Cash Converters Pty Ltd v Margo Chaille Webber
[2013] ATMO 34
•28 May 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Cash Converters Pty Ltd to registration of trade mark application 1336459(35, 36) - CASHEEZ - filed in the name of Margo Chaille Webber.
Delegate: | Jock McDonagh |
Representation: | Opponent: David Stewart and Laura Tatchell of Wrays Lawyers Applicant: Angela Dahlke of Cullens Patent & Trade Mark Attorneys |
Decision: | 2013 ATMO 34 Section 52 opposition: sections 42(b), 43, 44, 58, 60, and 62A pressed – s 44 ground of opposition established - no requirement to consider other grounds – registration refused |
Background
This is an opposition brought by Cash Converters Pty Ltd (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of the Margo Chaille Webber (“the Applicant”) as follows:
| Appn No. | 1336459 |
| Priority Date | 10 December 2009 |
| Trade Mark | |
| Services | Class 35: Retail and wholesale services, including sale and purchase of new, second hand and used goods Class 36: Financial services including personal loans and collecting personal loan repayments; pawnbrokerage |
The parties filed and served evidence as follows:
Evidence in Support
- Statutory Declaration by Michael Ian Cooke, Senior Executive and Group Legal Counsel of the Opponent, made 18 November 2010 with annexures MIC‑1 to MIC-18 (“Cooke 1”).
Evidence in Answer
- Statutory Declaration by Margo Chaille Webber, Applicant, made 18 May 2011, with exhibits CH-1 to CH-16 (“Webber”).
Evidence in Reply
- Statutory Declaration by Michael Ian Cooke made 28 July 2011 (“Cooke 2”).
Applicant’s Further Evidence
- Statutory Declaration by Angela Dahlke, Applicant’s attorney, made 23 December 2011, with exhibits AD-1 to AD-3 (“Dahlke”)
Opponent’s Further Evidence in Reply
- Statutory Declaration by Michael Ian Cooke made 16 February 2012, with annexures MIC‑1 to MIC-11 (“Cooke 3”)
I heard the matter as delegate of the Registrar of Trade Marks on 28 February 2013 in Canberra. David Stewart and Laura Tachell, both of Wrays Lawyers, appeared for the Opponent. Angela Dahlke, of Cullens Patent & Trade Mark Attorneys, appeared for the Applicant.
Grounds of Opposition
The notice of opposition (“the Notice”) nominated a number of grounds of opposition available under the Act. In his submissions, Mr Stewart advised that the following grounds were pressed by the Opponent:
- Prior substantially identical or deceptively similar trade mark (Section 44)
- Applicant not the owner of the opposed trade mark (Section 58)
- Reputation of the Opponent’s trade marks (Section 60)
- Application filed in bad faith (Section 62A)
- Use of the Applicant’s trade mark would be contrary to law (Section 42(b))
- Deception or confusion arising from a connotation in the Applicant’s trade mark (Section 43)
To succeed in its opposition the Opponent bears the onus of establishing at least one of these six grounds. As will become apparent, I have only found it necessary to address the section 44 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.
None of the evidence served and filed by the Opponent appears to go to the remaining grounds in the Notice that was not pressed and for the sake of completeness I find that these grounds have not been established.
Standard of Proof
The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Discussion - Section 44 ground of opposition
The ground based on section 44 of the Act is indicated in the Notice as follows:
the [Trade Mark] is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods or services or closely related goods or services.
Only section 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.
The Opponent is the owner of, among other things, Australian Trade Mark Registration No. 1075309 - CASHIES - in classes 35, 36 and 42, which has an earlier priority date of 13 September 2005.
The Opponent’s specifications of registration 1075309 CASHIES, are set out below:
Class 35: Wholesaling and retailing services, being the bringing together for the benefit of others of a variety of goods (excluding the transport thereof) enabling customers to conveniently view and purchase those goods, including all of the aforementioned services relating to telecommunications, communications, information, entertainment and games in the form of computer software, video, audio or multimedia formats; telephone ordering services; event management services being the organisation of exhibitions facilities for commercial or advertising purposes
Class 36: Pawnbrokerage; appraisal and evaluation services; insurance services; financial and financing services, including loan services
Class 42: Computer programming services; computer software design services; computer rental services; maintenance and modification of computer and computer programmes; research and development of technology, including research and development in relation to telecommunications, electronics, communications goods/services; product research and development; repair, installation, maintenance and construction of computer software programmes; consultancy and information services in this class relating to all of the aforementioned services
In this regard it is sufficient for success under s 44(2) if the Opponent establishes on the balance of probabilities that:
•the Applicant’s trade mark covers similar services[2] to those covered by the specifications of registration 1075309; and
•the Applicant’s trade mark is substantially identical with, or deceptively similar to, the CASHIES trade mark subject of registration 1075309.
