purchase points are awarded for purchases made from vendor subscribers, which can then be redeemed for merchandise and travel 39: Transportation of passengers and cargo; travel information and reservation services
12.6.12	1496415	AADVANTAGE PLATINUM	35: Promoting the goods and services of others by means of a discount rewards program and an incentive awards program whereby purchase points are awarded for purchases made by vendor subscribers and travel conducted by member subscribers which can then be redeemed for merchandise and travel; online retail services featuring gift cards and private club membership 39: Air transport of passengers, cargo, and freight; providing travel agency services, including, providing travel reservation services for others, air transportation reservation services for others, vehicle reservation services for others, cruise reservation services for others, and vacation packages reservation services for others by means of an incentive rewards program
12.6.12	1496417	35: Promoting the goods and services of others by means of a discount rewards program and an incentive awards program whereby purchase points are awarded for purchases made by vendor subscribers and travel conducted by member subscribers which can then be redeemed for merchandise and travel; online retail services featuring gift cards and private club membership 39: Air transport of passengers, cargo, and freight; providing travel agency services, including, providing travel reservation services for others, air transportation reservation services for others, vehicle reservation services for others, cruise reservation services for others, and vacation packages reservation services for others by means of an incentive rewards program
12.6.12	1496419	35: Promoting the goods and services of others by means of a discount rewards program and an incentive awards program whereby purchase points are awarded for purchases made by vendor subscribers and travel conducted by member subscribers which can then be redeemed for merchandise and travel; online retail services featuring gift cards and private club membership 39: Air transport of passengers, cargo, and freight; providing travel agency services, including, providing travel reservation services for others, air transportation reservation services for others, vehicle reservation services for others, cruise reservation services for others, and vacation packages reservation services for others by means of an incentive rewards program

Whilst the Opponent states that it does not press an argument that any of the Opponent’s Marks are substantially identical to the Trade Mark, it says that the Trade Mark “is deceptively similar, and in some cases nearly identical, to each of [the Opponent’s Marks].”
I will return to consider whether the Trade Mark is deceptively similar to any one or more of the Opponent’s Marks once I have determined the antecedent matter of whether the applied-for Services are “similar services” to the services of the Registrations. In that regard, section 14 provides:
Definition of similar goods and similar services
(1)…
(2)For the purposes of this Act, 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.
The Opponent’s written submissions are that:
[The Opponent] has a monopoly on the right to use its AAdvantage Platinum marks for a broad range of transport services including cargo and freight services. For example, … Registration No. 1496415 for the word mark AADVANTAGE PLATINUM covers air transport of passengers, cargo, and freight; providing travel agency services, including, providing travel reservation services for others, air transportation reservation services for others, vehicle reservation services for others, cruise reservation services for others, and vacation packages reservation services for others by means of an incentive rewards program in Class 39.
The Applicant seeks registration of the Opposed Mark in relation to transportation and courier services, freighting, shipping, forwarding of cargo and other transport and customs services.
Plainly, the services are the same or “similar” therefore the services for which registration is sought by the Opposed Mark are the same, or at least of the same description, as the services for which [the Opponent’s] trade marks are registered.
I consider first whether the Applicant’s class 36 services (customs brokerage), not mentioned by the Opponent, are the same services, or are services of the same description as, any of the services protected by the Registrations.
I do not find that customer brokerage is the same service as any of the services protected by the Registrations.
I do not find that customer brokerage is a service of the same description as any of the class 35 services protected by the Registrations.
The next question is whether customs brokerage services are of the same description as any of the class 39 services of the Registrations. I find they are. At their broadest, those class 39 services cover transportation services.[4] Customs brokerage is closely connected with the transportation of cargo and freight as evidenced most plainly by the Applicant’s description of its own business as a licensed customs brokerage and freight forwarding company. I note as well that the Applicant has drafted its class 39 specification of services to include: “shipping, brokerage and forwarding of cargo”.
[4] I take “transportation services” to include “travel information and reservation services”, and “travel agency services”.
Accordingly, the class 36 services of the Applicant collide with the services of registrations 826664, 1496415, 1496417 and 1496419.
The following question is whether the Applicant’s class 39 services, described as “transport and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing”, are the same, or of the same description, as any of the services of the Registrations.
Throughout its written submissions, the Applicant repeats a distinction it seeks to draw between passenger and non-passenger related services. For the most part, that argument is unsuited to the section 44 enquiry which requires me to compare the services of the (Opponent’s) Registrations, as I find them, with the notional use of the Trade Mark in relation to the full scope of the applied-for Services.
Therefore, to the extent that the Applicant’s class 39 claim is to “transport services”, writ large and without any request for confinement, I find that those services are the same as the class 39 services of all of the Registrations with the possible exception of 753045 which lacks clarity in that respect.
Where the Applicant’s services do not directly overlap, they are services such as “customs clearance services”, “storage of goods” and “warehousing”, all having an intimate commercial connection with transportation services.
Those matters answered, the remaining question under section 44 is whether the compared marks are “deceptively similar”, and from the foregoing analysis I can as a practical matter treat the comparison as being between the Trade Mark and registration 1496415 for the word mark, AADVANTAGE PLATINUM.
The expression “deceptively similar” is defined by section 10 of the Act. In The Coca-Cola Company v All-Fect Distributors Ltd,[5] section 10 was considered by the Full Federal Court and in a joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:
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 mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[5] (1999) 96 FCR 107; 47 IPR 481.
In the case of Registrar of Trade Marks v Woolworths[6], the High Court held that the assessment of the likelihood of deception and confusion rested on a number of factors including what was described as a real tangible danger of confusion, rather than a mere possibility of such. The Court stated that this was “another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.”
[6] (1999) 45 IPR 411.
When it comes to comparison of the trade marks, the High Court stated in Australian Woollen Mills Ltd v FS Walton and Co Ltd [7] that:
...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 … for which the protection … is sought. The impression or recollection which is carried away or retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard…
[7] (1937) 58 CLR 641.

