Combined Communications Pty Ltd v Combined Communication Solutions Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Combined Communications Pty Ltd to registration of trade mark applications 1452550 and 1452551 (both in Classes 37, 38 and 42) - COMBINED COMMUNICATION SOLUTIONS (Word Mark) and COMBINED COMMUNICATION SOLUTIONS (Logo Mark) - in the name of Combined Communication Solutions Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Chris Burgess of Counsel instructed by Nicky Shanks, solicitor and trade mark attorney of Cotters Patent & Trade Mark Attorneys

Applicant: David Stewart of Counsel instructed by Marie Wong, solicitor, of Wrays Intellectual Property

Decision:

2014 ATMO 117

S52 opposition: s44 – comparison of trade marks, discount of words which lack inherent adaptation to distinguish; parties’ composite trade marks not deceptively similar – Opposed Word Trade Mark deceptively similar to Opponent’s Registered Trade Mark. Section 58 and 60 grounds of opposition not established.

Opposed Word Mark refused registration.

No award of costs.

Background

In these proceedings under the Trade Marks Act 1995 (‘the Act’) Combined Communications Solutions Pty Ltd (‘the Applicant’) has applied to register the trade marks appearing below:
Application No: 1452550
Priority Date:  6 October 2011
Services:Class 37: Installation, repair and maintenance services in relation to communications systems, apparatus, equipment and installations and parts, fitting and accessories therefor; installation, repair and maintenance services in relation to computer hardware and software and parts, fitting and accessories therefor; installation, repair and maintenance services in relation to electronic and electrical systems, apparatus, equipment and installations, and parts, fittings and accessories therefor
Class 38: Telecommunications; advisory and consulting services in the field of communications and telecommunications; project management services in the field of communications and telecommunications; rental of communications and telecommunications systems, apparatus, equipment and installations and parts, fittings and accessories therefor; providing user access to global positioning signals and data for navigation and tracking purposes, including vehicle fleet management and asset navigation and tracking; transmission of global positioning signals for navigation and tracking purposes, including fleet management and asset navigation and tracking; communication services for the purpose of tracking speed, direction and location of assets and personnel; communication services for the purpose of transmission of emergency messages; data communication by electronic means including by digital radio, cellular or satellite devices
Class 42: Design and development of computer software; design and development of renewable energy and battery systems, apparatus, equipment and installations and parts, fitting and accessories therefor; design and development of communications systems, apparatus, equipment and installations and parts, fitting and accessories therefor; rental of computer hardware and software and parts, fitting and accessories therefor
Trade Mark:  COMBINED COMMUNICATIONS SOLUTIONS
(‘the Opposed Word Trade Mark’)
Endorsement: Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
Application No: 1452551
Priority Date:  6 October 2011
Services:Class 37: Installation, repair and maintenance services in relation to communications systems, apparatus, equipment and installations and parts, fitting and accessories therefor; installation, repair and maintenance services in relation to computer hardware and software and parts, fitting and accessories therefor; installation, repair and maintenance services in relation to electronic and electrical systems, apparatus, equipment and installations, and parts, fittings and accessories therefor
Class 38: Telecommunications; advisory and consulting services in the field of communications and telecommunications; project management services in the field of communications and telecommunications; rental of communications and telecommunications systems, apparatus, equipment and installations and parts, fittings and accessories therefor; providing user access to global positioning signals and data for navigation and tracking purposes, including vehicle fleet management and asset navigation and tracking; transmission of global positioning signals for navigation and tracking purposes, including fleet management and asset navigation and tracking; communication services for the purpose of tracking speed, direction and location of assets and personnel; communication services for the purpose of transmission of emergency messages; data communication by electronic means including by digital radio, cellular or satellite devices
Class 42: Design and development of computer software; design and development of renewable energy and battery systems, apparatus, equipment and installations and parts, fitting and accessories therefor; design and development of communications systems, apparatus, equipment and installations and parts, fitting and accessories therefor; rental of computer hardware and software and parts, fitting and accessories therefor
Trade Mark:
(‘the Opposed Logo Trade Mark’)
Endorsement: Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
The specifications of services within the above two applications are identical and I will term them ‘the Applicant’s Services’.
3. The endorsements reflect the existence of earlier trade mark registration 1092051(9, 38) further detailed below, which is owned by Combined Communications Pty Limited (‘the Opponent’) and an examiner’s ground for rejection under subsection 44(2) of the Act. Paragraph 44(3)(a) of the Act (and/or Reg 4.15A(3)(a)) provide that if the Registrar in either case is satisfied that there has been honest concurrent use of trade marks that conflict under subsections 44(1) or 44(2) the Registrar may accept the application for the registration of the later trade mark application subject to any conditions or limitations that the Registrar thinks fit to impose. If the later trade mark application had 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.
Following examination in compliance with section 31 of the Act the applications were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 14 March 2014. On 14 June 2013 the Opponent filed Notices of Intention to Oppose. On 15 July 2013 the Opponent filed its Statements of Ground and Particulars (‘the SGPs’). The SGPs allege:
Section 44 The opposed trade mark is deceptively similar to the following trade mark registration that has an earlier priority date in respect of similar goods or closely related services:
TM No 1092051 Combined Communications Logo in Classes 9, 38
Section 58A The opponent’s first use of the trade mark COMBINED COMMUNICATIONS was in 2004 and has been widely and continuously used in Australia ever since in respect of various communication systems, particularly two-way radio networks and products, sales, system design, installation, training and maintenance. The applicant’s trade mark application was accepted following objection under section 44 in respect of the opponent’s earlier trade mark COMBINED COMMUNICATIONS in its logo form (TM No 1092051).
