Citicorp v Charlotte Rose and Kris Rose - [2008] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Citicorp to registration of trade mark application 1047377(35) - YOUR CITY YOUR CARD Logo - filed in the name of Kris Rose and Charlotte Rose.

Delegate:

Michael Kirov

Representation:

Opponent: Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: No appearance but did file written submissions

Decision:

2008 ATMO 99

S.52 opposition: grounds pursuant to s.44 and s.60 pressed but not established. Registration to proceed.

Costs awarded against opponent.

Background

This is an opposition brought by Citicorp (“the Opponent”) pursuant to s.52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark YOUR CITY YOUR CARD Logo, subject of application number 1047377 in the names of Kris Rose and Charlotte Rose (“the Applicants”).
Details of the opposed application are as follows:

Application Number: 1047377

Priority Date: 22 March 2005

Services:Class 36: Advertising reward schemes; member reward schemes; loyalty reward schemes; loyalty programmes, customer reward schemes

Trade Mark:

The Opponent filed its Notice of Opposition (“the Notice”) on 13 October 2005, with the Opponent bearing the onus of establishing one or more grounds of opposition on the balance of probabilities[1].
[1] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411 (“the WOOLWORTHS METRO case”)
The parties lodged Evidence in Support, Evidence in Answer and Evidence in Reply as set out below:

Evidence in Support

▪Statutory Declaration by Anne Moses made 3 November 2006, with Exhibits “A” to “K”

Evidence in Answer

▪Statutory Declaration by Kris Rose made 6 February 2007, with Exhibits “A” to “J”

Evidence in Reply

▪Statutory Declaration by Trevor Stevens made 29 October 2007

The matter was heard before me as delegate of the Registrar of Trade Marks on 17 September 2008 in Melbourne. Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys appeared for the Opponent. The Applicants had earlier advised they would not be attending the hearing, but in a letter dated 16 September 2008 Kris Rose did send written submissions the Applicants wished to be taken into account. Mr Stevens confirmed that the Opponent had not previously been copied with this letter and a copy was accordingly given to him immediately prior to the hearing. The essence of these submissions was to highlight the information contained in the Applicants’ evidence in answer that the Applicant had used the opposed trade mark in Australia since 2005 in connection with “a buying group of company owners who bulk buy off each other” and that no dealings with, or advertising directed at, the general public takes place. Annexed to Kris Rose’s submissions was a copy of IP Australia’s decision in Citicorp v City Marketing Concepts Pty Ltd [1999] ATMO 16 (26 February 1999), an opposition which considered arguably related issues and to which I will refer later in this decision.

Grounds of Opposition

The Notice lists nine specific grounds corresponding to various provisions of the Act, in addition to a general ground requesting exercise of the Registrar’s discretion in the Opponent’s favour. By letter dated 10 September 2008, however, Mr Stevens wrote to IP Australia (and copied the Applicants) indicating the Opponent would only be pressing those grounds based on sections 43, 44 and 60 of the Act and enclosing a copy of the Opponent’s written 13 page “Outline of Arguments” addressing those three grounds. At the hearing itself Mr Stevens pressed the grounds based upon sections 44 and 60 of the Act only and limited his submissions accordingly. These two grounds are discussed below. The remaining grounds listed in the Notice are of course not established.

Discussion

Section 44

The ground based on section 44 is indicated in the Notice as follows:
The trade mark is substantially identical with or deceptively similar to one or more of the opponent’s trade marks including, but not limited to, 482523, in respect of similar services and for which the priority date is earlier than that of the trade mark the subject of the application and therefore its registration would be contrary to Section 44 of the Act. The trade mark has not been used by the applicant to satisfy the requirements of Section 44(3) and/or 44(4) and there are no other circumstances which make it proper for the Registrar to accept the application
Section 44 of the Act is reproduced below:

Identical etc. trade marks

44.(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) the applicant's trade mark 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).
Note 3: For priority date see section 12.
(2) 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.
(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.

