Cabcharge Australia Limited v E2 Interactive
[2017] ATMO 76
•28 July 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Cabcharge Australia Limited to registration of trade mark application 1446021 (9, 35, 36, 38, 40, 41) - POWERED BY FASTCARD and device – in the name of e2Interactive Inc.
| Delegate: | Katrina Brown |
| Representation: | Opponent: Mr. Stephen Rebikoff of Counsel instructed by Davies Collison Cave Applicant: Mr. Scott La Rocca of HWL Ebsworth Lawyers |
| Decision: | 2017 ATMO 76 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 44, 60 and 62(b) – s 44 partially established – s44(4) applied to some goods and services - trade mark to proceed to registration for refined specification. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Cabcharge Australia Limited (‘the Opponent’) to the registration of the following trade mark:
| Trade Mark Application No: | 1446021 |
| Trade Mark: |
|
| Applicant: | e2Interactive Inc. (‘the Applicant’) |
| Filing Date: | 30 August 2011 |
| Specification: | Class 9: Magnetic and/or encoded cards and tokens of value or exchange, including telephone calling cards, value cards, gift cards, debit cards, credit cards, prepaid cards and stored value cards; computer terminals and other hardware and apparatus for use with magnetic and/or encoded cards and tokens of value or exchange, including for the purposes of activating, deactivating and reading cards, and performing other transactions, including at point of sale; point of sale apparatus and terminals; games (‘the designated goods and services’) |
| Endorsement: | Provision of subsection 44(4) and/or Reg 4.15A(5) applied. |
The trade mark application was examined as required under s 31 of the Act. Grounds for rejection under s 44 were identified during examination. The Applicant provided evidence of prior use and the provisions of s 44(4) were applied. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 29 November 2012.
The Opponent filed a Notice of Opposition on 27 February 2013. This was before the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and those amendments do not apply to this matter.
In due course, the parties filed evidence in support of the opposition and evidence in answer. The Opponent did not file evidence in reply.
The matter came before me, a delegate of the Registrar of Trade Marks on 26 April 2016. Mr. Stephen Rebikoff of Counsel instructed by Davies Collison Cave made submissions on behalf of the Opponent. Mr. Scott La Rocca of HWL Ebsworth Lawyers made submissions on behalf of the Applicant.
Grounds of opposition and onus
In the Notice of Opposition, the Opponent nominated most of the grounds of opposition available under the Act. In written submissions prepared for the hearing, the Opponent confirmed that it would only be pursuing grounds of opposition under ss 42(b), 44, 60 and 62(b) of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132]-[133].
The relevant date at which the rights of the parties are to be determined is 30 August 2011 (‘the relevant date’) being the filing date of the trade mark application.[3]
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
Declaration of Lena Janaki Balakrishnan (Davies Collison Cave) made on 11 April 2014 with Exhibits A to G (‘Balakrishnan Declaration’).
Evidence in answer
Declaration of Scott La Rocca (HWL Ebsworth) made on 13 July 2015 with Exhibits SLR-1 to SLR-4 (‘La Rocca Declaration’). Exhibit SLR-1 is a declaration of Mark Singer (Director of InComm Australia & New Zealand Pty Ltd) made on 17 September 2012 (‘Singer 1’) with exhibits MS1 to MS24. Exhibit SLR-2 contains another declaration by Mark Singer made on 7 August 2012 (‘Singer 2’). Information has been redacted from Singer 2 and the exhibits have not been provided as part of this opposition proceeding.
Singer 1 and Singer 2 contain clauses to the effect that all of the information provided in these declarations is confidential. In this regard I note the following from Source Homeloans Pty Ltd v Coles Group Ltd:
It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[4]
[4] [2008] ATMO 17 [5]-[6].
There are arguably sensitive commercial matters in the Applicant’s evidence which I will not discuss in any detail in my reasoning. However I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.
The Opponent’s evidence
The Opponent was established in 1976 as a financial services provider for the taxi industry in Australia.[5] It develops and implements technology, equipment and services relating to payment systems used in taxis. Approximately 97% of Australian taxis have a Cabcharge electronic payment system.[6]
[5] Balakrishnan Declaration 3[4].
[6] Ibid Exhibit A.
