Citigroup Inc v George Sparsis
[2017] ATMO 14
•22 February 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Citigroup Inc to registration of trade mark application 1578860 (35, 36) - CITISALES & LEASING - filed in the name of George Sparsis.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Neil Murray of Counsel assisted by Aparna Watal of Davies Collison Cave Applicant: Self represented |
| Decision: | 2017 ATMO 14 Trade Marks Act 1995 Section 52 opposition to registration; section 44 trade marks deceptively similar – ground established - evidence does not establish prior continuous use or honest concurrent use. Registration refused |
Background
In this matter George Sparsis (‘the Applicant’) has filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:
Application No: 1578860
Priority Date: 6 September 2013
Services:Class 35: Real estate auctioneering, including auctioneering of commercial properties and residential properties; advertising of real estate, including advertising of commercial properties, residential properties, properties for sale, lease or rent, including advertising in on-line and printed formats
Class 36: Real estate agency services, including commercial real estate agency services and residential real estate agency services; real estate leasing services; real estate advisory services
(‘the Specification’)
Trade Mark: CITISALES & LEASING
(‘the Trade Mark’)
Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration on 19 February 2015 in the Australian Official Journal of Trade Marks.
On 17 April 2015, Citigroup Inc (‘the Opponent’) filed a Notice of Intention to Oppose, followed on 18 May 2015 by its Statement of Grounds and Particulars (‘the SGP’). The SGP particularised grounds including that under section 44 under which I will decide this matter.
On 9 June 2015, the Applicant filed a Notice of Intention to Defend.
Thereafter the parties have filed Evidence in Support, Evidence in Answer and Evidence in Reply which I will further discuss below.
Both parties requested to be heard. The hearing of the matter was in Canberra on 2 February 2017 before me as a delegate of the Registrar of Trade Marks (‘the Registrar’). The Applicant represented himself and Mr Neil Murray of Counsel assisted by Ms Aparna Watal of Davies Collison Cave represented the Opponent.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the subsection 44(2) ground must be considered is the priority date of the opposed application[2].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
The evidence in this matter comprises the following declarations:
In Support
Eileen Kennedy, a Managing Director and General Counsel of the Opponent, made on 16 September 2015 with Exhibits EK-1 to EK-26;
Ashley James Cole, Head of Credit Operations of the Opponent, made on 24 September 2015 together with Exhibits AJC-1 to AJC-99;
Aparna Watal, Trade Mark Lawyer, made on 24 September 2015 together with Exhibits AW-1 to AW-6;
In Answer
The Applicant, made on 18 January 2016, with exhibits GMS-1 to GMS-27; and
In Reply
Aparna Watal, Trade Mark Lawyer, made on 22 March 2017 together with Exhibits AW-A to AW-K.
As my decision is under section 44 of the Act, my discussion of the Opponent’s evidence need not be prolonged. The Applicant has not disputed the reputation of the Opponent’s trade marks but argues that the reputation exists only in respect of financial services. It is presently sufficient to observe that the Opponent is a major financial institution and the extensive evidence filed by the Opponent supports the finding that the Opponent’s CITI and CITI-[Extension] trade marks are sufficiently well-known and recognised in Australia in relation to financial services (notably in relation to the leasing of property and to the purchase of real estate) to have achieved the degree of notoriety that was found by French J in Registrar of Trade Marks v Woolworths[3] (‘Woolworths’):
Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.
[3] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [61].
Similarly, the Full Court in C A Henschke & Co v Rosemount Estates Pty Ltd observed[4]:
Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.
[4] [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 at [52].
I will address the Applicant’s evidence in my discussion of subsections 44(3) and 44(4) of the Act.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
[…]
(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.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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.
To found its opposition under subsection 44(2) the Opponent must establish each of the following requirements to the Registrar’s satisfaction: the existence of a trade mark (or trade marks) which:
1.has/have a priority date (or dates) earlier than that of the Trade Mark; and
2.is/are registered (or whose registration(s) is/are being sought) in respect of similar services or closely related goods; and
3.is/are substantially identical or deceptively similar to the Trade Mark.
