Clive J Smith v Capital Insurance (Broking) Group Pty Ltd

[2009] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Clive J Smith to registration of trade mark application 1152390(36) - HERVEY BAY INSURANCE & DEVICE - filed in the name of Capital Insurance (Broking) Group Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: did not appear

Applicant: Victoria Northam of Pointon Partners Lawyers & Trade Mark Attorneys

Decision:

2009 ATMO 66

Section 52 opposition: sections 41, 43, 59 and 62A not established, registration proceeding. Costs awarded against opponent

Background

1. Capital Insurance (Broking) Group Pty Ltd (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No: 1152390

Priority Date:                   15 December 2006

Services:Class 36: Advice relating to insurance; advisory services relating to insurance claims; arranging of insurance; brokerage advisory services relating to insurance; brokerage of insurance; claims and administration services and providing information in respect of insurance and financial services; consultancy services relating to insurance; financial affairs; insurance advice; insurance brokerage; insurance brokering; insurance broking; insurance services; insurance; monetary affairs

Trade Mark:  

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 26 April 2007.

2. On 24 July 2007, Clive J Smith (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Marks Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The following evidence has been served and filed in respect of the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Clive John Smith	Opponent	10.10.07, Smith	Annexure A, Exhibits A to K
Evidence in Answer
Andrew Stevens	Director of Applicant	23.01.08, Stevens	Annexures CIB-1 to CIB18

1. The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne on 28 May 2009.  The opponent did not attend nor file submissions. The applicant was represented by Victoria Northam of Pointon Partners Lawyers & Trade Mark Attorneys.

2. The Notice of Opposition cited grounds of opposition under sections 59, 41, 43 and 62A. Each ground was pressed by the opponent in Annexure A to Smith, which was, in effect, the submission of the opponent.

Discussion

1. The opponent carries on an insurance business in Hervey Bay, Queensland. He has traded under the business name “Hervey Bay Insurance” from 25 October 2006. The business name is registered under Queensland legislation.

2. Prior to registering the “Hervey Bay Insurance” business name in 2006, the opponent traded as Pialba Financial Services

3. The opponent does not appear to have any trade mark registrations. However, in its evidence in support, the opponent exhibits a number of examples of stationery and advertising materials that display a life-buoy device accompanying its business name.

4. The applicant purchased the business “Hervey Bay Insurance Brokers” in 1986. That business had been trading in the Hervey Bay region since 1974. In Stevens, it is declared that the business had used the device element of the applied for mark since 1974 along with the trading name.

5. The applicant’s trading name was amended to “Hervey Bay-Maryborough Insurance Brokers” in 1986 to reflect the creation of a branch office in Maryborough. Stevens, at Annexure CIB15, shows signage and stationery displaying the device element along with the amended trading name.

6. Stevens declares that the applicant closed its Maryborough branch in 2006 to concentrate on the Hervey Bay region and applied for registration of its trade mark including the words HERVEY BAY INSURANCE.

Grounds of Opposition

Ground 1 - Applicant not intending to use trade mark

1. Section 59 of the Act provides:

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

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

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

   Note:  For applicant see section 6.

2. In Annexure A to Jones, the opponent submits that the applicant has never used the business name “Hervey Bay Insurance” and that the application post-dates the opponent’s registration of its business name. The opponent asserts that the applicant is attempting to use trade mark registration to prevent the opponent using its business name.

3. The applicant submitted that the application demonstrates a prima facie intention to use the mark. Additionally, it has used the device element of the mark since 1974 and the applicant’s predecessor in title used “Hervey Bay Insurance Brokers” along with the device since 1974, albeit with addition of “Maryborough” between 1986 and 2006.

4. I am not satisfied that the opponent has established this ground. The evidence of the applicant goes further than the prima facie intention established by the application.

Ground 2 - Trade mark not distinguishing applicant's goods or services

1. Section 41 of the Act provides:

   41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:  For applicant and predecessor in title see section 6.

   Note 2:  If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:  For goods of a person and services of a person see section 6.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

2. The opponent submitted that the applicant’s mark could not distinguish its services because it contained descriptive terms – firstly the geographical locality of the business and, secondly, the business itself.

3. The applicant submitted that, in fact, the mark had been distinguishing the applicant’s services for a long time. The descriptive word elements of the mark did not necessarily deprive other traders of using them in the proper course of business.

4. Section 41 of the Act provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods or services through its use in trade.[1]

   [1] Blount Inc v Registrar of Trade Marks [1998] 440 FCA

5. It is usual to commence assessment of the trade mark against section 41(3) of the Act and first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

6. In Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511, at 513 Windeyer J observed:

   That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd. ((1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. (30 RPC 216 at 227); but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

7. While there are descriptive elements in the applicant’s mark, the device element is quite distinctive such that the trade mark, taken as a whole, serves to distinguish the applicant’s services. Furthermore, there is evidence showing that the device element has so distinguished the applicant’s services over a long period of time.

8. I am not satisfied that the ground of opposition under section 41 has been established.

Ground 3 - Trade mark likely to deceive or cause confusion

1. Section 43 of the Act states:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The opponent submitted that because the applicant’s mark was virtually identical to his business name, it would both deceive and cause confusion.

3. The applicant submitted that it was the opponent’s adoption of the trade mark’s words as a business name that would cause confusion and deception.

4. In order to establish this ground there must be some connotation inherent in the opposed marks such that their use was likely to deceive or cause confusion.  In the words of Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [53]:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s43 is a similar purpose to that lying behind ss52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…

5. In this case there is no secondary meaning or connotation that is involved in any deception or confusion. I am not satisfied that this ground is made out.

Ground 4 - Application made in bad faith

1. Section 62A of the Act provides:

   62A. The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The opponent submitted that the applicant’s primary motivation in applying to register the mark was to prevent the opponent from using its business name.

3. The applicant submitted that the applicant’s intention was to prevent confusion in the region caused by the opponent’s adoption of a name synonymous with the applicant.

4. In a recent Trade Marks Office decision relating to the section 62A ground: Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26 (1 April 2009), Hearing Officer Nancarrow found that the section 62A ground had been made out where an applicant sought registration of trade marks that were deceptively similar to business names of the vendor of a business the applicant had purchased. The contract of sale expressly reserved for the vendor intellectual property rights in the relevant business names.

5. Hearing Officer Nancarrow stated (at paragraph 11):

   For an assessment of ‘bad faith’ as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application.

6. In this case, although at first blush it would seem that the applicant has adopted the opponent’s business name, a further examination of the evidence suggests the opposite. I am satisfied that the applicant has been using the device element of its mark for many years and has identified itself with the region for a similar length of time.

7. I am not satisfied that the application was made in bad faith.

Decision

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)        to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or

   limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. I find that none of the grounds of opposition have been established.

3. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that decision.

Costs

1. The applicant sought costs. I award costs against the opponent pursuant to the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 August 2009