Australian Postal Corporation v Sendle Pty Ltd - [2017] ATMO 42

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by the Australian Postal Corporation to registration of trade mark application 1654845 - POST WITHOUT THE OFFICE - in Class 39 in the name of Sendle Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: Ed Heerey QC, instructed by Liam Nankervis of Ashurst Australia.

Applicant: Hamish Bevan of Counsel, instructed by Fisher Adams Kelly Callinans, Patent & Trade Mark Attorneys.

Decision:

2017 ATMO 42

Trade Marks Act 1995

Section 52 opposition to registration: – sections 41, 42(b), 44 and 60 considered; no ground of opposition established. Opposition unsuccessful; trade mark to be registered.

Background
1.     In these proceedings under the Trade Marks Act 1995 (‘the Act’) Sendle Pty Ltd (‘the Applicant’) is the present applicant for registration of the trade mark which appears below:
Application No: 1654845
Priority Date:  27 October 2014
Trade Mark:  POST WITHOUT THE OFFICE (‘the Trade Mark’)
Services:Class 39: Transportation, courier, mail, parcel delivery and postal services; services rendered in delivering documents, goods, packets, parcels and cargo from one place to another; the pick-up, transportation, delivery, packaging, tracking and storage of documents, packages and cargo; coordination of transportation, courier and logistics services; providing information in relation to such services; brokerage and forwarding of cargo; customs clearance services being customs bonded warehousing; franking services; dispatch services (‘the Services’)

2.     Acceptance of the Trade Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 12 March 2015.
3.     On 12 May 2015, the Australian Postal Corporation (‘the Opponent’), filed a Notice of Intention to Oppose the registration of the Trade Mark.
4. On 12 June 2015, the Opponent filed its Statement of Grounds and Particulars which detailed grounds of opposition under sections 41, 42(b), 44 and 60 of the Act.
5.     On 13 July 2015, the then applicant, TuShare Pty Ltd, filed a Notice of Intention to Defend.
6.     The parties have filed evidence in support, evidence in answer and evidence in reply as further discussed below.
7.     The parties were informed of their right to be heard or to make written submissions. Both asked to be heard and at a hearing in Canberra on 21 February 2017, the Opponent was represented by Ed Heerey QC, instructed by Liam Nankervis of Ashurst Australia (also in attendance) and the Applicant was represented by Hamish Bevan of Counsel, instructed by Fisher Adams Kelly Callinans, Patent & Trade Mark Attorneys.
Onus
8.     The Opponent bears the onus to demonstrate that the Trade Mark should not be registered by establishing one or more of its grounds of opposition.[1] The standard of proof required in that regard is the ordinary civil standard of the balance of probabilities.[2]   The relevant date at which the grounds must be considered is the Priority Date of the application which in this case is the same date as the filing date of that application, 27 October 2014.[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [34] and [36]).
[2] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
9.     The evidence is comprised of the following declarations:
In Support
Gisele Silk, the Brand Marketing Manager of the Opponent, made on 23 October 2015 with Annexures GS-1 to GS-48 (‘Silk’);[4]
In Answer
James Moody, CEO of the Applicant, made on 27 January 2016 with Annexures 1 to 5 (‘Moody’); and
In Reply
Liam Jon Nankervis, Senior Associate at Ashurst Australia, made 18 April 2016 with Annexures LJN-1 to LJN-4 (‘Nankervis’).
[4] Annexures GS- 9, 13, 14, 19, 20, 27, 33, 39 and 43 of Silk are marked as confidential.

Outline of the opposition
10. The Opponent outlined its position in its written submissions as follows:
In summary, the Opponent contends that the Trade Mark is deceptively or confusingly similar to one or more trade marks either registered by or in which the Opponent had a reputation before the Priority Date, and that the grounds under 42(b), 44 and 60 of the Act are made out as a consequence of that as discussed in detail further below. In particular, the Opponent has a substantial reputation in the word "POST", derived from decades of use of Post Formative Marks (defined below) in relation to a wide range of services, including those specified in the Application. Members of the public identify the Opponent by the POST trade mark and the POST OFFICE trade mark, among others. The Opponent also has registrations for those and many other Post Formative Trade Marks.
The trade marks POST and POST OFFICE are the central feature of the opposed Trade Mark. When seen or read, the Trade Mark will be understood as identifying the Opponent as it operates outside its traditional, physical offices. That is, the meaning conveyed is "Post" [ie, the Opponent], without the "Office". The connotation is that the services provided under the Trade Mark are the services of the Opponent without the requirement to attend or deal with a physical POST OFFICE where the Opponent has historically provided most of its services to the public. The change in recent years in the Opponent's business to provide a vast range of services online or through channels which do not require attendance at a physical Post Office is well known to the public. The meaning and impression given by the Trade Mark will, therefore, lead the public to mistakenly believe that the Applicant's services are provided by the Opponent.
The Opponent alternatively submits that, if the Delegate considers the Opponent's POST and POST OFFICE marks lack distinctiveness, the Applicant's Trade Mark must also lack the capacity to distinguish the Applicant's services and the section 41 ground must be made out.

11. The Applicant outlined its position in its written submissions as follows:
… there is no prospect of confusion. The mark itself directs people away from [the Opponent]. In an artful way, it tells the consumer that the parcel and delivery services provided by [the Applicant] are not associated with orthodox or traditional delivery methods for which [the Opponent] is recognised. Indeed, the mark evokes a form of consumer liberation by promoting the outcome (pick-up and delivery) without the attendant difficulties or burdens of attendance at one of the [the Opponent’s] post offices.
[Further, with respect to section 41] “the mark, as a whole, is inherently adapted to distinguish [the Applicant’s] services.