Each of the above three requirements must be met if the Opponent is to establish its opposition under subsection 44(2). However, (as relates to requirement two) I note that Mr Murray, for the Opponent, did not submit that the Opponent’s trade marks are substantially identical to the Trade Mark but contended that they are deceptively similar.
Mr Murray in his submissions explained that the Opponent relies primarily on the following registered trade marks:
Registration No: 358938
Priority Date: 9 Apr 1981
Services: Class 36: Financial services in this class
Trade Mark: CITILOAN
Registration No: 397753
Priority Date: 30 Sep 1983
Services: Class 36: Financial services in this class
Trade Mark: Citimortgage
Registration No: 1170362
Priority Date: 10 Apr 2007
Goods:Class 36: Insurance; financial affairs; monetary affairs; real estate affairs
Trade Mark: CITI
Registration No: 1203975
Priority Date: 11 Oct 2007
Goods:Class 35: Advertising; business management; business administration; office functions; loyalty and rewards programs including credit card customer loyalty and rewards programs
Trade Mark: CITI
Requirement 1 – Priority date
Each of the Opponent’s registrations has a priority date earlier than that of the Trade Mark.
Requirement 2 – similar services
I am to consider the specifications of services of both the Opponent’s registrations and that of the Trade Mark to their fullest extent and set aside any consideration of the services that the parties actually offer in trade. In Woolworths French J put it this way[5]:
It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.
[5] Op cit at [88].
Further, section 14 of the Act provides a definition of the expression ‘similar services’:
14Definition of similar goods and similar services
[…]
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The expression ‘services of the same description’ was given consideration in MID Sydney Pty Ltd v Australian Tourism Co Ltd[6] by Burchett, Sackville and Lehane JJ:
Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID’s mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, “The Trade Marks Amendment Act 1978 “(1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (“TM Act 1955”), although the expression “services of the same description as [services in respect of which the trade mark is registered]” was used in the earlier legislation: see TM Act 1955, ss 33(2), 36(1A). The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:
There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek’s Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...’.
Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128:
In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... ‘in a business sense’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase ‘goods of the same description’ ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.
We accept that these principles, subject to any necessary modification, apply in relation to services.
[6] [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051.
As reflected in the Specification, real estate services occur in both Classes 35 and 36 of the International (Nice) Classification of Goods and Services. The services that occur in Class 35 of the Specification (real estate auctioneering services) are often offered by real estate sales agents, frequently the real estate auctioneer also works as a real estate sales agent, and the same agency will regularly offer both real estate agency sales services and auctioneering services. Typically, those selling real property will be offered a choice by a real estate agent between selling at auction or at private treaty – the different arrangements are, in my observations of the world, looked upon as a part of the same process, offered by the same agency, and have much the same end effect.
The real estate auctioneering services within the Specification are thus services of the same description as the services ‘real estate affairs’ within the Opponent’s registration 1170362 CITI.
The services ‘advertising of real estate, including advertising of commercial properties, residential properties, properties for sale, lease or rent, including advertising in on-line and printed formats’ within the Specification fall within the scope of the services ‘advertising’ within the specification of 1203975 CITI.
And, the services ‘Real estate agency services, including commercial real estate agency services and residential real estate agency services; real estate leasing services; real estate advisory services’ fall within the scope of the services ‘real estate affairs’ which occurs in the specification of 1170362 CITI.
Accordingly, the services of the parties are similar services being either the same services or services of the same description.
Requirement 3 – deceptively similar trade marks
Framework
The topic of ‘deceptive similarity’ was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[7] (‘Shell’) by Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.
[7] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [13].
And in Clark v Sharp[8] the Court stated:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the effect of the respective wholes.
