Citigroup Inc v Citiwide Holdings Pty Ltd

[2013] ATMO 31

TRADE MARKS ACT 1995

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

Re:Oppositions by CITIGROUP INC to registration of trade mark applications 1268283(36,45) & 1322319(36) - CITIWIDE MORTGAGE SERVICES & CITIWIDE MORTGAGE SERVICES. MORE CHOICE. BETTER ADVICE. - filed in the name of Citiwide Holdings Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Michael Hall of Counsel, instructed by Katrina Rathie of King & Wood Mallesons Lawyers

Applicant: Ian Horak of Counsel, instructed by Andrew Petale of Actuate IP Patent Attorneys and Trade Mark Lawyers

Decision:

2013 ATMO 31

Section 52 oppositions – s60, 44, 59 and 42(b) grounds – s60 partially established in respect of both applications - Applicants given opportunity to delete relevant services –– no award of costs

Background

1. In this matter Citiwide Holdings Pty Ltd (‘the Applicant’) filed applications to register two trade marks (‘the Trade Marks’), relevant details of which appear below:

Trade Mark: Citiwide Mortgage Services

Trade Mark: Citiwide Home Loans. More Choice. Better advice.

Application No: 1268283

Application No: 1322319

Priority Date: 17 October 2008

Priority Date: 28 September 2009

Services:

“Mortgage and finance broking services; financial services, loan financing, lease financing, financial evaluations, mortgage origination, insurance services, financial consulting services, and advisory and planning services in relation to the aforementioned services” in class 36, and

“Conveyancing and legal services” in class 45.

Services:

“Finance leasing; mortgage advice; mortgage brokerage services; financing of home loans; provision of equipment finance” in class 36.

1. The applications were examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks: application number 1268283 on 8 July 2010 and application number 1322319 on 28 January 2010. Following this Citigroup Inc (‘the Opponent’) filed Notices of Opposition (‘the Notices’) to the registration of the Trade Marks on 23 December 2010 and 19 April 2010 respectively.

2. The parties served and filed evidence as described below. After the filing and service of evidence the matters came before me, as a delegate of the Registrar of Trade Marks, for hearing on 22 February 2013 in Canberra. The Opponent was represented by Michael Hall of Counsel, instructed by Katrina Rathie of King & Wood Mallesons Lawyers. The Applicant was represented by Ian Horak of Counsel, instructed by Andrew Petale of Actuate IP Patent Attorneys & Trade Mark Lawyers.

Evidence

1. The evidence served and filed by the parties in relation to both oppositions is as below:

Evidence in support

Statutory declaration of Sara Blotner, Assistant Secretary and Assistant General Counsel of the Opponent, with Exhibits 1 to 31, made 17 February 2011.

Evidence in answer

Statutory declaration of Patrick Marion, Director and Secretary of the Applicant, with exhibits PM-1 to PM-8, made 15 September 2011.

Evidence in reply

Statutory declaration of Frank Willenberg, Senior Vice President of Citi Commercial Bank, a subsidiary of the Opponent, with Exhibit FW-1 containing Tabs 1 to 20, made 20 June 2012.

Statutory declaration of David George Briggs, Principal of Galaxy PD Pty Limited trading as Galaxy Research, a market research consultancy, with Exhibit DGB-1, made 19 June 2012.

Statutory declaration of Sara Blotner, Assistant Secretary and Assistant General Counsel of the Opponent, made 19 June 2012.

1. A brief summary of the history of the parties, derived from the evidence, is as follows.

The Opponent

1. The Opponent is a global provider of financial services including inter alia banking, loans and mortgages, insurance, credit and charge cards, and the management of investments, assets, funds, securities and cash. It currently services hundreds of millions of customer accounts in more than 100 countries, including Australia.

2. The Opponent’s predecessor in business opened in 1812 in New York City under the name City Bank of New York. The firm changed its name to The National City Bank in 1865. As early as 1916 The National City Bank attempted to gain a banking license in Australia, but was unsuccessful due to opposition to foreign or private banks in the Australian market place. It was not until 1985, after repeated attempts and a number of joint ventures with Australian corporations, that “Citibank”[1] was granted a full banking license in Australia. The name ‘Citibank’ appears to have evolved from a number of the predecessor’s name changes including The First National City Bank, Citibank N.A. (of New York) and Citicorp (the holding company of Citibank N.A.)

