bTa Vantage Pty Limited v bTa Accountants Pty Ltd as Trustee for bTa Accountants Unit Trust

[2017] ATMO 153

TRADE MARKS ACT 1995

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

Re:Opposition by BTA Vantage Pty Ltd to registration of trade mark application 1700577 (35, 36) - BTA ACCOUNTANTS (STYLISED) - in the name of BTA Accountants Pty Ltd as trustee for the BTA Accountants Unit Trust.

Delegate:	Aaron Walters
Representation:	Opponent: No submissions Applicant: Written submissions by IP Gateway Patent & Trade Mark Attorneys
Decision:	2017 ATMO 153 Opposition under section 52 of the Trade Marks Act 1995 – grounds under sections 44, 58A and 60 of the Act – no grounds established – trade mark to proceed to registration.

Background

1.     On the 25 June 2015, BTA Accountants Pty Ltd as trustee for the BTA Accountants Unit Trust (‘the Applicant’), filed an application for registration of the following trade mark:

Application number:  1700577

Trade Mark: 

(‘the Trade Mark’)

Specification of services:

Class 35

Advice on tax preparation; Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax advice (accountancy); Tax assessment (accountancy) consultancy; Tax assessment (accounts) preparation; Tax consultancy (accountancy); Tax consultations (accountancy); Tax filing services; Tax planning (accountancy); Tax preparation; Tax return advisory (accountancy) services; Tax return preparation; Tax services (business management and accountancy services); Taxation (accountancy) advice; Taxation (accountancy) consultancy; Accounting; Computerised accounting; Cost accounting; Cost management accounting; Management accounting; Auditing of accounts; Business auditing

Class 36

Financial advice relating to taxation; Financial advisory services relating to tax; Financial advisory services relating to taxation; Income tax financial advice; Provision of tax advice (financial); Tax advice (financial); Tax consultancy (financial); Tax consultations (financial); Tax financial planning; Tax returns financial consultancy; Tax services (financial); Taxation financial consultancy services; Taxation financial planning services

(‘the claimed services’)

Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2. The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on the 12 May 2016.

3. On 27 June 2016, BTA Vantage Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark as well as a Statement of Grounds and Particulars (‘SGP’). The SGP set out the grounds of opposition under sections 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 12 July 2016 and evidence in support, answer and reply were filed between October 2016 and January 2017.

4.     After being given the opportunity to do so, neither party requested a hearing in this opposition. The Applicant chose to rely on written submissions, which were filed by its representatives on 5 May 2017. The Opponent did not provide any submissions for me to consider.

Authority to hear the matter

5.     As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons and decision as required under ss 55(1) of the Act on the basis of the following evidence and the submissions provided in this matter.

[1] Pursuant to s 206(2) of the Act.

Evidence

6.     The evidence filed in this opposition consists of the following declarations:

Evidence in Support
Declarant and Position	Date Made	Exhibits
Angelo Chillari, Director of BTA Vantage Pty Ltd (‘Chillari 1’)	21 October 2016	ARC1 to ARC24
Evidence in Answer
Mark Metzeling, attorney with IP Gateway Patent and Trade Mark Attorneys (‘the Metzeling Declaration’)	24 November 2016	MSM-01 to MSM-09
Dennis Bergmans, Director of BTA Accountants Pty Ltd (‘the Bergmans Declaration’)	18 March 2016	DB-01 to DB-06
Evidence in Reply
Angelo Chillari, Director of BTA Vantage Pty Ltd (‘Chillari 2’)	25 January 2017	N/A

The Opponent

7.     Chillari 1 begins by providing background and historical information pertaining to the Opponent. The Opponent originally incorporated as BTA Normans Pty Ltd in March 2004, though later assumed the corporate identity of BTA Vantage Pty Ltd in 2007. Since incorporation, the Opponent has operated a business providing various accounting, financial, taxation and business consultancy services.

