COMPASS Pathfinder Limited

[2024] ATMO 16

TRADE MARKS ACT 1995

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

Re:International Registration number 1570415 designating Australia under number 2148840 (classes 5 & 44) – COMPASS PATHWAYS - in the name of COMPASS Pathfinder Limited

Delegate:

Tracey Berger

Representation:

Holder: Kate Andean of Banki Haddock Fiora

Decision:

2024 ATMO 16

Trade Marks Act 1995 (Cth) – Regulation 17A.24: final decision on examination – consideration of section 44 of the Trade Marks Act 1995 – trade mark not deceptively similar to earlier registered trade mark – trade mark accepted for protection

Background

1. On 17 September 2020, COMPASS Pathfinder Limited (‘Holder’) applied to extend protection to Australia of International Registration 1570415 designating Australia under number 2148840 (‘IRDA’) pursuant to the provisions of the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth).[1]  The current details of the IRDA appear below:

   [1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Application:           2148840 (IR 1570415)

Filing Date:            17 September 2020

Priority Date:        20 March 2020

Trade Mark:          COMPASS PATHWAYS (‘Trade Mark’)

Specification:        Class 5: Pharmaceuticals for the treatment of mental health conditions; pharmaceuticals for the treatment of depression; psychoactive medicines; psychedelic medicines; all the aforementioned being for human use only (‘Holder’s Goods’)

Class 44:  Therapy for the treatment of mental health conditions; therapy for the treatment of depression; provision of information relating to mental health and mental healthcare; provision of information relating to depression; all the aforementioned being related to the treatment of human use only (‘Holder’s Services’)  

1. The IRDA was examined as required under reg 17A.12. On 15 February 2022, IP Australia issued a Notification of Provisional Refusal of the IRDA identifying grounds for rejection pursuant to s 44. Seven prior registrations or applications were cited as objections to registration of the Trade Mark.

2. The Holder and this office engaged in further rounds of correspondence whereby all of the citation objections except one were overcome by various means such as amending the specifications including deleting a class and providing a letter of consent.  The citation of registration 134403 shown below was maintained.

Registration:         1344003 (‘Cited Registration’)

Filing Date:            5 February 2010

Trade Mark:          Compass Health Group (‘Cited Mark’)

Owner:                  Compass Health Group Pty Ltd (‘Cited Owner’) 

Specification:        Class 44: Psychological services including individual and group assessment and treatment, and counseling

1. The Examiner considered that the Cited Mark and the Trade Mark are deceptively similar because the marks share the essential feature COMPASS.  As a result, the Examiner surmised that despite some visual and verbal differences between the marks, consumers who are aware of the Cited Mark are likely to infer a connection and confuse the services offered under each mark as being provided by the same trader.  Further, the Examiner noted that the Holder’s Services are the same or similar to the services of the Cited Registration.  Accordingly, the citation was maintained as an objection to registration of the IRDA for the Holder’s Services.  There was no outstanding objection to the extension of protection of the IRDA for the Holder’s Goods.

2. Following the 5^th Notice of Provisional Refusal, the Holder asked to be heard under reg 17A.17.  I heard this matter as a delegate of the Registrar of Trade Marks on 4 December 2023.  Prior to the hearing, the Holder filed written submissions and Kate Andean of Banki Haddock Fiora made oral submissions at the hearing.

3. As a preliminary observation, I note that the purpose of this hearing is not a review of the Examiner’s decision but rather a fresh consideration of whether there is a valid ground for refusing to extend protection of the IRDA.  I make my decision based on the contents of the official file, and the oral and written submissions made on behalf of the Holder.

Legislative Framework

1. Regulation 17A.24 states:

17A.24  Final decision on examination

(1)  The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(a)  it is not in accordance with this Division; or

(b)  there are grounds for rejecting it.

…

(3)  The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)  it is not in accordance with this Division; or

(b)  there are grounds for rejecting it, in whole or in part.

1. The only unresolved ground for rejection to the IRDA is under s 44 which relevantly provides:

44  Identical 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.

(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.

1. I note that the Application is subject to a presumption of registrability. Pursuant to reg 17A.24, I must accept the Application unless satisfied, on the balance of probabilities, that there are grounds under the Act for rejecting it.

