CMA Corporation Ltd v CMA CGM
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CMA CGM (Societe Anonyme a Directoire) to registration of trade mark application 1085059 (6, 19, 35, 37, 38, 39, 40, 42) - CMA and wavy stripes device - filed in the name of CMA Corporation Ltd and Opposition by CMA Corporation Ltd to registration of trade mark application 1203713 (35, 37, 39) (International Registration number 937029) - CMA CGM ADVANCED SHIPPING - filed in the name of CMA CGM.
Delegate: Claudia Murray Representation: Opponent 1085059 (and holder 1203713): Not represented at hearing.
Applicant 1085059 (and opponent 1203713): Ms Siobhan Ryan of counsel, instructed by Ms Kerin Forstmantis of Norton Rose Australia.Decision: 2011 ATMO 95
1085059 - Section 52 opposition – sections 44 and 60 - opposition unsuccessful – application to proceed to registration - costs awarded against CMA CGM.
1203713 - Section 52 opposition - section 60 – opposition unsuccessful - IRDA to become protected for all services - costs awarded against CMA Corporation Ltd.Background
This is a decision relating to cross-oppositions between CMA CGM (Societe Anonyme a Directoire) and CMA Corporation Ltd. It is convenient to issue a single written opposition decision relating to both trade marks, numbered 1085059 and 1203713, as the evidence is virtually the same, and the matters were argued before me during a single hearing in Melbourne.
Trade mark application number 1085059 was filed by CMA Corporation Limited (‘CMA Corporation’) on 10 November 2005, for the trade mark:
The application as it now stands covers the following goods and services in classes 6, 19, 35, 37, 38, 39, 40 and 42 of the Nice Classification of Goods and Services:
Class 6: Scrap metal made from common metals and alloys of common metals; metal building materials, cables and wires of common metals, ironmongery, pipes and tubes of metal, goods of common metals
Class 19: Non-metallic building materials; scrap made from non-metallic materials
Class 35: Business management and administration; commercial or industrial management assistance; marketing and promotional services; all the foregoing services relating to demolition, recovery and processing of ferrous and non-ferrous material, the supply of recyclable materials and products, demolition, site clearance and remediation; exporting services (purchasing and exporting goods for others); import export agencies; supply of recyclable ferrous and non-ferrous materials and products; operation of Internet and e-commerce sales services featuring ferrous and non- ferrous materials and products; data-processing storage and retrieval services; demolition and construction management; project management; information and advisory services relating to the foregoing services; waste management
Class 37: Demolition; dredging; site clearance; construction, repair and maintenance services; installation services; project management relating to demolition; asbestos removal; consultancy, information and advisory services in relation to the foregoing services
Class 38: Communications by computer terminals; communications by computer networks and optic fibre networks; computer aided transmission of messages and images; electronic mail; message sending; data communications; provision of electronic communications facilities; electronic message storage and forwarding; computerised message transmission; communication services enabling the acquisition and supply of goods and services by electronic means, telephone, computer networks, e-mail, e-commerce or a worldwide computer network
Class 39: Removal and transportation of scrap metals; removal and transportation of waste; transport services including transport of goods; packaging and storage of goods; distribution services in this class
Class 40: Mechanical and chemical services for the treatment or transformation of substances; recovery, treatment and recycling of waste; recovery, treatment and recycling of waste metals; material treatment of scrap; recycling of scrap; custom manufacturing services; custom processing services
Class 42: Engineering services, including engineering design, engineering surveying, engineering drawing and construction engineering; engineering consulting; scientific and industrial research; technical research; construction planning; construction drafting; engineering project management; industrial design; professional, consultancy and technical services relating to the treatment, transformation, recycling and testing of metal products, building materials and scrap; materials testing; chemical research; chemistry services; computer programming; development, design, updating, modifying and maintenance of computer software; computer software and hardware advisory services; consultancy services in the fields of computer software and computer hardware; management and licensing of intellectual property
Grounds of rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. Two prior trade marks (unrelated to the present opposing parties) were cited, in terms of section 44, as barriers to the registration of the application in class 35. However, amendments were made to the services in that class, together with other amendments in response to classification formality issues raised by the examiner, and the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 June 2006.
