Citigroup Inc v City Index Limited
[2014] ATMO 36
•6 May 2014
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 1393370, 1393371 (36) - CITY INDEX and IFX A CITY INDEX COMPANY - filed in the name of City Index Limited..
| Delegate: | Robert Wilson |
| Representation: | Opponent: Michael Hall of Counsel, instructed by Roseanne Mannion of Davies Collison Cave Patent and Trade Mark Attorneys. Applicant: Sue Chrysanthou of Counsel, instructed by Myrna Taouil of Chrysiliou IP. |
| Decision: | 2014 ATMO 36 Section 52 Opposition: Section 60 considered – confusion likely because of reputation of Opponent’s trade marks – registration refused for both opposed trade marks. |
Background
There are oppositions brought by Citigroup Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1955 (‘the Act’) to registration of the trade marks subject of the applications detailed below in the name of City Index Limited (‘the Applicant’):
Application Number:
1393370
Priority Date:
9 November 2010
Services:
Class 36: Financial services; providing general financial services advice for derivative and foreign exchange contracts
(‘the Applicant’s Services’)
Trade Mark:
(‘the CITY INDEX trade mark’)
Application Number:
1393371
Priority Date:
9 November 2010
Services:
Class 36: Financial services; providing general financial services advice for derivative and foreign exchange contracts
Trade Mark:
(‘the IFX trade mark’)
The acceptances of the applications were advertised in the Australian Official Journal of Trade Marks on 12 May 2011. The Opponent filed notices of opposition (‘the Notices’) on 8 November 2011. The Notices were similarly worded and raised a number of grounds of opposition corresponding to various sections of the Act. At the hearing the Opponent argued only grounds pursuant to ss 44, 59 and 60. For completeness I find that the remaining grounds in the Notices have been abandoned.
Evidence
The Opponent filed Evidence in Support of its oppositions on 8 August 2012. This evidence consists of:
Statutory Declaration made on 3 August 2012 by Eileen Kennedy, the Assistant Secretary and Associate General Counsel of the Opponent, with Exhibits 1 to 28 (‘the Kennedy declaration’);
Statutory Declaration made on 3 August 2012 by Frank Willenberg, the Senior Vice President of Citi Commercial Bank, with Exhibit FW-1 (‘the Willenberg declaration’). Exhibit FW-1 consists of a folder containing documents behind tabs numbered 1 to 20; and
Statutory Declaration made on 3 August 2012 by David George Briggs, the Principal of Galaxy DP Pty Ltd, a market research consultancy, with Exhibits DGB-1 to DGB-2 (‘the Briggs declaration’).
The Applicant filed Evidence in Answer on three occasions, the balance being filed on 9 May 2013. This evidence consists of:
Statutory Declaration made on 5 February 2013 by Myrna Taouil, a solicitor at Chrysiliou IP, the Applicant’s representative, with Annexures MT-1 to MT-21 (‘Taouil 1’);
Statutory Declaration made on 8 May 2013 by Myrna Taouil, with Annexure MT-1 (‘Taouil 2’);
Statutory Declaration made on 5 February 2013 by Rosemary Anne Cardas, a trade mark attorney and partner of Keltie LLP, a United Kingdom firm of patent and trade mark attorneys, with Exhibits RAC-1 to RAC-5 (‘the Cardas declaration’);
Statutory Declaration made on 1 May 2013 by Nigel Rose, the Group Chief Financial Officer of City Index Group Limited, with Exhibits NR-1 to NR‑11 (‘the Rose declaration’);
Statutory Declaration made on 9 May 2013 by Michael Gillan, the Head of Marketing of City Index Group Limited in the Asia Pacific region, with Exhibits MG-1 to MG 30 (‘the Gillan declaration’)
The Opponent filed Evidence in Reply on 14 October 2013. This evidence consists of:
Statutory Declaration made on 14 October 2013 by Dawn Logan Keeffe, an attorney at Davies Collison Cave Patent and Trade Mark Attorneys, the Opponent’s representative, with Exhibits DLK-1 to DLK-4 (‘the Keeffe Declaration’).
I heard the matter as a delegate of the Registrar of Trade Marks on 10 April 2014 in Sydney. Michael Hall of Counsel, instructed by Roseanne Mannion of Davies Collison Cave appeared for the Opponent. Sue Chrysanthou of Counsel, instructed by Myrna Taouil of Chrysiliou IP, appeared on behalf of the Applicant. Both parties’ oral submissions were supplemented by written submissions which were emailed to both me and the other party prior to the hearing.