Section 41
12. I find it convenient to consider the section 41 ground of opposition first since at one level it stands apart from the remaining grounds which hinge upon a comparison of trade marks or are conditioned by the reputation of some other trade mark.
13. Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

Accordingly, the initial step is to consider whether the Trade Mark is not capable of distinguishing the Applicant’s Services from the goods or services of other persons and, as I have said, in these proceedings it is for the Opponent to satisfy me on the balance of probabilities that was so at the Priority Date.
The classic test for inherent adaptation to distinguish is laid out in Clark Equipment Co v Registrar of Trade Marks[5] (‘Clark Equipment’) where Kitto J stated:
[5] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5].
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
When that passage was more recently considered by a differently constituted High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[6] (‘Cantarella’) the majority uncovered a two-step process. They stated:
[6] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Crennan and Kiefel JJ.
It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[7]
[7] Ibid., [50].
Accordingly directed, the first step is to determine the ordinary signification of the words comprising the Trade Mark in respect of the Services. The High Court in Cantarella continued:
Once the “ordinary signification” of a word … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[8]
[8] Ibid., [71].
So, by way of example how that two-step process works, the High Court found that according to their ordinary significations, ORO and CINQUE STELLE were merely allusive of the relevant goods and so there was no need to go on to consider the needs of other traders.
Ordinary signification
The Applicant’s submissions included dictionary definitions of the word “post” which were not contested. The Macquarie Dictionary for example, defines “post” as:
noun 1. a single collection or delivery of letters, packages etc. 2. the letters, packages, etc., themselves; mail. 3. an established service or system for the conveyance of letters, etc., especially under government authority …
verb (t) 9. to place (a letter, etc.) in a postbox, post office, etc., for transmission.[9]
[9] (5^th ed) (Macquarie Dictionary Publishers Pty Ltd, Sydney) at 1299.
The Applicant’s written submission is that:
The mark calls to mind these ordinary meanings of the word “post”. But it then skilfully disassociates itself from this traditional or orthodox appreciation. It does this through the words “WITHOUT THE OFFICE”. In this way, the mark immediately suggests to the reader that [the Applicant’s] services are something different. And it achieves this through a collection of words that, in themselves, have no clear and direct meaning.
The Opponent’s reasoning in respect of the section 41 ground is that:
If the delegate of the Registrar considers that the Trade Mark describes postal and delivery services provided without interaction with a consumer-facing physical premises such as the Opponent's Post Office and the word "POST" is not sufficiently distinctive to give rise to [either] a risk of public confusion against use of the Trade Mark in similar classes of services (under sections 60 and 42(b) of the Act) or deceptive similarity when compared against the Trade Mark (under section 44 of the Act), then same lack of distinctiveness would apply to render the Trade Mark unregistrable under section 41 of the Act for lack of distinctiveness.
These submissions deserve attention in several ways. The first point is that the assessment of capacity to distinguish must regard the Trade Mark as a whole, not dissected into its constituent parts.[10] Secondly, whilst dictionary definitions may provide a guide to the abstract meaning of the Trade Mark taken as a whole, those definitions do not ascribe meaning assessed against the applied-for Services.
[10] See, for example, Diamond T Motor Car Company [1921] 2 Ch 583.
In Unilever Australia Ltd v Societe Des Produits Nestlé S.A., Bennett J. wrote:
The more apt the word or expression is to describe the goods, the less it is inherently apt to distinguish them as the goods of a particular manufacturer (Clark Equipmentat 515). The setting or context in which the use occurs is relevant in determining whether the use is descriptive or for the purpose of indicating a connection in the course of trade between the product and the trade mark applicant, as a badge of origin (Shell Co (Australia) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 424–5; Johnson & Johnson Australia Pty Ltd v SterlingPharmaceuticals Pty Ltd (1991) 30 FCR 326 at 350–1).
… A word descriptive of one category of goods may not be descriptive of a different category and thereby have a capacity to distinguish with respect to that different category. [11]
[11] [2006] FCA 782, [30,33].
Similarly, in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited (‘Rohoe’) Dixon J observed[12]:
[12] [1946] HCA 15; (1946) 72 CLR 175 at 184.
But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.
The Services are “[T]ransportation, courier, mail, parcel delivery and postal services; services rendered in delivering documents, goods, packets, parcels and cargo from one place to another; the pick-up, transportation, delivery, packaging, tracking and storage of documents, packages and cargo; coordination of transportation, courier and logistics services; providing information in relation to such services; brokerage and forwarding of cargo; customs clearance services being customs bonded warehousing; franking services; dispatch services”.
The Trade Mark, no matter what component words are relied upon for their dictionary meaning, or no matter how it may be reasonably nuanced when considered as a whole, does not directly reference any of the Services. A critical distinction must be drawn between the Services themselves and the perceived attributes of those Services as they may be insinuated by the Trade Mark. The latter does not provide the correct viewpoint from which to gauge ordinary signification since it is already one step removed from the Services themselves. That warning was sounded by the High Court in Mark Foy's Limited v Davies Coop and Company Limited (‘Tub Happy’) where Dixon CJ stated[13]:
[13] [1956] HCA 41; (1956) 95 CLR 190 at 194.
It is, I think, a mistake first to assume that words like “Tub Happy” do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess.
The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.