Section 58 The opponent’s first use of the trade mark COMBINED COMMUNICATIONS was in 2004 and has been widely and continuously used in Australia ever since in respect of various communication systems, particularly two-way radio networks and products, sales, system design, installation, training and maintenance.
Section 60 The opponent is well established in the communication system market in Australia and has developed (as at the priority date) a strong reputation in Australia in respect of the COMBINED COMMUNICATIONS brand in both its plain and logo forms. By reason of the reputation of the opponent’s COMBINED COMMUNICATIONS brand in both its plain and logo forms, use of the applicant’s mark would be likely to cause (and has in fact has caused actual) confusion in the Australian market.
On 23 August 2013 the Applicant filed Notices of Intention to Defend.
Thereafter the parties have filed their evidence in support, evidence in answer and evidence in reply as is further detailed below. Both parties were advised of their right to be heard or to make written submissions. Both parties elected to be heard.
The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 21 October 2014. The Opponent was represented by Chris Burges of Counsel instructed by Nicky Shanks, solicitor and trade mark attorney of Cotters Patent & Trade Mark Attorneys; the Applicant was represented by David Stewart of Counsel instructed by Marie Wong, solicitor, of Wrays Intellectual Property.
Onus and Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; 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]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
The relevant date at which the grounds must be considered is the filing[2] date of the application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
[2] As regards the section 44 ground of opposition the relevant date is the priority date which is here the same as the filing date.
Evidence
The evidence comprises the following declarations:
In Support:
Matthew Kelly dated 26 November 2013, with Exhibit MK-1; and
Troy Kelly dated 29 November 2013.
In Answer
Shane William Post dated 30 January 2013, with Exhibits SWP-1 to SWP-1 8
Shane William Post dated 28 February 2014 (Second Post Declaration);
Terry Crothers dated 28 February 2014;
Shirley Ansell dated 28 February 2014;
Peter Farley dated 28 February 2014;
Stuart Dell dated 28 February 2014;
Glen Roberts dated 3 March 2014; and
Marc Woods dated 3 March 2014.
In Reply
Matthew Kelly dated 2 April 2014;
Ian Buckley dated 1 May 2014, together with Exhibit IB-1; and
Troy Abel dated 7 May 2014.
On 3 September 2014, the Opponent also filed with IP Australia copies of further documents said to be submitted for consideration under Regulation 21.19 of the Trade Marks Regulations 1995 (‘the regs’), which are described by the Opponent as follows:
An invoice from a company called Omnitronics Pty Ltd (Omnitronics) dated 18 August 2014 which came to the Opponent’s attention on or about 21 August 2014;
Email correspondence titled “Combined Communications NSW” between an employee in the Accounts Payable department of the Opponent and the Supply Chain Logistics Manger of Omnitronics which was sent after the Opponent reported the receipt of the item identified in the Invoice to Omnitronics;
A “Booking Confirmation Report” showing that Omnitronics arranged for the relevant article to be collected from the Opponent’s address in New South Wales and delivered to the Applicant in the Northern Territory;
An email titled “E-Connote for Shipment date 28/08/2014” attaching a “Manifest Report” and a “Consignment Label” relating to the collection of the relevant article from the Opponent’s address in New South Wales and its delivery to the Applicant’s address in the Northern Territory.
In regard to the latter documents, without commenting on the admissibility of such ‘evidence’, I note that the documents generally go to establish the likelihood of confusion. As such (and as it is alleged evidence of a single instance of confusion) they are of no practical weight in these proceedings since honest concurrent use is argued and a degree of confusion is thus foreshadowed: as was observed in New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1990] HCA 60; (1990) 171 CLR 363; 97 ALR 73; (1991) 18 IPR 385; 65 ALJR 104; [1991] AIPC 37-031 at [12] of Dawson and Toohey JJ’s judgment:
The doctrine of honest concurrent user meant that a degree of confusion had to be tolerated within the system. The mere fact that the use of a mark would be likely to deceive or cause confusion was not necessarily sufficient to support an injunction restraining that use.
Additionally, the evidence of confusion that has already been served strongly suggests that the confusion which has occurred stems from a similarity in the business names of the parties rather than any similarity of their trade marks.
Further, the likelihood of deception or confusion under section 60 is not established because the Opponent has not established the reputation of its trade marks for the reasons set out below.
Accordingly, as I have said, the documents sought to be considered by me under 21.19 of the regs are no practical weight in these proceedings and there is no need to consider their admissibility.
