Australian Educational Foundation v Pacific Gateway International College of Canada Inc

[2002] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Educational Foundation to registration of trade mark application 823020(41) - PACIFIC GATEWAY INTERNATIONAL COLLEGE - filed in the name of Pacific Gateway International College of Canada Inc.

Background

The applicant, Pacific International College of Canada Inc. of Vancouver, Canada, filed trade mark application number 823020 on 9 February 2000 ("the relevant date"). It is an application to register the words pacific gateway international college for services in Class 41: Language instruction and education.

The application was duly examined and accepted for registration. Its acceptance was advertised in the Australian Official Journal of Trade Marks on 26 October 2000.

On 25 January 2001, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), the opponent, Australian Educational Foundation of Brisbane in Queensland, filed a notice of opposition to the registration of 823020.

The opponent's evidence in support and the applicant's evidence in answer was duly served and filed.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 29 April 2002. Mr Rowan Lyndon of McCullough Robertson Lawyers of Brisbane appeared (by telephone link) for the opponent. Mr Gerard Skelly of Spruson & Ferguson Attorneys, of Sydney appeared for the applicant.

Grounds of Opposition

The opponent listed two grounds of opposition in its notice of opposition, as follows:

1. the Applicant's trade mark is similar to the Opponent's mark, which has acquired a reputation in Australia, and it is likely to deceive or cause confusion; and

2. the Applicant is not the owner of the Applicant's mark.

The first ground is pursuant to Section 60 of the Act, which provides:

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.

The second ground is pursuant to Section 58 of the Act, which provides that:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Evidence

Evidence in Support

The evidence in support comprised a statutory declaration by Leeann O'Brien, the Academic Director of the opponent. Ms O'Brien has held that position since July 2000, and has been associated with the opponent since 11 November 1995 as Academic Co-ordinator and Program Director.

In the declaration, Ms O'Brien states that the opponent's mark has been used in Australia since about March 1995, in respect of educational services. Such use has included advertising in newspapers and other publications, on campus signage and buses and on merchandise (such as shirts), brochures, letterhead, business cards and other promotional material.

Ms O'Brien states that the opponent has applied to register international pacific college as a trade mark in Australia under application number 849349. The application is in Class 41, for educational services.

Ms O'Brien detailed the opponent's student intake, value of enrolment fees, and expenditure on advertising and promotion for the years (ending 31 March) 1997 to 2000. Annexed to the declaration were exhibits A to H, showing examples of the opponent's use of its mark.

Ms O'Brien also declared her belief as to the reputation of the opponent and that there was a likelihood of deception or confusion between the competing marks.

Evidence in Answer

The evidence in answer comprises a statutory declaration by Natsuki Takahashi, the President of the applicant. He states that he has been associated with the applicant since 24 January 1994, and President of it since 2 September 1999.

Mr Takahashi advises that the applicant has used its pacific gateway international college mark continuously since 1994 in relation to English language instructional services provided out of campuses in Vancouver, Victoria and Toronto in Canada, and Brisbane since 2000.

Mr Takahashi's declaration annexes exhibits A to P, showing enrolment details, courses offered, revenues derived from courses, and numerous promotional brochures. These exhibits are in respect of both the applicant's Canadian operations and its Brisbane operations.

Mr Takahashi states that he is unaware of any instances of students being confused with the educational services offered by the applicant and the educational services offered by the opponent.

Considerations and Findings

Ground 1: Section 60 - Reputation

To satisfy section 60, the opponent has the burden of establishing the following elements:

(a)       a pre-existing trade mark;

(b)substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

(c)the acquisition of a reputation in Australia by the pre-existing trade mark; and

(d)a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

The first matter to be resolved, therefore, is whether there is a pre-existing trade mark and, if so, what it is.

The opponent submits that the international pacific college mark has been used in Australia since at least 1996. The opponent points to the evidence showing use of the mark in advertising in newspapers and other printed publications, on the opponent's campus signage and buses, and on merchandise (such as shirts and caps), brochures, letterhead, business cards and other promotional material.

Mr Skelly contends that the mark actually shown by the evidence to be used is a composite device and word mark, comprising a shield logo and the words international pacific college australia. He submitted that any comparison should be between international pacific college australia and pacific gateway international college.

Having regard to the evidence in support of the opposition, I agree with the applicant that the mark actually used by the opponent is international pacific college australia. However, if I be wrong, for comparison purposes I shall also consider the mark international pacific college. One or both of these marks pre-exists the applicant's mark.

The next issue to determine is whether pacific gateway international college is substantially identical with, or deceptively similar to, international pacific college or international pacific college australia.

The proper comparison for substantial identity is side by side, having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, at 414.

The parties agreed that the competing marks contain the words, 'international' 'pacific' and 'college', and that the difference between the marks is the sequence of words and the presence of the word gateway in the applicant's mark. Another difference between the mark, according to the applicant, is the presence of 'australia' in the opponent's mark.

The opponent submitted that the total impression that emerges is one of resemblance and the competing marks should, therefore, be considered to be substantially identical.

The applicant suggested that the different order of the common words was sufficient to create a total impression of dissimilarity, with the further significant difference of the word 'gateway' increasing the dissimilarity. My attention was drawn to Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049, where Gummow J found that, while there was no material difference between fun ship and funship, fun ship was substantially different to sitmar's funship and fairstar the funship. My attention was also drawn to Winton Shire Council v Lomas [2002] FCA 288 (20 March 2002), where Spender J expressed the view that the waltzing matilda centre and waltzing matilda centenary celebrations were not substantially identical to waltzing matilda.