I accept that the Trade Mark, itself, might not fall into the same class of marks as TUB HAPPY but, nevertheless, Dixon CJ’s reasoning applies equally. Just as importantly, I note that the Opponent’s own effort (at [21] above) to interpret the Trade Mark results in the convolution: “postal and delivery services provided without interaction with a consumer-facing physical premises”, which I might regard as per se evidence that the Trade Mark does not directly reference the Services.
I find that the ordinary signification of the Trade Mark is opaque. Whatever influence flows from the reputation the Opponent may assert in the word “post” or, as it has described them, its “post-formative marks”, is to be reserved for consideration under its other grounds of opposition, but is immaterial to my proper determination of the ordinary signification of the words “post without the office” for the purposes of section 41. The Trade Mark might be suggestive of (some, not all) the Services but the ordinary signification of the words would in my assessment entail exactly the type of reflection or wonderment described by Dixon CJ in Tub Happy.
I find that the ordinary signification of the Trade Mark is not a direct reference the Services. There, according to the direction given by Cantarella, the section 41 enquiry ends with my decision that the ground has not been established. However, for the sake of absolute certainty in the event that I may have erred so far,[14] I have gone on to consider whether other traders might legitimately desire to use the word in respect of their services.
[14] The manner in which Cantarella is to be applied is not yet fully settled by the courts and I take note, for example, of the decision by the Registrar’s delegate in Pacific Magazines Pty Limited v Bauer Consumer Media Limited [2015] ATMO 69 which concerned the trade mark, TEST KITCHEN, and where it was said:
Paraphrasing to some extent what I said in FARM TO FABRIC, I do accept that a trade mark need not be entirely unsuggestive in relation to the goods and services it covers and that a question of degree is involved in assessing its inherent adaption to distinguish them. Here, nevertheless, I am satisfied by the evidence of both parties that the words “test kitchen” constitute a known phrase in the publishing and culinary industries and that the phrase has a transparent, indeed undisputed, descriptive meaning referring to a physical kitchen where recipes are tested. In my view the Opposed Mark is thus not simply “allusive” in respect of the Goods and Services in the same way as, say, TUB HAPPY is for easily washable clothing or PERFECTLY YOU is for cosmetics. It strikes me as a phrase “apt for normal description” in relation to the Goods and Services or in relation to a significant characteristic those goods and services might possess. I am accordingly not satisfied that it contains sufficient inherent adaptation to distinguish the Goods and Services from the similar goods or services of other traders as to qualify for registration on that basis alone.
The legitimate desire of other traders
The authors of Dufty and Lahore observe in Patents, Trade Marks and Related Rights:
… it is important to distinguish between what another trader may legitimately need to use and what he or she may want to use. A trade mark which proves to be an effective and valuable marketing tool may well be something which other traders would like to use but that does not make it part of the common heritage which anyone should be free to use. Similarly, the mere fact that a sign is widely used in a particular trade will not prevent it from having the requisite adaptability to distinguish, assuming of course that it is not descriptive of the relevant goods or services. Other traders may be annoyed that someone has been astute enough to adopt a well known term but that will not necessarily prevent the mark from being adapted to distinguish. [15] [emphasis from original]
[15] Ann Dufty and James Lahore, Patents, Trade Marks and Related Rights, LexisNexis, looseleaf service, at para 49,790.
So, for example, the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[16], reasoned as follows:
[16] [2017] FCAFC 56, [236].
Apartment owners enjoy the right to describe the location of their apartment by reference to the words “Harbour Lights” and they enjoy the right to let their apartment so described at that place. Neither they, nor any third parties, enjoy the right to provide the registered services from the building or from any other place by reference to the words “Harbour Lights” based on any notion of invoking, in good faith, the use of the words on the footing that, because the complex is called “Harbour Lights”, the words form part of the common heritage in the nature of a town, suburb or municipality.
The words are, of course, the name of a particular building complex configured in the way earlier described and thus the words necessarily identify (like all names attached to a particular building) a place on the planet as distinct from other places but that does not mean that the words thus become part of the “common heritage” giving rise to a “likelihood” that other traders would want to make honest use of the words in connection with similar services as an expression of the exercise of a “common right of the public”. The primary judge correctly concluded that the trade mark is inherently adapted to distinguish the designated services of the owner from the services of others. [emphasis from original]
Likewise, whilst with changing times the Opponent may have come to want to use the Trade Mark, this does not establish that at the Priority Date other traders had a legitimate desire to use it in place of the other, alternative expressions that were available to them.
In Cantarella the High Court put it this way:
When the “other traders” test from Du Cros is applied to a word … the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical.[17]
[17] Cantarella at [59].
Finally, the onus to show by evidence the potential legitimate desire of other traders to use the Trade Mark falls upon the Opponent,[18] and that has not been met in this case.
[18] See, for example, Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [102].
I add that to the extent to which the Trade Mark might be thought to reference the Opponent’s business or the Post Office, there is something approaching or analogous to parody and so it can be said that almost by default the Trade Mark is not an expression needed in the normal course of trade by other traders to fairly describe their similar goods or services. Whilst there might be an element of chagrin in other traders – that in retrospect that they would like to use the Trade Mark – this does not amount to an honest desire to use the Trade Mark for the sake of its ordinary meaning.
In the case of Eli Lilly & Co v Ciba-Geigy Australia Ltd, (1984) AIPC 93-207, the Registrar’s delegate Ms Hanlon said of the trade mark YIELD as applied to pesticides:
The fact of its frequent use is, I think, of considerably less importance than the manner of its use in assessing whether it is adapted to distinguish goods as a trade mark. Therefore although the word “yield” occurs quite frequently in agricultural parlance as is illustrated by the pesticide literature and advertising materials which the opponent has provided, consideration of the way in which it is used leads inevitably to the conclusion which I had already reached that pesticides have not been and could not be usefully or meaningfully described by the word “yield”.
[... ]
I think that these objections may be based on the feeling of surprise or disquiet or even outrage that many people experience when a trader makes so bold as to adopt as his trade mark a word which is well known or widely used in the particular trade or industry. The feeling may be prompted by a number of factors ranging from chagrin at having missed the opportunity to do the same to distress at the interference with the right to use a name or description. It is therefore most important that, should that trader seek to register that mark, the Registrar as the custodian of public interest takes great care in determining whether in all the circumstances of the case that trader has discharged the onus upon him to show that he is entitled to the registration[19]. In the present matter I have already decided that registration of the mark YIELD would not interfere with the right to use the word in its ordinary significance in the agricultural and pesticide industries. From the material before me I can find no reason to suppose that use of the mark would give rise to any confusion, deception, danger or hardship to any person.
[19] The reference to ‘onus’ referred to by Ms Hanlon here has been overtaken by amendments to the Act but this, if anything, strengthens the arguments for adaption to distinguish in the Trade Mark.
The end result is that the Trade Mark is not one that other traders have a legitimate desire to use in relation to the Services and so, had I been led into error by my earlier thinking, the matter is now doubly resolved.
The Opponent has not established its ground under section 41.
Section 44
In the absence of evidence of use of the Trade Mark by the Applicant (and hence invocation of the provisions of subsections 44(3) or 44(4)), section 44 relevantly provides:
44Identical etc. trade marks
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s services) must be rejected if:
(a)the applicant’s trade mark 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 goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Therefore, to establish a ground of opposition under section 44 the Opponent must show all of the following:
·     a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the Applicant, and in relation to which the Trade Mark is either substantially identical or deceptively similar;
·     the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and
·     the priority date(s) of the trade mark(s) of the other person is (are) earlier than that of the Trade Mark.
For reasons which emerge, breaking down the Opponent’s argument tidily to match those three elements is not easy with the result that the following discussion has something of a discursive nature. So, the requirement of another trade mark with a priority date earlier than the Priority Date of the Trade Mark is addressed in the Opponent’s written submissions as follows:
The Registered Post Formative Marks[20] include both a word mark and composite mark of POST OFFICE, as set out below (POST OFFICE Marks).
[20] A defined term comprising a subset of the “Post Formative Marks” as to which see more at [53] below together with fn. 17.