Matthew Kelly is the Director of Business Development of the Opponent. Mr Kelly states that:
I regard the information which is disclosed in this Statutory Declaration, particularly insofar as it relates to sales figures, advertising expenditure, customer details and sensitive company information, as relating to the business affairs of the Opponent and within the ambit of the Freedom of Information Act 1982 (Cth) and to be strictly confidential
Such broad and vaguely couched claims for confidentiality place an onerous task upon decision-makers: that of attempting to assess what might be sensitive company information and what is meant by expressions such as ‘as relates to the business affairs of the Opponent’. At one extreme, after all, even Mr Kelly’s name and position are matters that relate to the business affairs of the Opponent – should his name and position thus be unmentionable? An Opponent’s desire for privacy for its company information must be balanced against the needs for transparency in the opposition system. It is also preferable, in my view, that where information is considered to be confidential, it be separately corralled in an annexure clearly marked as such.
That said I will try to discuss sales figures, advertising expenditure and customer details of the Opponent in general terms.
Mr Kelly states:
The Opponent was formed as the result of the merger of two highly respected wireless communication companies, Nu Teck Communications and Minorplanet Asia Pacific. The Opponent has been a prominent force in the radio communications marketplace across Australia since the Opponent commenced its operations in January 2004.
I note that the Opponent’s website[3] which is referred to in evidence explains:
Combined Communications are a specialist provider in the Radio Communications and GPS Tracking Industry.
The Combined Group of Companies are an Australian-owned group of independent, mutually supportive organisations, which form a significant force in their areas of operations. Spectracom, the first company in the Group, was established in 1971 followed later by Nu Tech. A merger with Minor Planet in 2003 resulted in the suitably named Combined Communication with Wireless Data Solutions acquired shortly thereafter. The activities of the private companies within the Group have expanded over the years to encompass four strategic areas:
·    Land Mobile Radio Sales
·    Fleet Services
·    Microwave Communications Engineering
·    Dealer Distribution Network
[3] Reg 21.16(4): The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. I note that the Opponent is unlikely to be surprised by material which is on its own website.
I also note that the Opponent’s website now operates only under the trade mark (‘the Opponent’s Pending Trade Mark’)[4] which appears below:
[4] For which registration is sought under application number 1641034 in Classes 35, 37, 38 and 42.
Mr Kelly states that the Opponent has registered the trade mark which appears below:
Registration No:              1092051
Priority Date:  21 December 2005
Goods/Services:              Class 9: Wireless and two-way radio communications products and apparatus
Class 38: Wireless and two-way radio communications services
Trade Mark:
I note now that the Opponent’s trade mark immediately above (‘the Opponent’s Registered Trade Mark) differs considerably from the Opponent’s Pending Trade Mark.
Mr Kelly states that the Opponent has used the Opponent’s Registered Trade Mark and the word mark COMBINED COMMUNICATIONS continuously in Australia since the beginning of 2004. Mr Kelly supplies a credit reference from a company who attests to supplying the Opponent with goods on credit since 2004 – the company does not say what goods. Mr Kelly also exhibits historical material to his declaration such as a photograph of a sponsored yacht in a corporate race on Sydney Harbour said to have occurred in 2004; an email from an employee of Kenwood Electronics Australia Pty Ltd, a supplier of the Opponent, said to have been sent in 2005; and, a redacted copy of a chain of emails between a delivery company and the Opponent said to have been sent between 1 and 5 December 2004. These materials are also silent on the goods and/or services on which either of the Opponent’s trade marks has been used and often on the actual form of the Opponent’s trade mark.
Mr Kelly asserts the Opponent’s services provided under the Opponent’s trade marks include:
• Designing, supplying, installing and ongoing support of radio based communication systems, two-way radio systems, vehicle data and GPS location systems;
• Fleet management and asset navigation and tracking services;
• Project management solutions and support with regard to designing and implementing tailored communication systems for customers’ needs;
• Providing two-way radio systems for voice command and control applications;
• Designing, supplying and installing Mobile Data devices and GPS equipment and solutions for vehicles;
• Sales and rental of communication equipment and systems;
• After-sales support including nationwide servicing and maintenance services;
• Supplying and installing Repeater Base Station systems;
• Supplying and installing in-vehicle mobile radio equipment;
• Supplying handheld portable radio equipment;
• Coordinating applications for licenced frequencies;
• Licenced antenna rigging services;
• On-site maintenance services for Base Station and in-vehicle equipment; and
• Re-programming of existing radio communication equipment.
I note the above appear to be in the nature of services, rather than of goods. Further, since none of the supporting materials mentions this, I have some doubt whether the Opponent offers the service of ‘Fleet management and asset navigation and tracking services’ rather than that of selling communications equipment that does this task on behalf of the purchaser of such equipment.

In December 2010 the Opponent became the national distributor for Hytera Communications Corporation Limited (‘Hytera’). Mr Kelly states that Hytera is one of the world’s largest manufacturers of radios.[5]
[5] The Hytera website shows the Hytera branded radios to be digital and analogue two-way radios of various sizes and signal strengths.
Mr Kelly further states:
The Opponent has customers in the construction, engineering, hospital, logistics, freight, transport and taxi industries, as well as in Government departments.
The Opponent has been an accredited supplier of communications-related goods and services to the New South Wales Government since the Opponent was established. The Opponent has also, via its wholly owned subsidiary, Wireless Data Solutions, supplied microwave communication systems to the Northern Territory Government. This involved a meeting between myself, other employees of the Opponent, and the Northern Territory Police.
The Opponent has provided goods and services to Concord, Bankstown, Nepean, Sutherland, Cumberland and Westmead Hospitals in New South Wales. The Opponent has provided goods and services to hospitals since the Opponent was established.
