Aust-Asia Health Pty Ltd v Ozm Education & Internet Pty Ltd

[2023] ATMO 155

TRADE MARKS ACT 1995

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

Re:Opposition by Aust-Asia Health Pty Ltd to registration of trade mark application 2108248 (45) – OZM EDUCATION MIGRATION (Figurative) – in the name of OZM EDUCATION & INTERNET PTY LTD

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2023 ATMO 155

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

Background

1. This decision concerns an opposition brought by Aust-Asia Health Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of OZM EDUCATION & INTERNET PTY LTD (‘Applicant’): 

Application Number:

2108248

Filing Date[1]:

13 August 2020

Services:

Class 45: Immigration agency services (legal services); Provision of information in relation to migration and immigration services

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied. The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as AOZHOU MENG LIUXUE YIMIN which may be translated into English as OZM EDUCATION MIGRATION

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 4 February 2022 (‘SGP’).  The SGP raised grounds of opposition under ss 44, 58A, and 60.  The Applicant filed a Notice of Intention to Defend on 21 April 2022. 

4.  Neither Party filed any evidence in this matter.[2]  Following the failure of the Opponent to file any evidence in support, as is customary, this office sent a notice to the Applicant with a deadline to file evidence in answer.  This notice stated that if the Applicant wished to rely on evidence filed in the course of the examination (which the Applicant had done to secure acceptance of the application under s 44(4)) it must be filed as part of the evidence in answer.  The Applicant chose to file no evidence in answer and as such chose not to rely on the material it filed as part of the examination process.  

[2] The Opponent filed material with the SGP but it has been disregarded as it was not in proper form and was filed before the prescribed time period for filing evidence in support.

5.  Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result, the matter has been allocated to a delegate of the Registrar for a decision based on the written record. 

6.  In the Applicant’s request for a decision without hearing the Applicant provided additional written submissions.   The filing of a request for a decision without hearing does not entitle a party to file written submissions.  If the Applicant wished this office to have regard to any written submissions, then it was required to request a hearing by written submissions and pay the (higher) fee.  The submissions filed alongside the request are not considered to be part of the written record that I have had regard to in considering this opposition.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs other than the material specifically disclaimed.

   The Opponent

   8.  The Opponent has not filed any evidence and as such I have no information about it other than what is set out on the Register.  The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Services’.   The Opponent’s Trade Mark contains the following endorsement ‘The applicant has advised that the CHINESE characters appearing in the trade mark may be transliterated as AOZHOU MENG YIMIN GROUP which may be translated into English as AUSTRALIAN DREAM MIGRATION GROUP’.

Number	Trade Mark	Priority Date	Goods or Services
2030984	26 Aug 2019	Class 45: Advisory services relating to the law; Consultancy services relating to the application of legislation; Guardianship services; Legal consultancy services; Legal services; Legal services in relation to the negotiation of contracts for others; Migration agent services (immigration and immigrant services);

The Applicant

9.  The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

Grounds of Opposition, Onus and Standard of Proof

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

   11.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 44.[5]

   Discussion

   Section 44

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

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

2. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)             a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

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

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

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

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

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

4. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  In the present case, as the Applicant has provided no evidence in this proceeding, there is no evidence before me of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper and hence it is not necessary to consider these provisions.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is registered for migration agent services which are the same or similar services to the Applicant’s Services.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

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

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

   [6] [1963] HCA 66, [12].

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

8. On a side-by-side comparison there are clear differences between the marks including the additional element OZM EDUCATION MIGRATION. I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

9. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

   [7] Ibid [13].

10. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[8] at [49]; Australian Woollen Mills[9] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[10] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[11] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[12]

    [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [12] [2012] FCA 1022, [37]-[46].

11. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[13]:

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[14]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[15], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[16]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[17]

    [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [14] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

    [15] TM Act, s68

    [16] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

    [17] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

12. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[18]

    [18] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

13. I find that the trade marks are deceptively similar.  The first 5 Chinese characters in each mark are 澳 洲 梦 移 民 which, as noted in the respective endorsements, transliterate to ‘aozhou meng yimin’.  Aozhou Meng means ‘Australian dreams’. Yimin means migration.  The additional characters in the Trade Mark translate to ‘to study abroad’ and hence are descriptive of the services offered under the Trade Mark.  While the Trade Mark does contain the additional English elements OZM EDUCATION MIGRATION, the terms educational migration are descriptive of the services and in the context of the marketplace for the Applicant’s Services (immigrants, presumably with Chinese background and potentially with limited command of English) it is likely that many users of the Applicant’s Services will focus on the Chinese characters and in particular the distinctive Chinese characters 澳 洲 梦 移 民 which are shared between both marks.  Ultimately the impression given by both the Trade Mark and the Opponent’s Trade Mark in the context of the Applicant’s Services is around the concept of ‘Australian dreams’ or ‘Aozhou Meng’ and as such the marks are visually, aurally and conceptually similar.  For this reason, consumers would be likely, at least, to be caused to wonder whether the trade source of the Opponent’s Services and the trade source of the Applicant’s Services are one and the same.  The trade marks are deceptively similar. 

1. I find that the Opponent has established the ground of opposition under s 44.

   Decision

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

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   10 October 2023