ATP Tour, Inc v Australian Tennis Professional Coaches Association Ltd

[2001] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by ATP TOUR, INC to registration of trade mark application 762604(16, 41) - ATPCA & BOOMERANG AND DEVICE - filed in the name of AUSTRALIAN TENNIS PROFESSIONAL COACHES ASSOCIATION LTD

Background

In this matter, Australian Tennis Professional Coaches Association Ltd (‘the applicant’) filed application on 20 May 1998 to register the trade mark appearing below in respect of:

Printed publications including newsletters; all in relation to tennis

Training, coaching and accreditation services, all provided in relation to tennis, including accreditation of tennis coaches.

Following examination, the application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 29 October 1998.

On 28 January 1999, ATP Tour, Inc filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The grounds cited in the Notice are wide ranging; however, at the hearing the opponent relied on grounds under sections 43, 44 and 60, arguing that, if the opposition in terms of subsections 44(1) and (2) succeeded, there had been no honest concurrent user of the trade mark by the applicant.

As a delegate of the Registrar of Trade Marks, I conducted the hearing in Canberra on 3 September 2001.  Mr Robert Kelson, of Callinan Lawrie, represented the applicant.  Mr Wayne Willis of FB Rice & Co represented the applicant by teleconference.

The Evidence

In tabular form, the statutory declarations filed as evidence in this matter are:

Declarant	Known as	Date Made	Exhibits
Evidence in Support
Ann Quinn	Quinn 1	20 April 2000
Mark V Young	Young 1	3 April 200	MY1 – MY4
Evidence in Answer
Don Champion	Champion	22 November 2000
John Marks	Marks	9 November 2000
James Francis Day	Day	8 November 2000
Dennis Robert Bindon	Bindon	12 November 2000
Evidence in Reply
Ann Quinn	Quinn 2	29 May 2001
Mark V Young	Young 2	31 May 2001	MY5

The background to this opposition is involved with the history of development of the modern professional game of tennis, both in Australia and overseas.  It is apparent from the evidence that knowledge of this history aids in reading and understanding the evidence, although it is not necessarily critical to my decision in these reasons.

Until about 1989, the Men’s Tennis Council (‘the Council’) was responsible for arranging and promoting international tournaments for men’s tennis – in latter days the relationship between many of the players and the Council was not a happy one.  In 1988, Hamilton Jordan, of the Association of Tennis Professionals (formed in 1972) gave a news conference in a carpark outside the US Open voicing the player’s dissatisfaction with the Council and the problems and the conflicts the players had with the Council.  In 1990, eighty-five of the top one hundred players formed a new organization responsible for tours, called ATP Tour, Inc.  In this they were supported by tournament directors in various countries around the world.  The new organization, ATP Tour, Inc., the current opponent in these proceedings, is very much more proactive in promoting and marketing the game than was the Council.

Prior to 1998, the Australian Sport Commission only recognised Tennis Australia, and Tennis Australia’s coach education organization, Tennis Coaches Australia, for the provision of tennis coaching qualifications accredited by the Australian Coaching Council.  In 1997, deregulation of tennis coaching commenced and the applicant, in November 1998, applied, and was accepted into, the National Coaching Accreditation Scheme.  At the same time, the applicant submitted its coach training courses to the Australian Coaching Council for review and, in 1999, was accredited by that Council as a provider of tennis coach education in Australia under the National Coaching Accreditation Scheme.  Early in the year 2000, the applicant was audited by the Vocational Education Training Advisory Board and received recognition as an approved Registered Training Organization.  This is a scheme distinct from the Australian Coaching Council.

After accreditation of the applicant by the National Coaching Accreditation Scheme, Tennis Australia and Tennis Coaches Australia withdrew from the National Coaching Accreditation Scheme for Level 1 and Level 2 accreditation of their coach training.  It is not clear from the evidence whether the two events are related.

The evidence gives me the strong impression of antagonism against Australian Tennis Professional Coaches Association Ltd on the part of Tennis Australia, the sources of this enmity are not clear but are likely to stem from the deregulation of the profession.  Neither is it clear what relationship, if any, exists between Tennis Australia and the opponent.

In her first declaration, Ms Quinn says that she is National Director for Coach Education of Tennis Australia.  Ms Quinn says that Tennis Australia is the peak governing body of tennis in Australia and endorses Tennis Coaches Australia to run coach education courses throughout Australia, but is putting in place processes by which it could endorse more than one coaching provider.

Ms Quinn states her knowledge of this application and says that she believes that the acronym ATPCA could lead many people to believe that the applicant is the coaching arm of the ATP.

