Chiropractors' Association of Australia (National) Ltd v Kincare (Holdings) Pty Ltd

[2005] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by Chiropractors' Association of Australia (National) Ltd to registration of trade mark application 878749(42) - DEVICE OF TWO HANDS - filed in the name of Kincare (Holdings) Pty Limited.

Delegate:	Terry Williams
Representation:	Opponent: Robert Kelson and Florence McFarlane, Trade Mark Attorney, of Callinan Lawrie, Trade Mark Attorneys Applicant: Brian Elkington, Blake Dawson Waldron, solicitors
Decision:	S 52 opposition: s44: chiropractic services not similar to community care, nursing etc - s60 not established - copyright claim no more than arguable.  Registration to proceed, no award of costs.

1. Trade mark application 878749 was filed by Kincare (Holdings) Pty Limited (the applicant) on 8 June 2001.  The applicant seeks to register the following trade mark.

2. This trade mark is a human figure formed in silhouette between two hands.  What might otherwise be suspected to be defects in the reproduction of this trade mark, above, such as the angle at which the head of the figure is held, the white patch to the left of the head and the swirls or reflections in the dark areas of the trade mark, are apparently deliberate and are present in one of the forms in which the mark is commonly used by the applicant.

3. The application has been examined at the Trade Marks Office and advertised as having been accepted for possible registration. The acceptance was under the provisions of s 44(3)(a) of the Trade Marks Act 1995 (the Act).  This allows the acceptance of an application where there has been honest concurrent use of the applied-for mark in the face of an earlier and conflicting application or registration. 

4. Registration was opposed by Chiropractors' Association of Australia (National) Ltd (the Association).  The Association is the owner of the trade mark registrations that had given rise to the s 44 matter on which I have touched. 

5. The trade marks on which the Association relies are numbers 581268, 581269 and 581270, in classes 16, 36 and 42 respectively.  These trade marks are as follows:

   The opposition subsequently prosecuted by the Association was governed by the opposition processes set out in Part 5 of the act and of the Trade Mark Regulations.

6. The parties have filed evidence in support of, and in answer to, the opposition.  The evidence in support consists of a declaration by Krystina Brown, with exhibits KKB-1 to KKB-19.  The evidence in answer is a declaration by Jason Howie with annexures A and B.  Annexure A incorporates his earlier declaration, on which the acceptance of the application was based.

7. The application was still in respect of goods and services in classes 9, 35, 41 and 42 when I was assigned to hear and decide the matter.  At that hearing, the applicant was represented by Brian Elkington of Blake Dawson Waldron, solicitors.  Robert Kelson, and Florence McFarlane, of Callinan Lawrie, trade mark attorneys, represented the Association.  The hearing was convened by telephone.

8. After hearing submissions from both sides, I gave the parties an opportunity to negotiate an appropriate amendment, with some hope that this might lead to a settlement.  The applicant has reduced the scope of its claims and now seeks registration only in class 42, and for services specified as:

   Personal care services namely nursing services, community aged care services, home support services, palliative care, family respite services, companion care services, psychotherapy; community support on-call telephone services; none of the foregoing being or relating to chiropractic services

9. However, the opposition remains on foot.  The Association’s objection is now based on the inclusion of “nursing services, community aged care services, palliative care”, even though these are qualified by “none of the foregoing being or relating to chiropractic services”.  Therefore I am now required by the parties to issue a decision.  Both parties have made written submissions after the amendment and the decision that follows takes these into account, along with the grounds of opposition pursued at the hearing.

   Grounds of opposition considered

10. The Association relies on grounds under s 42 (breach of copyright), s 44 (impugning the application of s 44(3)) and s 60 (prior reputation in a deceptively similar trade mark such that use of the applicant’s trade mark would lead to deception or confusion).

    Section 42 – contrary to law

11. Mr Kelson argued at the hearing that the use of the applicant’s mark would be contrary to the infringement provisions of the Copyright Act 1968. Mr Kelson argued that the use of the applicant’s trade mark infringes the copyright held by the Association. Per s 36 of the Copyright Act:

    Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.  

12. I accept, and Mr Elkington did not dispute, that the Association owns copyright in the device that constitutes its registered trade marks.  Mr Kelson argued that the use of the applicant’s trade mark would amount to the copying of a substantial part of The Association’s device.  I accept that the Association’s trade mark is an artistic work and subject to copyright.  Under s 14, the infringement of copyright by copying of a “substantial part” of the work is an offence. 

13. Mr Kelson relied on Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 276; [1964] 1 All ER 465 for the proposition that a substantial part is determined by quality rather than quantity. The case in question also gives rise to the proposition that a work produced by effort and skill, rather than copying, does not involve infringement of copyright. In the present case, as Mr Elkington noted, there is no cogent evidence of direct copying.

