Concierge App Pty Ltd v Luxit Pty Limited
[2020] ATMO 71
•30 April 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Concierge App Pty Ltd to registration of trade mark application number 1837550 (classes 9, 38, 41, 42, 44, 45) - LUX IT YOUR BEAUTY CONCIERGE - in the name of Luxit Pty Limited
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Anthony Alder and Peter Dojlida of Alder IP Applicant: Donna Short and Hazel McDwyer of Addisons Lawyers |
| Decision: | 2020 ATMO 71 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58, 58A, 59, 60 and 62A considered – none established – trade mark may proceed to registration. |
Background
This decision concerns an opposition brought by Concierge App Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application Number: 1837550
Applicant: Luxit Pty Limited (‘Applicant’)
Filing Date: 12 April 2017
Specification: See Annexure 1 (‘Goods and Services’)
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 7 September 2017.
The Opponent filed its Notice of Intention to Oppose (‘NIO’) registration on 2 November 2017 and a Statement of Grounds and Particulars (‘SGP’) on 2 December 2017.
The Applicant filed its Notice of Intention to Defend the Trade Mark on 15 December 2017.
Evidence in Support (‘EIS’) was filed by the Opponent on 22 March 2018 and the Applicant filed its Evidence in Answer (‘EIA’) on 2 July 2018. The Opponent filed Evidence in Reply (‘EIR’) on 10 September 2018.
At the conclusion of the evidence filing period, the parties were informed of their right to request a hearing or to make written submissions. Both parties elected to rely on written submissions. The Applicant filed written submissions which were prepared by its representative Alder IP (‘Applicant’s Submissions’) on 20 December 2018 and the Opponent filed written submissions which were prepared by it representative Addisons Lawyers (‘Opponent’s Submissions’) on 4 January 2019.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act. In doing so I take account of the material comprised of the written record. This record consists of the above described material.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42, 44, 58, 58A, 59, 60 and 62A of the Act. To be successful in this opposition, the Opponent must establish at least one of these grounds.
The Opponent bears the onus of establishing the ground of opposition.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 12 April 2017, being the both the filing and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
Evidence
The following declarations were filed as evidence in this proceeding:
| EIS |
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| EIA |
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| EIR |
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The Opponent’s evidence
The Opponent is the owner of the following Australian trade mark registrations (collectively ‘Word Marks’):
Trade Mark:
Registration Number: 1827164
Priority Date: 21 February 2017
Specification: Class 44: Beauty Services; Massage; Depilatory waxing; Personal hair removal services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair care services
Trade Mark:
Registration Number: 1859604
Priority Date: 21 February 2017 (Divisional of 1827164)
Specification: Class 9: Computer software applications (downloadable) related to beauty services, and beauty business development and assistance only
Class 35: Business development services related to beauty services only; Provision of business assistance related to beauty services only
The Opponent is also the owner of the following Australian trade mark registrations (collectively ‘Device Marks’):
Trade Mark:
Registration Number: 1827174
Priority Date: 21 February 2017
Specification: Class 9: Computer software applications (downloadable) related to beauty services, and beauty business development and assistance only
Class 35: Business development services related to beauty services only; Provision of business assistance related to beauty services only
Class 44: Beauty Services; Massage; Depilatory waxing; Personal hair removal services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair care services
Trade Mark:
Registration Number: 1827176
Priority Date: 21 February 2017
Specification: Class 9: Computer software applications (downloadable) related to beauty services, and beauty business development and assistance only
Class 35: Business development services related to beauty services only; Provision of business assistance related to beauty services only
Class 44: Beauty Services; Massage; Depilatory waxing; Personal hair removal services; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Hair care services
For the discussion that follows, the Opponent’s trade mark registrations set out at [11] and [12] will be collectively referred to as the ‘Concierge Marks’.
According to Danilovic 1, the Opponent offers a range of beauty therapy and business services under the ‘CONCIERGE trade mark’ and these are provided mainly via a mobile application. The term ‘CONCIERGE trade mark’ is not defined in Danilovic 1, but it is used by the declarant to reference various trade marks incorporating the word ‘concierge’ including the Concierge Marks.