French company CMA CGM (Societe Anonyme a Directoire) (‘CMA CGM’) filed notice of opposition to registration on 1 September 2006. Fourteen grounds of opposition were listed in the notice.
CMA CGM requested the extension to Australia of protection for International Registration Designating Australia (IRDA) number 937029. The IRDA’s Australian trade mark number is 1203713, and its (Convention) priority date is 21 May 2007. The trade mark is:
CMA CGM ADVANCED SHIPPING
The IRDA was filed in classes 35, 37 and 39 of the International (Nice) Classification of Goods and Services, in respect of the following services:
Class 35: Advertising; business management; business administration; distribution of leaflets and samples; newspaper subscription services for others; business consultancy, information or enquiries; document reproduction; computerised file management; organisation of exhibitions for commercial or advertising purposes; sales promotion for others; online advertising on a computer network; rental of advertising time on all means of communication; publication of publicity texts; rental of advertising space, dissemination of advertisements
Class 37: Fitting out, namely on-board installation of all equipment necessary for the respective type of navigation
Class 39: Stevedoring; boat transport; river transport; freighting; wrapping and packaging of goods; packing of goods; transit services; delivery of goods; parcel delivery; navigational services; storage of goods or containers; rental of storage containers; freight brokerage, transport brokerage; ship brokerage; transportation and storage information; loading and unloading of goods; storage of goods; international and multi-modal marine transport of containers, loading, unloading of ships, namely navigation and freight services; consignment of goods, warehousing of goods in preparation for their reservation or custody, inland haulage or other transport means; services for the transport of goods; transport of passengers by ship, boat, pleasure boat, reservation of seats for travel, escorting of travellers; arranging of cruises and sightseeing; travel arrangement; sightseeing (tourism); travel agencies (except for hotel and boarding house reservation); hire or rental of vehicles, taxi services; sightseeing (tourism); excursion organisation; services relating to the logistics of transporting goods and travellers; information relating to the transport of passengers and goods; information relating to travel.
No grounds of rejection under the Act were raised against the IRDA during examination. It was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 22 November 2007.
CMA Corporation filed notice of opposition to protection on 21 February 2008. Ten grounds of opposition were listed in the notice.
Evidence in support and answer was duly served and filed. On 7 September 2010, CMA Corporation requested that both oppositions be heard together. In due course I heard the matters, as a delegate of the Registrar of Trade Marks, on 10 March 2011 in Melbourne. Ms Siobhan Ryan of counsel, instructed by Ms Kerin Forstmantis of Norton Rose Australia, Melbourne, represented CMA Corporation. CMA CGM’s representatives, Shelston IP, did not attend the hearing or provide written submissions, but indicated that their client would rely upon the evidence it had served and filed.
Evidence
The opposition evidence in relation to trade mark number 1085059 comprises:
Evidence in Support
ØStatutory declaration of Graham Porter, with Annexure GP-1 to GP-7, dated 22 September 2008.
Evidence in Answer
ØStatutory declaration of Trevor Schmitt, with Exhibits TS-1 to TS-17, dated 10 March 2010.
The opposition evidence in relation to trade mark number 1203713 comprises:
Evidence in Support
ØStatutory declaration of Trevor Schmitt, with Exhibits TS-1 to TS-17, dated 11 March 2010.
Evidence in Answer
ØStatutory declaration of Nathan John Sinclair, with Annexure NJS-1, dated 13 July 2010 (Annexure NJS-1 being the 22 September 2008 statutory declaration of Graham Porter).
