American Express Marketing & Development Corp
[2017] ATMO 23
•17 March 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1749152(36) - AMERICAN EXPRESS VPAYMENT - in the name of American Express Marketing & Development Corp.
| Delegate: | Jock McDonagh |
| Representation: | Applicant: Written submissions by Minter Ellison |
| Decision: | 2017 ATMO 23 Section 38 of the Trade Marks Act 1995 – revocation of acceptance – acceptance of Trade Mark not revoked - opposition proceedings to continue. |
Background
In these proceedings under section 38 of the Trade Marks Act 1995 (‘the Act’) American Express Marketing & Development Corp (‘the Applicant’) has applied to register the trade mark which appears below:
Application No: 1749152
Priority Date: 29 January 2016
Services:Class 36: Financial affairs; monetary affairs; banking services; payment processing services; electronic payment services including via a global computer network; financial payment services; payment card services; credit card services; debit card services; charge card services; pre-paid card services; smart card services; stored value card services; electronic funds or currency transfer services; collection of payments including for others; payment of bills and accounts for others; administration of financial or monetary affairs; payment administration services; payment transaction card services; processing of payments including for banks; financial or monetary transaction services; conducting of financial or monetary transactions; transaction authentication and verification services; transaction authorization and settlement services; income and expense management services; bill payment services; merchant services; information, advisory and consultancy services in relation to the aforementioned services; including provision of all the aforementioned services online
(‘The Services’)
Trade Mark: AMERICAN EXPRESS VPAYMENT
(‘The Trade Mark’)
The Trade Mark was examined and accepted, on 13 April 2016, for possible registration. On 23 June 2016, advertisement of the acceptance was published in the Australian Official Journal of Trade Marks.
On 18 July 2016, a delegate of the Registrar wrote to the Applicant’s legal representatives, Minter Ellison, proposing revocation of the acceptance of the Trade Mark in the following terms:
Your trade mark AMERICAN EXPRESS VPAYMENT, wholly contains earlier trade mark 1509598 VPAY. In the examination of your trade mark the examiner did not consider this mark fully and as a result did not raise the trade mark as a barrier to the acceptance of your trade mark.
It is considered that the words VPAY and VPAYMENT evoke a confusingly similar idea. The reference to AMERICAN EXPRESS in the subject trade mark provides an additional element to the trade mark, however this does not sufficiently differentiate the trade marks, and as a result of the similarity in these trade marks, and the similarity in the specifications, there is a strong likelihood that consumers would confuse these trade marks in the marketplace.
Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).
On 18 August 2016, the Applicant requested to be heard on the material comprising the written record. Accordingly, the matter has now been passed to me as a delegate of the Registrar of Trade Marks for my decision. My decision is based on the application, the examination file, and the submissions of Minter Ellison on behalf of the Applicant.
I note that on 23 August 2016, a Notice of Intention to Oppose was filed by Emerchants Limited, the owner of trade mark registration 1509598 VPAY (‘the Opponent’). This was followed by a Statement of Grounds and Particulars (‘SGP’) filed by the opponent detailing grounds of opposition under sections 42(b) (contrary to law), 44 (Identical etc. trade marks), and 60 (deception or confusion arising from reputation in another trade mark).
The Applicant subsequently filed a Notice of Intention to Defend. Evidence in Support was also filed. The evidence phase is still running in the opposition proceedings.
Discussion
Section 38 of the Act provides:
38Revocation of acceptance
(1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b)it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2)If the Registrar revokes the acceptance:
(a)the application is taken to have never been accepted; and
(b)the Registrar must examine, and report on, the application as necessary under section 31; and
(c)sections 33 and 34 again apply in relation to the application.
As a preliminary matter, I note that the application of section 38 is discretionary (that is: “…the Registrar may revoke the acceptance…”).
The provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance[1]. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.