The Opponent
According to the Kennedy declaration:
[The Opponent] is a pre-eminent provider of diversified global financial services (and related services). These services include banking, loans and mortgages, credit/charge cards, investment and asset management, bill payment, international banking and investment, corporate and investment banking, treasury and cash management, fund and securities and benefit and asset management as well as derivatives transactions and foreign exchange services.
[The Opponent’s] history dates back nearly 200 years. On June 16, 1812, with US$2 million of capital, [the Opponent’s] direct predecessor in business City Bank of New York opened for business in New York City. [The Opponent’s] predecessor in business had continuously carried on business under the CITY BANK or ‘CITYBANK’ names since at least 1812.
[The Opponent] and its subsidiaries enjoy a longstanding reputation in Australia in the area of financial services.
a. In or about 1977, Citicorp Australia Holdings Limited was formed. Citigroup Pty Ltd is the current name of the company formerly known as Citicorp Australia Holdings Limited.
b. In or about 1984, Citicorp Pty Limited was incorporated and commenced operations under the name Citicorp Pty Limited. This company remains registered to date … .
c. In or about 1985, Citibank was granted a full banking licence in Australia and Citigroup Australia Pty Limited, a wholly owned subsidiary of [the Opponent], has conducted financial and banking services in Australia under the name ‘CITIBANK’ continuously since that time.
d. In or about 1998 as a result of the global business combination of Citicorp and Travelers Group in the United States of America [the Opponent] has continuously used the name ‘CITIGROUP’ as its corporate name in Australia.
e. In or about 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’.
The Opponent has a number of trade marks registered in Australia, some are detailed below:
Trade Mark Number:
791515
Priority Date:
30 October 1998
Services include:
9. Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial and insurance services; real estate, banking, investment and credit card services
Trade Mark:
(‘the CITI logo trade mark’)
Trade Mark Number:
853425
Priority Date:
12 October 2000
Services:
Class 36: Financial services, namely, foreign exchange transactions, reporting and information services
Trade Mark:
CITIFX (‘the CITIFX trade mark’)
Trade Mark Number:
946355
Priority date:
11 March 2003
Services include:
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial services; namely, banking; credit card services; commercial and consumer lending and financing; real estate and mortgage brokerage; trust, estate, and fiduciary management, planning and consulting; investment and investment advisory and consulting; securities brokerage and trading services; facilitating secure financial transactions; and insurance services; namely, underwriting and sales of property, casualty and life insurance polices and annuity contracts
Trade Mark:
(‘the CITIBANK trade mark’)
Trade Mark Number:
1170362
Priority Date:
10 April 2007
Services:
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs
Trade Mark:
CITI (‘the CITI trade mark’)
Trade Mark Number:
1374659
Priority Date:
28 July 2010 (26 April 2010 convention priority is claimed in respect of a subset of the services listed below – specifically, those in italics.)
Services:
10. Class 36: Insurance; financial affairs including managing, tracking and reporting the purchase and sale of consumer products and/or services; monetary affairs; real estate affairs; financial services, namely, providing information in the field of foreign currency; foreign exchange rate calculation services; foreign exchange transactions; automated trade execution and settlement services in the field of foreign exchange; financial analysis and consultation services; financial research services; electronic foreign exchange payment processing
Trade Mark:
CITI INSTANTFX
(‘the CITI INSTANTFX trade mark’)
The Applicant
According to the Gillan declaration:
City Index[1] is recognised as one of the leading providers of financial trade services through spread betting, contracts for differences (‘CFDs’) and margined foreign exchange. City Index is part of IPGL Limited’s group of companies. IPGL Limited is a privately owned company registered in England and Wales … with a substantial shareholding in the world’s leading derivative broker ICAP plc.
A brief history of City Index is as follows:
1983: City Index UK established in 1983 as one of the United Kingdom’s first spread betting providers.
2001:City Index launches CFDs trading in the United Kingdom.
2006:City Index acquires a number of entities in the IFX Group including foreign exchange broker IFX Markets Limited (together with IFX Market’s Sydney branch office). City Index also acquires spread betting provider Finspreads.com
2006: City Index maintains and operates a branch office in Sydney and opens new offices in Singapore and Shanghai to provide CFDs and margined foreign exchange services throughout the APAC region.