Mr Schmitt is CMA Corporation’s company secretary and Chief Financial Officer. He explains in his declaration that his company is ‘a vertically integrated Australian-based recycling group’. Mr Schmitt describes the company as one of three ‘first tier companies’ which dominate the Australian scrap metal recycling market. He says the group has three main divisions:
· CMA Recycling, which trades in, processes and recycles secondary ferrous and non-ferrous products
· CMA Contracting, which handles demolition and remediation services, such as resource sector plant decommissioning, industrial demolition, site clearance and remediation of sites to the mining and heavy industrial sectors
· CMA EcoCycle, which is a specialist recycler of mercury wastes.
Mr Schmitt further explains that:
In short, CMA helps to significantly reduce the waste of potentially useful materials through resale, reduce the consumption of finite raw materials, energy, and contribute to a better environment through responsible recycling. The type of waste that CMA recycles and processes includes:
(a) mercury and silver including energy efficient lighting (fluorescent tubes), dental amalgam, industrial wastes, silver oxide batteries and similar;
(b) copper, brass, aluminium, stainless steel, lead, batteries, white goods, radiators, generators, wire and cars; and
(c) asbestos.
CMA has expanded from its four original recycling sites in New South Wales to a current total of:
(a) 24 sites across Australia;
(b) 3 sites in New Zealand; and
(c) 5 sites throughout Papua New Guinea, Singapore, Malaysia and the United States.
CMA currently employs approximately 550 staff.
CMA's clients include many leading Australian and global mining and manufacturing businesses including Alcoa Australia, Anglo American, Amcor Fibre Packaging, BHP Biliton, Boral Energy, Capral, Caterpillar, CSBP Wesfarmers, Electrolux, GM, Jemena, John Holland, Manilda Group, Orica Chemicals, Queensland Power, Rio Tinto, Hammersely Iron, Toyota and X-strata.[1]
[1] Statutory declaration of Trevor Schmitt dated 11 March 2010, paras 17-20.
CMA Corporation’s company name and branding was chosen in March 2005 to represent the first letters of the names, Chung, Moltoni and Adams. These were the surnames of the original owners of the two long-standing companies which merged to form CMA Corporation. CMA Corporation has two pending Australian trade mark applications. The first, numbered 1085059, is one of the subjects of this decision and its details are shown above. Trade Mark number 1227813 (see below) has deferred status, as several prior trade marks owned by CMA CGM, including the International Registration at issue here, have been raised as a bar to its registration, in terms of section 44 of the Act. Mr Schmitt declares that the first use by CMA Corporation of the CMA ‘brand’, (that is to say, the letters by themselves) and also the CMA and ‘three waves’ (symbolizing the three founders) device trade mark shown above occurred shortly after the corporation’s establishment in early 2005. The ‘CMA green mark’ shown below was designed to represent ‘green, clean and responsible recycling’ and was first used in November 2007. The trade marks have been used to identify CMA Corporation’s goods and services in a wide variety of ways, both in Australia and in other countries where it operates, such as New Zealand, Papua New Guinea, Singapore, Malaysia and the US.[2]
[2] Ibid, paras 25-54.
TM No.
Trade Mark
Priority Date
Class of Goods/Services
1227813
5 March 2008
1, 6, 14, 19, 35, 37, 39, 40, 42, 45
Mr Sinclair’s declaration, filed and served in respect of trade mark number 1203713, annexes as NJS-1 a declaration by Mr Graham Porter dated 22 September 2008. Mr Porter is Financial Controller and Company Secretary of CMA CGM Australia Pty Ltd, part of the CMA CGM group of companies. His declaration was prepared in support of CMA CGM’s opposition to trade mark number 1085059.
Mr Sinclair summarises the history of the CMA CGM group, as set out in the Porter declaration, thus:
The Porter declaration states that CMA CGM was formed in 1989 by the merger of two French shipping companies, Maritime d'Affretement (CMA) and Compagnie Generale Maritime (CGM) and that both companies have lengthy histories around the world as global transportation carriers.