Discussion

1. For the Cited Registration to constitute a valid objection to the extension of protection of the IRDA, it must be a trade mark registered or sought to be registered by a person other than the Holder and:

• have a priority date which is earlier than that of the IRDA (‘the first requirement’);

• is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

• is in respect of goods and/or services that are similar or closely related to the Holder’s Goods and Services (‘the third requirement’).

First Requirement

1. The Cited Registration is in the name of someone other than the Holder and has an earlier prior date than the IRDA.  The first requirement is satisfied.

Second Requirement

1. Whilst the Holder does not concede that the Holder’s Goods and Services are the same or similar to those of the Cited Registration, for completeness, I note that I regard the two sets of services to be similar.  The Holder’s Services include ‘therapy for the treatment of mental health conditions’ which in my opinion is sufficiently broad to include the services of the Cited Mark.  The Cited Mark covers psychological services including assessment, treatment and counselling. ‘Psychological’ is defined as ‘relating to the mind or to mental phenomena’.[2]  Both sets of services relate to the treatment of mental health and such services are often provided by the same professionals and/or through the same trade channels.  Hence I regard the Holder’s Services to be similar to those of the Cited Registration.

   [2] Macquarie Dictionary (online at 4 January 2024), def 2 ‘psychological’.

2. However, I do not consider the Holder’s Goods to be closely related to the services of the Cited Registration.  Whilst some mental health providers may prescribe pharmaceuticals, they do not generally manufacture or sell pharmaceuticals.  In my opinion, the pharmaceutical industry and the provision of mental health services are regarded by consumers as being different fields and consumers would not consider the Holder’s Goods offered under the Trade Mark to be those of the Cited Owner or otherwise connected to the Cited Owner.      

Third Requirement

1. Accordingly, the question is whether the Trade Mark is substantially identical or deceptively similar to the Cited Mark.

2. Justice Windeyer set out the test for determining whether marks are substantially identical in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’) as follows:

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.[3]

[3] [1963] HCA 66, [12].

1. The marks to be compared side by side are shown below:

Cited Mark	Trade Mark
Compass Health Group	COMPASS PATHWAYS

1. The trade marks have the same first word COMPASS but it is apparent when comparing the marks side by side that the similarity between the marks ends there.  The Cited Mark consists of three words as compared to two words in the Trade Mark.  Although the words ‘Health Group’ in the Cited Mark are non-distinctive, they cannot be ignored.  Despite the commonality of the word COMPASS in the trade marks, the other differences are such that that there is not a total impression of similarity between the two marks.  I do not consider the Trade Mark to be substantially identical to the Cited Mark and turn to the question of whether the two marks are deceptively similar. 

2. Section 10  provides 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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who said:

   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 [mark].[4]

   [4] Ibid, [13].

3. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[5]  Hence, allowance is made for the imperfect recollection of the trade marks.[6]  The impression comes from the trade marks in their entirety[7] and is informed by the look, sound and ideas conveyed by the marks.[8]

   [5] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [6] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [7] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9, [92] (Keane CJ; Stone and Jagot JJ).

   [8] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

4. The Holder argues that the Trade Mark is visually, aurally and conceptually different from the Cited Mark.  Although the first word of each mark is the same, the other words in the marks do not look or sound the same. 

5. In the Holder’s submission, the additional words in the respective marks ‘changes the role the shared element COMPASS plays’.  Whilst the words ‘Health Group’ in the Cited Mark are descriptive, they cannot be disregarded and those words will be retained by consumers as they inform the nature of the services offered.  In support of this argument, the Holder refers to the following comments in Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel:

   It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison.[9]

   [9] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

6. The Holder relies on a number of decisions where despite a common element, marks were found not to be deceptively similar.  In particular, the Holder contends that the case of Monster Energy Company v PepsiCo[10] is directly analogous.  In that decision, the marks MONSTER MUNCH and MOSTER MEAL DEAL were found not to be deceptively similar because:

• although the word MUNCH had some meaning in relation to the food products in question, it was not descriptive of the goods in the same way as MEAL DEAL;

• the words MUNCH or MEAL DEAL were a point of differentiation as they are not visually, aurally or conceptually similar nor convey a similar impression; and

• consumers who saw MONSTER MUNCH were likely to recall the mark in its entirety rather than just remember the word MONSTER and to focus on MONSTER as the essential feature diminishes the impression conveyed by the mark as a whole.

