Austexx Pty Ltd v D.F.O Pty Ltd

[2011] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Austexx Pty Ltd to registration of trade mark applications 1287184(36) and 1296184(40) - DFO - filed in the name of DFO Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Mr. Ben Fitzpatrick of counsel instructed by Mr. Tony Lolis of Davies Collison Cave Patent and Trade Mark Attorneys.

Applicant: No representation or written submissions.

Decision:

2011 ATMO 93

S52 oppositions: Grounds pursued under ss 44, 59 and 60 - section 44 established in relation to both applications - costs awarded against applicant.

Background

1. DFO Pty Ltd (‘the applicant’) applied to register the trade mark DFO in two classes under two separate applications. The current details of the applications are as follows:

Trade mark application no. 1287184

Trade mark application no. 1296184

DFO

DFO

Priority date: 27 February 2009.

Acceptance advertised 2 July 2009

Priority date 27 April 2009.

Acceptance advertised 27 August 2009

Class 36: Administration of insurance business; arranging of insurance; financial services; providing information, including online, about insurance, financial and monetary affairs.

Class 40: Butchery (meat preparation); food and drink preservation; food and drink processing (for others); food grinding; food processing (other than cooking); freezing of foods; preservation of food; processing of cooked foods; smoking of meat; treatment of cooked foods.

1. Originally, application 1287184 had also claimed ‘real estate affairs’ and application 1296184 had also claimed a range of food items in class 29. The applications were amended during examination after a number of the opponent’s registered trade marks were raised as barriers to acceptance under section 44. After deletion of those services and goods, the applications were accepted for possible registration.

2. The acceptances were advertised in the Australian Official Journal of Trade Marks on the dates specified in the above table. Subsequently Austexx Pty Ltd (‘the opponent’) opposed both applications, nominating most grounds available under the Trade Marks Act 1995 (‘the Act’). I note that the registrations relied upon by the opponent have subsequently been assigned to Colonial First State Property Limited, however the opposition proceeds in the name of Austexx Pty Ltd. The evidence in support of the opposition to 1287184 consists of the statutory declaration of Geoffrey Gordon Porz, dated 17 December 2009 with exhibits GGP-1 to GGP-11. The evidence in support of the opposition to 1296184 consists also of a statutory declaration of Geoffrey Gordon Porz (similar to that previously mentioned but not entirely the same), dated 17 December 2009 with exhibits GGP-1 to GGP-11. The applicant did not serve and file evidence in answer.

3. Prior to the hearing, the opponent indicated that it intended only to pursue the grounds of opposition under sections 44, 59 and 60 of the Act. For completeness I find the remaining grounds lists in the Notice of Opposition have not been established. I heard the matter in Canberra on 15 June 2011 as a Delegate of the Registrar of Trade Marks. Mr. Ben Fitzpatrick, of counsel, instructed by Mr. Tony Lolis of Davies Collison Cave Patent and Trade Mark Attorneys appeared for the opponent. The applicant did not make an appearance at the hearing, or file any written submissions.

Onus and Reasons

1. The opponent bears the onus of establishing to my satisfaction one of the grounds of opposition nominated in the notice of opposition on the balance of probabilities[1].

   [1] Pfizer Products v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, 22-27.

Section 44: Identical etc trade marks

1. The relevant provisions of section 44 are:

   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.

2. The opponent is a property development company which constructed, owned and operated (at the time of declaration) the well-known DFO centres in various locations around the east coast of Australia. Mr. Fitzpatrick, on behalf of the opponent, referred to a number of the opponent’s trade mark registrations containing or comprising the letters DFO in classes 35 and 36 and submitted they were either substantially identical or deceptively similar. Relevant details of these are as follows:

TM No. 893191 Priority date: 25/10/01

Trade mark:

Class 35: Retail services; business administration; management and advertising services supplied to members of an aggregation of retailers in a shopping environment.

Class 36: Leasing of retail and other commercial premises.

TM No. 953103 Priority Date: 9/5/03

Trade mark: DFO

Class 35: Retail services; business administration; management and advertising services supplied to members of an aggregation of retailers in a shopping environment.

Class 36: Leasing and management of retail and other commercial premises.

TM No. 1044759 Priority date: 4/3/05

Trade mark:

Class 35: Department store and retail store services relating to the sale of various goods including…food and drink…; sales promotion (for others) for department stores, sales promotion (for others) for retail stores; sales arranging and agency relating to the aforesaid goods; business administration, assistance, management and advertising services including such services provided to a group of retailers in a shopping centre or department store environment.

Class 36: Rental, leasing and management of real estate including retail and other commercial premises.