The Porter declaration states that the CMA CGM Group has grown to be the largest maritime transport organisation in France, the third largest worldwide, and serves maritime shipping routes around the world. Its services combine maritime shipping with rail, river and highway transport.
The Porter declaration states that as at 22 September 2008, the CMA CGM Group employed approximately 16,000 employees worldwide, and operated from 650 agencies and offices around the world. At September 2008, it had 387 ships in its fleet that service 150 shipping routes, and had undertaken extensive advertising in 150 different countries.[3]
[3] Statutory declaration of Nathan John Sinclair, dated 13 July 2010, paras 4-7.
Mr Porter lists three trade mark registrations owned by CMA CGM in Australia:
TM No.
Trade Mark
Priority Date
Class / Services
824769
2 Sep 99
39 / Transport; packaging and storage of goods
943268
(IR No. 794961)
CMA CGM ABSOLUTE TRUST
15 Jul 02
39 / Transportation; packaging and storage of goods; travel arrangement
1110220
(IR No. 879781)
Endorsements: Trade Mark Description: Colour Claimed: LIGHT BLUE pantone 650, RED pantone 186, DARK BLUE pantone 295.; Parts Colour Claimed: LIGHT BLUE planisphere; "CMA" with a RED stroke; "CGM" with a DARK BLUE stroke.; Mark Description: The trademark consists of a LIGHT BLUE planisphere (pantone 650) on which are written, from left to right, first the letters "CMA" and a RED stroke (pantone 186), then the letters "CGM" with a stroke underneath in DARK BLUE (pantone 295).
23 Jun 05
12 / Ships, boats, steering gears for boats, screw propellers for boats, apparatus for locomotion by water
37 / Ship outfitting, namely, installation aboard a ship of all that is required for its type of navigation
39 / Transport by boat; freighting; freight forwarding; navigation and freight services, namely multimodal and international maritime transport of containers, as well as loading and unloading of ships; consignment of goods, storage of goods with a view to their reservation or safekeeping, pre or post-routing by land or other means of transport; transport of passengers by ships, escorting of travelers; arrangement of cruises and excursions; travel arrangement; travel agencies (with the exception of hotel and boarding house bookings); vehicle rental; logistics services relating to the transport of goods and travelers; information relating to the transport of passengers and goods; travel information
He also expands further on the company’s Australian activities:
In December 1998, the CMA CGM Group acquired the shipping division of Australian National Lines Limited (ANL) from the Australian Federal Government. Prior to that time, the CMA CGM Group had been operating in Australia for at least 10 years. Following the acquisition, ANL represented the services and interests of the CMA CGM Group in Australia and New Zealand in exchange for a service fee on each import and export shipment. This fee was inclusive of public relations and advertising costs required to support the tradename and services of CMA CGM…
CMA CGM Australia [Pty Ltd] was incorporated in February 2006. Since that date, CMA CGM Australia has taken over from ANL the primary use of the CMA CGM trade name and the CMA CGM Marks in relation to international container shipping services, including import to Australia and export from Australia. These services have also included the supply of branded containers to clients for export from Australia, and the distribution of business cards, contracts, marketing and advertising materials. ANL continues to utilise the brand to represent itself as part of the CMA CGM Group.
From 11 May 2006, CMA CGM Australia took over the primary advertising of the CMA CGM Marks from ANL…
Given the matters set out in paragraphs 7 to 18 above, I consider that CMA CGM by itself and through its subsidiaries ANL and CMA CGM Australia, has developed a high level of brand awareness in Australia as a result of marketing, advertising and promotional strategies. These activities have been undertaken in Australia since 1988, and have been undertaken, in turn, by CMA CGM, ANL and CMA CGM Australia, who have each invested significant funds in the marketing and advertising of the CMA CGM Marks.
