Catholic Metropolitan Cemeteries Trust v Bendigo Cemeteries Trust

[2016] ATMO 30

TRADE MARKS ACT 1995

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

Re:Opposition by Catholic Metropolitan Cemeteries Trust to registration of trade mark application 1532820 – FUNERAL SERVICES ALLIANCE CENTRAL VICTORIA - in the name of Bendigo Cemeteries Trust.

Delegate:	Bianca Irgang
Representation:	Opponent: Carmen Champion of Counsel instructed by Makinson d’Apice Lawyers Applicant: Ben Gardiner of Counsel instructed by Maddocks
Decision:	2016 ATMO 30 Section 52 opposition: sections 42(b), 44, 59, 60 and 62A pressed – s 60 established for all goods and services.

Background

1. Bendigo Cemeteries Trust (‘the applicant’), filed trade mark application number 1532820 on 21 December 2012 in classes 12, 16, 25, 35, 42 and 45 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  Funeral Services Alliance Central Victoria   (the ‘Trade Mark’)

   Trade mark application no: 1532820

   Filing Date:  21 December 2012

   Specification:  Class 12: Motor vehicles associated with cemetery management and funeral services

   Class 16:Printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets

   Class 25:Clothing, footwear, headgear and associated apparel

   Class 35:Cemetery management and business administration, crematoria business administration, office administration

   Class 42:Website development

   Class 45: Funeral and crematoria services with associated bereavement counselling; funeral services (including pre-paid funeral services), burial, cremation, grave digging, undertaking, embalming

   Endorsements:  Provisions of subsection 41(5) applied

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 24 July 2014. Subsequently Catholic Metropolitan Cemeteries Trust (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 14 April 2016. The opponent was represented by Ms Carmen Champion of Counsel instructed by Makinson d’Apice Lawyers. The applicant was represented by Mr Ben Gardiner of Counsel instructed by Maddocks.

   Grounds of Opposition

4. The Notice nominated five grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds being ss 42, 44, 59, 60 and 62A. All were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.[1] Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   Evidence

5. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Statutory declaration of Peter O’Meara made on 3 March 2015 with Exhibits A through to GG (the ‘O’Meara declaration’).

   Opponent’s Evidence

6. The O’Meara declaration explains that the opponent is the manager of a number of cemeteries in the metropolitan Sydney area including the Rookwood Catholic Cemetery, Liverpool Cemetery and Crematorium, Kemps Creek Cemetery and Crematorium, Greendale Cemetery and North Rocks Cemetery. The opponent offers the services of memorialization, burial, crypt services and cremation at and from its cemeteries. In addition to these services the opponent also offers the following services under its FUNERAL ALLIANCE SOLUTIONS trade mark:

   ·Guidance on how to organize a funeral;

   ·Information, videos and advice in relation to funeral services;

   ·Online portal at its website and a telephone number for the provision of advice regarding funerals;

   ·Referrals to funeral directors;

   ·Reference and recommendation to legal and financial services; and

   ·References to grief support services.

7. According to Mr O’Meara, in or around 2011 the opponent began to expand its business by entering into arrangements with funeral directors, financial services providers and lawyers (‘the Alliance). These Alliance partners include: Andrew Valerio & Sons Funeral Directors Pty Limited, Marsdens Law Group, Joseph Medcalf Funeral Services, Gateway Credit Union, Max Perram’s Funeral Service, A. O’Hare Funeral Director, Kenneally’s Funerals, Albert & Meyer Funeral Directors, Gregory & Carr Funerals and Manning’s Funerals. The Alliance is managed, marketed and maintained by the opponent using the business name Funeral Alliance Solutions (Exhibit A). The O’Meara declaration states that the purpose of the Alliance is reciprocal in nature with the opponent entering into agreements with the Alliance members who offer services that may be of interest to the clients of the opponent and vice versa.  

8. Members of the Alliance promote and sell the opponent’s services to their clients. When an Alliance member makes a sale it invoices the client and subsequently forwards a fee for the opponent’s services to the opponent. Following receipt of the invoiced amount, the opponent then pays the Alliance members a commission.

9. The opponent’s sales figures for the year of 2011 are reasonable. However, the opponent’s sales revenue has grown by 75% in the four years from 2011 to 2015.  Mr O’Meara attributes this significant growth in sales to the opponent’s expansion into Western Sydney and the Alliance (Annexure G).