14. Mr Kelson, for his part, noted that there is evidence that the applicant’s trade mark was produced by a graphic designer on commission.  There is, I note, no evidence of the terms of the commission but (since it does not alter the final outcome) I will not delve into that issue and will assume that the applicant obtained copyright under the terms of the commission.  Mr Howie, the managing director of the applicant, describes the present logo as an evolution of a previous one, which he includes in his declaration.  I now reproduce a depiction of the device that Mr Howie declares is the forerunner of the applicant’s present device:

15. However, Mr Howie was not the author of the current device.  Nor was Mr Howie with the applicant at the time the device was designed.  While I accept the claim he has made, it is not necessarily inconsistent with copying.  The lack of any direct evidence from the actual designer about how this “evolution” was achieved, or even from the applicant about the brief given is, against such a background, conspicuous.

16. Mr Kelson argued that the degree of objective similarity raised a presumption of copying that had not been rebutted.  He also relied on Designer Guild Limited v Russell Williams (Textiles) Ltd (2000 UKHL 41).  He noted the following:

    certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work. Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 is a well-known example. It is on this ground that the mere notion of combining stripes and flowers would not have amounted to a substantial part of the plaintiff’s work. At that level of abstraction, the idea, though expressed in the design, would not have represented sufficient of the author’s skill and labour as to attract copyright protection.

17. Mr Kelson then noted that the features in common in the current matter are not in themselves either commonplace or unoriginal. 

18. This is where I think that the Association’s s 42 case must fail.  What is at issue here is copyright in an artistic work.  That work is a drawing, printed on paper.  What the Association complains of, however, appears not to be the copying of that work so much as the exploitation of an idea.

    To quote again from the case on which Mr Kelson relied:

    … a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work. It is on this ground that, for example, a literary work which describes a system or invention does not entitle the author to claim protection for his system or invention as such.  The same is true of an inventive concept expressed in an artistic work.  However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own (see Kleeneze Ltd v DRG (UK) Ltd [1984] FSR 399).

19. It appears to me that the artistic work produced by the applicant’s designer may well be simply his or her own interpretation of the concept of two hands forming the silhouette of a person.  Staniforth Ricketson describes, in The Law of Intellectual Property, a dichotomy between the idea of the work and the work itself.  It is the latter that is protected by copyright, the law of which is not calculated to protect other legitimately derived expressions of the same concept.  It is by no means clear to me that the original artistic effort that has gone into the applicant’s designer’s formulation could be said to be insignificant or that, in any sense, the applicant’s design is a copy of a substantial part of the Association’s.  It follows that I am very far from satisfied that the applicant’s trade mark is one the use of which “would”, as opposed to “could”[1] be contrary to law.

    [1] Here I refer to the distinction made by Madgwick J in Advantage Rent-A- Car Inc v Advantage Car Rental (2001) 52 IPR 24; (2001) AIPC 91-724; [2001] FCA 683.

    Sections 44 – Services of the same description etc

20. The substantive issues in dispute for the purposes of s 44 are twofold:  “are the marks too close?” (“deceptively similar trade marks” in terms of s 10) and “are the services similar?” (s 14, which defines this in terms of the long-standing concept of services of the same description).  For reasons which will emerge, I will defer the comparison of marks in terms of deceptive similarity and deal with that issue where it arises under s 60.

21. As to the second issue under s 44, the services now specifically opposed by the Association are:

    nursing services, community aged care services, palliative care, … none of the foregoing being or relating to chiropractic services.  

22. For the Association, Ms McFarlane has submitted that these are of the same description, and therefore similar to those covered by the Association’s registration in class 42: 

    Services of all kinds in this class relating to chiropractic services including x-ray procedures and diagnosis, chiropractic technique, clinic management and related services. 

23. From the written submissions, no ground of opposition is argued in relation to any of the other services still specified.  Ms McFarlane argues that:

    ·Nursing services are services tending in sickness and infirmity

    ·Community aged care services extend to all types of personal care services directed to elderly patients

    ·Palliative care services are services to alleviate people’s suffering.

24. Her written submissions go on to stress that the Association’s members are chiropractors who are likely to practice in nursing homes, retirement villages or the like.  Neither Mr Kelson nor Ms McFarlane attempted to assert that the services were other than chiropractic in focus.  I assume this is because the restriction of the Associations’s class 42 registration ties back the otherwise unhelpful description “services of all kinds” to what the Association’s members actually do. 

25. Neither party made any other detailed submissions on the scope of the services specified by the applicant.  I will proceed on the basis of my own understanding of the ordinary meanings of the terms in question.

