Clarity Software Pty Ltd v Clarity Corporate Communications Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Clarity Software Pty Ltd to registration of trade mark application 1728421 (35, 41 & 42) CLARITY in the name of Clarity Corporate Communications Pty Ltd

Delegate:

Michael Kirov

Representation:

Applicant: Paul Fong of Watermark Patent & Trade Mark Attorneys

Opponent: Relied on written submissions by its Director, Douglas Robb

Decision:

2018 ATMO 40

Opposition under s 52 of the Trade Marks Act 1995 – ss 44(2), 44(3)(a), 44(4), 58 and 60 considered – trade mark substantially identical to earlier registered mark and covering in part similar and/or closely related services – insufficient evidence of honest concurrent use or prior continuous use to invoke ss 44(3)(a) or (4) – insufficient evidence of prior use to defeat the s 58 ground – insufficient reputation shown to enliven s 60 ground – application to be amended to delete certain services.

Background

This is an opposition brought by Clarity Software Pty Ltd (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Clarity Corporate Communications Pty Ltd (“the Applicant”):
Application Number:              1728421
Filing Date:  15 October 2015
Services:Class 35: Public relations agency services including provision of services in relation to media relations, stakeholder engagement, community engagement, strategy, investor relations, issues management, crisis management, crisis communications, marketing communications, event management, event promotion, lobbying, facilitation, business research, surveys; brand consultancy and brand creation services; brand positioning; brand testing; brand strategy; event marketing services; marketing and advertising media management and analysis services; public relations, marketing and advertising consulting services including services in the media industry; market research; business management and advisory services relating to public relations, marketing communications, advertising and marketing; social media services including social media analysis, and design and development of social media campaigns; search engine optimization services and advice
Class 41: Provision of services in relation to media training, crisis training, crisis media training, crisis simulations, writing, copywriting, editing, coaching, corporate coaching, executive coaching, electronic desktop publishing
Class 42: Graphic design services including design of corporate identity, brand management, print design, publication design, publication layout, interior space graphics, stationery, advertising, and packaging; design of signage including interior and exterior signage; digital web design services including web page design services; hosting of internet access services; hosting of secure Internet services; design and hosting of content management systems, email distribution systems, media email systems; website hosting and maintenance services; computer and software programming services including application development, app development; software development including customised application development; design of web pages for the Internet; posting web sites of others on a computer server for a global computer network; social media services
(“the Designated Services”)
Trade Mark:  CLARITY  (“the Opposed Mark”)
Endorsement: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.
I have underlined certain of the services in Classes 35 and 42 above, which are referred to in the Opponent’s evidence and submissions as “the Overlapping Services” and to which I will refer hereafter as “the Opposed s 44/s 58 Services.” As discussed below, the s 44 and s 58 grounds of opposition are limited to these services only.
Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 2 June 2016. The Opponent filed a Notice of Intention to Oppose on 26 July 2016, followed by a Statement of Grounds and Particulars (“SGP”) on 24 August 2016. The Applicant filed a Notice of Intention to Defend the application on 9 September 2016.
I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 21 November 2017. Paul Fong of Watermark Patent & Trade Mark Attorneys appeared for the Applicant and also filed written submissions prior to the hearing. The Opponent relied on written submissions only, these having been prepared by its Director, Douglas Robb.
Grounds of Opposition, Onus and Standard of Proof
The SGP lists grounds corresponding to ss 44, 58, 58A, 59 and 60 of the Act, all of which were pressed by the Opponent except the s 59 ground. To succeed the Opponent bears the onus of establishing at least one of the remaining four grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[1] The date for assessing the registrability of the Opposed Mark is the date it was filed, 15 October 2015 (“the Relevant Date”).[2]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
That said, my understanding from the SGP and from the Opponent’s evidence and submissions is that the s 44 and s 58 grounds do not extend to all of the Designated Services. Rather, they are limited to the Opposed s 44/s 58 Services indicated in paragraph 1 above. That this is the Opponent’s intention with respect to the s 44 ground is confirmed by Mr Robb, I believe, when he discusses the relative inconvenience to the parties in his submissions in relation to s 44(3)(a) dealing with honest concurrent use:
It would be relatively less inconvenient for the Applicant to change its recent adoption of the Opposed Mark in respect of the [Opposed s 44/s 58 Services]; and as the Applicant does not in fact use the Opposed Mark in respect of [the Opposed s 44/s 58] Services, it would have little if any adverse impact on the Applicant’s actual use of the Opposed Mark.