Accordingly, I am to determine what is memorable about the compared trade marks and so decide, having regard to the similarity of impression created by the marks and to the other factors just mentioned, whether there is a real and tangible likelihood of confusion or deception. I must be satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses the Trade Mark normally and fairly in respect of the Services.
The Opponent’s submissions in this regard were that the impressionistic nature of the analysis required consideration of the following:
… the House of Lords in the “Rysta” case discussed the doctrine of imperfect recollection and the importance of first impression (60 RPC 87 at page 108):
“The answer to the question of whether the sound of one word resembles too nearly the sound of another...must nearly always depend on the first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.
The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.”
…
In De Cordova v. Vicks Chemical Co. (1951) RPC 271, in finding that the trade marks VAPORUB and KARSOTE VAPOUR RUB were deceptively similar, Lord Radcliffe stated that:
“In most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.”
…
The fact that the words PLATINUM and ADVANTAGE appear in the Opposed Mark in the reverse order as compared with several of AA’s trade marks (PLATINUM ADVANTAGE vs ADVANTAGE PLATINUM) is not sufficient to distinguish the Opposed Mark from AA’s trade marks. Rather, one must look to the overall impression conveyed to the consumer. As was held by the Delegate in Chromagen Solar Australia Pty Ltd v First Solar, Inc [2015] ATMO 45 at [24] – [26]:
“The first point to note on the visual comparison is that the trade marks both have identical words FIRST and SOLAR contained in them even though the words are used in the reverse order: FIRST SOLAR vs. SOLAR FIRST. The applicant has argued that the ‘idea’ of the respective trade marks is different. However, I am not persuaded by this argument. This is not a case where the reversal of the order of the words leads to two completely different ideas. For example: CRAZY ANIMAL vs. ANIMAL CRAZY both contain the same words but when the order of them is reversed the idea conveyed and the impression left with the consumer is very different.”
I am in broad agreement with the Opponent that these principles are of direct relevance to the comparison before me. The additional letter “A” added in one case to the word “ADVANTAGE” has very little distinguishing value in terms of the overall assessment of the two marks. To the extent that the “AA” thus created may allude to the Opponent (American Airlines), such recognition is dependent on the Opponent’s reputation in that other sign, a factor generally considered outside the scope of the section 44 analysis.
In this case the word order makes no ostensible difference to the “idea” of the trade mark. The compared trade marks are not akin to the expressions “crazy animal” and “animal crazy” where the word reversal leads to a difference in meaning. Nor are they akin to the combination –one way and then the other – of two nouns such as “dog” and “box” where one combination has a meaning and the other has none.
The Applicant submits that “[t]he word ‘PLATINUM’ is the only element in common to the trade marks and is, at best, strongly allusive to the character or quality of the services because it is used by many different traders as an indication of the quality of the services on offer.”
To understand that submission, the Applicant’s position is that “ADVANTAGE” and “AADVANTAGE” have no commonality, either because of the additional letter “A” (a matter I have addressed and discounted), or because of that addition and the addition of an eagle device (a matter of irrelevance for the purposes of section 44, as it has unfolded).
However, ignoring those issues, the submission is in any event contradicted by the Applicant’s statement elsewhere that “[t]here is no other customs brokerage or freight forwarder in Australia whose name begins with ‘PLATINUM’” and, further, by the evidence in Chrysiliou that there are no other marks on the Register for this class of service that contain the words “platinum” and “advantage”.[8]
[8] Chrysiliou [4], AC-1 to AC-10.
My own assessment, based on common observation, is that both words “platinum” and “advantage” are used by service providers in equal measure to laud in some inchoate way the virtues of one trader’s business over another. I note in this regard that the Opponent’s registration 1496415 AADVANTAGE PLATINUM relied upon section 41(5) for its acceptance. Neither word describes a specific attribute of services and the equilibrium I mention adds, in one way, to the similarity of the compared trade marks.