Details of registration 482523 are set out below:

Registration Number: 482523

Priority Date: 2 March 1988

Services:Class 36: Banking services in this class including electronic transfer and access of funds

Trade Mark: CITICARD

Mr Stevens indicated that in addition to direct reliance on registration 482523 as the basis for its submissions under s.44 there was a second dimension to the Opponent’s case. The Opponent was also relying on the opposed trade mark’s alleged deceptive similarity to the Opponent’s “family” of registered “CITI” trade marks, being marks which feature the prefix CITI-, usually combined with a word broadly descriptive of the relevant goods or services covered. This “family” of trade marks is referred to in the Moses declaration, and for the sake of convenience hereafter also, as the “CITI Trade Marks” and this aspect of the Opponent’s submissions will be dealt with in due course. I will however firstly consider the s.44 ground as far as it concerns registration 482523 directly.
The priority date of registration 482523, being 2 March 1988, is earlier than the 22 March 2005 priority date of opposed application 1047377. To establish its section 44 ground the Opponent therefore needs to establish on the balance of probabilities that:
• the opposed application covers similar services to the services covered by registration 482523; and
• the opposed trade mark is substantially identical or deceptively similar to the CITICARD trade mark subject of the Opponent’s registration.
Mr Stevens did not argue that the opposed trade mark was “substantially identical” to the Opponent’s Trade Mark, but did argue the marks were “deceptively similar”. Section 10 of the Act provides that “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”. As was pointed out by French, J in the WOOLWORTHS METRO case[2] (in the context of closely related goods and services) the logic of s.44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks. In this regard French, J explicitly approves the observation in Wilcox, J’s first instance decision in the Woolworths matter[3] that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”. French, J concludes (at [40]):
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.
[2] Op. cit.
[3] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)
Accordingly I commence with a consideration of whether the opposed application covers similar services to those covered by registration 482523. I mention that in assessing whether the services covered by the opposed application are similar to the services covered by registration 482523, I must assume use of the respective trade marks in a “normal and fair manner” for any of the services covered by the application and the registration[4]. It is the statutory rights granted by registration that must be compared and not the actual use that may have been made of the respective marks in the past. In assessing whether the services are similar I have accordingly not taken into account the Applicant’s evidence as to the manner in which it has in the past used the opposed trade mark.
[4] Smith Hayden & Co. Ltd’s Application (1946) 63 RPC 97 (Ch D); Registrar of Trade Marks v Woolworths Limited (op cit)
Section 14(2) of the Act defines “similar services” as follows:
For the purposes of this Act, services are similar to other services:
if they are the same as the other services; or
if they are of the same description as that of the other services.
As mentioned, the opposed application covers “Advertising reward schemes; member reward schemes; loyalty reward schemes; loyalty programmes, customer reward schemes” in Class 35, while registration 482523 covers “Banking services in this class including electronic transfer and access of funds” in Class 36. It is thus apparent none of the services covered by the opposed application are the same as any of the services covered by the registration relied upon by the Opponent. Mr Stevens did however argue they were of the same description. In particular he argued that loyalty reward schemes or programmes were “essentially financial in nature” in that they involved financial incentives or discounts. Further, he said, such programmes were often offered to the public by banks and thus often reached consumers through the same trade channels as banking services.
The term “of the same description” is not defined in the Act and, unlike “goods of the same description”, the expression “services of the same description” has not received a great deal of reported judicial attention. Noting this in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 (“the Chifley Tower case”), the Full Federal Court (Burchett, Sackville and Lehane, JJ) accepted (at 567) that “subject to any necessary modification” the principles applicable to whether two sets of goods were goods of the same description also applied in relation to services.
The factors I must consider, then, would include such things as the nature of the respective services, what the services are normally used for and whether the services are ones which one might reasonably expect one trader to provide under the same or similar trade mark. In assessing the issue and “subject to any necessary modification” I should bear in mind the words of Lord Evershed MR in Re Lyons & Co Ltd’s Application [1959] RPC 120 (at 128), quoted with approval by the Full Court in the Chifley Tower case:
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.
Registration 482523 covers banking services generally in Class 36 and such services are arguably quite distinct from loyalty schemes or programmes in Class 35, these being more in the nature of advertising or marketing activity. Indeed, the opposed application specifically covers, inter alia, “advertising reward schemes” and it is difficult to see any significant relationship between such advertising services and “banking services”, as that latter description would generally be understood.
That said, it is apparent from the Opponent’s evidence that the Opponent, itself a bank, has in addition to banking services offered a loyalty scheme or programme to its customers. Ms Moses says the Opponent has used the (unregistered) trademark CITIBANK REWARDS in Australia since about October 1993 in relation to what she describes as the Opponent’s “incentive programme”. The Moses declaration indicates this programme is tied to use of credit cards issued by the Opponent, with points being accumulated according to the extent the card is used. Accumulated points can then be redeemed against a wide range of goods and services provided by businesses outside the financial and banking sectors with whom the Opponent has a relationship. Experience indicates many financial institutions run similar loyalty schemes tied to use of credit or debit cards they have issued. On the other hand, many businesses which have nothing to do with providing banking services also operate loyalty schemes offering discounts or perquisites to certain customers, whether they be “frequent flyers” or regular coffee drinkers. Indeed, loyalty schemes of one kind or another are in my experience somewhat ubiquitous and there is no obvious reason to assume any particular loyalty or incentive programme is necessarily tied to a financial institution or bank.
I am unaware of any authority indicating marketing schemes of the kind covered by the opposed application have been considered services of the same description as banking services. On balance, I believe the better view is that they are not services of the same description. For the sake of completeness I nevertheless now turn to the question of whether the opposed trade mark is “deceptively similar” to the registered CITICARD trade mark on the basis that there is at best an arguable case the services in question are of the same description.
Mr Stevens submitted the trade marks were deceptively similar, to quote from his written submissions, on the grounds that:

An essential feature of the Applicant’s trade mark is the inclusion of the words CITY and CARD;
The words CITY CARD are substantially identical with the Opponent’s registered trade mark CITICARD;
The inclusion of the word YOUR in the Applicant’s trade mark does nothing to diminish the degree of similarity between the words CITY CARD and CITICARD;
The positioning of the word CITY directly above the word CARD reinforces the combination of the two words as CITYCARD and allows for the reading YOUR CITY CARD.

In Registrar of Trade Marks v Woolworths Limited[5] French J said of deceptive similarity:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[5] Op. cit.

In order to assess the question of deceptive similarity the trade marks should not be compared side by side.[6] Rather, they are to be considered by their look and sound, with due allowance for imperfect recollection. The Opponent has argued that its CITICARD trade mark is effectively wholly contained within the opposed trade mark, with the additional element(s) YOUR being a relatively weak feature in assisting to distinguish the opposed trade mark from the earlier trade mark. I do not however believe the significance of this additional element, which of course occurs twice in the opposed trade mark, should be so easily dismissed. It appears in the same font and size as the words CITY and CARD and whereas, as Mr Stevens argued, the positioning of the various word elements “allows for the reading YOUR CITY CARD”, I do not believe this would be the manner in which most people would scan the trade mark. Moreover, the relatively distinctive arrangement of the elements YOUR, CITY, YOUR and CARD on a contrasting chequerboard background is a further significant distinguishing factor. Additionally, unlike the CITICARD trade mark (and notwithstanding the ordinary English word CITY is phonetically identical to the made-up prefix CITI-), the opposed trade mark contains the word CITY in its correct spelling.
[6] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)
Particularly given my earlier reservations regarding the degree of closeness of the respective services covered by registration 482523 and the opposed application, I find I am not satisfied there is a real tangible risk that a number of persons would be caused to wonder whether the relevant services dealt with under the two trade marks came from the same source. I thus conclude that the opposed trade mark is not deceptively similar to the registered CITICARD mark and the s.44 ground of opposition based on registration 482523 is accordingly not established.
As mentioned, the Opponent also argues that the opposed trade mark is deceptively similar to the Opponent’s “family” of registered CITI Trade Marks, being marks which feature the prefix CITI-, usually combined with a word broadly descriptive of the relevant services covered. Brief details (including classes covered, but not what actual goods or services are covered) of the CITI Trade Marks form Exhibit B to the Moses declaration and Ms Moses states that the registrations “generally specify banking and/or financial services including banking, insurance and investment services under each registration although some registrations cover a broader range of goods and/or services including in Class 35”.
Exhibit B to the Moses declaration identifies 69 registrations, although one of these, registration 1058089 CITIBANK CHOICE, has a later priority date than the opposed application and is thus of no relevance. Of the remaining 68 registrations, the great majority cover services in Class 36, with some registrations covering services in Class 42 and/or goods in Classes 9 and 16. Eight of the registrations cover services in Class 35. In the absence of further information from the Opponent concerning the registrations I have checked details on IP Australia’s ATMOSS database and note five specifically cover loyalty programmes, while the other three cover apparently unrelated services such as data processing, online shopping or business management. The five Class 35 registrations actually covering loyalty programmes, the oldest of which dates from 2003, are 945298 CITIBANK TAKE FLIGHT, 946355 CITIBANK (stylised), 1013401 CITIBANK CASH BACK, 1014256 CITIBANK ONE BILL and 1014436 CITIBANK CLEAR.
At the hearing Mr Stevens tendered printouts from IP Australia’s ATMOSS database of three further Class 35 registrations owned by the Opponent, beings registrations 1203970 CITI CASH BACK, 1203973 CITI CLEAR and 1208661 CITI REWARDS. I understand he did so because these particular registrations each specifically cover, inter alia, “loyalty and rewards programs”. However, since all three registrations were filed after the priority date of the opposed application and there is no evidence that any of the trade marks has been used in Australia I have not taken them into account in this decision.