…The reputation of the CMA CGM brand in the market place has consolidated itself over the past 10 years and now represents a considerable presence in and around the industry both in Australia and overseas.[4]
[4] Statutory declaration of Graham Porter, dated 22 September 2008, paras 10-20.
Grounds of opposition: 1085059
The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[5] Accordingly, prior to an opposition hearing, it is usual for an opponent to narrow down the grounds originally nominated in its notice of opposition, so that only those supported by the evidence and the facts of the case are pressed. CMA CGM declined to take that course here. As a result, Ms Ryan for CMA Corporation found it necessary to address all of the grounds listed in the notice of opposition to some degree. I have considered her submissions and the evidence put by CMA CGM. I agree with Ms Ryan’s conclusion that ‘in the absence of evidence or legal argument’, the grounds under sections 41, 42, 43, 58, 59, 61, 62(a) and 62(b) listed in the notice of opposition cannot be established. For completeness, I find that none of those grounds has been made out.
[5] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).
I will deal with the remaining grounds under sections 44 and 60 in the order they were dealt with by Ms Ryan.
Section 44 - Identical etc. trade marks
Subsections 44(1) and 44(2) provide that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration which has an earlier priority date and covers goods or services that are similar or closely related to the applicants’ goods or services. The definition of ‘deceptively similar’ in section 10 is that ‘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’. Subsection 14(1) defines ‘similar goods’ as goods which are ‘the same’ or ‘of the same description’, while subsection 14(2) likewise defines ‘similar services’ as services which are ‘the same’ or ‘of the same description’. Regulation 4.15A (‘Grounds for rejection – trade mark identical etc to trade mark protected under Madrid Protocol’) applies the principles of section 44 where the cited trade mark is an International Registration Designating Australia, or a Protected International Trade Mark.
The trade marks nominated in the notice of opposition are those owned by CMA CGM that I have detailed above. All three have priority dates earlier than that of the application. All three cover transportation and other services in class 39, and trade mark number 1110220 also covers ships and ship outfitting (and similar goods and services) in classes 12 and 37. Clearly then, all three of CMA CGM’s prior trade marks share the same or similar services, at least in class 39, with CMA Corporation’s application. The remaining matter for determination is whether the trade marks in question are substantially identical or deceptively similar, in terms of section 10, and in the context of those similar services.
Ms Ryan submitted for the applicant, and I agree, that the trade marks at issue are not, on any level, substantially identical within the terms of the accepted test.[6] On the question of whether the marks are deceptively similar, she referred me to another familiar passage,[7] and submitted that, according to the relevant criteria, CMA Corporation’s trade mark was clearly not deceptively similar to those of CMA CGM. She identified a number of ‘significant differences’, saying:
[6] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414-5.
[7] Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, at 658
Visual
·[CMA Corporation’s] trade mark is a logo comprising the letters “cma” in lowercase.
·The letter “c” is cradled by three wavy lines;
·In each of [CMA CGM’s] marks the common letters “CMA” are in upper case and
·there are the additional letters CGM, so the acronym is, in fact “CMA CGM”;
·Trade mark number 824769 is further differentiated by the words, “The French Line”;
·Trade mark number 943268 is further differentiated by the words, “ABSOLUTE TRUST”;
·Trade mark number 1110220 is further differentiated by a globe device and is limited to the colours red, white and blue.
Aural
·Any aural similarity arising from the common letters “CMA” is swamped by the additional letters “CGM” and the additional words in 824769 and 943268.
Conceptual
·Any conceptual similarity arising from the common letters “CMA” is swamped by the additional letters “CGM”, the additional words in 824769 and 943268 and the globe device in 1110220;
·These additions import recognisable concepts which have nothing whatsoever to do with that conveyed by [CMA Corporation’s] mark. For example, the words “The French Line” conjure images of France and French culture, “ABSOLUTE TRUST”, is a mission statement and the globe device is a well known sign suggesting “international”.