I concur with the applicant's submissions regarding substantial identity. Guided by the authorities cited I find that pacific gateway international college is not substantially identical with either international pacific college or international pacific college australia.

The tests for deceptive similarity lie in the words of Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, supra:

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 television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said:

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 High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 said that deceptive similarity is established if:

[t]here is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.

As to what is meant by "a number of persons", I note that in a recent decision of this Office, Kellogg Company v Exxon Corporation, (2001) ATMO 67, Hearing Officer Williams made the following observation in this regard:

In Registrar of Trade Marks v Woolworths, supra, French J said something of s 44 that is, with modification, applicable to s 60. That was, deleting words that are inappropriate to s 60:

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 ... 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.

I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a mere handful of people would be left in doubt. Firstly, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the " ordinary" person must be a "reasonable" one. Secondly, the formulation requiring that the number of people affected by doubt or confusion be " substantial" has been repeatedly endorsed. The onus has shifted, but not the benchmark. The latter comes from Smith Hayden's Application and Kendall Company v Mulsyn Paint and Chemicals, where Kitto J repeated and expanded what he said in Southern Cross. He added the reference to " substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

There was no material difference between the parties' understanding as to the principles applicable in determining this issue. There was, however, a marked difference in their application of the principles to the facts of the case.

Mr Lyndon’s submissions highlighted the doctrine of imperfect recollection. Other factors to be considered in respect of this included the idea conveyed by the marks, one mark being contained within the other, the descriptiveness of the marks, the type of customer, and the type of goods and services.

Mr Lyndon submitted the following to be considered for determining deceptive similarity:

1. The applicant's mark pacific gateway international college incorporates the opponent's international pacific college mark in full.

2. The idea engendered by both marks is that of an international educational institution based in the pacific region.

3. The majority of prospective purchasers are likely to be foreign students with a limited grasp of English.

4. Both the applicant and opponent are offering educational services, a core component of which is the provision of instruction in English.

5. In view of the type of customers attracted, and the nature of services typically offered by the applicant and the opponent, prospective purchasers of those services would not view the competing marks with the same level of care as a person who is fluent in English.

6. In the above circumstances, the likelihood someone who knows of the applicant's mark, and has a possibly imperfect recollection of it, is likely to confuse it with the opponent's mark is great.

7. While both of the competing marks are descriptive, this does not affect the possibility of deception or confusion.

Mr Skelly stressed that the question of deceptive similarity must be considered in respect of all services coming within the specification in the application and in respect of which registration is desired, not only in respect of those services on which it is proposed immediately to 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.

Mr Skelly submitted that in the context of the provision of language instruction and education services, the acquirers of those services are likely to be particularly discerning. The decision to attend a particular educational institution, it was submitted, is usually made after a careful analysis of what a particular course has to offer.

Mr Skelly further submitted that since the opponent’s mark comprised words that are individually descriptive and non-distinctive, three of which are in common with the applicant’s mark, the ordinary consumer is likely to pay more attention to other features contained in the respective marks. The marks are aurally and visually different due to the presence of the word gateway in the applicant’s mark and the differing arrangement of the words “International” and “Pacific”. It was submitted that the applicant’s mark was more likely to be recalled by reference to the words pacific gateway. The mental association with gateway was said to be significant as a memory cue in recalling the applicant’s mark and reducing the risk of confusion with the opponent’s mark(s).

There is merit in both the opponent's and the applicant's submissions on the question of deceptive similarity of the marks, and I have been assisted by the authorities cited by the representatives of both parties. However, in applying the relevant tests to the competing marks (including both versions of the opponent’s mark), I find I cannot share Mr Lyndon’s opinion that deceptive similarity between them has been demonstrated.

I am satisfied that marks are aurally and visually different for the reasons stated by Mr Skelly, and that the applicant’s mark is more likely to be recalled by reference to the words pacific gateway. I agree with Mr Skelly that the mental association with gateway is significant as a memory cue in recalling the applicant’s mark and reducing the risk of confusion with the opponent’s mark(s).

Having found that the competing marks are visually and aurally different, a common idea conveyed by competing marks is not relevant: Sports Cafe Ltd v Registrar of Trade Marks (1998) 42 IPR 552. In any event, I do not think the competing marks convey common ideas.

I am also of the opinion that the potential acquirers of the services in question are more likely to possess the levels of discernment suggested by the applicant than those suggested by the opponent.

Taking all of the above factors into account, I find that the competing marks are not deceptively similar within the meaning of the Act.

Having found the marks are not substantially identical or deceptively similar it is unnecessary for me to discuss the reputation of the opponent’s mark. However, for completeness, I find that I am not satisfied that the opponent has adduced sufficient evidence to establish that it had acquired a reputation in Australia before the relevant date.

The Section 58 Ground

Ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of a substantially identical trade mark, in respect of "the same kind of thing", before the priority date of the application: Re Hicks' Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines Inc v Sitmar Cruises Ltd, supra.

I have already concluded that the contested marks are not substantially identical. Therefore, this ground is not made out.

Decision

The opponent has not established either of its grounds of opposition. Therefore, the applicant's trade mark may proceed to registration unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

Both parties sought their costs.

The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer
Trade Marks Hearings
29 July 2002