[8] (1898) 15 RPC 141 at p 146.
The comparison should be in the context of the marketplace for the similar services. Parker J said in In the Matter of an Application by the Pianotist Company Ltd for the Registration of a Trade Mark[9]:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
[9] (1906) 23 RPC 774 at 777.
The Applicant in his evidence and submissions draws the Registrar’s attention to the particular way in which the parties actually use their trade marks (ie, not in the plain typed form they are applied for or registered). However, in the application of section 44, the Registrar is to consider the ‘notional use’ of the parties’ trade marks as they might be fairly used in a variety of fonts and colours: Woolworths[10] quoted, above, at paragraph [18].
[10] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J at [88]
The scope of this ‘notional usage’ appears, in my consideration, to encompass the assessments of the actual use of a trade mark in terms of subsection 7(1) which I further discuss at paragraphs [49] – [54], below: that is, without additions or alterations which substantially affect the identity of the parties’ plain typed trade marks as they are registered or pending.
Further, the expression ‘deceptively similar’ is defined in section 10 of the Act. I note that deceptive similarity is gauged in terms of the likelihood of its effect:
10Definition of deceptively similar
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.
The terms ‘deceive’ and ‘cause confusion’ within section 10 of the Act refer to two different mental states. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[11] Richardson J, in the New Zealand Court of Appeal, observed:
‘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.
[11] [1979] RPC 410, at 423.
In Radio Corp Pty Ltd v Disney[12] Rich J, said of the word ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[12] [1937] HCA 38; (1937) 57 CLR 448 at 454.
It is unnecessary, of course, in order to found this ground that an opponent must establish that any initial confusion would persist through to the point of enquiry or purchase[13].
[13] Hack, Re Application to Register a Trade Mark (1940) 58 RPC 91 at 103–104; Southern Cross Refrigerating Co v Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592 per Kitto J at 595–596; Campomar Sociedad Limitada and Another v Nike International Limited and Another [2000] HCA 12; (1999) 202 CLR 45 at [83].
Finally, the consideration of the likelihood of deception or confusion is informed by the factors discussed in Woolworths by French J[14]:
(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] HCA 43; (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.”
[14] Op cit at [50].
Consideration
The Applicant has submitted that the element ‘citi-’ within the Opponent’s trade marks lacks inherent adaptation to distinguish the Opponent’s services since other traders require to use the element ‘citi-’ in respect of their similar services. However, this argument is unconvincing as the Opponent here relies, inter alia, on its registrations of trade marks which consist only of the typed word ‘citi’ (‘the CITI solus trade marks’). If the CITI solus trade marks lack inherent adaptation, they prima facie would not be registered as trade marks. Accordingly it is not appropriate whilst the CITI solus trade marks are registered to discount the element ‘citi’ in any way in both the comparison of the parties’ trade marks and the assessment of the likelihood of deception or confusion.
The Applicant in his evidence provides examples of trade marks registered in Australia in the names of owners other than the Opponent which include the element ‘CITI-’. There are at least two difficulties with such evidence: the circumstances surrounding the acceptance for registration of all of the examples given may not be immediately clear; and, the examples provided by the Applicant include many in which there is no similarity between the services/goods of the registrations and those relied upon by the Opponent in these proceedings. Here there is little to be gained in an exhaustive analysis of what is already on the Register when, in the circumstances of this matter, the question before me is confined to the Trade Mark and the trade marks relied upon by the Opponent. In a similar situation, Wilcox J remarked (albeit in relation to section 41 of the Act) in Ocean Spray Cranberries Inc v Registrar of Trade Marks[15]:
… although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
[15] [2000] FCA 177; (2000) 47 IPR 579; [2000] AIPC 37-137 at [35].