On 25 October 2010 the Opponent sought registration of the following trade mark:
| Trade Mark Application No: | 1390374 |
| Trade Mark: | FASTCARD (‘Fastcard Trade Mark’) |
| Applicant: | Cabcharge Australia Limited |
| Filing Date: | 25 October 2010 |
| Specification: | Class 16: Printed matter and publications, including printed cards, pamphlets, brochures, tickets, receipts, coupons relating to taxi transportation services and the payment of same by electronic funds transfer; credit/ debit cards; token exchange |
| Endorsement: | Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. |
Subsequently on 29 March 2011 the Opponent sought registration of the following trade mark:
| Trade Mark Application No: | 1416896 |
| Trade Mark: | CABCHARGE FASTCARD (‘Cabcharge Trade Mark’) |
| Applicant: | Cabcharge Australia Limited |
| Filing Date: | 29 March 2011 |
| Specification: | Class 16: Printed matter and publications, including printed cards, pamphlets, brochures, tickets, receipts, coupons relating to taxi transportation services and the payment of such services by electronic funds transfer and/or token exchange; credit/ debit cards; tokens of exchange |
The Opponent’s trade marks are applied in the following manner to cards issued by the Opponent.[7]
The cards enable customers to pay for taxi services that have the Opponent’s contactless payment terminals.[8]
[7] Ibid 6[16].
[8] Ibid Exhibit B.
It is declared in the Balakrishnan Declaration that the Fastcard Trade Mark was created by the Opponent in 2010.[9] In 2011, the Opponent began rolling out cards bearing the Fastcard Trade Mark to its existing customers.[10] Exhibit C to the Balakrishnan Declaration is a copy of a mail-out dated May 2011. From the content of the mail-out it seems that it accompanied the cards being sent to existing customers. The mail-out contains references to the Fastcard Trade Mark and also to the Cabcharge Trade Mark.
[9] Ibid 5[11].
[10] Ibid 5[13].
The Opponent used radio, magazine and direct promotions and advertising to inform new customers about products bearing the Fastcard Trade Mark.[11] Exhibit D to the Balakrishnan Declaration contains the following advertisements:
[11] Ibid 5[14].
Screenshots from the website of the Australian Newspaper ‘ The screenshots show banner advertisements with the words ‘Cabcharge Fastcard’ and images of the Opponent’s card as reproduced in [15] of this decision. The screenshots are not dated however it is declared that they are from 24 February 2011.[12]
Screenshot from the website ‘ showing the top half of the card, including the word ‘Fastcard’, reproduced in [15] of this decision. The screenshot is not dated and the declaration does not provide any specificity as to the date of this advertisement.
Advertisements from the Taxi Industry Magazine. It is declared that these advertisements are from 2010 to 2013.[13] The advertisements show the card reproduced in [15] of this decision and also the word ‘Fastcard’ usually in close proximity to the word ‘Cabcharge’.
Advertisements from the December/February 2013 issue of Taxi – The Official Journal of the NSW Taxi Council Limited, the January/February 2013 issue of Taxi QLD and the April/May 2013 issue of Meter. Each of these advertisements shows the card reproduced at [15] of this decision.
Full page banner advertisement showing the domain name ‘fastcard.com.au’ and the card reproduced at [15] of this decision. It is declared that this banner advertisement appeared in The Australian, The Daily Telegraph, Herald Sun and the Brisbane Courier Mail in November 2010.[14]
[12] Ibid 5[15].
[13] Ibid.
[14] Ibid.
The Opponent also promotes the Fastcard Trade Mark on their website ‘ Printouts from the Opponent’s website dated 10 April 2014 have been provided. These printouts show use of the word ‘Fastcard’ and also the card reproduced at [15] of this decision.
[15] Ibid 6[16].
Revenue figures have been provided for 2010 through to 2013.[16] These figures are substantial however they relate to the Opponent’s revenue generally. They are not specific to the revenue attributable to a particular trade mark. The declarant also states that Cabcharge branded card turnover increased from 2010 to 2011.[17] It is not clear what portion of this increase is attributable to use of the Fastcard Trade Mark.
[16] Ibid 7[19].
[17] Ibid 7[20].
