Australian Institute of Management v The Australian Institute of Music Ltd

[2021] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Institute of Management to registration of trade mark application 1686629 (16, 41) – AIM – in the name of The Australian Institute of Music Limited

Delegate:

Nicholas Smith

Representation:

Opponent: McCullough Robertson Lawyers

Applicant: Simpsons Solicitors

Decision:

2021 ATMO 23

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 43, 44, 58, 58A, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Australian Institute of Management (ACN 004 525 017) (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of The Australian Institute of Music Limited (‘Applicant’): 

Application Number:	1686629
Filing Date:	10 April 2015
Goods and Services:	Class 16: Educational materials in printed form; educational materials in written form; teaching materials for education; printed material; all the aforementioned goods relating to music, music theory, music entertainment, music performance, music recording, music production, sound engineering and/or audio technology, art, humanities Class 41: Music, art, humanities academies (education); music, art, humanities academy education services; adult education relating to music, art, humanities; advisory services relating to music, art, humanities education; arranging of exhibitions for music, art, humanities educational purposes; music, art, humanities career counselling (education or training advice); music, art, humanities career information and advisory services (educational and training advice); conducting of music, art, humanities educational courses; music, art, humanities education information; music, art, humanities education services; higher education services relating to music, art, humanities; musical education services; publication of music, art, humanities educational materials; musical performances; musical entertainment services; musical instruction services; music-halls; organisation of musical events; production of audio and/or video recordings; production of music; providing online electronic publications (not downloadable) relating to music, art, humanities; provision of recording studio facilities; publication of music, art, humanities multi-media material online; publication of music; recording of music; recording studio services; music, art, humanities teaching; music, art, humanities training; music, art, humanities tuition; university services relating to music, art, humanities (‘Applicant’s Goods and Services’)
Trade Mark:	AIM	(‘Trade Mark’)

2.  Following the advertisement on 22 June 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 August 2017 (along with a Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend and the evidence stages followed.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party requested a hearing, the matter came before me for a decision on the written record. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act 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. 

4.  This record consists of the Notice of Opposition filed on 22 August 2017, any written submissions filed and the following evidence:

Evidence in Support

• Declaration by Danielle Hussey, Senior Attorney at the Opponent’s representative, dated 13 February 2019 (‘Hussey Declaration’) together with Exhibits 1 to 6.

Evidence in Answer

• Declaration by Sebastian Tonkin, lawyer at the Applicant’s representative, dated 29 May 2019.  This declaration simply notes that in response to the second adverse examination report provided by IP Australia, the Applicant filed a Confidential Statutory Declaration of Guy Julian Charles Bentley (then the Applicant’s Chief Executive Officer) dated 6 May 2017 in support of the application (‘Bentley Declaration’) together with Annexures GB-1 to GB-19 and encloses that declaration.
• Declaration by Jerry Siden, Director of Sales and Marketing of the Applicant dated 21 May 2019 (‘Siden Declaration’) together with Annexure JS-1.
• Declaration by Graham Ian Hurwitz, director of the Applicant, dated 15 May 2019 (‘Hurwitz Declaration’).

1. Both the Applicant and the Opponent have made declarations that their evidence, being the Hussey Declaration and the Bentley Declaration, including publicly available information such as the parties’ public use of its trade marks, is confidential to the respective parties.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

   6.  I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in this decision, I have disclosed information that is sensitive, then this is a problem that has arisen by the parties not specifically and properly identifying that information as sensitive.

   7.  I also note my concern with a number of statements made in the Hussey Declaration.  Ms Hussey is a Senior Attorney at the Opponent’s representatives and, absent any specific explanation (none having been provided) would not be expected to have a direct level of knowledge of the Opponent’s business.  However the Hussey Declaration makes statements such as ‘The Opponent has used Australian Institute of Management and AIM as trade marks in relation to the provision of education and training services throughout all states and territories of Australia, from 1961 through to the present day’ and ‘The Opponent has used the Opponent’s Trade Marks, in relation to the goods and services nominated under each trade mark registration, since at least the filing date of each respective registration, if not longer’.  These very broad statements are not supported by any material attached to the Hussey Declaration, nor are they statements that I would expect the Deponent would have the direct personal knowledge to make.  The Deponent does not provide any reference to notes or other materials that she has had access to that enable her to make these statements, nor does she identify in any way any individual with direct knowledge who has provided her with information enabling her to make these statements.  In short, these statements amount to unsupported assertions that I would not expect a party’s representative to make, and have been discounted accordingly.