10. In 2012 Mr O’Meara visited a number of Australian cities to speak with operators of cemeteries trusts and funeral directors to discuss the viability of expanding, or duplicating the Alliance. During these visits Mr O’Meara met with representatives of large cemeteries trusts including Peter Deague, the CEO of The Metropolitan Cemeteries Board Perth, Jacqui Brigg-Weatherill, CEO if the Greater Metropolitan Cemeteries Trust (which is a Melbourne-based trust). Annexure H contains a copy of the PowerPoint presentation Mr O’Meara used when he completed these visits and I note that a common law trade mark ALLIANCE FUNERAL SOLUTIONS is used in this presentation with the word ALLIANCE prominently displayed on every page.

11. On 22 October 2012 the opponent applied for and subsequently obtained registration of seven trade marks including:

Number(s)	Class(es)	Trade Mark
1521333	35, 36, 39, 42, 43, 44, 45	Funeral Alliance Solutions
1521334	35, 36, 39, 42, 43, 44, 45	Funeral Alliance Solutions Compliant
1521335	35, 36, 39, 42, 43, 44, 45	Funeral Alliance Solutions Taking Care of Tomorrow
1521338	35, 36, 39, 42, 43, 44, 45
1521339	35, 36, 39, 42, 43, 44, 45

1. The opponent’s advertising of its Alliance services under the above trade marks started in around 2011 with a very modest amount spent on marketing. The following year in 2012 the advertising expenditure in relation to the Alliance was quite considerable and I note that there are numerous examples of the opponent’s advertising in the evidence (Annexures K through to V and Annexures CC to FF) although a number of the copies of brochures in these exhibits are undated and it is unclear when they were produced and circulated around the Australian marketplace.

2. To this end, in 2013 (after the priority date of the Trade Mark) the opponent won the Australian Marketing Institute awards (‘AMI Awards’) for “Brand Revitalisation”. A copy of the opponent’s entry is in exhibit X. Contained within the opponent’s entry for the AMI Awards are detailed explanations and facts pertaining to the opponent’s revitalization and launch of its brand in 2012. I note a number of the undated brochures I mentioned earlier are pictured in the entry and detailed as being part of the opponent’s launch in 2012 so I accept that it is likely the opponent’s brochures were available to the Australian public before the priority date of the Trade Mark.

3. I am aware that an entry needs to be provided for the AMI Awards many months prior to the winners being announced in October 2013. I also note that the entry requires the entrant to demonstrate marketing excellence along with a very high caliber execution of brand revitalization strategy against pre-determined key performance indicators with demonstrated commercial value and improved brand equity contributed by the brand revitalization which clearly the opponent had been able to demonstrate in early 2013.

4. Turning to exhibit Q, it is a copy of a press release from November 2012 which advises that the opponent’s website and Alliance help grieving people arrange all their funeral needs and is a ‘world first’. Exhibit O contains a news articles from 3 October 2012 which explains that the opponent had obtained exclusive rights to Elmo from Sesame Street® as a method to help young grieving children in Australia. Both of these exhibits are dated before the priority date of the Trade Mark.

   Discussion

   Section 60 - Reputation in Australia

5. Section 60 of the Act 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.

6. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods and services of interest to both the applicant and opponent are the same. It is for me to determine whether the opponent has established that before 21 December 2012 its trade mark(s) was recognized by the public generally, or at least by a significant number of persons in the funeral services market and whether because of that, the use by the applicant of the Trade Mark on the goods and services listed in the application would be likely to cause the public confusion.

7. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick[2], at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234 Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   [2] 51 IPR 102

8. At 129 Kenny J continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product:…

9. Exhibit X which contains the entry for the AMI Awards details that from December 2011 until December 2012 and based on a relatively modest expenditure, revenues from the opponent and the Alliance increased by 75% which was very significant and before the priority date of the Trade Mark. Other points of interest:

   ·ROI[3] from direct leads was gained by the Alliance after 8 weeks from the launch;

   ·120 successful leads processed in 6 months estimated at over a million dollars;

   ·Funeral Director perception of the opponent as a very professional service and organization lifted from 46% to 58% over a 6 month period (Customer Benchmarking Research).

   [3] Return On Investment

10. I am satisfied on the balance of probabilities based upon the evidence before me, that the opponent did have a significant reputation in its field of Funeral goods and services before the priority date of the Trade Mark. As an aside, I note that the sales and expansion of the opponent and its Alliance has continued since December 2012 with significant results.

