Aussie Home Loans Ltd v Aussie Loans Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Aussie Home Loans Limited to registration of trade mark application 979077(36) Aussie (Logo) proceeding in the name of Aussie Loans Pty Ltd.

Delegate: Iain Thompson

Representation: Opponent
Khaqaque Kortian
Applicant
Written explanation by Stephen Edwards

Decision:

s52 opposition, ss 43, 44 & 60 – sections 44 and 60 established – registration refused.

Costs ordered against applicant.

Background

Aussie Loans Pty Ltd, ('the applicant') of Terrigal, NSW has filed an application to register a trade mark, current details of which are:
App No:  979077
Filing Date:  20 November 2003
Services:Class: 36: Financial and insurance services, brokerage, financial consultancy, loans and information, finance services, namely financial and insurance services concerning consumer and commercial finance and leasing services concerning motor vehicles, machinery, boats, marine vessels, commercial vehicles, motorcycles, plant/farm and building machinery/equipment, including business and personal loan services, gap insurance, motor vehicle and boat insurance, mechanical breakdown warranty insurance and consumer credit insurance
Trade Mark:
(‘the opposed trade mark’)
On 20 September 2004, Aussie Home Loans Limited, (‘'the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites most of the available grounds under the Trade Marks Act 1995 (‘the Act’).
Evidence in support was duly served and filed by the opponent in accordance with the Act and regulations thereto. There is no evidence in answer served and filed by the applicant.
As a delegate of the Registrar of Trade Marks, I heard the arguments of the parties at a hearing in Sydney on 19 July 2006. The opponent relies on oral and written submissions by Khaqaque Kortian of Spruson & Ferguson. The applicant submitted a very brief written submission that explains that a Mr Edwards of the applicant company could not attend the hearing and his beliefs that the services of the parties address different ends of the finance sector and that the trade marks are different.
Evidence
Evidence in support comprises a statutory declaration by Samantha May Stanton, Marketing Co-ordinator of the opponent and a declaration by Khajaque Khortian, solicitor.
Ms Stanton attests to the opponent’s use and ownership of, inter alia, the following registered trade marks in Australia:
Reg No:  912277
Priority Date:             9 May 2002
Goods/Services:         Class: 36 Financial loan services and re-financing services (including business loan services, equity loan services, investor home loan services and residential occupier home loan services) for the purpose of land purchase and for the purpose of home purchase, building, construction and renovation and any other worthwhile purposes
(Goods Classes omitted)
Trade Mark:
Reg No:  747823
Priority Date:             4 November 1997
Goods/Services:         Class: 36 Financial loan services and re-financing services (including business loan services, equity loan services, investor home loan services and residential occupier home loan services for the purpose of land purchase and for the purpose of home purchase, building, construction and renovation and any other worthwhile purpose)
Trade Mark:               AUSSIE HOME LOANS
Endorsement:             Provisions of subsection 41(6) applied
Reg No:  706118
Priority Date:             10 April 1996
Goods/Services:         Class: 36 Financial loan services for home building construction, renovation and purchase
Trade Mark:               AUSSIE HOME LOANS
Endorsement:             Provisions of subsection 41(6) applied
Reg No:  706119
Priority Date:             10 April 1996
Goods/Services:         Class: 36 Financial services including financial loan services
Trade Mark:
Endorsements:           Provisions of subsection 41(5) applied.
Reg No:  932094
Priority Date:             24 October 2002
Goods/Services:         Class: 36 Insurance services, including insurance brokerage, insurance underwriting, insurance consultancy and insurance information services
Trade Mark:
Reg No:  939694
Priority Date:             9 January 2003
Goods/Services:         Class: 36 Financial services including credit, banking and investment services associated with the use and promotion of credit cards and charge cards; financial services associated with promotional incentive schemes and loyalty schemes
Trade Mark:
The opponent commenced trading in 1992 and since then has promoted itself as an alternative to traditional mortgage providers or credit originators such as banks. The opponent now has in excess of 200,000 customers and approximately 800 staff in both city and country areas. The opponent has also offered a credit card service since 1999 (The ‘Aussie Card’) and provides insurance. The opponent has a loan portfolio of over $15 billion and spends many millions annually on advertising its services on television, radio and in the print media.
The widely promoted slogan used by the opponent in its advertisements is, “At Aussie we’ll save you.”
The opponent also purchased naming rights for the Aussie Stadium in Sydney. The three Internet sites run by the opponent each obtain well over one million ‘hits’ a year.
Mr Khortian’s evidence is an ASIC record for the applicant company and a printout of the applicant’s Internet website at as at 20 October 2005. The trade mark appearing on the applicant’s website in evidence is:
Discussion
For the purposes of section 60 of the Act, the opponent’s trade marks are very well-known in Australia as is an awareness of the opponent’s rapid growth and diversification into additional areas in the finance sector such as credit cards and insurance.
In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said at paragraph 81:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
There is no doubt that the trade marks on which the opponent relies had a reputation for the purposes of section 60 in Australia at the priority date of this opposed application.
Further, the trade mark registrations on which the opponent relies each, for the purposes of section 44, has a priority date early than that of this application.
