Cars on Demand IP Pty Ltd v Cars on Demand Limited

[2014] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by Cars on Demand IP Pty Ltd to extension of protection of international registration designating Australia 1445724 - CARS ON DEMAND Logo – (International Registration 1087452) in Class 39 in the name of Cars on Demand Limited

Delegate:

Michael Kirov

Representation:

Opponent: Relied on written submissions prepared by McCabes Lawyers Pty Limited

Holder: Wayne Covell of Worthy of the Name Pty Ltd, assisted by Robin Covell of the same firm

Decision:

2014 ATMO 87

Regulation 17A.34 opposition: ss 43, 44 and 58 considered – no relevant connotation in trade mark – trade mark not deceptively similar to Opponent’s trade marks – Holder’s claim to ownership not displaced – extension of protection to Australia allowed.

Background

1. Trade mark application number 1445724 is the Australian designation of a request made under the Madrid Protocol by Cars on Demand Limited (“the Holder”) to extend protection of the trade mark subject of its international registration 1087452 to Australia (“the IRDA”).  Details of the IRDA are as follows:

Application No: 1445724

Priority Date:                    8 July 2011

Services:Class 39: Transport services; vehicle rental and leasing

Trade Mark:  (“the Opposed Mark”)

Endorsements:Colour Claimed: Orange, black, white and grey.  The following disclaimer has been requested under subsection 74(1): Registration of this trade mark gives no exclusive right to use or to authorise the use of the words CARS ON DEMAND.

1. After examining the IRDA, IP Australia advertised on 2 May 2013 its intention to extend protection for the Class 39 services indicated.  Cars on Demand IP Pty Ltd (“the Opponent”) subsequently opposed this pursuant to reg. 17A.34 of the Trade Marks Regulations 1995 (“the Regulations”).

2. For their evidence, the parties rely on the following declarations:[1]

Evidence in Support

▪ Ritta Khoury made 5 September 2012, with Exhibits 1 and 3-10 (“Khoury 1”)

▪ Ritta Khoury made 16 October 2013, with Exhibits 1 & 2 and 4-7 (“Khoury 2”)

[1] Khoury 1, Khoury 2 and Covell 1 were made pursuant to the Statutory Declarations Act 1959 (Cth); Burchell, Brown and Covell 2 were made pursuant to the Act. Khoury 1 is a copy of a declaration originally filed in support of acceptance of the Opponent’s then pending application 1383088 CARS ON DEMAND in Classes 35 and 41, while Covell 1 is a copy of a declaration originally filed with IP Australia in support of acceptance of opposed application 1445724 for registration.

Evidence in Answer

▪ Wayne Covell made 19 April 2013, with Exhibit WC-1 (“Covell 1”)

▪ Carin Burchell made 2 February 2014 (“Burchell”)

▪ Paul Brown made 10 February 2014 (“Brown”)

▪ Wayne Covell made 11 February 2014, with Exhibits WC-1 and 2 (“Covell 2”)

1. According to its Director Paul Brown, the Holder was “established in the United Kingdom in 2003 under the name Rogers & Brown Management t/a Cars on Demand as a car leasing company and it has continuously used the [Opposed Mark] since then.”  It changed its name to Cars on Demand Limited in January 2010.  The Holder is the owner of a 2007 UK registration for the mark covering “Transport Services; Vehicle Rental and Leasing” in Class 39 and of International Registration 1087452 for the same services (on which the currently opposed Australian application is based), protection of which has been extended to the European Community and the United States.  Mr Brown further explains that:

   The [Holder] has been very successful in the United Kingdom and has several office locations in England, Scotland, Northern Ireland and the Republic of Ireland.

   The [Holder] has plans for continental Europe, USA and Australia.  [The Holder] already receives business from the US and EU countries from both businesses and individuals visiting the UK and Ireland.  It does also plan to advertise services to people in Australia visiting the UK and Ireland.  We would actively look to find a Licensee to operate the brand and services in Australia in the future.

2. Ritta Khoury, who is the Opponent’s Managing Director, describes the Opponent as “a corporate ground transport provider company established in September 2008 which provides corporate and executive chauffeured limousine services, as well as chauffeured luxury sedans, mini vans and buses across New Zealand and Australia.”  As she explains, the opposition is essentially founded on (1) the Opponent’s claimed use of CARS ON DEMAND as a trade mark for relevant services since 2008 and (2) the Opponent’s two prior registrations detailed below:

Registration No:              1383088

Priority Date:                    13 September 2010

Services:Class 35: Event management services (organisation of exhibitions or trade fairs for commercial or advertising services); business management; cost management services

Class 41:Event management services (organisation of educational, entertainment, sporting or cultural events); booking of entertainment; advisory services related to entertainment; organisation of entertainment events

Trade Mark:  CARS ON DEMAND         (“the Opponent’s Word Mark”)

Registration No:              1383089

Priority Date:                    13 September 2010

Goods & Services:          Class 16: Printed material; brochures; travel brochures; guide books; travel guides; travel document folders; entertainment guides