The Applicant’s evidence
As stated above, Singer 1 and Singer 2 are made by Mr Mark Singer, the Director of InComm Australia & New Zealand Pty Ltd (‘InComm’). InComm is a member of the InComm Group: a group of companies that includes the Applicant.
The InComm Group develops, designs and manufactures prepaid cards for third parties (‘card partners’). The cards can be redeemed for the card partners’ goods and services such as downloadable games. The InComm Group also distributes the cards to retailers to sell to the end-consumer.[18]
[18] Singer 1, 2[10].
Mr Singer has declared in Singer 1 that InComm is an authorised user of the Trade Mark.
InComm has 19 card partners relating to the Australian market.[19] The name of each of the 19 card partners has been provided as has the date that each of the respective card partner agreements was executed.[20] Mr Singer states that each of these agreements is in relation to the Fastcard brand and or technology.[21]
[19] Ibid 5[18](e).
[20] Ibid Exhibit MS7.
[21] Ibid 5[18](e).
In Singer 1 it is declared that in May 2010 InComm began approaching retailers in relation to providing prepaid cards to the Australian market.[22] Exhibit MS2 to Singer 1 contains presentations titled InComm Executive Overview and InComm Overview which were made to two retailers in May 2010. Also included in Exhibit MS2 are the 2010 and 2011 versions of the presentation Content Range Australia and New Zealand. It is declared that this presentation was developed in 2010 and has been presented to every retailer approached by InComm.[23] Each of the presentations in Exhibit MS2 contains images of prepaid cards bearing the Trade Mark. The two presentations given in May 2010 also make a single reference to Fastcard technology.
[22] Ibid 3[16].
[23] Ibid 3[17](iii).
Copies of emails between InComm and two Australian retailers dated August 2010 have been provided.[24] Images of prepaid cards, some of which bear the Trade Mark, were sent as attachments to these emails.
[24] Ibid Exhibit MS2.
Mr Singer declares that the first cards bearing the Trade Mark were delivered to an Australian retailer on 22 September 2010.[25] Exhibit MS10 to Singer 1 is an email from that Australian retailer acknowledging delivery of stock. The email gives no indication as to whether the stock received contained cards bearing the Trade Mark.
[25] Ibid 5[19](c).
InComm currently has agreements with 8 national retailers in Australia[26] and distributes 31 different prepaid cards through this network.[27] Singer 1 states that each of the 31 cards, except for the Apple cards, bears the Trade Mark.[28] From the information before me, it is not clear precisely how many of the 31 cards are Apple cards or how many bear the Trade Mark.
[26] Ibid 4[17](c).
[27] Ibid 5[19].
[28] Ibid.
Singer 1 states that Australian retailers have sold significant volumes of cards[29] and that the current annual turnover for goods or services bearing the Trade Mark is significant and growing at a rapid rate.[30] These statements have not been supported by the provision of sales or revenue figures relating to the Australian market. Confidential Exhibit A to Singer 2 seemingly contains sales figures pertinent to the Australian market[31] however none of the exhibits to Singer 2 have been provided as part of this opposition matter.
[29] Ibid 5[19](e).
[30] Ibid 7[27].
[31] Singer 2, 5[19](a).
Goods and services bearing the Trade Mark have been promoted in the following ways:
a.Print advertisements – Exhibit MS16 to Singer 1 consists of advertisements of cards that appeared in the store catalogue of a specific retailer in April, May and September of 2011. Each of the advertisements shows images of cards, some of which bear the Trade Mark in the top left hand corner. For example:
Exhibit MS11 to Singer 1 is a copy of a full page advertisement that the declarant states appeared in the Xbox 360 Magazine and the GameInformer Magazine in December 2010. The advertisement contains images of seven prepaid cards, three of which bear the Trade Mark in the top left hand corner.
b.Exhibits at gaming and retailer conferences – Exhibit MS12 to Singer 1 is a copy of a presentation given by Mr Singer at the EB Games Conference 2010 on 14 and 15 October 2010. The presentation references Fastcard technology and contains images of cards bearing the Trade Mark in the top left hand corner. Similar images of cards were also used on a banner at the EB Games Expo 2011 in October 2011 and in November 2011 at the 7-Eleven Australia 1st Choice National Conference.[32]
c.Advertising on websites – Exhibit MS14 to Singer 1 consists of printouts from the website ‘ dated 10 January 2012. These printouts contain the Trade Mark and also references to Fastcard technology. Exhibit MS15 to Singer 1 consists of printouts from the following card partner websites: ‘ ‘ ‘ ‘ The printouts are dated 19 March 2012, with the exception of the printout from ‘ncmall.neopets.com’ which is undated. The printouts contain images of cards bearing the Trade Mark in the same manner as the examples reproduced at [29](a) of this decision.
