ANZ Banking Group Ltd v Joint Credit Card Company Ltd

[1992] ATMO 26

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re:Opposition by The Joint Credit Card Company Limited to the registration of application 359569 in the name of Australia and New Zealand Banking Group Limited. 

Background

On 30.4.87, trade mark application 359569 was advertised accepted for registration. The application is in the name of Australia and New Zealand Banking Group Limited ("the applicant") and the services specified in the application are a broad range of financial and insurance services which for the present moment is broad enough to include credit card services. The trade marks the subject of the application, which was lodged on 28.4.81, are a series of marks under section 39 of the Trade Marks Act:

ANZ ACCESS ACCOUNT
ANZ ACCESS PAYROLL SERVICE and
ANZ ACCESS CARD

As a series of marks under section 39 they are registrable on payment of a single fee. To constitute such a series the marks, while resembling each other in material particulars, may differ in respect of "statements or representations as to the goods or services in respect of which the trade marks are used or proposed to be used" - section 39(1)a - or "other matter which is not distinctive and does not substantially affect the identity of the trade marks" - section 39(1)b.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by The Joint Credit Card Company Limited ("the opponent"), on grounds which are generalised and which I will not recite at length as they were not fully pursued at the hearing. The opponent claims in general terms that:
. the applicant is not the proprietor of the mark,
. the mark is not distinctive,
. the application should be refused in any case as use of the applicant's mark would be likely to deceive or cause confusion and/or would otherwise be an infraction of the rights acquired by the opponent, and that
. registration of the mark would prejudice the opponent in the conduct of its business.

It may be as well to deal with a technical issue at this point; the standing of the opponent.  In the time since the Notice of Opposition was lodged, the opponent has "demerged" into two separate entities.  I do not think that events subsequent to the lodgement of the notice of opposition should prevent a party who claims to be a successor to the opponent from conducting the opposition.

After the evidence stages provided in the regulations the matter was set down for hearing on 3.12.91.  The opponent was represented by James Abel, a patent attorney of the attorney firm of Griffith Hack and Co, while the applicant was represented by John Waters, patent attorney of Phillips Ormonde and Fitzpatrick. 

Before turning in detail to the evidence relied on by the parties in the opposition, I will review the history of this application, as there are elements there which are critical to the outcome of the opposition.

The application was initially subject to an examiner's objection that the words ACCESS ACCOUNT, ACCESS PAYROLL ACCOUNT and ACCESS CARD indicated that the services were provided on or by an account system which offered access to the funds held in the account. Moreover, the examiner maintained that the three marks did not constitute a series of trade marks for the purposes of section 39.

The examiner thus required that all but one of the marks be deleted and that the application be endorsed to the effect that:  Registration of this trade mark shall give no right to the exclusive use of the words (ACCESS ACCOUNT, ACCESS PAYROLL ACCOUNT or ACCESS CARD) as appropriate to the mark to be selected.  

The applicant was not prepared to consent to that endorsement, and a hearing was set down to decide the terms on which the application could be accepted.

At that hearing the applicant vigorously denied the necessity of a disclaimer.  The hearing officer undertook to consider if further material relating to the registrability of the word ACCESS in Part B of the register without disclaimer could be considered, and this material was subsequently lodged.

The hearing officer's decision was that in the final analysis the marks were registrable as a series, but only on disclaimer consistent with that proposed by the examiner.  The question of Part B registrability was closely looked at, but the hearing officer considered that "the word ACCESS is used as a generic term ... The word ACCESS seems to me to be a word which other traders providing banking and finance services will need to use in the legitimate and natural course of describing their services...".  The hearing officer concluded that a disclaimer in the terms proposed was mandatory for acceptance in either Part A or Part B of the register, and the application was subsequently accepted in Part A with an endorsement which reads:

Registration of these trade marks shall give no right to the exclusive use of the words ACCESS ACCOUNT, ACCESS PAYROLL SERVICE and ACCESS CARD.

With that as a background and having heard the parties I turn to the evidence on which they have relied. 

Opponent's Evidence in Support

This consists of the declaration of Richard Jukes.  Mr Jukes declares that (his) company's ACCESS cards are used throughout the world as part of a reciprocal arrangement under the MasterCard system" and that such services first became available in January 1980.  Mr Jukes declares that in that year there were 6,428 transactions under the trade mark ACCESS, with a value of 285,087 Pounds Sterling.

Appended to the declaration are copies of "promotional material distributed in Australia on behalf of the applicant."  That material is a mix of
. instructions to merchants who accept MASTERCARD, and possibly VISA and BANKCARD credit cards, and
. advertising material directed (apparently) to Australians heading overseas.  This material informs these travellers as to where they can use their MasterCard credit cards.

A second part of this declaration shows that the opponent's card holders conducted 5 transactions in Australia in 1980.

Applicant's Evidence in Answer

Essentially, this evidence shows that the applicant's business has expanded over time.  It is asserted that the trade mark ANZ ACCESS ACCOUNT was first used in September 1981, and that use under that trade mark ("or sometimes more simply under the trade mark ACCESS") has expanded to the point that on 30.6.89 there were over 1.3 million such accounts Australia-wide.  Similarly, the use of ANZ ACCESS PAYROLL SERVICE is asserted to have commenced during June 1982, and to have expanded to the point where there were 3,817 users of the service in July 1989. 

Mr Jones points out that the opponent's business is in the nature of a credit card operator, in that the funds paid to a merchant who accepts use of the opponent's credit card are advanced by the company which issues the card and then recovered from the card holder.  The applicant on the other hand operates a debit card:  the funds paid to the merchant come almost immediately out of the card holder's account.