Mr Kelly says:
By way of example of the goods and services provided by the Applicant to its nation-wide customers, the Opponent set up an operational radio system for [a car hire company] throughout Australia in mid-2008, which involved setting up communications systems at sites in Darwin, Sydney, Brisbane, Melbourne, Canberra, Maroochydore, Townsville and McKay. Behind Tab 7 of Exhibit MK-1 are copies of email communications about this work, dated between 2 and 21 July 2008.
Mr Kelly provides confidential advertising and promotional figures within a generalised annual range and does not differentiate between the advertising and promotion of either the word or logo trade marks of the Opponent.
Although Mr Kelly says that the Opponent had a webpage from 2004, it appears from printouts at Tab 8 of Exhibit 1 to his declaration that for some indeterminate period of time the website (on which the Opponent’s Registered Trade Mark appears) was very basic company information and a sign stating ‘New Site Under Construction’: there is no offer of goods or services so it is most doubtful whether this is use of the Opponent’s Registered Trade Mark in relation to goods or services in the course of trade. Although the words ‘Combined Communication’ appear on this page, it is clear that it is not a use in relation to goods and services which are not advertised for sale and is anyway more than likely to be use of the Opponent’s business name rather than that of a trade mark. Another apparently later version of this website states that “Over the coming weeks, we will be releasing a fully functional version of this website.” This intermediate version of the website has a copyright claim of 2006 on it. The next version of the website features the Hytera goods on it: Mr Kelly has stated that the Opponent became the exclusive dealer for Hytera in 2010 so it is not clear if this version of the website dates from then or from a later date.
Mr Kelly includes examples of the Opponent’s Registered Trade Mark appearing on third party websites. He then states:
Advertisements promoting goods and services provided by the Opponent under the COMBINED COMMUNICATIONS Word Mark and the COMBINED COMMUNICATIONS Logo have been published in various publications over the years. By way of example, behind Tab 11 of Exhibit MK-1 are copies of the following invoices and booking authorisation for advertisements published in various publications:
a. A copy of an invoice from the publication National Building News Monthly, dated 5 July 2006, addressed to the Opponent, for the publication of an advertisement in the publication;
b. A booking authorisation which I signed on behalf of the Opponent for the placement of a full page advertisement in a publication entitled ‘Australian Taxi Conference’ in May 2011, together with a copy of the relevant advertisement which promotes the ‘G60 Taxi Security Camera System’.
c. An invoice from Bowden Group for the placement of an advertisement in the South Australian publication entitled ‘Taxi Fare’ in September 2011, together with a draft copy of the relevant advertisement.
d. An invoice dated 11 April 2012 for an advertisement placed by the Opponent in a publication entitled “Australian Taxi Conference 2012”.
e. An invoice dated 8 June 2011 for an advertisement in a June 2011 edition of the South Australian publication entitled ‘Taxi Fare’.
I note that some of the above materials do not show the form of the trade mark used by the Opponent in the advertisements to which Mr Kelly refers and one of the invoices (that from TMPC) is to ‘Combined Communications & Wireless Data Solutions’ – a person other than the Opponent. Further, the Opponent’s word trade mark does not appear in these materials although there is reference to ‘Combined Communications Pty Ltd’ within the body of the advertisements and reference to ‘Combined Communications’ as a business name rather than a trade mark at the base of the advertisements. I will further discuss this use as a business name under the heading ‘Rationale’.
Mr Kelly continues:
Over the years since first use of the COMBINED COMMUNICATIONS Word Mark and the COMBINED COMMUNICATIONS Logo, the Opponent has also distributed various brochures and leaflets throughout Australia which promote its communications goods and services. Behind Tab 12 of Exhibit MK-1 are copies of a selection of these brochures and related materials, namely:
a. A brochure entitled “Taking Wi-Fi Where It’s Never Been Before”. It is my understanding, from the records of the Opponent, that this brochure was mailed by the Opponent to all schools in New South Wales in late 2010 or early 2011.
b. A leaflet commencing “Combined Communications is focused on supplying and maintaining reliable, cost effective Wireless Communications Solutions”.
c. A copy of a letter which was sent to resellers, existing customers and prospective customers in February 201 1, announcing the appointment of the Opponent as the exclusive Australian distributor for the CAB WATCH range of taxi security camera systems.
d. Examples of emails which I sent to taxi companies in South Australia (namely, Yellow Corporation, Uptown Taxis Adelaide and Adelaide Independent Taxis), to which the above mentioned letter was attached.
e. A leaflet announcing the appointment of the Opponent as the exclusive Australian distributor for the CAB WATCH range of products. It is my understanding, from the records of the Opponent, that this leaflet was designed in April 2011 and I am aware that the announcement was sent by email to state authorities which had approved the products for use, and to various cab companies soon afterwards.
f. A leaflet advertising ‘Hytera’ and the Opponent as an authorised distributor for Hytera Communications Corporation Limited.
g. An extract from a magazine entitled “Security Solutions” which featured an advertisement for ‘Hytera’ and for the Opponent as an authorised distributor for Hytera Communications Corporation Limited.
h. A ‘Combined Communications’ leaflet from July 2010.
i. Brochures promoting the Opponent’s COMBINED COMMUNICATIONS Logo and the ‘GME Commercial’ handheld radios and mobile radios, together with an email which shows that the brochures were designed in March 2010.
j. An extract from the September/October 2011 ‘radio’ publication, containing a ‘Hytera DMR Series’ advertisement and a case study which featured the Opponent.
k. A print-out from the website entitled “MSS Chooses Hytera DMI?’, which refers to a site radio coverage survey undertaken by the Opponent in 2011 in relation to radio communications services for a landmark building in Sydney, number 1 Bligh Street.
