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

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
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’).
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
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
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Catholic Metropolitan Cemeteries Trust v Bendigo Cemeteries Trust [2016] ATMO 30
Case: [2016] ATMO 30
Decision Date: 13 May 2016

CaseChat Overview and Summary

In the matter of *Catholic Metropolitan Cemeteries Trust v Bendigo Cemeteries Trust*, the Catholic Metropolitan Cemeteries Trust (the applicant) sought to register the trade mark "FUNERAL ALLIANCE SOLUTIONS". The Bendigo Cemeteries Trust (the opponent) opposed this registration. The applicant operates cemeteries in metropolitan Sydney and offers a range of memorialisation, burial, and cremation services. In addition to these core services, the applicant also provides guidance on funeral organisation, information on funeral services, an online portal and telephone advice, referrals to funeral directors, legal and financial services, and grief support services under its "FUNERAL ALLIANCE SOLUTIONS" trade mark. This alliance model, established around 2011, involves reciprocal arrangements with various service providers, including funeral directors, financial services providers, and lawyers, who promote and sell the applicant's services in return for a commission. The applicant's sales revenue experienced a significant 75% growth between 2011 and 2015, which the applicant attributes to its expansion and the alliance.

The primary legal issue before the court was whether the applicant's proposed trade mark "FUNERAL ALLIANCE SOLUTIONS" was deceptively similar to any existing trade marks owned by the opponent, or whether it was otherwise disentitled to registration. The opponent contended that the applicant's use of the word "ALLIANCE" in its trade mark and business name was likely to cause confusion among consumers, particularly given the opponent's own use of the term "ALLIANCE" in its business dealings and marketing materials, as evidenced by a PowerPoint presentation used by the applicant's manager when discussing potential expansion of the alliance model.

The court considered the evidence presented, including statutory declarations and exhibits, which detailed the applicant's business operations and marketing strategies. The opponent's opposition was based on the potential for confusion arising from the use of the word "ALLIANCE" by both entities in the funeral services sector. The court was required to assess the degree of similarity between the trade marks and the likelihood of deception or confusion in the marketplace.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 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. 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. 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. 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). 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.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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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.