8.     On 14 November 2014 the Opponent filed the now registered trade mark no. 1658327:

(‘the Vantage Mark’)

Priority Date: 14 November 2014

Class 35:

Accounting; Computerised accounting; Accountancy; Chartered accountancy business services; Provision of information relating to accounts (accountancy); Tax advice (accountancy); Tax assessment (accountancy) consultancy; Tax consultancy (accountancy); Tax consultations (accountancy); Tax planning (accountancy); Tax return advisory (accountancy) services; Tax services (business management and accountancy services); Taxation (accountancy) advice; Taxation (accountancy) consultancy; Advice on tax preparation; Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax assessment (accounts) preparation; Tax preparation; Tax return preparation; Business accounts management

(‘the Vantage Services’)

9.     The Opponent asserts it has provided its services to clients located throughout Australia and internationally in Europe and Asia under the BTA Vantage company name. Chillari 1 provides examples of the BTA Vantage branding used in its stationery and signage, including online and via social media platforms. This declaration also provides confidential marketing and financial information related to the Opponent’s expenditure on advertising and promotion of the Vantage Mark.   

Grounds of Opposition and Onus

10. In the absence of submissions to the contrary, the Opponent relies upon all of the nominated grounds from the SGP, being those under ss 44, 58A and 60 of the Act. To succeed in an opposition, the Opponent need only establish one of the nominated grounds in relation to all the claimed services.[2] 

[2] Section 55(1), Trade Marks Act 1995 (Cth)

11.     The onus of proof rests with the Opponent.[3] The standard being on the balance of probabilities.[4] The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 25 June 2015 (‘the relevant date’).[5]

Discussion

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

[4] Pfizer Products Inc. v Karam (2006) 219 FCR 585, 591-4 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, 595.

Section 44

12. The relevant parts of s 44 of the Act are reproduced below:

Identical 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.

(3) …

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

13.     As mentioned earlier, the Opponent did not provide submissions in support of this or any other ground. As such, I refer to the relevant reasons provided in the SGP. The Opponent contends:

The Applicant’s trade mark is substantially identical with, or deceptively similar to [the Vantage Mark] registered by [the Opponent] from 14 November 2014 in respect of similar services. In particular, the Applicant has applied for their trade mark to be registered in class 35, which [the Vantage Mark] is already registered in. Both marks relate to accounting services. 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 of or the registration of the Vantage Mark in respect of similar services.

14. To establish the ground of opposition under section 44(2), the Opponent must satisfy the following requirements:

(a)That the Vantage Mark has an earlier priority date than the relevant date (‘the first requirement’); and

(b)That the Trade Mark claims services which are similar to those of the Vantage Mark (‘the second requirement’); and

(c)That the Trade Mark is substantially identical or deceptively similar to the Vantage Mark (‘the third requirement’).[6]

[6] Paraphrasing the requirements mentioned in Five V's Pty Ltd v La Gaia Pty Ltd [2017] ATMO 31 [19].

The first requirement

15.     The first requirement is satisfied as the Vantage Mark has a priority date earlier than the relevant date.

The second requirement

16.     The Opponent has made particular reference to the similarity of the services claimed in Class 35 by both the Trade Mark and the Vantage Mark. The class 35 services in both specifications include various tax advice and accountancy services that are either the same, or of the same description. I find that these services are similar.

17.     Neither the Opponent nor the Applicant have commented on whether the Vantage Services are similar to the claimed services in Class 36. Nevertheless, I find that they are for the following reasons.

18. Section 14(2) of the Act considers services to be similar if they are either the same or of the same description as those of the other services. Certain factors are to be considered in determining the similarity of services, including the nature, purpose or characteristics of the services and whether such services are usually provided by one and the same business or person.[7]

[7] See the factors set out Jellinek's Appn (1946) 63 RPC 59 and expanded upon in Beck, Koller & Company's Application (1947) 64 RPC 76.

19.     Class 36 of the designated services specifies various financial services relating to taxation. On a notional consideration they are of a similar nature to tax accountancy services, and share similar characteristics such as to be provided by the same person or business.  

20.     In the absence of any evidence put before me which demonstrates a material difference in the characteristics of these services,[8] I consider the claimed services, in their entirety, to be similar to the Vantage Services for the purposes of ss 14(2) of the Act. This requirement is, therefore, established.

The third requirement

[8] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 as discussed in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 [15].

21.     In the SGP, the Opponent contends the Trade Mark is substantially identical with, or deceptively similar to,the Vantage Mark . I must therefore decide whether the Trade Mark is first substantially identical with the Vantage Mark before deciding whether it is deceptively similar.