The materials behind Tab 12 of Exhibit MK-1 constitute only a small sample of the advertising and promotional materials that the Opponent has distributed in Australia since 2004. The Opponent has been unable to locate a more comprehensive record of its advertising and promotional materials in the time available for filing the Evidence in Support due to its record keeping limitations.
The materials behind Tab 12 of Mr Kelly’s declaration suffer from the same problems as those behind Tab 11: they show use of the words ‘Combined Communications’ as a business name rather than as a trade mark. I also note that the last subparagraph, above, constitutes an explicit acknowledgement by the Opponent that this particular evidence which is said to go to the reputation of its trade marks may be perceived to be lacking.
Mr Kelly also states:
The Opponent has also promoted its communications goods and services under the COMBINED COMMUNICATIONS Word Mark and the COMBINED COMMUNICATIONS Logo in radio advertisements on the radio station ‘Mix 106.5’. Behind Tab 15 of Exhibit MK-1 are copies of scripts upon which radio advertisements that were broadcast in 2006 and 2007 were based, together with a copy of a completed Mix 106.5 ‘Authority to Broadcast’ form dated 16 October 2006, relating to the broadcast, 455 times, of the Opponent’s advertisements on the Mix 106.5 radio channel between 1 November 2006 and 31 October 2007.
It is not immediately apparent to me how the Opponent could have used Opponent’s Registered Trade Mark in these radio advertisements in such a way that the device component of that trade mark would have been perceptible to a radio audience.
Mr Kelly says:
Since the Opponent commenced trading and using the COMBINED COMMUNICATIONS Word Mark and the COMBINED COMMUNICATIONS Logo in 2004, the Opponent has attended many conferences and exhibitions, at which the Opponent has promoted the communications goods and services which it offers under these trade marks. Behind Tab 16 of Exhibit MK-1 are copies of the following materials:
a. Paper work which establishes that the Opponent was an exhibitor at the “Building Services and Maintenance Expo” in September 2006 at the Rosehill Gardens Event Centre in New South Wales, together with a photograph of the Opponent’s booth at the exhibition.
b. An email from an employee of HYT Electronics Pty Ltd to Amy Maher of the Opponent, dated 24 August 2006, which discusses my attendance at the Australian Security Industry Association Limited’s(ASIAL) conference, together with information provided by ASIAL to exhibitors, and a photograph of the Opponent’s booth at the August 2005 ASIAL conference.
c. Emails from Lisa Crossley of Westwick-Farrow Publishing to Troy Kelly of the Opponent and me, dated 31 October 2008, confirming our attendance at the RadioComms Connect 2008 conference in Melbourne, Victoria. The Opponent has attended this event every year since 2008, and in 2011, the Opponent, as the Australian distributor for Hytera, supported a booth which promoted Hytera. The COMBINED COMMUNICATIONS Logo featured prominently on the uniforms of the Opponent’s employees who attended the full conference and assisted at the Hytera booth.
d. Registration details for Roger Mcintyre of the Opponent and me for the RadioComms Connect 2009 conference in Melbourne, Victoria.
e. A photograph of the Opponent’s booth at the Singleton Mining Expo in August 2010.
f. My registration details for the Australian Taxi Conference 2011 in Hobart, Tasmania.
g. An invoice from the Australian Taxi Industry Association in Queensland for the sponsorship, by the Opponent, of the May 2011 Australian Taxi Conference, at which the Opponent had a trade booth.
h. A list of the delegates who attended the Australian Taxi Conference in Hobart in May 2011, which shows that delegates attended the conference from all over the country, including the Northern Territory.
i. An invoice, dated 12 August 2011, from the Taxi Council of Queensland 2011 for a trade booth which the Opponent had at the Queensland Taxi Conference in Townsville in 2011.
j. Details of the Opponent’s exhibition stand at the Technology in Local Government Summit 2012, namely an email from Association and Communications Events to Troy Kelly of the Opponent, dated 6 February 2012, and pages 6 and 9 of the Exhibition Manual and Guide provided to exhibitors, and promotional material for the conference, upon which the Opponent’s COMBINED COMMUNICATIONS Logo was featured.
k. An invoice dated 29 March 2012 from Pyramid Displays to the Opponent for the hire of tables and chairs for use by the Opponent at a stand at the 2012 Australian Taxi Conference.
I note that the latter two conferences/exhibitions were after the filing date of the opposed applications. I record also that the photographs of the stands to which Mr Kelly refers show exhibitions under the banners ‘Combined Communications – Kenwood’, the Opponent’s Registered Trade Mark and ‘Combined Communications Group of Companies’.
The latter part of Mr Kelly’s declaration relates to various quotations the Opponent made for the supply of (predominantly) two-way radio equipment to several organisations.
