Bendigo and Adelaide Bank Limited v BeforePay IP Pty Ltd
[2023] ATMO 205
•11 December 2023
TRADEMARKSACT1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bendigo and Adelaide Bank Limited to registration of trade mark application numbers 2191497, 2191498 and 2191499 (classes 9 and 36) – B device (series), B Beforepay device (series) and B Beforepay device (series) - in the name of BeforePay IP Pty Ltd
Delegate: Anne Makrigiorgos Representation: Opponent: Edwina Whitby of Counsel instructed by Gilbert+Tobin Lawyers
Applicant: Melissa Marcus of Counsel instructed by Switch Legal Pty Ltd
Decision: 2023 ATMO 205
Trade Marks Act 1995 (Cth) – opposition under section 52 ––
ss 42(b), 44 and 60 considered – no ground of opposition established –
trade marks to proceed to registration
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)1 by Bendigo and Adelaide Bank Limited (‘Opponent’) to registration of the following three series marks (each containing 9 versions in different colours) filed on 2 July 2021 (‘Relevant Date’):
Applications Mark Individual Reference Group Reference (if relevant)
1 Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
2191497 B Device 2191498 Linear B Beforepay device together ‘Beforepay Composite Marks’ 2191499 Centered B Beforepay device (collectively ‘Trade Marks’)
Applicant: BeforePay IP Pty Ltd (‘Applicant’)
Specification: Classes 9 & 36:
Class 9: Computer software including downloadable computer programs and recorded computer software; computer software including downloadable computer programs and recorded computer software for facilitating financial transactions; computer software (including digital appliances) for data analytics, financial services, data modelling and predictive analysis; computer software (including digital applications) for analysing business and market information; computer software (including digital applications) for business intelligence, artificial intelligence and machine learning for business purposes; computer software (including digital applications) for processing market or business information
Class 36: Advisory services relating to banking and finance; Banking; advisory services relating to banking and finance; financial and monetary services; financing services; computerised financial services; money lending; financial lending; conducting of financial transactions, financial payment services, electronic payment services, payment of bills and accounts for others, payment transaction card services, computerised transfer of funds, electronic funds transfer, transfer of funds; provision of transactional services relating to point-of-sale transactions; advisory services relating to banking and finance; financial and
monetary services; financing services; computerised financial services; money lending; financial lending; conducting of financial transactions, financial payment services, electronic payment services, payment of bills and accounts for others, payment transaction card services, computerised transfer of funds, electronic funds transfer, transfer of funds; provision of transactional services relating to point-of-sale transactions
(‘Applicant’s Goods and Services’).
2. The Trade Marks were examined and advertised as accepted for possible registration on 3 December 2021.
3. On 3 February 2022, the Opponent filed Notices of Intention to Oppose the Trade Marks. On 2 March 2022, the Opponent filed its Statements of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 31 March 2022. The Applicant filed Notices of Intention to Defend the oppositions on 29 April 2022.
4. The Opponent filed Evidence in Support on 5 August 2022. The Applicant filed Evidence in Answer on 10 November 2022. The Opponent filed Evidence in Reply on 20 December 2022.
5. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard the 3 oppositions together in my capacity as a delegate of the Registrar of Trade Marks on 1 November 2023. Providing submissions for the Applicant was Edwina Whitby of Counsel, instructed by Lisa Lennon and Anoushka Tait of Gilbert+Tobin. The Opponent’s submissions were made by Melissa Marcus of Counsel, instructed by Alexandra Cameron of the Opponent. Observing the hearing were officers of the Applicant.
6. For ease of reference, the table at Annexure A details some of the Opponent’s trade marks referred to in this decision.
Grounds and onus
7. The SGP nominates grounds of opposition under ss 42(b), 44 and 60.
8. The Opponent carries the burden of establishing one or more of the remaining grounds of opposition2 on the balance of probabilities.3 The rights of the parties are assessed as at the Relevant Date.4
Evidence
9. The following evidence was filed:
Evidence in Support (‘EIS’)
Declaration of Sarah Bateson, General Manager of Marketing of Bendigo and Adelaide Bank Limited made on 5 August 2022, with Exhibits SB-1 and SB-2 and Confidential Annexure A (‘Bateson Declaration’).
Evidence in Answer (‘EIA’)
Declaration of James Twiss, CEO of both Beforepay Group Limited and BeforePay IP Pty Ltd made on 10 November 2022 with Exhibits JT-1 to JT-13 (‘Twiss Declaration’).
Declaration by Anoushka Isabelle Tait, solicitor at Gilbert+Tobin made on 10 November 2022 with Exhibits AT-1 and AT-2 (‘Tait Declaration’).
Evidence in Reply (‘EIR’)
Second Declaration of Sarah Bateson, Limited made on 19 December 2022, with Exhibit SB-3 (‘Second Bateson Declaration’).
Summary of EIS
10.
Bateson outlines the history of the Opponent’s banking and financial services business and its use of the trade marks Bendigo Bank and a B Logo since 1995. Bateson declares that the Opponent has more than 2 million customers.
2 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
3 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
4 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
11.
Bateson provides a history of the Opponent’s use of a B Logo as follows:
·1995 – early 2020, the Opponent used (‘Old B Trade Mark) in the following 3
colour combinations , and .
·2019 rebranding process initiated to (‘Updated B Trade Mark’) and
(‘Composite Bendigo Bank Trade Mark’) (collectively ‘Opponent’s
Updated Marks’).
·12 March 2020, first use of the Opponent’s Updated Marks in respect of banking and financial services and mobile banking apps.