2. The Opponent is the registered owner of the Australian trade marks set out in the table at Annex 1 (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the (‘Opponent’s Goods and Services’).

   Grounds of Opposition, Onus and Standard of Proof

3. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 59, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   10.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 10 April 2015 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

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

   Discussion

   Section 44

   11. To establish the s 44 ground what is required is a mark that has been filed under the Trade Marks Act 1995 (Cth) earlier than the Trade Mark (‘the first requirement’).  That earlier mark must be deceptively similar or substantially identical to the Trade Mark (‘the second requirement’) and claim similar or closely related goods and 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) of the Act, 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.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  The Word Mark is identical to the Trade Mark, and, being registered for all goods in class 16, is registered for similar goods.  I also find that the Device Mark, being registered for training and educational services in class 41, is registered for similar services to the Trade Mark, which is sought to be registered for a more narrow range of training and educational services.  Notwithstanding the presence of the additional words and elements in the Device Mark compared to the Trade Mark (the respective marks are set out below), I find that, while the marks are not substantially identical (the Device Mark containing the circular device element and words ‘Australian Institute of Management’) AIM letters are an essential feature of the Device Mark and there is a real tangible danger that a consumer who is familiar with the Device Mark when viewing the Trade Mark will be caused to wonder if the services provided under the Trade Mark and the Device Mark are from the same source.

6. I find that the Opponent has satisfied the three requirements set out in paragraph 9 above with respect to the Word Mark, Device Mark (and incidentally, Trade Mark No. 1403111), as the Word Mark is identical to the Trade Mark and the Device Mark and 1403111 are each deceptively similar to the Trade Mark.

   AIM   

   Subsection 44(3)(a): Honest Concurrent Use

   15.     In McCormick & Co Inc v McCormick[5] Kenny J stated:

   [5] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

   16.     The first McCormick criterion concerns the honesty of adoption of the Trade Mark.  In the present case, the Applicant has provided clear evidence in the Bentley Declaration that it adopted the Trade Mark in 1991 honestly and without awareness of the Opponent’s trade marks.  Furthermore, it is completely plausible that the Applicant (like I suspect the Opponent) would adopt the mark in good faith; it is an acronym of the Applicant’s name (and the Opponent’s name). 

   17.     With respect to the second McCormick criterion, the Trade Mark has been used continuously and concurrently with the Word Mark and Device Mark since 1991, almost 25 years at the relevant date (and concurrently with Trade Mark No. 1403111 since its adoption, which was 2011 or earlier).  Sales by the Applicant under the Trade Mark have been very high, especially given the limited scope of the Applicant’s Goods and Services.  The level of advertising featuring the Trade Mark is also correspondingly high.

   18.     When considering the degree of confusion likely to ensue (the third McCormick criterion) I note that this is a case where the respective trademarks fall into the category of ‘triple identity’, which the Trade Marks Office Manual of Practice and Procedure defines as those cases involving ‘trade marks which are identical or substantially identical and used for the same goods/services in the same geographical area (namely Australia)’. There is therefore a high risk of confusion inherent in the respective marks.

   19.     With respect to the fourth McCormick criterion, there is no evidence before me of any instances of confusion between the marks, noting that the Applicant provided declarations from multiple individuals who give specific evidence that they are not aware of any confusion.  This may be expected given the different business markets the parties operate in; notwithstanding the similar goods the marks are registered/sought to be registered for.  The Applicant provides music education and related goods and services and the Opponent is an education and training provider focusing on management and business education. 

   20.     With respect to the relative inconvenience to the parties if the Trade Mark were to proceed to the registration (the final McCormick criterion), while I am aware that the parties have had disputes, I have no specific evidence before me of any inconvenience to the Opponent if the Trade Mark were to proceed to registration as there is no evidence before me of any confusion arising between the respective marks. 

   21. While the process of assessing honest concurrent use is not a mechanical calculation of the five factors set out in paragraph 17, I find that while confusion is inherently likely due to the ‘triple identity’ of the respective marks, the fact that the Applicant has extensively used the Trade Mark for almost 30 years without any evidence of confusion (possibly due to the different educational services offered by the Applicant and Opponent) persuades me that this is a case where it is appropriate to apply the provisions of s 44(3)(a) of the Act and accept the registration of the Trade Mark, notwithstanding that the requirements under ss 44(1) and (2) have been satisfied.

7. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

8. Section 60 of the Act is reproduced below:

   Section 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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

9. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[6]

   [6] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

10. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and, on the basis of, the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[7]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [7] [2000] FCA 1335, [81].

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]

    [8] (1992) 33 FCR 302, 343.

11. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]

    [9] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

1. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[10] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   [10] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[11]

   [11] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

2. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[12]

   [12] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

3. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   One or more trade marks had, before the priority date of the opposed application, acquired a reputation in Australia and, as a result of that reputation, use of the opposed application is likely to deceive or cause confusion.

   Specifically, the opponent has used the Opponent’s trade marks and the name AIM, in Australia to a significant extent and established a significant reputation to the Opponent’s trade marks and the name AIM, in relation to the Opponent’s Goods and Services.

   Given the opponent’s reputation to the Opponent’s trade marks and the name AIM, in respect of the Opponent’s Goods and Services, use of the opposed application by the opponent, is deceive or cause confusion in the Australian marketplace.

4. While noting that the Opponent has failed to precisely identify which of the Opponent’s Trade Marks was used in which context in which time, I have no difficulty in finding that the Opponent has established a reputation in the Word Mark at the relevant date.  The Opponent was established in 1961 and its predecessor in business first used the Word Mark in 1941.  The Opponent has used its Word Mark (by itself or with additions or alternations that do not sufficiently affect the identity of the Word Mark) in connection with its education and training services (for over 20,000 people annually) throughout Australia and online. 

5. However, I am not satisfied that the Opponent has established a reputation in the Word Mark (or any of the other Opponent’s Trade Marks) in respect of all the goods and services that comprise the Opponent’s Goods and Services.  The Opponent is a specialised entity that provides training in management and management-related areas and I find that any reputation it has in the Word Mark (or any of the other Opponent’s Trade Marks) is limited to education and training services in the field of management.

6. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   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 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 observations of men considered in the mass affords the standard.[13]

   [13] (1937) 58 CLR 641, 658.

7. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.[14]

   [14] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[15]

   [15] [2012] ATMO 124, [40].

9. The Trade Mark and Word Mark are identical however the Applicant is seeking to register the Trade Mark for educational services (and related goods and services) relating to music while the Opponent’s reputation is limited to educational and training services in respect of management.  Educational courses are chosen with considerable care, usually through a website, course material (each of which would be clearly marked with the name of the provider) or through an academic advisor and it is highly unlikely that a consumer, upon seeing the Trade Mark being used in respect of music education, will be caused to wonder whether the Opponent, being a highly regarded management education and training business, will have expanded its offerings to include music education (this is particularly unlikely given the name of the Opponent).  I also note the evidence provided by the Applicant (and absence of evidence on this topic by the Opponent) suggesting that there have been no instances of confusion between the respective marks, notwithstanding that the Trade Mark and Word Mark (and the other Opponent’s Trade Marks) have been extensively and concurrently used for almost 30 years.  While noting the marks are identical, the evidence before me does not satisfy me that by reason of the Applicant’s reputation in the Word Mark for management training and education services, the use of the Trade Mark for the Applicant’s Goods and Services will deceive or cause confusion.

10. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 43

    37. Section 43 of the Act is reproduced below:

    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.

11. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [16]

    [16] [2006] FCA 1663; (2006) 70 IPR 599, [53].

12. In Winton Shire Council v Lomas Spender J said:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [17]

13. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

    The opposed trade mark is visually, conceptually and phonetically similar to the Opponent’s trade marks.  The opponent has established a significant reputation to the Opponent’s trade marks and the name AIM, in Australia.

    Due to the Opponent’s reputation, the opposed trade mark application connotes and suggests a connection, sponsorship, approval or affiliation with the Opponent’s trade marks and the opponent’s reputation in the name AIM, in Australia.

    Therefore, due to a connotation contained within the opposed trade mark, the opposed trade mark application should be rejected.

14. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own trade mark or confusion between the Trade Mark and the Opponent’s Trade Marks. 

    [17] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

15. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods and Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

    Section 58 – Applicant not owner of trade mark

    43. Section 58 of the Act is reproduced below:[18]

    [18] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

    Section 58. Applicant not owner of trade mark

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

    Note:For applicant see section 6.