Although the applicant has stated that it is involved in a different area of the finance sector, what I am to consider in terms of section 44 of the Act is the use of the trade marks under consideration to the full extent of the services for which they are registered or all of the services for which the opposed trade mark is pending. The actual use of the opponent’s trade marks becomes an additional relevant consideration in terms of section 60 of the Act – the relevant services of the applicant remain those on the specification of the application as if the opposed trade mark were used to its fullest extent oof those services.
Sections 44 and 60 relevantly provide:
Section 44
(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.
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 follows that, the other criteria having been established, the opponent will establish its opposition in relation to section 44 if the services of the opponent’s are similar to the applied-for services and the trade marks are deceptively similar. The opponent will also establish its opposition in terms of section 60 if the trade marks of the parties are found to be deceptively similar and the services are such that the public will see those services as being connected.
Services
Stated at their widest, the applicant’s services are, “Financial and insurance services, brokerage, financial consultancy, loans and information, finance services, namely [there follows a list of the specific services]” The opponent’s services are, “Financial loan services and re-financing services (including business loan services, equity loan services, investor home loan services and residential occupier home loan services) for the purpose of land purchase and for the purpose of home purchase, building, construction and renovation and any other worthwhile purposes.”
The word ‘namely’ in the applicant’s specification of goods logically only qualifies the words ‘finance services’ immediately preceding it, rather than all of the words preceding it, otherwise the repetition of the words ‘finance services’ is otiose.
The services nominated on the opposed application thus (with the exception of insurance services) all fall within the specification of services of the opponent of its AUSSIE HOME LOANS registrations. The term ‘insurance services is caught by the specification of the opponent’s registration 932094.
Thus, it not being argued that the trade marks of the parties are substantially identical, it remains to be determined whether the trade marks are deceptively similar.
Similarity
Section 10 of the Act provides:
10Definition 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.
Regarding ‘deceptive similarity’, French J said in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
The test is not to be applied to the trade marks side by side but rather from the impression of the trade marks which is likely to be formed by the public. In the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641 at page 658:
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, their 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. [Stress added]
All of the surrounding circumstances are to be taken into consideration, including the market context. In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.
It is appropriate, at this juncture, to observe that when comparing registered trade marks to those for which registration is sought, the terms and conditions endorsed on the registrations must be taken into account when comparing the trade marks. Thus, for example, when there is a colour endorsement limiting a registration to a particular colour, allowance must be made for this in the comparison of it with any other trade mark for the purposes of section 44. Similarly, when a trade mark is accepted under the provisions of subsection 41(6), some account must be taken of the fact that the Registrar has previously found the trade mark to be factually distinctive. Before a trade mark has been accepted under the provisions of subsection 41(6), it has been considered in the light of the test in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, at page 514 where Kitto J said:
[T]he question whether a mark is adapted to distinguish [is to be] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
In effect, once this test has been applied, a decision has been made that the trade mark is so identified with the goods or services of the applicant that no other trader actuated only by proper motives should need to use that trade mark. The trade mark is thus so identified with the goods or services of the owner that the capacity of other traders to make innocent use of either it, or possibly its identifying constituents, in relation to the same goods or services is severely curtailed.
This approach accords in general with the words of the Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 52:
Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.
Of course, the opponent’s rights in the AUSSIE HOME LOANS registrations on which it relies arise in relation to the trade marks as wholes. However, against this must be set the fact that the words HOME LOANS lack any inherent capacity whatsoever to distinguish those services.
The contrary view is that the word AUSSIE is a well-known slang term for the word AUSTRALIAN. The reason why the term AUSSIE has been seen as bringing the opponent’s AUSSIE HOME LOANS trade marks within the purview of subsection 41(6) is obvious – it is a term which, prima facie, other traders might legitimately require to use to describe the Australian flavour or origin of their services. However, as I have observed above, the more that the words AUSSIE HOME LOANS become identified with a particular trader’s services, the less capacity there is for any trader to innocently use those words (or words that are deceptively similar) in respect of the same or similar services. Here the words AUSSIE HOME LOANS have been found to be factually distinctive of the opponent’s services. They have, in effect, developed a secondary meaning as denoting the services of the opponent.

