Andrew Thompson v Quantum Group Holdings Pty Ltd

[2018] ATMO 128

TRADE MARKS ACT 1995

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

Re:Opposition by Andrew Thompson to registration of trade mark application 1633614 (36) – QUANTUM GROUP (and Device) - in the name of Quantum Group Holdings Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 128

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – registration refused

Background

1.  This decision concerns an opposition brought by Andrew Thompson (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Quantum Group Holdings Pty Ltd (‘Applicant’): 

Application Number:

1633614

Filing Date:

10 July 2014

Services:

Class 36: Financial services and investment services, including financial management, funds management, asset management, money lending services, mortgage services, mortgage broking services, lease purchase financing and hire purchase financing, equity raising and funds raising services, property investment services, financing of property development, and investment portfolio management services; insurance services, including business insurance, property insurance, life insurance, disability insurance, superannuation services and insurance brokerage services; real estate services, including buying, selling and leasing real estate; real estate services relating to property development; real estate management including the management of resorts, hotels, motels, retail premises, shopping centres, entertainment premises, industrial premises, office premises, residential premises and/or development sites; advisory, consultancy and information services in relation to the aforementioned services

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements

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

2.  Following the advertisement on 28 July 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 15 September 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 12 October 2016, which was rectified by this office to delete improper material on 24 November 2016. The SGP (as rectified) raised grounds of opposition under ss 43, 44, 58A, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 19 December 2016.

3.  Neither party filed any evidence or submissions in respect of the opposition.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs, which in this case consists of the SGP.

The Parties

5.  As neither party has provided any evidence, I cannot provide any information about the parties other than what is set out on the Register, namely that the Applicant is a company based in the Australia that has applied for the Trade Mark. 

6.  The Opponent is owner of the trade mark set out below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Goods and Services
981823	QUANTUM	10 December 2003	Class 35: Taxation services, including the provision of taxation related advice, accounting advice, accounting services, auditing services, bookkeeping services, accounting and taxation consultancy, business management consultancy, tax analysis, accounting analysis, tax information, accounting information, business organisation, business analysis and assessment services, business appraisals; all these services being provided in relation taxation and accounting matters

Grounds of Opposition, Onus and Standard of Proof

7. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 44, 58A, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

8.  The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 10 July 2014 (‘relevant date’), being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

9. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 44 - Identical 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)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.

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.

(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.

(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.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

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.

10. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

11. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act. As the Applicant has not provided any evidence or submissions in this opposition there is nothing before me that could demonstrate that the requirements of ss 44(3) and 44(4) are satisfied.

12. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for, broadly, financial services advice and specifically taxation services and advice and broader business and accounting advice. Section 14(2) of the Act considers services to be similar if they are either the same or of the same description as those of the other services. Certain factors are to be considered in determining the similarity of services, including the nature, purpose or characteristics of the services and whether such services are usually provided by one and the same business or person.[4]  Thee Services cover various financial services, including financial management and investment.  On a notional consideration they are of a similar nature to the Opponent’s taxation services, and share similar characteristics such as to be provided by the same person or business.  

[4] (See the factors set out Jellinek's Appn (1946) 63 RPC 59 and expanded upon in Beck, Koller & Company's Application (1947) 64 RPC 76).

13.     In the absence of any evidence put before me which demonstrates a material difference in the characteristics of these services[5], I consider the Applicant’s services, in their entirety, to be similar to the Opponent’s services for the purposes of ss 14(2) of the Act. This requirement is, therefore, established.

[5] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 as discussed in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 [15]

14.     The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first and third requirements are satisfied. 

Substantially identical or deceptively similar

15.       I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

In considering whether marks are substantially 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.[6]

[6] (1963) 109 CLR 407, [12].

1. The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[7] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[8] The court stated in Pham Global:

   There is no doubt in our view that the Full Court in Accor in using the phrase ‘dominant cognitive cues’ was making analogical reference to the ‘essential features’ of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical. …

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[9]

   [7] [2017] FCAFC 56.

   [8] [2017] FCAFC 83.

   [9] [2017] FCAFC 56, [51]-[52].

   17.     The trade marks which were compared in Pham Global are shown below:

The court found the elements ‘insight’ and the devices in each trade mark to be the essential elements. In finding the two trade marks substantially identical the court discounted the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.[10]

[10] [2017] FCAFC 83, [56].

18.     The Trade Mark and the Opponent’s Trade Mark are set out below:

QUANTUM

19.     In the present case the essential (and in the case of the Opponent’s Trade Mark, only) element is the word ‘quantum’.  The word ‘group’ and the device element in the Trade Mark are somewhat discounted as neither of which is particularly distinctive in respect of the services.  I find that the Trade Mark and the Opponent’s Trade Mark to be substantively identical.  In the event that my conclusion on substantive identity is incorrect, in the interest of completeness I note that I also find the respective marks to be deceptively similar[11]. The second requirement having been satisfied I find that the requirements of s 44(2) have been satisfied.

[11] See the principles set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, [12].

20. I find that the Opponent has established its ground of opposition under s 44 of the Act.

Decision

21. I have found that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

15 August 2018