22.     To determine whether trade marks are substantially identical, Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd explained the relevant test is one of a ‘total impression of resemblance’ arising from a side by side comparison.[9] Accordingly, I have reproduced the two marks below:

[9] [1963] HCA 66; (1961) 109 CLR 407 [415]

23.     Compared together, the visual similarities between the trade marks lie in the prominently displayed acronym ‘BTA’ placed above a less prominent word element (i.e. ‘accountants’ and ‘vantage’). Otherwise, the other visual aspects adorning or surrounding the acronym in the respective trade marks differ.

24.     In its submissions, the Applicant provided a useful summary of the differences, which I shall reproduce here:

[I]t is clear the [Vantage Mark] has distinctive features that set is apart from [the Trade Mark], most notably:

a)  The use of the word VANTAGE;

b) The use of a lowercase ‘b’ and ‘a’ with an uppercase T in different font type;

c)  The absence of the word ACCOUNTANTS;

d) The use of a line dot line device between the two words; and

e)  The use of a square box around the exterior.

All these elements prevent a finding of substantial identity as they present a total impression of dissimilarity.

25.     Taking into account the differences listed above (especially the presence of the distinctive word ‘vantage’ in the Opponent’s trade mark) I agree that on a side by side comparison, there is not a total impression of resemblance between the marks as to  make them substantially identical. 

26. Turning to whether the marks are deceptively similar, s 10 of the Act provides:

For the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

27.     The likelihood of deception or confusion existing between the marks must be real and tangible.[10] In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd, Windeyer J provided:

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 trade mark.[11]

[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.

[11] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].

28.     The Applicant contends that the impressions between the marks are such that they are not deceptively similar. In reaching this conclusion, heavy emphasis has been placed by the Applicant’s representative on the inclusion of the word VANTAGE within the Vantage Mark. In particular, the Applicant submits the Vantage Mark conveys the following impressions:

·     Taking into account the definition of the term ‘vantage’, the services provided under [the Vantage Mark] are ‘being provided by a business that will provide the consumer with a good view of their finances;’ and

·     An ordinary consumer, in an attempt to makes sense of the words, is highly likely to recall the Vantage Mark as ‘bT advantage’ based on the impression being one of a good view of the consumers finances.

29.     In contrast, the Applicant contends the Trade Mark conveys only that the services are provided by ‘an accounting firm named BTA.’

30.     The impression between the trade marks is a consideration involving visual and aural similarites as well as the  idea of each trade mark,[12] with each mark being considered in its entirety.[13] On this point, the decision in Clark v Sharp provided:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[14] 

[12] Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; (2009) 81 IPR 354, [95] summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196.

[13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92]

[14] (1898) 15 RPC 141, 146

31.     In considering the the ‘respective wholes’ of the trade marks, I do not conclude, as the Applicant submits, that the inclusion of the word ‘vantage’ so alters the impression of the Vantage Mark, such that it is likely to be recalled as a completely different trade mark, being ‘bT advantage’. I find that there is no basis for such a conclusion.

32.     Taking into account the doctrine of imperfect recollection,[15] I am of the opinion that along with the visual and aural similarities, the two trade marks would create a very similar impression in the mind of the relevant consumer.

[15] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74]

33.     Earlier, I noted the visual similarity between the trade marks lay in the prominently displayed acronym ‘BTA’ placed above a less prominent word element. Although other visual dissimilarities exist between the device elements, there remains clear similarities between the aural elements. As a result of its visual prominence, the aural focus of each trade mark is on the distinctive acronym and I think it highly likely a consumer would recall  the element ‘BTA’ when referring to either the Trade Mark or the Vantage Mark. In other words, the ‘BTA’ element is one ‘which strikes the eye and fixes itself in the recollection’[16] due to its distinctiveness and prominence within each trade mark.    

[16] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 162.

34.     Considering all of the above, I am satisfied that the Trade Mark is deceptively similar to the Vantage Mark. Consequently all three requirements for establishing a prima facie ground of opposition under s44(2) of the Act have been met.

35. That being said, in so finding, the Applicant submits ss 44(4) of the Act applies, due to its prior continuous use of the Trade Mark.

Prior Continuous Use

36. Section 44(4) of the Act affords the Registrar the ability to accept an otherwise deceptively similar trade mark, provided the Applicant can demonstrate to the Registrar that it has continuously used the Trade Mark before the priority date of the Vantage Mark. The onus is on the Applicant to establish prior use and for me to decide on the evidence, rather than assertions alone, that such use has occurred.