26. The most authoritative case in which “services of the same description”' has received judicial consideration is from the Full Court of the Federal Court.  In Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd[2], Burchett, Sackville and Lehane JJ first looked at the history of the expression in question and the lack of earlier and authoritative precedent:

    That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120 (2) (c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (TM Act 1955), although the expression "services of the same description as [ services in respect of which the trade mark is registered]'' was used in the earlier legislation: see TM Act 1955 ss 33 (2), 36 (1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; at 606; 1A IPR 465 the High Court said this:

    There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the assistant- comptroller elaborated on the observations of Romer J in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ..."

    Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227; at 240; 26 IPR 246) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

    In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... "in a business sense"; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase "goods of the same description" ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.

    [2] (1999) 42 IPR 561 at 567

27. Turning to the facts at hand, the court went on to give some comments (emphasis added) that are directly applicable here:

    We accept that these principles, subject to any necessary modification, apply in relation to services.  But they do not advance MID's argument.

    For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services.  If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

    This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.  In the ordinary use of language the two concepts are, we think, quite distinct.

    It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley " (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel.  Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which Touraust intends to conduct.

28. In other words, as my colleague Hearing Officer Thompson has noted in another decision[3], what I am to consider is the intrinsic nature of the services and the trade channels through which they are delivered.  Mr Elkington stressed the same view at the hearing, and I agree with him.  I am not to be distracted by the fact that the services of the parties might have some features in common which are incidental to their essential nature.

    While it might be said, in the current matter, that both nursing and chiropractic services are sometimes, as when rendered on the premises of a nursing home, aimed at elderly patients, this is the only feature they have in common.  That degree of commonality is not compelling: the same may, under the same circumstances, equally be said of dieticians and yet it would not, at least prima facie, be easy to say that dieticians’ services are of the same description as those of either chiropractors or nurses.

    [3] United Parcels Services of America Inc v UTS Europe BV [2003] ATMO 33; (2003) AIPC 91-910

1. Nor is there any evidence that nursing homes have in-house chiropractors, or that chiropractors regularly attend nursing homes as part of their duties.  There is no evidence that chiropractic services are particularly required (or otherwise) by the older population.  I will not speculate on these questions when the evidence is clearly the responsibility of the parties.  Those things may well be so but if they are so it is not something of which I personally am aware and is, moreover, something that the Association should have established.

2. Likewise, there is no evidence that either nurses (or doctors engaged in the field of palliative care) are routinely chiropractors or trained in such methods.  As far as I know, the professional bodies that govern these various skilled caregivers are quite separate and if the training institutions that equip such practitioners to practice now teach in a cross-disciplinary fashion then the Association has neglected to bring this into evidence.

3. Overall, the most that can be said of the Association’s case is that chiropractic services are, as I think it is generally recognized, a specialized subset of the healing professions in their broadest sense.  Chiropractic services have, at their base, a discipline related to the manipulation of the spine.  Consistently, the evidence of Krystina Brown, who has made the only declaration on which the Association relies, stresses the specialized nature of the services.  She characterizes chiropractic as “a distinct health care discipline”.

4. For the reasons that I have already set out, I find that the services now specified by the applicant are not of the same description as the services set out in the Association’s registrations.  Accordingly, there is no ground of opposition established under s 44.

5. Were I to be wrong on that question, I note that Mr Elkington argued in his written submissions that there is ample evidence of honest concurrent use of the trade mark, justifying a favourable application of s 44(3). 

6. I do not share his views.  Firstly, the use in question started no earlier than an indeterminate date in 1999, at most some two and a half years before the application was filed.  I think that the application of the provisions of s 44(3) at the examination stage, for what was then a wide range of services that have only an incidental connection with the operation of nursing services and the provision of in-home and respite care for the aging, was overly generous.  It emerges now, in the opposition context[4] that use did not extend to all of the goods and services until 12 months after adoption.  However, this should have been obvious from the tenor of the declaration of Mr Howie considered at the time of acceptance.  Mr Howie, at clause 7 of his declaration of February 2003, was at pains to stress that his company’s services were different from those of the Association.  At that point he made it abundantly clear that “my company offers nursing care and health management services to the aged and infirm”.  There is no suggestion that the company had any substantial claim to a trade in business consultancy services or computer software, to list two of the now-deleted items. 

   [4] Howie declaration made June 2004

7. More disturbingly for present purposes, there is no evidence from the designer about the source of inspiration of the current design.  I note Mr Howie’s comments about the design being an evolution of the older Kincare logo.  Equally, it is also relevant that Mr Howie himself was not with the applicant at the time the logo was designed.  He states that “my company was unaware of the logo used by the Chiropractors’ Association” and that his opinion comes from his personal knowledge and from records of the applicant.  The onus to establish honesty is higher in opposition than it is in the ex parte context, where assertions are taken at face value.  Even at face value, however, it is not at all clear that Mr Howie had seriously looked into the knowledge that other officers of the applicant might have had of the Association’s mark.  His declaration does not mention any such investigations or, importantly, explain why first-hand evidence of honest adoption is not available.  While I do not infer dishonesty in the motivations of the applicant, it has simply not, particularly on finding itself opposed, done enough to demonstrate common honesty.  I will leave that matter to be dealt with elsewhere, should my decision be appealed.  The issue does not arise for present purposes because I have found that the Association has not established the necessary ground under s 44(2).