    44.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[19]

    · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods/services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[20] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[21]

    [19] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [20] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    [21] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

    45. The ground based on s 58 of the Act was particularised in the SGP as follows:

    The opponent adopted the Opponent’s trade marks and the name AIM, and has used these trade marks in relation to the following:

    Class 9: Pre-recorded compact discs, CD-ROMs, DVD's, videos, or other media on which data, information and/or images may be stored and/or reproduced, all containing education and/or information relating to the management, administration, conduct or promotion of businesses; electronic publications (downloadable) including electronic publications sold and distributed online; documentaries, publications, magazines, journals, newsletters, videos, books and booklets in electronic form supplied on-line from a database or from facilities provided on a global computer network (the Internet)

    Class 16: Books, booklets, magazines, journals, manuals, educational materials (in printed form) and other printed publications all being in relation to the management, administration, conduct or promotion of businesses; calendars and diaries; posters; cards, including greeting cards; stationery; office requisites in this class

    Class 35: Business management services; business organization services; business consultation excluding business training courses; assessment and comparison services; business management assistance and advice services; business management information and facility support services; business management representation services; advertising and promotional services, including services relating to the provision of advertising or promotional material over the Internet or broadcast by radio or television; market research services; providing an online business directory information service; retail, on-line retail, retail facilitation and wholesale services, including such services relating to educational materials, training materials, printed publications, office requisites and stationery; consultancy, advisory and information services relating to the aforementioned services

    Class 41: Educational and training services, including organizing, managing and/or hosting seminars, conferences and workshops all being in relation to the management, administration, conduct or promotion of businesses; publication and publishing services, including the publishing of magazines, journals, books, diaries, calendars, photographs, posters and manuals; on-line publication services including the publication of electronic magazines, journals, books, diaries, calendars, photographs and posters in both downloadable and non-downloadable form; entertainment services in this class; advisory, consultancy and information services in relation to the aforementioned services

    (the Opponent’s Goods and Services).

    As a result of the above use, the Opponent has established a significant reputation to the Opponent’s trade marks and the name AIM, prior to the priority date of the opposed trade mark.

    The opposed trade mark is substantially identical with the Opponent’s trade marks and the name AIM, and nominates goods of the same description, goods of a similar description, services of the same description and services of a similar description, to those of the Opponent’s trade marks.

    Therefore, the applicant is not the proprietor or the owner of the opposed trade mark and the opposed trade mark application should be rejected.

    46.     In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[22] stated as follows:

    The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[23]. In respect of goods it has been said to be confined to goods that are essentially the same, though they may differ in size, shape or name[24], or goods which may act as substitutes for one another.[25]

    …

    In respect of the Applicant’s services, I am not aware of any court authorities which discuss whether services may be “the same kind of thing” as goods, although the Registrar has at times considered the question. For example in The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Pty Ltd[26] the delegate considered the service of providing refreshments for immediate consumption (such as hot tea and coffee) not to be the same kind of thing as those goods in packaged, dry form to be later prepared for drinking. 

    [22] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14] and [16].

    [23] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

    [24] Colorado, supra, [14].

    [25] Canon Kabushiki Kaisha v Robert James Brook trading as the Cannon Watch Co [1996] FCA 756.

    [26] [2003] ATMO 61.

    47. For the reasons set out in paragraph 7 above, I am not satisfied that there is any evidence before me of the Opponent’s prior use of the Word Mark (or any other mark substantively identical to the Trade Mark) for any goods and services prior to the Applicant’s first use of the Trade Mark in 1991. The Hussey Declaration makes various statements as to use that are not ones that I would expect the declarant to be able to make and are not supported by documentary evidence. However the Opponent has registered two marks (the Word Mark and the Device Mark) with a priority date preceding the first use of the Trade Mark by the Applicant, for a broad set of goods and services in class 16 and 41 that wholly incorporate the Applicant’s Goods and Services. Notwithstanding the lack of evidence of use, as the Word Mark is identical to the Trade Mark the Opponent is the owner of the Trade Mark for the Class 16 goods for which it is registered. I do not find that the Opponent is the owner of the Trade Mark for the Class 41 services for which the Device Mark is registered, since, as noted under the s 44 ground of opposition, the Trade Mark is not substantially identical to the Device Mark.

    48. The present case raises an interesting question which is when a finding of honest concurrent use has been made under s 44(3)(a) of the Act, can this override the normal operation of s 58, which would be a finding that the Applicant, by reason of the Opponent’s registration of the Word Mark for the Class 16 goods, is not the owner of the Trade Mark for the Class 16 goods? The answer to this is that the statutory operation of s 44(3)(a) of the Act only applies under the s 44 ground, it has no bearing on s 58[27].