Class 35:Event management services (organisation of exhibitions or trade fairs for commercial or advertising services); business management; cost management services

Class 39:Booking of hire cars; rental of cars; rental of chauffeur driven vehicles; booking agency services for travel; arranging tours; provision of tours; transport services; courier services; delivery of goods and messages

Class 41:Event management services (organisation of educational, entertainment, sporting or cultural events); booking of entertainment; advisory services related to entertainment; organisation of entertainment events

Trade Mark:  (“the Opponent’s Device Mark”)

1. I heard the matter as a delegate of the Registrar of Trade Marks on 14 August 2014 in Sydney.  The Opponent opted to rely on written submissions prepared by McCabes Lawyers Pty Limited, copies of which were provided to the Holder’s Australian representatives and me on 31 July 2014.  Wayne Covell of Worthy of the Name Pty Ltd, assisted by Robin Covell of the same firm, appeared for the Holder.  Mr Covell’s oral submissions were supplemented by written submissions emailed to the Opponent’s representatives and me on 8 August 2014.

Grounds of Opposition

1. The Opponent’s “Statement of Grounds and Particulars” (“the Statement”) lists five grounds corresponding to specific provisions of the Act, being ss 42, 43, 44, 58 and 59.  However my understanding from the Opponent’s submissions is that only those grounds based on sections 43, 44 and 58 of the Act are pressed and I accordingly treat the remaining grounds nominated in the Statement as abandoned.  The ss 43, 44 and 58 grounds are discussed below.

The Relevant Date

1. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[2] the relevant date at which the rights of the parties are to be determined is the date of the opposed application, in this case 8 July 2011, being the priority date of the IRDA (“the Priority Date”).

   [2] (1954) 91 CLR 592 at 595.

Onus and Standard of Proof

1. To succeed in its opposition the Opponent bears the onus of establishing at least one of the three grounds pressed.  I confirm I am proceeding on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[3]

Discussion

[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].

Section 43

1. The ground based on s 43 of the Act is particularised in the Statement as follows:

   The Opposed Trade Mark is likely to deceive or cause confusion given the use of the words “CARS ON DEMAND” in the Opposed Trade Mark and the Opponent’s continuous use of the same words since August 2008 in respect of goods/services similar or closely related to the services in respect of which registration of the Opposed Trade Mark is being sought.  The Opposed Trade Mark is aurally and semantically identical to the Opponent’s trade marks CARS ON DEMAND and  and given the Opponent’s continuous use of its trade marks since 2008, any use of the Opposed Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion in the marketplace.

2. Section 43 is reproduced below:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. The Opponent’s submissions as to the offending connotation were as follows:

   The [Opposed Mark] in respect of its Class 39 services is orally and aurally identical to the Opponent’s trade mark “CARS ON DEMAND” registered in Australia and, as shown by the evidence discussed above, used to offer and provide its goods and services in Classes 16, 35, 39 and 41 as well as in its trade names and Domain names.

   Consequently the overall oral and aural impressions conveyed by the [Opposed Mark] is of the words “CARS ON DEMAND” which in turn convey a clear connotation of the Opponent’s similar trade mark “CARS ON DEMAND”.

   The design features of the [Opposed Mark] are not distinctive enough to function in isolation of the words within the trade mark.  The design features of the [Opposed Mark] constitute just 20% of the visual representation of the mark and are merely “blurred light lines” consistent with the effect of passing traffic at night.  When a trade mark consists of both a word/words and a device, consumers will generally refer to the word(s) when ordering the goods/services.  Consequently any similarities between the word elements and the marks will be more important than those between their accompanying devices.  So the [Opposed Mark] which includes the Opponent’s “CARS ON DEMAND” trade mark will cause confusion notwithstanding that the [Opposed Mark] contains some graphics and the Opponent’s [Device Mark] appears with other graphics or with no other graphics but closely related services in Classes 35 and 41.

2. It is apparent from this that the “connotation” relied upon by the Opponent stems from the fact that the Opposed Mark, like the Opponent’s marks, features the words “CARS ON DEMAND”.  However, as Mr Covell submitted, reliance on s 43 for such reason is misconceived, as the offending connotation must be inherent in the opposed trade mark.  In Winton Shire Council v Lomas Spender J put it this way:[4]

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

   [4] (2002) 56 IPR 72 at [19].

3. As Gyles J further explained in Pfizer Products Inc v Karam:[5]

   “Connotation” is a secondary meaning implied by the mark.  The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself.  It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…

   [5] (2006) 70 IPR 599 at [53].

4. In short, deception or confusion caused as a result of similarity to another trade mark is outside the scope of s 43.  I would only add that I agree with Mr Covell that the Opponent’s submission in any event appears to overlook the significance of the descriptive nature of the words “cars on demand” in the context of hire car or similar services.  As Mr Covell put it:

   The three descriptive words “cars on demand’ are perfect for describing businesses which supply cars on demand to consumers.  This connotation merely describes a feature of Class 39 services that concern the hire, rental or booking of vehicles which are available immediately upon request.