Regn. No.

Trade Mark

Class(es)

Priority date

910736

16, 35, 36, 38, 39

26 April 2002

1274601

POST OFFICE

35

27 November 2008

The Trade Mark is deceptively similar to, the POST OFFICE Marks as it is a complete reproduction of the Opponent's POST OFFICE word mark, with "WITHOUT THE" interposed between two constituent words.
The Trade Mark is deceptively similar to the POST OFFICE Marks and the other Post Formative Marks as:
· the Trade Mark leaves a similar impression to that left by the Opponent's Post Formative Marks; and
· consumers of postal services would have cause to wonder if the Applicant's services are provided by the Opponent.

The trade marks on which the Opponent relies are therefore not limited to the POST OFFICE Marks, but include all of the so-called Post Formative Marks, that expression further defined as the Opponent’s trade mark registrations whose main identifying feature is the word “post”, again, “including but not limited to” the following:
AUSTRALIA POST;
E-POST;
POST DIRECT;
POST SHOP;
PARCEL POST;
Pay it @ POST; and
POSTbillpay. [21]
[21] The “Registered Post Formative Marks”. A longer list appears at Silk, Annexure GS-4.
In order to confine the issues, I return to the Opponent’s written submissions which allege that “the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s registered (sic) Post Formative Marks.”
Substantial Identity
My findings start with this: in my assessment none of the Post Formative Marks is substantially identical to the Trade Mark. Compared side by side with the Trade Mark, none share fundamental resemblances to the Trade Mark, nor in any case does a total impression of similarity arise.[22] In Austrac Holdings Pty Ltd v Mark Assetta [2002] ATMO 62 the Registrar’s delegate, Hearing Officer Thompson, footnoted that cases where substantial identity had been found included:
[22] See Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft MbH & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL); PB Foods Limited v Malanda Dairyfoods Limited [1998] ATMO 66 (15 December 1998) (CHILL and CHOC CHILL).
In my estimation all of those examples are characterized by compared marks having obvious similarities in terms of visual or aural quality, or by differences which are inconsequential in terms of quantitative or qualitative worth.
Deceptive Similarity
The expression “deceptively similar” is defined by section 10 of the Act:
10Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered or earlier mark. In that regard, the Opponent’s written submissions are that:
Relevantly, findings of deceptive similarity have been found in cases where the opponent’s word mark is wholly encompassed in the applicant’s trade mark. For example, see Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 (FUNSHIP and SITMAR'S FUNSHIP, FAIRSTAR THE FUNSHIP) and Australian Broadcasting Corporation v Commercial Radio Australia (2010) 88 IPR 376 at [15]. In the latter, the delegate found that "RADIO AUSTRALIA" was deceptively similar to "COMMERCIAL RADIO AUSTRALIA" and Device.
Like the aforementioned authorities, in the present case the POST OFFICE Marks are entirely encompassed within the Trade Mark. The interposition of the words "WITHOUT THE" does not sufficiently differentiate the Trade Mark from the Opponent's trade marks.
The Opponent submits that the point may be illustrated by considering hypothetical similar treatment of other well-known trade marks.
For example, consider "COCA WITHOUT THE COLA", "HUNGRY WITHOUT THE JACKS" or "LOUIS WITHOUT THE VUITTON". The dominant distinguishing feature of this form of adaptation is still the constituent words of the initial mark. The interposition of the less substantial words "WITHOUT THE" does not detract from recognition of the initial mark, and the trade marks remain deceptively similar to the initial trade marks.
Further, the manipulation of an existing trade mark, to indicate a departure from the traditional services offered under that mark, is an exploitation of the relevant owner's reputation in its trade mark. For example:
the fast-food restaurant "KFC" may wish to market a new beef range as "KENTUCKY FRIED WITHOUT THE CHICKEN";
the fast-food restaurant McDonalds recently advertised a premium range of products as "VERY UN MCDONALDS"; or
Chemist Warehouse may wish to market a purely online store as "CHEMIST WITHOUT THE WAREHOUSE".
In each case, such marks raise an allusion to the reputation owned in the prior mark and send a message that the product on offer is a new extension of that well-known business. In this way, the new mark leads the consumer to perceive a connection with the owner of the prior mark. At the very least, the use of such a mark is likely to cause a significant number of persons to wonder or entertain a reasonable doubt as to whether it might not be the case that the respective goods and services come from the same source, which is the classic test for deceptive similarity: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 per Kitto J, upheld by the Full Court at 608; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382 [50(ii)] per French J, Tamberlin J agreeing at 395 [104].
… in the circumstances, consumers will have cause to wonder whether the Applicant's services are related to / came from the same source as the Opponent's goods and services provided under the Post Formative Marks.
Although argument at the hearing did not take this path, I can see that two, slightly differing arguments are entailed by the Opponent’s submissions and I have unraveled them by first looking to the question of whether the Trade Mark might be deceptively similar to the POST OFFICE Marks, namely, registrations 910736 and 1274601.
Both POST OFFICE Marks have priority dates earlier than that of the Trade Mark, so much is clear. They must then be registered in respect of services which are “the same”[23] or “of the same description”[24] as the Services. For convenience to the reader, the Services are re-stated below:
[23] Section 14(2)(a) of the Act.
[24] Section 14(2)(b) of the Act
Transportation, courier, mail, parcel delivery and postal services; services rendered in delivering documents, goods, packets, parcels and cargo from one place to another; the pick-up, transportation, delivery, packaging, tracking and storage of documents, packages and cargo; coordination of transportation, courier and logistics services; providing information in relation to such services; brokerage and forwarding of cargo; customs clearance services being customs bonded warehousing; franking services; dispatch services.