  [10] [2021] ATMO 85 (Hearing Officer T. Brown)

1. In addition, the Holder refers to the comments of Hearing Officer Wilson in Chris Kingsley v David Scott in finding that SOUL REBELLION is not deceptively similar to REBELLION:

   The trade mark SOUL REBELLION consists of two recognisable English words and as a whole does not appear to have any readily discernible meaning in relation to the applicant’s goods and services. While “Rebellion” is a memorable word in the applicant’s trade mark, neither of the words “Soul” or “Rebellion” by themselves have any specific meaning in relation to these goods or services. As a result, neither word can be devalued or discounted in a comparison with the opponent’s trade mark.

   …

   The “Soul” element of the trade mark, being foremost, distinctive and memorable by itself, is unlikely to be overlooked or disregarded whether the goods are purchased by visual or aural means. SOUL REBELLION does have an ordinary dictionary meaning which is unlikely to be confused or associated with the word “Rebellion” by itself. Therefore, I am not satisfied that upon imperfectly recalling either trade mark, the prospective consumer would be confused.[11]

   [11] [2011] ATMO 20, [13], [15].

2. It is the Holder’s argument that the present situation is the same in that the word PATHWAYS alters the meaning of the Trade Mark such that it is unlikely to be remembered simply as COMPASS but rather will be viewed as COMPASS PATHWAYS which is different to Cited Mark.  

3. The Holder further submits that:

a.   the two marks in question convey different meanings.  The Cited Mark conveys the idea or a group of companies within the health industry which call themselves ‘Compass’ whereas the Trade Mark, if it conveys any meaning at all, suggests ‘various guidance options’ or ‘offering guidance that implements various methods’;

b.   the nature of the services provided by the Cited Owner and Holder, being mental health services, further eliminates any risk of consumer confusion as such services are usually offered by specialists on referral from a general practitioner.  The relevant trade in these circumstances is unlikely to dismiss the differences in the marks nor consider the Trade Mark to be a brand extension as this is not a common practice for health practitioners; and

c.   maintaining an objection based on the Cited Mark confers on the Cited Owner an unduly broad monopoly in the term COMPASS.  Whilst the Holder acknowledges that the Registrar is not bound by the state of the Register, the Holder points to a number of marks containing COMPASS that co-exist with the Cited Mark for the same or similar services.  I note that many of these marks are distinguishable from the Trade Mark in that most of these registered marks do not cover mental health services, or include a distinctive device and/or with the exception of registration 1987276 COMPASS DELIGHT, do not feature COMPASS as the first element of the mark.  However,  the Holder has also provided the results of a Google search for ‘Compass mental health’ to show that other traders use the term COMPASS in combination with other words. 

1. In my assessment, the Trade Mark is not deceptively similar to the Cited Mark.  Whilst the marks have the word COMPASS in common, they look and sound different.  Although the word COMPASS is an essential element of both marks, PATHWAYS is also an essential element of the Trade Mark.  The term PATHWAYS is not entirely without meaning in the medical field, often being used to refer to a care plan but the term is not entirely descriptive in the same manner as ‘Health Group’.  In my opinion, consumers are unlikely to recall the Trade Mark simply as COMPASS.

2. Moreover, all the surrounding circumstances need to be taken into consideration including the character of potential consumers.  As the Opponent has noted, mental health services are often provided after referral from a general practitioner who are discerning consumers.  Moreover, the Google search results filed by the Holder indicate that consumers are accustomed to distinguishing between different mental health providers using COMPASS in combination with other words.  These search results show use by different traders of Compass Health Group, Compass Psychiatry, Compass Health, Compass House, Compass Counsellor, Compass Care Group and Compass Psychiatry, amongst others.  A number of these marks are more similar to the Cited Mark than the Trade Mark.  In the circumstances, it appears unlikely that consumers would assume a connection between the Holder’s Services offered under the Trade Mark and those of the Cited Owner. 

3. Whilst I consider that this is a case where reasonable minds may differ on the question of deceptive similarity, I am persuaded that given the overall differences in the marks and taking into account all the surrounding circumstances (particularly the various COMPASS marks in use by providers of mental health services) that on the balance of probabilities, the Trade Mark is not deceptively similar to the Cited Mark.

Decision

1. Pursuant to reg 17A.24, I must accept the Application unless there are grounds for rejecting it under the Act. I am not satisfied that the Trade Mark is deceptively similar to the Cited Mark and therefore, I accept the Application for registration.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 January 2024