The Opponent has, as I have mentioned, a range of registered CITI-[Extension] trade marks upon which it relies to establish that the public has been educated that the Opponent coins CITI-[Extension] trade marks in relation to its various services. These registered CITI-[Extension] trade marks include, for example, the trade marks CITIPLAN, CITIBANK, CITI INSTANTFX and CITI MOBILE. Each of these trade marks is likely to be remembered ‘by general impressions or by some significant detail [rather] than by any photographic recollection of the whole’ (Shell). The significant detail common to each of the Opponent’s registered trade marks is the element ‘citi’.
Further, as I have observed, the common element of the Opponent’s trade marks has achieved a degree of notoriety: the public is accordingly likely to recognise and place emphasis on the element ‘citi’ on first seeing trade marks incorporating that element used for similar services to those in respect of which the Opponent’s trade marks are registered.
In John Fitton & Co Ltd’s Appn[16] in finding that the use of the new mark EASYJEST would be confusing or deceptive in face of the registered trade mark JESTS, the Assistant Comptroller said that no limitation was to be placed “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”. This associative principle must a fortiori apply where an element of a trade mark has achieved a degree of notoriety and is included in a ‘family’ of trade marks.
[16] (1949) 66 RPC 110 at p 133.
Here, the Trade Mark is coined in the same way as the Opponent’s CITI-[Extension] trade marks and is used or proposed to be used in relation to similar services as those in respect of which the Opponent’s CITI solus trade marks are registered.
Therefore, I consider that it is likely that most people would be immediately caused to wonder if there is some connection between the trade provenance of the similar services offered by both the Applicant under the Trade Mark and the Opponent under its CITI solus and CITI-[Extension] trade marks. This wonderment might not persist until the point of either inquiry or sale – however, as discussed above, this is not a requirement in order that the ground under subsection 44(2) be established.
Accordingly, I find that the trade marks are deceptively similar.
As the Opponent has founded all three requirements under subsection 44(2), the ground under subsection 44(2) is established.
Subsection 44(4) – prior continuous use
It is essential under subsection 44(4) that the Applicant must establish use:
· of the Trade Mark; which must be
· continuous from before the priority dates of the Opponent’s registrations up until the priority date of the Trade Mark.
Use of the Trade Mark
Here the Opponent points to his registration of business and company names registered since 1991. However, the registration of business names and company names, as further discussed below, do not establish use of a trade mark. The Applicant states:
The mentioned Exhibit-26 contains on its first page an example of one of the first letterheads that I used in 1990th [sic] which is described in this paragraph logo:
Currently, I prefer to use red and yellow colours. It is written in serif font in yellow colour (on the top of the website it is written in red). Also, instead of the full mark, I use its shortened form only [the letters] C&L in yellow colour with the same serif font. Additionally, it [is] placed in red rectangle or in rectangle with rounded angles. In the left side (or in the bottom left corner) the red colour is brighter and after smoother change in the right side the red colour is darker. Also, I often use a slogan “when you deal with us… you deal with confidence...” .
In general, my logo looks as follows:
(‘the Logo Trade Marks’)
The Applicant’s earliest use of the sign ‘Citisales & Leasing’ can be reliably dated in exhibits to the Applicant’s declaration from around 1988 – after the priority dates of the Opponent’s registrations 358938 CITI (9 Apr 1981) and 397753 CITI (30 Sep 1983) which are registered for financial services but before 1170362 CITI (10 Apr 2007) which is registered for, inter alia, real estate affairs. I remark, however, that both the Applicant’s focus in his evidence on the business name ‘Citisales & Leasing’ and the context of the Applicant’s uses of the sign ‘Citisales & Leasing’ (as below) do not make it plain that these uses of the sign were as a trade mark rather than as a business name[17]:
[17] I acknowledge that the use might have been both as a business name and as a trade mark.