That this is the Opponent’s intention with respect to the s 58 ground is similarly indicated by Mr Robb in his submissions on that ground:
14. The Applicant is not the owner of the Opposed Mark in respect of the [Opposed s 44/s 58 Services] as the Opponent is the owner, being the first to use, the Clarity Mark in respect of the [goods and services covered by the Opponent’s registration 840268].
(a) First to use…
(b) Same or substantially the same mark…
(c) Same services or goods: The [s 44/s 58 Services] are essentially the same as the [goods and services covered by the Opponent’s registration 840268]…
The Evidence
As evidence the parties rely on the declarations described below, being Statutory Declarations in the Opponent’s case and made pursuant to the Act and reg 21.6 of the Trade Marks Regulations 1995 (“the Regulations”) in the case of the Applicant:
Evidence in Support
▪ Douglas McLean Robb made 21 November 2016, with Exhibits EX1 to EX8 (“Robb 1”)
Evidence in Answer
▪ Megan Jane Crust made 17 February 2017 (“Crust”)
▪ Cathy Bolt made 20 February 2017 (“Bolt”)
▪ Samantha Francke made 20 February 2017 (“Francke”)
▪ Fiona Prior made 20 February 2017 (“Prior”)
▪ Gary John Bainbridge Walton made 21 February 2017 (“Walton”)
▪ Tania Hudson made 22 February 2017 (“Hudson”)
▪ Claire Leonard made 22 February 2017 (“Leonard”)
▪ Anthony Hasluck made 24 February 2017, with Annexures AH-15 to AH-46 (“Hasluck 1”)
Annexure AH-15 to Hasluck 1 is a copy of a declaration made by Mr Hasluck on 30 April 2006 (“Hasluck 0”), the original of which was filed with IP Australia to support acceptance of the opposed application under s 44(4) of the Act.
Evidence in Reply
▪ Douglas McLean Robb made 28 April 2017, with Exhibits DR-1 to DR-4 (“Robb 2”)
Discussion
Section 44
Insofar as relevant to the present matter, s 44 of the Act is reproduced below:
Identical etc. trade marks
44 (1)...
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
The SGP nominates five earlier registrations on which the s 44 ground is based:[3]
[3] Registrations 840268 and 1214504 are both owned by the Opponent, although presumably registration 1214504 was included in error. Registrations 953051, 1042228 and 1286638 are owned by three different parties, none related to the Opponent.
Number  Trade Mark  Class(es)
840268   Clarity     9, 35, 42
953051                THE ADVANTAGE OF CLARITY  16, 35, 37, 38, 41
1042228  Clarity Point  35
1214504  Perth IVF  35 & 41
1286638  Clarity and Persuasion     35, 36 & 41
It is however sufficient to limit the s 44 discussion to consideration of the Opponent’s registration 840268 Clarity, the other registrations relied upon being effectively superfluous. If the Opponent were to succeed based solely on registration 840268 then it would have the result it seeks. If its s 44 ground based on that registration were to fail, then reliance on the further registrations indicated in the SGP would not in my view advance its case any further. Registration 840268 is detailed below:
Registration Number:            840268
Filing Date:  26 June 2000
Goods:Class 9: Computer software, including software related to business process management, pyschological [sic] testing, Internet enabled databases, messaging and trading systems; publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites)
(“the s 44 Goods”)
Services:Class 35: Internet domain name registration and management services; On-line surveys; maintaining mailing lists; customer product registrations/enquiries
Class 42: Computer programming services; information technology consulting and technical services; web site development and hosting; technical management and operation of web sites for others
(“the s 44 Services”)
Trade Mark:  Clarity  (“the Opponent’s Mark”)
Endorsement: Provisions of subsection s 44(4) applied.
The Applicant was able to overcome the citation of registration 840268 during examination by relying upon evidence of continuous use of the Opposed Mark for relevant services since before the filing date of the registration, 26 June 2000 (“the s 44 Date”). The Opponent now effectively challenges whether the Applicant’s successful reliance on s 44(4) was justified.
Registration 840268 pre-dates the opposed application by more than 15 years and it was not in dispute that the Opposed Mark is identical, or substantially identical, with the Opponent’s Mark. For s 44(2) to apply then, I would need to be satisfied that some or all of the Opposed s 44/s 58 Services are “similar”[4] to some of the s 44 Services, or are closely related to some of the s 44 Goods. I note that the fact the parties’ marks are effectively identical has some relevance to this question.[5]
[4] As defined in s 14(2) of the Act, namely the same or “of the same description.”
[5] See E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 at [71] and the Full Federal Court’s endorsement of Burchett J’s discussion of the term “goods of the same description” in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246. While in Polo Textile his Honour was concerned with goods of the same description, his words are no less applicable to the term “services of the same description.”
I note too that the Applicant did not in fact contest the issue. Nevertheless, for the sake of completeness I confirm that, as regards the Opposed s 44/s 58 Services in Class 35, I consider the services specified as “business research, surveys” are similar to the “On-line surveys” in Class 35 covered by registration 840268 and that “search engine optimization services and advice” are similar to the “information technology consulting and technical services” and “web site development” services the registration covers in Class 42.
For their part, the Opposed s 44/s 58 Services in Class 42 are set out below:
digital web design services including web page design services; hosting of internet access services; hosting of secure Internet services; design and hosting of content management systems, email distribution systems, media email systems; website hosting and maintenance services; computer and software programming services including application development, app development; software development including customised application development; design of web pages for the Internet; posting web sites of others on a computer server for a global computer network; social media services
I do not think it is necessary to dissect these services forensically, particularly given the parties’ trade marks are essentially identical. In my view the services in question are, taken as a whole, sufficiently similar to the “Internet domain name registration and management services” and “maintaining mailing lists” services covered by the Class 35 specification of registration 840268, and/or to those of its entire Class 42 specification, as to be caught by s 44(2). Several of the Opposed s 44/s 58 Services in Class 42 are also on the face of it closely related to some of the goods in Class 9 covered by registration 840268 such as “computer software” and “Internet enabled databases, messaging and trading systems.”
The Opponent has thus in principle established its ground of opposition based on s 44(2) of the Act. Section 44(2) is however subject to ss 44(3)(a) and (4), which deal with honest concurrent use and prior continuous use respectively, the onus of establishing which lies with the Applicant. I will address both of these sub-sections below since both were relied upon at the hearing by Mr Fong, who noted of the Applicant’s evidence of use contained in Hasluck 1:
The Applicant has provided all of the [Designated] Services under the CLARITY trade mark for many years (Hasluck at 9). The majority of the [Designated] Services have been provided since the inception of the Applicant in 1999. However, some of the [Designated] Services such as website design, internet services, social media services and search engine optimisation were not around in 1999 as they involved new technologies. The Applicant adopted these new technology services as soon as they became relevant, or were requested by clients (Hasluck at 11).
Section 44(4) and Prior Continuous Use
Section 44(4) provides that, notwithstanding an adverse finding under s 44(2), “the Registrar may not reject the application because of the existence of the other trade mark” if “satisfied that the applicant [has] continuously used [its] trade mark” since before the priority date of the application to register the earlier mark, in this case what I have referred to as “the s 44 Date,” 26 June 2000. As mentioned, the opposed application was originally accepted for registration relying on this provision.
The Examiner’s favourable assessment under s 44(4) was based on the evidence contained in Hasluck 0[6] of the Applicant’s claimed use of the Opposed Mark in Australia since 1999. The Applicant was incorporated on 12 February 1999 and Anthony Hasluck has been a Director since then. In Hasluck 0 he says:
[6] As mentioned, Hasluck 0 is included in the evidence before me as Annexure AH-15 to Hasluck 1.
3. I originally established my company in February 1999 to provide an integrated communications agency that could provide a service to clients that would enable them to get strategy and full implementation from a single company. This would enable them to get their public relations, marketing and branding strategy devised by my company and then implemented through media, graphic/visual design and the then emerging area of websites and the internet.
…
5. Over time as both the market and technology improved, my company were early adopters of various technology pieces and expanded our service offerings to customers. In particular, whilst I note that social media was not known, or at least if known was not common, in 1999, my company certainly adopted such services once they became important to business.
6. Accordingly, whilst I cannot say that all the services listed in my [sic] application were provided from the inception of my company, I believe that they were adopted upon them becoming relevant.
7. I believe however that upon inception of my company, my company was providing at least the following services:
Public relations agency services including provision of services in relation to media relations, media training, stakeholder engagement, community engagement, strategy, investor relations, issues management, crisis management, crisis communications, crisis training, crisis media training, crisis simulations, marketing communications, event management, event promotion, writing, copywriting, editing; brand consultancy and brand creation services; brand positioning; brand strategy; event marketing services; marketing and advertising; public relations, marketing and advertising consulting services including services in the media industry; business management and advisory services relating to public relations, marketing communications, advertising and marketing; Graphic design services including design of corporate identity, brand management, print design, publication design, publication layout, stationery, advertising, and packaging; design of signage including interior and exterior signage; digital web design services including web page design services; design and provision of content management systems, services and advice; electronic desktop publishing services; posting web sites of others on a computer server for a global computer network.
[“the 1999 Services”]
8. Over time, the CLARITY logo adopted by my company has changed as is common in the industry. However, the key element has always been the word CLARITY.