   The Opponent’s Written Submissions do not acknowledge the obvious meaning of these descriptive words when considering the connotation of the Holder’s mark.  Indeed, the meaning of these words is avoided altogether in the Opponent’s submissions.

5. The ground based on s 43 of the Act is accordingly not established.

Section 44

1. The ground based on s 44 of the Act is particularised in the Statement as follows:

   Section 44/Reg. 4.15A - The [Opposed Mark] is substantially identical with or deceptively similar to the following trade marks registered in Australia by the Opponent in respect of goods/services similar or closely related to the services in respect of which registration of the [Opposed Mark] is being sought:

   [Brief details of the Opponent’s registrations 1383088 and 1383089 are then set out.  See paragraph 5 above for these details.]

2. Only s 44(2) of the Act is relevant in this case and this is set out below:

Identical etc. trade marks

44.(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.

1. Each of the Opponent’s two registrations 1383088 and 1383089 relied upon has a priority date earlier than that of the Opposed Mark.  Accordingly for the Opponent’s s 44 ground to be established, I would need to be satisfied on the balance of probabilities that:

• the IRDA covers “similar services”[6] to, or services closely related to, the services or goods covered by one or both of the Opponent’s registrations; and

• the Opposed Mark is “substantially identical” with, or “deceptively similar” to, one or both of the relevant registered marks.

  [6] As defined in s 14(2) of the Act, namely the same services or services “of the same description”.

1. Registration 1383088 CARS ON DEMAND covers the services in Classes 35 and 41 set out in paragraph 5 above, being essentially event, business and cost management services, booking of entertainment and advisory services related thereto.  None of these services is similar to the “Transport services; vehicle rental and leasing” services covered by the IRDA on the face of it and it is accordingly unnecessary to consider registration 1383088 any further.

2. For its part, registration 1383089 for the Opponent’s Device Mark covers, inter alia, “booking of hire cars”, “rental of cars”, “rental of chauffeur driven vehicles” and “transport services” generally in Class 39 and it thus undoubtedly covers services the same as, or of the same description as, all of the services of the IRDA.  The essential issue for determination is accordingly whether the Opposed Mark is substantially identical with, or deceptively similar to, the Opponent’s Device Mark.  That said, in this case the Opponent does not claim that the marks are “substantially identical”, but does submit they are “deceptively similar” and so this is the issue to which I now turn.

3. As noted in the Opponent’s submissions, s 10 of the Act defines the term “deceptively similar” as follows:

   For the purposes of this 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.

4. The Opponent’s submissions continue:

   Any difference in appearance of the marks must be balanced against the “idea of the marks”.  Jafferjee v Scarlett (1937) 57 CLR 115 where Latham CJ citing from Lord Herschell’s Committee’s report at pages 121 and 122:

   Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if [services] were allowed to be impressed with the second mark, in a belief that he was dealing with [services] which bore the same mark as that with which he was acquainted.

   The Opponent submits that the shared “idea” of the trade marks is the feature by which they will be recalled – in this instance the words “CARS ON DEMAND” – rather than the precise details of each trade mark.

   Since the services of both parties are:

   •     Similar or at the very least closely related;

   •     Likely to be ordered verbally or over the telephone or by using a telephone Internet application, or online;

   •     Likely to be required on a casual or from time-to-time basis rather than a daily basis; and

   •     Likely to be accessed as a result of a personal verbal recommendation as by a search through relevant directories or on the Internet,

   the chances of confusion resulting from imperfect recollection are significantly higher than they would be if the services were to be required on a permanent or daily basis, or were of a highly specialised or technical nature or were selected following extensive research and analysis of competing services.

   Consequently, the trade marks of the Opponent and the Applicant are so similar that per Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 there is a “real tangible danger of deception or confusion”.

   Given the deceptive similarity between the trade marks and the services of the parties, the Opponent submits that the section 44 grounds have been established.

5. In response Mr Covell submitted that there was no authority for the proposition that “merely because the identical words [in this case the words “cars on demand”] are found in both marks …  [this] ipso facto lead[s] to a finding of deceptive similarity”.  He pointed to the following relevant factors identified in IP Australia’s Australian Trade Marks Manual of Practice and Procedure at Part 26, paragraph 6.4, under the heading “Marks which contain another trade mark”:

   A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors.  These include:

   (a)    The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark [1969] RPC 102 (Ch D).

   (b)    The distinctiveness of the common element/s and the distinctiveness of additional element/s.  If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.

   (c)     The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element  has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)

   (d)    The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.

   (e)    The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.

   (f)   When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at 63 per Flick J.

   (g)    Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).