12. Bateson provides the Opponent’s gross revenue for the period 1996 – December 2021, which is impressive. I note however that use of the Opponent’s Updated Marks only began on 20 March 2020. Therefore, the relevant figures for the Opponent’s Updated Marks are for the calendar years 2020 and 2021 which are extensive for each year but of these figures, only a proportion are relevant namely 20 March 2020 to 2 July 2021. While the exact figure is unknown, based on the gross revenue for these 2 years, I am satisfied that the revenue for the Opponent’s Updated Marks from 20 March 2020 to 2 July 2021 is substantial.
13. Bateson then states that all references in her declaration to the ‘B Trade Mark’ include the Composite Bendigo Bank Trade Mark and Old B Trade Mark.5
14. Bateson provides her opinion on why it is likely that there will be confusion between the Trade Marks and the B Trade Mark which includes:
5 I note that there is also a further trade mark which was in use by the Opponent namely
(‘Old Composite Bendigo Bank Trade Mark’).
·she is not aware of any other traders in Australia who use a big letter B or stylised B Device in relation to banking or financial services in Australia.
·most Australian banks and some financial institutions have various divisions that adopt and use a consistent logo across the group.
·examples of how Australian banks use their respective logos are provided.
·consumers are accustomed to seeing Australian banks and/or financial institutions logos as identifiers of their products and/or services without the name of the relevant institution accompanying it.
·the number of bank–fintech alliances established in recent years including fintech companies as subsidiaries or side-projects of first generation banks.
·providing a comparison of the respective parties’ marks, including the colours utilised by the parties for their marks and branding.
15. Bateson then provides information regarding the Opponent’s advertising, promotional activities, awards and accolades including:
§total marketing and advertising spend for the period 2012 –2022 which is impressive. As with the gross revenue figures however, only a proportion are relevant to the Opponent’s Updated Marks namely 20 March 2020 to 2 July 2021. While the exact figure is unknown, based on the spend for these 2 years, I am satisfied that the spend for the period 20 March 2020 to 2 July 2021 is substantial.
§a selection of advertising and promotional material, including sponsorship arrangements in various mediums to reflects how the Opponent uses its B Trade Marks including:
§Television & Digital
§5 television advertisements as part of the ‘The better big bank’ campaign which aired in 2020 to coincide with the rebranding. I note that 3 of the advertisements show the Composite Bendigo Bank Trade Mark and 2 show the Old Composite Bendigo Bank Trade Mark.
§media partnership with Nine Network for the 2021/2022 financial year which included television advertisements, editorial coverage on web sites, digital display ads on television and in print. Given the Relevant Date, only 1 day of this media partnership is relevant. I note that television advertisements and editorial coverage
only show the Composite Bendigo Bank Trade Mark and the digital display ads on television and in print are after the Relevant Date.
§Google display campaign: 4 web links were provided by Bateson for which the linked pages have not been included in the evidence. Web links are not an appropriate form of providing evidence as they can break or the contents can change by the time the evidence is considered by a Hearing Officer, which has occurred here.
§Paid social media namely advertisements through the Meta network including Facebook, Instagram, Messenger and the Audience Network. Examples are provided for the ‘past 12 months’. It is not clear exactly what period is covered but given the new branding began on 20 March 2020, I am satisfied that the examples are more likely than not to have existed before the Relevant Date.
§Google® ads aired on YouTube® in the 21/22 financial year: 5 links were provided by Bateson for which the linked pages have not been included in the evidence. Again, the pages cannot be reached from these links.
§Two Advertising awards in 2020.
§Accolades and Community Support: Bateson refers to various awards received by the Opponent from 2011 to May 2022 such as the most trusted bank brand and provides copies of press releases and other documents before the Relevant Date. I note that where these documents refer to a trade mark, it is the Old Composite Bendigo Bank Trade Mark. Bateson also refers to high levels of customer satisfaction in Australia and provides documents dated in 2007, 2008 and 2009 to this effect which again show the Old Composite Bendigo Bank Trade Mark.
§ Scholarship program: since 2007, over $10 million in scholarship assistance has been provided to more than 1,140 regional and rural students. Bateson provides copies of marketing and promotional materials for the scholarship program which I note are dated after the Relevant Date.
§ Internet: Bateson refers to advertisements on Yahoo!®, Google®, barsclubs and the shout websites. Copies of undated advertisements are provided. Bateson also refers to the Opponent’s web site at which has been active from 1999.
Bateson provides a figure for page views per month but no information on the year or years is provided. A copy of the undated landing page from the website is provided together with screenshots of the home page using the Internet Archive6 for 1999, 2003, 2007, 2011 and 2015. I note that only the Old Composite Bendigo Bank Trade Mark appears on these screenshots.
§Social media sites on Facebook®, Twitter®, Instagram® and LinkedIn®: Followers and post numbers are also provided, which I note are not that high given the claim of 2 million customers. Examples of posts on social media are provided but are all undated.
§‘Bendigo Bank’ YouTube® channel since around September 2009: The subscriber numbers are provided but they are after the Relevant Date. Bateson provides a link to the channel where I note use of both the Opponent’s Updated Marks on the home page. There is no information provided as to the exact date the Opponent’s Updated Marks appeared on the home page.
§Uniforms and vehicles, corporate offices and promotional/merchandise items. All but one of the merchandise items display either the Old Composite Bendigo Bank Trade Mark or the Composite Bendigo Bank Trade Mark. The remaining item displays the Updated B Trade Mark solus. No dates are provided for when these items were available for distribution. Copies of photographs of corporate offices, uniforms, vehicles and branding documents are also provided but are all undated.