SLR-3 and SLR-4 to the La Rocca Declaration contain photographs of goods bearing the Trade Mark dated 13 July 2015. These photographs show the Trade Mark in the top left hand corner on the front of a game card in the same manner as the examples reproduced at [29](a) of this decision. The photographs also show the Trade Mark in the top left hand corner on the back of game cards as shown below.
[32] Singer 1, 6[21](b); Exhibit MS13.
SLR-3 to the La Rocca Declaration also contains an email from Mr Ryan Lewis (in-house Counsel for InComm) confirming that as at 12 July 2015 he was not aware of any cases of confusion between the Applicant’s use of the word ‘fastcard’ and other uses of ‘fastcard’ in Australia such as the use by the Opponent.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
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 services) 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 that the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(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:
(c)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 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
(d)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier that the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
The Opponent must establish that the Trade Mark is substantially identical with or deceptively similar to an earlier filed trade mark, in the name of a person other than the Applicant, in respect of similar and or closely related goods or services.
In support of this ground the Opponent relies on the Fastcard Trade Mark and the Cabcharge Trade Mark. These trade mark applications are both held in the Opponent’s name and have an earlier priority date than the Trade Mark.
In the terms set out in s 14 of the Act and the relevant authorities,[33] I consider the following goods and services claimed in the specification of the Trade Mark to be similar and or closely related to the goods and services claimed by the Opponent’s earlier trade marks:
[33] Jellineck’s Application (1946) 63 RPC 59; Application by Beck, Koller & Company (1947) 66 RPC 76.
| Trade Mark | Opponent’s trade marks |
| Class 9: Magnetic and/or encoded cards and tokens of value or exchange, including telephone calling cards, value cards, gift cards, debit cards, credit cards, prepaid cards and stored value cards | Class 9: Printed matter and publications, including printed cards, pamphlets, brochures, tickets, receipts, coupons relating to taxi transportation services and the payment of such services by electronic funds transfer and/or token exchange; credit/ debit cards; tokens of exchange |
| Class 9: Computer terminals and other hardware and apparatus for use with magnetic and/or encoded cards and tokens of value or exchange, including for the purposes of activating, deactivating and reading cards, and performing other transactions, including at point of sale; point of sale apparatus and terminals Class 35: electronic services for the purposes of activating, deactivating and reading cards for others | Class 36: credit/debit card payment and token exchange facilities for use with the payment and charging of taxi services |
| Class 36: Issuing tokens of value or exchange, being value cards, gift cards, debit cards, prepaid cards, stored value cards, vouchers, tickets and coupons; electronic services for performing financial transactions involving prepaid debit cards and stored value cards, using a computer network; all of the aforementioned being for use in relation to online, downloadable or digital content, including games, game content, and multimedia content, software, music, movies, videos, podcasts and books; collection and processing of payments in relation to the aforementioned cards, tokens and vouchers | Class 36: Electronic funds transfer; credit/debit card payment and token exchange facilities for use with the payment and charging of taxi services; issuing of tokens of exchange |
The Opponent is not seeking to establish that the Trade Mark is substantially identical to the Fastcard Trade Mark or the Cabcharge Trade Mark. I agree that the trade marks are not substantially identical. The Opponent’s submission is that the Trade Mark is deceptively similar to both the Fastcard Trade Mark and the Cabcharge Trade Mark.
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
The assessment of deceptive similarity relies upon an estimation of the trade marks’ impressions, specifically:
[B]etween, on the one hand, the impression based on the recollection of the [Opponent’s trade marks], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Trade Mark].[34]
If those impressions are likely to cause the public to wonder whether the goods or services come from the same source, then the trade marks are considered to be deceptively similar.
[34] Shell Co. (Aust) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 107, 415.
It is also relevant to bear in mind that an average consumer has a general awareness that traders may update their branding from time to time.