This use of the Trade Mark, if it be such, is established by similar exhibits to the Applicant’s declaration to have continued unbroken until 1995. There is then a gap in the Applicant’s examples of usage of the Trade Mark until 2006. It is not ascertainable from the Applicant’s declaration and exhibits thereto if there was any use of the Trade Mark at all within the 11 years between 1995 and 2006. The Applicant seemingly points to his registration of business names in that period as maintenance of the use of the Trade Mark. However, the registration of a business name shows only compliance with trading laws: Lone Star Steakhouse & Saloon Inc v Zurcas[18]. Indeed, maintenance of a business name might only occur because a person is ‘holding’ a business name for use in the future – a business name registration does not in or of itself confirm that there was any trade happening, let alone under a particular trade mark (which may or may not correspond with the business name).
[18] [2000] FCA 29; (2000) 48 IPR 325.
Additionally, the later examples given by the Applicant as being his uses of the Trade Mark are, from 2006, uses of the Logo Trade Marks. The uses by the Applicant of the Logo Trade Marks are not, however, uses of the Trade Mark for the following reasons.
Subsection 7(1) of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
In Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[19] Yates J treated the issue of ‘additions or alterations’ under subsection 7(1) as being in essence the same as the question of ‘substantial identity’ which occurs within section 44 of the Act[20]. He stated:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival[21] at 391; Shell[22]at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself.
[19] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].
[20] See also Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519; (2010) 87 IPR 300; [2010] AIPC 92-388 per Kenny J at [154].
[21] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.
[22] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) 109 CLR 407.
In Shell the question of ‘substantial identity’ was posed thus:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
Within the Logo Trade Marks the alphabetical letters (and ampersand symbol) C & L, framed within a solid rectangle, form a major and dominant part of those trade marks. Together they comprise an essential feature of those trade marks which is not present in the Trade Mark. A total impression of dissimilarity between the Trade Mark and the Logo Trade Marks thus emerges.
It follows that the uses of the Logo Trade Marks are not uses of the Trade Mark as the Logo Trade Marks contain alterations or additions which, on comparison, substantially affects the identity of the Trade Mark. Put more plainly: the Applicant’s uses of the Logo Trade Marks do not establish prior and continuous use of the Trade Mark as they are not uses of the Trade Mark.
In summary, the Applicant has not established the prior continuous use of the Trade Mark in terms of subsection 44(4) of the Act because:
· there is a gap of 11 years in the Applicant’s examples given to support his claims of continuous usage of the Trade Mark;
· this gap is not stopped up by the registrations of the sign Citisales & Leasing as a business name; and
· the trade mark uses relied upon by the Applicant from the year 2006 until the relevant date are not uses of the Trade Mark.
The provisions of subsection 44(4) should not be applied.
Paragraph 44(3)(a) – honest concurrent use
In McCormick & Co Inc v McCormick[23] Kenny J stated:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
[23] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [30].
Although it is unstated, above, the use relied upon by an applicant to satisfy the Registrar that there has honest concurrent use of a trade mark must be use of the relevant trade mark.
Here, as discussed above, since 2006 the Applicant has used the Trade Mark with alterations or additions which substantially affect its identity. Therefore the use of the Logo Trade Marks cannot be accepted by the Registrar as establishing the honest concurrent use of the Trade Mark.
Any claim that there has been no confusion or deception arising from the concurrent use of the parties’ trade marks might be simply explained by the differences between the Logo Trade Marks and the CITI Solus and CITI-[Extension] trade marks upon which the Opponent relies to found the ground under subsection 44(2).
Further, the extent of the use of any trade mark by the Applicant in terms of time, geographic area and volume of sales is not addressed in the Applicant’s declaration.
The Applicant has not established the honest concurrent use of the Trade Mark.
Paragraph 44(3)(b) Other circumstances
There are no other circumstances which make it appropriate that the Registrar register the Trade Mark.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
As the ground under subsection 44(2) has been established, I refuse to register the Trade Mark.
Costs
The Opponent requested its costs if successful in this matter. I accordingly award costs against the Applicant at the Official Scale set out in Schedule 8 to the Trade Marks Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
22 February 2017
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