[1] Globalscope Pty Ltd [2016] ATMO 14
Guidance provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”)[2]:
[2] At Part 38.2.3 & 4
The information must support a conclusion that it is reasonable to revoke acceptance taking into account all the relevant circumstances. Some examples where it may be reasonable to consider revocation include:
· the appropriate CPI, surname, INN, or goods or services search was not carried out thoroughly or was totally omitted in the course of examination;
· the appropriate research was not carried out, or where an inappropriate search strategy was used;
· limitations or conditions that affected the mark’s registrability were not requested or applied when clearly they were warranted;
· an application is accepted because a citation was missed due to an indexing error;
· methodical and thorough research did not provide the relevant information (e.g. when it was not to be found in the available Trade Marks Office resources);
· convention documents are received after a search for conflicting marks is completed which results in the raising of a “late” citation
· an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia
It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:
· manifestly wrong,
· clearly not just a difference of opinion, and
· obviously disregards established authorities
Further guidance may be found in the decision of Hearing Officer Williams in Re Jack Grieve[3]:
It is utterly inappropriate for a delegate, in assessing the merits of revocation of an acceptance, to take on the role of a protagonist. Or, to put it another way, the case for revocation ought to stand on its own merits. If those merits need an advocate to lead evidence or counter-evidence, and to articulate the case for revocation, it is hard to see how this would be appropriate.
[3] [2010] ATMO 12 at [25].
With the above principles in mind, I turn to the issue under section 44 of the Act.
Section 44 of the Act 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 goods (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 services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
To found the ground under section 44, there must be at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:
- has a priority date earlier than that of the Trade Mark; and
- is registered or made in respect of the same or similar services or closely related goods; and
- is a trade mark substantially identical or deceptively similar to the Trade Mark.
The Notice of Intention to revoke referred to the following registration that had not been cited against the Trade Mark during examination:
| Trade Mark No. | Trade Mark | Goods | Priority Date |
| 1509598 | VPAY | Class 9: Multifunction cards (encoded) for financial services; multifunction cards (magnetic) for financial services Class 36: Card operated financial services; financial services; computerised financial services | 24.08.2012 |
I am satisfied that the cited registration is registered in respect of the same or similar goods/services or closely related services/goods.
In considering the issue of substantial identity, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4] set out the relevant test for comparison:
[the trade marks] 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…
[4] (1961) 109 CLR 407 at 414-415.
On a side by side comparison, the differences between the trade marks are such that they are not substantially identical. These differences can be summarized as follows:
The cited mark is only one word;
The Trade Mark commences with the words AMERICAN EXPRESS, which are the dominant feature;
There are obvious differences between VPAY and VPAYMENT; and
The marked difference in pronunciation of the word elements of both trade marks.
I find that the Trade Mark is not substantially identical with the cited mark.
Deceptive similarity is defined in section 10 of the Act as follows:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[5] at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
[5] (1963) 109 CLR 407
I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods and services. This contextual comparison was stressed in Re Application by the Pianotist Co Ltd[6], where Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
[6] (1906) 1A IPR 379, at 380
The elements relevant to the assessment of whether the trade marks are deceptively similar were stated by French J in Registrar of Trade Marks v Woolworths[7] at paragraph 50:
[7] [1999] FCA 1020, [50]; (1999) 45 IPR 411
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is 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.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
Taking into account the tests outlined above and the submissions of the Applicant, I consider that the dominant feature of AMERICAN EXPRESS within the other trade mark should prevent any likelihood of deception or confusion.
As one of the circumstances relevant to the consideration under section 38(1)(b) of the Act, I also take into account the opposition that is in place, which pleads the section 44 ground along with sections 42 and 60.
Decision
After taking into account all the circumstances of the case, I am not satisfied it is reasonable to exercise the discretion of the Registrar of Trade Marks and revoke acceptance of the Trade Mark. The opposition proceedings may therefore continue.
Jock McDonagh
Hearings Officer
Oppositions and Hearings
17 March 2017
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