Mr Troy Kelly was a sales person for the Opponent during the period 31 March 2007 to 22 November 2012. He attests to an instance of confusion which occurred in 2008. It is not apparent that this confusion occurred because of the similarity of the trade marks of the parties rather than (as appears to be more probably the case) the similarity of the business names of the parties.
In evidence in answer to the above, Mr Shane Post declares that he is the sole director of the Applicant. He provides details of the history and use of the Opposed Trade Mark.
Mr Post states:
The Applicant was registered as an Australian company on 16 February 2005, and its Australian Company Number is 112 981 558. Annexed to my Declaration and marked with the letters SWP -1 is a true copy of an ASIC company extract evidencing the Applicant’s incorporation. Excluding the words “Pty Ltd”, the Applicant’s name is for [sic] the words COMBINED COMMUNICATION SOLUTIONS.
The Applicant began trading in March 2005 and has built up extensive industry experience and reputation in relation to the [Applicant’s Services].
The Applicant is a leading provider of a wide range of telecommunications goods and services in Australia, including:
a. installation, repair and maintenance of communications equipment, computers and peripherals, renewable energy and battery systems, and wireless data systems;
b. advisory and consulting services and project management in the fields of communications and telecommunications;
c. fleet management and asset navigation and tracking;
d. rental of telecommunications goods and computer hardware, software and peripherals;
e. design and development of software, energy systems and communications systems; and
f. supply of printers, scanners, PDA, projectors and digital cameras.
The Applicant has a variety of large clientele from across a range of public and private sectors including mining, oil and gas, government and large commercial fleets.
The Applicant is the premium dealer for large brands such as Motorola, GME, Kenwood, Spectra Engineering, Barrett, Omnitronics, Maxon, Icom, Pivotel and RFI electronic communications and satellite products and is the Northern Territory Service Centre for Motorola, Maxon Icom, Kenwood and GME.
Concerning the reason that the Applicant adopted the name ‘Combined Communication Solutions’ Mr Post states:
The name COMBINED COMMUNICATION SOLUTIONS was adopted as the three founding directors (Ken May, Luke Button and myself, Shane Post) came from opposing companies to purchase the Northern Territory assets of Bear Communications. As we were combining our talents to provide communication solutions we opted for that name. As above, the Applicant was subsequently incorporated on 16 February 2005 as COMBINED COMMUNICATION SOLUTIONS PTY LTD.
Mr Post states that at the time of the Applicant’s adoption of its name, he had no knowledge of the Opponent or the Opponent’s Registered Trade Mark. The Opposed Logo Trade Mark was designed by the daughter of the Applicant’s receptionist on 11 March 2005. Mr Post says:
The Applicant commenced using the CCS Marks in or around March 2005 and continues to use the CCS Marks for the CCS services, and communications equipment and devices related to the CCS Services, to this date.
Mr Post provides annual revenue for the financial years 2005 to 2011. The figures are in the several millions of dollars and Mr Post states that approximately 30% of the Applicant’s annual consolidated revenue is earned through the supply of the Applicant’s Services under the Opposed Trade Marks.
Mr Post exhibits materials such as invoices from 2005 which bear the Opposed Composite Trade Mark, photographs of company vehicles bearing the Opposed Composite Trade Mark, tender materials submitted in 2005 under the Opposed Composite Trade Mark, website materials, advertising fliers, Yellow Pages® entries for the years 2005 – 2008 and Local Directories entries for the years 2009 -2012.
In his supplementary declaration Mr Post submits rebuttal argument in relation to various allegations in Mr Kelly’s declaration. Mr Post goes on to shed further light on the Applicant’s reasons for the adoption of its trade marks:
As stated in the Post Declaration, the company name and trade mark “Combined Communication Solutions” was born of the “brainstorming” of the three founding directors of CCS (which included me) in about late 2004. During this brainstorming process, we undertook searches for similar names using the Google search engine as part of the process of deciding what name and trade mark to adopt. Our intention was always to have “Solutions” in the name, as we wanted to get away from the identity of the business’ predecessor, Bear Communications, and its approach of “just selling boxes”: we wanted to portray ourselves as “Solutions Providers” not “Black Box Movers”. Although we found IT companies with “Combined” or “Solutions” in their names, we did not come across CCPL or the CCPL Marks at this stage. We even did domain name searches during this time, but did not come across CCPL or the CCPL Marks. As we were combining our talents to provide communication solutions, we ultimately opted for the name “Combined Communication Solutions”.
Terry Crothers is Commercial Technician in the (Communications) Information Management Department at GEMCO (Groote Eylandt Mining Company), Shirley Ansell is Manager/Director at Darwin Radio Taxis, Peter Farley is State Sales Manager SA/NT based in South Australia, Stuart Dell is Dealer Channel Manager at Motorola Solutions Australia Pty Ltd of Queensland, Glen Roberts is Property Manager at Litchfield Council Northern Territory and Marc Woods is the Director at Central Communications (Alice Springs) Pty Ltd. They state their knowledge of the Applicant’s trade marks.
In evidence in reply Mr Buckley is CEO of the Opponent and his declaration seeks to controvert the evidence of Mr Post – it introduces little fresh material and the bulk of this declaration is in the nature of argument. Mr Buckley does instance an incident of confusion between the parties by a third party but I believe that this more logically stems from the similarity of the business names of the parties rather than the similarity of their trade marks.
