CMP Investments Pty Ltd v Let?s Talk Entertainment Agency Pty Ltd

[2012] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by CMP Investments Pty Ltd to registration of trade mark application 1346590(9, 16, 41) - Australia Quest Group - filed in the name of Let’s Talk Entertainment Agency Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: John Carroll of Callinans, Patent & Trade Mark Attorneys Applicant: Did not appear or put in written submissions
Decision:	2012 ATMO 72 S52 opposition – s44 goods in Class 16 are similar goods and trade marks are deceptively similar – registration refused in Class 16.

Background

1. In this matter Let’s Talk Entertainment Agency Pty Ltd, (‘the Applicant’) of Newcastle, NSW has filed application (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

   Application No:           1346590
   Priority Date:               19 February 2010

   Goods/Services:          Class 9: Computer software (excluding software used in relation to gaming machines); apparatus for recording, transmission or reproduction of sound or images including compact discs, DVDs, video tapes, audio tapes, film and other recording media; electronic downloadable publications; motion picture films and television programs

   Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter, books, publications, calendars, greeting cards, autograph cards; gift boxes, gift wrapping paper, notebooks, postcards, posters, stickers; photographs; stationery; instructional and teaching material (except apparatus)
   Class 41: Entertainment, sporting, recreational and cultural activities; organising, arranging and presentation of competitions, shows and sporting events including beauty and modelling competitions; gaming services; provision of information, advisory and consultancy services in relation to the aforementioned services

   Trade Mark:                Australia Quest Group

2. The Application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 24 June 2010.

3. On 24 December 2010, after seeking and receiving an extension of time in which to do so, CMP Investments Pty Ltd (‘the Opponent’) of Melbourne served and filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.

4. The Notice is couched in broad terms and includes the grounds which were subsequently argued by the opponent under sections 44 and section 60 of the Act.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 19 July 2012.  Mr John Carroll of Callinans, Patent & Trade Mark Attorneys represented the opponent; the Applicant did not appear or put in written submissions.

6. The Opponent filed evidence in support of its opposition.  The Applicant did not serve or file any evidence in answer and, indeed, has not engaged in these proceedings.

   Onus

7. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32] and more recently, Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 94 IPR 541 per Stone J at [11] to [12] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   The Evidence

8. The Opponent’s evidence comprises a statutory declaration by Mr Paul Steve Constantinou, a director of the Opponent.  Mr Constantinou is also a director of Quest Serviced Apartments Pty Ltd (‘QSA’ and of QSA Brands Pty Ltd (‘QSA Brands’).  The opponent, QSA, QSA Brands and the member franchisees which provide serviced apartment accommodation form the Quest Serviced Apartment Group (‘the Quest Group’).

9. As at the priority date of the opposed application there were approximately 100 Quest serviced apartments around Australia operating under a franchise model.

10. The Opponent is the owner and manager of Australian registrations of trade marks used by the Quest Group and ultimately controls and authorises the use of the Australian QUEST trade marks by the members of the Quest Group.

11. The Opponent’s Australian trade mark registrations includes the following registration:

    Registraton No:           705835
    Priority Date:               3 April 1996

    Goods:Class 16: Brochures, pamphlets, magazines, booklets, printed publications, including printed advertisements; books; cutlery bags, glass cover bags, toast bags, disposable bags including those for sanitary napkins, toilet paper, paper towels, bathmats, all of or principally of paper; advertisement sheets (printed matter), advertisements paper, advertisement frames, and other advertising material included in Class 16; album and book covers, account books, receipt books, commercial books, including accommodation registers; pens, motel and hotel compendium

    (Class 42 services omitted)

    Trade Mark:                QUEST

    (‘the Registration’)

    Section 44

12. The Opponent pressed its opposition only in respect of the goods in Class 16 covered by the Application. In this regard section 44 of the Act provides:

    44Identical etc. trade marks

    (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1:For deceptively similar see section 10.

    Note 2:For similar goods see subsection 14(1).

    Note 3:For priority date see section 12.

    Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

13. The priority date of the Application is later than that of the Registration and there is a broad overlap and similarity between the Class 16 goods covered by the Application and those covered by the Registration.

14. The Opponent does not argue that the trade marks are substantially identical. Thus the sole question to be decided in terms of section 44 is whether the trade marks QUEST and Australia Quest Group are deceptively similar.