[2] As defined in s 14(2) of the Act, namely the same services and/or services “of the same description”.
Mr Stewart pointed to the Applicant’s and the Opponent’s trade marks including services classes 35 and 36 that include retailing services, pawn brokerage, appraisal and evaluation services, financial and financing services including loans.
It is obvious that the Applicant’s trade mark covers same services and/or services “of the same description” to those covered by the specifications of the Opponent’s Registration 1075309.
Turning now to the merits of the s 44 ground, I note that in this case the Opponent claims that the Trade Mark is both substantially identical with and deceptively similar to the CASHIES trade mark; however, when one applies the usual “side by side comparison” test propounded in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (and cited by Mr Stewart) I find that the competing trade marks are visually quite dissimilar. I am not satisfied that the trade marks are substantially identical.
The expression ‘deceptively similar’ is defined by section 10 of the Act:
10Definition of deceptively similar
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.
The expression ‘deceptively similar’ has also been the subject of judicial consideration. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[3] Windeyer J said:
[The] comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658
[3] [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13
Justice French in Registrar of Trade Marks v Woolworths Ltd[4] observed in relation to the expression “likely to deceive or cause confusion”:
… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …
[4] (1999) 45 IPR 411 at 426
The difference between ‘deceive’ and ‘cause confusion’ was considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[5] where it was stated:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public.... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[5] (1979) RPC 410 at 423
I am mindful, too, of what Heerey J had to say in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[6]:
[A] probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales … there may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.
[6] (1997) 38 IPR 495
Mr Stewart submitted that the Applicant’s trade mark was likely to cause confusion in the minds of consumers as to whether the Applicant’s services come from the same source as the Opponent’s because:
The aural and phonetic identity is the essential part of both trade marks, having regard to the nature and promotion of the services provided under the respective marks, including by way of spoken word and radio and television advertising;
The non-distinctive stylization of the Applicant’s trade mark adds little to the identity of the mark;
Persons with a vague recollection of one mark are likely to be deceived or might confuse the marks, particularly when heard or spoken, particularly so taking into account the effect of careless pronunciation and abbreviated speech;
Having regard to the identical pronunciation of the opposed marks and the potential for consumer confusion in the context of the marks’ uses, a finding of deceptive similarity should be found.
Mr Stewart cited a number of relevant cases in which the phonetic similarity of opposing trade marks was sufficient to demonstrate deceptive similarity[7].
[7] Including Johnson & Johnson v Kalnin & Anor (1993) 26 IPR 435, Kabushiki Kaisha Chandeal v Chantelle (1996) 36 IPR 563 (CHANTELLE & CHANDEAL), Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 (SOLAHUT & SOLARHUT).
Although the Applicant’s trade mark consists of two words, I consider that those two words would be pronounced as “cash” and “ease”. I do not think that the “Z” in the second word would take on an American pronunciation such as to render it “easy”. Therefore, I consider that the pronunciation of CASH EEZ and CASHIES would be virtually identical.
I further consider that a consumer seeing the Applicant’s trade mark is likely to recall such verbal or aural advertising the Opponent might have commissioned on radio or television in relation to its services of wholesaling or pawnbrokerage.
Further, I concur with the Opponent’s submission that there is no requirement to establish actual confusion or deception; see for example, Sydneywide Distributors Pty Ltd v Red Bull (Aust) Pty Ltd[8].
[8] (2001) 55 IPR 354, at 373.
Consequently, I am satisfied that section 44(2) of the Act has been established.
The Applicant did not provide evidence of use of the trade mark before the priority date (10 December 2009) and as a result, the provisions relating to prior use under section 44(4) of the Act are not applicable.
The evidence does show that the Applicant had been the director of a company operating a franchise from the Opponent until 27 April 2009. The Applicant was the sole director and secretary of a company, Sweet Pty Ltd, incorporated on 27 July 2009. The company changed its name to Your Cash Mart Pty Ltd on 7 September 2009 and then to Casheez Pty Ltd on 23 September 2009. That latter date also coincides with the Applicant seeking registration of the domain name casheez.com.au. None of this is use of the trade mark.
Decision
Section 55(1) of the Act provides:
Unless the proceedings are discontinued or dismissed, 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.
I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act. I accordingly refuse to register trade mark application number 1336459.
Costs
In the event that the Opponent prevailed, Mr Stewart sought an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
28 May 2013
13
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