I note that the last issue mentioned by Mr Hasluck, that over time “the CLARITY logo adopted by my company has changed,” formed a large part of Mr Robb’s submissions, who questioned whether the “logo” trade marks the Applicant was apparently using during the relevant times were sufficiently similar to the Opposed Mark for that use to be taken into account. While there may be some merit in this objection, I have nevertheless not found it necessary to address it in this decision.
Dealing now with what I have defined as “the 1999 Services,” these are obviously much narrower than the Designated Services themselves. Relevantly to the opposition, Mr Hasluck does not claim the Applicant used the Opposed Mark from the day it was incorporated on 12 February 1999 for those of the Designated Services set out below (“the post-1999 Services”), where I have again underlined any of the Opposed s 44/s 58 Services:
Class 35: lobbying, facilitation, business research, surveys; brand testing; media management and analysis services; market research; social media services including social media analysis, and design and development of social media campaigns; search engine optimization services and advice
Class 41: coaching, corporate coaching, executive coaching
Class 42: hosting of internet access services; hosting of secure Internet services; hosting of content management systems, email distribution systems, media email systems; website hosting and maintenance services; computer and software programming services including application development, app development; software development including customised application development; design of web pages for the Internet; social media services
In other words, in Hasluck 0 the Applicant does not in fact claim use of the Opposed Mark since 1999 for any of the Opposed s 44/s 58 Services other than the following:
digital web design services including web page design services;
design of content management systems; and
posting web sites of others on a computer server for a global computer network
Mr Hasluck does not however say when the Applicant may have commenced use of the Opposed Mark for any of the post-1999 Services other than to say, “I believe that they were adopted upon them becoming relevant.”
As Mr Robb also highlighted, the exhibits to Hasluck 0 do not show early, or indeed significant, use of the Opposed Mark for any services relevant to the opposition. Of the 14 exhibits, Exhibits AH-1 to AH-4 do not purport to address the issue of use, the documentation forming Exhibits AH-5, AH-6, AH-8, AH-9, AH-10, AH-12 and AH-14 is dated many years after the s 44 Date and the documentation forming Exhibits AH-11 and AH-13 is undated. As Mr Robb observed, the material does not in any event, in the main, show significant use of the Opposed Mark for any particular service. Indeed much of the use shown is of the word “Clarity” being used as shorthand for the Applicant’s full company name. Nor is it possible to say from these exhibits when use for any particular service may have commenced, nor whether such use was thereafter continuous.
The sole exhibit to Hasluck 0 which might in principle show relevant, early use is Exhibit AH-7, of which Mr Hasluck says:
14. Attached as EXHIBIT AH-7 is a copy of one of my company’s original corporate profiles which prominently uses my company’s CLARITY trade mark. This profile was first distributed around 2000.
The s 44 Date is, as mentioned, 26 June 2000. It is accordingly impossible to say whether this is trumped, as it were, by the Applicant’s activity “around 2000.” Moreover, the fact that there is only one such company profile exhibited says nothing about whether any use disclosed continued in the 15 years leading up to the Relevant Date.
I note for the record that, as with his criticisms of all of the exhibits to Hasluck 0 apparently intended to support the Applicant’s use claims, Mr Robb had several other reasonable objections to the significance, probative value or cogency of Exhibit AH-7 as far as its supporting acceptance based on s 44(4) (or s 44(3)(a) for that matter) is concerned, but which it is unnecessary to discuss here. Nothing in Hasluck 0 in any event satisfies me that the Applicant continuously used the Opposed Mark for any of the Opposed s 44/s 58 Services, or for relevantly similar services, from before the s 44 Date.
The balance of the Applicant’s evidence does not in my view assist its case either. Hasluck 1 is the principal declaration, which Mr Hasluck describes as a “further declaration to supplement the details I made in [Hasluck 0].” Unlike Hasluck 0, Hasluck 1 does attempt to identify the particular services for which use is claimed (albeit “in broad terms”, as Mr Hasluck puts it) and to specify the year in which Mr Hasluck says the Applicant first offered them. These claims are apparently supported by a range of annexed material but, once again, none of the annexed material in fact pre-dates the s 44 Date. Indeed the majority of the small number of invoices annexed to Hasluck 1 were issued more than 10 years after the s 44 Date and none of the other annexed documentation indicates when use of the Opposed Mark for any particular service commenced. Nor, taken as a whole, is the annexed material sufficient for me to infer that any relevant use has been continuous. Again, Mr Robb submitted that the annexures were problematic for additional reasons, but it is not necessary to discuss these here.
That said, Mr Hasluck describes the services for which the Applicant claims use of the Opposed Mark from before the s 44 Date as follows:
Digital web design services, which my company has provided since at least 1999,[7] including the branding and design of a wide range of templates, now including mobile responsive, that represent our clients businesses and utilise a specific content management system, primarily Umbraco or Wordpress. Designs are based on detailed scope documents, sitemaps and wireframes prepared and developed by my company in collaboration with our clients. Designs represent client brands, many created by Clarity. Our digital web design services include logo and digital brand strategy and application, user experience design, animation and video, infographics, interactivity design, photography, digital style guides, social media integration and campaign design, digital content layout and website architecture design. Attached as Annexure “AH-21” are sample invoices to clients for web design services.
[7] I note that the words “since at least 1999” are nonsensical in this context given the Applicant was only incorporated in that year.
[Annexure AH-21 consists of seven invoices issued by the Applicant for “website” related services, dated from 6 August 2008 to February 2013.]