Mr Young is Executive Vice President of ATP Tour, Inc., the opponent.  He says that he has held his position for nine years.  Mr Young lists the trade mark registrations which the opponent owns in Australia.  For the sake of brevity, I will mention only those which are representative and most relevant to these proceedings.  I note also that the opponent appears to rely on trade marks which consist only of a stylised representation of a tennis player which do not have the letters ATP appearing in them.  These trade marks are quite dissimilar to the opposed trade mark and it is not clear to me why the opponent should have included them amongst the list of registrations on which it relies.

Reg Number:   513673
Priority Date:  ATP Tour Inc

Goods:Sporting goods including knee pads, elbow supports, back supports, wristbands, tennis rackets

Trade Mark:   

Reg Number:   513674
Owner:  ATP Tour Inc
Priority Date:  27-JUN-1989

Goods:Services promoting the sport of tennis, tennis tournaments and recreational tennis facilities

Trade Mark:   

Reg Number:   513671
Owner:  ATP Tour Inc
Priority Date:  27-JUN-1989

Goods:Prints and publications relating to tennis including newspapers, calendars, handbooks, tickets, posters, picture cards

Trade Mark:   

Reg Number:   703385
Owner:  ATP Tour Inc
Priority Date:  28-FEB-1996

Services:Organizing, administrating and operating tennis leagues, operating and administrating computer ranking systems, operating and conducting tennis tournaments, marketing, promotion and sponsorship of tennis leagues, participating tennis tournaments and players, tennis coaching and operation of tennis recreational activities, tennis resort services and tennis camp facilities

Trade Mark:    ATP TOUR

The opponent, is, says Mr Young, responsible for running and promoting the vast majority of tennis tournaments throughout the world including Australia.  The promotion includes Fanfests, Kid’s Days and Smash Tennis which are designed to promote the men’s tennis circuit and the game of tennis in general.  Mr Young says that the tournaments organised by the opponent are televised worldwide and that the ATP trade mark appears prominently at the venues themselves.  Mr Young does not say which of the above trade marks appear at the venues.  Further, it would appear from the evidence that the opponent’s trade marks might have undergone a degree of evolution which is not accurately reflected in the above registrations.

Appended to Young 1 is material from the Internet which shows that the opponent runs what it calls a Tour University.  However, I understand from this material that the University does not coach either players or coaches in the game itself but rather in the history of the opponent, the opponent’s structure and goals, the opponent’s rules, player services programs, personal finance, AIDS awareness, and communications and media awareness.

In evidence in answer, Mr Champion says that he is Vice President and Secretary of the applicant.  The applicant was incorporated in 1966 as NSW Physical Education Association Ltd.  It is a non-profit public company.  The change of name of the company to Australian Tennis Professional Coaches Association Ltd occurred in 1994.  In his declaration, Mr Champion details the method that the applicant arrived at the name of the applicant and hence the acronym ATPCA that forms a part of the opposed trade mark.  In summary, this was with regard to the function of the applicant as an association of Australian tennis coaching professionals and was without reference or regard to the opponent.

Mr Champion attests to a degree of antagonism between Tennis Australia, and its affiliate Tennis Coaches Australia, and the applicant.  Mr Champion states his belief that Ms Quinn has had a past connection with the opponent on the basis that she toured in the ATP Tour Circuit as part of the entourage of the Australian tennis player Pat Cash.

John Marks was the National Director of Coaching for Tennis Australia from 1993 to 1998 and was a playing member of the Association of Tennis Professionals, which is now ATP Tour, Inc., the opponent, from 1975 to 1980.  Mr Marks has been a Level 3 coach with Tennis Coaches Australia since 1986 and a Level 2 coach with the applicant since 1990.  I understand from this that Mr Marks remains associated with both Tennis Coaches Australia and with Australian Tennis Professional Coaches Association Ltd.

Mr Marks states that in his time as a touring professional, neither the ATP nor the ATPCA acronyms and their respective logos were mis-interpreted as being branches of the same organizations. 

I note now that Mr Champion in his declaration says that the change of name of the applicant to Australian Tennis Professional Coaches Association Ltd occurred in 1994.  It would appear, then, that the applicant had not adopted the acronym ATPCA while Mr Marks was a touring professional.

Mr Marks also says that in his time as National Director of Coaching for Tennis Australia, neither the ATP Tour, Inc., nor the Australian Tennis Professional Coaches Association Ltd acronyms were mis-interpreted as being, or indicating, branches of the same organizations.

Mr Marks says that tennis coaches in Australia are paid for their knowledge and expertise.  The vast majority of coaches have successfully completed some form of training, on-court work and examinations.  Mr Marks states his view that the fact that the acronyms shared in the names of the applicant and opponent is coincidental and were brought about through necessity via usage of the limited words available to depict their specific activities.