In connection with the concept of a “family” of trade marks Mr Stevens referred me to a decision of the Trade Marks Office dated 24 April 2007, McDonald’s Corporation v Future Enterprises Pte Ltd [2007] ATMO 22 and specifically to the following passage (at paragraph 18) concerning opposition based upon s.44 of the Act:
The opponent relies on a number of trade marks, variously registered for goods or services. The opponent asserts that it is the owner of a family of such trade marks, many of them with priority dates considerably earlier than the priority date of the IRDAs, such that the holder’s trade mark should be found to be deceptively similar to one or other of the family. Such a situation is not unusual. Where it arises, such a case does so because the known and familiar use of a number of trade marks by the opponent casts a large shadow onto the potential for deception or confusion that might ordinarily arise between notional fair use of the holder’s trade mark and ordinary exercise of the rights given by the opponent’s registered trade marks. Such a conclusion would be within the confines set out by the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at para 52.
I note this passage indicates an objection based on a family of trade marks may arise under s.44 because of “the known and familiar use of a number of trade marks”. Use and reputation is of course not usually considered of direct relevance to a s.44 objection. However, relatively recent cases such as the abovementioned C A Henschke & Co v Rosemount Estates Pty Ltd (which relevantly, according to the Full Federal Court at [53], concerned infringement under s.120(1) rather than a s.44 matter) and the WOOLWORTHS METRO case cited earlier say that when a trade mark has such notoriety and is of such long standing that consumers generally must be taken to be familiar with its use in relation to particular goods or services then this is a relevant consideration regarding the “surrounding circumstances” and the likelihood of a consumer’s imperfect recollection. As the Hearing Officer in McDonald’s Corporation v Future Enterprises Pte Ltd put it in a further passage to which Mr Stevens directed me (at paragraph 19):
I understand and appreciate that it is not appropriate to bring considerations of reputation, per se, into s 44. Ms Champion urged me to adopt the "orthodox" view that "what is to be compared is the lawful use in the future of each mark across the goods for which it is registered rather than being tied to what has happened in the past". Here she relied on the caution of Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663. None the less, if my conclusion is that the ordinary consumer would be misled by the resemblance of the two trade marks – between either trade mark of the holder on one hand and, on the other, any one of those of the opponent’s – such that there is a significant risk of deception or confusion, s 44 is triggered even though the drivers for this might include the notoriety of the opponent’s trade marks. The facts of the present case do not have to be artificially constrained to fit a public perception that exists only in some alternate fantasy world where the opponent is unknown.
I thus restrict my consideration of the Opponent’s family of CITI Trade Marks to those trade marks listed in Exhibit B to the Moses declaration with an earlier priority date than the opposed application and which the evidence also demonstrates are well known and of long standing. I find on reviewing the evidence, however, that the only registered marks for which any specific use is actually shown (rather than merely claimed) in Australia are the following:

482523 (36) CITICARD (to which I have already found the opposed mark is not deceptively similar) and 804867 (16) CITICARD;
767231 (36) CITIGROUP & 784203 (9, 16 & 36) CITIGROUP (stylised), (used as the current or former corporate name);
285587 (16) CITICORP, 340530 (35) CITICORP (stylised) & 340531 (36) CITICORP (stylised), (used as the current or former corporate name);
293754 (16) CITIBANK, 449421 (36) CITIBANK (stylised), 946355 (9, 16, 35, 36, 38 & 42) CITIBANK (stylised), 449421 (36) CITIBANK (stylised) and 1022308 (36) CITIBANK (stylised), (used as the current or former corporate name);
340545 (36) CITIPHONE (used according to paragraph 17 of the Moses declaration in the form CITIPHONE BANKING in Australia, apparently since 2004).