§ Sponsorship of amongst others, Geelong Cats and Adelaide Crows Australian Football League clubs, Australian Baseball, Noosa Coast Guard, Bendigo Health, Bendigo Pride Festival, McKellar Kids’ Rehab and The Helpmann Academy In addition, Bateson claims that franchisees also sponsor thousands of groups across Australia. Copies of many photographs of sponsorship related materials and signage including draft concepts and exploration documents are provided but all but five are either undated or dated after the Relevant Date. Of these five, three display the Composite Bendigo Bank Trade Mark and two the Old Composite Bendigo Bank Trade Mark.
6 of third-party web-based brand management platform called Outfit for common marketing and promotional collateral. Bateson claims that since 2020, over 52,000 marketing jobs using the templates were created through Outfit and distributed through brochures, newspaper advertisements, flyers, posters, digital advertisements and other related print material across Australia. 8000 of these are claimed to display the updated B Trade Mark solus and were used for Facebook® and Instagram® posts. Examples of marketing and promotional collateral are provided, the vast majority of which display the Composite Bendigo Bank Trade Mark but a few display the Updated B Trade Mark solus. I note however that the examples are all either undated or dated after the Relevant Date.
§Marketing campaigns supported by television, outdoor, radio and press advertising. including:
· U campaign from mid 2008 – 2011 to promote the $40 million in contributions made by the Opponent by way of grants and sponsorships. Examples of advertisements and flyers between 2009 – 2011 are provided.
· ‘it starts with U’ campaign in 2011, leveraging off the U campaign. Copies of commercials and media schedules are provided for month ranges in 2011 and 2012. Examples of print material are also provided.
· ‘Good for U and your community’ campaign around July 2011 as an extension of ‘it starts with U’. Copies of examples of marketing and promotional flyers and advertisements in local newspapers between the period 2011 – 2012 are provided.
· ‘Work perks for U’ campaign around 2011 until 2014. Copies of examples of print material are provided.
· ‘Believe in your bank’ campaign in early 2013, with the media spend stated as over
$4 million. Two commercials were aired on television in Victoria between February and March 2013 and in cinemas between March – April 2013. A copy of one of the commercials is provided. I note that there is only use of the Old Composite Trade Mark. The television campaign was also supported by radio, outdoor, and press advertising in Victoria.
· ‘Bigger than a bank’ campaign in 2014. Copies of 4 television commercials which aired from March to September 2014 nationally are provided.
16. All six of these campaign examples only show use of the Old Composite Bendigo Bank Trade Mark.
17. Bateson provides information regarding the Opponent’s Branches, ATMs and In-Branch Materials. Bateson claims there are 308 franchised bank branches and 134 corporate bank branches branded with the B Trade Mark, both on the facade and within the branches. As of 30 June 2022, Bateson claims that only 90 of the franchised branches and 45 of the corporate branches feature the Updated B Trade Mark. Bateson provides photographs of bank facades, none of which are dated but some do show use of the Updated B Trade Mark solus. Bateson also provides undated pictures of ATMs which only show use of the Composite Bendigo Bank Trade Mark. In addition, Bateson provides copies of undated marketing brochures, poster, and flyers which I note only feature the Composite Bendigo Bank Trade Mark.
18. Bateson then states that in addition to branch services, the Opponent has provided its banking and financial services online via its digital banking platform since around 2001 and mobile banking App since 2011. The Opponent also provides an investment trading mobile banking App. Bateson provides the number of downloads of the Apps for periods which are both before and after the Relevant Date. An undated printout of the online banking platform which only shows the Composite Bendigo Bank Trade Mark and undated screenshots of the Apps showing use of the Updated B Trade Mark solus.
19. According to Bateson the B Trade Mark is prominently featured on the Opponent’s credit and debit cards, all the ATMs and, as of 30 June 2022, 459 eftpos machines. Bateson provides pictures of the credit and debit cards from 2021 which show use of both the Old and Updated B Trade Marks, and undated business information regarding eftpos machines with pictures of eftpos machines displaying the Composite Bendigo Bank Trade Mark
20. Bateson provides information regarding the Applicant’s branding and trade mark use including a report detailing the advertising material published, and mediums used, by the Applicant. Bateson claims that the Applicant’s promotional materials including its website and app bear similarities to the Opponent’s Up brand’s digital banking platform and app.
Summary of EIA
21. Twiss states that the Applicant provides ‘Pay on Demand’ services, through which Australian consumers can obtain short-term unsecured loans for a 5% flat fee and has done so since October 2020. The services are digital and only available to consumers online through the website and the ‘Beforepay’ app.
22.
Twiss provides copies of media articles and blog posts, including in Australian newspapers such as the Australian Financial Review and The Australian and information regarding awards and accolades to show market recognition of the Applicant’s business before the Relevant Date.
23. Twiss states that the Applicant used the following composite mark from October 2020 to July 2021 and only ever used a B Device solus where use of the composite mark was not practical. In March 2021 the Applicant initiated a rebranding process which resulted in the Trade Marks, which have been in use since 3 July 2021.
24. Twiss claims there are differences between the Opponent’s and Applicant’s products and services offerings, customer bases and reputations.
25. Twiss provides information as to how Australian banks use their respective logos and claims that consumers are accustomed to seeing the logos of Australian banks and/or financial institutions as identifiers of their products and/or services without the name of the relevant institution accompanying it. Twiss claims it is rare for use to be made of their logo without their master brand. Twiss refers to the Opponent’s use and the use by the Commonwealth Bank, National Australia Bank, Westpac and ANZ on websites, social media accounts and mobile applications to support his claim.
