AXIS Legal (Australia) Pty Ltd v Axia Litigation Lawyers Pty Ltd

[2016] ATMO 41

TRADE MARKS ACT 1995

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

Re:Oppositions by AXIS LEGAL (AUSTRALIA) PTY LTD to registration of trade mark applications nos. 1599795 AXIA LEGAL; 1599796 AXIA LITIGATION LAWYERS and 1599797 AXIA all in class 45 - in the name of AXIA LITIGATION LAWYERS PTY LTD.

Delegate:	Heath Wilson
Representation:	Opponent: Melissa Thompson of Axis Legal (Australia) Pty Ltd. Applicant: Peter Travis of Counsel instructed by Adam Brown of Axia Litigation Lawyers.
Decision:	2016 ATMO 41 Opposition relying on grounds of opposition under sections 44, 42(b), 58, 60 and 62A of the Trade Marks Act 1995 – no grounds of opposition established – trade marks to proceed to registration.

Background

1. On 29 December 2013, Axis Litigation Lawyers Pty Ltd as trustee of the Axis Law Trust (later, Axia Litigation Lawyers Pty Ltd as trustee of same and hereafter referred to as ‘the Applicant’) applied for the registration of three trade marks the details of which are set out below (‘the Trade Marks’):

1599795	AXIA LEGAL	Class 45: Legal services; company formation and registration services; consultancy, advisory and information services relating to all areas of the law; legal administration services; legal litigation services; litigation support services; legal dispute management services; dispute resolution services; all of the abovementioned services related to legal services; the provision of all of these services online
1599796	AXIA LITIGATION LAWYERS	Class 45: Legal services; company formation and registration services; consultancy, advisory and information services relating to all areas of the law; legal administration services; legal litigation services; legal support services; litigation support services; legal dispute management services; dispute resolution services; all of the abovementioned services related to legal services; the provision of all of these services online
1599797	AXIA	Class 45: Legal services; company formation and registration services; consultancy, advisory and information services relating to all areas of the law; legal administration services; legal support services; legal litigation services; litigation support services; legal dispute management services; dispute resolution services; all of the abovementioned services related to legal services; the provision of all of these services online

1. The Trade Marks were examined under section 31 of the Trade Marks Act 1995 (‘the Act’), no grounds for rejection were raised and they were accepted for possible registration. Advertisement of their acceptance appeared in the Australian Official Journal of Trade Marks on 22 May 2014.

2. Subsequently, Notices of Intention to Oppose the Trade Marks were filed on 21 July 2014 by Axis Legal (Australia) Pty Ltd (‘the Opponent’). The Statement of Grounds and Particulars (‘SGP’) which followed set out grounds of opposition under sections 44, 58, 60, 42(b) and 62A of the Act.

3. A Notice of Intention to Defend was subsequently filed by the Applicant and the evidence stages commenced.

Evidence

1. The evidence filed in this opposition comprises:

Evidence in Support

• Declaration of Sara Laura Delpopolo (Founding Principal of the Opponent) made 19 December 2014 with annexures SLD-1 to SLD-26.

• Declaration of Mina Shi made 18 December 2014 with annexure MS-1.

Evidence in Answer

• Declaration of Adam Nathaniel Brown (Legal Practice Director of the Applicant) made 28 April 2015 with annexures ANB-1 to ANB-8.

• Declaration of Simone Small made 28 April 2015.

Evidence in Reply

• Declaration of Sara Delpopolo made 6 August 2015 with annexures SLD-1 to SLD-10.

The Hearing and Onus

1. The Applicant requested a hearing on the opposition and the matter was set down to be heard on Monday 9 May 2016 in Canberra. As a delegate of the Registrar of Trade Marks I was allocated to decide the opposition.

2. On 29 March 2016 I wrote an email to the parties setting out a schedule for the provision of a written summary of arguments. The Opponent was to provide its written submissions (with authorities relied upon) by 26 April 2016. However, the Opponent did not provide submissions (or reply to my correspondence) but instead filed via Objective Connect[1] the declaration of Sara Delpopolo made 26 April 2016 with annexures SLD 2-1 to SLD 2-3.

   [1] A cloud based computer application used by IP Australia enabling users to share evidence in an opposition proceeding.