·By contrast [CMA Corporation’s] mark is simple and enigmatic.
·The common element is “CMA”. It is an acronym, although in [CMA CGM’s] marks it is arguably only a part of the larger acronym “CMA CGM”. The Australian public is quite used to acronyms in the market place and is used to distinguishing them on small differences.[8]
These significant visual, aural and conceptual differences are relevant to the assessment of how a person would recollect the respective marks. There are sufficient differences to enable distinction, even allowing for imperfect recollection.
[8] Professional Golfers Association of Australia Ltd v Ladies Professional Golf Association (2004) 61 IPR 206 at [16]-[17].
I find myself in agreement with Ms Ryan upon many of these points. While the common presence of the letters CMA does strike both the ear and the eye, there is other distinguishing material in all four trade marks. Moreover, the letters CMA clearly do not form a word but rather an acronym, and it is true that the use of acronyms is very common in every aspect of trade in Australia. In Conde Nast Publications Pty Ltd v Taylor[9] Burchett J found the trade marks VOGUE and EUROVOGUE with device not deceptively similar. He distinguished his earlier POLO CLUB decision,[10] because there, ‘the original meaning of “Polo” is retained and is dominant, so that a product labelled with the two words may be taken as merely the “club” version of the Polo product’ (page 510). At pages 511-12, he continued:
... it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.
[9] (1998) 41 IPR 505.
[10] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246.
Arguably, there are parallels between words with a ‘descriptive tinge’[11] such as ‘vogue’ and acronyms such as CMA. Acronyms, being on the one hand popular amongst traders for a variety of reasons (including those which influenced the independent choices made by the opposing parties here), and on the other limited by the number of letters in the alphabet are, like ‘vogue’ also lacking, to some extent, inherent capacity to distinguish.
[11] “Ucolite” case, 48 RPC 477 at p 486.
In the case referred to by Ms Ryan, Hearing Officer Jock McDonagh found trade marks with a golfing theme and acronyms, standing for the ‘Professional Golfers’ Association’ and the ‘Ladies Professional Golf Association’ respectively, not deceptively similar in relation to clothing. He remarked:
As discussed by Hearing Officer Thompson in ATP Tour, Inc v Australian Tennis Professional Coaches Association Ltd [2001] ATMO 99 (15 October 2001) the Australian public is quite used to acronyms in the market place and is used to distinguishing them on small differences. Thus closer similarities than normal between acronyms are expected and tolerated in the absence of demonstrated bad faith.[12]
[12] Professional Golfers’ Association of Australia Ltd v Ladies Professional Golf Association (2004); PGA Australia Ltd v LPGA [2003] ATMO 66 (30 October 2003), at [17].
The trade marks which Hearing Officer Thompson determined not deceptively similar were in relation to, inter alia, tennis coaching services. Examples of pairs of trade marks compared by the respective delegates are shown below:
compared with
compared with
Hearing Officer Thompson referred to the market to which the relevant trade marks were directed. He said:
[T]he understanding of an acronym is contextually based; for example, the understanding of whether the letters BBC refer to a hardware store or to a media broadcaster comes with the context within which they occur. As discussed above, the context here is of tennis aficionados and professionals and it is difficult to perceive how such people could be confused or deceived while the dissimilarities between the elements ATPCA and ATP TOUR exist.[13]
[13] ATP Tour, Inc v Australian Tennis Professional Coaches Association Ltd [2001], op. cit.
The situation is similar here. The market in which the activities of the opposing parties coincide is that of heavy transportation. Given the very specialized nature of that market and the differences between the trade marks in question, I do not believe there to be a real, tangible danger that the relevant public will be deceived or confused.