Registration 1274601 covers class 35 services, being “Promotional services, advertising services and business services in this class”. These services are not the same as those of the Trade Mark. Assessed in accordance with the case law, nor are they services “of the same description” as the applied-for Services.[25] Registration 1274601 does not therefore support the Opponent’s section 44 ground of opposition.
[25] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; 1A IPR 465; (1954) 91 CLR 592 per Dixon C.J., McTiernan, Webb, Fullagar and Taylor JJ at [5].
Registration 910736 covers, inter alia, class 39 services, being “Transportations, delivery and storage; transportation and delivery of parcels and goods, including transportation and delivery of stationery, office requisites, office equipment, computer equipment, electrical equipment and appliances, food and beverages, confectionery, cleaning aids, travel goods and furniture including office furniture; postal services; mail delivery services; courier services.”
Clearly those services are the same as, or where not, then of the same description as, the Services.[26] There only remains the question of whether the Trade Mark is deceptively similar to the trade mark of registration 910736:
[26] "Postage" franking is the physical application and presence of postage stamps, or any other markings recognized and accepted by the postal system or systems providing service, which indicate the payment of sufficient fees for the class of service which the item of mail is to be or had been afforded.
In the UK High Court case of Clark v Sharp[27], Byrne J said that:
[27] (1898) 15 RPC 141 at 146.
… one must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
Still in the UK High Court, Parker J later stated in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[28] that:
[28] (1906) 23 RPC 774 at 777.
You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Following, in an Australian High Court decision, Radio Corp Pty Ltd v Disney[29], Rich J said of the word “confusion”:
[29] [1937] HCA 38; (1937) 57 CLR 448 at 454
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort.
Later still, Windeyer J in the High Court case of Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, observed[30] that “the comparison … is between, on the one hand, the impression based on recollection of the [Opponent’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 [the Trade Mark].”
[30] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 per Windeyer J. at [13].
A more recent Australian Full Federal Court led by French J in Registrar of Trade Marks v Woolworths[31] (‘Woolworths’) further added that “in order to show a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient”, qualifying that statement with the words that:
[31] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
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.
In reaching a decision, I am to consider the fair and normal use of the respective trade marks by the Opponent and Applicant. In Woolworths French J said:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362. [32]
[32] Op. cit. at [88].
This is a case where I consider the marketplace for the Services to be all of the Australian public[33] and that is the context in which I read the Applicant’s submission that there is no prospect of confusion because the Trade Mark itself directs the public mind away from the Opponent. In further detail, the Applicant reasons that:
[33] See Australian Postal Corporation v Digital Post Australia (2013) 308 ALR 1.
… while it may be accepted that the question of deceptive similarity requires a comparison of the marks, the Full Court has nonetheless spoken of the effect of a mark “notoriously so ubiquitous and of such long standing that consumers must be taken to be familiar with it and its use in relation to particular goods”: see CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 and Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 61 IPR 212; see also Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at [96]-[97].
When Australia Post’s reputation is given proper appreciation, [the Applicant] submits that there is no “real tangible danger” of deception or confusion occurring: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50]. As the Full Court reminded us in Australia Postal Corporation v Digital Post Australia Pty Ltd (2013) 105 IPR 1 at [70], there must be a “realistic assessment” and a “mere possibility of confusion is not enough”.
… [The Applicant] submits that the possibility of any consumer when confronted with the mark POST WITHOUT THE OFFICE being caused to wonder whether [the Applicant’s] services come from [the Opponent] is so remote as almost to be fanciful. (my added emphasis)
The emphasis I have perhaps curiously added to the foregoing submission can be explained by signaling a stepping-off moment to one of the discursive courses I foreshadowed. It harks back to my observation that the Opponent’s section 44 submissions concerning deceptive similarity rest for their foundation not only on the POST OFFICE Marks (discussed so far) but on the Post Formative Marks generally.
The trade marks which Mr Heerey chose to select from Silk as illustrative of the Post Formative Marks, namely, AUSTRALIA POST; E-POST; POST DIRECT; POST SHOP; PARCEL POST; Pay it @ POST and POSTbillpay, do not in my thinking rise to any higher importance for the purposes of section 44 than the POST OFFICE Marks which were curated by Mr Heerey for consideration already.
Indeed, it seems that in order to accord any measure of importance to these otherwise quite different trade marks I am meant to infer that the Post Formative Marks fall within the concept of a “family” of trade marks. That is not the Opponent’s submission in as many words, but given the Opponent’s statements elsewhere that it does not purport to have a monopoly in the word “post” per se, it is the only sense that I can give to the Opponent’s claim that “the Trade Mark leaves a similar impression to that left by the Opponent's Post Formative Marks.”
In McDonald’s Corporation v Future Enterprises Pte Ltd [2007] ATMO 22 (‘McDonald’s’) the Registrar’s Delegate, Mr Thompson, wrote:
The opponent relies on a number of trade marks, variously registered for goods or services. The opponent asserts that it is the owner of a family of such trade marks, many of them with priority dates considerably earlier than the priority date of the IRDAs, such that the holder’s trade mark should be found to be deceptively similar to one or other of the family. Such a situation is not unusual. Where it arises, such a case does so because the known and familiar use of a number of trade marks by the opponent casts a large shadow onto the potential for deception or confusion that might ordinarily arise between notional fair use of the holder’s trade mark and ordinary exercise of the rights given by the opponent’s registered trade marks. Such a conclusion would be within the confines set out by the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at para 52.[34]
[34] At [18].
Mr Bevan’s words which I emphasized at [59] are of course a reference to the accepted position that use and reputation are not usually considered of direct relevance to a section 44 ground of opposition. However, the passage above indicates that an objection may arise under section 44 by reason of “the known and familiar use of a number of trade marks”.