Business research and surveys, which my company has provided since at least 1999, including qualitative surveys comprising the establishment of workshops or one-on-one interviews in person or via telephone to establish the perception of our clients among their stakeholders, including groups such as employees, customers, Governments, industry associations, media and others. Quantitative survey methodologies used include Omnibus phone surveys, email surveys to stakeholder lists and surveys to agreed digital survey groups provided by third party survey firms. Both qualitative and quantitative surveys are undertaken using sets of questions developed with clients in order to establish information about a range of areas where they seek insights. Survey reports are provided in a variety of formats and presentations to clients depending on the project. Attached as Annexure “AH-23” are sample invoices to clients relating to survey services.
[Annexure AH-23 consists of four invoices issued by the Applicant for “community surveys” (2), an “employee survey” and for “brand research,” dated from 16 December 2011 to 15 May 2015.]
Public relations agency services, which my company has provided since at least 1999. Attached as Annexure “AH-24” is a sample demonstrating these services.
[None of the annexed documentation predates 2009.]
Branding strategy, consultancy and creation services, which my company has provided since at least 1999. Attached as Annexure “AH-25” are example projects providing these services.
[None of the annexed four documents predates 2012.]
Market research services, which my company has provided since at least 1999. Attached as Annexure “AH-26” is a sample invoice relating to research on community perceptions.
[The sole document annexed is undated.]
Event marketing services, which my company has provided since at least 1999. Attached as Annexure “AH-27” are examples of this service.
[The sole document annexed is dated “2016”.]
Graphic design services, which my company has provided since at least 1999. Attached as Annexure “AH-28” is an example of our graphic design services.
[None of the annexed five documents predates 2009.]
All of Mr Hasluck’s further testimony at paragraphs 13 to 32 of Hasluck 1 relates to matters which occurred well after the s 44 Date. Moreover, the activity Mr Hasluck there describes and the material he annexes in support, (concerning such things as awards received, membership of various industry associations, sponsorships provided and the like), is in the main not sufficiently related to any specific service as to be significant as far as s 44(4) (or s 44(3)(a)) is concerned.
I note that Mr Hasluck does provide on a confidential basis “a table setting out [the Applicant’s] income/turnover information from 2002 through to 2016.” Again, the s 44 Date is 26 June 2000 and Mr Hasluck does not say why income or turnover information prior to the s 44 Date is not provided. It is in any event impossible to say from the table what “income/turnover” (if any) was generated by any particular service.
Mr Hasluck also says that neither he nor his fellow Directors are aware of any instances of confusion between the services provided by the Applicant under the Opposed Mark and those of the Opponent. In this context he annexes without comment an extract from the Australian Business Register maintained by the Federal Government, which Mr Fong highlighted at the hearing indicates the Opponent has not been registered for GST purposes since 29 June 2001 and accordingly may not have been trading at all since then. It is important to emphasise, however, that whether or not the Opponent was trading is not relevant as far as s 44(4) is concerned[8] since the owner of a registered trade mark is entitled to rely on its registration regardless. It is the notional use the Opponent might fairly make for the goods and services specified in its registration, (or its potential registration in the case of the Applicant), with which I must be concerned for s 44 purposes, not what the parties may have actually done in the past. Nor is the absence of evidence of confusion significant in this case given there is little evidence before me as to the extent to which the parties may have used their trade mark for any goods or services in particular, let alone for closely related goods or similar services.
[8] Although it may be relevant to s 44(3)(a). See L’Amy Trade Mark [1983] RPC 137, where the UK Registrar held that a finding of honest concurrent use could not be made unless the parties’ trade marks were in fact used concurrently.
Mr Hasluck concludes Hasluck 1 as follows:
35. Attached as Annexure “AH-46” [reproduced below] is a list of the [Opposed s 44/s 58 Services] and a date by which we were already providing that service. I have provided in this declaration and in my earlier declaration examples of that use.
36. Aside from the services highlighted by Mr Robb [that is, the Opposed s 44/s 58 Services] I reiterate that all the remaining services in my [sic] trade mark application have been offered by my company since 1999.
For s 44(4) purposes only the services in the above list said to have been “provided since at least 1999” are relevant. In principle, of course, these should be the same as what I have called “the 1999 Services” (set out in Hasluck 0 at [7], quoted at paragraph 19 above) and with the information Mr Hasluck provided earlier in Hasluck 1 (at [12], quoted at paragraph 29 above). In fact the three claims all differ slightly.
Importantly as far as s 44(4) is concerned, whereas use “since at least 1999” is claimed in Hasluck 1 in relation to the items “business research” and “surveys,” such use was not claimed in the 1999 Services listed in Hasluck 0. Likewise early use is claimed in the above list for the services “hosting of internet access services,” “hosting of secure Internet services” and “website hosting and maintenance services.” However use for such services was neither claimed in Hasluck 0, nor was it claimed at [12] of Hasluck 1 wherein Mr Hasluck purported to set out “in broad terms” the services the Applicant has provided “since at least 1999” under the Opposed Mark.
If there is a reason why Hasluck 1 claims broader use for relevant services before the s 44 Date than did Hasluck 0 Mr Hasluck does not provide it. One might speculate that relevant early invoices or other documentation had been located between the making of the two declarations which prompted the broader claim, but no such material is annexed to Hasluck 1. All I have before me is Mr Hasluck’s statement quoted above that, “I have provided in this declaration and in my earlier declaration examples of that use” and, as discussed, none of the material accompanying either declaration in fact evidences any relevant use before the s 44 Date.
