Barry Plant Holdings Pty Ltd v Naked Real Estate Pty Ltd
[2018] ATMO 151
•20 September 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Barry Plant Holdings Pty Ltd to registration of trade mark application numbers 1727477 (36) – select date – and 1727479 (36) – select date lease – in the name of Naked Real Estate Pty Ltd.
Delegate:
Debrett Lyons
Representation:
Opponent: Melissa Marcus of Counsel instructed by WMB Lawyers
Applicant: relied on written submissions; no representation
Decision:
2018 ATMO 151
Trade Marks Act 1995 - section 52 oppositions: s60 considered and established; earlier trade mark with reputation; likelihood of confusion or deception. Oppositions successful.
Background
This matter concerns oppositions brought by Barry Plant Holdings Pty Ltd (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks, current details of which appear below, both proceeding in the name of Naked Real Estate Pty Ltd (‘the Applicant’).
Application No: 1727477
Priority Date: 13 October 2015
Services:Class 36: Advisory services relating to real estate ownership; Advisory services relating to real estate valuations; Agency services for the leasing of real estate property; Appraisal of real estate; Brokerage of real estate; Capital investment in real estate; Commercial real estate agency services; Consultation services relating to real estate; Evaluation of real estate; Financial evaluation (insurance, banking, real estate); Financing of real estate developments; Insurance services relating to real estate; Leasing of real estate; Management of real estate; Property leasing (real estate property only); Property sales services relating to real estate development; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of information in relation to real estate; Provision of information relating to property (real estate); Provision of information relating to real estate; Provision of real estate loans; Real estate acquisition (for others); Real estate administration; Real estate advisory services; Real estate agencies; Real estate agency services; Real estate agents services; Real estate appraisal; Real estate appraisals (valuations); Real estate assessment (financial); Real estate brokerage; Real estate brokerage; Real estate broking; Real estate consultancy; Real estate financing; Real estate insurance services; Real estate investment; Real estate investment advice; Real estate investment management; Real estate investment services; Real estate lease renewal services; Real estate lease surrender services; Real estate leasing; Real estate licensing; Real estate management; Real estate selection and acquisition (on behalf of others); Real estate services relating to property development; Real estate services relating to real estate development; Real estate valuations; Rental of offices (real estate); Rental of real estate; Rental of serviced offices (real estate); Research services relating to real estate; Stock and station agencies (real estate services); Subdivision of real estate (real estate services); Valuation of real estate
Trade Mark: select date
Application No: 1727479
Priority Date: 13 October 2015
Services:Class 36: same as App. No. 1727477
Trade Mark: select date lease
2. The above trade marks (‘the Opposed Trade Marks’) were examined as prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 March 2016.
3. That same day the Opponent filed Notices of Intention to Oppose registration and on 25 July 2016 it filed Statements of Grounds and Particulars (‘the SGPs’) nominating a number of grounds of opposition under the Act. The Applicant filed Notices of Intention to Defend on 29 August 2016.
4. Thereafter the parties filed evidence, described later, in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). Both parties then asked to be heard in person. The Opponent paid the hearing fee but the Applicant did not. The Applicant later advised that it would rely on written submissions and not appear or be represented at the hearing. In consequence the Opponent elected to be heard via video-conferencing facilities. The hearing was convened on 2 August 2018. The Opponent was represented by Melissa Marcus of Counsel. Both parties provided written outline submissions in accordance with the pre-hearing timetable I set.
Evidence
The Opponent’s Evidence in Support of its opposition comprises a declaration of Michael McCarthy made 2 December 2016 and accompanying Exhibits MM-1 to MM-34 (‘McCarthy 1’).
The Applicant’s Evidence in Answer comprises a declaration of Brendan Barrett Leahy made 12 April 2017 together with Annexures A to E (Leahy).
The Opponent’s Evidence in Reply comprises a further declaration of Michael McCarthy made 1 December 2017 and accompanying Exhibits MM-35 to MM-44 (‘McCarthy 2’).
Discussion
8. The grounds nominated in the SGP and pressed by the Opponent were those under sections 44 and 60 of the Act. The onus of proof to establish at least one of those grounds rests upon the Opponent.[1] For the reasons which follow I am able to decide these oppositions under section 60 which is reproduced below:
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
9. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi (‘Pottle’) Hearing Officer Thompson observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration. [2]
[2] [2012] ATMO 124 at [40].
10. Here, the Opponent relies on the trade mark, SET DATE, which it has used and registered (‘the Opponent’s Trade Mark’). Whilst section 60 hinges on proof of reputation in the Opponent’s Trade Mark I refer in passing to Registration 874477 from 3 May 2001 for the Opponent’s Trade Mark because the class 36 services there registered, “real estate consulting”, are on my reading of the evidence here, an accurate statement of the broad services offered under the Opponent’s Trade Mark. My finding follows that the applied-for services are essentially identical to the services which have been provided under the Opponent’s Trade Mark. It also follows when it comes to comparison of the trade marks that the word “lease” is, within the context of the applied-for services, almost entirely lacking in distinctiveness. Put another way, the comparison need only be made of SET DATE with select date.
