Chris Staats v Click Loans Pty Ltd - [2018] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by Chris Staats to registration of trade mark application 1744728 (36) - CLICKLOANS (FANCY) - in the name of Click Loans Pty Ltd.

Delegate:	Nicole Worth
Decision:	2018 ATMO 116 Trade Marks Act 1995 (Cth) – s 44 considered – trade mark deceptively similar – applicant owns prior registrations – provisions of s 44(3)(b) applied – trade mark may proceed to registration.

Background

This decision is pursuant to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Chris Staats (‘the Opponent’) to registration of the trade mark the subject of application no. 1744728, detailed below.

Trade Mark	(‘the Trade Mark’)
Owner	Click Loans Pty Ltd (‘the Applicant’)
Filing Date	6 January 2016
Services	Class 36: Advice regarding credit; Consultations relating to credit; Credit (financing); Financial credit services; Advisory services relating to finance; Consultancy services relating to finance; Financial consultancy; Loans (financing); Advisory services relating to loan services; Loan services; Provision of loans.
Endorsements	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.* Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

The trade mark application was examined and eventually accepted for possible registration under the provisions of ss 44(3)(b) and 44(4). Some of the prior trade marks which gave rise to the application of s 44(3)(b) are at issue here, discussed later in this decision. For now it is sufficient to say that it was determined other circumstances existed which made registration of the Trade Mark proper. The acceptance was advertised in the Australian Official Journal of Trade Marks on 4 July 2016.
On 19 July 2016 the Opponent filed a Notice of Intention to Oppose, followed on 19 August 2016 by a Statement of Grounds and Particulars (‘SGP’). The SGP particularises grounds of opposition corresponding to ss 44, 60, 58, 58A, 62A and 42 of the Act. The Applicant filed a Notice of Intention to Defend on 12 September 2016.
The Opponent has not filed any evidence in support of its opposition. The Applicant filed a declaration by Sarah Delpopolo, a solicitor of Axis Legal (Australia) Pty Ltd, dated 14 April 2017.
At the end of the period for filing evidence, the parties were informed of their right to be heard. Neither elected to avail themselves of this opportunity, and so that the Registrar may discharge her obligation under s 55 the matter has now been allocated to me, one of the Registrar’s delegates, for my decision based upon the written record comprised of the documents mentioned in the paragraphs above.

Onus and relevant date

The Opponent bears the onus of establishing at least one of its grounds of opposition. The relevant standard of proof is the ordinary civil standard of the balance of probabilities,[1] and the relevant date at which the rights of the parties are to be determined is 6 January 2016, the filing date of the application.[2]
[1] Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
That the onus lies with the Opponent is implicit in s 55 of the Act, which provides that the Registrar must decide to refuse or register a trade mark (with or without conditions or limitations) ‘having regard to the extent (if any) to which any ground on which the application was opposed has been established’ (emphasis added). It has also been confirmed numerous times in the courts.[3] To that end, given that the Opponent has not filed any evidence to support its opposition, the grounds under ss 42,[4] 58, 58A, 60 and 62A cannot be established as they are supported only by bare assertion laid out in the SGP. Matters such as first use, reputation and bad faith require supporting documentation as well as a reasonably comprehensive description of the relevant events and circumstances. Moreover, such a description should be in the form of a declaration in order to lend weight to the claims. Accordingly, I consider none of the grounds under ss 42, 58, 58A, 60, 62A are established.
[3] See for example Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [25]-[32] and authorities cited therein.
[4] The ground under s 42 is particularised as being that registration of the trade mark would be contrary to law, specifically contrary to ss 18 and 29 of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010, and would amount to the tort of passing off.
The remaining ground, being discussed in this decision, is that under s 44 of the Act.

Section 44

Section 44 of the Act relevantly provides:

Section 44 - Identical etc. trade marks

…
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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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.
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.
For the purposes of s 44(2) the Opponent identified the trade marks detailed below in its SGP, shown along with the Trade Mark for ease of reference.

The Trade Mark	Priority date: 6 January 2016 Class 36: Advice regarding credit; Consultations relating to credit; Credit (financing); Financial credit services; Advisory services relating to finance; Consultancy services relating to finance; Financial consultancy; Loans (financing); Advisory services relating to loan services; Loan services; Provision of loans.
1526187	Priority date: 16 November 2012 Class 36: Advisory services relating to finance; consultancy services relating to finance; Finance leasing; Personal finance services; Provision of equipment finance; Provision of finance.
1527964	LoanClick	Priority date: 27 November 2012 Class 36: Consultancy services relating to finance; consultancy services relating to personal finance, Finance leasing; Personal finance services; Raising of finance; Research services relating to finance.
1149924	click home loans	Priority date: 30 November 2006 Removed from the register 22 June 2017.