In addition, the cases cited by Mr Bevan at [59] say that when a trade mark has such notoriety and is of such long standing that consumers generally must be taken to be familiar with its use in relation to particular goods or services, then that state of notoriety (or, “reputation”) is a relevant “surrounding circumstance”.
The Hearing Officer in McDonald’s continued, stating that:
I understand and appreciate that it is not appropriate to bring considerations of reputation, per se, into s 44. Ms Champion urged me to adopt the “orthodox” view that “what is to be compared is the lawful use in the future of each mark across the goods for which it is registered rather than being tied to what has happened in the past”. Here she relied on the caution of Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663. None the less, if my conclusion is that the ordinary consumer would be misled by the resemblance of the two trade marks – between either trade mark of the holder on one hand and, on the other, any one of those of the opponent’s – such that there is a significant risk of deception or confusion, s 44 is triggered even though the drivers for this might include the notoriety of the opponent’s trade marks. The facts of the present case do not have to be artificially constrained to fit a public perception that exists only in some alternate fantasy world where the opponent is unknown.
The Opponent’s reputation is discussed further in relation to section 60 shortly, however I find that when I take into account reputation as one of the surrounding circumstances for the purposes of section 44, I open the floodgates and find it very difficult not to be persuaded by the proposition that the Opponent’s notoriety works against any real tangible danger of deception or confusion occurring by reason of notional use of the Trade Mark.
I make that finding now in relation to all of the Post Formative Marks with the exception of registration 910736, to which I will return momentarily. No other mark of relevance includes both words “post” and “office”.[35] None come closer than does registration 910736 in visual or aural similarity. No other is conceptually reminiscent of the Trade Mark.
[35] Registration 1274601 having been already dismissed for the purposes of section 44 for the reasons given.
With sole regard to registration 910736, I do not find the Opponent’s arguments compelling for these reasons. Firstly, in the context of this remaining comparison, the Opponent’s observation that “findings of deceptive similarity have been found in cases where the opponent’s word mark is wholly encompassed in the applicant’s trade mark” is unhelpful. By way of illustration, the well-known fashion and perfumers mark, DIOR, is subsumed within (indeed is the initial element of) the word “diorama” but, very clearly, the two would not be identified with each other.
Secondly, I do not accept the Opponent’s argument that “the interposition of the words ‘WITHOUT THE’ does not sufficiently differentiate the Trade Mark from the Opponent's trade marks.” I do not find that the Opponent’s hypothetical treatment of other well-known trade marks is analogous. In the hypotheticals, HUNGRY WITHOUT THE JACKS and LOUIS WITHOUT THE VUITTON, the interposition of the words “without the” results in an expression which has no hint of a meaning. The added words merely intersect with the known trade mark with no new meaning. The hypothetical, COCA WITHOUT THE COLA, is simply mystifying since the introduced words result in an expression which might cause consumers, if they thought of the beverage giant, to wonder what the product might be.
Thirdly, the Opponent submits that “the manipulation of an existing trade mark, to indicate a departure from the traditional services offered under that mark, is an exploitation of the relevant owner's reputation in its trade mark.” An example put forward by the Opponent is KENTUCKY FRIED WITHOUT THE CHICKEN. The Opponent submits that such a mark “raise[s] an allusion to the reputation owned in the prior mark and sends a message that the product on offer is a new extension of that well-known business.”
I would agree with the Opponent in the case of that hypothetical trade mark, but it is of a different class altogether to the Trade Mark; the well-known mark is left essentially intact and syntactically, the new mark “points” to a (new) chicken-less offering. The other hypothetical example given by the Opponent is CHEMIST WITHOUT THE WAREHOUSE. Without saying more it may be on all fours with the at-issue Trade Mark with the possible qualification that the word “warehouse” stands more in juxtaposition to “chemist” than does “post” to “office”.
Further, I have wondered whether I am presented in these examples with a “dilution” argument which is recognized by the Act at all. To the extent that it is, I consider that it is comprehended by section 60 rather than section 44.
Taking all of the above factors into account, I need barely note the other differences between the Trade Mark and the mark of registration 910737, being the Opponent’s stylized “P” device and the use of different fonts. I am not satisfied that these trade marks are deceptively similar. Nor, as I have already said, do I find the Trade Mark to be deceptively similar to any other of the Post Formative Marks.
Accordingly, the Opponent has not established its opposition to registration under section 44 of the Act.
Section 60
Section 60 of the Act provides:
60Trade 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.
Note:For priority date see section 12.
To establish its ground under section 60 the Opponent must firstly establish that the trade mark(s) upon which it relies have a reputation in Australia; and then, secondly, because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
Reputation was discussed in McCormick & Co Inc v McCormick[36] (‘McCormick’) by Kenny J who said:
[36] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Concerning the assessment of reputation, Kenny J went on in McCormick[37] to state:
[37] Ibid at [86].
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
The assessment of the likelihood of deception or confusion is made largely by reference to the same factors already discussed in connection with section 44 with the notable exception that under section 60 there is no requirement that the compared trade marks be deceptively similar. In Rogers Seller & Myhill Pty Ltd v. Reece Pty Ltd[38] the Registrar’s delegate observed:
[38] [2010] ATMO 5 at [39].
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[39] the Registrar’s delegate observed that:
[39] [2012] ATMO 124 at [40]
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.
I have found that none of the Post Formative Marks is deceptively similar to the Trade Mark in the sense referred to within section 44. The question under section 60 is whether one or more of the Opponent’s trade marks is so well known that a lesser degree of similarity to the Trade Mark is nevertheless sufficient to cause people to wonder if there is a connection in the course of trade between the services of the parties.
Reputation in another trade mark