   [1] Being, presumably, one of Citigroup Pty Limited, Citicorp Pty Limited or Citigroup Australia Pty Limited, all being subsidiaries of the Opponent that have been registered in Australia as early as 1977.

3. Financial and banking services have been provided in Australia under the name ‘Citibank’ since the banking license was granted. As at the time of the first Blotner declaration there were twelve branches in Australia in NSW, Victoria, Queensland and Western Australia and a claimed Australia-wide range of automatic teller machines, as well as a telephone banking service and the operation of several web sites including ‘ and ‘>

   Citigroup Inc, the Opponent, was incorporated in the USA in 1998 as a result of the business combination of Citicorp and another entity, Travelers Group Inc. It owns the Australian entities that provide insurance, financial and banking services in Australia. In 2007 the Citigroup companies implemented a corporate branding change “that united all of the Citigroup trading activities under the single brand, name and mark ‘CITI’ ”, although banking and loan services continue to be provided under the Citibank name.

4. The details of 88 Australian trade mark registrations owned by the Opponent, or entities within its corporate group, are exhibited. 87 of them contain or consist of the word CITI. Some of them post-date the priority dates of the subject applications, and two have since been removed from the Register.

The Applicant

1. The Applicant provides brokerage services in respect of home loans, insurance, commercial or business financing and motor vehicle and equipment financing. It also claims to provide conveyancing services, financial planning and financial advisory services. It was registered in 2008 as a holding company under which all of the other ‘Citiwide’ companies and businesses, outlined below, would be owned and managed.

2. Patrick Marion registered Patrick Marion Pty Ltd as a company in 1988, which commenced trading under the registered business name Citiwide Property Finance in Melbourne in 1989. It primarily provided the services of home and investment loan brokering and financial and mortgage advisory services. In 1991 Citiwide Mortgage Services was registered as a business name and that became the principal trading name for “Citiwide”. Another business name, Citiwide Home Loans Made Easy, was registered in 1998. In 2002 Patrick Marion Pty Ltd changed its name to Citiwide Mortgage Services Pty Ltd.

3. In 2005 Mr. Marion registered the company Citiwide Financial Services Pty Ltd. This company was established to take over the conduct and operation of “Citiwide’s” financial planning services, being primarily brokerage and advice in relation to life insurance, income and loan repayment protection, trauma cover, investment and superannuation. In 2008 Mr. Marion registered Citiwide Franchising Pty Ltd and Citiwide Conveyancing Network Pty Ltd to take over, respectively, the franchising and conveyancing services of “Citiwide”. Around September 2009 Citiwide Home Loans Made Easy was ‘rebranded’ to Citiwide Home Loans, and a logo was developed as well as the tag line “More Choice. Better Advice”.

4. The Applicant has assisted some thousands of customers since 1988. It currently conducts its business from offices in North Melbourne, Forest Hill, Eltham and Reservoir in Victoria, and also operates a web site at the address ‘ It is accredited to act as a broker with 24 different financial institutions including the Opponent.

Grounds and onus

1. The Notices nominated 10 separate grounds of opposition as well as a general statement that registration ought to be refused by the exercise of the Registrar’s discretion. In its written submissions the Opponent advised that it pressed grounds under sections 60, 44, 59 and 42(b) of the Trade Marks Act 1995 (‘the Act’). For completeness I find that none of the other grounds nominated in the Notices have been established.

2. The onus is upon the Opponent to establish a ground of opposition on the balance of probabilities.[2] The time at which the ground of opposition must be established is the date upon which each of the applications was filed (‘the priority date’)[3], being 17 October 2008 in respect of application number 1268283 and 28 September 2009 in respect of application number 1322319.

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.

3. It is convenient to discuss the grounds of opposition in the same order as presented by the Opponent, beginning with section 60.

Section 60

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

1. Therefore to establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark(s) had acquired a reputation in Australia such that by 17 October 2008 the use of the trade mark ‘Citiwide Mortgage Services’, and by 28 September 2009 use of the trade mark ‘Citiwide Home Loans. More Choice. Better Advice’, in respect of the nominated services would be likely to deceive or cause confusion.

2. Reputation in this context refers to the recognition of the Opponent’s marks by the public generally[4], although the size and nature of the relevant market must be taken into account.[5] I note further the observations that confusion cannot arise solely from reputation but also from some level of similarity between the trade marks (be it deceptive similarity or something less, no matter how small)[6], and that confusion or deception may be likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.[7]

   [4] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102.