1. Mr Covell noted that points (a) and (f) were not applicable in this case because they only came into play where the common material was distinctive.  He then went through the remaining points highlighting their applicability to the comparison of the Opposed Mark with the Opponent’s Device Mark.  As regards points (b) and (c), he emphasised the distinctiveness of the device element and the tagline in the Opponent’s Device Mark and contrasted this with the distinctive device element and absence of a tagline in the Opposed Mark.  He submitted that inclusion of the tagline was relevant to point (d).  He also highlighted the differing font sizes and configuration of the various elements appearing in each of the marks, as well as the fact that the Opposed Mark was limited to a specific combination of colours, submitting these factors were each relevant to point (e).  Finally, he noted that where marks containing identical descriptive phrases were being compared then point (g) indicated that the degree of sophistication of relevant consumers was a pertinent factor.  In this regard he submitted consumers of the relevant Class 39 services were likely on the whole to be relatively sophisticated compared with, say, consumers of common grocery items or people looking to have their shoes repaired.

2. With that as background, as it were, Mr Covell’s principal submissions concerned the fact that the words “cars on demand” common to the parties’ marks are on the face of it apt for normal description of the Class 39 services of interest to the parties.  To the extent that there was any likelihood of deception or confusion amongst some consumers this would surely be because the Opponent had sought to trade by reference to such a convenient, descriptive phrase and the Opponent should not thereby be entitled to a de facto monopoly in the bare phrase.  In this regard he submitted that:

   Although the Opponent seeks to rely on the doctrine of imperfect recollection, the Opponent does not consider the effect on that doctrine where the words in issue aptly describe car hire and car rental services in class 39. The High Court decision in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 is directly relevant here. This concerned the use by two different traders of three descriptive words, namely, “building information centre.” In the leading judgment Stephen J noted at 229:

   The use by the [plaintiff] of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities.

   The same can be said of the current facts and the three descriptive words “cars on demand” and, accordingly, as held by Stephen J at 229:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

   This has been cited with approval in numerous cases including Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 per Marshall J at [77]; Dimokranitis v Exotic Limo Pty Ltd [2010] ATMO 69 at 43; Kosciuszko Thredbo Pty Ltd v ThredboNet Marketing Pty Ltd where it was found at first instance, [2013] FCA 563, that where there was evidence of confusion between businesses using a geographic description, this was caused by the nature of the word itself and therefore the “… risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words….” Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd (1946) 63 RPC 39 at 42 per Lord Simonds. This reasoning was recently affirmed on appeal by the Full Court of the Federal Court [2014] FCAFC 87 at [32]-[34] per Siopis, Rares and Katzmann JJ. In Dimokranitis v Exotic Limo the hearing officer noted at 44:

   If there is to be confusion resulting from the applicant’s use, I am satisfied that it is more likely to result from the descriptiveness of the trade marks themselves than from any reputation the opponent may have in its trade mark.

3. I am in general agreement with Mr Covell’s submission.  I note, too, that the reasoning behind it is consistent with that of the Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[7] (“Crazy Ron’s”), a dispute between two purveyors of mobile phones and associated accessories and plans.  There the Court was called upon to assess the significance of the prima facie distinctive words “CRAZY JOHN” in the context of the composite mark shown below and whether their presence rendered the mark as a whole deceptively similar to the trading name/trade mark CRAZY RON’S:

(Referred to by the Full Court as “the 1995 mark”)

[7] (2004) 209 ALR 1; 61 IPR 212.

1. In overturning the primary judge’s finding that the words in question were an essential feature of the 1995 mark, the Full Court made the following observations:

   [92] The threshold factual question in the present case is whether, as the respondents argued, the primary judge erred in finding that the words “Crazy John” constituted an essential element of the 1995 mark for the purposes of undertaking the comparison implicitly required by s 120(1) of the TM Act.

   [93] As the earlier discussion of the authorities shows, the concept of an “essential feature” of a registered trade mark is well-established, notwithstanding that the statutory language does not explicitly incorporate such a concept. Neither party suggested that the case should be decided without reference to the “essential feature” of the 1995 mark. It is, however, worth noting that the court’s duty is ultimately to the statutory language rather than to the complexities brought forth by many years of decisional authority…

   [94] It is important to appreciate that the primary judge found that the words “Crazy John” formed an essential feature of the 1995 mark on the basis of an inspection of the mark itself. His Honour made the finding because of the prominence of the words and their reinforcement by the “deranged look” of the man sitting astride the globe. His Honour placed no reliance on any particular usage or understanding of the words “Crazy John” among consumers and traders in the mobile telephone market. The respondents did not suggest on the appeal that there was evidence of any such usage that should have been taken into account. Nor did they argue that the words “Crazy John” were so well-known that consumers generally should be taken to have become familiar with them in relation to mobile telephones.

   [95] It is not essential in an infringement case for the proprietor alleging infringement to adduce evidence that individual consumers have seen the registered trade mark and taken away an “imperfect recollection” of it. Nonetheless, it is of some significance that there was no evidence (or at least none to which the court’s attention was directed) that any consumer had formed a particular impression of the 1995 mark by virtue of having seen it. … In short, there was no evidence that any particular consumer had seen the 1995 mark and thereby acquired an imperfect recollection of the 1995 mark itself, or of any particular feature of it.