37.     The Bergmans Declaration provides a history of the use claimed by the Applicant.[17] Notably, paragraph 13 of the declaration states the Applicant began using the Trade Mark in approximately May 2015. As the priority date for the Vantage Mark is for 14 November 2014,  such a statement would normally preclude a finding of prior use.

[17] Bergmans Declaration, paragraphs 8-19.

38.     However, the Applicant also relies on prior use of two alternate trade marks by its predecessor in title since as early as 1998. These variations are in the form of the plainword acronym ‘BTA’ (‘the plainword version’) and a stylised version, which I have reproduced below.

(‘the former stylised version’)

39.     The Applicant has relied upon numerous examples in evidence which it asserts is use by its predecessor in title. For brevity, I have provided a table containing the examples in the Applicant’s evidence which I consider merit discussion (collectively referred to as ‘the variant marks’):

Exhibit	Date	Representation
BD-02 Bergmans Declaration	1998 - 2014	(the letterhead evidence)
BD-04 Bergmans Declaration	2001 -2002 & 2010 - 2011
	2001 - 2014	(the tax return evidence)
BD-04 Bergmans Declaration & MSM-08 Metzeling Declaration	2013	(the exterior sign evidence)

40. The requisite use of a trade mark, as defined under s 17 of the Act, must be use in the course of trade. I accept the tabled examples above as evidence of use ‘in the course of trade’ of the former stylised version. Before moving into whether this is use of the Trade Mark without alterations that substantially affect its identity by a predecessor in title, I will first explain why the examples constitute use.

41.     The letterhead evidence chronicles stationery used as a correspondence template by John Bergmans, between 1998  and 2014. This stationery features the former stylised version within the letterhead alongside Bergmans Tax Accounting. The first of the examples provided includes a letter which states a change of the trading name to Bergmans Tax Accounting. Subsequent representations featuring the ABN beneath Bergmans Tax Accounting in the letterhead reinforces this as reference to the trading name, rather than as use of a trade mark.

42.     In Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation, Lander J stated:

The applicant has established that it intended to use the title ‘On the Run Convenience Store’ in its various stores. The applicant has established, in my opinion, an intention to conduct a business under the name ‘On the Run’ or ‘On the Run Convenience Store’. That intention has been established by the registration of the business names both in South Australia and in New South Wales. It has not, however, established any intention it intended to deal with or provide goods using the ‘On the Run’ mark. There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person.[18]

[18][2005] FCA 1278, [73-74]

43.     In considering the letterhead evidence, I accept the former stylised version stands alone as the intended trade mark, while the trading name merely operates as a reference to the name in which the business was conducted and not as part of the trade mark. However, trade mark use is not simply any use, but public use in the course of trade.[19] Despite certain examples within the letterhead evidence leaving blank an intended recipient, I am satisfied from the Bergmans Declaration that they are indicative of correspondence sent between 1998 and 2014.

[19] Ibid, [67].

44.     This leads me to the tax return evidence. Two representations are relevant here. The first being a document featuring the former stylised version used without any accompanying material, and the second being a series of documents featuring the former stylised version alongside the word ‘accountants’. These are both dated documents beginning in 2001.

45.     Importantly, paragraph 12 of the Bergmans Declaration states the Applicant’s predecessor in title provided the first document on request to its clients, while the second series of documents were provided on an annual basis to all of its clients. I consider the tax return evidence, along with the accompanying statement, to demonstrate use in the course of trade. Finally, the exterior sign evidence reinforces the Applicant, intended, as of 2013, the former stylised version to act as trade mark in its own right.         

46.     I accept the evidence demonstrates use of the former stylised version in the course of trade as early as 2001.

Use with additions or alterations  that do not substantially affect the identity of the Trade Mark

47. When considering use of a trade mark, s 7(1) of the Act provides:

Use of trade mark

If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. [emphasis added]

48.     The question before me is whether use of the variant marks is use of the Trade Mark ‘with additions or alterations that do not substantially affect the identity of the trade mark.’ I have primarily focussed on the former stylised version as the same finding would likely to apply to the plainword version.