   [5] “Bali” Trade Mark [1969] RPC 472 at 496 (HL); Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

   [6] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5.

   [7] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

3. To establish its case the Opponent relies upon the alleged reputation of its two registered trade marks, detailed below, and its ‘family’ of trade marks containing or consisting of CITI.

Registration 791515	Registration 1170362
CITI
Priority date: 30 October 1998 (convention priority claimed from a Swiss application)	Priority date: 10 April 2007
Goods and services are claimed in classes 9, 16, 36 and 42 but the Opponent relies in particular upon services in class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial and insurance services; real estate, banking, investment and credit card services.	Services: Insurance; financial affairs; monetary affairs; real estate affairs in class 36.

1. The Opponent points to the following factors as establishing a reputation in its trade marks:

• Results of a consumer survey conducted by Galaxy Research

• The evidence of use showing the long history of the Opponent; the amount of trade conducted by it in the Australian market place; promotional expenditure in respect of marketing and promotion; independent commentary upon the significance of its brand; and its sponsorship of sporting and community activities.

1. I will deal first with the Opponent’s evidence of use. The evidence does show that the Opponent has a very long history in banking and financial services of approximately 200 years and a substantial global presence. In this respect I take particular note of the results of an annual ranking of the world’s most valuable brands published by Business Week magazine in conjunction with the brand consultancy firm Interbrand. Rankings are provided for the years 2004 to 2009 which place Citibank (in 2004) and Citi (from 2005 to 2008) in the top 20 – Citi falling to number 36 in 2009. I also take note of the very substantial number of customer accounts serviced globally by the Opponent and the more than 100 countries in which the Opponent is present. For these reasons I consider that, in addition to any reputation which may be established in the Australian market place, at least some level reputation from overseas may be inferred.

2. In respect of the Australian market place the Opponent has provided its services predominantly under the name ‘Citibank’ since it was granted a banking license in 1985, and its services continue to be provided predominantly under that name despite the corporate rebranding to ‘Citi’ in 2007.

3. Reputation is commonly inferred from high sales and adverting expenditure without any direct evidence of consumer appreciation[8] (although I note that a market survey, yet to be discussed, is before me which may constitute such direct evidence). There are no pre-priority date turnover figures (or, as is more relevant here, ‘total loans and advances figures’) however those from 2010 are in the billions. Whilst reputation must be established as at the priority date “it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date”.[9] I consider it reasonable to infer that total loans and advances as at the earliest priority date, approximately two years earlier, would have been similarly substantial even though the precise amount is not before me. This would also be congruent with the very significant promotional expenditure, which is in the order of many millions, provided for the years 2006 to 2010.

   [8] McCormick & Company Inc v McCormick, supra.

   [9] As per Burchett J in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509.

4. With regard to the alleged ‘family’ of trade marks, as pointed out by the Applicant it is necessary to look to actual use by the Opponent rather than mere registrations, which can be ignored for the purposes of section 60. The trade marks for which I can find instances of use, aside from ‘Citibank’, are ‘Citi’ (upon the Opponent’s web site, upon the credit cards it provides to customers, and in advertisements placed in newspapers and magazines), ‘CitiGold’ (in respect of priority banking for ‘high net worth’ individuals), ‘Citi never sleeps’ (as a tag line usually used in conjunction with either ‘Citi’ or ‘Citibank’), ‘Citiphone’ (in respect of telephone banking), ‘Citiclub’ (in respect of a club for members of the Opponent which allows for certain rewards), ‘Citigroup’ (as a reference to the corporate group) and one instance of ‘CitiDirect’. They have been used to varying degrees and I acknowledge, as the Applicant submitted, that the use of ‘Citi’ is not to the same extent as ‘Citibank’. I nevertheless consider it not insubstantial.

5. The consumer survey, and its results, is contained within the declaration of David George Briggs, Principal of Galaxy Research. The survey took place over 25 to 28 May 2012, and asked three principal questions being:

   B1) If you saw a financial service or financial product which started with the prefix ‘CITI’, with which institution or institutions would you associate this CITI product or service?

   C1) The financial services institution Citigroup Inc provides banking services under the Citibank name. Have you heard of Citibank?