3. In response, the Applicant filed the declaration of Adam Brown made 3 May 2016 and also provided written submissions on the substantive matter to be considered at the hearing. On 5 May, I sent a further email to the parties highlighting the absence of written submissions from the Opponent which would have articulated the grounds of opposition. I also pointed out that for the Registrar to consider material filed out of time, there needed to be reasons provided for its inclusion (with reference to requirements in Part 51.2.6 of the Trade Marks Office Manual of Practice and Procedure). I did not receive any response from the Opponent.

4. At the hearing in Canberra on 9 May 2016 Melissa Thompson of the Opponent appeared via telephone and Peter Travis of Counsel, instructed by Adam Brown of the Applicant, appeared in person.

5. I subsequently provided Ms Thompson another opportunity to convince me why I should allow the Opponent’s new material into proceedings. After hearing the reasons I ultimately decided that it was not reasonable to apply the Registrar’s discretion and allow the material to be considered. This opposition will be therefore decided without further reference to the late declarations from the Opponent or the Applicant.

6. The hearing proceeded on the basis of the evidence properly filed in the evidence stages. As I understood Ms Thompson’s oral submissions at the hearing, the Opponent was relying on each ground of opposition from the SGP.

7. The Opponent bears the onus of establishing at least one of the grounds of opposition. Mr Travis argued in his written submissions that the appropriate standard of proof was for the Opponent to establish that the Trade Marks should “clearly not be registered” rather than the civil standard of the “balance of probabilities” with reference to comments made in the decision of NV Sumatra Tobacco Trading Company v British American Tobacco Services Ltd.[2]

   [2] (2011) 198 FCR 435, [38], [321].

8. The above court decision contained a discussion of the differing expressions of opinion in the Federal Court on the issue of the standard of proof. In any event, the Full Federal Court of Australia has now made the approach clear in Telstra Corporation Limited v Phone Directories Company Pty Ltd[3] that:

   We would follow Kenny J in Sports Warehouse v Fry Consulting who in turn followed Sundberg J in Chocolaterie Guylian at 70 [26], and Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 at 793 [18] that the standard of proof is proof on the balance of probabilities.

   [3] [2015] FCAFC 156, [133].

9. Therefore, for the avoidance of any doubt, the opposition before me will be decided on the basis of the Opponent establishing at least one ground of opposition for each of the Trade Marks on the balance of probabilities.

Reasons

Section 44(2)

1. Section 44 of the Act 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 services (applicant’s services) must be rejected if:

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

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

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

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

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

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

1. Section 14(2) of the Act provides:

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

2. The Opponent relied on its own trade mark registration for the purposes of this ground of opposition. The details of its trade mark are:

   Trade Mark No. 1039071

   Trade Mark: AXIS (‘the Opponent’s trade mark’)

   Priority Date: 25 January 2005

   Specification of Services:

   Class 35: Business management and administration services; business research and evaluations; document management and information services

   Class 42: Legal services; intellectual property services

3. I note from the above details that the Opponent’s trade mark has an earlier priority date to the Trade Marks. That being the case, I will firstly consider the similarity of the services claimed, and secondly whether the Trade Marks are substantially identical with, or deceptively similar to, the Opponent’s trade mark.

4. At the hearing of the opposition, it was not disputed that legal services appearing in the specifications of the Trade Marks were identical to legal services residing in the specification of the Opponent’s trade mark. However, Mr Travis did make submissions regarding the particular nature of the legal services actually provided by the Opponent (mainly intellectual property law) and contrasted those services with the Applicant’s (mainly commercial and civil litigation). He also relied upon the fact that the respective legal firms operate in different states.[4]

   [4] The Applicant is based in Maroochydore, QLD and the Opponent in Surry Hills, NSW.

5. In relation to the specific legal services the parties currently provide (and the geographic proximity of the firms), legal authority makes it clear that for the purposes of section 44 the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.”[5] Neither specification is limited in scope to a particular subset of legal services or to a particular geographic location. As Lord Parker also stated in Re Pianotist Co Ltd’s Application:[6]

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. 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 normal way as a trade mark for the goods of the respective owners of the marks. (Emphasis added)

   [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 [50].

   [6] (1906) 23 RPC 777.

6. Further, Mason J in Berlei Hestia Industries Ltd v Bali Co Inc[7] observed:

   ...The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion. [Emphasis added)

   [7] [1973] HCA 43; (1973) 129 CLR 353 [362].