   [96] …

   [97] If attention is confined to the 1995 mark itself, it is in our opinion very difficult to characterise the words “Crazy John” as an essential feature. The words form but part of a composite mark comprising a number of elements. The words themselves are not especially prominent and indeed are subsidiary to the fantasy character, which occupies the dominant position in the overall image. If anything, the words seem to identify the fantasy character, having regard to the deranged look on his face. The words also compete for attention with the letters “MW” which themselves occupy a central position on the stylised globe.

   [98] The primary judge concluded, in essence, that the “idea” of the 1995 mark, or the impression that would be created by it, is the phrase “Crazy John”. However, in our view, the idea or impression that an ordinary purchaser would take from the 1995 mark involves much more than that phrase. The dominant idea conveyed by the mark to a casual observer is of the fantasy cartoon character sitting astride the stylised globe. The point is perhaps illustrated by Mr Darrer’s description in his 12 November 1999 letter to the Trade Marks Office of the 1995 mark as:

   … the trademark crazy john with graphics of a man atop a globe holding a mobile phone.

   A prospective customer endeavouring to recall the 1995 mark is likely to describe it in similar terms.

   [99] …

   [100] We make two additional comments. First, although everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an “essential feature” of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different. On the respondents’ approach in the present case, for example, there was no need for them to have registered the 1999 mark,[8] since in practice it conferred no greater protection than one of the “essential elements” of the 1995 mark.

   [101] Second, we recognise that the authorities have said that the question of deceptive similarity is in the end a matter of impression…

   [102] If it is necessary to identify a specific error in the approach of the primary judge, we think it lies in the failure to take into account the fact that the 1995 mark is a composite mark of which the words “Crazy John” are but one of several prominent elements. His Honour obviously appreciated, as he said, that the 1995 mark “is a composite mark with a number of features”. But, with respect, the judgment does not address the significance of that fact in deciding whether the words “Crazy John” constituted an essential feature of the 1995 mark. The additional features of the 1995 mark are significant points of dissimilarity from the allegedly infringing mark and need to be given due weight in determining the nature of a consumer’s “imperfect recollection” of the 1995 mark.

   [103] The primary judge’s conclusion that the appellant’s mark was deceptively similar to the 1995 mark rested on the finding that the phrase “Crazy John” constituted an essential element of the 1995 mark. Since that finding cannot stand, it follows that the finding of deceptive similarity must also be set aside.

   [8] Registration 803950 CRAZY JOHN’S (Stylised) in Classes 35 and 38.

2. Referring to the abovementioned observations of the Full Court, Yates J emphasised more recently in Optical 88 Limited v Optical 88 Pty Ltd (No 2) that:[9]

   [110] Importantly the Full Court went on to caution (at [100]) against a too ready characterisation of words in a complex composite registered trade mark as an “essential feature” of that mark when assessing the question of deceptive similarity. The Full Court remarked that if such a characterisation is made incautiously it may effectively convert a composite mark into “something quite different”.

   [111] At the end of the day the question of deceptive similarity is one to be resolved in a given case by judicial estimation based on the visual and aural impression created by each mark and on the likely effect to be produced by each mark on the minds of likely customers of the goods and services in the course of the ordinary conduct of affairs: Australian Woollen Mills[10] at 659.

   [9] (2010) 89 IPR 457; 275 ALR 526, at [106] to [111].

   [10] Australian Woollen Mills Limited v F.S. Walton and Company Limited (1937) 58 CLR 641.

3. The sentiments expressed by the Full Court concerning the minor significance for comparison purposes of the relatively distinctive words “CRAZY JOHN” in the 1995 mark as a whole would be all the more applicable when assessing the significance for comparison purposes of the words “CARS ON DEMAND” appearing in the Opponent’s Device Mark, these words, on the face of it, being entirely descriptive of the parties’ relevant services.  I note in this context that the Opponent did submit that:

   Although [the opposed application] is endorsed with a disclaimer to the exclusive right to use the words “CARS ON DEMAND”, that disclaimer affects only the rights given by the Act to the [Holder as putative] registered owner.  It does not affect the Opponent’s rights in its registered trade marks – which are not endorsed with a similar disclaimer – to oppose registration of a mark on the grounds of s 44 or any other appropriate grounds under the Act.

4. Nevertheless, to the extent that this submission is suggesting the absence of an explicit disclaimer of the descriptive words “cars on demand” from the registration for the Opponent’s Device Mark implies the Opponent might reasonably assert rights in those bare words, I must respectfully disagree.  There is abundant evidence provided by the Holder as to the generic nature of the words “on demand” in particular and the Opponent’s evidence does not to my mind indicate it could claim any right to their exclusive use, whether in combination with the descriptive word “cars” or otherwise.