26. Tait provides the results of a search of the Australian Trade Marks Register for figurative “B” logo trade marks in classes 9 and 36 with a priority date before the Relevant Date which disclosed fifty trade marks for a figurative “B” logo and 58 composite trade marks consisting of a stylised “B” device as a prominent element. Tait also conducted online searches using Google® and the Wayback Machine to provide examples of the figurative “B” logo marks in use before the Relevant Date.
27. Tait also provides the results of searches on the Apple App store using the search terms “finance”, “bitcoin”, “bpay”, “banking” and “bank” for finance and banking-related mobile applications under a “B” device which disclosed 6 apps.
Summary of EIR
28. It is not necessary to summarise the entire Second Bateson Declaration as it primarily consists of comments in reply to a number of the claims raised in the Twiss Declaration. While I have considered all the comments in my decision, the only comment I will summarise, which is supported by evidence, is that traditional Australian banks have invested heavily in the fintech industry and hold ownership stakes in numerous fintech companies, both within the lending sector, payments sector and a range of other fintech sectors.
Discussion and Reasons
Section 44
29. Section 44 relevantly provides:
44 Identical etc. trade marks
(1)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 goods) 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 goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
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.
(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.
30. In the SGP, the Opponent nominates the trade marks in the following table:
Registration Number Mark Classes 657380 36 657381 36 717172 36 746687 36 877199 36 1138805 36
1138806 9, 36 1404760 16, 36 1755643 36 2024447 9, 36, 42 2024449 9, 36, 42
(‘Opponent’s Registered Marks’).
31. As a starting point, to successfully oppose the Applications pursuant to s 44, the Opponent must establish that:
·at least one of the Opponent’s Registered Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant;
·the Applicant’s Trade Marks are substantially identical with, or deceptively similar to at least one of the Opponent’s Registered Marks; and
·the Applicant’s Goods and Services are similar goods and services or closely related goods and services to the goods and services claimed by the Opponent’s Registered Marks.
32. I am satisfied that the priority dates of Opponent’s Registered Marks are earlier than the Relevant Date and are in a name other than the Applicant.
33. The Applicant does not dispute that the goods and services of the parties overlap. I am satisfied that the Applicant’s Goods and Services overlap with the goods and services covered by the Opponent’s Registered Marks.
34. The Opponent’s submissions claim that only Registration 2024447 for the Opponent’s Updated B Trade Mark is substantially identical to Application 2024447. The marks appear below:
Opponent Applicant (‘Applicant’s B Trade Mark’)
35. While I have chosen this colour version of the Applicant’s B Trade Mark as the most similar in colour scheme for comparison purposes, it should be noted that neither mark is limited as to colour.
Substantial Identity
36. Whether there is substantial identity is a question of fact.7
37. The starting point of an analysis as to whether marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd, where his Honour stated:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.8
38. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”.9
7 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [53] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
8 (1963) 109 CLR 407, 414.
9 Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495, [62] (Gummow J).
39. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,10 (Pham Global) the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global as:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.11
40. The Opponent argues that both marks consist of a stylised B device, both feature shading and both feature soft roundness for the curves of the B.
41. The Applicant argues that the Applicant’s B Trade Mark is a letter B, stylised by the use of shading as a 3D shape but the Updated B Trade Mark consists of 2 overlapping B letters. The Applicant also refers to the differing indexing of the respective marks – the Applicant’s as a B and the Opponent’s as BB.
42. On the matter of indexing by the Trade Marks Office, indexing identifies the elements that make up a trade mark and therefore inference and speculation play a role. I do not believe it appropriate to take into account differing indexing of marks, which is highly subjective, when considering whether 2 marks are substantially identical.
43. In my experience, the letter B is normally depicted with roundness for the curves of the B. This is the case for most common fonts. To me, this is not a highly distinctive element of any trade mark consisting of the letter B.
10 Pham Global [2017] FCAFC 83.
11 Ibid [52].
44. While the Opponent may argue that the Updated B Trade Mark is a stylized B, which with shading creates a ‘sense’ of a second B, in my opinion, the Updated B Trade Mark is more likely than not to be seen as double Bs, one atop the other. Whilst it is impossible to say what percentage of people will see a B and what percentage a BB, there is some support for my opinion in the First Bateson Declaration as Bateson refers to the Opponent’s B Trade Mark as the double B logo12 and the copies of branding documents for the Opponent’s vehicles refer to the Double B graphic.13
45. On a side by side comparison there are clear and unmistakable differences between the respective marks which mean that a total impression of dissimilarity emerges from a comparison between the marks. Therefore, the Applicant’s B Trade Mark is not substantially identical to the Updated B Trade Mark.
46. As I have not found the Applicant’s B Trade Mark to be substantially identical, I will now consider whether any of the Opponent’s Registered Marks are deceptively similar.
Deceptive similarity
47. Section 10 provides a definition of deceptively similar being that “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”.
48. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in
Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].14
12 First Bateson Declaration [18].
13 Ibid Exhibit SB-2 Tab 24.
14 Shell (n 6) [13].
49. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.15 This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.16 The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer, allowing for an imperfect recollection of the trade marks.17 The impression comes from the trade marks as a whole, and involves a consideration of the look, sound, effect, meaning and ideas conveyed by the trade marks.