The declarant states that the ‘CONCIERGE trade mark’ was created in October 2015 and that the first use of same occurred around this time period. Between October 2016 to January 2017, the Opponent launched a website ‘ created social media pages and released software applications featuring the ‘CONCIERGE trade mark’. The declarant states that the ‘CONCIERGE trade mark’ is promoted through various marketing campaigns including advertising on buses, distribution of brochures and telemarketing. In view of the Opponent’s existing trade mark registrations in combination with its use of various trade marks incorporating the word ‘concierge’, the declarant asserts that the Opponent has rights in the word and logo versions of ‘concierge’ at common law.
Danilovic 1 contains submissions that the Trade Mark should not be registered because it contains the word ‘concierge’. According to the declarant, ‘concierge’ is the only distinctive element within the Trade Mark and the remaining elements all lack distinctiveness in the context of the Goods and Services. This is particularly the case with respect to the element ‘lux’ which, in the declarant’s opinion, is commonly used to denote high quality. To support this, reference is made to Exhibit DD6 which contains a list of internet search results purportedly obtained from a search for the word ‘lux’ in combination with the word ‘beauty’.
Interactions between the Opponent and Applicant are outlined in Danilovic 1. Relevantly, the declarant first became aware of the Applicant in 2016 because the Applicant offered similar services to that provided by the Opponent, namely providing beauty therapy services via a mobile application. The declarant states that the Applicant did not use ‘concierge’ in its advertising when it first commenced operating. Rather, the Applicant incorporated ‘concierge’ in its advertising around February 2017. The Applicant’s adoption of ‘concierge’ has led to the Opponent’s customers querying whether the Opponent and the Applicant were associated. In an attempt to remedy this confusion, the Opponent sent the Applicant correspondence in March 2017 and again in May 2017, each time requesting that the Applicant cease use of the word ‘concierge’. The declarant points out that the application for the Trade Mark was filed after the first correspondence was sent. According to the declarant, the Applicant never responded and both pieces of correspondence were returned undelivered.
Danilovic 2 addresses claims made within the Gomez Declaration. Specifically, the declarant re-asserts the Opponent’s common law ownership of the word and logo versions of ‘concierge’. The declarant also refutes the suggestion in the Gomez Declaration that the Trade Mark has acquired a reputation as a result of the Applicant’s use of it and emphasises that no evidence has been supplied to confirm that the Applicant intends to use the Trade Mark with respect to all the Goods and Services. The declarant also believes that the EIA demonstrates use of ‘beauty concierge’ in a descriptive manner and thus does not constitute use as a trade mark.
The remainder of Danilovic 2 reiterates assertions made in Danilovic 1, namely that ‘concierge’ is the only distinctive element within the Trade Mark. To this end, further examples of the words ‘lux’, ‘luxe’ and words containing the suffix of ‘-lux’ being used in relation to beauty therapy are provided in Exhibit DD11. The etymology of ‘concierge’ is also discussed by the declarant to support their contention that it is a distinctive term in the context of beauty therapy services. Meanwhile, Danilovic 2 rebuts claims made in the Gomez Declaration pertaining to the Opponent’s actual use of the Concierge Marks and assertions as to whether the Applicant had constructive notice of the Concierge Marks.
The Applicant’s evidence
The Applicant is the owner of a portfolio of trade mark registrations in Australia which feature the terms ‘luxit’ or ‘lux it’ in respect of various goods and services.[3] The filing dates of these registrations all predate the Opponent’s first use of the Concierge Marks. The declarant explains that the ‘lux’ element of the Trade Mark is derived from a shorthand of their childhood sign off of ‘love you, with a kiss and a hug’.[4] The phrase ‘your beauty concierge’ was combined with its ‘luxit’ brand in order to reflect the fact that its clients increasingly referred to the Goods and Services as ‘beauty concierge’ services. The declarant states that the Applicant first became aware of the Opponent when the NIO was filed in this proceeding.
[3] See Australian trade mark registration numbers 1718163, 1719410 and 1719423.
[4] Gomez Declaration, [21].
The Applicant provides beauty therapy services via a mobile application and it has partnered with over 600 beauticians. The Applicant also provides the Goods and Services under the Trade Mark via its hotel partners. The Trade Mark appears on the Applicant’s website, social media platforms, stationery, flyers and business cards. The Trade Mark also appears on the Applicant’s ‘LUXit’ software application and the Applicant sponsors the Concierge Hospitality Ball which provides exposure of the Trade Mark to the hotel industry.