To satisfy s 44(2) one or more of these trade marks must have a priority date earlier than that of the Trade Mark; must be in respect of similar services or closely related goods to those of the Trade Mark; and must be substantially identical or deceptively similar to the Trade Mark. Should I find that s 44(2) is established, the Trade Mark might nonetheless still proceed to registration should I find that either of ss 44(3) or 44(4) apply (which provide for registration of a trade mark on the basis of honest concurrent or prior continuous use, or other circumstances which would make registration proper).
I note first that trade mark number 1149924, owned by a third party, was removed from the Register on 22 June 2017 and as such it is no barrier to the registration of the Trade Mark.
The trade marks the subject of registrations 1526187 and 1527964 are, according to the SGP, owned by the Opponent’s company Mortgage Line Australia Pty Ltd. Despite neither being in the name of the Opponent, I will for the sake of brevity refer to them as ‘the Opponent’s Trade Marks’. I consider it straight forward that the Opponent’s Trade Marks have priority dates earlier than that of the Trade Mark, and are in respect of services similar to those of the Trade Mark.
The remaining matter is therefore whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Marks.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J described the test for substantial identity as:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [5]
[5] [1963] HCA 66, [12].
I do not consider that the Trade Mark is substantially identical to the Opponent’s Trade Marks. In a side by side comparison, where both parties’ trade marks are before the observer, the reversal of the words is likely to be noted.
I move on then to a consideration of deceptive similarity. Deceptive similarity relies upon impression, based on recollection of the earlier marks, as opposed to a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act as ‘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’. Windeyer J continued his discussion in Shell as follows:
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 [Opponent’s Trade Marks] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Trade Mark]. 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.[6]
[6] [1963] HCA 66, [13].
Whilst the differing order of words in the parties’ trade marks may well be noted in a side by side comparison, that difference diminishes when considering the impressions left by the trade marks, particularly bearing in mind that their precise details may be imperfectly recalled.
Both parties’ trade marks are primarily identified by the words CLICK and LOAN or LOANS. (The difference between the singular and plural form of the words has minimal impact upon the trade marks’ impressions). The order that the words appear in the trade marks does not affect the message or idea conveyed by them. CLICK conveys a sound or action, particularly the ‘click’ of a computer touchpad or mouse perhaps implying an online or electronic service, and LOAN/LOANS merely describes the nature of at least some of the services. This message or idea does not alter dependent on the order of the words.
Similar findings have been made in other decisions of this office, for example Chromagen Solar Australia Pty Ltd v First Solar, Inc (‘Chromagen’)[7] wherein FIRST SOLAR was considered deceptively similar to SOLAR FIRST; American Airlines, Inc. v Platinum Freight Management Pty Ltd[8] wherein PLATINUM ADVANTAGE was considered deceptively similar to AADVANTAGE PLATINUM; and Woolworths Limited v Flyers Group PLC[9] wherein SUGAR PINK with device was considered deceptively similar to PINK SUGAR. I note in particular the delegate in Chromagen observed:
This is not a case where the reversal of the order of the words leads to two completely different ideas. For example, CRAZY ANIMAL vs ANIMAL CRAZY both contain the same words but when the order of them is reversed the idea conveyed and the impression left with the consumer is very different.
In the case before me the respective trade marks comprise of the same words and essentially the same idea being the word SOLAR (the sun) and the number one. This impression does not change no matter the order of the words.
[7] [2015] ATMO 45.
[8] [2017] ATMO 51.
[9] [2013] ATMO 86.
As indicated in paragraph 19 above, I consider the same applies here.
As to the visual appearance of the parties’ trade marks, I consider firstly that the rectangular backgrounds present in registration 1526187 and in the Trade Mark have only limited impact. Rectangular backgrounds against which to offset or highlight words are not unusual elements in trade marks. Accordingly it is unlikely significant note would be taken of them. Secondly, neither trade mark is limited to colour and so notionally the rectangles may be presented in the same colour. Additionally, although notionally the trade marks may be rendered in any colours, I note that as applied for registration 1526187 presents one word in blue and the other in white, as does the Trade Mark (albeit a darker shade of blue).
Bearing all of these factors in mind, I am satisfied that the Opponent’s Trade Marks are deceptively similar to the Trade Mark and as such s 44(2) is satisfied. I turn then to the consideration of whether ss 44(3) or 44(4) apply.