James Day is a sports administrator and is a member of the Australian Society of Sports Administration, has an Associate Diploma Security Management and is a member of the Australian Institute of Management.  Mr Day served with the Victorian Police Service during the years 1973 to 1989 and left with the rank of sergeant.

Mr Day is now a director of Australian Tennis Professional Coaches Association Ltd and from May 1997 to May 2000 was a director of Tennis Queensland, the state branch of Tennis Australia.  Mr Day moved to Queensland some eleven years ago and has been actively involved in tennis administration since then.

Mr Day joined the Australian Tennis Professional Coaches Association Ltd in 1995 and since then has actively been promoting its activities since then.  Mr Days attests to a range of activities, meetings and contacts in which he has participated without any confusion being apparent between Australian Tennis Professional Coaches Association Ltd, and its acronym and the opponent and its acronym or the trade marks at issue.

Dennis Bindon has been involved in tennis for over 40 years as a promotions officer, for tennis in New South Wales.  Currently, Mr Bindon is the publicity officer for the NSW Hardcourt Tennis Association and is a director of Tennis NSW.

He states that during this time, no one that he is aware of has expressed an opinion that Australian Tennis Professional Coaches Association Ltd is or was associated with ATP Tour, Inc.  He believes that this issue is related to the deregulation of tennis coaching and that “some … people … have an axe to grind.”

Ms Quinn, in her second declaration, filed as evidence in reply, challenges the explanation of Mr Champion of how the applicant arrived at the acronym ATPCA and the grammatical or semantic basis for the construction of the acronym.  Ms Quinn also debates the merits of the statements of the other declarations filed in answer.  I take these comments into account in my reasons.

Mr Young’s second declaration is very similar to that of Ms Quinn and I also take his criticisms of the evidence in answer into account in my reasons below.

It is impossible for me to conclude from the evidence what degree of reputation might accrue to the acronym ATP, per se, which forms a part of the opponent’s trade marks.

Reasons

Section 43 of the Act allows:

43  Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

As I understand the opponent’s argument under this ground, it is ‘that the logical meaning of the expression Australian Tennis Professional Coaches Association is “a coaches association for Australian tennis professionals”.  As the applicant is “an association of Australian professional coaches for the game of tennis”, the trade mark, via its inclusion of the acronym ATPCA, must contain a connotation which would be likely to deceive or cause confusion’.  In other words, it appears to be the submission of the opponent that the phrase ‘Australian Tennis Professional Coaches Association’, on which the acronym is based, invites inclusion of a comma between the words ‘Professional’ and ‘Coaches’.  I have a number of difficulties with this proposition.  Foremost, I consider that it is unlikely that most people, when encountering the applicant’s trade mark, will stop and think out what the acronym in the trade mark actually stands for.  In my experience, the ordinary person encounters in their daily lives a number of acronyms (which may or may not be used as trade marks) without pausing to reason what the acronym actually connotes.  Examples such as RSL, BBC, IBM and ATM come readily to mind.  The average person has some general idea of the person or thing indicated by the initialisation but does not invariably pause to reflect that the acronym specifically refers, for example, to an ‘automatic teller machine’, or to consciously enunciate these words to themselves and think what they mean.  Hence, it is common for people to refer to an ‘ATM machine’ without realising that the expression contains a redundancy. 

Although the approach suggested by the opponent may be appropriate elsewhere, I also am hesitant here to conclude that any meaning of the acronym is obvious within the trade mark.  It is only with some degree of explanation that I understood Mr Kelson’s explanation of the nature of the opponent’s argument.  I would conclude that if a hearing officer has difficulty apprehending an allegedly deceptive meaning with the benefit of both the trade mark before him and a detailed explanation in argument, it is unlikely that a member of public with only the trade mark before them will apprehend a deceptive connotation within the trade mark.

A subsidiary consideration is that the connotation, either one way or the other, of the expression ‘Australian Tennis Professional Coaches Association’ is not as obvious as the opponent suggests.  For example, the expression from which the acronym derives is capable of being read as ‘Australian Tennis, Professional Coaches Association’: that is, a professional coaches association for Australian tennis.  In other words, if a comma is to be inserted into the expression ‘Australian Tennis Professional Coaches Association’, it is as logical to place it between the words ‘Tennis’ and ‘Professional’ as it is to place the comma elsewhere.  This alternative reading of the expression on which the acronym is based appears to be consistent with the services and goods performed or provided by the applicant.

Either way, the opposition fails on this ground.

Section 44

Section 44 of the Act provides:

44  Identical etc. trade marks

(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.