11. It should be acknowledged that it is likely readers may regard the parties’ trade marks quizzically. Context to the Opponent’s Trade Mark is provided by McCarthy 1 which explains that the Opponent provides real estate services via a franchise system. The Opponent and its franchisees use the Opponent’s Trade Mark to identify a real estate sales method said to be unique to them which is an alternative to sale by traditional auction or private treaty.[3] Likewise, the Applicant purports to operate a proprietary sales system by reference to the Opposed Trade Marks. The details of that system and the ways in which it is said to differ from the Opponent’s services[4] are, for the purposes of the upcoming assessment of the likelihood of confusion or deception, less important than the issue of how the Opposed Trade Marks could be used once registered having regard to the breadth of the applied-for services. What is clear is that when making the overall assessment of section 60 recommended in Pottle a question (later discussed) arises as to the inherent distinctiveness of the trade marks when used in connection with the respective sales methods.
[3] McCarthy 1 [17]-[18].
[4]Leahy [4].
12. The strength of the reputation of the Opponent’s Trade Mark at the priority date is a determinative factor under section 60 of the Act and in the case of McCormick & Co Inc v McCormick the court asked:
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”.
[…]
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. [5]
[5] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, at [81] and [86].
13. Further, Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee said that the reputation required to be demonstrated was:
one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.[6]
[6] [2000] FCA 1587; (2000) 50 IPR 1.
14. The evidence which is directed to the reputation of the Opponent’s Trade Mark is essentially contained in McCarthy 1 where it is stated that the Opponent’s Trade Mark has been continuously used in Australia since 2001[7] but “used in a regular and consistent way by [the Opponent] and its franchisees since 2005”[8]. At the time that declaration was made, some 15 months after the Priority Date, the Opponent had over 80 franchised businesses throughout Victoria, plus offices in Adelaide and on the Gold Coast.[9] Albeit that the Opponent’s Trade Mark pertains to the sales system described, it is noteworthy that it often features on the façade of the franchisees’ businesses.[10] Additionally, it is used in real estate publications, news sheets, franchise information sheets, marketing material sent to the public, training and other professional development documents, property and appraisal reports, newspaper advertising, booklets, flyers, on the Opponent’s website and on third party websites such as
[7]McCarthy 1, [15].
[8] McCarthy 1, [19].
[9]McCarthy 1, [9].
[10]McCarthy 1, [38].
[11]McCarthy 1, [20].
15. McCarthy 1 states that the Opponent’s estimated spending on all advertising across its franchise network is $65 million per annum. The significance of that figure cannot be ignored. Further information is given that the real estate consultancy services expressly provided by reference to the Opponent’s Trade Mark constitute approximately 8% of all real estate activities of the Opponent and its franchisees. The Opponent therefore estimates that between $3.9 to $6.5 million per annum is spent specifically on the promotion of the Opponent’s Trade Mark.[12]
[12]McCarthy 1, [39]-[40].
16. Calculated to a date approximately one year after the Priority Date, 5040 properties were sold by way of the sales system operated by reference to the Opponent’s Trade Mark, accounting for approximating 8% of $2.5 billion in total sales revenue.[13] Putting those figures into further perspective, the Opponent’s business accounted in 2015 for 7% of the total Australian real estate sales market.[14]
[13]McCarthy 1, [49].
[14]McCarthy 1, [50].
17. When evaluating the likelihood of confusion or deception this mass of use of the Opponent’s Trade Mark must be weighted along with other factors now considered. As part of the Opponent’s section 44 case, it was put to me that the Opposed Trade Marks were “substantially identical” to the Opponent’s Trade Mark. I would baulk at such a finding but would have little difficulty with the Opponent’s alternative proposition that the compared marks are “deceptively similar” for the purposes of section 44. Of course, section 60 is not limited by either of these requirements but it is worth following the Opponent’s argument regarding similarity with which I am in broad agreement. It is said that the Opponent’s Trade Mark “is punchy, concise and determined, comprising a duo-syllabic quality” – the two words, “‘Set’ (meaning “decide on and announce” and connoting the taking of a step) and ‘Date’ (being a reference to a point on the calendar) presenting a simple message commanding action”. Bearing in mind what I have already said about the word “lease”, the Opponent’s argument is that “the combination of the word ‘Select’ (meaning “carefully chosen from a larger number as being the best or most valuable”) and the word ‘Date’ (being a reference to a point on the calendar) results in two marks virtually identical in idea to that of the Opponent’s Trade Mark, namely a call to action to select or set a date.”