The Delpopolo declaration exhibits various extracts from the Register, the results of various internet searches for businesses related to the Opponent, and various print outs of web pages seemingly connected with the Opponent. It does not describe or provide exhibits relating to any use of the Trade Mark. Accordingly, neither ss 44(3)(a) or 44(4) can be applied.[10] This leaves only the question of whether the Trade Mark may be registered under the provisions of s 44(3)(b).
[10] I note that the provisions of s 44(4) were applied at the acceptance stage on account of the Applicant having shown use prior to the filing date of application 1659659 (now lapsed). Section 44(4) was not applied in relation to any of the other prior trade marks identified during examination.
There is no limitation upon the type of ‘other circumstances’ which may lead to the application of the provision, only that they satisfy the Registrar that registration[11] would be proper. The Delpopolo declaration identifies that the Applicant is the owner of trade mark registration 702790, the details of which are shown below.
Trade Mark: CLICK
Priority Date: 21 February 1996
Goods and Services:
Class 9: Recorded computer programmes concerning insurance and financial matter.
[11] Or acceptance if at the examination stage.
Class 36: Insurance and financial affairs, including exchange and clearing services for trading in stocks, contracts on stocks, bonds, options, equities, futures, securities and currencies; security brokerage; contract guarantee services.
This registration was initially cited during examination as a prior trade mark under s 44, however it was subsequently assigned to the Applicant. On that basis (that it already co-existed with the Opponent’s Trade Marks, amongst other trade marks cited during examination) the Trade Mark was accepted.
I note that the Delpopolo declaration also identifies that the Applicant ‘owns’ a suite of trade marks listed upon the database of Australian trade marks, many of which are shown to be lapsed. Nonetheless one is shown to be registration 1744687 which is for the plain text trade mark CLICK LOANS in respect of the following services in class 36:
Advisory services relating to loan services; Loan services; Loans (financing); Provision of loans; Advice regarding credit; Consultations relating to credit; Credit (financing); Financial credit services; Advisory services relating to finance; Consultancy services relating to finance; Financial consultancy.
Neither party has presented an argument as to the appropriateness or otherwise of the application of s 44(3)(b). Section 44(3)(b) may be applied on the basis of an Applicant already owning a registered trade mark for similar goods or services. The Trade Marks Office Manual of Practice and Procedure, at part 28.4, provides examples of other circumstances which may provide a basis for acceptance, in particular that:
An applicant already has a registered trade mark for similar goods and/or services. Such a registration may have a priority date which is earlier or later than the conflicting trade mark’s priority date. In such cases, however, other factors will need to be considered i.e. how long the trade mark has been on the Register and the Registrar should confirm that the trade mark has been used continuously on those similar goods/services (The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2016] ATMO 111). A written declaration by the applicant will be sufficient for the Registrar to confirm continuous use of the trade mark. The provision of evidence or a statutory declaration will usually not be required.
There is no statement from the Applicant as to any use of any of its trade marks. That being the case, I would have some reservation in applying s 44(3)(b) solely on the basis of the Applicant owning registration 702790. That trade mark has been registered since 1996, more than twenty years ago, and particularly given it was owned by another entity prior to its assignment in 2016 it is unlikely the Registrar could be satisfied there had been continuous co-existence of the parties’ trade marks in the market place.
However the Applicant is also the owner of the plain text trade mark CLICK LOANS, registered in respect of largely the same services as the Trade Mark. That registration has the same priority date as the Trade Mark. To that end, it would be somewhat futile to refuse registration of the Trade Mark in the face of its plain text counterpart being registered in the Applicant’s name. The graphic elements of the Trade Mark are not so distinctive that the character of registration 1744687 is significantly different to that here.

Based on the reasons I have provided, I am satisfied the provisions of s 44(3)(b) may be applied. The ground under s 44 is therefore not established.

Decision

Subsection 55(1) of the Act 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.
The Opponent has not established any ground of opposition.
Accordingly trade mark application 1744728 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 and that the disposition of the application should be in accordance with the Court’s order or direction.

Nicole Worth
Hearing Officer
Trade Marks Hearings
19 July 2018