CCMSM ommercial Pty Ltd as trustee for the CCMSM Commercial Trust

[2024] ATMO 177

TRADE MARKS ACT 1995

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

ReTrade Mark application numbers 2348633 (12) – CRV GLADIATOR FAMILY and 2362679 (12) – CRV FAMILIA – in the name of CCMSM Commercial Pty Ltd as trustee for the CCMSM Commercial Trust

Delegate:

Nicholas Smith

Representation:

Applicant: Andrew Sykes of Counsel instructed by Cooper Mills Lawyers

Decision:

2024 ATMO 177

Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to grounds for rejection under section 44 of the Act – section 44 considered and established – trade mark applications rejected

Background

1. On 12 April and 7 June 2023 respectively, CCMSM Commercial Pty Ltd as trustee for the CCMSM Commercial Trust (‘Applicant’) applied to register the trade marks detailed below under the Trade Marks Act 1995 (Cth) (‘Act’).

Application Number:	2348633
Priority Date:	12 April 2023
Goods:	Class 12: Caravans; Mobile homes (caravans); Vehicles in the nature of caravans; Camping trailers; Motor homes (‘Applicant’s Goods’)
Trade Mark:	CRV GLADIATOR FAMILY	(‘Gladiator Mark’)
Application Number:	2362679
Priority Date:	7 June 2023
Goods:	Applicant’s Goods
Trade Mark:	CRV FAMILIA
Endorsement:	The applicant has advised that the English translation of the spanish word/phrase FAMILIA appearing in the trade mark is FAMILY.

1. The trade marks sought to be registered pursuant to application numbers 2348633 and 2362679 are collectively referred to as the ‘Trade Marks’.

2. The applications were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under s 44 of the Act for both of the Trade Marks.

3. With respect to the s 44 ground of rejection, the examiner identified trade marks 676025 and 1715380[1] set out below which closely resembled the Trade Marks and were registered for similar goods. The CR-V Mark is registered to an unrelated entity and predates the priority date of the Trade Marks. As this is a request to be heard under s 33(4) of the Act the owner of the CR-V Mark does not appear in this proceeding.

   [1] The initial report for the Gladiator Mark also identified trade mark application No. 2279967 however that mark has subsequently lapsed.  As noted in paragraph 5 below, the citation for 1715380 was subsequently withdrawn by the examiner and I do not need to consider it in this decision.

Number	Trade Mark	Priority Date	Services
676025	(‘CR-V Mark’)	25 Oct 1995	Class 12: Vehicles; apparatus for locomotion by land, air and water; automobiles and motorcycles; parts and accessories in this class for the above mentioned goods
1715380	CCRV	19 Aug 2015	Class 12: Caravans; Mobile homes (caravans); Motor caravans; Supports for trailers and caravans (legs and dolly wheels); Vehicles in the nature of caravans

1. On 26 February 2024 the Applicant provided submissions and evidence in response. In response, this office issued a further adverse report for each application, each withdrawing the citation for trade mark 1715380 but maintaining the ground for rejection under s 44 for the CR‑V Mark.

2. On 24 April 2024, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 13 August 2024. Andrew Sykes of Counsel instructed by Victor Ng of Cooper Mills Lawyers, representing the Applicant, made oral submissions. In addition, in accordance with the pre-hearing directions I had given, the Applicant filed written submissions and the following declaration that it sought to rely on:

   ·     Declaration of Victor Wei-Cho Ng, principal of Cooper Mills Lawyers, the Applicant’s representative, dated 1 August 2024 with Annexure VWN-1 (‘Ng declaration’).

3. The present matter is a hearing under s 33(4) of the Act. As noted in MHFC Holdings Pty Ltd[2] as well as other decisions of the Registrar (Teraglow Pty Ltd[3] and TOM Organic Pty Ltd[4]), the purpose of such a hearing is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection, in this case the grounds for rejection under s 44 of the Act. Any decision I shall make is not a review of the examiner’s approach and I am not bound in any way to follow it. Rather this proceeding will consider afresh the s 44 ground for rejection under the Act as it applies to the Trade Marks. In arriving at my decision, I have taken into account the Ng declaration, the material identified above as well as the oral submissions made on 13 August 2024.

   Legislative framework

   8. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[5]   The date at which each of the Trade Marks must be assessed  is the filing date of that particular mark, being 12 April 2023 and 7 June 2023 respectively (‘relevant date(s)’) however evidence of use after that day may be relevant, to the extent that such evidence can illustrate factors in place at the particular relevant date.[6]

   Section 44

   [2] [2016] ATMO 96, [9] (Hearing Officer Wilson).