    [27] Tosca Travelgood (Aust) Pty Ltd v Samsonite IP Holdings Sarl [2015] ATMO 39, [44].

    49. However Burrell and Handler, in Australian Trade Mark Law, after concluding that the statutory exception in s 44(3)(a) does not apply to s 58, raise the following issue[28]:

    However, a second, quite different question is what bearing (if any) does a long period of concurrent use have on the question of whether the applicant is the ‘owner’ of the mark. Specifically, one issue that does not appear to have been canvassed in the cases is whether the notion of ownership in s 58 allows for ‘co-ownership’ by virtue of concurrent use. While this might at first seem like a fanciful suggestion, it must be remembered that the language of s 58 is intended to preserve a test of ‘ownership’ (or ‘proprietorship’) developed by the judiciary. Under earlier legislation honest concurrent use did provide an exception to a claim based on prior ownership. Indeed it might be noted that honest concurrent use has the same late nineteenth-century origins as the notion of proprietorship. To treat s 58 as being limited by a claim to honest concurrent use would not therefore represent a great stretch, and would be compatible with Parliament’s desire to preserve the test of ownership as a judge made doctrine.

    [28] Robert Burrell and Michael Handler, Australian Trade Mark Law (Oxford University Press 2^nd ed. 2016), 292-293.

    50. I note that the Act provides for registration of ownership not ownership by registration[29] however I have been unable to find any clear precedent on the exact question before me. However, noting the comments by Burrell and Handler above, in circumstances where the Applicant had used the Trade Mark in an honest, concurrent manner for almost 25 years at the relevant date, in a manner that would ordinarily establish common-law ownership of the Trade Mark, it would be a seemingly inequitable outcome to find that the Applicant entirely lacked ownership rights in the Trade Mark, notwithstanding the Opponent’s prior registration of the Word Mark for the Class 16 goods. By reason of the extensive evidence of the honest concurrent use of the Trade Mark I find that both the Opponent (by reason of its registration of the Word Mark) and the Applicant (by reason of its 25 years of use of the Trade Mark) are co-owners of the Trade Mark, under common law, for the Class 16 goods. As such I cannot be satisfied that the Applicant is not the owner of the Trade Mark for the Class 16 goods, the test under s58.

    [29] PB Foods v Malanda Dairyfoods Ltd [1999] FCA 1602, [78] – [80].

    51. Given that I have found that the Applicant and Opponent are co-owners (at common law) of the Trade Mark for the class 16 goods and that the Opponent has failed to establish prior use of a substantially identical mark for the remaining Applicant’s Goods and Services prior to the first use of the Trade Mark in 1991 I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

    Other Grounds

    52. The evidence before me does not support the nominated grounds of opposition under sections 42(b), 58A, 59 and 62A of the Act.

    53. The ground under s 58A of the Act is only available to the Opponent if the Trade Mark was accepted because of s 44(4) or a similar provision of the regulations made for the purposes of Part 17A. As this is not the case this ground of opposition is not available to the Opponent.

    54. For the section 42(b) ground, the Opponent has argued that the use of the Trade Mark would amount to misleading and deceptive conduct under ss 18 and 29 of the Australian Consumer Law or the tort of passing off. As the test for misleading and deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[30]. I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same conclusion with respect of the s 29 claim[31] and the claim for passing off[32].

    [30] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

    [31] See A G Professional Hair Care Products Ltd v Geagroup Invest SRL [2014] ATMO 65, [50].

    [32] See Equity Access Pty Ltd v Westpac Banking Corporation 1989] FCA 506, [40] in which Hill J noted that the operation of the then s52 was broader than passing off so that in a case where the claim arises from the reputation in a name, failure to succeed under s 52 would invariably mean that proceedings for passing off would fail.

    55. The Opponent has not provided any evidence in support of the section 59 ground which is sufficient to upset the presumption arising from the act of filing that the Applicant intends to use the Trade Mark. Indeed the Applicant has provided extensive evidence of its actual use of the Trade Mark for the Applicant’s Goods and Services.