5. Indeed, on the face of it the Opponent itself was of the same view in October 2012, more than a year after the Holder sought extension of protection of the Opposed Mark to Australia.  As explained in more detail below in connection with the Opponent’s s 58 ground, when the Opponent originally filed its current registrations 1383088 CARS ON DEMAND and 1383089 for the Opponent’s Device Mark both applications covered goods and services in Classes 16, 35, 39 and 41.  The Examiner of the applications objected that the claimed CARS ON DEMAND word trade mark lacked inherent capacity to distinguish, inter alia, the Class 39 services and would thus require evidence of use, intended use or other circumstances possibly to achieve acceptance for registration.  The Opponent subsequently filed Khoury 1 in support of application 1383088, but the Examiner considered the information provided insufficient to overcome the registrability objection.  As a result, the Opponent amended the application by deleting the Class 16 and 39 specifications, that is effectively withdrawing its claim to rights in the bare words “cars on demand” for relevant Class 39 services.  There is no further evidence before me (that is, in Khoury 2) which in my view suggests the words alone have become any more likely to distinguish the Opponent’s Class 39 services than they were at the time Khoury 1 was originally filed.

6. Information contained in the Holder’s evidence further confirms that the descriptive words “cars on demand” are just the kind of words traders in relevant Class 39 services would want or need to use in relation to those services.  In Covell 2, for example, Mr Covell exhibits the first page of some 175 results of an online search he conducted on 28 January 2014 for all trade marks, in any class, containing the combined (part) words “on” and “demand”.  I note the page in question identifies the first 12 results of the search, amongst which are registrations 1430200 and 1434958, and lapsed application 1434981, all in separate ownership and detailed below, the existence of which appears to confirm the current desirability of using the words “…on demand” amongst traders in similar Class 39 services:

Number	Trade Mark	Class 39 Services
1430200	HERZ ON DEMAND	Vehicle renting and leasing services
1434958	AVIS ON DEMAND	Transport; packaging and storage of goods; travel arrangement; arranging for the rental and leasing of self-drive vehicles and chauffeur-driven vehicles including reservations therefore-or alternatively, vehicle rental and leasing services
1434981	BUDGET ON DEMAND	Transport; packaging and storage of goods; travel arrangement; vehicle rental and leasing services, arranging for the rental and leasing of self-drive vehicles and chauffeur-driven vehicles including reservations therefor

1. Also included with Covell 2 is a screenshot which Mr Covell took on 29 January 2014 from the website < which shows the HERZ ON DEMAND trade mark (or perhaps, more correctly, the HERZ trade mark followed by the common tagline “ON DEMAND”) in use in connection with car hire services.

2. Indeed, according to the Holder’s Director Paul Brown, Mr Brown himself has “been the owner of the domain name since 13 November 2003 and the [Holder] has operated the website found at since 28 November 2003.”  I note this was some five years before the Opponent chose to adopt the words “cars on demand” in relation to its Class 39 services, no doubt in good faith, described in Khoury 1 as follows:

   The [Opponent’s Word Mark] was chosen in July 2008…following weeks of evaluation of various names by business partners, friends and family members associated with the [Opponent].  The name “Cars on Demand” was eventually adopted on the basis that it was felt that the name was capable of relaying to the [Opponent’s] clients the desire to provide services that met their needs when and where they were required.

   The [Opponent] first commenced trading under the trade mark on 1 August 2008.  The introduction of the trade mark was inspired by a vision to deliver [a] comprehensive end-to-end ground transport solution to large corporations utilizing state of the art technology to maximise efficiency, optimize security and value delivery to our clients.

3. To conclude, I am satisfied on the evidence not only that traders in relevant Class 39 services are likely to want to use the words “cars on demand”, or “on demand”, in connection with car hire for the sake of their ordinary significance and without improper motive, but that several have already done so.  Lord Symonds’ words from Office Cleaning[11] quoted with approval by Stephen J in the Hornsby Building Information Centre case[12] are thus particularly apt in this case:

   “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.”  The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

   [11] Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 at 43.

   [12] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at [22]. See also Stephen J’s comments at [23].

1. Since the Opposed Mark is otherwise quite different from, and readily distinguishable from, the Opponent’s Device Mark when the marks are compared as wholes, my finding, in summary, is that the Opposed Mark is not deceptively similar to the Opponent’s Device Mark in the sense contemplated by ss 10 and 44 of the Act.  The Opponent has accordingly not established its s 44 ground of opposition.

Section 58

1. The ground based on s 58 of the Act is particularised in the Statement as follows:

   Section 58 - The Applicant is not the owner of the Opposed…Mark in Australia as the Opponent has earlier use of the same or a similar trade mark.  Specifically, the Opponent adopted the trade mark CARS ON DEMAND in Australia on 15 August 2008 when it commenced trading in Australia under that trade mark and trade name to offer and provide the following goods and services:

   Printed material; brochures; travel brochures; guide books; travel guides; travel document folders; entertainment guides;

   Event management services (organisation of exhibitions or trade fairs for commercial or advertising services); business management; cost management services;

   Booking of hire cars; rental of cars; rental of chauffeur driven vehicles; booking agency services for travel; arranging tours; provision of tours; transport services; courier services; delivery of goods and messages;

   Event management services (organisation of educational, entertainment, sporting or cultural events); booking of entertainment; advisory services related to entertainment; organisation of entertainment events;

   In 2008 the Opponent also registered the Domain names <carsondemand.com.au> and <carsondemand.net.au> and began operating those websites to offer and provide the Opponent’s goods and services under its trade marks CARS ON DEMAND and .  On 19 August 2009 the Opponent then incorporated under the name CARS ON DEMAND OPERATIONS PTY LTD and CARS ON DEMAND PTY LTD while still trading under trade mark and Registered Business Name CARS ON DEMAND.  The Opponent’s trade marks CARS ON DEMAND and  were first used in commerce in Australia in August 2008 in association with the above listed goods and services and have been in continuous use throughout Australia ever since that date.

