Capogreco Salvatore v Hangzhou Mainto Photography Co., Ltd

[2024] ATMO 186

TRADE MARKS ACT 1995

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

Re:Opposition by Capogreco Salvatore to registration of trade mark application number 2299853 (class 41) - HIMO - in the name of Hangzhou Mainto Photography Co., Ltd.

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Self represented

Applicant: Spruson & Ferguson

Decision:

2024 ATMO 186

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58A and 60 – none established – trade mark may proceed to registration

Background

1. On 12 September 2022 (‘Relevant Date’) Hangzhou Mainto Photography Co., Ltd. (‘Applicant’) filed trade mark application 2299853 under the Trade Marks Act 1995 (Cth)[1] details of which I reproduce below:

   Priority date: 12 September 2022

   Trade mark: HIMO (‘Trade Mark’)

   Services: Class 41: Vocational guidance (education or training advice); Organisation of exhibitions for cultural or educational purposes; Online publication of electronic books and journals; Providing online videos, not downloadable; Photography; Club education services; Health club services (health and fitness training); Entertainment; Movie studio services; Modelling for artists; Microfilming; Teaching (‘Applicant’s Services’)

   [1] A reference in these reasons to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

2. The Trade Mark was examined under s 31 and acceptance was advertised on 13 February 2023. On 1 March 2023, Capogreco Salvatore (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. On 30 March 2023, the Opponent filed their Statement of Grounds and Particulars (‘SGP’). On 7 July 2023, the Applicant filed its Notice of Intention to Defend.

3. On 24 September 2023, the Opponent filed his Evidence in Support (‘EIS’). The Applicant did not file Evidence in Answer.

4. The parties were provided with the opportunity to the heard. A decision was requested by the Applicant and neither party opted to be heard. I am to decide this matter as a delegate of the Registrar of Trade Marks on the basis of the documents identified above.

Evidence

1. The EIS consists of a declaration of Capogreco Salvatore, CEO,[2] dated 24 September 2023 (‘Salvatore’). Salvatore consists of the following text:

[2] Whilst the title provided was ‘CEO’, Salvatore specifies no organisation.

1. The attachments to Salvatore consist of:

   • Summarised details of a then-pending trade mark application to register the trade mark ‘Himo Hippocampus’ in the name of the Opponent.
   • An undated screen capture of the website
   • Undated screen captures of the Facebook page and Instagram page of HIMO Hippocampus.
   • A Google Map entry said to be ‘created in 2019’ displaying the words Himo Hippocampus and described as a ‘Photography service in Preston, Vic’.
   • Information about the business bank account of HIMO HIPPOCAMPUS, said to have been opened on 18 February 2021. This includes a certificate of balance as at 8 February 2022 and various bank statements for the period 18 February 2021 to 29 July 2022. There is no indication of the services or goods which may relate to the transactions indicated in these bank statements.
   • Various screen captures of transaction confirmations or receipts from the business bank account of HIMO HIPPOCAMPUS. Some of them include in the ‘Description’ field the words ‘Photo take’, ‘photography’, ‘photo Raymond’ and ‘[redacted]photo’.

Grounds and Onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58A and 60. The Opponent has the onus of demonstrating one or more of the grounds of opposition, on the balance of probabilities.[3] The assessment of the rights of the parties is as at the Relevant Date.[4]

Consideration

[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Section 44

1. The Opponents rely on s 44 which relevantly provides:

   44  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.

   …

2. The SGP specifies the following trade mark as being the basis for the s 44 ground of opposition:

   Priority date: 19 Feb 2022

   Trade mark number: 2250592

   Trade mark: Himo Hippocampus

   Owner: Capogreco Salvatore

   Status: refused: Opposition successful

   Specification: Class 41: Distribution (other than transportation) of videos; Editing of video-tapes; Hire of video recording apparatus; Hire of video tapes; Hire of videos; Movie studio services; Movie studios; Organising of entertainment and social events (entertainment, sporting and cultural services); Social club services (entertainment, sporting and cultural services); Photography; Portrait painting; Face painting

3. I note the decision in Hangzhou Mainto Photography Co Ltd v Capogreco Salvatore[5] concerning trade mark application number 2250592 where a ground of opposition under s 62A was established and 2250592 was refused on 27 November 2023. Because of this decision there is no trade mark specified in the SGP, or otherwise, which provides a basis for the s 44 ground of opposition.

   [5] [2023] ATMO 191 (Hearing Officer Tuohy).

4. Accordingly, I cannot be satisfied that the s 44 ground of opposition is established.

Section 58A

1. The Opponent also relies upon s 58A, which 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

   …

   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.

2. The ground of opposition under s 44 has not been established and therefore there has been no application of the provisions of s 44(4). As such, s 58A of the Act is not enlivened in the present circumstances.

3. Consequently, the s 58A ground of opposition has not be established.

Section 60

1. The Opponent also relies upon s 60, which provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned                trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

2. A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[6] It is the Opponent who must establish that a reputation exists as a matter of fact.[7] The word ‘reputation’ here means ‘the recognition of the [other trade mark] by the public generally’.[8] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[9] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[10] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue for showing that a reputation exists.[11]

   [6] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [7] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).

   [8] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).

   [9] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

   [10] McCormick (n 8) [80] (Kenny J).

   [11] Ibid.

3. Much of the evidence is not dated and there is little indication of the specific goods or services sold or offered under HIMO HIPPOCAMPUS, the trade mark identified in the SGP as the basis for the s 60 ground of opposition. The few transaction receipts which identify ‘photography’ are not a sufficient basis on which I can infer reputation. Furthermore, the number of followers indicated in the social media pages are modest and do not support the existence of reputation. Nowhere near the amount of evidence required to show a reputation for the purposes of s 60 is provided. The prerequisite to the operation of s 60, a reputation in another trade mark, is not demonstrated.

4. Accordingly, s 60 is not established.

Section 42(b)

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if 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.[12] The SGP identifies the Competition and Consumer Act 2010 (Cth), without further specification, as the law alleged to be contravened. The Opponent also submits in the attachment to its EIS that use of the Trade Mark would be contrary to ‘Consumer Law’ and constitute passing off. It is not clear that I should even consider the issue of ss 18 and 29 of the ACL or passing off since none of these were specifically identified in the SGP as the basis for the ground of opposition under s 42(b). However, for the following reasons it does not change the outcome and for the benefit of clarity I make the following comments.

   [12] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. The Australian Consumer Law (‘ACL’) forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). The ACL includes ss 18 and 29. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.

3. As already indicated in respect of s 60, I am not satisfied that there is a reputation in another trade mark so that the use of the Trade Mark for the Applicant’s Services is likely to cause deception or confusion. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. For similar reasons, to the extent the Opponent relies on the law of passing off, this is also not established.

4. The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.

Decision and costs

1. Section 55 relevantly provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:          For limitations see section 6.

2. The Opponent has not established any ground of opposition. Accordingly, trade mark 2299853 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 September 2024