7. Both sets of specifications contain broad claims for legal services in addition to a number of specific legal services that are also likely to fall into that category. I therefore find that the respective legal services in classes 42 and 45 are similar (being the same services or services of the same description). I turn now to whether the Trade Marks are substantially identical with, or deceptively similar to, the Opponent’s trade mark.

Substantially Identical/Deceptively Similar

1. On a side by side comparison[8] of the trade mark AXIA (no. 1599797) with AXIS (no.1039071) I am not convinced that there is an overall impression of resemblance such that they are substantially identical. I find that the visual and aural differences (discussed below) are quite evident in such a comparison. It necessarily follows that the other Trade Marks containing additional words (i.e. ‘Legal’/‘Litigation Lawyers’) are also not substantially identical to the Opponent’s trade mark.

   [8] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407 [414-415].

2. In relation to the consideration of deceptive similarity, section 10 of the Act defines the expression ‘deceptively similar’ as concerning a trade mark that ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I also refer to the comments of Dixon and McTiernan JJ in the case of Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (‘Australian Woollen Mills’):[9]

   [T]he marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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 observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

   [9] [1937] HCA 51; (1937) 58 CLR 641 [658].

3. For brevity, I will only consider whether the two trade marks AXIA and AXIS are deceptively similar. If they are not, it follows that the ground of opposition under section 44 on the basis of the other Trade Marks (which contain additional differences) must also fail.

4. A visual comparison reveals both AXIA and AXIS have an identical prefix (‘AXI-’) with the only visual difference being the final letter in each trade mark. However, from an aural perspective the difference in the last letters significantly alters the pronunciation of the marks. In the Trade Marks the two consecutive vowels in the suffix results in an additional syllable (being ‘ak-see-uh’ rather than ‘aksɪs’). Even taking into account the slight possibility of slurring the suffix,[10] the overall aural character of the trade marks is quite different. I find that any careless pronunciation or imperfect recollection on the part of a prospective consumer of legal services would need to be at an unrealistic level for aural similarity to result.

   [10] See London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, [279].

5. The likely pronunciation of the words and their aural dissimilarity should be seen in conjunction with respective meanings of the trade marks.[11] A difference or similarity in meaning can be the decisive factor in whether or not two trade marks are likely to deceive or cause confusion. In this instance, the English word ‘AXIS’ and its meaning is an additional difference to a word such as ‘AXIA’ which, on its face, is an invented term. Upon review of the declaration of Adam Brown, I note that AXIA is, in fact, a Greek word that means “of value” or “of worth”. In the event that Australian consumers of legal services are aware of this definition it would nonetheless remain a difference in their minds as the Greek meaning has no correlation with the English meaning of ‘AXIS’.[12]

   [11] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, ([1952] HCA 15; (1952) 86 CLR 536, 539 (Dixon, Williams and Kitto JJ)

   [12] ‘Axis’ being defined as “the line about which a rotating body, such as the earth, turns.” Macquarie Dictionary Online © (Macmillan Publishers Group Australia 2015).

6. A consideration of the likelihood of deception or confusion under section 44 must take into account “all surrounding circumstances”.[13]  The issue is whether Australian consumers will be 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 ...”[14]

   [13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 [50].

   [14] Ibid.

7. The surrounding circumstances that must be considered include the nature of the services and the character of the probable consumers. While it is true that the parties predominantly operate in different parts of the country, an Australian trade mark registration affords national protection and legal services are increasingly available online.

8. Nevertheless, consumers of legal services are generally likely to pay close attention to the name of the firm they are seeking to use. Enlisting the services of a legal representative is an important and often expensive undertaking (whether it is for commercial litigation, intellectual property or any area of law). As such, consumers are likely to act with a higher degree of caution and pay attention to differences between the relevant trade marks to ensure they will be receiving the desired service. In that context, it is more likely that the aforementioned differences between the trade marks will not be overlooked by consumers.   

9. After taking into account all the surrounding circumstances I am not satisfied by the Opponent’s argument that there is a ‘real, tangible danger’[15] of deception or confusion between the trade marks. I find, on the balance of probabilities, that the Trade Marks are not deceptively similar to the Opponent’s trade mark. The ground of opposition under section 44(2) of the Act has not been established.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-595].

Section 58

1. Section 58 of the Act provides:

58Applicant 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.