   C2) From what you know or have heard about Citibank, which of these, if any, would you think were Citibank products or services? (the respondee would then choose between the following list which would be randomly ordered: CITIWIDE HOME LOANS, CITIMORTGAGE, CITIINDEX, CITIFINANCE, CITIPROPERTY FINANCE, CITIBROKING, CITIEXPRESS, CITIPOWER, CITIMOTORS, None of the above).

6. 67% of respondents indicated they would associate a “CITI product or service” with Citibank, and a further 2% with Citigroup.[10] Of those who had heard of Citibank, 27% of respondents indicated they would think CITIWIDE HOME LOANS was a Citibank product or service.[11]

   [10] The remaining results were: 7% with ‘Bank/Banking’, 2% with ‘Credit Card’, 1% with ‘ANZ’, 5% with ‘Other’ and 16% ‘Don’t Know’.

   [11] The remaining percentages were: CITFINANCE 42%, CITIMORTGAGE 31%, CITIBROKING 19%, CITIPROPERTY FINANCE 18%, CITIEXPRESS 9%, CITIINDEX 8%, CITIMOTORS 7% and CITIPOWER 6%.

7. The Opponent contends that the survey demonstrates that a financial service or product coupled with the prefix ‘Citi’ is very likely to be associated with the Opponent, and that this pattern of recognition continues when the ‘Citi’ prefix is coupled with a financial term such as ‘Finance’, ‘Mortgage’ or ‘Home Loans’. The Applicant, on the other hand, argues that the survey evidence does not assist in determining the opposition because, inter alia, the survey was conducted after the priority dates, it asked leading questions, the sample size was too small and it was not directed to individuals seeking financial services but rather the public at large.

8. I bear the Applicant’s criticisms in mind, and such criticisms have been found to diminish the weight of survey evidence in matters before the Registrar or Courts.[12] I agree that it is a significant flaw that the survey is not framed to identify reputation as at the relevant date, but rather at the time of the survey. I consider the other criticisms less important: the initial question, at least, is not leading in any way and provides unprompted and positive identification of the Opponent; a total of 503 respondents was considered by Mr. Briggs (arguably an expert in his field) to provide “a reliable and statistically meaningful representation of the Australian financial services market at the 95% confidence level”; and I consider it reasonable to direct the survey to the public at large given the market for banking, financial and insurance services encompasses almost all Australians over minimum employment age. For these reasons I do not dismiss the survey out of hand but consider it one of the surrounding factors to take into account in deciding the matter.

   [12] See for example Chocolaterie Guylian N.V. v Registrar of Trade Marks, supra; Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380; (2010) 89 IPR 457; WW Australia Pty Ltd & Village Themepark Management Pty Ltd v Trust Company Limited [2009] ATMO 107; (2009) 85 IPR 452; Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862.

9. Weighing the above factors I am satisfied that trade marks ‘Citibank’, and to a somewhat lesser degree ‘Citi’, had a reputation at least as early as the earliest priority date.

1. In respect of the likelihood of confusion the Applicant submits that it has been trading under names which incorporate ‘Citiwide’ for more than 20 years without confusion. I note that the Applicant’s services have been largely confined to Victoria and, without wanting to divulge potentially commercially sensitive information, I consider its volume of trade moderate. Of more consequence, however, is that the evidence shows the Applicant uses the Trade Marks primarily in respect of home loan broking. In the Applicant’s own words:

   The Applicant’s loan brokering services involve the comparison of various loan products offered by a variety of lending institutions. The nature of the Applicant’s brokering services differs considerably from the Opponent’s consultancy and advisory services which relate specifically to its own in-house range of loans. The Applicant is not a finance provider as is the Opponent but merely facilitates the provision of finance between the borrower and a third party financier.

   A prospective borrower would not expect finance brokering services to be provided by the Opponent, given that it would be impossible for the Opponent to be able to provide unbiased and impartial advice in relation to the comparison of different loan products from other finance providers given that it is also in competition with those finance providers. Conversely and for the same reasons, a prospective borrower would not expect finance to be offered directly by the Applicant. Therefore, the Applicant’s business activities and those of the Opponent are by their nature incompatible and prospective consumers would not expect services provided by these respective businesses to emanate from the same source.[13]

   [13] From the declaration of Patrick Marion at paragraphs 9 and 10.

2. Given that the Applicant’s trade is relatively localized and of moderate volume, as well as the differences in the relevant markets described above, it is not surprising that no instances of confusion amongst consumers has arisen.