I am prepared to accept, based on the evidence, that the abovementioned marks are relatively well known in Australia for, in particular, banking or financial services generally. However, as mentioned, I am unable to say on the evidence what other CITI Trade Marks may have enjoyed significant use in Australia. In this regard I cannot give much weight to statements in the Moses declaration such as “In Australia the slogans ‘THE CITI NEVER SLEEPS’ and ‘Your CITI never sleeps’ are used”, when there is no indication when or how the slogans are in fact used. I am thus unable to assess whether the average Australian is likely to infer the Opponent was developing a series of trade marks all commencing with the prefix CITI-. Moreover, of the registered marks for which use in Australia is actually shown it is only registration 946355 CITIBANK (stylized) which undoubtedly covers services the same as, or clearly of the same description as, the services covered by the opposed application in any event
In the circumstances I have little hesitation in following the reasoning of the Hearing Officer in Citicorp v City Marketing Concepts Pty Ltd [1999] ATMO 16, the case to which the Applicants referred in their written submissions. In that case the same Opponent was opposing registration of the trade mark CITY-CARD covering “Maps for use in tourism areas” in Class 16 and Mr Stevens raised a similar argument based on s.44 and the Opponent’s family of trade marks commencing with the prefix CITI-. After identifying two relevant registrations from the family, (for the marks CITICORP and CITIPLAN, the other registered marks having been excluded because of the differences between the goods and/or services they covered and the specific Class 16 goods of the opposed application), the Hearing Officer concerned concluded:
Therefore, I must now consider whether the applicant's mark, CITY-CARD, on one hand, and the opponent's marks, CITICORP and CITIPLAN are deceptively similar. Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion. In this regard, and given the tests outlined in the relevant case law, consideration should be given to a normal person's impression based on a recollection of the opponent's marks. As Mr Stevens has submitted, deception or confusion can well ensue if that person retains an "imperfect recollection" of the opponent's marks, especially if it was inferred by users that the opponent was developing a series of CITI- marks. However, I am of the opinion that, in this instance, the misspelling of the prefix CITI-, followed by other material, in the opponent's marks is a relatively distinctive and memorable integer. This would serve to differentiate those marks from the correctly spelt first word CITY, joined by a hyphen to the word CARD, in the applicant's mark - especially given the use of the latter mark on its quite specific and limited statement of goods. I think that a person of ordinary intelligence would easily make the distinction between the marks owned by the respective parties in the present case.
A further reason I would reject the Opponent’s s.44 objection based on its claimed family of CITI Trade Marks follows from the analysis of Sundberg, J in the recent case of Scotch Whisky Association v De Witt (2007) 74 IPR 382, albeit in connection with s.60 in that instance. There the Scotch Whiskey Association was opposing registration of the trade mark GLENN OAKS (stylized) for spirits other than Scotch whiskey on the ground, inter alia, that the prefix GLEN (being the phonetic equivalent of GLENN) had acquired a reputation in Australia as at the relevant date as referring exclusively to Scotch whiskey through its use as a prefix in a family of trade marks. Sundberg, J reasoned as follows:
[75] As I understood the submission it was that use of the GLENN OAKS mark is likely to result in confusion because a family of “GLEN” marks exists in the market. The applicant relied upon a trade mark office decision in McDonalds Corp v Bellamy (2004) 62 IPR 133 at 139 ; [2004] ATMO 26 to support the submission. There, the delegate said:
… [In] the line of “family” trade mark cases … the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse.
[76] The family marks argument is not persuasive. The applicant is not the registered owner of all the “GLEN” marks. Beck Koller & Co’s Application (1947) 64 RPC 76 at 83 (Beck Koller) provides guidance, in dicta, as to how family marks should be examined:
When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
…
If, therefore, all the marks were owned by one proprietor, the registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicant’s mark and each of the proprietor’s marks with this consideration in mind.
…
On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the registrar comes to compare the applicant’s mark with the registered marks … the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account. [Emphasis added]
[77] The “applicant” referred to in that passage is the applicant for the trade mark. So if the marks were owned by the same party, that would have gone against the applicant, but where there were a number of prior registered marks belonging to different parties, that was in the applicant’s favour. In the present case, the respondent is the applicant for the trade mark. The passage above cuts in favour of the GLENN OAKS mark.
[78] In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J & J Snack Foods Corp v McDonald’s Corp (1991) 932 F 2d 1460 (Fed Cir 1991) and American Standard Inc v Scott & Fetzer Co (1978) 200 USPQ (BNA) 457, support the distinction referred to at [77]–[78].
It is apparent from a check of IP Australia’s ATMOSS database that as at the relevant date there were already several registrations in Classes 35 and 36 owned by third parties for marks commencing with the word CITY, or indeed with the prefix CITI- itself. This issue was not addressed in the Opponent’s evidence or submissions, but as mentioned is on the face of it a further reason I believe the Opponent’s case based on its claimed family of marks is not established.