1. A prerequisite for this ground of opposition is that the earlier trade mark on which the Opponent relies must be substantially identical to the applied for trade marks. In other words, the application of section 58 requires that a “total impression of similarity (emerges) from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.”[16]

   [16] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 [62] (Gummow J).

2. As I have previously found under the section 44 ground that the Trade Marks and the Opponent’s trade mark are not substantially identical, this ground of opposition fails at the threshold. The ground of opposition under section 58 has not been established.

Section 60

1. 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.

1. Section 60 has two major elements which must both be satisfied for the ground to be established. With reference to the specific facts of the current opposition, the Opponent must firstly demonstrate the existence of a reputation in Australia of another trade mark before 29 December 2013. Australian legal precedent points to a requirement that a ‘significant’ or ‘substantial’[17] number of consumers within the relevant trade/market (rather than Australian consumers as a whole) must be likely to be deceived or confused. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[18] and may depend on the specialised nature of the relevant market.[19]

   [17] See Renaud Cointreau& Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [18] “Bali” Trade Mark [1969] RPC 472 [496] (Lord Upjohn).

   [19] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 [20]

2. For the second limb of the test, the nature and extent of the abovementioned reputation must be such that the use of the Trade Marks would be likely to deceive or cause confusion in the Australian marketplace. This element does not require actual instances of deception or confusion (arising from the established reputation in the other trade mark) to be demonstrated, but where such instances have been provided, they will be given great weight.[20]

   [20] See Australian Woollen Mills.

3. In McCormick & Co Inc v McCormick[21], Kenny J set out one of the ways in which to infer reputation:

   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.

   [21] [2000] FCA 1335; (2000) 51 IPR 102 [127].

4. The first declaration of Sara Delpopolo contains evidence regarding the purported reputation that the Opponent’s trade mark ‘AXIS’ has in Australia. According to Ms Delpopolo, the Opponent’s trade mark was first used in Australia in 2005 (after the incorporation of the Opponent and application for its trade mark in January of that year). The declaration also refers to a number of prominent clients and celebrities the Opponent has represented since that time. No doubt many of those clients (and/or their trade marks) are themselves well-known, but it is the demonstrated reputation of the trade mark AXIS in particular that is paramount to this consideration, not the reputation of its clients.  

5. My first observation of the Opponent’s evidence is that no sales or advertising figures have been provided in relation to the Opponent’s trade mark. While it is true that an inference as to reputation in a trade mark may be made on the strength of such material, it must be remembered that reputation may be proved in a variety of ways. For example, in ConAgra Inc v McCain Foods (Aust) Pty Ltd[22] Lockhart J commented that:

   But reputation 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.

   [22] (1992) 33 FCR 302 at 343; 23 IPR 193 (Lockhart J) [234].

6. In this regard, I note that the ‘AXIS’ trade mark has appeared on various social media platforms (such as ‘Twitter’, ‘Facebook’ and ‘LinkedIn’), and also in a number of online legal directories. Exhibit SLD-2 to the first Delpopolo declaration consists of undated printouts of pages from the Opponent’s website at However, some of the examples may be more recent as there is a reference to legal seminars held in 2013.

7. Exhibits SLD-3 to SLD-5 are examples of the aforementioned appearance of the Opponent’s trade mark on social media sites. The Twitter feeds (for example) are dated from May 2009 through to 2013.  If the number of followers on a social media page at a particular point in time is any indication of the reputation in the trade mark appearing on that page, I note that the number of followers in the evidence is, in any event, not significant.

8. In relation to the online directories (examples of which are extracted in exhibit SLD-6) the Opponent’s name appears in the Yellow Pages (and White Pages) directory and other general and targeted lawyer search engines. Some of the use is of the Opponent’s trade mark whereas other examples present the company name ‘Axis Legal Pty Ltd’. The examples are extracted at the time of making the declaration and Ms Delpopolo simply declares that they are examples of use ‘since 2005’. As a result, I cannot affirmatively state that these are examples of use before the priority date, nor whether they assist in the demonstration of the requisite level of reputation at that time.

9. The lawyers in the Opponent’s firm are active members of many Australian associations and have been involved in speaking at notable events (Exhibit SLD-7), along with the recent publication of a book “Social Media: Playing by the Rules” (Exhibit SLD-8). The Opponent has also been a sponsor of the AIMIA (the Digital Industry Association of Australia) awards in 2014-2015 and is involved in prominent court proceedings which have been reported in the media.