49.     The court in Sports Warehouse, Inc v Fry Consulting Pty Ltd provided:

In this case, the obvious differences between the trade mark TENNIS WAREHOUSE and the domain name to which the respondent referred do not substantially affect the identity of the mark within the meaning of s 7(1) of the Act. As Sports Warehouse submitted, Windeyer J’s statement of the test for substantial identity (see s 44 of the Act) in Shell Co (Aust) Ltd v Link Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 is also a guide as to whether “a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark” (s 7(1)): see also Link Recruitment Pty Ltd v Employment and Training Inc (2006) 69 IPR 614 at [21]-[22] (Hearing Officer Nancarrow). Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[20]

[20] [2010] FCA 664, (154)

50.     The expression ‘additions or alterations’ was also discussed by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd:     

… [I]t is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity.[21]

[21] (No.2) [2010] FCA 1380, [256]

51. It follows that the test for whether use of the former stylised version amounts to use of the Trade Mark, within the meaning of ss 7(1), is the same as for determining whether the two trade marks are substantially identical. Again, as this is a side by side comparison, I have reproduced them below.

52.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd the Full Bench of the Federal Court reasoned:

The essential elements are the words “Insight” and the device. The word is the same in both marks. The device appears to the left of the word in both marks. While the differences which her Honour noted do exist, the dominant cognitive cues in both marks is a device which is circular in shape evoking an eye to the left of the word “Insight”, in circumstances where the other words “clinical imaging” and “radiology” are descriptive of the services offered. The importance of the visual differences which her Honour noted, and which we accept exist, must be assessed having regard to these essential elements of the marks. Once this necessary exercise is undertaken, we consider that not only is there a total impression of resemblance between the marks, but also that the differences between the marks are slight having regard to their essential elements or the dominant cognitive clues which they present.[22]

[22] [2017] FCAFC 83, at [56]

53.     The comparison by the court above is analogous to the comparison I must undertake in the current matter. The essential element or dominant cognitive cue in both marks is the acronym ‘BTA’. The additional word ‘ACCOUNTANTS’ in the Trade Mark is descriptive of the services offered and does little to detract from the acronym itself. I accept there exists some differences such as the thinner, angular and connected lettering in the former stylised version and the exaggerated ‘A’ in the Trade Mark. However, these differences do not prevent an overall impression of resemblance  existing between the trade marks and I conclude the use of the former stylised version (and therefore also the plainword version) is use of the Trade Mark.

Use by a predecessor in title

54.     As mentioned earlier, the Applicant is BTA Accountants Pty Ltd as trustee for the BTA Accountants Unit. Paragraph 2 of the Bergmans Declaration states “the Applicant bought the business BTA Accountants (also known as Bergman’s Tax Accountants)” (‘the BTA business’), including all goodwill and assets from John Bergmans.

55.     However, exhibit MSM-02 of the Metzeling Declaration, being a letter from John Bergmans to the Registrar, states he sold the BTA business to his son Dennis Bergmans and business partner Andrew Hohnke. Dennis Bergmans, although the director of BTA Accountants Pty Ltd, is a separate legal entity to the Applicant.

56. Section 6 of the Act defines a predecessor in title as: [my emphasis]

"predecessor in title", in relation to a person who claims to be the owner of a trade mark, means:

a)  if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first-mentioned person--that other person or any one of those other persons; or

b) if paragraph (a) does not apply--the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first-mentioned person.

Note:   In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business

57.     Nevertheless, the Bergmans Declaration specifies the Applicant as the purchaser of the BTA Business, while the letter from John Bergmans corroborates the goodwill surrounding the Applicants acquisition of the BTA business. I conclude there is sufficient evidence of title to support the proposition that use of the former stylised version by John Bergmans constitutes prior use of the Trade Mark by a predecessor in title and therefore also by the Applicant.   

58. The provisions of prior continuous use (s44(4)) have been established. Necessarily, I find that the ground of opposition under s 44(2) of the Act has not been established.

Section 58A

59. In the event of acceptance under s44(4) of the Act, the Opponent has opposed the registration of the Trade Mark under s 58A of the Act. In the SGP the Opponent provides:

The Opponent has a history of earlier use of the same/similar trade mark no. 1658327 in relation to accounting services. In particular, BTA Vantage Pty Limited was registered as an Australian Proprietary Company with ASIC on 23/03/2004 and commenced providing accounting services from approximately that date, it was also registered with the Tax Agents Board on 01/08/2008 as a Company Tax Agent – Business. The use has been continuous since that time.    