3. The Applicant also submits that its associated entity Citiwide Mortgage Services Pty Ltd is accredited with the Opponent as a mortgage broker and first began “introducing business to Citibank in the early 1990s” without the Opponent ever taking issue with its name despite being “well aware” of it. In response, Ms. Blotner declares she was unaware of the Applicant or its trade marks until shortly before these proceedings (which is unsurprising given her position is based in New York), and Mr. Willenberg points out that the Applicant changed its company name to Citiwide Mortgage Services Pty Ltd in 2002 and that the dollar amount of the loans brokered by the Applicant amounts to only 0.02% of the value of the Opponent’s loan book (presumably therefore escaping notice).

4. Despite the Applicant’s accreditation with the Opponent, I am not inclined to agree that the Opponent was “well aware” of the Applicant. The documents exhibited to support this claim appear to be of the type that are dispatched en masse, with only the name of the recipient changing, and although the signatories to those documents appear to hold senior positions (‘Head of Broker Sales’ and ‘Head of Mortgages’) I am not satisfied that they would, or should, have been aware of potential trade marks violation given their unrelated area of expertise.

5. Lastly I note the argument that ‘Citiwide’ has a different connotation to the Opponent’s trade marks, the connotation being the common expression ‘citywide’ meaning ‘occurring or extending throughout a city’. Whilst that may be true, there also exists at least a suggestion of something other than the common word ‘citywide’ precisely because of the use of the spelling ‘citiwide’.

6. Taking into account all of the above factors I am satisfied that the ground is made out insofar as financial, banking and insurance services are concerned. Despite the Opponent’s reputation residing predominantly in ‘Citibank’ I consider there is enough recognition in ‘Citi’, either as an element of ‘Citibank’ or in its own right, that deception or confusion would be likely.

7. However I am not satisfied that the ground is made out in respect of mortgage broking, conveyancing and legal services. The Applicant has been in the business of brokering home loans for a substantial period of time without any apparent confusion. I note that the Applicant’s words reproduced at paragraph 32 of these reasons provide a strong indication that the Applicant has not traded in many of the services it has specified in class 36, such as loan financing, mortgage origination or financing of home loans. Had it done so confusion may well have occurred.

8. In respect of conveyancing and legal services I do not consider the Opponent’s reputation so ubiquitous that consumers would be confused by any expectation that a banking corporation would provide them. Whilst I concede that some professional services firms could be expected to provide both legal and financial services[14], I am not prepared to accept that such a finding applies in this context.

   [14] As was considered to be the case in Accenture Global Services GMBH v Sanemprero Group International Pty Ltd (2011) 94 IPR 291, cited by the Opponent.

9. Given the ground under section 60 is established for all services except mortgage broking, conveyancing and legal services, I will discuss the remaining grounds of opposition only in respect of mortgage broking, conveyancing and legal services.

Section 44

1. Section 44 of the Act relevantly provides:

   …

(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.

1. Subsections (3) and (4) contemplate registration in the face of a conflicting trade mark on the basis on honest concurrent use, circumstances which make registration proper, or prior continuous use.

2. In support of this ground the Opponent relies in particular upon the registrations shown below. I note that all of the registrations have an earlier priority dates than the applications for registration.

Trade Mark	Services	Priority Date
1170362: CITI	Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.	10 Apr 2007
791515:	Inter alia Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial and insurance services; real estate, banking, investment and credit card services.	30 Oct 1998
358938: CITILOAN	Class 36: Financial services in this class.	9 Apr 1981
397760: CITISERVICE	Class 36: Financial services in this class.	30 Sept 1983
397753: CITIMORTGAGE	Class 36: Financial services in this class.	30 Sept 1983

1. In respect of substantial identity, a side-by-side comparison of the respective trade marks as set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil(Aust) Ltd (‘Shell’)[15], does not result in the emergence of a “total impression of resemblance”. The Trade Marks contain the suffix ‘wide’ and the words “More Choice. Better advice” are present in the trade mark of application 1322319. None of these features are present in the Opponent’s marks, and I consider that such differences preclude a finding of substantial identity.

   [15] (1963) 109 CLR 107 at 414-415.

2. The expression ‘deceptively similar’ is defined at section 10 of the Act in the following words:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The test for deceptive similarity is a different test to that for substantial identity, and can also be found in the words of Windeyer J in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on the recollection of the plaintiff’s mark, that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s…mark.