10. Nevertheless, after reviewing the totality of the Opponent’s evidence, I am not satisfied that the Opponent has demonstrated a significant reputation in the trade mark AXIS as at the priority date of the Trade Marks. While there are clear instances of use in a niche area of law (Information Technology and Social Media law) before that date, the requisite reputation amongst a significant number of consumers of legal services must be established as a matter of fact and I am not convinced that the Opponent has discharged that onus.

11. As observed by Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

    The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-op Ltd v New South Wales Dairy Corp [1990] FCA 32; (1990) 24 FCR 370; at 377; [1990] FCA 32; 16 IPR 289; at 296. [23]

    [23] (1997) 38 IPR 495 [501].

12. Any confusion that has resulted in this matter is not, in my view, due to a reputation in a trade mark owned by the Opponent. However, as certain examples of confusion were highlighted by the Opponent I will, for completeness, address the specific nature of those instances in the discussion below regarding section 62A.

13. For this ground, the effect of my finding is that section 60 fails at the initial hurdle (s 60(a)). I therefore find that section 60 of the Act has not been established in relation to any of the Trade Marks.

Section 42(b)

1. Section 42 of the Act provides:

42Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)the trade mark contains or consists of scandalous matter; or

(b)its use would be contrary to law.

1. The Statement of Grounds and Particulars sets out the bases for this ground of opposition namely that, with reference to the Opponent’s reputation and goodwill in the trade mark “AXIS”, the use of the Trade Marks would amount to “a) misleading and deceptive conduct in contravention of section 18 of the Australian Consumer Law (ACL); b) false representation as to sponsorship, approval or affiliation in contravention of section 29 of the ACL; c) the tort of passing off.” It is apparent then that the Opponent is relying on s 42(b) of the Act rather than s 42(a).

2. At the hearing Ms Thompson emphasized what was described as the “deceptive similarity” of the trade marks and, with reference to the decision of Red Hat Inc v Martinek[24], stated that evidence of actual confusion between the trade marks would be sufficient to establish this ground. However, I am unable to distil that principle from the aforementioned decision. What is clear, however, from that decision is that “Mere wonderment does not necessarily rise to the level required to satisfy s.42(b).”[25]

   [24] (2002) 56 IPR 292.

   [25] Ibid.

3. Given my finding that there is not a reputation in the Opponent’s trade mark sufficient to support a finding that the use of the Trade Marks would deceive or confuse Australian consumers under section 60 of the Act, it follows that the reputation is likewise insufficient to support an argument for misleading and deceptive conduct, as it is a more onerous standard.[26] In addition, there is nothing in the evidence to satisfy me that there are false or misleading representations that would enliven subsections 29(g) or 29(h) of the Australian Consumer Law provisions.

   [26] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 (Gibbs CJ) [199].

4. In relation to the tort of passing off, that argument from the Opponent must also fail. As mentioned in Equity Access Pty Ltd v Westpac Banking Corp:

   The scope for the operation of [sections 18 and 29 of the Australian Consumer Law provisions] is broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under [those provisions] will invariably mean that proceedings for passing off would likewise fail.[27]

   [27] Equity Access Pty Ltd v Westpac Banking Corp [1989] FCA 506; (1989) 16 IPR 431 [40] (My substitutions from the Australian Consumer Law provisions in bold).

5. Ultimately, I must be satisfied that the use of the Trade Mark “would”, not “could,” be contrary to law[28] for the ground of opposition to be made out. I am not so satisfied and section 42(b) of the Act has not been established.

   [28] Advantage Rent-A-Car Inc. v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24 [32]

Section 62A

1. Section 62A of the Act provides:

62A  Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

1. With regard to the application of section 62A of the Act, Dodds-Streeton J in the case of Fry Consulting Pty Ltd v Sports Warehouse Inc.(No 2) found:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

   The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards. [29]

   [29] [2012] FCA 81 [165-167].

2. In the current matter, the Applicant was incorporated on 20 December 2012 and began trading under the name ‘Axis Litigation Lawyers’ on 14 January 2013.[30] At the time of choosing this name Mr Brown of the Applicant declares that he was unaware of the Opponent’s practice.

   [30] Brown declaration [11].