11. I now need to determine if, given this reputation in Australia, use of the applicant’s Trade Mark would be likely to deceive or cause confusion. The question comes down to me being satisfied that there is a “finite and non-trivial” risk of deception or confusion[4]. The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd[5] observed that:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

    [4] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (French J) and 39, 703-4 (Branson J)

    [5] (2010) 85 IPR 647

12. The opponent relies upon its use of its registered trade marks listed in paragraph 11 of this decision (the ‘FUNERAL ALLIANCE SOLUTIONS trade marks’) to establish the ground under section 60. I note from the evidence that these FUNERAL ALLIANCE SOLUTIONS trade marks and others are used by the opponent in a number of different ways and in a number of different fonts. Below are some examples of the various forms in which the opponent has used its trade marks copied from the evidence:

    Alliance  FUNERAL SOLUTIONS

    FUNERAL ALLIANCE SOLUTIONS

13. Ms Champion, representative for the opponent, argued that due to the opponent’s reputation consumers were likely to become confused between the trade marks based upon the commonality of features shared by the respective trade marks[6]. Ms Champion contended that:

    “…the word ALLIANCE is the component of the Registered Marks that would be carried away and retained by the relevant consumer as it is the more striking and memorable feature being neither directly nor indirectly descriptive of the goods/services provided in the context of the provision of funeral and crematoria services by the Opponent…

    … Because the word ALLIANCE has no inherent association with funeral services or goods and other services associate therewith, it introduces a novelty and a distinctive concept making it…the distinguishing component of the Registered Marks…”  

    [6] Jafferjee v Scarlett (1937) 57 CLR 115

14. The Trade Mark is for the words FUNERAL SERVICES ALLIANCE CENTRAL VICTORIA. The opponent’s various trade marks prominently feature the words FUNERAL ALLIANCE SOLUTIONS. The respective trade marks contain the words FUNERAL, SERVICES, SOLUTIONS, CENTRAL VICTORIA which are descriptive of the goods and services offered and the location at which they are offered. CENTRAL VICTORIA is likely to be seen by a potential consumer to indicate the region of Australia in or from which the applicant’s goods and services are offered. I do not consider CENTRAL VICTORIA to be the striking or memorable words in the Trade Mark.

15. The opponent’s registrations and the Trade Mark both contain the same words FUNERAL and ALLIANCE. I note the opponent’s FUNERAL ALLIANCE SOLUTIONS trade marks contain the third word SOLUTIONS which starts with the letter ‘S’ and that the Trade Mark contains the word SERVICES which also starts with the letter ‘S’. I am satisfied that the common and descriptive words coupled with the similarity in the beginning of the words SOLUTIONS and SERVICES are likely to lead consumers seeking funeral services to focus on the most unusual word being ALLIANCE. I believe that the most prominent, striking and memorable word contained within all the respective trade marks is the word ALLIANCE. I am satisfied that consumers would focus on and remember the respective trade marks with reference to the word ALLIANCE rather than to the words such as FUNERAL, SERVICES or SOLUTIONS which are common and/or descriptive of the goods and services.

16. Mr Gardiner, counsel for the applicant, submitted that small differences are sufficient to distinguish marks comprising of common or descriptive elements and referred me to Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre[7] and a number of other authorities[8]. However, the situation before me is not analogous to those cases.

    [7] (1978) 140 CLR 216 [229]

    [8] Connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348; Office Cleaning Services v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39; Reed Executive plc v Reed Business Information [2004] RPC 40.

17. In this case the respective trade marks do consist of common and descriptive elements along with the striking and memorable word ALLIANCE. Given the reputation of the FUNERAL ALLIANCE SOLUTIONS trade marks in the relatively specialized marketplace for those seeking funeral goods and services as well as the degree of similarity between the respective trade marks, I am satisfied use of the Trade Mark would be likely to cause confusion. Therefore, the opponent has established its ground of opposition under section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

18. Section 55 of the Act relevantly provides:

    (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.

    …

    (3) This subsection applies to the proceedings if:

    (a) the proceedings are discontinued; or

    (b) the proceedings are dismissed…

19. I am satisfied that the opponent has established the ground of opposition under section 60, and accordingly I refuse registration of trade mark application 1532820.

    Costs

20. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant Bendigo Cemeteries Trust.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    13 May 2016