Silk states that the Opponent has the exclusive statutory right to provide certain postal services under the Australian Postal Corporation Act 1989 (Cth).[40] Much of Silk is given over to the Opponent’s branding strategies and to its use of the word “post” as part of the Post Formative Marks. Silk describes the adoption and use of some of those trade marks outside traditional postal delivery services, such as “Parcel POST” for parcel delivery, “MyPost Digital Mailbox” for electronic mail services and “Pay it @ POST” or “Bank @ POST” for online payments where attendance at a local postal office is not required by a customer or user.[41]
[40] Silk at [23] et seq.
[41] Silk at [62] et seq.
The Applicant’s reading of Silk is that it broadly shows that there is recognition of “Australia Post” as a trade mark. Further, it shows the adoption and prominent use of the colour red. Furthermore, it shows the “dominance and ubiquity” of a so-called “Postal-Horn Device”, shown below.[42]
[42] Silk at [32], [36-39].
The Applicant states (accurately in my opinion) that these distinguishing elements are in evidence even in those areas where the Opponent has more recently sought to extend it offerings beyond traditional postal services.
To say more of the voluminous evidence appended to Silk distracts me from identification of the trade mark(s) in which the Opponent claims a reputation for the purposes of this opposition. In that regard it is the Opponent plainly states that it:
does not claim a monopoly over the word “POST”. Instead, the Opponent submits that it has a strong reputation in the Post Formative Marks, through its statutory monopoly over certain postal services, and the extent of its use of the Post Formative Marks.
The Opponent claims that “[A]s a result of the Opponent's long use of the Post Formative Marks, the word ‘POST’ has become synonymous with the Opponent in Australia.”
For my part, I restate here the reservation that I expressed at the hearing: that I struggle to see a distinction between a claim that the word “post” has come to identify the Opponent to the exclusion of others by reason of the asserted use of the (disparate) Post Formative Marks from a claim to a monopoly in the word “post” per se (for the same services). This strikes me as a distinction without a difference.
The Applicant would seem to have reached the same conclusion since it described the Opponent’s claim to a reputation in the word “post” simpliciter as “a striking submission”, continuing that:
The word “post” is an ordinary, English word with an accepted meaning. True it is that Australia Post undertakes services that reflect that meaning, but that does not confer on it a monopoly with respect to usage as a trade mark. By itself, it is a word ordinarily used to indicate the services akin to the “soap for soap” category envisaged by Sir Robin Jacob said in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 305-306.
I accept on the basis of Silk that the Opponent has a reputation in the words “Australia Post”. I accept that it has a reputation in the “Postal-Horn Device” shown at [84], whether in that common red livery, or in black and white.
Further, I accept that the term “post office” connotes the Opponent’s business and none other, but I ascribe that to the monopoly given by legislative enactment, rather than the result of reputation. That is to say, an expression or other sign may designate one undertaking or have a single connotation without also having the character of a trade mark.[43]
In McCormick Kenny J referenced “esteem”, “favourable repute”, “standing for merit” and so forth. To that extent the words “post office” may perform a trade mark function in respect of, for example, “promotional services, advertising services and business services” (the services of registration 1274601 discussed earlier) and may garner a reputation therefor, but whether “post office” has a reputation as a trade mark for postal services is another matter.
Silk annexes and considers a 2015 consumer survey[44] of the Opponent’s business based upon which the Opponent’s written submissions include the claim that “POST OFFICE is one of the Opponent's most recognised …Post Formative [Trade] Marks”. This is said to be supported by the “finding that 91% of consumers surveyed thought of the Opponent as being either “the Post Offices” or “the Post who delivers the mail”.
Given what I have said there is nothing surprising about that, but it is not evidence of a reputation in the expression “post office” as a trade mark for postal services or anything else. It is the public recognition one would expect of a state of affairs.
[43] I am minded of cases such as Australian National Airlines Commission's Application (1989) 16 IPR 270, where in considering the trade mark “Australian Airlines” the Registrar’s delegate stated at 274:
It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
[44] Silk at [93].
The same applies, a fortiori, to the word “post”.
Likelihood of Deception or Confusion
The Applicant stated that “[T]he Australian public is intimately familiar with Australia Post, its postal-horn P device and its prominent red-branding … [and] submits that the possibility of any consumer when confronted with the mark POST WITHOUT THE OFFICE being caused to wonder whether [the Applicant’s] services come from [the Opponent] is so remote as almost to be fanciful.”
By contrast, the Opponent’s position (if it is not clear already) is that members of the public would be caused to wonder whether the applied-for Services are related to, or came from, the same source as the Opponent’s services that are provided under the Post Formative Marks.
In Australian Postal Corporation v Digital Post Australia (2013) 308 ALR 1 (‘Digital Post Australia’) the Full Federal Court of Australia (North, Middleton and Barker JJ) was required to reconsider the matter of deceptive similarity as between AUSTRALIA POST (relied upon by the Opponent, here) and DIGITAL POST AUSTRALIA. The Court said:
The correct approach is to consider whether a substantial or significant number of the general public potentially interested in a digital mailbox service would have cause to wonder if DPA’s service was associated with Australia Post. We would not credit these consumers necessarily with habitual high perception or caution, or even treat them as “internet savvy”. Nor would we look to see whether Australia Post was associated in the minds of the general public with digital mail. To the extent these matters were relied upon by the primary judge and supported his conclusion, they were extraneous to the main enquiry.
However, in our view, the primary judge did come to the correct conclusion in finding no deceptive similarity.
In the reasons we have identified above, the primary judge looked to the visual and aural composition of the marks, and concluded they were distinct, and conveyed different ideas to the consumer. …
The trial judge correctly observed … that members of the consumer group would be careful and astute in their selection of digital mail services. This is not to observe anything other than what would be obvious. We do not read the primary judge’s comment in this regard as inconsistent with the impressionistic approach that needs to be undertaken by reference to the likely consumers with ordinary intelligence and memory.
Further, in Coca-Cola Company v All-Fect Distributors Ltd (T/as Millers Distributing Company) (1998) 43 IPR 47, Merkel J observed:
An analogous commercial use, which has also been held to fall short of representing a trade or commercial connection, can arise when an imitation product is created as a parody. In Nike Inc v "Just Did It'’ Enterprises [1993] USCA7 1181; 6 F 3d 1225 (7th Cir 1993 at 1227–8 the United States Court of Appeals for the Seventh Circuit said:
Parodies date back as far as Greek antiquity ... "Parody or satire, as we understand it, is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original'’ ... But parodies have a legal hurdle to overcome. Federal law prohibits copies or imitations that confuse consumers ... This protects trademarks as a form of intellectual property ... and guards against confusion, deception or mistake by the consuming public ... Whether a customer is confused is the ultimate question. If the defendant employs a successful parody, the customer would not be confused, but amused ... Thus, we agree with the district court that parody is not an affirmative defence but an additional factor in the analysis. "[T]he keystone of parody is imitation. It is hard to imagine, for example, a successful parody of Time magazine that did not reproduce Time’s trade marked red border. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody, but also vulnerable under trade mark law, since the customer will be confused'’ ... Thus the parody has to be a take-off, not a rip-off.

