Angie Cleone v Society of the Golden Keys Australia Les Clefs D'Or Australia Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Angie Cleone to registration of trade mark application number 1969462 (classes 16, 35, 39, 41, 43 and 45) – Les Clefs d’Or and trade mark application number 1969463 (classes 16, 35, 39, 41, 43 and 45) – Clefs d’Or and device - both in the name of Society of the Golden Keys Australia Les Clefs d’Or Australian Inc

Delegate:

Katrina Brown

Representation:

Opponent: One IP International Pty Ltd

Applicant: Jessie Buchan of DLA Piper Australia

Decision:

2022 ATMO 170

Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds pursued under ss 42(b), 44 & 60 – no grounds established – trade marks to proceed to registration.

Background

This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Angie Cleone (‘Opponent’) to the registration of the following trade marks (‘Trade Marks’):

Trade mark number

1969462

1969463

Trade mark

Les Clefs d’Or

(‘Word Mark’)

(‘Device Mark’)

Applicant

Society of the Golden Keys Australia Les Clefs D’Or Australia Inc (‘Applicant’)

Filing date

19 November 2018

Specification

Class 16 - Travel guides in the form of printed matter; travel documents folder; travel guide books; printed matter; paper, cardboard and goods made from these materials, not included in other classes; stationery; instructional and teaching material (except apparatus); books, manuals and other instructional and teaching materials relating to entertainment, travel, tourism, visitor information and activities; maps; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; advertising publications; promotional publications; promotional pamphlets; advertisements (printed matter); advertising material being printed matter

(‘Applicant’s Goods’)

Class 35 - Promotion and advertising services; advisory services relating to customer service; business management and organisation consultancy; business networking services; management of business; marketing; market research; office functions; business management, business management consulting, strategic consulting, small business management advice, business planning services, strategic management, operational management, business administration, loyalty and incentive programs including loyalty and incentive programs associated with banking, financial, monetary, insurance, transportation, travel and airline services, and organisation and administration services relating to the supply of benefits in connection with loyalty and incentive programs; business services including business management, administration and information services; marketing and promotional services; market research; consultancy and advisory services relating to the aforegoing services

Class 39 - Air travel services; arranging of travel visas; packaging and storage of goods; travel brokerage

Class 41 - Education; providing of training; entertainment; sporting and cultural activities; entertainment services, including arranging for ticket reservations for shows, sporting events, concerts and other entertainment events; education services, including conducting classes, seminars, presentations, video presentations

Class 43 - Accommodation finding services for travellers; arrangement of accommodation for travellers; booking of accommodation for travellers; reservation of accommodation for travellers; reservation of rooms for travellers; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; travel agency services for reserving accommodation; travel agency services for reserving hotel accommodation

Class 45 - Concierge services; personal and social services rendered by others to meet the needs of individuals; chaperone services; concierge service for others, including making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, resorts, cruise ships or tour setting; concierge services, namely obtaining tickets and reservations for sporting events; concierge information services; provision of information, advisory and consultancy services relating to all the aforesaid services

(‘Applicant’s Services’)