4. The Opponent’s submissions are, in the main: that the essential feature of its marks is the word ‘Citi’; that the “second ‘essential feature’ ” is the coupling of a non-distinctive or finance-associated word with the ‘Citi’ prefix; that the use of the word ‘Mortgage’ in ‘Citiwide Mortgage Services’ is strongly evocative of the Opponent’s trade marks and services, in particular CITIMORTGAGE and CITILOAN; that judicial notice can be taken of the notoriety of the ‘Citi’ marks in determining deceptive similarity; that mortgage broking is wholly connected to the Opponent’s financial services; and that conveyancing and legal services are inextricably linked to mortgage broking services.

5. French J, in Registrar of Trade Marks v Woolworths (‘Woolworths’)[16] and in the context of closely related goods and services, observed that the logic of s44 suggests that the determination of whether goods and services are similar or closely related is “logically antecedent to” assessing deceptive similarity of trade marks. Accordingly I will commence by considering whether the opposed applications are in respect of services similar to those specified in the Opponent’s above registrations, but bearing in mind his Honour’s subsequent comment “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 on the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question”.

   [16] [1999] FCA 1020; (1999) 45 IPR 411.

6. I note first that in MID Sydney Pty Ltd v Australian Tourism Co Ltd[17] the Full Federal Court accepted that, subject to any necessary modification, the principles applicable to determining similar goods also applied to determining similar services.[18] Modifying those principles[19] the relevant considerations include the nature of the services and their respective purposes, the trade channels through which they are provided, and whether they are normally provided by the same traders in the same places to the same class of customer.

   [17] [1998] FCA 1616; (1998) 42 IPR 561.

   [18] ‘Similar services’ being defined in section 14(2) of the Act as services which are the same or of the same description. ‘Of the same description’ is a term of art describing the relationship between goods or services such that they would be seen by purchasers as having the same trade origin if sold under similar trade marks.

   [19] As set out in Jellinek’s Application (1946) 63 RPC 59 and Beck, Koller & Company’s Application (1947) 64 RPC 76.

7. A mortgage broker is defined as “one who facilitates transactions between mortgage borrowers and lenders. Mortgage brokers are responsible for providing paper work between the parties and generally streamlining the process of making a mortgage. It is important to note that a mortgage broker neither originates nor provides funds for a loan”.[20] The service is linked to financial services, being concerned with the lending and repayment of funds, but is of itself in the nature of a facilitation and coordination service.

   [20] Farlex Financial Dictionary online. © 2012 Farlex, Inc.

8. Legal services are services “of or relating to law; connected with the law or its administration” and conveyancing is a subset of legal services “concerned with the transfer of property rights”.[21] There is a level of connection between legal and financial services, for example advice regarding tax, ownership structures or the division of funds between partners, trustees, shareholders etc. Conveyancing, being another step removed in that it does not encompass finance related legal services, is less likely to be considered similar to financial services. It is, however, linked with “real estate affairs” as claimed in registrations 791515 and 1170362. It is not uncommon for real estate agents to advertise a ‘network’ of conveyancers under their trade marks, whether or not those conveyancers are actually employed by them.

   [21] Definitions from the Macquarie Dictionary online, © Macmillan Publishers Australia 2013.

9. I do not think that any of the Opponent’s services are “the same” as mortgage broking, conveyancing or legal services but I consider it is possible that their provision under similar trade marks could lead to deception or confusion. In this case I find that the likelihood of that occurring is dependant upon the degree of resemblance between the trade marks in question.

10. Those trade marks owned by the Opponent all share the essential feature ‘Citi’ with or without a suffix broadly descriptive of the services covered. The contention is that the confusion likely to arise is as a result of contextual confusion (such as in John Fitton & Co Ltd’s Application[22], wherein marks might not themselves be confused but nonetheless assumed to originate from the same source owing to a common feature) or because all marks were mistakenly thought to belong to the same ‘family of marks’ (wherein multiple trade marks share a common element which is recognised as that of a trader or where multiple trade marks which share a common element are owned by a single trader).[23] I am not convinced by either argument.

    [22] 66 RPC 110.

    [23] See, for example, the discussions in Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) IPR 382); McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37; McDonalds Corporation v Future Enterprises Pte Ltd [2007] ATMO 22; C A Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561; (1999) 47 IPR 63; and McDonalds Corporation v McBratney Services Pty Ltd [2006] ATMO 71.