2008:City Index acquires FX Solutions, a US market leader in retail and whit label foreign exchange services to expand City Index’s global reach across the US and Middle East.
2009: City Index Australia is incorporated in Australia.
The City Index trade mark has received exposure to the Australian public and has been subject to promotion and advertising since at least 2007 … .
[1] According to the Gillan declaration ‘City Index’ means City Index Group, its subsidiaries and its registered foreign business names’. Although unstated I assume this includes the Applicant.
Grounds of Opposition, Onus and Standard of Proof
At the hearing Counsel for the Opponent argued only grounds pursuant to ss 44, 59(a) and 60. As will become apparent it is necessary only that I consider the ground pursuant to s 60 in respect of both opposed trade marks. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
The onus of proof in an opposition hearing before a delegate of the Registrar rests upon the Opponent.[2]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
Judicial opinion is divided on the question of the relevant standard of proof. In Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited Murphy J said:
It has been suggested in some cases that rather than the ordinary civil standard of balance of probabilities applying, there is a special standard that requires an opponent to registration of a trade mark to show that the trade mark is ‘clearly’ not be registered. The division has not yet been resolved at the appellate level.
…
I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is ‘clearly’ not to be registered. The onus is to be discharged to the ordinary civil standard.[3]
I will adopt the approach taken by Murphy J in this regard.
[3] [2014] FCA 373, [30]-[37].
The date at which the rights of the parties are to be determined is 9 November 2010 being the priority date of the Applicant’s trade marks (‘the relevant date’).
Discussion
Section 60
The ground based on s 60 of the Act is indicated in the Notices 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 is reproduced below:
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.Mr Hall has averred in respect of s 60 that there is a:
likelihood of deception or confusion due to the opponent’s significant reputation under its CITI family of marks in Australia.
and that
The Opponent’s evidence of reputation in respect of its trade mark CITI is substantial. Its CITI mark has repeatedly been held to have acquired a reputation in Australia.
Reputation
It was submitted by Mr Hall that:
In Australia in 2010, Citigroup Pty Limited held total loans and advances totalling $7.559 billion. The Opponent company had at least 12 branches, all marked with the ‘CITI’ logo, in New South Wales, Victoria, Queensland and Western Australia. A further 160 CITI branded ATMs operate in Australia. Currently, it serves more than 1 million consumers and over 1000 corporate and institutional customers in Australia. Around the world there are more than 200 million customers. Large numbers of calls are made to CITIPHONE BANKING in Australia. Each is answered with an aural use of the CITI trade mark … .
These submissions are a concise and useful summary of some of what has been provided in evidence by the Opponent.
The Kennedy declaration includes figures for marketing expenditure in Australia which are commensurate with a corporation of the size of the Opponent. The Opponent was undoubtedly a very significant operator in the sphere of financial services as at the relevant date.
The Opponent supplied substantial evidence of use of its various trade marks, most relevantly the CITI trade mark and the CITI logo trade mark, in connection with various financial services provided both to business and personal customers.
In addition to evidence of use of its various trade marks the Opponent provided survey evidence in the form of the Briggs declaration. Mr Briggs declares himself to be the principal of a competent independent market research consultancy. Mr Briggs indicated that he was instructed to conduct a survey for the purposes of these opposition proceedings. Mr Briggs was asked to determine:
(a) the level of brand awareness of Citibank in Australia;
(b) the level of consumer recognition of the word ‘CITI’ in association with financial services;
(c) the level of consumer association of products and services including the CITI prefix with products and services with Citigroup/Citibank; and
(d) the likelihood of consumers associating CITI prefixed trade marks and services provided by Citibank.
Mr Briggs also described the methodology used to conduct the survey including the questions asked, before providing the results of the survey. The survey consisted of an initial survey with three parts conducted in May 2012 and a supplementary survey conducted in June 2012. I note that these dates are at least eighteen months after the relevant date. A useful summary of the findings of the survey was made by Mr Hall in his written submissions:
The survey conducted in May and June 2012 and reported by Mr Briggs demonstrates that consumers recognize ‘CITI’ as a trade mark of the Opponent. Results from survey question B.1., indicate when a financial service or product is coupled with the prefix ‘CITI’, consumers are much more likely (69%) to associate the word combination with the Opponent’s company than any other institution. The same pattern arises with CITY‑marks. Although the association with the Opponent is slightly lower at 51%, still a majority of respondents associate CITY in financial product or service names, with the Opponent. When it is born [sic] in mind that some consumers will meet a CITY mark aurally, that 51% figure quoted above is likely to underestimate the level of reputation.