18. In Bed Bath N' Table Pty Ltd v Liberty Procurement Co. Inc.[15], Hearing Officer Kirov considered an opposition to registration of the trade mark BED BATH & BEYOND in relation to certain class 35 services[16]. There are a number of parallels with the case before me now. The opponent in that case had for many decades before the priority date of the applied-for mark provided an extensive range of homewares including bathroom, bedroom and kitchen wares to the public through its chain of stores named “BED BATH N’ TABLE” and periodically through well-known retail chain stores. At the time of the action the opponent operated more than 100 of its own stores throughout Australia and was the owner of trade mark registrations for “BED BATH ‘N’ TABLE”.[17]
[15] [2017] ATMO 108.
[16] Class 35: Retail store, mail order and computer on-line retail services including such services for homewares, furniture, furnishings, domestic appliances, games, toys, books, stationery and office supplies, plants, bags, luggage and umbrellas, personal care products, clothing, footwear and headgear, electronic and electrical apparatus, candles and aromatherapy products, novelty items
[17] Nos. 654781(42) and 654780(24).
19. Hearing Officer Kirov proceeded on the basis that the target market for the applicant’s retail services would in principle include almost all Australians and that the parties’ actual or potential customer bases would be essentially identical. Further, he found the opponent’s advertising and promotional activities to have been both considerable and effective and the opponent’s business to have been very successful. In the result he was “well satisfied” that the “BED BATH N’ TABLE” mark had the kind of reputation contemplated by section 60 by the time the applied-for mark was filed.
20. Although the Applicant in the case before me has not advanced a similar argument, it is worth observing that Hearing Officer Kirov was astute to consider the argument put to him that the courts understand that so long as traders adopt similar, descriptive words as part of their business names, some risk of public confusion is inevitable.[18] He limited the impact of that reasoning to those “decisions regarding entirely descriptive trade names”, finding that “the words ‘bed bath’ common to the parties’ marks are of a significantly different character from the various examples of directly descriptive or common laudatory words”, concluding that “I do not agree with the [a]pplicant that this combination of words … is so completely descriptive or non-distinctive as to be irrelevant to a proper consideration of s 60.” He went on to quote the observation of Lord Radcliffe in De Cordova v Vick Chemical Co:
…that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[19]
[18] See, for example, the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre (1978) 140 CLR 216 at 229 (per Stephen J, Barwick CJ and Jacobs and Aickin JJ agreeing) and the House of Lords in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 per Lord Simonds at 42 and 43.
[19] (1951) 68 RPC 103; 1b IPR 496 at RPC 106; IPR 499.
21. So then, bringing together these various factors in the knowledge that the section 60 language - “likely to deceive or cause confusion” - requires only a likelihood of confusion in terms of “perplexing or mixing up the minds of the purchasing public”[20], the question is whether in light of the use of the Opponent’s Trade Mark (and taking into account its level of inherent distinctiveness), it is more likely than not the Opposed Trade Marks’ use for the same services would cause a significant number of Australian consumers to confuse the parties’ respective businesses, even if that confusion was unlikely to persist beyond initial curiosity.
[20] See Richardson J, in the New Zealand Court of Appeal in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423
22. My preliminary findings are that:
· the parties occupy the same services market and the parties’ actual or potential customers would be essentially identical;
· the Opponent’s Trade Mark had a very substantial reputation in Australia by the Priority Date. Whilst some of the data provided in evidence post-dates the Priority Date, the sales and promotional figures are so enormous that almost any method of interpolation suggests massive public exposure (at least in Victoria) of the Opponent’s Trade Mark for many years before the Priority Date;
· the Opponent’s Trade Mark is not entirely descriptive. I have already said that some readers may look upon it quizzically and surely if they do so it is because they sense some connectivity to the services, but that is all that can be said. It is exactly the type of trade mark which invites a search for meaning[21] and that step places the Opponent’s Trade Mark at some point on the broad continuum of inherent registrability, a finding underscored by the fact that this Office has already registered the Opponent’s Trade Mark and marks like it[22]; and
· for the reasons already given, the Opposed Trade Marks exhibit a high level of similarity to the Opponent’s Trade Mark.
[21] See, for example, the discussion of the law generally in Mark Foy's Ltd v Davies Coop and Co Ltd, [1956] HCA 41; 95 CLR 190; (1956) ALR 854
[22] I have so far made no reference to either Leahy or the Applicant’s outline submissions since they are largely non-responsive to the s60 issues here discussed. Nonetheless, the Applicant has referred to its own Regn. No. 1713312 for the trade mark “Select Date Sale” and to third party Regn. Nos. 1368498 for “Fixed Date Sale” and 1439047 for “sale By Fixed Date”.
23. In the result I find that a significant number of Australians would have been aware of the Opponent’s Trade Mark at the Priority Date such that it is more likely than not the Opposed Trade Marks’ use for the same services would cause those Australians to confuse the parties’ respective businesses.
24. It follows that use of either of the Opposed Trade Marks is likely to cause confusion or deception. I find that the Opponent has established its ground of opposition under section 60.
Decision
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.
The Opponent has established a ground of opposition and so, subject to any appeal from the Registrar to the courts, I refuse to register application numbers 1727477 and 1727479.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act in line with the amounts in Schedule 8 of the Regulations with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
20 September 2018
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