The Opponent’s application 1390374 consists solely of the word ‘Fastcard’. As ‘Fastcard’ is the only element of this application it is the essential, distinguishing and memorable feature.
The Opponent also relies upon the Cabcharge Trade Mark which consists of the words ‘Cabcharge’ and ‘Fastcard’. In my opinion ‘Fastcard’ is equally as striking and memorable as the word ‘Cabcharge’ within this trade mark.
The Trade Mark also contains the word ‘Fastcard’. It is represented in a much larger font size than the other word elements within the Trade Mark. Additionally the other word elements ‘Powered by’, by their very nature serve to emphasise the word ‘Fastcard’.
In my opinion the word ‘Fastcard’ is a memorable, essential and distinguishing feature of the Trade Mark and also of both the Opponent’s trade marks. It is likely that deception or confusion could occur through contextual confusion whereby the word ‘Fastcard’, the common and memorable element in each of the respective trade marks, may induce traders and the public to believe that the trade marks emanate from the same trade source.
Having found that the Trade Mark is deceptively similar to both of the Opponent’s trade marks, the onus now shifts to the Applicant to establish prior use, honest concurrent use or other circumstances.
Prior use
Pursuant to s 44(4) of the Act I may not reject the Trade Mark on the basis of the Opponent’s trade marks if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the goods and services set out in [35] of this decision:
beginning before the priority date of the Opponent’s trade marks (25 October 2010 and 29 March 2011); and
ending on the priority date of the Trade Mark (30 August 2011).
For the purposes of s 44(4) authorised use of a trade mark is taken to be use of that trade mark by the owner of the trade mark.[35] Mr Singer declares that InComm is an authorised user of the Trade Mark. This was not challenged by the Opponent.
[35] Section 7(3) of the Act.
It is declared by Mr Singer that the first shipment of cards bearing the Trade Mark was delivered to an Australian retailer on 22 September 2010.[36] An email from the Australian retailer dated 24 September 2010 confirms receipt of the shipment.[37] This email does not indicate that the cards received bore the Trade Mark. Other than the statement by the declarant, the Applicant has not provided any other evidence to confirm that the shipment contained cards bearing the Trade Mark. In this instance, I do not think it is fatal to establishing prior use. Singer 1 contains the following:
InComm’s first Australian shipment of cards bearing the Trade Mark was delivered to the retailer EB Games Australia on 22 September 2010.
This statement is unambiguous. It clearly states that cards bearing the Trade Mark were shipped by an authorised user and delivered to an Australian retailer on 22 September 2010, approximately one month before the earliest priority date of the Opponent’s Trade Marks.
[36] Singer 1 5[19](c).
[37] Ibid Exhibit MS10.
Mr Singer also declares that the Trade Mark was used at the EB Games October Conference 2010 held from 14-15 October 2010 on the Gold Coast, Australia. At this conference, InComm had an exhibition space in which they displayed a suite of cards bearing the Trade Mark. Mr Singer also gave a presentation at this conference. Exhibit MS 12 to Singer 1 is a copy of that presentation. The presentation contains images of the packaging which the cards are attached to. The Trade Mark is on the top left hand corner of some of this packaging, in the same manner as depicted in [29] of this decision.
In Singer 1 it is declared that the Applicant executed agreements with card partners relating to the Australian market. Nine of these agreements were executed from 5 October 2010 to 3 January 2011 and an agreement was executed in June 2011 and August 2011.[38] The Applicant also has agreements with national retailers through whom it distributes and activates the cards. Four of these agreements were executed between November 2010 and May 2011.[39] It is declared by Mr Singer that both the card partner and retailer agreements relate to the Applicant’s FASTCARD brand.[40]
[38] Ibid Exhibit MS7.
[39] Ibid Exhibit MS3.
[40] Ibid 5[18](e); 4[17](c).
InComm and the Applicant placed a full page advertisement in the December 2010 issue of Xbox 360 Magazine and also the GameInformer Magazine.[41] The advertisement refers to ‘InComm prepaid game cards’ and the Trade Mark is shown on the packaging of 3 of the prepaid cards, in the same manner as depicted in [29] of this decision.
[41] Ibid Exhibit MS11.