50. In estimating the effect or impression produced on the mind of potential consumers, I note the comment in Clark v Sharp in relation to the appropriate comparison:
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 results of such matters, but by judging the effect of the respective wholes.18
51. For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser.
52. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd19 conveniently stated the relevant principles, which may be summarised as follows:
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;20
(b)
in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;21
15 Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (n 4); Registrar of Trade Marks v Woolworths Ltd
[1999] FCAFC 1020, [50] (French J).
16 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
17 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd (2004) 209 ALR 1, [74]-[75] (Moore, Sackville & Emmett JJ).
18 (1898) 15 RPC 141, 146 (Byrne J).
19 [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
20 Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] 168 IPR 42, 55 [69].
(c)the marks should not be compared side by side;22
(d)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 (or services), then similarities both of sound and of meaning may play an important part;23
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;24
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;25
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used);26
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;27
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;28
(j)
it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or
21 Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538.
22 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641.
23 Ibid.
24 Ibid 658. See also Shell (n 6).
25 C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43].
26 Shell (n 6) 415.
27 Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39], quoting Pioneer Hi-Bred Corn Co v
Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62.
28 Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83].
confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;29
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;30 and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.31
53. The Opponent submits that a key feature of the Opponent’s Registered Marks is the distinctive B device. Therefore, consumers who see the Trade Marks which also feature a B device are likely to assume it is part of the Opponent’s family of marks. Further the B device is the part of the marks likely to be imperfectly recalled because of its size and prominence. In the context of the Applicant’s Goods and Services, consumers, especially younger consumers who obtain finance and banking services online, are likely to see the Trade Marks and be caused to wonder whether the goods and services come from the Opponent. The addition of the word BEFOREPAY in the Beforepay Composite Marks is not sufficient to prevent consumer confusion.
54. The Applicant submits that consumers will not be confused because they will recall the differences between the respective marks including the aural and visual differences, the differing impression and evocation of the stylisation of the respective marks and the additional word BEFOREPAY in the Beforepay Composite Marks. The Applicant also submits that the state of the Register shows a plurality of B devices in respect of finance and banking services and that relevant consumers will give thought and attention before engaging with finance and banking services.
Updated B Trade Mark and Applicant’s B Trade Mark
29 Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (n 4) 594 - 595; See also Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, 382 [50].
30 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658.
31 Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67], citing Australian Woollen Mills
Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 657.
55. I will firstly consider whether the Applicant’s B Trade Mark is deceptively similar to the Updated B Trade Mark as my conclusion is likely to bear upon the issue of deceptive similarity vis a vis all of the other marks under comparison.
56. In light of the authorities, the question is whether there is a real tangible risk that the result of the use of the Applicant’s B Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case the Applicant’s computer software goods and financial, banking and monetary services bearing the Applicant’s B Trade Mark are from the same source as the goods and services bearing the Updated B Trade Mark.
57. The context of the comparison is that of the finance and banking industry, which would predominantly include the adult population (noting that children can also have bank accounts) from those requiring less sophisticated financial and banking services such as an everyday bank account to those requiring more sophisticated financial and banking services such as wealth management.
58. There is clearly an overlap in the parties’ customer base and an overlap in the way the parties provide their goods and services. While finance and banking services are the type which generally require a consumer to interact with the service provider before engaging its services, these services are increasingly offered and obtained online or digitally. This online and digital interaction does not mean that consumer confusion would be heightened. Regardless of what services a consumer requires, financial and banking services are engaged with a relatively high degree of care and attention. This view is supported by the Court in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited.32
59. Further, I believe the Australian population is accustomed to seeing single and double letter trade marks in the marketplace and distinguishing one from the other, particularly because most, if not all, of these trade marks have some degree of stylisation.
60.
In my opinion, both trade marks under comparison are strongly memorable as visual devices and the impression of each is, in its own different way, distinctive. While both marks contain a B or a BB, this fact alone is not sufficient to lead to confusion, Even allowing for imperfect recollection and considering the surrounding circumstances. I do not consider that there is a real tangible
32 [2019] FCA 1553.
danger of deception or confusion. The respective marks would not, in my view, be easily confused.
61. Therefore, I do not believe the Applicant’s B Trade Mark is deceptively similar with the Updated B Trade Mark.
Old B Trade Mark and Applicant’s B Trade Mark
62. As I have found that the Applicant’s B Trade Mark is not deceptively similar with the Updated B Trade Mark, I move then to consider whether the Applicant’s B Trade Mark is deceptively similar with the Old B Trade Mark. For the same reasons outlined above, and because the Applicant’s B Trade Mark is in my opinion visually and conceptually much further removed from the Old B Trade Mark, I am satisfied that it is not deceptively similar.
Updated and Old B Trade Mark and Beforepay Composite Marks
63. I now move to consider whether the Beforepay Composite Marks are deceptively similar with the Updated B Trade Mark and/or the Old B Trade Mark. I am also satisfied that both of the Applicant’s marks are not deceptively similar. The presence of the distinctive word Beforepay in the Applicant’s marks serves to further distinguish these marks.
Remainder of the Opponent’s Registered Marks and Applicant’s Trade Marks
64. Finally, I turn to consider whether the Applicant’s Trade Marks are deceptively similar with any of the remainder of the Opponent’s Registered Marks. Again, for the reasons above and following, I am satisfied that the Applicant’s Trade Marks are not deceptively similar. The remainder of the Opponent’s Registered Marks are for the Old B Trade Mark in combination with the word BENDIGO or the words BENDIGO BANK with or without other descriptive words, including the Old Composite Bendigo Bank Trade Mark. The Opponent argues that a key feature of these marks likely to be imperfectly recalled is the Old B Trade Mark. I disagree. While the Old B Trade Mark is a part of these marks, the words BENDIGO and BENDIGO BANK do as much and arguably more work than the B device.