   [3] [2016] ATMO 32, [5] (Hearing Officer Worth).

   [4] [2018] ATMO 46, [5] (Hearing Officer Worth).

   [5] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

   [6] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 61 IPR 257, [32] (Finn J).

4. The relevant provisions of Section 44 of the Act are:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) 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 goods or closely related services; or

   (ii)            a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)             the similar goods or closely related services; or

   (ii)            the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition 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.

5. In order for s 44 to apply the requirements of s 44(1) must be satisfied, i.e. that at least one of the trade marks identified by the examiner, being a trade mark registered or sought to be registered[7] by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the applied-for mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the applied-for mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

   [7] or an international registration designating Australia protected or sought to be protected

6. In the event that each of these requirements are satisfied it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the applied-for mark, other circumstances which would make registration of the applied-for mark proper, or that the Applicant has continuously used the applied-for mark beginning before the priority date of the prior trade mark. In the present case as the Applicant has provided no evidence of use prior to the relevant dates or other circumstances that would make registration of the Trade Marks proper (discussed further in paragraph 23 below) it is not necessary to consider these provisions.

7. I am satisfied that the CR-V Mark has a priority date that is earlier than the priority dates of the Trade Marks, and that the CR-V Mark is registered for similar goods as the Applicant’s Goods (noting the Applicant essentially concedes both the first and third requirements).  .

   Substantially identical and/or deceptively similar

8. I will now consider whether the Trade Marks are substantially identical to the CR-V Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

   [8] [1963] HCA 66, [12] (‘Shell’).

9. The Trade Marks and the CR-V Mark are set out below:

Trade Marks	CR-V Mark
CRV GLADIATOR FAMILY
CRV FAMILIA

1. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Trade Marks and the CR-V Mark. Indeed the only common element is the shared use of the elements ‘CR’ and ‘V’, noting the minor stylisation in the CR-V Mark and the presence of the hyphen.  I move then to consider whether the Trade Marks and CR-V Mark are deceptively similar.

2. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore 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 [trade mark].[9]

   [9] Ibid [13].

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which may be summarised as follows:

   [10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

   [11] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

   (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

   [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

   (c)the marks should not be compared side by side;[13]

   (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[14]

   (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

   (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

   (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

   (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

   (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

   (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

   (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

   (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

   [13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [14] Ibid.

   [15] Ibid.

   [16] Swancom (n 11), [70], [77]-[80] (Yates, Abraham and Rofe JJ).

   [17] Shell (n 12), 415.

   [18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

   [19] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

   [21] Australian Woollen Mills Ltd (n 13).

   [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 13), 658.

4. Furthermore the Court, in the same case, noted the following[23]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

   [23] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [25] Act, s 68.

   [26] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [27] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

5. As stated above, for the purposes of considering deceptive similarity, the reputation of the CR-V Mark is not a relevant factor.[28]

   [28] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

6. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[29] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[30]

   [29] Woolworths (n 24), [39].

   [30] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

7. In the present case, each of the marks share the CR-V or CRV element.  I consider that the stylisation in the CR-V Mark is de minimus and unlikely to reduce the prospect of confusion in any way, nor does the hyphen in the CRV significantly reduce confusion since CRV and CR-V would be pronounced the same way (as an acronym) and would be considered by consumers to have the same meaning (as an acronym).  While the presence of a hyphen does provide some visual difference, applying the relevant tests I consider the CRV and CR-V elements to be substantially identical.

8. As the CR-V Mark and the CRV element in the Trade Marks are substantially identical I find that the  Trade Marks wholly incorporate the CR-V Mark  Such marks are often deceptively similar such as the marks MY MELODY DREAMS and MY MELODY[31] however in some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar.  This was found to be the case in, for example, REBELLION vs SOUL REBELLION[32] and JOCKEY vs THROTTLE JOCKEY.[33]  The Applicant in its submissions has identified other cases where two trade marks were held not to be deceptively similar notwithstanding that one incorporated the other.   I do not accept, however,  the implied submission made by the Applicant that where each mark has a common feature greater attention needs to be focused on the remaining part of the mark; rather the marks must be considered as a whole.   

   [31] Eau De Cologne’s Application (1990) 17 IPR 540 (Hearing Officer Thompson).