60. Section 58A provides:

58A  Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)similar goods or closely related services; or

(ii)similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:For predecessor in title see section 6.

61.     I refer to paragraph 14 of Chillari 1 which provides:

The [Vantage Mark] was first used by the company on 1 July 2004, when the Company started using the [Vantage Mark] on our letterheads.

62.     I have set out the requirements for use of a trade mark above. In reviewing the evidence priovided by the Opponent, I do not find the above claim of its first use of the Vantage Mark to be substantiated. At best, I find the earliest indication of use may potentially be contained in exhibit ARC 11 to Chillari 1, the contents of which are confidential. That exhibit generally indicates annual income and advertising expenditure from 2005.  

63.     As I have concluded earlier, the Applicant has established its prior use of the Trade Mark  as early as 2001. This  clearly predates the earliest potential use put forward by the Opponent.

64. Therefore, section 58A(2) of the Act has not been satisfied and I find that the Opponent has not established a ground for opposition under s 58A.

Section 60

65.     The Opponent has further opposed the Trade Mark on the basis of an acquired reputation in the Vantage Mark. I refer once more to the ground as particularised in the SGP:

The Opponent has a history of earlier use of the same/similar mark “BTA” (registered trade mark no. 1658327) in relation to accounting services. In particular, BTA Vantage Pty Limited was registered as an Australian Proprietary Company with ASIC on 23/03/2004 and commenced providing accounting services from approximately that date, it was also registered with the Tax Agents Board on 01/08/2008 as a Company Tax Agent – Business. Because of the reputation of the Opponent’s mark, the use of the Applicant’s mark would be likely to deceive or cause confusion.   

66. 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.

67.     To determine whether this ground is established, it is necessary for me to consider whether the Opponent has,firstly,  acquired a reputation in the Vantage Mark before the priority date of the Trade Mark (25 June 2015); and secondly, whether as a result of this reputation, the use of the Trade Mark is likely to deceive or cause confusion.

Reputation in the Opponent’s Trade Mark

68.     The Opponent must establish the reputation in their trade mark as a matter of fact.[23] Section 60 further refers to ‘reputation in Australia’. The requisite level of reputation must be amongst a significant or substantial number of the relevant Australian consumers. As per Heerey J who, in Le Cordon Bleu BV v Cordon Bleu International Ltee, provided:

What is "significant" or "substantial" will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[24]

[23] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 23 IPR 193, (77)

[24] (2000) 50 IPR 1

69.     On this point, paragraph 25 of Chillari 1 declares the Opponent has obtained a substantial reputation and goodwill in the Vantage Mark for its accounting services.

70.     In ConAgra Inc v McCain Foods (Aust) Pty Ltd, Lockhart J provides useful guidance as to the modes in which reputation may be established:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner.[25]

[25] Ibid, (118).

71.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd the Full Bench of the Federal Court provided:

Conagra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like… [T]he reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged. ^[26]

[26] [2017] FCAFC 83, at [81]

72.     In other words, a determination of significant or substantial reputation is one which will have regard to the industry in which the parties operate, along with the contemporary measures in which persons, within that industry, seek to establish, develop or extend their reputation in the goods or services they provide.  

The Evidence

73.     Chillari 1 contains all the information regarding the reputation in the Vantage Mark.[27] Mentioned earlier, confidential exhibit ARC 11 is an outline of their annual income and advertising expenditure. There is a correlation between the increased spending on advertising and an increase in annual income. From their financial information I can infer the Opponent has established a decent sized client base.

[27] See Chillari 1 paragraph 18-25.

74.     In McCormick & Company Inc v McCormick (McCormick), Kenny J stated:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[28]    

[28] [2000] FCA 1335, [86]

75.     The Opponent contends they provide their services across Australia and internationally to clients based in Europe and Asia. However, I have not been provided with actual examples of use of the Vantage Mark showing the extent to which the Opponent conducts its business in Australia or overseas

76.     The evidence led in exhibit ARC 2, is a series of invoices with names and addresses obscured. For similar reasons given in paragraph 40-43 of my discussion above,[29] I do not view these invoices as being indicative of use of the Vantage Mark. They do not assist in the determination of the reputation in the Vantage Mark, other than to provide a guide as to the Opponent’s costs for services rendered.