Section 60

The ground based on section 60 is indicated in the Notice as follows:
The use of the trade mark would be likely to deceive or cause confusion and registration of the trade mark would be contrary to Section 60 of the Act.
Section 60 of the Act itself (as it stood at the date the opposed trade mark application was filed[7]) is reproduced below:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
[7] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80
Here the comparison is between an existing trade mark or trade marks in which the Opponent claims the requisite reputation existed in Australia as at 22 March 2005, and the opposed trade mark. Unlike the position under s.44, there is no requirement under s.60 that the services of the opposed application be the same as, or of the same description as, the services for which the reputation developed[8]. As it did in its submissions under s.44, the Opponent argues two distinct cases under s.60. The first nominates the trade mark CITICARD and the second relies on the reputation of the Opponent’s “family” of CITI Trade Marks generally.
[8] See for example Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 435.
Dealing firstly with the CITICARD trade mark and as regards the threshold question in paragraph (a) of Section 60, I have already found that the opposed trade mark is not deceptively similar in terms of sections 44 and 10 of the Act. The Moses declaration states the Opponent “has extensively used the CITICARD Trade Mark in Australia since about 1986...in respect of a debit card which enables cardholders to access nominated Citibank accounts”. Exhibit C to the declaration contains a selection of printed material produced by the client showing use of the CITICARD trade mark in Australia for the debit card in question for the years 2004 to 2006 inclusive and Ms Moses indicates “in 2005 there were approximately 250,000 cardholders”. This use notwithstanding, I am not satisfied use of the opposed trade mark for the particular Class 35 services covered by the opposed application was likely to have deceived or caused confusion amongst a significant number of people as at 22 March 2005 given in particular the differences in the marks themselves (as discussed in paragraph 23 above). Indeed, the fact that use of the Opponent’s debit card is so closely associated with access to the cardholder’s “nominated Citibank accounts” tends, if anything, to support that view.
As regards s.60 and the Opponent’s case based on its claimed family of CITI Trade Marks, I note for the sake of completeness that in addition to details of use of the registered trade marks mentioned in paragraph 30 above the Moses declaration also provides information concerning use of the (unregistered) trade mark CITIBANK REWARDS. I mention that this is the sole trade mark which the evidence shows is actually used by the Opponent for a service in the nature of a loyalty programme. Ms Moses states the trade mark has been used in Australia “since about October 1993, in relation to [the Opponent’s] incentive programme” and includes as Exhibit D a selection of associated printed matter showing the mark in use. As mentioned in paragraph 31, however, I am unable to say from the evidence what other CITI Trade Marks may have enjoyed significant use in Australia. I am thus unable to go significantly beyond the reasoning set out in paragraphs 32 to 34 above and once again conclude the opposed trade mark is not deceptively similar to the Opponent’s claimed family of CITI Trade Marks.

In summary, I find the Opponent has not established its ground of opposition under s.60.

Decision

Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, 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.
I have found neither of the opposition grounds pressed at the hearing has been established. I have accordingly decided the opposed 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.

Costs

Mr Stevens requested an award of costs in the Opponent’s favour. However, as the successful party, the Applicants are entitled to their costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

17 December 2008