On balance, I agree with the Opponent’s characterisation that the compared trade marks are nearly identical. Were I found wrong in that consensus, I am convinced of the likelihood that the Trade Mark might be imperfectly recalled in essentially the same manner as the Opponent’s AADVANTAGE PLATIMUM.
I have discussed the breadth of the Services and the notional use to which the Trade Mark might be put and, thus, I cannot place any weight on the Applicant’s submission that confusion or deception is, as a practical matter, unlikely merely by reason of the Applicant’s assertion that its business is not passenger directed.
In the result, I find that there is a significant risk of confusion or deception. I find that the Trade Mark is deceptively similar to at least one of the Opponent’s Marks.
However, the section 44 analysis is not at an end since the Applicant states in its written submissions that:
“in applying Section 44 (3)(a)(b) of the Trade Marks Act 1995, there has been honest concurrent usage by “Platinum” since 2004, refer to Exhibits PFMPM 118 & 120-122” and that “in applying Section 44(4)(a)(i)(ii) of the Trade Marks Act 1995, ‘Platinum’ has used the mark since 2004, refer to Exhibits PFMPM 118 & 120-122.”
In anticipation, the Opponent had written in its outline submissions that:
Sections 44(3) and 44(4)
As s.44(1)[9] states, the application of the subsection is subject to ss.44(3) and 44(4) which relevantly provide:
[9] I assume that the Opponent meant to refer to section 44(2).
(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.
(4)      If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)      beginning before the priority date for the registration of the other trade mark in respect of:
(i)      the similar goods or closely related services; or
(ii)      the similar services or closely related goods; and
(b)      ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Section 44(3) confers a discretion on the Registrar to accept a mark if the Registrar is satisfied that there has been honest concurrent use and/or because of the circumstances it is just to do so.
It is clear from the words of s.44(3) that the Registrar's discretion is only enlivened if the Registrar is “satisfied” that either of circumstances described in s 44(3)(a) or (b) exist. Moreover, the Registrar is not compelled to accept the application even if either of circumstances described in s.44(3)(a) or (b) is found to exist. The Registrar does not have a discretion to accept an application if the circumstances described in s.44(3)(a) or (b) do not exist.
Section 44(4) does not confer a discretion. The subsection prevents the Registrar from rejecting the Opposed Mark under s.44 if it is satisfied of prior continuous use from before the priority date of the [Opponent’s Registrations] (the earliest being 9 January 1997 [sic. It is 20 February 1996]) to the priority date of the Opposed Mark (namely 2 November 2014).
Section 44(4) requires the trade mark to have been “continuously used” during the relevant period. It has been said that “[t]he word “continuous” may not be capable of strict definition but there must be more than an occasional user”: Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183 at [96]. The use required must be more than that which might suffice to avoid showing abandonment. In Smith Bartlett & Co v British Pure Oil Grease & Carbide Co Ltd (1934) 51 RPG 157 use of the trade mark on three occasions in a six-year period was not “continuous”: as cited by Tamberlin J in Canon Kabushiki Kaisha v Brook (trading as Cannon Watch Co) (1996) 36 IPR 88 at 98. In Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, Jacobson J considered that the relevant authorities “establish, beyond any argument, that a break of 17 years is inconsistent with the concept of continuous use”.
The Applicant bears the onus under both s.44(3) and s.44(4): Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 116 IPR 207 at [238] (Full Court). The Applicant has failed to adduce any evidence to satisfy either s.44(3) or s.44(4) in relation to the Opposed Mark. (emphasis in original)
Taking that last point first, the Applicant does bear the onus and in that regard those matters of possible relevance that can be distilled from the Applicant’s evidence follow:
· the Trade Mark was accepted by the examiner subject to the provisions of paragraph 44(3)(b) of the Act;
·     the Applicant is a customs brokerage and freight forwarder and has offices in five Australian States;[10]
·      the Applicant was named as a finalist at the Lloyds List Australia for Customs Broker of the year;[11]
·     the Applicant asserts that it used the Trade Mark since 2004; and
·     the Applicant is the owner of registrations for the PLATINUM-formative Marks[12] listed hereunder:
[10] McRae [9].
[11] McRae [7], PFM-8.
[12] McRae PFM-1 to PFM-6.

