Bumble Holding Limited v Geoff Hancock and Luke Anderson

[2024] ATMO 167

TRADE MARKS ACT 1995

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

Re:Opposition by Bumble Holding Limited to registration of trade mark application number 2331239 (class 45) – HONEYPOT (figurative) – in the names of Geoff Hancock and Luke Anderson

Delegate:

Debrett Lyons

Representation:

Opponent: King and Wood Mallesons

Applicant: Mark My Words Trademark Services Pty Ltd

Decision:

2024 ATMO 167

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Bumble Holding Limited (‘Opponent’) to registration of the trade mark which is the subject of the application detailed below in the names of Geoff Hancock and Luke Anderson (‘Applicants’):

   Number:   2331239 (‘Application’)

   Trade Mark:   (‘Trade Mark’)

   Filing Date:  1 February 2023

   Specification:                   Class 45: dating service (‘Service’)

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The Application was examined and accepted for possible registration.  On 13 June 2023, the Opponent’s attorneys wrote to this Office requesting revocation of acceptance under s 38.  That request cited s 44 and an Australian trade mark registration owned by the Opponent (discussed later).  On 20 June 2023 this Office replied to the Opponent finding no circumstances engaging s 38 and refused to revoke the Application.

3. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose the Trade Mark on 14 July 2023 and a Statement of Grounds and Particulars (‘SGP’) on 14 August 2023.   A cooling–off period ensued at the request of the parties and on 26 October 2023 the Applicant filed its Notice of Intention to Defend.

4. No evidence was filed by either party.  The parties were given the opportunity to request a hearing and they requested a hearing by way of written submissions.  This office issued an official notice confirming that a hearing was scheduled by way of written submissions and setting a deadline for the filing of submissions.  Both filed Outline Submissions.

5. This matter has now been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

   Grounds, onus and relevant date

6. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59 and 60.  However, by way of the Opponent’s Outline of Submissions, the Opponent now only presses the ground of opposition under s.44.  The Opponent bears the onus of establishing that ground of opposition.[2]   The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7. The date at which the rights of the parties are to be determined is 1 February 2023 (‘Relevant Date’) being both the filing date and priority date of the Application.

   Discussion

   Section 44

8. Section 44(2) relevantly provides:

   (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.

9. In its SGP, the Opponent nominated trade mark application nos. 2272573 and 2272579 as the basis for the s 44 ground.  Application 2272573 is for the mark, BUMBLE HONEY, but the Opponent’s Outline of Submissions[4] only reference application 2272579 (IRDA 1662866) for HONEY which covers (among other goods and services) dating services provided through social networking, internet based dating, matchmaking and personal introduction services, and matchmaking services (‘Opponent’s Mark’).

   [4] And its s 38 revocation request.

10. To succeed on this ground, the Opponent must establish that:

    ·     the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

    ·     the Services are similar to the Opponent’s Services (‘the second requirement’); and

    ·     the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the third requirement’).

11. The Applicants concede that the Opponent’s Mark has a priority date which is earlier than the Relevant Date and “is in respect of a range of goods and services, some of which are similar to the Services.”   I agree that the first requirement is met.  As for the second requirement, s 14(2) provides that services are similar to other services if they are the same or of the same description.  The respective services are similar services within the meaning of s 14, and indeed there is direct overlap.

12. In respect of the third requirement there is no submission that the compared marks are substantially identical and I find that they are not. The Opponent asserts they are deceptively similar but the Applicant takes issue with that and, in particular, takes issue with the manner in which the Opponent has framed the question – namely, that “[t]he … remaining issue is whether HONEYPOT is deceptively similar to the earlier mark HONEY. It is submitted that it clearly is.” The Applicant underscores that the Trade Mark is not HONEYPOT, but rather the complex mark shown at [1] above.

13. Neither party has commented on how the Trade Mark came to be accepted by this Office in that form.  All I can observe is that the Trade Mark was filed, examined, accepted and advertised as such.  What follows is that it is not for me to speculate as to the intentions of the Applicants or ask myself about the scope of protection if and when the Trade Mark becomes registered.  My concern is only whether the Trade Mark is deceptively similar to the Opponent’s Mark and in that regard s 10 provides 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.

14. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415, Windeyer J described the test of deceptive similarity as that of the comparison “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 [use].” There must be a real risk that the Applicants’ use of the Trade Mark will cause a significant number of ordinary persons to wonder whether it might be the case that the two services come from the same source.[5]

    [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5 per Kitto J.

15. The Opponent’s submission is that:

    The word HONEY is the entirety of the earlier mark and the essential and distinguishing feature of HONEYPOT. There is no descriptive meaning of HONEY in respect of the applied- for services and indeed no section 41 objection has been raised as against the earlier mark or HONEYPOT during examination.

16. In my assessment, this is not a case where the search for an essential and distinguishing feature of the Trade Mark is illuminating.  I do not think one is to be found and, if perchance there is, in my opinion it is not the element HONEY.  That word has its own meanings.  The term HONEYPOT has others.  I do not agree with the Opponent that “HONEYPOT can be interpreted as incorporating the words HONEY and POT” and I do not agree with the argument that “HONEYPOT is simply likely to be confused for or seen as a brand extension of HONEY.”   I agree with the Applicant’s general observation that “even in cases where a prior mark is wholly contained in the applied for mark, this does not necessarily lead to a finding of deceptive similarity, and a finding of deceptive similarity is less likely where the applied for mark conveys a different idea or concept.”

17. Aside from this conceptual difference, the marks sound different and look entirely different.  Having regard to these differences and taking account of the way in which the Services would be sought there is in my judgement a low risk that persons of ordinary intelligence and memory would be caused to wonder or be in doubt about the trade source of the Services under the Trade Mark.

18. I find that the Trade Mark is not deceptively similar to the Opponent’s Mark.  Accordingly, the third requirement of s 44 is not satisfied and the ground of opposition is unsuccessful.

    Decision

19. I have found that the Opponent has failed to establish a ground of opposition.  Accordingly, trade mark application 2331239 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.

20. The Applicants have requested an award of costs. Costs generally follow the event and therefore, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    9 September 2024