3. Axis Legal Pty Ltd (the predecessor of the Opponent) was incorporated in January 2005 and (as mentioned earlier) has provided a range of legal and business management services since that time. In September 2013, the principal of the Opponent Ms Delpopolo became aware of the Applicant operating in Queensland under the name “Axis Litigation Lawyers” and that they also owned the domain name

4. A letter of demand[31] was sent to the Applicant on 19 September 2013. The Applicant made an offer of cooperation which the Opponent rejected. Subsequently, after agreeing to change its name and associated branding, the Applicant filed for registration of the Trade Marks on 29 December 2013.

   [31] First Delpopolo declaration (exhibit SLD-15); Brown declaration [13].

5. By 24 February 2014, Mr Brown of the Applicant had undertaken to the Opponent not to use “AXIS Litigation Lawyers” as the name of the firm but instead “Axia Litigation Lawyers”. By the time the Opponent received the letter of this intention, the Trade Marks had already been filed with IP Australia.

6. The Opponent then further argued the deceptive similarity of the new name to the Opponent’s trade mark alleging (amongst other things) that the respective domain names amounted to ‘typosquatting’ as the final letters of the trade marks ‘A’ and ‘S’ sit next to each other on the keyboard.

7. Following examination of the Trade Marks, and after no ground for rejection was identified by the examiner, the Opponent requested that the Applicant’s trade mark applications be withdrawn. The Applicant refused to comply with the Opponent’s request and the notices of intention to oppose in this matter were subsequently filed.

8. The Applicant’s knowledge of the Opponent’s trade mark ‘AXIS’ at the time of filing the Trade Marks is undisputed. According to the correspondence between the attorneys referred to above, Mr Brown was clearly aware of the Opponent’s trade mark and business at the time of filing. Nevertheless, a mere awareness of other trade marks cannot be sufficient by itself for a finding of bad faith. Rather, the question before me is, whether in light of that knowledge, the Applicant’s behaviour in applying for the Trade Marks fell short of acceptable commercial standards?

9. In terms of selecting the name AXIA, Mr Brown indicated in his declaration that he wanted a name that was ‘completely unique’ and that the aforementioned meaning of the Greek word ‘Axia’ “represents the values of my firm and the fact that the Applicant provides legal advice to its clients on that basis.”[32] He then declared:

   The Applicant has no interest in, or intention of, being confused with the Opponent in any manner whatsoever. The suggestion that the Applicant somehow stands to gain from any confusion with the Opponent is groundless.[33]

   [32] Brown declaration [17].

   [33] Brown declaration [19].

10. There is no evidence produced that the conduct of the Applicant in applying for the Trade Marks was exploitative or designed for any commercial advantage. On the contrary, the history of the correspondence between the parties indicates a desire on the Applicant’s part to resolve the dispute amicably. However, following the Applicant’s change of trade mark from ‘AXIS’ to ‘AXIA’, there were also apparent instances of confusion in the marketplace. Evidence of deception or confusion may be persuasive although it is not a prerequisite for a finding of bad faith.[34] Accordingly, I will address these instances below.

    [34] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [76].

Instances of Confusion

1. It is noteworthy that in the nine months in which the respective parties were operating under the similar names ‘Axis Litigation Lawyers’ and ‘Axis Legal’, Mr Brown is not aware of:

   [A] single occasion on which any person, including a client or potential client, had assumed that ‘Axis Litigation Lawyers ‘ was some other legal practice, and certainly not a Sydney CBD firm specialising in Media and IT known as ‘Axis Legal’. Similarly, my firm had never been approached to assist with an intellectual property, telecommunications or IT matter, and I do not recall anyone calling for Ms Delpopolo.[35]

   [35] Brown declaration [14].

2. The details of the emails produced by the Opponent as evidence of confusion appear in exhibits SLD-19 to SLD-23 to the first Delpopolo declaration and they are claimed by the Opponent as confidential. However, I note that in line with Mr Brown’s observation above, none of the instances occurred during the period when both parties used the name ‘Axis’ but rather after the Applicant’s change of name in February 2014.

3. According to the first Delpopolo declaration, on 18 December 2014, Ms Delpopolo called the Applicant and the following exchange occurred:

   A lady answered the phone said: “Good afternoon, Axia Litigation lawyers”.

   I said: “Oh sorry, did you say Axia? I thought I was calling Axis Legal”.

   The lady said: “Yes, that’s us”.

   I said: “So you’re Axis Legal?”