   [32] Kingsley v Scott [2011] ATMO 20 (‘Kingsley’).

   [33] Jockey International Inc v Wilkinson [2010] ATMO 22 (‘Jockey’).

1. The Ng declaration contains the statement, supported by significant evidence, that the term ‘RV’ is a common abbreviation in the caravan industry for ‘recreation vehicles’. It also provides evidence of other businesses in the market using brands comprising a 3-letter acronym ending in ‘-RV’. Finally, it contains evidence that the Applicant maintains a portfolio of trade mark registrations for its CRUSADER CARAVAN brand and adopted and uses the acronym CRV as an abbreviation for ‘Crusader Recreational Vehicle’. This evidence is of limited relevance in the sense that, while the RV term is descriptive, the element sought to be registered is CRV, which is not in any way descriptive or common to the market (there is evidence of one other small-scale trader using the CRV element but it cannot be said to be in common use). Equally the fact that the Applicant has sought to register the mark in good faith as an abbreviation of an existing brand is of little relevance in the context of an examination. Finally, the evidence of the Applicant’s use consists of one webpage that postdates the relevant dates so is not relevant for s 44(3) or 44(4) purposes.

2. The Applicant appears to submit that the shared CRV/CR-V element is common or descriptive in the market and, as an acronym, has very little or no capacity to distinguish.  I do not accept either of these submissions by the Applicant.  The Applicant seeks to rely heavily on the decision in Australian Meat Group Pty Ltd v. JBS Australia Pty Ltd [34] (‘Australian Meat’), which held that the difference of one character between two acronyms was a single letter.  That case does not correspond to the present case; the acronyms contain the same three letters; the difference being the hyphen, minor stylisation and addition of FAMILIA and GLADIATOR FAMILY elements.  While I accept the principle in Australian Meat that small differences between acronyms can be sufficient to avoid confusion in the marketplace, I do not accept that acronyms, by their very nature (especially if they are not descriptive) have little or no capacity to distinguish.  The Applicant submits that the term RV is common in the vehicle industry, as an abbreviation of ‘recreational vehicle’.  I accept this submission but I do not accept the Applicant’s submission that by reason of this fact I should find that the CRV acronym is not distinctive; there is very limited evidence before me about any descriptive meaning of the term CRV/CR-V and its use in the Australian market separate from the CR-V Mark.   

   [34] [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ).

3. The question therefore is whether, notwithstanding the addition of the FAMILIA or GLADIATOR FAMILY elements, the Trade Marks, taken as a whole, are sufficiently similar to the CR-V Mark that there is a a real likelihood that some people will wonder or be left in doubt about whether the vehicles offered under the CR-V Mark and the Trade Marks come from the same source.

4. I note that the market for the Applicant’s Goods is a broad one and that vehicles are often identified by a two word mark, the first being the identifier of the company and the second being the product range, such as HOLDEN COMMODORE, FORD FALCON and MAZDA 3.  Given the CRV and CR-V elements are substantially identical I am satisfied on the balance of probabilities that there is a real likelihood that some people, viewing the Applicant’s Goods bearing the Trade Marks, would entertain a reasonable doubt as to whether the FAMILIA or GLADIATOR FAMILY elements simply referred to a product range offered under the CR-V Mark and hence came from the same source as the products offered under the CR-V Mark. While the addition of the FAMILIA and GLADIATOR FAMILY elements creates some visual and aural difference this is not a case, such as REBELLION vs SOUL REBELLION[35] and JOCKEY vs THROTTLE JOCKEY[36] where the additional elements result in a different conceptual meaning; rather the impression provided by the each of the Trade Marks is a family of products offered under the CRV element.  I also note, with respect to the CRV GLADIATOR FAMILY mark, that the word FAMILY may be viewed by consumers as descriptive of the type of vehicle offered under the mark or, as noted above, that it refers to a product family offered under the CRV Mark.

   [35] Kingsley [n 32].

   [36] Jockey [n 33].

5. Noting my conclusion in paragraph 11 above that the Applicant has provided no evidence of use prior to the relevant dates or other circumstances that would make registration of the applied-for mark proper, I find that the ground for rejection under s 44 of the Act has been established for both of the Trade Marks.

   Decision

   28. Section 33 of the Act relevantly provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

6. As I am satisfied that there is a ground for rejection under s 44 of the Act, I reject the application to register the Trade Marks.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   24 September 2024