Ms Chrysanthou was critical of the survey submitting that it should be given no weight. She argued that the survey suffers from a number of defects including:
(a) the [dates on which the parts of the survey] were conducted;
(b) the inadequate sample size;
(c) the fact that no participant was asked any questions about either of the Trade Marks (being the fancy marks sought to be registered by the Applicant); and
(d) the fact that in the second survey the questions were asked over the phone and the participants’ attention was not drawn to the fact that City was spelt correctly.
While it is necessary that the rights of the parties are to be determined as at the relevant date, evidence which is dated after that date, such as the survey evidence in this instance, may still have a bearing on this determination. In Conde Nast Publications Ltd v Taylor, Burchett J considered that:
[I]t is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. … [I]t is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 439. As his Honour pointed out, the onus must be borne in mind, and also the difficulty in obtaining evidence of confusion or deception.[4]
[4] (1998) 41 IPR 505, 509.
As I have noted the survey was conducted after the relevant date. I will take this into account and afford it appropriate weight in the light of Burchett J’s words above.
Ms Chrysanthou has further criticised the survey as to methodology and sample size. I have no reason to doubt the expertise or independence of Mr Briggs. Additionally, as there is no equivalent expert evidence before me which calls into question the validity of the methodology or sample size used in conducting the survey I am inclined to afford Ms Chrysanthou’s criticisms little weight.
Notwithstanding its criticism of the Opponent’s survey evidence the Applicant concedes that the Opponent has a reputation in CITIBANK but does not concede that it has a reputation in CITI or City. Ms Chrysanthou averred:
The opponent’s evidence, at its highest, establishes that it had a reputation at the relevant time in the word CITIBANK and [the CITI logo trade mark] or [the CITIBANK trade mark]. To the extent it seeks to claim ownership of (or relevantly reputation in) the word CITI by reason of a ‘family’ of CITI trade marks, this argument should be rejected – as it was by Hearing Officer Kirov in [2008] ATMO 99 at [33].
The opponent does not have a reputation in the word City. The opponent does not have an exclusive right to use that word in relation to financial services. Indeed, other organisations use the word City as part of broader trade marks, including in relation to financial services.
The decision of Hearing Officer Kirov to which Ms Chrysanthou has referred me was made in 2008. That decision considered reputation for the purposes of s 60 as at 22 March 2005, some five years before the relevant date in the present matter. Mr Hall has referred me to two more recent decisions being: Citigroup Inc v City Acceptance Corporation Pty Ltd [2013] ATMO 12 (‘City Acceptance’) and Citigroup Inc v Citiwide Holdings Pty Ltd [2013] ATMO 31 (‘Citiwide’). These decisions considered reputation for the purposes of s 60 as at 29 September 2009 and 28 September 2009, respectively. Mr Hall has submitted that in these decisions the Delegates:
have accepted that evidence closely similar to that presented in this case demonstrates a sufficient reputation to found a s 60 opposition.
In City Acceptance the Delegate found:
The reputation of the Opponent’s trade marks CITI and CITIBANK is comparatively strong and the public degree of recognition of those trade marks is quite high.[5]
[5] [2013] ATMO 12, [24] (Lyons).
In Citiwide the Delegate found:
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.[6]
[6] [2013] ATMO 31, [31] (Worth).
The Opponent in both City Acceptance and Citiwide relied on trade marks including the CITI trade mark and the CITI logo trade mark. The relevant date for assessment of the reputation in the present matter is 9 November 2010, which is at least a year on from the dates of assessment of reputation made by the delegates in City Acceptance and Citiwide. I am not, of course, bound by the assessment of the reputation made by the delegates in those matters. However, an assessment of the evidence provided by the Opponent in this matter satisfies me that both the CITI trade mark and the CITI logo trade mark have acquired significant reputations in relation to financial services.
Likelihood of deception or confusion
It is not sufficient that the Opponent merely establishes that its trade mark has a significant reputation, I must also be satisfied that because of that reputation the use of the Applicant’s trade marks would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[7]
[7] (1937) 58 CLR 641, 658.