The remaining seven declarations making up the Applicant’s evidence in answer (“the third party declarations”) are from individuals in Perth (5), Fremantle (1) and the ACT (1) whose employers have used the Applicant’s services. All are brief and in a similar format, with the declarants generally stating how long they have known of the Applicant, providing some information on the services provided and indicating that they are not aware of “any other company called Clarity.”
None of the seven declarations assists the Applicant’s s 44(4) case in my view. Crust, Bolt, Francke and Walton are not relevant because the declarants have only been aware of the Applicant at all since 2005, 2009, 2005 and 2007 respectively.
In the case of Prior and Leonard, declared on 20 and 22 February 2017 respectively, both declarants say they “have known Clarity for 17 years.” They both identify certain services provided to their employers by the Applicant but they do not say when any of these services were actually supplied and it is accordingly impossible to know whether any relevant service was provided before the s 44 Date in June 2000.
The last of the third party declarations is by Tania Hudson who says:
4. I am well aware of Clarity and have known them for almost 20 years.
5. I first engaged Clarity when I was Communications Manager for Hamersley Iron in 1998-1999. I continued to engage their services for many years including when Hamersley Iron became Rio Tinto Iron Ore.
6. I consider that Clarity is an all-encompassing communications company that offers a full spectrum of services, including design, branding, writing, media, government and investor relations, social media, stakeholder engagement and management, project management, internal communications, research and digital projects.
7. Clarity are very well known and widely respected as being one of Western Australia’s best communications firms.
8. I know that Clarity are based on Rokeby Road in Subiaco, and have never heard of any other companies with the name Clarity.
Hudson was made on 22 February 2017. Given the Applicant was only incorporated on 12 February 1999 I firstly note Ms Hudson could not therefore have known of it before then. More significantly as far as supporting acceptance based on s 44(4) is concerned, she does not identify any services that the Applicant may have provided before the s 44 Date.
In summary then, the Applicant does not claim to have used the Opposed Mark for any of the Opposed s 44/s 58 Services before the s 44 Date other than those I mentioned in paragraph 22 (based on Hasluck 0) or the additional services claimed (without explanation) in Hasluck 1 which I identified in paragraph 35. Although Mr Hasluck says the Applicant has used the Opposed Mark “since at least 1999” for these particular services, there is no corroborating evidence before me to support the claim. What scant documentation is before me by way of invoices is either undated or is dated well after the s 44 Date and it is in any event insufficient for me to infer that use was continuous throughout the 15 years between the s 44 Date and the Relevant Date. I am accordingly not satisfied that the Applicant has continuously used the Opposed Mark since before the s 44 Date for any of the Opposed s 44/s 58 Services and I do not consider it is able to rely on s 44(4) in this case.
Having so found I note it is not necessary to consider the Opponent’s s 58A ground.
Section 44(3)(a) and Honest Concurrent Use
Section 44(2) is also subject to s 44(3)(a), a discretionary provision, which provides that “the Registrar may accept the application…subject to any conditions or limitations that the Registrar thinks fit to impose” if “satisfied that there has been honest concurrent use of the 2 trade marks.” In the event that I were to find against the Applicant under ss 44(2) and (4), Mr Fong submitted it would be appropriate to apply s 44(3)(a) in the Applicant’s favour in this case.
Distilled from relevant case law over the years,[9] Part 28 of IP Australia’s Office Manual of Practice and Procedure contains guidelines which are intended to assist trade marks examiners and others assess whether application of s 44(3)(a) is appropriate in a particular case. Those guidelines indicate that five main criteria should be considered, being:
(1) The degree of confusion likely between the trade marks in question;
(2) Whether instances of confusion have in fact occurred;
(3) The honesty or otherwise of the concurrent use;
(4) The extent of use in duration, area and volume; and
(5) The relative inconvenience that would be caused to the respective parties if the applicant’s mark should be registered.
[9] Based on the decisions of the House of Lords in Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147 and of the UK Assistant Comptroller in John Fitton & Co Ltd’s Application (1949) 66 RPC 110.
Mr Robb addressed each of these matters in his submissions, questioning in particular the Applicant’s claims that it was unaware of the Opponent before the Relevant Date and that it had consistently used the Opposed Mark as applied for over the years (as opposed to stylised and/or composite marks featuring the word “clarity”). Again, I do not think it is necessary to address these particular objections in this decision since I am in any event not satisfied on the evidence before me that the Applicant’s claimed use of the Opposed Mark for any of the Opposed s 44/s 58 Services has been sufficient to invoke s 44(3)(a).
As regards possibly relevant use Mr Fong submitted:
[Hasluck 1] provides a vast number of examples showing the CLARITY trade mark in use since 1999, including awards that have been won. Also included is Confidential Annexure AH-32 that sets out the significant revenue made by the Applicant from its services provided under the CLARITY mark each year since 2002
…
Referring to Exhibits AH-30 and AH-31, the consistent and prolonged use of the CLARITY trade mark by the Applicant has been evidenced.
The Delegate is left with no doubt that the Applicant has significantly used and promoted the CLARITY trade mark for many years.
As foreshadowed in my above discussion in relation to s 44(4), the revenue figures mentioned by Mr Fong do not assist the Applicant because they only relate to the Applicant’s total revenue for the years indicated and do not identify any particular service that may have contributed to that revenue. Nor, for the same reason, do the various awards won by the Applicant assist its case.