In terms of the above stressed passage in the quotation from Woollen Mills, ‘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, their similarities both of sound and of meaning may play an important part.’ If a person is to refer to the opposed trade mark in speech, it will inevitably be as AUSSIE or AUSSIE COMMERCIAL AND CONSUMER FINANCE.
The expression AUSSIE COMMERCIAL AND CONSUMER FINANCE is, to my mind, so close in construction to the opponent’s trade mark which has been found to be factually distinctive in respect of, ‘Financial loan services and re-financing services (including business loan services, equity loan services, investor home loan services and residential occupier home loan services for the purpose of land purchase and for the purpose of home purchase, building, construction and renovation and any other worthwhile purpose)’, that confusion between the trade mark is not only likely, it is inevitable. The opposed trade mark, in verbal use, comprises the first word AUSSIE, followed by a short description of a financial service. The same is true of the opponent’s registered trade marks which contain or consist of the words AUSSIE HOME LOANS or AUSSIE HOME INSURANCE or AUSSIE CREDIT CARDS; and, when the effect of the impression or recollection of the opponent’s trade marks, in terms of Henschke, above, is taken into consideration, most people are, in my estimation, likely to see the trade marks as being related and having a common origin. Being the first word in the trade marks of the parties, the word AUSSIE is also the most likely to impress itself on the minds of the public and be recalled: In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264.
For this reason, the opponent has established its opposition under section 44 of the Act.
For similar reasons the opposition under section 60 should also succeed. In this regard, I also note that the evidence establishes that opponent has extended from its core business activity of the provision of home loans into the provision of insurance and credit card facilities and the reputation of the opponent’s trade marks has similarly extended. Any step beyond these services into commercial finance would be a logical extension of its brand: Campomar SA v Nike International Limited (2000) 202 CLR 45.
Decision
Section 55 of the Act provides:
55. Unless the proceedings are discontinued or dismissed, 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.
Note: For limitations see section 6.
The opponent has established its opposition and I refuse to register application 979077.
Costs
The opponent is entitled to its costs in relation to this matter and I order costs against the applicant at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
15 August 2006

[2006] ATMO 75

15 August 2006

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Costs

Remedies

Statutory Construction

Delegate:	Iain Thompson
Representation:	Opponent Khaqaque Kortian Applicant Written explanation by Stephen Edwards
Decision:	s52 opposition, ss 43, 44 & 60 – sections 44 and 60 established – registration refused. Costs ordered against applicant.