   The lady said: “Yes, we just changed our name to Axia but we’re the same firm.”

   I said: “Okay, sorry who am I speaking to?”

   The lady said: “Simone”.

   I said: “thanks very much”. I then hung up.

4. In relation to this exchange Mr Brown declares (at paragraph 53 of his declaration):

   Moreover, even if Ms Delpopolo’s recollection of the conversation with Ms Small is to be accepted, Ms Small’s alleged response to Ms Delpopolo’s intentionally false statement, is perfectly consistent with the response of a new junior staff member who was attempting to explain to a caller that there had been a change of name of the firm.

5. I agree with Mr Brown’s explanation and the facts are consistent with those provided in the declaration of Simone Small. Mr Brown provides additional reasonable explanations for each of the purported instances of confusion in the Opponent’s evidence.

6. The second Delpopolo declaration contains details of telephone calls and correspondence from the Applicant’s clients received by the Opponent since January 2015. I note that such evidence is post-filing but may nevertheless be taken into account for this ground of opposition. Without discussing specific details of this exhibit also claimed to be confidential,[36] there are examples of emails being mistakenly sent by clients of the Applicant to the Opponent at the email address ‘[email protected]’.

   [36] Confidential exhibit SLD-6.

7. The second Delpopolo declaration also contains a number of submissions regarding the use of the Applicant’s domain name “ and the Opponent’s “ I note the evidence regarding the similarity of these domain names and also between the general office email addresses “[email protected]” and “[email protected]”. I have carefully considered the related confidential exhibits and putting aside the fact that I am considering particular trade marks rather than the similarity of domain names, I am not satisfied that any of the instances of confusion result from the trade marks themselves as opposed to the change of the Applicant’s email and web addresses that occurred in or around the same time as the rebranding of the Trade Marks.

8. Ms Thompson also made submissions as to ‘connections’ between employee profiles of the Opponent and the Applicant appearing on the social networking service ‘LinkedIn.’ I am not convinced that these LinkedIn ‘connections’ are indicative of a likelihood of confusion between the trade marks. The purported connection likely has nothing to do with the names of the firms themselves but rather common acquaintances, common skills and expertise or similar fields of study between particular individuals.

9. On the face of it, the above instances of confusion are not a result of clients mistakenly believing there to be a connection between the Opponent and Applicant because of the similarity between the Trade Marks and the Opponent’s trade mark but instead arising from the fact that the Applicant had recently changed its name from ‘AXIS’ to ‘AXIA’ and the clients having sent their electronic correspondence to the name (and email address) they were previously familiar with. Errors of this kind are foreseeable with any name change of a legal firm. Here, it is complicated by the fact that the previous name of the Applicant’s firm was substantially identical to that of the Opponent’s firm.

1. This type of confusion is evident in the declaration of Mina Shi. The telephone conversation referred to in that declaration occurred in August 2014 (after the Applicant had changed its name) and importantly the caller asks Ms Shi at one point:

   “…Isn’t it Axis Law?”

   [Ms Shi] said words to the effect of: “We are Axis Legal. We do not have a person called Adam Brown. May I ask what matter this is in relation to?”

2. The customer knew the name of the firm he/she was after, namely, Axis Law. Such an example simply highlights the similarity between Axis Law and Axis Legal which is a given. It does not, however, amount to an instance of actual confusion between the Trade Marks and the Opponent’s trade mark.

3. In the end and taking into account all the evidence before me I can find nothing in the Applicant’s conduct that could be described as being “of an unscrupulous, underhand or unconscientious character”.[37] I find that the ground of opposition under section 62A of the Act has not been successful.

   [37] Fry Consulting Pty Ltd v Sports Warehouse Inc.(No 2) [2012] FCA 81.

Decision

1. 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.

1. The Opponent has not established a ground of opposition. I direct that trade mark applications 1599795, 1599796 and 1599797 may proceed to registration one month from the date of this decision.

2. If the Registrar is served with a notice of appeal before that time, I direct those registrations shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the applications should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has been successful in these oppositions. I direct that costs be awarded against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995 for trade mark no. 1599795. For the two remaining trade marks, I direct that costs be awarded against the Opponent in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[38]

   [38] [2001] ATMO 78; (2001) 53 IPR 591.

Heath Wilson
Hearing Officer
Oppositions and Hearings
27 June 2016