Similarly, the further declaration of Mr Kelly appears to consist of rebuttal argument rather than fact.
Finally, Mr Troy Abel is Dealer Manager for JVC Kenwood Australia Pty Ltd. Mr Abel cites two instances of confusion because of the ‘Applicant’s name and trade mark being so similar to the name and trade mark of the Opponent.’ Again, I consider that these instances of confusion arise solely through the similarity of the business names of the parties. A person wishing to dispatch goods to a client and looking in a directory or address book for that person’s name is most likely under the circumstances of the Opponent’s and Applicant’s businesses to look for a business name rather than a trade mark.
Rationale

I consider that, at the outset of my discussion of the issues, it is appropriate to say something about both the inherent adaption to distinguish of the expressions ‘Combined Communication Solutions’ and ‘Combined Communications’ and the parties’ use of these expressions as business names.
The term ‘trade mark’ is defined by section 17 of the Act:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
Further, ‘use’ of a trade mark is defined by section 7 of the Act:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
It follows that if a person uses expressions such as ‘Combined Communications’ or ‘Combined Communications Solutions’ to refer to itself and not to its goods or services, that expression is not being used as a trade mark: the expressions are being used only as business names.
With the exception of its radio commercials, the Opponent’s evidence contains only use of the expression ‘Combined Communications’ as a business name. The Applicant has not evidenced use of the expression ‘Combined Communication Solutions’ other than as a business name.
During the hearing of this matter I commented on the inherent adaptation to distinguish of the expressions ‘Combined Communications’ and Combined Communications Solutions’. Such inherent adaptation (or lack of it) within the expressions must affect the comparison of the trade marks under sections 44, 58 and 60 – expressions which have very low inherent adaptation to distinguish do not form a valid basis of comparison: Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; [2006] 154 FCR 165; (2006) 69 IPR 255 (‘Go On ...’); Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘Persian Fetta’); Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924; (2000) 50 IPR 51 (‘ Schoolies ‘); Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1021 (‘Caps the Game’) and see also more recently Agapitos v Habibi [2014] WASC 47 (‘Dental Excellence’). I regard the inherent adaptation to distinguish goods or services within the expressions as being exceptionally low for the following reasons.
The test for inherent adaptation to distinguish is the familiar one oft quoted from Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:
That ultimate question must not be misunderstood. 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. & G. Du Cros Ltd. (1913) AC 624, at pp 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 (i.e. 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 connexion 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. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
On the plain English meaning of the expressions ‘Combined Communications’ and Combined Communication Solutions’ they describe a combination of communications products being offered for sale, lease, rental, repair, etc such as satellite and microwave communications sold together.
At another level the evidence shows that the parties have adopted their trade marks because their owners have been formed out of the combination or coming together of a number of companies or individuals.
62. The ASIC record shows that there have been registrations of at least 1000 business names which start with the word ‘combined’ followed by some description of the services or goods involved such as ‘Combined Accounting and Tax Services’ or ‘Combined Aero Services’.
63. Either denotation of the expressions in question has a very low inherent capacity to distinguish goods or services.
Accordingly, as I have said, I regard the inherent adaptation to distinguish of the expressions ‘Combined Communications’ and ‘Combined Communication Solutions’ as being very low and accordingly principles such as those in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; (1978) 52 ALJR 392; [1978] ATPR 40-067; [1978] ASC 55-010; (1978) 3 TPC 244; (1978) 1B IPR 818; 18 A Crim R 639 at p 229 will apply:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
Accordingly, in any comparison of the trade marks in question, the expressions ‘Combined Communications’ and ‘Combined Communication Solutions’ should be subject to very heavy discounting.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
[…]
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
I do not consider that there is any debate that the goods and services of the Opponent’s registration are similar services or closely related goods to the Applicant’s Services. Neither is there any question but that the Opponent’s Registered Trade Mark has an earlier priority date than that of the opposed applications.
There is no argument from the Opponent that the Opponent’s Registered Trade Mark is substantially identical to either of the opposed trade marks.
Thus the questions that I must address are whether the Opponent’s Registered Trade Mark is deceptively similar to either of the opposed trade marks.
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J discussed deceptive similarity at [13]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 [at 658]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”.
All of the surrounding circumstances are to be considered: Parker J, said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (‘Pianotist’):
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.
Section 10 of the Act provides:
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.
French J explained the evaluation of the likelihood of deception or confusion in the following way in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50]:
(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.”
One of the ‘surrounding’ circumstances referred to in Pianotist, above, is the inherent adaptation to distinguish of the trade marks, or a portion of those trade marks, which are under consideration. For example, with one trade mark for ‘tractors’ owned by the hypothetical ‘Best Tractor Company’ and another by ‘Best Tractors Pty Ltd’, one of which has the device of an emu with the words ‘best tractors’ and the other that has the device of a cow with the word ‘best tractor company’ confusion is unlikely to arise through use of the trade marks despite the commonality of the words ‘best tractors’. The confusion which arises through use is because of the similarity of the inherently unadapted business names rather than the similarities between the trade marks.