65. The Opponent’s argument that where a mark appears to be part of an earlier “family” of marks, that mark may be thought to be likely to deceive or cause confusion because of the risk that people will see it as being associated with the earlier marks, does not advance the Opponent’s
position. While some of the Opponent’s Registered Marks which contain the Old B Trade Mark may form a family, the Opponent’s Updated Marks are not part of this family. The rebranding by the Opponent has resulted in marks too visually and conceptually different from the Old B Trade Mark to be part of the family.
66. In Scotch Whisky Association v De Witt,33 Sundberg J was not persuaded by the family of trade marks argument as there were a number of prior registered trade marks belonging to different parties that incorporated the relevant element. In reaching this conclusion, Sundberg J was guided by the following remarks in Re Beck Koller & Co’s Application:
When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
…
If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.
…
On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, … the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.34
67. Here there are a number of prior registered trade marks belonging to different parties that incorporate a B device in relation to financial and banking services.35 As such, this also does not advance the Opponent’s ‘family of marks’ line of argument.
33 (2007) 74 IPR 382. This is discussed in the context of s 60, however at the time there was a requirement under s 60 for the trade marks to be substantially identical or deceptively similar.
34 (1947) 64 RPC 76, 83.
35 Tait Declaration [6] – [10].
68. Having compared the look, sound and ideas conveyed by all the respective trade marks and considered the surrounding circumstances, I am not satisfied that there is a real and tangible danger of deception or confusion.
69. Having found that the Trade Marks are not deceptively similar to any of the Opponent’s Registered Marks, I find on that basis, the requirements which need to be met pursuant to s 44 have not been satisfied and this ground of opposition is not made out.
Section 60
70. The provisions of s 60 are reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
Theregistration 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.
71. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Marks would be likely to deceive or cause confusion.
72. In summary, the SGP states that since 1995, the Opponent has continuously provided banking and financial services under and by reference to a B Logo and composite trade mark comprising the term Bendigo Bank and a B Logo (together the ‘Bendigo Brand’). In 2019, the Opponent adopted the Updated Opponent’s Marks. The Opponent uses these marks in many colour combinations including white, black, purple, orange, red, blue, and green and uses the Updated B Trade Mark solus as the icon for the Opponent’s computer and mobile applications, As a consequence of extensive use, the Opponent has acquired a substantial reputation in the Bendigo Brand. The Opponent claims the Trade Marks are very similar to the Updated Opponent’s Marks and that the Applicant is using the Trade Marks in very similar colour combinations to the Opponent. Given the Opponent’s reputation in the Bendigo Brand and the
Updated Opponent’s Marks, use of the Trade Marks would be likely to deceive or cause confusion.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick
(‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.36
74. Further, Kenny J stated in McCormick that:
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 ... 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.37
75. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.38 Here, as I have previously stated, the relevant market is likely to include most of the Australian population. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.39
76. The Opponent bases the s 60 ground on all the Opponent’s Registered Marks. Notably, each is considered a separate trade mark for the purpose of s 60.40
77. The Opponent’s evidence collectively refers to the use of Bendigo Bank and a B Logo. The SGP refers to a reputation in the Bendigo Brand which includes the Opponent’s Old Marks and the
36 [2000] FCA 1335, [81].
37 Ibid [86].
38 See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
39 ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart, Gummow and French JJ).
40 Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J); Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J).
Opponent’s Updated Marks. The Opponent’s written submissions refer to the Opponent’s reputation in the Bendigo Trade Marks which are the Opponent’s Registered Marks.
78. Evidence of use which establishes that a reputation exists for a composite trade mark of a word and device will not automatically establish that a reputation also exists for the word or device independently.
79. By bundling together evidence as to reputation of all the Opponent’s Registered Marks, it makes it difficult for me to form a conclusion on the reputation of each of these marks for the purposes of s 60. It seems to me the easiest way to discuss and consider the reputation of the Opponent’s Registered Marks is to consider them as follows:
Opponent’s Old Marks (with or without other descriptive words)
80. I refer to my earlier comments on Opponent’s evidence and in particular that other than the impressive revenue figures and advertising expenditure, a great deal of the Opponent’s evidence in respect of these marks is undated or dated after the Relevant Date, only shows use of the Old Composite Bendigo Bank Trade Mark and not the Old B Trade Mark solus, does not show use of the Old Composite Bendigo Bank Trade Mark with other descriptive words or contains internet links for which the linked page has not been included in the evidence.
81. On the evidence, does the Opponent have a reputation in the Old Composite Bendigo Bank Trade Mark (with or without other descriptive words)? Given the predominant use of the Old Composite Bendigo Bank Trade Mark, and the impressive revenue and advertising spend, I am satisfied that at the Relevant Date, the Opponent had a reputation in the Old Composite Bendigo Bank Trade Mark for financial and banking services and computer software for financial and banking services. I am not however satisfied that the Opponent had a reputation in the Old Composite Bendigo Bank Trade Mark with other descriptive words as there is no evidence to support such a conclusion.
82. As I am satisfied that the Old Composite Bendigo Bank Trade Mark had a reputation before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Marks would be likely to deceive or cause confusion. This will be discussed below under the heading “Likely to deceive or cause confusion”.