The Trade Marks were examined as required by s 31 of the Act. Acceptance of the Trade Marks for possible registration was advertised in the Australian Official Journal of Trade Marks on 19 December 2019 and 20 December 2019.
The Opponent filed a Notice of Intention to Oppose each of the Trade Marks on 11 February 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 3 March 2020.
The Applicant filed a Notice of Intention to Defend each of the Trade Marks on 2 July 2020.
The Opponent filed the following declarations as evidence:
·Declaration of Angie Cleone made on 25 August 2020 with Annexures A to P;
·Declaration of Angie Cleone made on 26 August 2020 with Annexures A to P;
·Declaration of Angie Cleone made on 29 January 2021 with Annexures A to D; and
·Declaration of Angie Cleone made on 29 January 2021 with Annexures A to D.
The Applicant filed the following declaration as evidence:
·Declaration of David Luff (Past President of the Applicant) made on 30 November 2020 with Exhibits DL-1 to DL-2.
Once the time allowed for filing evidence ended, the Applicant requested a hearing by written submissions for both matters. The matters have been allocated to me, a delegate of the Registrar of Trade Marks, to decide. Jessie Buchan of DLA Piper Australia made written submissions on behalf of the Applicant. The Opponent did not file submissions.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44 and 60 of the Act.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 19 November 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Marks.
Section 44
Section 44 of the Act relevantly provides:
(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.
…
(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.
To succeed the Opponent must establish that the Trade Marks are substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods, similar services, or closely related goods or services.
In the SGP, the Opponent nominated trade mark number 1701359 (‘Opponent’s Trade Mark’) as the basis for this ground of opposition. The details of the Opponent’s Trade Mark are as follows:
Trade mark:   Les Clefs D’or Limousines
Priority date:  18 June 2015
Registered owner:          Opponent
Specification:                    Class 39 - Chauffeur driven car hire services; Chauffeur services; Rental of chauffeur driven cars (‘Opponent’s Services’)
From the information set out above, it is evident that the Opponent’s Trade Mark is held in a name other than that of the Applicant and has an earlier priority date than the Relevant Date. My next consideration is whether the Applicant’s Services are similar to the Opponent’s Services, or whether the Applicant’s Goods are closely related to the Opponent’s Services.
Similar services
In the SGP, the Opponent acknowledges that the Trade Marks claim services in classes 35, 39, 41, 43 and 45 and goes on to state:
which includes the same class of services in which the Opponent’s Trade Mark is registered in respect of and also other goods and services similar and related to it.
The opponent’s mark is registered in respect of a range of driven services under class 39, which is highly related to travel services and tourism included in class 43.
Pursuant to s 14(2) of the Act, ‘similar services’ are services that are the same or of the same description. The mere fact that services are in the same class does not render them similar. Determining whether services are similar involves examining the ‘essential characteristics’[3] of the relevant services including the nature, use and trade channels.[4] Applying these principles, it is not evident to me that the Opponent’s Services are similar to any of the Applicant’s Services.
[3] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [337] (Greenwood, Besanko and Katzmann JJ).
[4] MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
The Opponent’s Services can be summarised as chauffeur services. The principal activities which fall within the ordinary understanding of chauffeur services is the hiring of a motor vehicle with a driver, and or the provision of a driver for a private motor vehicle.
None of the Applicant’s Services are rental or hire car services. Whilst the Applicant claims a transport related service in class 39, it is a specific claim for air travel services. It is not difficult to infer that air travel services are a specialised undertaking ordinarily conducted by different entities than those involved in the provision of chauffeur services. The nature and trade channels are plainly different.
Furthermore, none of the services claimed by the Applicant in class 43 would be understood (as a matter of language or common business practice) as having the same general character as the Opponent’s Services. The Applicant’s claims in class 43 are all specifically in relation to accommodation, something of a quite different nature to hiring a motor vehicle with a driver. Whilst there may be some minor cross over in the trade channels, for example an agency that books holiday accommodation may also book chauffeur services, without more that is not a sufficient basis for me to conclude that the services are similar.
In the absence of submissions or supporting evidence from the Opponent, who bears the onus, I am not satisfied that the Opponent’s Services are similar to the Applicant’s Services.
Closely related
The concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J stated:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
…The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them…[5]
[5] [1999] FCA 1020, [37]–[38].
I do not consider the Opponent’s Services to be closely related to any of the Applicant’s Goods. It is not obvious to me, nor has the Opponent submitted or provided evidence demonstrating the existence of the type of relationship envisioned by French J. Furthermore, the mere fact that printed goods such as a travel guide or itinerary may be given to someone hiring a chauffeur driven vehicle does not render printed goods closely related to chauffeur services. Put simply, the Opponent’s Services do not have a sufficiently close function with respect to the Applicant’s Goods.
I am not satisfied that the Applicant’s Services are similar to the Opponent’s Services, nor am I satisfied that the Applicant’s Goods are closely related to the Opponent’s Services. As such, the ground of opposition under s 44 cannot be established.
Section 60
Section 60 of the Act provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Marks would be likely to deceive or cause confusion.
In the SGP, the Opponent’s Trade Mark is nominated as the basis for this ground of opposition.
Reputation
For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[6] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[7] number of people or potential consumers. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[8]
[6] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).
[7] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).
[8] [2019] FCA 923, [83] (O’Bryan J).
Reputation cannot be assumed; it must be established as a matter of fact by the Opponent[9] and it must exist at the Relevant Date.[10]
[9] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[10] Act s 60(a).
Turning to the evidence it is declared that the Opponent’s Trade Mark has been used continuously since 2013. To support this statement, the Opponent has provided documentation substantiating the registration of ‘Les Clefs D’or Limousines’ as a business name. However, registration of a business name does not of itself demonstrate that it has been used as a trade mark. In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation Lander J stated:
There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services….to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.[11]
[11] [2005] FCA 1278, [73].
Notably, the references to ‘Les Clefs D’or Limousines’ on the invoices contained in the Opponent’s evidence appear to be identifying the business named ‘Les Clefs D’or Limousines’ rather than showing use of, or reputation in the Opponent’s Trade Mark.
Similarly, documentation substantiating the registration of ‘Les Clefs D’or Limousines’ as a domain name does not of itself demonstrate that it has been used as a trade mark. The Opponent has not provided any screenshots of the relevant website/s and I am therefore unable to determine whether the domain name has been used as a trade mark.
The Opponent has provided an agreement dated in 2015 licensing the use of the Opponent’s Trade Mark to Cyanotech Pty Ltd. Once again, the mere existence of a licensing agreement does not of itself demonstrate reputation. Whilst the ‘total marketing costs and total revenues’ have been provided for Cyanotech Pty Ltd from 2015 to 2020, it is not clear to me that these figures relate solely to the provision or marketing of services under or by reference to the Opponent’s Trade Mark.
It is declared that the Opponent’s Trade Mark is promoted through various media channels. The Opponent has provided screenshots of social media posts and screen captures of three websites. However, each of the examples is undated, and it is therefore not clear that they are prior to the Relevant Date. Additionally, the Opponent has not provided any means to quantify the exposure that Australian consumers had to these promotional activities, such as the number of visitors to the relevant websites or the number of likes of the relevant social media posts.
Overall, the Opponent’s evidence lacks the specificity for me to quantify any reputation that the Opponent’s Trade Mark may have in Australia. Consequently, I am not satisfied, as a matter of fact, that at the Relevant Date the Opponent’s Trade Mark had the reputation that is contemplated by s 60 of the Act.
The ground of opposition under s 60 of the Act has not been established.
Section 42(b)
Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Marks would not could be contrary to law.[12]
[12] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The Opponent submits that use of the Trade Marks would be contrary to s 18 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). The Opponent also submits that use of the Trade Marks would amount to the common law tort of passing off.
ACL
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. It requires that I be satisfied that there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods & Services, or as to them having some connection with the Opponent. This is a stricter requirement than s 60 which only requires conduct that would be likely to deceive or cause confusion.
As already indicated in respect of s 60, I am not satisfied that use of the Trade Marks is likely to deceive or cause confusion. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Marks is likely to mislead or deceive.
Passing Off

Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[13]
[13] [1989] FCA 506, [40] (Hill J).
Section 18 of the ACL is the equivalent of s 52 of the TPA.[14] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
[14] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).
As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Marks does not amount to passing off.
The ground of opposition under s 42(b) of the Act has not been established.
Decision
Section 55 of the Act relevantly provides:
(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.
The Opponent has not established a ground of opposition. Accordingly, trade mark numbers 1969462 and 1969463 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.
In respect of trade mark number 1969462 I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth). In respect of trade mark number 1969463 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[15]
[15] [2001] ATMO 78.
Katrina Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
30 September 2022

[2022] ATMO 170

30 September 2022

Key Legal Topics

Areas of Law

Commercial Law

Statutory Interpretation

Legal Concepts

Appeal

Costs

Remedies

Standing

Trade mark number	1969462	1969463
Trade mark	Les Clefs d’Or (‘Word Mark’)	(‘Device Mark’)
Applicant	Society of the Golden Keys Australia Les Clefs D’Or Australia Inc (‘Applicant’)
Filing date	19 November 2018
Specification	Class 16 - Travel guides in the form of printed matter; travel documents folder; travel guide books; printed matter; paper, cardboard and goods made from these materials, not included in other classes; stationery; instructional and teaching material (except apparatus); books, manuals and other instructional and teaching materials relating to entertainment, travel, tourism, visitor information and activities; maps; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; advertising publications; promotional publications; promotional pamphlets; advertisements (printed matter); advertising material being printed matter (‘Applicant’s Goods’) Class 35 - Promotion and advertising services; advisory services relating to customer service; business management and organisation consultancy; business networking services; management of business; marketing; market research; office functions; business management, business management consulting, strategic consulting, small business management advice, business planning services, strategic management, operational management, business administration, loyalty and incentive programs including loyalty and incentive programs associated with banking, financial, monetary, insurance, transportation, travel and airline services, and organisation and administration services relating to the supply of benefits in connection with loyalty and incentive programs; business services including business management, administration and information services; marketing and promotional services; market research; consultancy and advisory services relating to the aforegoing services Class 39 - Air travel services; arranging of travel visas; packaging and storage of goods; travel brokerage Class 41 - Education; providing of training; entertainment; sporting and cultural activities; entertainment services, including arranging for ticket reservations for shows, sporting events, concerts and other entertainment events; education services, including conducting classes, seminars, presentations, video presentations Class 43 - Accommodation finding services for travellers; arrangement of accommodation for travellers; booking of accommodation for travellers; reservation of accommodation for travellers; reservation of rooms for travellers; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; travel agency services for reserving accommodation; travel agency services for reserving hotel accommodation Class 45 - Concierge services; personal and social services rendered by others to meet the needs of individuals; chaperone services; concierge service for others, including making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, resorts, cruise ships or tour setting; concierge services, namely obtaining tickets and reservations for sporting events; concierge information services; provision of information, advisory and consultancy services relating to all the aforesaid services (‘Applicant’s Services’)