15. The words ‘deceptive similarity’ are defined by section 10 of the Act:

    10Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

16. The question is not to be decided according to the actual trades of the parties (serviced apartments on the one hand and beauty competitions on the other).  The question is to be decided as to the uses to which the parties might in principle make of their trade marks for any of the goods covered by the Application or Registration.  In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) French J said at [88]:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

17. Deceptive similarity may be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.”

18. The consideration is to take place in the context of the marketplace for the goods involved taking notice of the way in which the goods are normally bought an sold: in In Re Application by Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774, at 777, Parker J said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

19. The assessment is moderated by the considerations discussed in Woolworths where French J said at [50]:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

20. The likelihood that trade marks will not be remembered in precise detail must also be considered: in Rysta Ltd’s Application (1943) 60 RPC 87, Luxmoore LJ said (at 108-109)[1]:

    ‘The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person’s wants.’

    [1] Applied in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212; [2004] AIPC 92-015.

21. The likelihood of an element of a composite trade mark being accurately remembered is increased if it is more inherently adapted to distinguish relative to the other elements of that trade mark and is effectively the dominant element in the trade mark.  Thus, in the hypothetical trade mark AUSTRALIAN WOMBAT COVERINGS, used or proposed to be used in respect of blankets, the element which is dominant and is most likely to form an impression on the mind is the word ‘wombat’.  The elements of the putative trade mark other than the word ‘wombat’ are not as likely to be recalled in any precise detail and it is the word ‘wombat’ which is most likely to be relied upon by potential purchasers in distinguishing the goods sold under the putative trade mark from the similar goods of other traders.  Where such purchasers encounter the trade mark WOMBAT, solus, used on blankets, they are likely to either believe they have found the goods sold under the AUSTRALIAN WOMBAT COVERINGS trade mark or that there is, or is likely to be, some connection between the trade marks such that the goods have a trade origin in common.

22. Conversely, the formulation in the foregoing paragraph does not apply where the elements that make up a trade mark are of equal weight as regards their inherent adaptation to distinguish or the elements inter-relate to form a distinct corporate identity such as in the examples BLACK KNIGHT or HEAVEN SCENT whatever significations the words ‘black’ or ‘scent’ might have in relation to, say, boot polish or perfumery.

23. Burchett J adopted a similar analysis in Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505; [1998] AIPC 37,628 where he explained:

    “EUROVOGUE”, though containing “VOGUE” as a syllable, does so in a new word with a new meaning. It is not like “Polo Club”, where 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. Cf Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited [1993] FCA 203; (1993) 42 FCR 227 at 230. “VOGUE” is altogether too indefinite a word, in this context, to have that sort of distinctive impact. Its meaning is particularly vague when it is combined with “Euro”, since a pan-European vogue would be very hard to envisage.

24. In the instance of the trade mark Australian Quest Group, the word ‘Quest’ might reasonably be viewed as having no real work to perform in relation to the services in Class 41, ‘beauty and modeling competitions’ which are commonly called ‘quests’.  However, this does not hold true when the word ‘quest’ is considered in relation to the goods in Class 16 where (to paraphrase Burchett J) the meaning of the word ‘quest’ is retained and is dominant.

25. Many goods in Class 16 are relatively cheap and are not likely to be carefully inspected before purchase: Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307.

26. Because of the dominance of the word ‘quest’ in relation to goods in Class 16, purchasers who seek goods sold under the trade mark QUEST and encounter the trade mark Australia Quest Group are likely to either believe they have found the goods sold under the QUEST trade mark or that there is, or is likely to be, some connection between the trade marks such that the goods have a trade origin in common.  The former belief is a deception and the latter speculation is a form of confusion.  As explained by Lord Denning in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265 at page 274:

    […] “to deceive” is one thing. To “cause confusion” is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

1. I conclude that the trade marks QUEST and Australia Quest Group are deceptively similar in relation to the similar goods in Class 16.

2. Accordingly, the Opponent has established its opposition under section 44 of the Act.

3. As the opposition has been established under section 44 of the Act, it is not necessary to consider the ground under section 60.

   Decision

4. Subsection 55(1) of the Act provides:

   55Decision

   (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.

   Note:For limitations see section 6.

5. I refuse to register application 1346590.  However, if the Applicant requests the deletion of its Class 16 specification of goods within three weeks of the date of this decision, the Application may proceed to registration after the deletion of those goods from the Application.

   Costs

6. The Opponent, having been successful, is entitled to its costs which I award at the official scale against the Applicant.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   23 August 2012