100. Taking the Australian public as a whole to be the relevant consumer group (as it was in Digital Post Australia), I find that consumers with ordinary intelligence and memory would be sufficiently careful and astute in their selection of the Services so as not to be confused or deceived by the use of the Trade Mark. Taken either as an expression with a self-contained meaning, or as expression which plays on public understanding of the Opponent’s business, I do not regard this finding as “anything other than what would be obvious” and consistent with the “impressionistic approach that needs to be undertaken”.
101. The Opponent has not established its ground under section 60.
Section 42(b)
102. The Opponent submits that the use of the Trade Mark by the Applicant would be contrary to law and would constitute: (a) conduct in breach of sections 18 and 29(1) of the Australian Consumer Law contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth); and (b) actionable passing off under common law.
103. In greater detail, the Opponent continues that: “Use of the Trade Mark by the Applicant would also convey false and misleading representations to the public that: (a) the Applicant is, or is a related body corporate of, the Opponent; (b) the services provided by the Applicant are associated with, affiliated with, approved or authorised by the Opponent; and (c) the Applicant's services are of a similar standard, quality or grade as the Opponent's goods and services provided under the Post Formative Trade Marks.”
104. For its part, the Applicant submits that the section 42(b) ground cannot rise higher than section 60 and it fails for the same reasons. In any event, it submits that the Trade Mark does not convey any representation of the kind described by the Opponent since the whole message of the Trade Mark is that the Services are not associated with the Opponent.
105. In view of what I have already said about reputation, there is no possibility that the section 42(b) ground can be supported by an argument of passing-off. Nor, for the reasons already given do I consider there to be any actionable misrepresentation caused the use of the Trade Mark which would enliven the Australian Consumer Law.
106. The Opponent has not established its opposition to registration under the provisions of section 42(b) of the Act.
Decision
107. Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, 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.

108. The grounds on which the application was opposed have not been established.
109. The trade mark application may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the Court’s order or direction.
Costs
110. The Opponent sought its costs in the event that it established its Opposition to the registration of the Trade Mark. However, this it has not done. I accordingly award costs against the Opponent at the Official Scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
12 May 2017

Regn. No.	Trade Mark	Class(es)	Priority date
910736	16, 35, 36, 38, 39	26 April 2002
1274601	POST OFFICE	35	27 November 2008