I am satisfied that the Applicant has prior continuous use of the Trade Mark. However, I am only satisfied of this in relation to a narrow specification of the goods and services claimed. The evidence supports applying the provisions of s 44(4) in relation to the following:
Class 9: Magnetic and/or encoded cards and tokens of value or exchange being prepaid game cards;
Class 36: Issuing tokens of value or exchange, being prepaid game cards.
For the sake of completeness, there is nothing in front of me to suggest that other circumstances apply in this instance. As to honest concurrent use, the Applicant has at best 14 months of use in Australia (including preparatory steps to enter the Australian market) prior to the relevant date, only some of which was concurrent with the Opponent. The Applicant has not provided sales figures or advertising expenditure to counteract the short period of concurrent use. Accordingly, I am not satisfied that the Applicant has established honest concurrent use of the Trade Mark.
Section 60
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the relevant date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[42]
[42] [2000] FCA 1335 [81] (‘McCormick’).
The reputation in the other trade mark must be amongst a significant or substantial number of people.[43] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[44] In 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.[45]
[43] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.
[44] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[45] [2000] FCA 1335 [86].
The Opponent contends that the trade marks set out at [13] and [14] of this decision (‘the FASTCARD Trade Marks’) had, before the relevant date, acquired a reputation in Australia. In my opinion, the evidence before me does not prove this contention.
In the written submissions, it is stated that the Opponent has slightly less than 12 months of use of the FASTCARD Trade Marks before the relevant date. This is a short period of time in which to establish the type of reputation contemplated by s 60 of the Act.
The Opponent has provided examples of its promotional activities in Australia. The following are the only promotional activities referenced in the Balakrishnan Declaration which are clearly before the relevant date:
full page banner advertisement that appeared in The Australian, The Daily Telegraph, Herald Sun and the Brisbane Courier Mail in November 2010;[46]
screenshots of banner advertisements from the website of The Australian Newspaper ‘ The screenshots are not dated however it is declared that they are from 24 February 2011;[48]
mail-out to existing customers in May 2011;[49]
full page advertisements in Taxi Industry Magazine.[50] It is declared that these are from 2010-2013.[51] The actual dates that the advertisements appeared in the magazine are not provided and I am therefore left to speculate as to how many times the advertisement featured in this magazine before the relevant date. The most I can conclude with any certainty is that the advertisement that ran in 2010 was before the relevant date.
[46] Ibid 5[15].
[47] Ibid Exhibit D.
[48] Ibid 5[15].
[49] Ibid 5[13].
[50] Ibid Exhibit D.
[51] Ibid 5[15].
Revenue figures have been provided for 2010 through to 2013.[52] The figures prior to the relevant date are significant however they relate to the Opponent’s revenue generally. The figures are not specific to the revenue attributable to the FASTCARD Trade Marks.
[52] Ibid7[19].
It is also declared that in 2012 there were approximately 125,000 FASTCARD cards being used.[53] It is not clear how many of these cards were issued prior to the relevant date.
[53] Ibid 6[18].
The declarant states that Cabcharge branded card turnover increased from 2010 to 2011.[54] Importantly this statement is in relation to Cabcharge branded card turnover. The Opponent has not detailed how many of the Cabcharge cards are branded with the FASTCARD Trade Marks. As such, it is not clear what percentage of the increase from 2010 to 2011 is attributable to use of the FASTCARD Trade Marks.
[54] Ibid 7[20].
On the information before me I am not satisfied, as a matter of fact, that the FASTCARD Trade Marks had, before the relevant date, acquired a reputation in Australia. As such, the first limb of the test for s 60 has not been met.
The s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act 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.
The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[55]
[55] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].
The Opponent relies on ss 18, 29(1)(g) and 29(1)(h) of Schedule 2 to the Australian Consumer Law (‘the ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.
Schedule 2 of the ACL relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
Section 18 and 29 of the ACL require conduct or representations that have been or are likely to mislead or deceive. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion. It follows that, on the stricter test posited by the ACL, use of the Trade Mark is not likely to mislead or deceive.
Similarly, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off.
The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
[T]he scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[56]
[56] [1989] FCA 506 [40].
Section 18 of the ACL is essentially the equivalent of s 52 of the TPA. Therefore, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.
Accordingly the s 42(b) ground of opposition has not been established.