1. I note that each of the registrations upon which the opponent relies has an earlier priority date than that of the opposed applications. In terms of section 44 of the Act it thus remains to be decided if the services involved are similar services and whether the trade marks in question are substantially identical or deceptively similar. It is appropriate to consider first any similarity of services, as expressed by French, J in Registrar of Trade Marks v Woolworths[2]:

   Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question in logically antecedent to the determination whether the trade mark in respect of the services is deceptively to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second…

   [2] Registrar of Trade Marks v Woolworths [1999] FCA 1020, at [39].

2. The applicant’s services include those I will broadly describe as insurance administration and arrangement, financial services, butchery and food processing. Due to the very disparate nature of the services specified in the applications, it is appropriate to consider each separately.

3. The test for determining goods of the same description was set out in Jellineck’s application[3] and has been expanded upon in a number of judicial decisions[4]. The principle factors may be summarized as an assessment of the nature of the goods, their use and purpose, and the trade channels through which they are provided. It has been accepted that these principles can be applied to a determination of similar services, subject to any necessary modification[5].

   [3] Jellineck’s application (1946) 63 RPC 59, at 70-72.

   [4] See for example John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden [1945] HCA 12; (1945) 70 CLR 84 and Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited [1953] HCA 73; (1954) 91 CLR 592.

   [5] MID Sydney Pty Limited v Australian Tourism Co Limited (1998) 42 IPR 561.

4. The services in respect of application 1287184 are “administration of insurance business; arranging of insurance; financial services; providing information, including online, about insurance, financial and monetary affairs”. Mr. Fitzpatrick, on behalf of the opponent, submits that the administration of insurance business and arranging of insurance are central to the provision of business administration, management and assistance. He also submits that financial services and the provision of information about insurance, financial and monetary affairs are directly covered by the opponent’s business administration, assistance, management and advertising services. For completeness I note that the opponent’s management and advertising services are limited, in registrations 893191 and 953103, to those “supplied to members of an aggregation of retailers in a shopping environment”. However no such limitation exists for those services in registration 1044759 as the description reads “including such services provided to a group of retailers….” (my emphasis).

5. In considering the intrinsic nature of the services and the trade channels through which they are delivered, I am not convinced that the applicant’s insurance-related services are similar[6] to the opponent’s business-related services. The applicant’s insurance-related services would include the preparation of insurance documents, claims processing, ensuring payments are made, and the like. They may also extend to the management or direction of an insurance business - the widest interpretation of “administration of insurance business”. In any event, whilst these services may be an adjunct to business administration, assistance and management, I consider that they are incidental only and not of the same essential nature[7]. However if I am wrong in this, I do not consider it affects the outcome of these proceedings due to the other services claimed by the applicant, discussed below.

   [6] As defined in section 14(2) of the Act.

   [7] As in MID Sydney, supra, wherein the performance of services incidental to managing a hotel but which, nonetheless, were akin to property management, did not result in ‘hotel management services’ and ‘property management services’ being considered services of the same description.

6. The applicant’s remaining services include the description “financial services; providing information…about…financial and monetary affairs”, and the opponent’s services include the description “business administration, assistance, management and advertising services…” Both descriptions are very broad, encompassing a multitude of services including many which one would reasonably expect to originate from the same trader under the same trade mark. Examples of services that fall under each description respectively are: financial reporting and accountancy, financial evaluations and business appraisals, or financing advice and business advice. Others may hold the character of both financial and business services, including taxation advice and preparation, insolvency services, and economic forecasting and analysis. I am aware from my own experience that it is not unusual for professional services businesses, such as KPMG or PricewaterhouseCoopers, to provide all of the above under the same name. Business and finance are inexorably linked, and the inherent nature of many of the services falling within each party’s broad descriptions are similar or the same, as are the trade channels through which they are provided. Assuming notional use[8] I consider the services in question to be of the same description, and accordingly that the consuming public would be likely to be deceived or confused as to their origin if they were provided under the same or similar trade marks.

   [8] ‘Notional use’ being use in respect of all services coming within the specification of services in a registration or application. See for example Registrar of Trade Marks v Woolworths, supra; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 51; (1973) 129 CLR 353.

7. In determining similarity of marks, a side by side comparison of the applicant’s and opponent’s trade marks in accordance with the test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust)[9] is appropriate in the first instance:

   [the trade marks] 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.

   [9] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) CLR 407 at 415.

8. Applying the above test, I find that the opponent’s trade mark registration 953103 is substantially identical to that applied for by the applicant. However the addition of rectangular backgrounds with ‘handles’, reminiscent of shopping bags, together with the words ‘Direct Factory Outlets’, substantially affects the identity of trade mark numbers 893191 and 1044759. In a side by side comparison, they are therefore visually distinct.

9. Trade marks which are neither identical nor substantially identical may still be deceptively similar to each other. In Shell Co., supra, Windeyer J observed:

   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 the recollection of the plaintiff’s mark, that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [mark].

10. Additionally, Kitto J noted in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd[10]:

    It is sufficient if the result of user of the mark will be that a number of persons will be caused to wonder whether it may not be the case that the two products came from the same source. It is enough if the ordinary person entertains reasonable doubt.