Finally, the onus, as I have said above, is upon the opponent to make its case according to the balance of probabilities. In setting out their well-known tests for deceptive similarity to which Ms Ryan referred, Dixon and McTiernan JJ concluded with the observation that ‘evidence of actual cases of deception, if forthcoming, is of great weight’.[14] In this instance, the CMA CGM has declined to press its case at hearing in relation to any of its original grounds of opposition. Further, the evidence it has provided does not touch upon the question of whether actual instances of deception (or confusion) have occurred as a result of the use by CMA Corporation of its CMA and device trade mark.
[14] Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937), op. cit.
Taking all of the above factors into account, I find CMA Corporation’s trade mark is not deceptively similar to any of the prior trade marks owned by CMA CGM. The ground of opposition under section 44 has accordingly not been made out.
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
When trade mark application number 1085059 was filed, the following provisions of section 60 applied:[15]
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
[15] Apple Computer v Today Tech Group [2007] ATMO 40 at [47] – [48]; Health World v Shin-
Sun Australia Pty Ltd [2008] FCA 100 at [30]-[31] and [103]-[106].
The comparison required under the ‘pre-amendment’ wording of section 60 is therefore between an existing substantially identical or deceptively similar trade mark that ‘had acquired a reputation in Australia’, and the opposed trade mark. The relevant date for assessing the reputation of a trade mark nominated by CMA CGM is the filing date of CMA Corporation’s trade mark, 10 November 2005. Section 60 does not require that a trade mark relied upon by an opponent be either an applied-for or registered trade mark, merely that it had acquired a reputation as at the priority date of the opposed trade mark.
The threshold test to be met under section 60 in this case is whether the trade marks in question are deceptively similar. I have already found that the registered trade marks cited by CMA CGM in relation to its section 44 ground of opposition are not deceptively similar to the subject trade mark. There are no other trade marks referred to in the notice, or in the evidence relied upon. Further, there is nothing relating to the reputation, or the particular manner of use, of CMA CGM’s registered marks disclosed in its evidence which suggests I ought to reach a different conclusion on the question of deceptive similarity as far as the section 60 ground is concerned. It follows therefore that the section 60 ground of opposition would fail at the first hurdle.
I would add that, quite apart from the issue of deceptive similarity per se, I also find that CMA CGM’s evidence does not demonstrate the existence of a sufficient reputation in the relevant trade marks in Australia, as at the relevant date, such that use of CMA Corporation’s trade mark was likely to result in deception or confusion amongst the relevant public. As indicated above in my discussion of the evidence, the relevant date was prior to the incorporation of CMA CGM Australia Pty Ltd in February 2006. At the relevant date in November 2005, the evidence reflects that the face of CMA CGM in Australia was Australian National Lines Limited (ANL). The examples of advertising provided clearly show the ANL trade mark predominating, with references to CMA CGM group being both sparse and shown in very small print. And, as to be expected, the advertising reflects the company’s narrow focus of international maritime transport. These circumstances, together with the familiarity Australian consumers have with acronyms and their acceptance of small differences between them as discussed above, combine to militate against the possibility of their deception or confusion as to the origins of the respective trade marks, in terms of section 60. I find that the ground of opposition under section 60 has not been made out.
Decision and Costs - 1085059
Subsection 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I find that CMA CGM has not met the onus upon it, according to the balance of probabilities, in terms of any of the grounds listed in its notice of opposition. Trade mark number 1085059 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 is withdrawn or dismissed or a court so orders.
I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful opponent in this instance, CMA CGM.
Grounds of opposition: 1203713
In the summary of submissions provided just prior to the hearing, CMA Corporation indicated that, of all the grounds originally nominated in its notice of opposition, it now only intended to pursue the ground under section 60. For completeness, I note that none of the other grounds listed in the notice of opposition has been made out.
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The provisions of section 60 which are relevant in this instance read:[16]
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.
[16] The subject IRDA was filed after a significant amendment to section 60 came into force on 23 October 2006. Accordingly, the post amendment version of the section applies.