83. On the evidence, does the Opponent have a reputation in the Old B Trade Mark? The only use of the Old B Trade Mark as an independent trade mark is limited to use on the Opponent’s credit and debit cards in 2021. The Opponent submits that use of the Old Composite Bendigo Bank Trade Mark can be relied upon to support use of the Old B Trade Mark solus and relies on Kenny J’s comments in Sports Warehouse, Inc v Fry Consulting Pty Ltd where she said:
I accept, as Sports Warehouse contended, that a sign may be registrable as a trade mark even though it is used together with another trade mark, and that there can still be use of a mark where it is a component of a larger composite mark… Each case turns on its own facts and the trade mark in question viewed in the context of those facts.41
84. I am not satisfied of the facts and evidence of this case that use of the Old Composite Bendigo Bank Trade Mark can be relied upon to support use of the Old B Trade Mark solus. All of the Opponent’s evidence bar one shows use of the Old Composite Bendigo Bank Trade Mark which importantly contains the name of the source of the Opponent’s financial and banking services, namely Bendigo Bank In my opinion, the Opponent cannot piggyback off the reputation in the Old Composite Bendigo Bank Trade Mark to support a reputation in the Old B Trade Mark. I am therefore not satisfied that at the Relevant Date, the Opponent had acquired a reputation in the Old B Trade Mark.
85. Therefore, there is no need for me to consider the second limb of s 60 in relation to the Old B Trade Mark.
Composite Bendigo Bank Trade Mark
86. I again refer to my comments on Opponent’s evidence and in particular that the first use of this mark was 20 March 2020, a great deal of the Opponent’s evidence is dated after the Relevant Date, undated or contains internet links without copies of those linked webpages. The evidence that is dated consists of television advertisements, advertisements on social media and some sponsorship material. Further, while the exact advertising and revenue figures for the period 20 March 2020 to the Relevant Date are unknown, approximate figures are substantial.
87. The Opponent argues that the fact that some of Bateson’s evidence is undated, is not relevant and should be read in light of Bateson’s claim that the change of branding occurred in March
41 [2010] FCA 664, [133].
2020.42 Further the Opponent argues that the update of the new branding has been consistent and widespread since March 2020, other than on facades of branches and ATMs.
88. The Opponent also argues that the Opponent’s 2021-2022 media partnership with Channel 9, is the same campaign as in 2020. The Opponent relies on the comments of Birchett J in Conde Naste Publications Pty Ltd v Taylor that:
[But] it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.43
89. On the evidence, does the Opponent have a reputation in the Composite Bendigo Bank Trade Mark? The Bateson Declarations do not specifically claim that any of the undated evidence or evidence dated after the Relevant Date reflect content which existed before the Relevant Date. I am aware that rebranding of advertising and promotional materials, social media and internet sites is relatively simple, compared to rebranding of bank facades and ATMs. Given the significant revenue and advertising and promotional spend, and the evidence of use on television advertisements, social media advertisements and some sponsorship material, I am satisfied that a sufficient reputation existed in the Composite Bendigo Bank Trade Mark before the Relevant Date. In my opinion, the Opponent’s Composite Bendigo Bank Trade Mark enjoyed the reputation contemplated by s 60 at the Relevant Date for financial and banking services and computer software for financial and banking services.
90. As I am satisfied that the Composite Bendigo Bank Trade Mark had a reputation before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Marks would be likely to deceive or cause confusion. Again, this will be discussed below under the heading “Likely to deceive or cause confusion”.
Updated B Trade Mark
91. I refer to my comments on Opponent’s evidence with respect to the Composite Bendigo Bank Trade Mark, which have relevance here. Further, the evidence only shows very limited and undated use of the Updated B Trade Mark solus namely a merchandise item, materials produced
42 First Bateson Declaration [19].
43 (1998) 41 IPR 505, 509.
by Outfit, an undated single bank facade, use on the Opponent’s credit and debit cards in 2021 and undated apps.
92. On the evidence, does the Opponent have a reputation in the Updated B Trade Mark? The answer is no. I am not satisfied on the basis of the evidence that at the Relevant Date, the Opponent had acquired a reputation in Updated B Trade Mark. Therefore, there is no need for me to consider the second limb of s 60 for the Updated B Trade Mark.
Likely to deceive or cause confusion
93. As I am satisfied that the Old Composite Bendigo Bank Trade Mark and the Composite Bendigo Bank Trade Mark had a reputation before the Relevant Date, pursuant to s 60(b), consideration must now be given to whether, because of that reputation, use of the Trade Marks would be likely to deceive or cause confusion.
94. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.44
95. The likelihood of deception or confusion must be real and tangible.45 It has been recognised that ‘the test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient if consumers would have cause to wonder if the goods or services provided in association with the use of the mark the subject of the application were being provided by the same person as the owner of the mark in which the reputation had been established.46 To this end, it has been observed that ‘the threshold for confusion is not
44 [1979] RPC 410, 423 (citation omitted).
45 Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (n 4).
46 Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
high’47 and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.48
96. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
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.49
97. In summary, the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the Old Composite Bendigo Bank Trade Mark or the Composite Bendigo Bank Trade Mark, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and services of the parties. Each of these is a variable.
98. The Opponent submits that there is a “real tangible danger” of deception or confusion in relation to the use of the Trade Marks having regard to:
·the substantial reputation of the Old Composite Bendigo Bank Trade Mark or the Composite Bendigo Bank Trade Mark;
·the customer overlap;
·the overlap in the parties providing financial and banking services via an App;
·customers are accustomed to banks and other financial institutions using logos accompanied by the name of the relevant institution; and
·the number of bank-fintech relationships providing services digitally.