11. I bear in mind that ‘Citiwide’ is phonetically equivalent to ‘Citywide’ which has a meaning in its own right, and that ‘wide’ is not descriptive of any financial product or service - and thereby does not fall into the pattern of the Opponent’s alleged family of marks. Whilst such considerations were outweighed by the Opponent’s reputation in the context of insurance, financial and banking services, they are more prominent in the context of section 44 where reputation is not a factor. In addition, although it is possible that judicial notice[24] could be taken of ‘Citi’s’ notoriety in relation to banking services, I do not believe the same judicial notice would apply in the context of mortgage broking, conveyancing and legal services. Nor do I consider that in such a context the presence of the additional words ‘Mortgage Services’ and ‘Home Loans. More Choice. Better advice’ in the Applicant’s marks reinforce the services of the Opponent. I am more inclined to believe they would merely indicate the nature of the Applicant’s services.

    [24] As contemplated by French J in Woolworths, supra, at [61].

12. I am not satisfied that the presence of ‘Citi’ in ‘Citiwide Mortgage Services’ or ‘Citiwide Home Loans. More Choice. Better advice’, in respect of mortgage broking, conveyancing and legal services, gives rise to a real, tangible danger of deception or confusion with the Opponent’s prior registered trade marks. Consequently the ground of opposition under section 44 in respect of these services is not established.

Section 59 and/or Section 42(b)

1. Lastly the Opponent submits that the Applicant does not intend, and legally does not have the ability, to provide the specified services. The relevant sections of the Act are sections 59 and 42(b) which provide:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

…
(b) its use would be contrary to law.

1. Leaving aside the Opponent’s submissions in respect of the services for which section 60 has already been made out, the Opponent contends that:

• The Applicant’s company Citiwide Conveyacing Network Pty Ltd, which was registered to take over the conduct and operation of the Applicant’s conveyancing services, was deregistered on 13 October 2013.

• The Applicant’s current website encourages customers to “Phone our recommended conveyancer, Ms Faye Korbatieh” who is the principal of an unrelated conveyancing company.

• Under the Legal Profession Act 2004 (Vic) persons are prohibited from representing or advertising that they are entitled to engage in legal practice unless the person is an Australian legal practitioner; and under the Conveyancers Act (2006) persons who are not licensees are prohibited from making a representation that they are licensed or otherwise authorised to carry on a conveyancing business.

(I note here that the services discussed are those in respect of class 45 which is specified in application 1268283 only).

1. I am not satisfied that any of these submissions establish the Opponent’s case. The current status of Citiwide Conveyancing Network Pty Ltd and the information currently upon the Applicant’s website says nothing of the Applicant’s intentions at the priority date, 17 October 2008.[25] Moreover given that the Applicant did register a company expressly for the purpose of conducting conveyancing services prior to filing its application, I consider it most likely the Applicant did intend to provide such services.

   [25] For the purposes of section 59, intention is to be assessed as at the date of filing the application (which in this decision is referred to as the ‘priority date’). See Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 and Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262.

2. As to the argument under section 42(b) there is no reason to suppose that the Applicant does or will make any false representations. It may well be the case that it intends to employ or subcontract appropriately qualified people to provide those services.

3. Accordingly the grounds under sections 59 and 42(b) fail.

Decision

1. Section 55 of the Act relevantly provides:

   (1) 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.

2. I find that the ground of opposition under section 60 is established in respect of all of the services specified in the applications with the exception of mortgage broking, conveyancing and legal services. That being the case, I will allow the Applicant one month from the date of this decision to amend its applications by:

• in respect of application 1268283, deleting all services except “mortgage broking services” in class 36 and “conveyancing and legal services in class 45; and

• in respect of application 1322319, deleting all services except “mortgage brokerage services” in class 36.

1. If the applications are so amended, I direct that they may proceed to registration. In the event that the services are not so amended, I refuse the applications in their entirety.

2. If the Registrar has been served with a notice of appeal before that time the registrations shall not occur until the appeal has been discontinued. Otherwise, the disposition of the applications should be in accordance with the Court’s order or direction.

Costs

1. Each of the parties has requested costs. As neither party has been entirely successful I decline to make an order of costs in favour of any party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Nicole Worth

Hearing Officer

Trade Marks Hearings

17 May 2013