Exhibit AH-30 consists of printouts from the Opponent’s website at the time Hasluck 1 was declared (being more than 16 months after the Relevant Date) and do not specifically refer to any of the Opposed s 44/s 58 Services.
Exhibit AH-31 consists of historical printouts[10] from the Opponent’s website, being a single page only from the website for each of the years 2001, 2007, 2009, 2011, 2012, 2013, 2014, 2015 and 2016 and two pages from 2004. Again, none of these pages specifically refers to any of the Opposed s 44/s 58 Services. Nor is there any information before me as to how many potential consumers of the Applicant’s services may have viewed the website over the years.
[10] Obtained using the website <archive.org>.
That aside, neither Hasluck 0 nor Hasluck 1 provides any significant information as to how, or to what extent, the Applicant may otherwise have advertised or promoted any of its services and there are no figures provided for the amounts possibly spent on such activities.
Given that the parties’ marks are essentially identical and given the close similarity between the Opposed s 44/s 58 Services and certain of the goods and services covered by the Opponent’s registration 840268, the risk of confusion amongst potential consumers is on the face of it significant. In such circumstances and based on the evidence before me it would not in my view be appropriate to apply s 44(3)(a) in this case.
Section 58
Section 58 of the Act is reproduced below:
Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
The ground based on s 58 is indicated in the SGP as follows:
Applicant not the owner of the [Opposed Mark] – Section 58
TM 840268, and domain clarity.com.au both have first use before [the Relevant Date]. The trade mark has been used in relation to overlapping and identical goods and services including, but not limited to application and web site development, provision of Internet hosting and management as well as related activities including training, design, search engine optimization, Internet marketing, social media, surveys, customer relationship and electronic communications management, including communication plans, marketing and business research/intelligence.
Given the Opponent has established its s 44 ground in relation to the s 44/s 58 Services its s 58 ground is, I note, effectively redundant. Nevertheless for the sake of completeness I will address it briefly.
While the word “owner” is not defined in the Act, there are numerous decisions where courts have considered its meaning.[11] It is well established that the owner of a trade mark in Australia for particular goods or services is taken to be either (1) the first person[12] to use the mark (or a substantially identical mark)[13] in the course of trade in Australia in relation to those goods or services (or goods or services considered to be “the same kind of thing”),[14] or (2) the first person to apply to register it for such goods or services, whichever is the earlier.
[11] Prior to commencement of the Act on 1 January 1996 the words “proprietor” and “proprietorship” were used in legislation and relevant case law rather than the currently used words “owner” and “ownership”, but with no difference in meaning.
[12] Which s 6 of the Act indicates “includes a body of persons, whether incorporated or not”.
[13] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414; (1963) 1B IPR 523 at 528; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375.
[14] Seven Up Co v OT Ltd (1947) 75 CLR 203; Re Hicks’ Trade Mark (1897) 22 VLR 636.
In the present matter the Opponent apparently relies on its use of the Clarity mark subject of its registration 840268. As mentioned, I accept the Opposed Mark is substantially identical with the Opponent’s registered mark. There is however insufficient evidence before me from the Opponent concerning its early use of the Clarity trade mark in relation to any particular services for me to decide the s 58 ground on this basis. Indeed, the Opponent’s use claims suffer from the same deficiency as do those of the Applicant discussed earlier. In particular, whereas at paragraph 9 of Robb 1 Mr Robb claims use of the Clarity mark “since at least 1998” for the services mentioned in the SGP, the claim is not in my view adequately supported by any of the documentation exhibited with either of his two declarations.
In this regard the documentation exhibited with Robb 1 which is said to support the claim is contained in Exhibits EX3 and EX4. Exhibit EX3 consists of six pages downloaded from the Opponent’s website on 23 August 2016, being well after the Relevant Date. For its part, Exhibit EX4 is said to comprise “acknowledgment in two scientific papers recently published in peer reviewed journals.” In fact the first pages of three such papers (dated March 2011, October 2011 and November 2014) are exhibited, the acknowledgments to which Mr Robb refers being, respectively:
The authors thank Doug Robb of Clarity Software for development of the online questionnaire;
We are grateful to the women who participated in the original study and Mr Doug Robb, Clarity Software, for assistance with the internet-based services; [and]
We thank Doug Robb Clarity Software, for assistance with on-line survey development and internet services.
While these acknowledgments refer to an abbreviated form of the Opponent’s company name, in my estimation none is sufficient for me to determine that it had used Clarity as a trade mark for the specific services mentioned in the SGP.
The Opponent’s claimed early use of Clarity as a trade mark in Robb 2 is similarly insufficiently supported. There Mr Robb relies on the following four things as evidence of its early use for relevant services:
(a) that the Opponent had changed its company name in 1992 to one incorporating the word “Clarity” (that is, to its current name);
(b) that in successfully defending its then pending application (now registration) 840268 in 2005/2006 in an opposition brought by a third party (unrelated to the Applicant) the Hearing Officer concerned had “noted in Section 42 of his determination that he was satisfied that the Opponent had prior continuous use of the Opponent’s Clarity Mark from 1992;”
(c) that the “Opponent has advertised its services worldwide by means of its web site at since 1998” (and before that, from 1996, via its web site at This is said to be shown by Exhibit DR-2, which consists of emails from domain name brokers confirming the registration dates of the two domain names; and
(d) that the Opponent had “continued maintenance and registration of the Opponent’s Clarity Mark on the Australian Trade Marks register.”
Neither the Opponent’s trade mark registration nor its registered company or domain names in fact shed any light on whether Clarity was ever used as a trade mark for any specific service. As to the Hearing Officer’s observation in the earlier opposition, neither does this specify any particular service for which the Opponent had used the Clarity mark and whatever evidence of possibly relevant use may have been before the tribunal more than 10 years ago is not in evidence before me (or the Applicant) in the present proceedings.
That, however, is not the end of the enquiry as far as the s 58 ground is concerned, since the Opponent might still succeed on the basis that it applied to register the Clarity mark for relevant services prior to the Applicant’s first use of the Opposed Mark for the Opposed s 44/s 58 Services. Registration 840268 was of course filed on 26 June 2000 and I am satisfied it covers services the same as, or of the same kind as, the Opposed s 44/s 58 Services. As I concluded earlier when discussing the s 44 ground of opposition, based on the evidence before me I cannot however be satisfied that the Applicant used the Opposed Mark for any particular services before 26 June 2000.