The declarant responds to statements made within Danilovic 1. Specifically, criticism is levelled at the Opponent’s evidence noting the absence of dates, visible search parameters and poor image quality for some of the material exhibited. The declarant further contends that the evidence is deficient because there is a general absence of particularised details and corroborative evidence. The declarant denies any awareness of the correspondence mentioned in Danilovic 1 and highlights that the actual content of the correspondence allegedly sent was not exhibited. Given the nature of the evidence provided, the declarant contends that the Concierge Marks simply do not have any reputation and that there is no evidence of confusion other than an unsubstantiated claim made in Danilovic 1.
The declarant also outlines their reasons as to why the Trade Mark can coexist with the Concierge Marks. This includes the fact that ‘concierge’ forms a minor element of the Trade Mark and there is coexistence on the Trade Marks Register (‘Register’). To this end, Exhibit FG-25 contains an extract list of 74 trade marks which feature the term ‘concierge’ that have been made in respect of the classes covered by the Goods and Services. Meanwhile, Exhibits FG-26 to FG-28 contain printouts of various websites which, in the declarant’s view, demonstrate common use of the term ‘concierge’ by other traders in relation to software applications and within the beauty industry.
Discussion
Section 44
Section 44 of the Act relevantly provides:
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.
To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar or closely related to the Goods and Services.
The Concierge Marks are particularised in the SGP as supporting this ground of opposition. The Opponent’s Submissions largely focus on the common element of ‘concierge’ between the trade marks. Given this constitutes the sole element of the Word Marks, it is appropriate for present purposes to conduct a comparison of the Word Marks as against the Trade Mark. This is because if the Word Marks are not found to be at least deceptively similar to the Trade Mark, logic dictates the Device Marks are likewise not deceptively similar to the Trade Mark because they possess a higher degree of dissimilarity by virtue of their additional points of differentiation.
The Word Marks are registered by a person other than the Applicant and each registration has a priority date earlier than 12 April 2017. It follows that requirements (i) and (ii) as set out at [25] are, therefore, satisfied. The Goods and Services include broad claims for ‘computer software’ in class 9 and ‘providing information, including online, about hygienic and beauty care for human beings or animals’ in class 44. In the context of notional use, these claims are evidently similar to at least some of the registered goods and services of the Word Marks which include, for example, claims for ‘computer software applications (downloadable) related to beauty services, and beauty business development and assistance only’ in class 9 and ‘beauty services’ in class 44, respectively. It follows that requirement (iv) as set out at [25] is satisfied in respect of at least some of the Goods and Services.
It is now necessary to consider requirement (iii) as set out at [25] of this decision. The test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[5]
[5] [1963] HCA 66, [12] (‘Shell’).
The Trade Mark and the Word Marks are reproduced below:
| Trade Mark | Word Marks |
The Opponent contends that the Trade Mark is substantially identical to at least the Word Marks. This contention is based on the premise that ‘concierge’ forms the essential feature of the Word Marks and it is the essential feature of the Trade Mark because the terms ‘lux’, ‘it’ and ‘your beauty’ allegedly have ‘little or no ability to distinguish’[6] the Goods and Services.
[6] Opponent’s Submissions, 3.
It is true that ‘concierge’, by default, constitutes the essential feature of the Word Marks. However, I do not accept that it is the essential feature of the Trade Mark. The Opponent’s position disregards how the Trade Mark is represented, fails to appropriately contextualise the elements in relation to the Goods and Services and artificially dissects the Trade Mark. Indeed, the Opponent’s Submissions have not addressed why the term ‘lux it’ should be considered non-distinctive in the context of the Goods and Services. Similarly, the phrase ‘your beauty concierge’ is presented as a single continuous line of text and this format simply does not lend itself to separating out the elements ‘your beauty’ and ‘concierge’ into two marks.[7] To this end, the Opponent’s Submissions are devoid of any compelling reason to deconstruct the phrase in this manner.
[7] Cf Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [223].