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.

(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.

(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.

As there is no dispute that the registrations of the opponent have priority dates which are earlier than those of the applicant, and it was not argued at the hearing that the trade marks are substantially identical, what remains for me to address is whether the:

·     trade marks are deceptively similar; and

·     goods and services are the same or closely related.

In Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999), French J said:

In the end there is one practical judgment to be made.  Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.  It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

For the reasons that I set out below, I consider that there is such limited resemblance between the trade marks that the question of the degree of relatedness of the parties’ respective goods and services can be set to one side.  However, I make some general observations about the nature of the marketplace, below, in order that my discussion of the similarity of the trade marks is set in context.

Goods and services

The similarity of the goods and services, and that of the trade marks, must be assessed against the market background against which the services are performed or goods are in trade.  From my understanding of the evidence, it would seem that the general background of the ‘audience’ for these goods and services is what might be called tennis aficionados.  The applicant’s specification in class 41 is very narrow – the services appear to be directed to those who coach tennis and those who would be coached in tennis.  The opponent’s specifications are, in the main, aimed at a more general audience – tennis aficionados in general.  However, whether the goods and services are projected at the specialised audience of tennis players who are being coached, or the more general audience of tennis fans, the ‘addressees’ must be expected to know of the sport which they follow.  They will know of particular players who they support and they will be aware of the trade marks employed by organisers and sponsors of tournaments.  Those who are coached in the game of tennis might be expected to have a very good familiarity with the names of the organizations involved in tennis and the trade marks used by them.

The Trade Marks

The deceptive similarity of trade marks is to be assessed with the trade marks apart from each other; and, any deceptive similarity that emerges from the impression the trade marks leave on the mind, to be retained and recalled.  In Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641 at 658, the test to be applied was expressed by Dixon and McTiernan JJ at 658 in the following terms:

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.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.  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.  Evidence of actual cases of deception, if forthcoming, is of great weight.

I have already, as per Application by the Pianotist Co. Ltd. for the Registration of a Trade Mark (1906) 23 RPC 775, at p 777, considered the nature and kind of customer that will be involved and some of the surrounding considerations.

To my mind, it is an error to focus on the acronyms within the trade marks and then, having noted some degree of resemblance between the acronyms, expand that focus to consider whatever similarities and differences exist in the balance of the trade marks.  Although the issue is one of degree, the situation is quite different here, I consider, to that where there is a one-to-one correspondence between the letters which form the respective acronyms within the trade marks.  The approach suggested by the opponent depends on having the trade marks side by side; and, it ignores the principle that it is the impression that is carried away from the trade marks which I should consider.

While it is not the acronyms or trade marks ATP and ATPCA, solus, before me, I believe that the following considerations are relevant since much of the opponent’s argument focussed on alleged similarities between the acronyms in question. 

It is apparent to me that if a trader coins an acronym from words which are essential to, or common within, a trade, it might be expected that others might use similar words as the source of acronyms for themselves and their goods or services.  On reflection, expressions such as ‘Association of Tennis Professionals’ or ‘Australian Tennis Professional Coaches Association’ lack inherent distinctiveness because they are meaningful aggregations of words which are common within the trade and are thus words which other traders need to use to denote themselves and their trade: Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR 511. Such acronyms gain a measure of inherent distinctiveness because their origins are not immediately manifest. Where it is shown that acronyms have such a source, some allowance in any comparison must be made for the non-distinctive nature of the acronyms’ progenitors. Under such circumstances, closer similarities than normal between such acronyms, apart from those which amount to an identity, might be expected and, to a degree, tolerated in the absence of any demonstrated ‘bad faith’. Rationale for such an approach lies in the wider trade context where the public has a vast array of acronyms before it, whether used as trade marks or otherwise, and is used to distinguishing between these acronyms on small differences within the contexts in which they occur.

Further, a conclusion here that a person would both note the similarity between the acronyms and understand that the similarity denotes some relationship between the parties and their goods and services requires me to make assumptions concerning the ordinary person’s perceptions of such acronyms that are, in my view, unsafe to make without more detailed evidence addressing this point.  It is not clear to me from the evidence or my own observations of the world, for example, that the public has been exposed to any range of acronym trade marks which are related and is thus accustomed to perceiving or inferring such relationships on this basis.  I am not aware of any practice of traders in general, let alone the opponent, in which it is usual to coin trade marks which are acronyms based on an earlier ‘house’ acronym.  Of course, there are well-known examples of ‘house’ trade marks such as ANZ or IBM where the ‘house’ mark is an acronym (which may be used with another element) but such ‘house’ marks are always, in my experience, kept discrete, and separately identifiable, within the trade marks within which they occur.  The fact that an acronym trade mark is notorious, as are the above examples, could have some bearing on the assessment, but I have not been shown that this is a relevant consideration here that bears on the letters ATP standing alone.  Further, the understanding of an acronym is contextually based; for example, the understanding of whether the letters BBC refer to a hardware store or to a media broadcaster comes with the context within which they occur.  As discussed above, the context here is of tennis aficionados and professionals and it is difficult to perceive how such people could be confused or deceived while the dissimilarities between the elements ATPCA and ATP TOUR exist.