   Section 60, reputation in a deceptively similar trade mark, deception and confusion.

8. Section 60, as a ground of opposition, is established where the applicant’s mark would, in fair use for any of the services specified, cause deception or confusion because of the reputation extant, at the filing date, in another competing and deceptively similar trade mark.  Section 60 does not stipulate that the competing trade mark be for the same services, or even for services that are similar.  So long as the marks are deceptively similar and the end result of fair use by the applicant would be deception or confusion because of a prior reputation in the conflicting trade mark, registration must be refused[5].

   [5] McCormick & Company Inc v McCormick [2000] FCA 1335

9. Ms McFarlane’s submissions stress that if the applicant offers its services to elderly patients or those in nursing homes and those services relate to therapeutic services broadly analogous or (as she put it) similar to chiropractic services such as physiotherapy or remedial massage, there would be a real and tangible risk of confusion.  She also notes that elderly patients may more often than usual be afflicted with poor eyesight and poor memory and may not fully grasp the distinction between therapeutic services that involve techniques such as massages and manipulations.  I have already set out my reasons for saying that, for the purposes of s 44, the services of the applicant are not “of the same description” but this does not avoid the s 60 test in the event that I find the trade marks at issue to be deceptively similar.  And, as Mr Kelson noted at the hearing, those in pain may not be particularly inclined to draw fine distinctions.

10. At the hearing, Mr Elkington, for the applicant, pointed to the various visual distinctions that can be made between the marks.  However, I think the argument that can be made for the purposes of copyright does not avail the applicant in the landscape of the Trade Marks Act 1995.  Deceptive similarity can be based on visual resemblance particularly when underpinned by similarity of concept or idea[6].  The ideas of the two trade marks now in alleged conflict are two quite similar manifestations of a human silhouette produced by two hands, with a degree of artistic licence.  The two renditions would be remembered in similar terms, be that recollection a description or a visual image retained and called to mind, perhaps in imperfect detail.  Either way, any imperfection of recollection will lead to confusion of the trade marks, which I find therefore to be deceptively similar.

    [6] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, (1952) 86 CLR 536: The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

11. The remaining test is to assess the possibility of deception or confusion of a significant number of people, as at the priority date of the opposed application, given regard to the reputation then extant in the Associations’ trade marks.  The relevant date is 8 June 2001, at which time the Association itself had been in existence for about 9 years.  Ms Brown says that the Association is “the major” association representing the chiropractic profession but she omits to mention how many other associations there may be, or how many chiropractors there are in Australia. 

12. The trade mark of the Association has been in use since 1991 and, in December 2003, two and a half years after the priority date, its use extended to 2000 member chiropractors.  As to use of the trade mark, Ms Brown mentions advertising in the media but is not at all specific about the timing or extent of this.  It would seem that the Association’s Journal is circulated online in numbers that roughly match the number of members.  By and large, there is nothing to suggest that the patients, as distinct from the chiropractor members of the Association, would necessarily be aware of the Association.  Doubtless some of them would be but the proportion is far from clear.  Much would depend on how observant the patients in question might be of the paraphernalia displayed on the wall in the office of the chiropractor whom they consult.  In any case there is no clear evidence about the extent of the Association’s coverage of chiropractors in general, particularly at the priority date. 

13. The Association also endorses the design of certain products such as bedding, pillows, backpacks and mouse pads.  From the figures set out in the Brown declaration, 440 separate products were approved in 2003, at the end of which year Ms Brown made her declaration.  In the national market for (among other things) bedding, pillows, backpacks and mouse pads, 440 separate designs per year does not seem to be particularly large.  Some endorsed designs do appear to be produced by major suppliers or sold through major department stores but, again, the extent of this is unclear from the evidence.  To conclude that this level of activity has significantly augmented the Association’s reputation would, in my view, be mere speculation.

14. Ms Brown gives evidence of promotion of the logo during National Chiropractic Care Week.  Posters for the relevant weeks in 2002 and 2003 are attached to her declaration.  Those, obviously, are post the critical date.  Even if they were not, the extent of their circulation is unclear.

15. Overall, I can only conclude that the extent of the reputation of the Association’s trade mark is indeterminate.  The likelihood of consequential deception or confusion has thus not been established.  This conclusion is also consistent with the lack of any evidence at all of any deception or confusion.  Mr Howie denies there has been any and the Association is silent on the issue.

16. The Association has failed to establish its ground under s 60.

    Conclusion

17. No ground of opposition has been established and the trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

18. In view of the drastic restriction of the services, I make no award of costs.  

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    14 March 2005