In the example given, as long as the words ‘Best Tractor’ and ‘Best Tractor Company’ are used with the respective devices of the emu or cow, the chances of deception or confusion (which arise solely from trade mark use) are low and those which do exist arise only from the lack of inherent adaptation in the words in common which are also used as the business names of their putative owners. Such is the penalty for adopting inherently unadapted words to accompany distinctive devices.
However, where the device of the emu does not accompany the words ‘best tractor’, there is nothing to distinguish the word mark BEST TRACTOR from the trade mark BEST TRACTOR COMPANY and COW device and there is a likelihood that confusion will arise.
Such is the case with the trade marks in question. The word elements in common between the device trade marks lack prima facie inherent adaptation to distinguish. In the Opposed Word Trade Mark there is no accompanying device to aid potential purchasers in distinguishing between it and the Opponent’s Registered Trade Mark. Deception or confusion is therefore likely to arise out of the use of the Opposed Word Trade Mark.
I therefore find that the Opposed Word Trade Mark is deceptively similar to the Opponent’s Registered Trade Mark but that the Opposed Logo Trade Mark is not deceptively similar to the Opponent’s Registered Trade Mark.
The Applicant alleges that the Opposed Word Trade Mark has been used honestly and concurrently with the Opponent’s Registered Trade Mark. However, I have found that the evidence shows that the Applicant has only used the words ‘Combined Communications Solutions’ as a business name and not as a trade mark.
The Applicant thus has no basis for establishing the honest concurrent use of the Opposed Word Trade Mark.
Section 58

Section 58 of the Act provides:
58Applicant not owner of trade mark
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.
Ownership of a trade mark arises either through use of that trade mark or by the filing of an application to register that trade mark, whichever is the earlier. If ownership has arisen through prior use, registration of a trade mark may be successfully opposed by the owner of that first used trade mark if that trade mark be as a minimum substantially identical[6] to the opposed trade mark and the goods or services in question be the same kind of thing.[7]
[6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049.
[7] In re Hicks’s Trade Mark 22 VLR 636.
Here the Opponent relies on alleged use of the words ‘Combined Communications’ as a trade mark before the filing date of the Opposed Word Trade Mark (or any use of the Opposed Word Trade Mark). As I have intimated, the only clear trade mark use of the words ‘Combined Communications’ that I can find in the Opponent’s evidence is in its radio advertising from 1 November 2006. This clearly predates the filing date of the Opposed Word Trade Mark and I have found that the Applicant has not used the Opposed Word Trade Mark as a trade mark but, rather, as a business name. Obviously, there are problems with such limited use of a trade mark so lacking in inherent adaptation in establishing ownership of that trade mark.
However, the Opponent is also required to establish that the trade marks COMBINED COMMUNICATIONS and COMBINED COMMUNICATION SOLUTIONS are substantially identical.
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said of substantial identity, at [12]:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
One of the factors that affects the assessment of substantial identity is the inherent adaptation of the trade marks under consideration. Any change to a trade mark which lacks inherent adaptation to distinguish may affect its identity: the less inherent adaptation within the trade marks under consideration, the greater the impact on the identities any alteration or addition might have. Consider, for example, the hypothetical trade mark GREEN TRACTOR as compared with the trade mark TRACTOR ONE, used in relation to tractors.
I consider that the differences between the trade marks COMBINED COMMUNICATIONS and COMBINED COMMUNICATION SOLUTIONS are more likely than not to be such that they are alterations to the identity of either trade mark.
Accordingly, for both of the above reasons, the Opponent has not established its ground under section 58 to my satisfaction.
Section 60
Section 60 of the Act provides:
60Trade 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.
It is necessary for an opponent to establish both that the trade mark(s) on which it relies has/have reputation(s) and also that because of that reputation the use of the opposed trade mark would confuse or deceive. There is no requirement that the opposed trade mark be deceptively similar but a degree of similarity of some kind should be present.
As I have mentioned – I do not consider that the Opponent has established that either of the trade marks on which it relies has a reputation. The Opponent’s Registered Trade Mark has obviously been used to some degree, however, that trade mark does not appear to me to have a reputation strong enough to found this ground – the exact advertising and promotional figures for any particular year are elusive, as are the turnover figures. The website material does not show use of the Registered Trade Mark in relation to goods or services until shortly before the relevant date. Further, I note that the Opponent now uses a different trade mark as its house mark and I suspect that if the Registered Trade Mark had a reputation sufficient to found this ground, the Opponent would have been slow to replace it.
The Opponent’s word trade mark COMBINED COMMUNICATIONS has only been used in radio commercials – this is also (in the circumstances of this matter) insufficient to establish a reputation for that trade mark.
Additionally, if the Opponent had established that its Registered Trade Mark had a reputation at the relevant date, it is not similar to the Opposed Logo Trade Mark such that deception or confusion would stem from the use of the Opposed Logo Trade Mark.
The Opponent has not established its ground under section 60.
Decision
Subsection 55(1) provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
I refuse to register application 1452550 (the Opposed Word Trade Mark).
Application 1452551 may 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 of 1452551 shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction. It is appropriate in the light of my decision that (if there is no appeal against this decision) the endorsement be deleted from application 1452551 prior to it proceeding to registration.
Costs
Both parties have had some degree of success in these matters and I accordingly do not award costs.
Iain Campbell Thompson
Trade Marks Hearings
12 December 2014

[2014] ATMO 117

12 December 2014