99. In light of the above, the Opponent claims that consumers are likely to be caused to wonder whether the Applicant’s Goods and Services provided under the Trade Marks are from the same
47 Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
48 Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
49 Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original). See also Qantas Airways Ltd v Edwards [2016] 338 ALR 134, [142] (Yates J).
source as the Opponent or whether the Trade Marks are part of the same family as the Opponent’s marks.
100. The Applicant submits that there is no “real tangible danger” of deception or confusion in relation to the use of the Trade Marks having regard to:
·the type of financial services actually offered by the Applicant;
·the type of consumer would obtain financial and banking products with a degree of care;
·use of a logo and a master brand is not unique;
·many others have a registration for a B logo with a master brand;
·different providers offer financial services using a B solus mark in close proximity with a master brand;
·the differences between the Old Composite Bendigo Bank Trade Mark and the Composite Bendigo Bank Trade Mark with the Trade Marks, visually, aurally and conceptually.
101. In my opinion, the Old Composite Bendigo Bank Trade Mark and the Composite Bendigo Bank Trade Mark are inherently distinctive, the relevant consumer base is the same (but is a consumer base which takes care in obtaining financial and banking services, which naturally lessens the potential for deception or confusion) and the Opponent’s reputation in the Old Composite Bendigo Bank Trade Mark, in particular, and the Composite Bendigo Bank Trade Mark is sufficiently strong. What is left to consider is the degree of similarity between the trade marks under consideration.
102. I have already discussed the similarities and differences between the trade marks under s 44. In my opinion, the only resemblance between the respective marks is that there is a letter B (either as a single or double B) and a word beginning with B – in this case BENDIGO BANK and BEFOREPAY. On the basis of the lack of resemblance of the Old Composite Bendigo Bank Trade Mark and the Composite Bendigo Bank Trade Mark with any of the Trade Marks visually, aurally or conceptually, the strength of the reputation in the Old Composite Bendigo Bank Trade Mark or the Composite Bendigo Bank Trade Mark is not such that it eclipses the very clear differences between the trade marks. I am therefore not satisfied that there is a real and tangible danger that use of the Trade Marks would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers and therefore the s 60 ground of opposition has not been established.
Section 42(b)
103. Section 42(b) relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if: […]
(b) its use would be contrary to law.
104. Under the s 42(b) ground of opposition the Opponent must demonstrate that use of the Trade Marks would be contrary to law.50
105. As observed by Rangiah J in Primary Health Care Ltd v Commonwealth:
It is not enough for a party opposition registration to show that s 18 of the ACL [Australian Consumer Law] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.51
106. The SGP claims that the Opponent repeats the matters claimed under s 60 and says that by reason of those matters, use of the Trade Marks would be contrary to sections 18 and 29 of the Australian Consumer Law (ACL), being conduct that is misleading or deceptive. The Opponent expands on the SGP in its submissions in respect of s 29(1), limiting it to ss 29(1)(g) and (h) of the ACL, which refers to making a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits or that the person making the representation has a sponsorship, approval or affiliation.
107. In summary, ss 18, 29(1)(g) and 29(1)(h) of the ACL require that I be satisfied that there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods and Services or as to it having some false connection with the Opponent. Unlike s 60, ss 18 and 29 of the ACL cannot be established by demonstrating use of the Trade Mark would merely give consumers cause to wonder if there is some association with the Opponent.52
50 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, [28] (Madgwick J).
51 (2017) 260 FCR 359, [411].
52 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).
108. The Opponent submits that the look and feel of the Applicant’s branding bears striking similarities to the Opponent’s UP brand digital banking platform and app, which I note makes no reference to the Opponent or the Opponent’s Bendigo Brand. This, in conjunction with the parties having the same consumers and offering the same services, the Opponent’s reputation in the Bendigo Brand and the deceptive similarity of the Trade Marks, means that consumers are likely to be misled or deceived that there is some type of connection with the Opponent.
109. As already indicated in respect of s 60, the Opponent has failed to establish that ground of opposition. This has a causal effect on whether the Opponent can succeed under the s 42(b) ground because of the more stringent test for misleading or deceptive conduct under s 18 of the ACL.
110. If it was relevant to take into account, the Opponent’s claims regarding the Applicant’s branding would not change my opinion on whether use of the Trade Marks are likely to cause deception or confusion with the Old Composite Bendigo Bank Trade Mark or the Composite Bendigo Bank Trade Mark. I am not satisfied that use of the Trade Marks is likely to mislead or deceive or amount to a false connection. It follows that, on the stricter test posited by the ACL, the Opponent has failed to establish that the Applicant’s use of the Trade Marks would be contrary to ss 18 or 29 of the ACL for the Applicant’s Goods and Services.
111. Therefore, the s 42(b) ground of opposition has not been established.
Decision
112. Section 55 relevantly provides:
Decision
(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.
113. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application numbers 2191497, 2191498 and 2191499 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
Costs
114. The Opponent and Applicant have both sought costs, and I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent in the relevant amounts set out in Schedule 8 of the Regulations. If the Applicant applies for a certificate of costs, those costs are to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.53
Anne Makrigiorgos Hearing Officer Oppositions and Hearings Trade Marks and Designs 11 December 2023
53 [2001] ATMO 78 (Hearing Officer Williams).
Annexure A
Trade Mark Individual Reference Group Reference Old B Trade Mark Opponent’s Old Marks Old Composite Bendigo Bank Trade Mark Updated B Trade Mark Opponent’s Updated Marks Composite Bendigo Bank Trade Mark
Key Legal Topics
Areas of Law
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Intellectual Property
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Statutory Interpretation
Legal Concepts
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Statutory Construction
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