2. Section 58 itself is reproduced below:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. To establish its section 58 ground the Opponent needs to show that a party other than the Holder first used the Opposed Mark itself, or a mark substantially identical to the Opposed Mark, in Australia, for services (or possibly goods) adjudged to be “the same kind of thing” as the “transport services; vehicle rental and leasing” services claimed by the IRDA.  The use must have taken place before the Priority Date, or before the Holder’s first use of the Opposed Mark in Australia for relevant services, whichever is the earlier.[13]  In this case the Holder concedes it has not used the Opposed Mark in Australia and accordingly the 8 July 2011 priority date of the IRDA is the relevant date here.

   [13] Re Hicks’ Trade Mark (1897) 22 VLR 636.

2. I understand from the above quoted particulars from the Statement that the Opponent’s claim to ownership has two separate bases, that is based on its relevant prior use of (1) the claimed CARS ON DEMAND word mark and (2) the device mark shown in the above quoted particulars (being identical to the Opponent’s Device Mark minus the tagline “Keep Business Moving” and hereafter referred to as “the Opponent’s s 58 Device Mark”).  The Opposed Mark is obviously not the same as either of these marks and the Opponent’s claim to ownership thus depends, as a threshold issue, on my finding that it is at least “substantially identical” to one or both of them.[14]  As discussed below, the Opposed Mark is not substantially identical to either mark in my view and thus the Opponent’s s 58 ground necessarily fails for this reason.  Before discussing my reasons for so finding I think it is useful firstly to say something about the Opponent’s own claim to “ownership” of the bare words “cars on demand” themselves as a trade mark for relevant Class 39 services.

   [14] Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.

3. The Opponent’s submission with respect to the s 58 ground, which I note concentrates on the Opponent’s claimed word mark only, was as follows:

   Section 58 provides for the registration of the [Opposed Mark] to be opposed on the ground that it [sic] is not the owner of the mark.  For the purposes of s 58, “ownership” is common law ownership.  McGarvie J said in the case of Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd (1988) 10 IPR 402 [“Settef” at 414]:

   The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

   …

   In considering who, within s 40(1) of the [1955] Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627.

   The owner of a mark is the person who, at the moment a trade mark application is made, is entitled to the exclusive use of that mark.  A person cannot be entitled to the exclusive use of a mark if that mark (or one substantially the same) has been used by someone else before the trade mark application was lodged.

   We refer to the Opponent’s evidence of use and the submissions above.  Given that the Opponent’s use of the trade mark CARS ON DEMAND:

   • involves a mark that is the same or substantially the same as [the Opposed Mark];

   • relates to the same or similar services as those specified in [the IRDA];

   • has occurred in Australia prior to the [Priority Date]; and

   • there is no use in Australia of the [Opposed Mark],

   the [Holder] is not the owner of the [Opposed Mark] and is not entitled to the exclusive use of the [Opposed Mark] nor to the registration of this mark.

   Consequently, on the evidence before the Registrar, the [Opposed Mark] should not be registered because the s 58 ground of opposition is made out.

4. As the above quote from Settef indicates, however, McGarvie J was referring to the basic common law principle regarding “proprietorship”[15] as it would apply to “a trade mark of an appropriate kind”.  In this regard Mr Covell pointed out in response:

   …the difficulty with the Opponent’s argument is that it ignores the primary descriptive significance of the words “cars on demand” in relation to car hire and car rental services.  Claiming common law ownership in descriptive words requires substantial evidence of use amounting to secondary meaning or acquired distinctiveness.  Merely showing use is not enough to establish secondary meaning as a trade mark or common law ownership.  In relation to descriptive words the courts have repeatedly warned not to proceed on the basis that “use equals distinctiveness”.  In British Sugar plc v James Robertson & Sons Ltd [1966] RPC 281 Justice Jacobs observed:

   There is an unspoken and illogical assumption that “use equals distinctiveness”.  The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as an unsupported trade mark for soap the word would not be distinctive of his goods.

   The warning was cited with approval by Middleton J in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297; [2010] FCA 1367 at [226] – [227] where it was held “Persian Fetta” had not acquired the characteristics of a brand or trade mark despite a trade mark registration for those words and extensive and exclusive use by the applicant on a fetta product.

   [15] That is, “ownership” as it is now referred to under the Act.