Neither is it clear to me that, if a similarity between the acronyms is noted by the public, it will be viewed as denoting such a relationship and not something else entirely.  To draw an analogy from ‘words’ as opposed to ‘acronyms’, a member of the public might perceive a similarity between the words ‘clap’ and ‘clapper’, or ‘Queen’ and ‘Queensland’, yet understand them to denote completely different things.

In Woolworth’s, above, at paragraph 45, French J observed:

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

The deceptive similarity of the acronyms ATP and ATPCA, per se, is outside the scope of these considerations; however, the similarity is not such that I am satisfied that, in the context of the trade marks at issue, it would lead a person to both note the similarity and conclude that the goods and services of the respective parties are in any way connected.  In fact, I am satisfied that the trade marks are quite dissimilar.  It is artificial here, I believe, to analyse, or attempt to re-create, the process by which the applicant might have arrived at the words ‘Australian Tennis Professional Coaches Association’ from which the acronym derived, and to do so imputes some degree of bad faith to the applicant which is inappropriate without concrete evidence of such bad faith.  Such an analysis also frames the conclusion in terms of the analysis itself instead of the similarity of the acronyms themselves and hence the logic of such a conclusion, in the absence of evidence of actual bad faith, appears to me to be inadequately based.  The declarants for the opponent have suggested that the construction ‘Australian Tennis Professional Coaches Association’ is an unnatural way of expressing the fact that the applicant is a professional coaches association for Australian tennis and so the applicant must have started with the opponent’s acronym in mind.  However, as I have previously noted, the name is obviously capable of being read as ‘Australian Tennis, Professional Coaches Association’ with the insertion of a comma: this denotation of the name of the applicant is at least as natural as the alternative meaning that the opponent has suggested.  Hence, any semantic or linguistic analysis of the trade marks on this basis is also not, here, appropriate.

Accordingly, I am inclined to view any similarity between the acronyms, including the opponent’s registration 703385, as being ‘co-incidence’ brought on by the inherently non-distinctive origins of the acronyms.

When compared as wholes, there are many differences between the trade marks and the impression gained from each is quite different.  While it is true that a person might (with the exception of 703385) gain the impression from the trade marks of ‘tennis’, this is to be expected and discounted since it is the trade of both parties. 

Registration 703385, which is owned by the opponent and is the letters and word ATP TOUR, is manifestly quite different from the applicant’s trade mark, when the impression of the trade marks, and how they are likely to be recalled, is considered.

In his submissions, Mr Kelson, for the opponent, referred extensively to the decision of the Court in Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 (29 August 2001). I note that the Court’s finding, dismissing leave to appeal, is based on the fact that there is a one-to-one correspondence within the words CORDON BLEU appearing in either trade mark and that, as this is the dominant feature in the trade marks, this is how the trade marks were likely to be recalled. Here, there is no one-to-one correspondence between the elements ATP TOUR and ATPCA. As the allegedly similar elements are (as discussed above) unlikely, in the context of these trade marks, to be noted and compared, and are subsumed into the broader identity of the trade marks, it is most unlikely, in my estimation, that they will be the basis of any mistaken recall of the trade marks.

Accordingly, I consider that the trade marks are not deceptively similar and the opposition must be dismissed on this ground.

Section 60

Section 60 of the Act allows:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:For deceptively similar see section 10.

Note 2:For priority date see section 12.

It will be noted that the minimum requirement under section 60, as regards similarity of trade marks, is that the trade marks at issue be, at least, deceptively similar.  I have noted, above, that the opponent’s and applicant’s trade marks at issue are not deceptively similar.  There is no evidence that that the opponent had, before the priority date, used the element ATP as a trade mark on its own in Australia.

I therefore dismiss the opposition in terms of section 60.

Decision

The opposition has been unsuccessful on each of the grounds on which it was argued.  Hence, I direct that the application may, subject to any appeal against these reasons, and if the appropriate fees have been paid, proceed to registration.

Costs

Having been successful, the applicant is entitled to its costs in this matter.

Ian Thompson
Hearing Officer

15 October 2001