[29] Relating to use of a business or trading name in the course of trade as opposed to use of a trade mark.

77.     The Opponent is further inviting me to infer from their advertising expenses that a substantial reputation in the Vantage Mark has been attained over a 10 year period. In support, Chillari 1 contains the following exhibits:

• Exhibits ARC 12-14, is email correspondence between Heusler Public Relations (HPR) and the Opponent in 2010-11 regarding a proposed brand strategy guide provided by HPR and the creation of a Facebook business page. (‘the brand strategy evidence’)
• Exhibits ARC 16-19, demonstrates the Opponent purchasing corporate membership to the Sydney Symphony Orchestra ‘Symphony Club 2011’ and the Art Gallery Society of New South Wales, the benefits of such membership and acknowledgement of their membership. (‘the corporate membership evidence’)   
• Exhibits ARC 20-22, being several invoices sent to the Opponent by Cavalletti Communications (CC) between 2013-2015 for a ‘Monthly bTa Vantage blog post’, email correspondence from CC referring to ‘bTa Vantage Leave behinds’ and examples of blog posts available on the Opponent’s website. (‘the blog post evidence’)
• Exhibit ARC 23, which shows a single Google review by a client.
• Exhibit ARC 24, which shows two letters addressed to IP Australia outlining support of the Opponent in their opposition and awareness of the Vantage Mark.

78.     No comment or evidence to has been led to show advertising or promotion of the Vantage Mark prior to 2010. Having said that, the Vantage Mark is visible in screenshots of the Opponent’s website, which it asserts was launched in 2007.[30] However, these examples are undated and no comment has been made as to the level of traffic or visits the website has received since its launch.

[30] Chillari 1, paragraph 17a.

79.     The blog post evidence may provide some indication of website use. Email correspondence shows the Opponent engaged CC to draft blog posts to feature on the Opponent’s website. These appear to be a monthly post dating back to 2013. However, the exhibit itself is illegible and cannot be relied upon. I do not consider this evidence as demonstrating reputation as a matter of fact amongst a ‘significant or substantial’ number of people in Australia.

80.     The Opponent makes available the brand strategy evidence to demonstrate the ‘development of goodwill in the [Vantage Mark]’.[31] The marketing proposal in exhibit ARC 12 contains a comprehensive branding strategy, though no comments were made as to the extent of the  implementation of the activities outlined therein. I note the few instances of correspondence between the Opponent and HPR ‘discussing the development of brochures’.[32] However, there is no indication of how many brochures were distributed or where these may have been made available. Consequently,  I do not consider this evidence as adding significantly to a reputation that may exist amongst the Australian consumers of the Vantage Mark.

[31] Chillari 1, paragraph 19.

[32] Ibid, paragraph 19b.

81.     The corporate membership evidence shows a single instance of membership in 2011 for the Sydney Symphony Orchestra, while membership to the Art Gallery Society of New South Wales occurred from 2011-2014. Similar to brand strategy evidence, the Opponent contends these memberships were obtained ‘to increase the goodwill associated with the [Vantage Mark] and the Company’s brand.’[33]

[33] Ibid, paragraph 20 & 21.

82.     While the Opponent has provided various literature showing acknowledgment of its membership, along with the corporate benefits stemming from membership to the Art Gallery Society of New South Wales, I am left only to infer how this memebership may translate into promotion of the Vantage Mark in Australia.

83.     In summary, I cannot be satisfied, as a matter of fact, of a reputation in the Vantage Mark amongst Australians before the priority date.

84. The requirements for s 60(a) have not been met and the ground of opposition has not been established.

Decision

85. Section 55(1) of the Act 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.

86.     The Opponent has not established a ground of opposition. Therefore the opposition is unsuccessful. Accordingly, I direct that trade mark application 1700577 may proceed to registration one month from the date of this decision.

87.     If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued. In the event of a decision from the court, the trade mark application will be subject to that order.

Costs

88. The Applicant has been successful in this matter. I award costs against the Opponent under s 221 of the Act in the amounts allowable under the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Aaron Walters
Hearing Officer
Oppositions and Hearings
7 December 2017