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. [8]
[8] [1979] RPC 410, 423 (citations omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[9]
[9] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
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.
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.[10]
[10] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
The Opponent’s submissions regarding deception and confusion focused on the findings contained in the survey evidence. Mr Hall averred:
[T]he survey provides direct evidence relevant to the issue of confusion. First, when asked ‘if you heard a financial service or financial product which started with the name ‘CITY’, with which institution or institutions would you associate this CITY product or service?’ 49% of respondents answered CITIBANK, and 2% answered CITIGROUP. No one answered with the name of the Applicant. Mr Briggs says at [63]:
In my experience as a market researcher, this is a strong and significant level of association.
He goes on [64]-[65]:
Accordingly, the results show that if consumers heard of a financial product or service which starts with the name ‘CITY’ a significant number would associate the service or product with CITIBANK. In contrast the level of association for the CITY prefix with any other institution is extremely low.
In my opinion, based on the supplementary survey results, a majority of consumers are likely to associate the two opposed trade marks … with the goods and services of Citigroup Inc or its Citibank Subsidiaries.
As to the specific findings in the survey as to the question of likely confusion Ms Chrysanthou submitted:
Whether or not a particular get up or words are deceptive is a question for the tribunal of fact, and not a matter of evidence. Evidence may be admitted as to actual deception, but not possible or future or hypothetical deception: see Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65 [‘Interlego’].
Mr Hall countered this criticism by pointing out that the view regarding survey evidence found in Interlego was based on rules of evidence which no longer exist, and that in any event the Registrar is not bound by the rules of evidence. That the Registrar is not bound by the rules of evidence is explicitly stated in reg 21.15(4) of the Trade Mark Regulations 1995 which reads, in part, ‘the Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes is appropriate’. I will, accordingly, consider the findings of the survey evidence with respect to confusion and afford them appropriate weight.
Mr Hall addressed the distinctiveness of both the ‘INDEX’ element of the CITY INDEX Trade Mark, and the ‘IFX’ element of the IFX Trade Mark:
‘Index’ is not a distinctive word, and is commonly used in the financial service industry. Ms Logan Keeffe gives examples at paragraph [21] and following of her declaration. ‘Index’ is defined in an online encyclopaedia provided by Standard & Poor’s as ‘in the case of financial markets, an index is an imaginary portfolio of securities representing a particular market or portion of it’. The Australian Stock Exchange uses the word extensively and descriptively – examples given by Ms Logan Keeffe at [25] include ‘index derivatives’, ‘index futures’ and descriptive uses such as ‘index futures are leverage products that allow you to hedge, trade or gain exposure to an underlying index’ and ‘arrange cost effective exposure to an index’.
‘IFX’ also lacks capacity to distinguish the Applicant’s ‘CITY’ branded financial products from the Opponent’s. ‘FX’ is a universally recognised abbreviation for foreign exchange. Furthermore, the prefix ‘I’ is commonly regarded as an abbreviation for the word ‘internet’ or ‘interactive’, particularly in relation to services that are provided over an electronic platform or internet. Therefore the letter ‘I’ present in the [IFX Trade Mark] (where the letter ‘I’ is clearly differentiated from the letters ‘FX’), indicates that the services are electronic foreign exchange services or foreign exchange services provided over the internet. As such, the presence of the prefix ‘I’ in a trade mark is unlikely to add to the mark’s registrability of the non-distinctive acronym ‘FX’. Its only effect in the opposed trade mark is to strengthen the suggestion that these are financial services provided by a bank called CITY.
Ms Chrysanthou argued that the difference in spelling of CITY in the Applicant’s trade marks vis-à-vis CITI in the Opponent’s trade mark is significant, submitting:
The opponent does not have a reputation in the word City. The opponent does not have an exclusive right to use that word in relation to financial services. Indeed, other organisations use the word City as part of broader trade marks, including in relation to financial services.
In further support of the importance of the spelling of CITY, Ms Chrysanthou had additional criticism of the survey evidence due to:
the fact that in the second survey the questions were asked over the phone and the participants’ attention was not drawn to the fact that City was spelt correctly.
The surveys are thus useless in the context of those opposition [sic], and in particular relation to any assessment as to whether the Trade Marks are likely to deceive or cause confusion for the purposes of s 60 of the Act.