Opponent's Evidence in Reply

Not surprisingly, the opponent has lodged a further declaration by Mr Jukes which argues, as did the opponent's attorney, that there is no difference in the way the two systems of cards are perceived to operate, and that both cards operate through automatic teller machines.

The opponent's arguments

Notwithstanding the disclaimer of the word ACCESS in the applicant's marks, Mr Abel submitted that the proprietorship matter can be pursued in respect of credit card services, which he conceded is the only area on which the opponent can claim use in Australia.  Mr Abel relied on the established law that where a mark is unused by the applicant prior to the date of application, proprietorship can be defeated by the prior trade mark use of another party.

Mr Abel did not strongly press the claim that the marks sought to be registered are not distinctive as wholes.  I think in all fairness that I have but to note that ANZ BANK and ANZ BANKING GROUP were separately registered for essentially these services before the date of the present application (as registrations 327615 and 327616) to end that matter.

Mr Abel also conceded that given the Registrar's present application of the High Court decision in the MOO case he might have some difficulty in demonstrating blameworthy conduct or any other conduct which would disentitle the applied for mark to protection in a court of justice unless the opponent was successful on the proprietorship question.

Mr Abel relied however on the argument that the present mark, if registered, might "create difficulties" for the opponent under the Trade Practices Act or otherwise.  He also speculated that as the applicant had declined to exclude credit card services from the statement of services it might have some suspect motive.

Decision

I have no evidence or reason to conclude that the applicant's mark is not distinctive in fact.  I dismiss the opposition as it arises under that heading.

As to proprietorship, the opponent's evidence would not convince me that the opponent has made trade mark use of ACCESS in Australia should it be necessary to decide the matter on that ground.  The transactions which have been made under the terms of a reciprocal agreement with another credit card organisation are not use of the opponent's mark in this country, as the payment transactions are conducted overseas when the opponent bills its card holders.  Mr Abel argued that the use of an ACCESS credit card in this country for the purpose of conducting business must perforce be trade mark use, but on the authority of the PALL MALL case, W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 I must disagree. The fact that customers bearing pieces of plastic of a particular sort (issued by the opponent) are welcomed by merchants who conduct business with MASTERCARD or BANKCARD does not establish trade mark use of the opponent's mark in this country.

However, the opponent has failed to address the question of the descriptive significance of the word ACCESS in relation to credit card services, and I do not see how it or any other trader including the applicant can be found to be the proprietor of that word.

The right to claim proprietorship of a mark within the meaning of s.40(1) depends on first use of the mark in Australia (see the analysis by McGarvie J. in Settef v Riv-Oland Marble 10 IPR 402 at 413). The meaning of the word "use" in the Act is to be understood in the context of the definition of "trade mark" in s.6(1) of the Act: W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191; Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271. That definition is as follows:

"trade mark means ‑
(a)      except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person;" ...

Such use must not be confused with the mere use of words which are common property open to all traders.  As the matter was put by Fullagar J. in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399, quoting with approval from Hick's Trade Mark (1897) 22 VLR 636

"proprietor must be taken to mean the person entitled to the exclusive (emphasis added) use of that name.  If there is anyone else who would be interfered with by the registration of the word "Empress" in the exercise of a right which such person has already acquired ... then Hicks ought not to have been put on the register for that trade mark.

In the opinion of the Hearing Officer who dealt with this application ex parte the word ACCESS was one which all traders are entitled to use in relation to their credit card services and accounts.  Such a view is incompatible with the acquisition of proprietorship by any one firm against all others.  There is no evidence before me to controvert this view, and I reject the contention that use of the word ACCESS by the opponent in relation to credit card services can defeat the present applicant's claim to proprietorship of the present series of marks, or that registration of this application will interfere with the entitlements of the opponent. 

Similarly, the use made by the opponent is not able to trigger the provisions of section 28.  Irrespective of how the action of that section is construed I cannot concede that there is the body of evidence here which should convince me that use of the descriptive term ACCESS by the opponent was likely at the relevant date, the date of application, to have caused deception or confusion.  The case may be distinguished from the WYANDRA GOLDEN CRUMPETS case (re application by Hardings Manufactures Pty Ltd, 8 IPR 147), where the extent and context of an opponent's use of the word GOLDEN CRUMPETS was sufficient to defeat the application.

If the matter goes elsewhere then as Mr Walton argued the opponent will also have to address the composite action of section 28.  I will not repeat the full analysis of the matter by Hearing Officer Homann in the case of Titan Manufacturing Co. v Coyne (1991) AIPC 90-808 since the parties did not make detailed submissions on the question. The hearing officer's conclusion was that :

Section 28 has been the subject of recent consideration by the Courts and, in particular, by the High Court in New South Wales Dairy Corporation v Murray Goulburn Co‑operative Company Ltd 18 IPR 385 (the Moo case). In that case the Court held, by a majority, that the operation of para 28(a) is limited by a requirement of blameworthy conduct on the part of the proprietor of the mark, that is, that the likelihood of deception and confusion has been brought about by the actions of the proprietor himself. This is so whether as a result of reading para 28(a) conjunctively with para 28(d) or of construing 28(a) in the context of the Act as a whole together with general policy considerations. The Federal Court had earlier reached the same conclusion in Riv‑Oland Marble Co (Vic) Pty Ltd v Settef SpA, also a majority decision.

Let it be said simply that the opponent has not shown either that the adoption of the mark by the applicant was blameworthy or that the applicant's mark is disentitled to protection in a court of justice. 

In particular it is not within the Registrar's competence to determine what matters may arise under other legislation such as the Trade Practices Act.  I thus do not consider that a possibility that hypothetical "difficulties" may arise under that act is of relevance to the present matter.

Conclusion

The opposition has failed on all grounds and is dismissed.  I award costs in accord with the official scale to the applicant.

T. Williams
Hearing Officer

5 June 1992