5. Mr Covell noted that in deciding to cancel the registration of the Persian Fetta mark, Middleton J had been guided by Kitto J’s well known judgment in Clark Equipment Co v Registrar of Trade Marks (“Michigan”), in particular that:[16]

   …the question whether a trade mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives- in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [16] [1964] HCA 55; (1964) 111 CLR 511 at 514.

6. In this context Mr Covell highlighted the prosecution history of the Opponent’s registration 1383088 CARS ON DEMAND in Classes 35 and 41 (although when originally filed also covering Classes 16 and 39), a copy of which was obtained from IP Australia by the Holder under the Freedom of Information Act 1982 and is exhibited with Covell 1.  Mr Covell summarises this as follows:

   During examination [of] the Opponent’s [then] application…IP Australia under s 41 repeatedly refused registration in Class 39 because the Opponent failed to satisfy Kitto J’s improper motive test in [Michigan].  The Opponent submitted evidence, namely, [Khoury 1], but IP Australia found this was not sufficient to establish trade mark rights in relation to “Booking of hire cars; rental of cars; rental of chauffeur driven vehicles; booking agency services for travel; arranging tours; provision of tours; transport services; courier services; delivery of goods and messages.”

   On 8 October 2012 the Opponent requested the deletion of both the Class 39 and 16 claims in relation to [then application 1383088].  The Opponent’s deletion of the Class 39 and 16 claims took place 15 months after the Holder filed [the IRDA] on 8 July 2011.  The Opponent has not presented any new evidence which suggests that as at 8 July 2011 the words “cars on demand” had acquired a secondary meaning as the Opponent’s trade mark.

7. I agree that the above quoted matters raised by Mr Covell are significant in this case.  As mentioned, McGarvie J’s remarks in Settef relied on by the Opponent and quoted in paragraph 42 above were explicitly specified by his Honour as concerning trade marks “of an appropriate type”.  His Honour was there dealing with the relatively distinctive trade mark RIV-OLAND in connection with a granular marble wall finish and not with a phrase such as “cars on demand”, apt on the face of it for normal description of transport services in the nature of car hire.  Moreover, as noted, as at 8 October 2012 the Opponent effectively withdrew its claim, in terms of s 27(1)(a) of the Act, to be the owner of the words “cars on demand” as a trade mark for services the same as, or similar to, those in Class 39 covered by the IRDA when it deleted those services from its then pending application (now registration) 1383088.  In summary, even if I were to consider the Opposed Mark was substantially identical to the Opponent’s claimed CARS ON DEMAND word mark in particular, the use by the Opponent of the words “cars on demand” shown in Khoury 1 and 2 is in my view insufficient to found the Opponent’s claim to their exclusive “ownership” for relevant services in any event.

8. That said, I turn to the issue of whether the Opposed Mark is substantially identical to either the claimed trade mark CARS ON DEMAND or the Opponent’s s 58 Device Mark.  As previously mentioned, I do not consider this to be the case.

9. The accepted starting point for assessing substantial identity is generally found in the words of Windeyer J in Shell, where his Honour said:[17]

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [17] (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528.

10. The parties’ marks are set out side by side below:

CARS ON DEMAND    

1. Based on such a side by side comparison I am satisfied that “the total impression of resemblance or dissimilarity that emerges” between each of the Opponent’s marks and the Opposed Mark is rather one of dissimilarity and this is why I conclude the parties’ marks are not substantially identical.  In making this assessment I am taking into account not only the device element and the particular arrangement of the words appearing in the Opposed Mark, but also the fact that rights in the Opposed Mark are limited to the specific colours orange, black, white and grey and the fact that the Holder disclaims rights to exclusive use of the apparently descriptive words “cars on demand”.  The Opponent’s Word Mark, for its part, consists of nothing more than these very words, which as mentioned have little or no inherent capacity on the face of it to distinguish relevant Class 39 services at all.  Indeed, why the Opposed Mark was considered registrable (with clearly circumscribed rights) for relevant Class 39 services, and the Opponent’s Word Mark was not, well highlights an essential difference between the marks.  As for the Opponent’s s 58 Device Mark, the distinctive “COD Device”, combined with the different configuration and relative emphasis of the words “CARS ON DEMAND”, leave the mark as a whole differing in several material particulars from the Opposed Mark on the face of it.

2. The Opponent’s s 58 ground is accordingly not established.

Decision

1. Reg 17A.34N of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the     Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the                  IRDA; or

   (b)  to to extend protection in respect of some or all of the goods or services                   listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the

   IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar's decision.

2. I have found that none of the grounds relied on by the Opponent has been established and as the Registrar’s delegate in this matter I thus direct that protection of the Opposed Mark be extended to Australia one month from the date of this decision in respect of all of the services listed in the IRDA.  If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit.  If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with Reg. 17A.34N(2).

Costs

1. In the event that it prevailed, Mr Covell requested an award of costs in the Holder’s favour. As the successful party, the Holder is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov

Hearing Officer

Trade Marks Hearings

17 September 2014