To satisfy the amended provisions of section 60, therefore, CMA Corporation must demonstrate that, at the priority date of the opposed IRDA (21 May 2007), there existed a reputation in another trade mark, such that use of the opposed trade mark for the services covered by it would likely cause a substantial or significant number of members of the relevant public to be deceived or confused. The trade mark relied upon need not be subject of an application or registration in order to be relevant in terms of this section. Post amendment, section 60 does not require the trade mark relied upon to be ‘deceptively similar’[17] to the opposed trade mark or that it has been used on similar goods or closely related services. Instead, the focus of the provision here is squarely upon the likelihood of public deception or confusion being generated by the CMA CGM’s proposed use of the trade mark in the face of the reputation of the trade mark(s) relied upon by CMA Corporation. The reputation of a trade mark may develop in a variety of ways, and be influenced by the particular trading environment in which it has evolved.[18]
[17] As defined in section 10 of the Act.
[18] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129.
Ms Ryan argued for CMA Corporation that:
Section 60, requires consideration of the actual use of the prior mark, but assumes that against the notional use of the trade mark to be registered.
The freight, transport and storage services claimed in class 39 of application number 1203713 are notionally similar to some of [CMA Corporation’s] services in the recycling, demolition and remediation industries. As can be seen from the brochures under TS-6 and [CMA Corporation’s] literature, transport and storage are frequent requirements of its business. In particular trucks and barges bearing the CMA brand and the CMA mark are seen on the road and in the water: TS-6. Further, [CMA Corporation] has a specialist marine division with its own heavy duty marine-craft, tugs and barges: TS-6.
The CMA brand is totally subsumed in [CMA CGM’s] CMA CGM ADVANCED SHIPPING mark.
Having regard to the actual use of [CMA Corporation’s] CMA brand and CMA mark and assuming that against the notional use of [CMA CGM’s] mark, there can be little doubt that, as at the priority date, a consumer would be “caused to wonder” whether it might not be the case that there is a connection between [CMA Corporation’s] business under its CMA brand and the freight, storage and transport services designated in the Application.
It is submitted that the requirements under Section 60 are satisfied and this ground of opposition is made out.
I have considered CMA Corporation’s evidence. It clearly reflects the company’s narrow focus as an industrial recycler and demolition expert. While Mr Schmitt’s declaration lays claim to his company having developed a strong reputation both in its letters and device trade mark and also in the letters ‘CMA’ solus, such that CMA CGM’s use of CMA CGM ADVANCED SHIPPING would likely deceive or confuse the public, I cannot agree with his assessment. As at the relevant date, the amalgamated company had only been operating under the CMA name and logo for a total of two years. While, as with CMA CGM’s claim to reputation discussed above, the company’s ‘sales and advertising’ figures are considerable, these figures are not, of themselves, sufficient here. Even taking into account CMA CGM’s notional use of ‘CMA CGM ADVANCED SHIPPING’ on all the services in its specification, and also factoring in the use by CMA Corporation of a variety of means of transport in the course of its waste recycling and site remedial work, I am not persuaded that the extent and nature of its reputation in either CMA solus or the CMA and device trade mark, as at May 2007, was sufficient to trigger the provisions of section 60. I find CMA Corporation’s single ground of opposition under section 60 has not been made out.
Decision and Costs - 1203713
I find that CMA Corporation has not met the onus upon it, according to the balance of probabilities, in terms of the single ground of opposition pressed at the hearing. Therefore, in accordance with the provisions of regulation 17A.37(3) (and subject to the provisions of regulation 17A.36(3A)) trade mark number 1203713 (IR number 937029) will become protected one month from the date of this decision in respect of all the services specified. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal is withdrawn or dismissed or a court so orders. The International Bureau will be notified of this decision, in accordance with the provisions of regulation 17A.34.
I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful opponent on this occasion, CMA Corporation.
Claudia Murray
Hearing Officer
Trade Marks Hearings
28 September 2011
CMA Corporation Ltd v CMA CGM [2011] ATMO 95
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