Section 62(b)
Section 62(b) of the Act relevantly provides:
Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
…
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
The Opponent contends that during the examination process the Applicant made a number of statements about the nature and extent of its use of the Trade Mark so as to persuade the examiner to apply the provisions of s 44(4) of the Act and that these statements were false in material particulars.
In particular, the Opponent submits:
InComm claimed that the prepaid cards sold by it could be redeemed “for a variety of the card partner’s goods and services, such as downloadable music and games” and that some of those cards could be used to purchase digital content including apps, music, movies, videos, podcasts and eBooks: First Singer Declaration at [11] and [18(a)].
Further, in response to an adverse Examination Report which noted that there was no evidence of prior use in respect of certain goods and services included in the specification for the Opposed Mark, and proposed that the services in class 36 be limited to “online or downloadable games, game content or multimedia content”, the Applicant’s attorney expressly proposed that the specification instead extend to “online, downloadable or digital content including games, game content and multimedia content, software, music, movies, videos, podcasts and books” by reference to paragraph 18(a) of the First Singer Declaration.
In fact, however, all of the prepaid cards sold by InComm in Australia under the Opposed Mark at the time of these representations (and, indeed, subsequently) could only be redeemed for online gaming content. None of those cards could be used for other content such as music, software, movies, videos, podcasts or books. The only cards distributed by InComm which could be used for such content - cards for use in Apple's iTunes store - did not feature the Opposed Mark. See Second Singer Declaration at [19(b)] and Exhibit MS-9.
The Applicant has not made any submissions to the effect that these statements pointed to by the Opponent were not false in material particulars.
To avoid confusion the First Singer Declaration is referred to as Singer 2 in this decision. In this opposition, Singer 2 has not been submitted in its entirety: parts of the declaration have been redacted; and the exhibits which accompanied the declaration have not been submitted. It is therefore difficult for me to conclude that a statement within this declaration is false in material particulars. The redacted information and/or the exhibits may in fact support the statements that were made in the declaration.
In any event I am not satisfied that there is a causal connection[57] between the particular statements pointed to by the Opponent and the acceptance of the Trade Mark. It is my opinion that the Registrar would have accepted the Trade Mark under the provisions of s 44(4) of the Act in the absence of the impugned material.
[57] Mars Australia Pty Ltd v Societe des Produits Nestle SA (2010) 86 IPR 581 [10].
Accordingly the s 62(b) ground of opposition has not been established.
Decision
The grounds under ss 42(b), 60 and 62(b) have not been established.
The ground under s 44 has been partially established. However the Applicant has established prior continuous use of the Trade Mark in relation to the goods and services set out at [51] of this decision.
On 10 July 2017 I informed the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the specification was refined in classes 9 and 36 in accordance with the evidence of prior use and that the remaining conflicting goods and services were deleted. On 27 July 2017 the Applicant agreed to these amendments.
Accordingly the Trade Mark can proceed to registration, one month from the date of this decision, for the following goods and services:
Class 9: Magnetic and/or encoded cards and tokens of value or exchange being prepaid game cards; games.
Class 35: Advertising, marketing and promotion services, including promoting the goods, services, brand identity and commercial information and news of third parties through all types of media; preparing advertising and promotional material; business consultation and management services, including in regard to launching of new products; preparing business reports; retail and wholesale services; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); selling or distributing (not being transport services) (agent, wholesale, representative services, by any means) of tokens of value or exchange, including telephone calling cards, value cards, gift cards, debit cards, credit cards, prepaid cards, stored value cards, vouchers, tickets and coupons.
Class 36: Issuing tokens of value or exchange, being prepaid game cards.
Class 38: Point of sale communication services; telephone communication services.
Class 40: Manufacturing tokens of value or exchange including telephone calling cards, value cards, gift cards, debit cards, credit cards, prepaid cards, stored value cards, vouchers, tickets and coupons.
Class 41: Entertainment; Internet games (non-downloadable).
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 and that the disposition of the application should be in accordance with the Court’s order or direction.
Given the circumstances summarised at [83] of this decision, it is my opinion that each party should bear their own costs.
Katrina Brown
Hearing Officer
Trade Mark Hearings
28 July 2017
Key Legal Topics
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Commercial Law
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