Given the potential, and common, aural use of trade marks, there is limited value in drawing a distinction between the spelling of CITY and the phonetically identical CITI for the purposes of assessing the likelihood of confusion. On the contrary, I considered the fact that there was no distinction drawn in the phone survey as to whether what was being referred to was CITY or CITI provides a good test of the likelihood of deception or confusion when aural use was made of these homophones. Relevantly, the Act explicitly states that aural representation of a trade mark which contains or consists of words, inter alia, is taken to be use of the trade mark.[11]
[11] Trade Marks Act 1995 s 7(2).
With respect to visual interpretation of the respective trade marks the Applicant has submitted that:
[T]he opponent’s mark CITI is arguably so well known that no one would be confused into believing that a mark including the correct spelling of the word City was associated with the Opponent.[12]
[12] I note that this submission by the Applicant appears to be somewhat at odds with it submission referred to at para 28 of this decision.
In this regard the Opponent referred me to the decision of the Delegate in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi where Hearing Officer Thompson stated:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[13]
[13] [2012] ATMO 124, [40].
With respect to the Delegate’s reasoning Mr Hall averred:
Mr Thompson’s reasoning would apply equally to a case where reputation is strong and the nexus between the relevant services is very close. In such a case relatively dissimilar marks might nonetheless cause confusion.
Precedent on this issue is mixed. As stated by the Delegate in Flight Centre Pty Ltd v World Flight Centre Pty Ltd (‘Flight Centre’):
Reputation in a trade mark can thus be a double-edged sword and may either reinforce or mitigate the effect of differences.[14]
[14] [2003] ATMO 60, [21] (Williams).
In Ana Laboratories Ltd’s Application (‘Ana Laboratories’) it was argued that in relation to petroleum jelly ‘Vaseline’ could be regarded almost as a household word, and that the extensive reputation which it enjoyed in this connection would prevent deception or confusion arising from any similarity to the mark ‘Vanildene’. The Assistant-Comptroller stated:
Upon this point, reference might well be made to the case of Smith Hayden & Coy. Ld’s Application (1946) 63 RPC 97. This was an appeal from a decision of the Registrar, and Counsel for the appellants (opponents) contended that the Registrar had partly based his decision upon what was in effect the proposition that the likelihood of a particular used mark being confused with another mark was in the inverse ratio to the reputation enjoyed by that particular mark. Evershed, J. (as he then was) found … that the Registrar had not so misdirected himself, thus implying that if he had advanced such a proposition in his decision, it would have been a misdirection upon his part. And in these proceedings, I am not prepared to take the view that, because of the extensive notoriety achieved by the mark ‘Vaseline’, deception or confusion is the less likely if a resembling mark should begin to be used in the same market.[15]
[15] (1952) 69 RPC 146, 151.
The approach taken in Ana Laboratories can be contrasted with that takens in Flight Centre where Mr Williams stated:
[I]t may be that the more widely the opponent is known, nationwide, as FLIGHT CENTRE, plain and simple, and the more widely recognised are those words seen to be its trade mark, the less likely is it that clearly different trade marks will be seen as denoting the same trade source.[16]
[16] [2003] ATMO 60, 21.
I am of the view in this instance that the reputation acquired by the Opponent’s trade marks will not militate against deception or confusion arising. The visual difference between CITI and CITY is small, and the words are phonetically identical. Notwithstanding the conceptual differences between them, when used in conjunction with other words the differences become even less significant.
In the case of the IFX trade mark, it is not particularly important whether IFX is seen to be a badge of trade origin or not, as addressed by Mr Hall in para 40, above. That this trade mark includes the words ‘A City Index Company’ as a clear indicator of trade origin is sufficient to give rise to deception or confusion when the reputation acquired by the Opponent’s CITI Trade Mark and CITI Logo Trade Mark is taken into account.
Having considered all submissions and evidence in this matter I am satisfied that as a result of the significant reputation acquired before the relevant date by at least the CITI Trade Mark and the CITI Logo Trade Mark in respect of financial services, that the use of either of the opposed trade marks would be likely to deceive or cause confusion.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found that the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act in respect of both of the opposed trade marks. Accordingly, I refuse to register the opposed trade marks.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
Robert F Wilson
Hearing Officer
Trade Marks Hearings
6 May 2014
13
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