Date	No.	Mark	Classes
17.01.01	863217	Platinum Freight	36: Customs brokerage 39: Freight forwarding
12.05.11	1423457	Platinum	36: Customs brokerage 39: Freight forwarding
12.05.11	1423483	Platinum Customs	36: Customs brokerage 39: Freight forwarding
20.06.11	1431610	36: Customs brokerage 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting, shipping, brokerage and forwarding of cargo; customs clearance services; warehousing
25.11.12	1504380	Platinum Cargo	36: Customs brokerage 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services; warehousing; transportation and courier services, including the transportation by land, sea and air, of documents; none of the foregoing being in relation to transporting passengers
14.02.14	1606084	Platinum Logistics	36: Customs brokerage 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting, shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing
02.11.14	1655981	Platinum Connect	36: Customs brokerage 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing
01.02.15	1671963	Platinum Transport	36: Customs brokerage 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing

These opposition proceedings do not entail re-examination of the application for the Trade Mark. Nonetheless, it is relevant to consider why the examiner accepted the Trade Mark subject to the provisions of paragraph 44(3)(b) of the Act. In other words, if the application faced a ground of refusal under section 44(1) or (2), what were those “other circumstances” which caused the examiner to consider it proper to accept the application?
A review of the examiner’s worksheets shows that so-called “s.44 letters” were sent to owners of two registrations of trade marks having earlier priority dates than that of the Trade Mark. One of those prior rights owners filed an opposition but the opposition was later withdrawn.
Neither of those prior rights holders was the Opponent. Neither of the earlier trade marks was identical to any of the Opponent’s Marks. It follows that acceptance of the Trade Mark subject to the provisions of paragraph 44(3)(b) is irrelevant to the issues before me.
The Applicant’s submissions set out at [58] are not especially clear but they would seem to invoke both section 44(3)(a) and section 44(4) of the Act, premised on a claim of honest concurrent use, or continuous use, of the word “platinum” since 2004.
If these arguments warranted closer examination, then at least two matters would have deserved attention. First, the Opponent’s claim that section 44(4) might only be applied if the Registrar “is satisfied of prior continuous use from before the priority date of the [Opponent’s Registrations] (the earliest being 9 January 1997 [sic. 20 February 1996]) to the priority date of the Opposed Mark (namely 2 November 2014)” would need to be unpacked. The 1996 registration, 702934, along with the two other registrations having priority dates earlier than 2004, being 753045 and 826664, either do not conflict with the class 36 “customs brokerage” of the Trade Mark and/or are for a mark with further additions which I have not considered in terms of impact on the question of deceptive similarity.
Second, the material on which the Applicant relies in this regard, Exhibits PFMPM 118 & 120-122, are exhibits to its out of time declaration made on 27 February 2017.
At an earlier stage the Office had put the Applicant on notice of the consequences of out of time filings and had indicated in writing to the Applicant that the admissibility of such evidence would lie with the Hearing Officer.
However, neither of these matters need be pursued since the nature on the Applicant’s submissions misses the point of sections 44(3) and (4) which each require proof of use of the Trade Mark and not of some element thereof, such as the word “platinum”, either solus or (it might be argued) in combination with other words such as it is in the PLATIMUM-formative Marks.
Sections 44(3) and (4) have not been established by the Applicant with the consequence that the Opponent has established its ground of opposition under section 44 of the Act.
With that finding it becomes unnecessary for me to consider the remaining grounds of opposition.

Decision

Section 55(1) of the Act provides:

55Decision
(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.

My decision is to refuse to register application 1655982.

Costs

In the event that it was the successful party, the Opponent sought an award of costs in its favour. As the successful party, it is so entitled and I make that award, to be calculated in accordance with Schedule 8 of the Trade Mark Regulations 1995.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
31 May 2017

[2017] ATMO 51

31 May 2017

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Statutory Construction

Breach

Remedies