    56. The section 62A ground is particularised by reference to the Applicant being aware of the Opponent at the time it filed to register the Trade Mark. In circumstances where the Applicant had used the Trade Mark for almost 25 years at the relevant date, I am unsatisfied that mere awareness of the Opponent, its use of the Opponent’s Trade Marks (and its reputation more generally) is a sufficient basis to find that the application to register the Trade Mark was made in bad faith.

    Decision and award of costs

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1686629 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

2. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   22 March 2021

   Annex 1 – List of selected trademarks owned by the Applicant

Number	Trade Mark	Priority Date	Goods and Services
226197	AIM (‘Word Mark’)	11 Feb 1969	Class 16: All goods included in this class particularly printed publications (‘Class 16 goods’)
483155	(‘Device Mark’)	10 Mar 1988	Class 41:  Training and education services, including business training services
522083	30 Oct 1989	Class 35: Business management services, business organisation services, business consultation excluding business training courses, assessment and comparison services, business management assistance and advice services, business management information and facility support services, business management representation services, all the aforementioned services being services within class 35
634777	13 Jul 1994	Class 9: Business management services, business organization services, business consultation excluding business training courses, assessment and comparison services, business management assistance and advice service, business management information and facility support services, business management representation services, all the aforementioned services being services included in class no. 35
1403111	7 Jan 2011	Class 9: Pre-recorded compact discs, CD-ROMs, DVD's, videos, or other media on whch data, information and/or images may be stored and/or reproduced, all containing education and/or information relating to the management, administration, conduct or promotion of businesses; electronic publications (downloadable) including electronic publications sold and distributed online; documentaries, publications, magazines, journals, newsletters, videos, books and booklets in electronic form supplied on-line from a database or from facilities provided on a global computer network (the Internet) Class 16: Books, booklets, magazines, journals, manuals, educational materials (in printed form) and other printed publications all being in relation to the management, administration, conduct or promotion of businesses; calendars and diaries; posters; cards, including greeting cards; stationery; office requisites in this class Class 35: Business management services; business organization services; business consultation excluding business training courses; assessment and comparison services; business management assistance and advice services; business management information and facility support services; business management representation services; advertising and promotional services, including services relating to the provision of advertising or promotional material over the Internet or broadcast by radio or television; market research services; providing an online business directory information service; retail, on-line retail, retail facilitation and wholesale services, including such services relating to educational materials, training materials, printed publications, office requisites and stationery; consultancy, advisory and information services relating to the aforementioned services Class 41: Educational and training services, including organizing, managing and/or hosting seminars, conferences and workshops all being in relation to the management, administration, conduct or promotion of businesses; publication and publishing services, including the publishing of magazines, journals, books, diaries, calendars, photographs, posters and manuals; on-line publication services including the publication of electronic magazines, journals, books, diaries, calendars, photographs and posters in both downloadable and non-downloadable form; entertainment services in this class; advisory, consultancy and information services in relation to the aforementioned services
1403113	7 Jan 2011	Class 9: Pre-recorded compact discs, CD-ROMs, DVD's, videos, or other media on which data, information and/or images may be stored and/or reproduced, all containing education and/or factual information relating to the management, administration, conduct or promotion of businesses; electronic publications (downloadable) including electronic publications sold and distributed online; documentaries, publications, magazines, journals, newsletters, videos, books and booklets in electronic form supplied on-line from a database or from facilities provided on a global computer network (the Internet) Class 16: Books, booklets, magazines, journals, manuals, educational materials (in printed form) and other printed publications all being in relation to the management, administration, conduct or promotion of businesses; calendars and diaries; posters; cards, including greeting cards; stationery; office requisites in this class Class 35: Business management services; business organization services; business consultation excluding business training courses; assessment and comparison services; business management assistance and advice services; business management information and facility support services; business management representation services; advertising and promotional services, including services relating to the provision of advertising or promotional material over the Internet or broadcast by radio or television; market research services; providing an online business directory information service; retail, on-line retail, retail facilitation and wholesale services, including such services relating to educational materials, training materials, printed publications, office requisites and stationery; consultancy, advisory and information services relating to the aforementioned services Class 41: Educational and training services, including organizing, managing and/or hosting seminars, conferences and workshops all being in relation to the management, administration, conduct or promotion of businesses; publication and publishing services, including the publishing of magazines, journals, books, diaries, calendars, photographs, posters and manuals; on-line publication services including the publication of electronic magazines, journals, books, diaries, calendars, photographs and posters in both downloadable and non-downloadable form; entertainment services in this class; advisory, consultancy and information services in relation to the aforementioned services