The Opponent has accordingly established its s 58 ground.
Section 60
Section 60 of the Act 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.
Note: For priority date see section 12.
The ground based on s 60 is indicated in the SGP as follows:
1. TM 840268, first use before priority date of the opposed application. Substantial overlap of services in class 42 and class 35 and goods in Class 9 protected by the existing Trade Mark.
2. Clarity Communications Australia Pty Ltd first use before priority date of opposed application. This company has long standing reputation in regards to public relations and corporate communications, communication strategy, media, social media writing, editing and training and other conflicting services.
The Opponent, then, has nominated two different trade marks upon which its s 60 ground is based, the first being the mark subject of its registration 840268 and the second being an unregistered mark apparently used by an unrelated third party named Clarity Communications Australia Pty Ltd (“CCA”). These are discussed separately below.
To successfully rely on s 60 the Opponent must, as a threshold issue, firstly establish through its evidence that the earlier trade mark relied upon had acquired a “reputation” as at the Relevant Date. In this regard, as the authors of Shanahan put it, s 60 “envisages some substantial likelihood of deception or confusion and thus more than a minimal reputation for the prior mark.”[15] The following observation by the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd is also pertinent here:[16]
The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193.
[15] Shanahan’s Australian Law of Trade Marks and Passing Off, 4^th ed, at [50.2400].
[16] (2003) 59 IPR 619 at [25].
As far as establishing reputation is concerned, Kenny J said the following in McCormick & Co Inc v McCormick:[17]
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[17] (2002) 51 IPR 102 at [86].
In the case of the Opponent’s Mark, there is virtually no evidence before me upon which I might assess the mark’s reputation. Although Mr Robb claims in his two declarations that the Applicant has continuously used the mark over many years, he has provided no information as to how any goods or services provided under the mark may have been advertised or promoted other than to exhibit six pages from the Opponent’s website which were downloaded well after the Relevant Date. As to the website itself, I am unable to say to what extent this may have been visited by potential consumers of the Opponent’s goods or services over the years because Mr Robb does not provide this information. Nor does he provide any indication of the amounts possibly spent over the years on advertising or promotion of the Opponent’s goods or services, or of any revenue generated through their sale. Essentially all I have before me is Mr Robb’s unsupported claim in Robb 1 that:
As a result of sales, advertising and marketing activities [the Opponent] has established a reputation in the CLARITY Trade Mark in Australia in relation to applications and services it provides. Furthermore as a result of these activities and the continued use of the domain name clarity.com.au since 1998 I believe that the trade mark CLARITY has come to be recognized in the industry, trade and public in Australia as distinguishing the goods and services of [the Opponent].
Insofar as it is based on the claimed reputation of the Opponent’s Mark, accordingly, the Opponent has not established its s 60 ground.
As for any relevant reputation CCA’s unregistered mark might have, here too there is insufficient evidence to assess whether this might enliven the Opponent’s s 60 ground. The sole reference to CCA in evidence is contained in Robb 1, where Mr Robb says:
The Opposed Mark is substantially identical with or deceptively similar to unregistered Australian Trade Marks in relation to similar services and closely related goods (the “Unregistered Marks”). The Unregistered Marks have been used and acquired goodwill and reputation in Australia prior [to the Relevant Date]. For example, Clarity Communications Australia Pty Ltd (which is not related to [the Applicant]), has used the Opposed Mark for activities that do not overlap the [Opponent’s Mark] but would additionally overlap the Opposed Mark. See Exhibit “EX5”.
Exhibit 5 to Robb 1 consists of six pages downloaded from the website <claritycomms.com.au> on 23 August 2016, again well after the Relevant Date, on which Mr Robb has highlighted occurrences of the word “clarity.” The word appears in the URL, in a quote apparently from the philosopher Confucius (“In language clarity is everything”), in CCA’s full company name and in abbreviations of CCA’s full name. Whether any of this amounts to use as a trade mark is at best arguable but, be that as it may, the information provided in Robb 1 is in any event manifestly inadequate to assess the claimed mark’s reputation for s 60 purposes.
To conclude, on the evidence before me I am not satisfied either of the marks nominated in the SGP had sufficient reputation in Australia as at the Relevant Date to enliven the Opponent’s s 60 ground.
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.
Note: For limitations see section 6.
I have found that the Opponent has established its s 44(2) ground in relation to the Opposed s 44/s 58 Services and that the Applicant has not made out a case for application of s 44(3)(a) or s 44(4). I have also found that the Opponent has established its s 58 ground in relation to the Opposed s 44/s 58 Services. My decision is accordingly to amend the application to delete the Opposed s 44/s 58 Services. For the avoidance of doubt I note that such amendment would leave the application covering:
Class 35: Public relations agency services including provision of services in relation to media relations, stakeholder engagement, community engagement, strategy, investor relations, issues management, crisis management, crisis communications, marketing communications, event management, event promotion, lobbying, facilitation, brand consultancy and brand creation services; brand positioning; brand testing; brand strategy; event marketing services; marketing and advertising media management and analysis services; public relations, marketing and advertising consulting services including services in the media industry; market research; business management and advisory services relating to public relations, marketing communications, advertising and marketing; social media services including social media analysis, and design and development of social media campaigns
Class 41: Provision of services in relation to media training, crisis training, crisis media training, crisis simulations, writing, copywriting, editing, coaching, corporate coaching, executive coaching, electronic desktop publishing
Class 42: Graphic design services including design of corporate identity, brand management, print design, publication design, publication layout, interior space graphics, stationery, advertising, and packaging; design of signage including interior and exterior signage
The opposed application will be amended as indicated one month from the date of this decision. If, however, the Registrar has been served with a notice of appeal before then the amendment will not be made and in that case I direct that the disposition of the application be in accordance with the Court’s direction or order.
Costs
As each party has been partially successful, I make no award of costs.
Michael Kirov
Hearing Officer
Trade Marks Hearings
26 March 2018

[2018] ATMO 40

26 March 2018

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Intention

Remedies

Statutory Construction

Costs