    [10] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR, at 594, 595.

11. The essential and most memorable feature of the opponent’s registered trade marks 893191 and 1044759 are the letters DFO, the same letters which comprise the only feature of the applicant’s mark. They are contained within contrasting rectangular backgrounds, atop of which are curved lines reminiscent of the handles of shopping bags and at the bottom of which appear the words ‘Direct Factory Outlets’. The size of the letters DFO gives them particular prominence, whereas the device elements are secondary to them and the words ‘Direct Factory Outlets’ are subordinate. The impression based upon a recollection of the opponent’s marks that persons of ordinary intelligence and memory would have is that of ‘DFO’, and the impression that such persons would have of the applicant’s trade mark is the same. Similarly despite the opponent’s marks embodying a number of other features, the names under which the services would be known and asked for in the market are the same[11], again being ‘DFO’. I am therefore satisfied that the overall impression is one of resemblance and consumers would be caused to wonder whether the services provided under the trade marks come from the same source.

    [11] American Trading & Shipping Co. Ltd’s Appn (1936) 6 AOJP 78.

12. Accordingly I find that the services in respect of application 1284184 are similar to those of the opponent’s, and that the trade marks in question are deceptively similar. The opponent has therefore been successful in its opposition under section 44 to trade mark application 1287184.

13. The services in respect of application 1296184 are “Butchery (meat preparation); food and drink preservation; food and drink processing (for others); food grinding; food processing (other than cooking); freezing of foods; preservation of food; processing of cooked foods; smoking of meat; treatment of cooked foods”. The opponent’s registrations 893191 and 953103 include “retail services” and registration 1044759 includes “department store and retail store services relating to the sale of various goods including…food and drink…” Mr. Fitzpatrick made submissions that the opponent’s department and retail store services are not limited to any particular type of food and must therefore encompass all types, including raw and processed meats. I agree with him in this respect - bearing in mind notional use[12], the department and retail store services relate to an unlimited range of foods.

    [12] Registrar of Trade Marks v Woolworths, supra; Berlei Hestia Industries, supra

14. The Porz declaration also comments that DFO centres include food courts from which shoppers may purchase a range of food and drinks including sushi, pizza, coffee and the like, and emphasizes his concern that should the applicant be successful they would then be able to provide butchery services or food products throughout Australia under an identical trade mark. However it must be kept in mind that the comparison is not between end products and the sale of those end products, but between two sets of services. If the applicant was conducting its claimed services on its own behalf in order to sell its end products to the consumer, then these are not services within the meaning of the Act as they are not ‘in the course of trade’[13].

    [13] Section 17 of the Act defines a trade mark as “a sign used, r intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (my emphasis).

15. The relevant question to resolve is whether the nature, purpose, trade channels, markets or any other factors relating to butchery and various food processing services, on the one hand, and the sale of food and drink in department and retail stores, on the other, would give rise to a tangible risk of confusion if provided under similar trade marks.

16. ‘Food and drink processing’ involves any process which transforms food and drinks from one form to another, and by default includes all of the services claimed within the application. One could perhaps conclude that large scale food processers such as canneries, grain mills, abattoirs or freezing plants are directed at different markets with different trade channels to department and retail stores selling foods, and there is therefore little risk of confusion (although I make no finding that this is the case). However ‘food and drink processing’ is not an industry occupied only by large scale commercial operations. Thus butchers, cheesemakers, chocolatiers, coffee and nut roasters, juicers and wine makers are all part of the food and drink processing industry. I consider it likely that consumers would mistakenly assume a connection between, for example, a store identified by a particular trade mark that sells meat, and a trader providing butchery services under a similar trade mark. The same would apply to a store selling coffee and a trader providing coffee roasting services, or a store selling cheese and a trader’s cheesemaking services.

1. I will not repeat the tests for substantial identity and deceptive similarity here, however in applying them I consider again that the applicant’s mark is substantially identical to 953103 and deceptively similar to 893191 and 1044759. I therefore find that a real and tangible danger of confusion exists between the trade marks of the two parties. As such the ground of opposition under section 44 in relation to application 1296184 has been established.

2. Having found in favour of the opponent in terms of section 44 of the Act, in relation to both applications, it is not necessary to discuss the other grounds of opposition pursued. However these grounds, or any others, may also be relied upon in the event of an appeal from this decision.

Decision and costs

1. Subsection 55(1) of the Act provides:

   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.

2. As the opponent has established a ground of opposition under the Act, the applicant has been unsuccessful in this matter and I refuse to register trade mark applications 1287184 and 1296184.

3. Costs normally follow the event and as the opponent has been successful, it is entitled to an award of costs. I therefore award costs against the applicant in accordance with the official scale within Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth

Hearing Officer

Trade Marks Hearings

19 September 2011