In my view, the Trade Mark is comprised of two essential features – namely, the term ‘lux it’ and the phrase ‘your beauty concierge’. The term ‘lux it’ clearly strikes the eye given its size and positioning within the Trade Mark and it would not be overlooked in a side by side comparison. Likewise, the phrase ‘your beauty concierge’ forms an essential feature of the Trade Mark given the contrasting nature in font size and positional placement. Having regard to the essential features of the Trade Mark and the Word Marks, a total impression of dissimilarity emerges between the trade marks when compared side by side. As such, the trade marks under comparison are not substantially identical.
I turn now to consider whether the trade marks are deceptively similar. The term ‘deceptively similar’ is defined in s 10 of the Act:
Definition 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.
The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
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 [mark].[8]
[8] Shell (n 5) [13].
The Opponent’s Submissions emphasise that ‘concierge’ forms the identity of the Trade Mark because it is the only distinctive element within same. With respect to the remaining elements, it was submitted that ‘lux’ is short for ‘luxurious’ and denotes ‘high or luxurious quality in the trade’.[9] Meanwhile, ‘your beauty’ is ‘self-evidently common to the trade’[10] and ‘it’ has no distinctiveness because it is ‘either fully descriptive of IT (Information Technology) type services or is just the word “it”’.[11] The Opponent concludes that ‘[b]ecause LUX, IT, BEAUTY, YOUR are words that are merely common to the trade, as per “Kleenoff”,[12] only CONCIERGE is memorable resulting in a tangible danger of deception or confusion with all of the Applicant’s [sic] marks’.[13]
[9] Opponent’s Submissions, 3.
[10] Ibid, 2.
[11] Ibid, 3.
[12] Bale & Church Limited v Sutton Parsons & Sutton and Astrah Products (1934) 51 RPC 129.
[13] Opponent’s Submissions, 4.
Conversely, the Applicant asserts that ‘concierge’ does not comprise an essential element of the Trade Mark. Thus, it does not retain its identity when the Trade Mark is considered as a whole. This is because ‘concierge’ forms a minor element of the Trade Mark which is depicted in a very small font in comparison to the enlarged ‘lux it’ element. The Applicant’s Submissions contend that the impression conveyed by the Trade Mark clearly lies with the word term ‘lux it’ whereas the impression conveyed by the Word Marks is ‘concierge’. The Applicant believes that there is no tangible danger of deception or confusion.
In my assessment, the Trade Mark is not deceptively similar to the Word Marks. The Opponent’s Submissions effectively invite me to exclude all the allegedly descriptive elements within the Trade Mark and focus purely on ‘concierge’. Even if I were to accept the proposition that every element within the Trade Mark aside from ‘concierge’ is descriptive, their presence cannot be completely ignored. To do this would be counterintuitive to the principles set out in the established test for deceptive similarity. In short, a comparison for the purpose of determining deceptive similarity remains between the general effect of the trade marks as wholes.[14]
[14] Clark v Sharp (1898) 15 RPC 141, 146.
The distinctiveness of the word ‘concierge’ forms a key issue because it is the only commonality between the trade marks. The Opponent argued that ‘concierge’ is highly distinctive because it is a dictionary defined word which refers to a hotel employee whose job is to assist guests. As such, it is meaningless in relation to beauty therapy. The Applicant disputed this and claimed ‘concierge’ is commonly used in relation to software applications and within the beauty industry itself. To support this, extracts of internet search results from searches of ‘concierge beauty’ and ‘concierge software’ were exhibited to Gomez Declaration. The Opponent is critical of these extracts because it considers the examples are reflective of use overseas and not within Australia.
In view of the evidence before me, I consider there is merit in the argument advanced by the Applicant. The EIA indicates the meaning attributable to the word ‘concierge’ conceivably extends beyond the traditional notion of a hotel employee. That is, ‘concierge’ is now conceptualised more broadly and deployed to indicate personal services which provide recommendations, information and/or coordination services on a particular subject matter. Several examples exhibited to Gomez Declaration illustrate traders using concierge in a descriptive manner such as ‘bridal concierge’, ‘premier concierge beauty services’ and ‘GoHero.ai is a travel concierge app’.[15] The Applicant itself is described by third parties as the ‘Premier beauty concierge to get you ready for Valentine’s Day’.[16] To a lesser extent, the proliferation of trade marks on the Register incorporating the word ‘concierge’[17] reinforces consumer recognition of this word in the marketplace as extending beyond its dictionary defined meaning. It follows that the mere presence of ‘concierge’ within each trade mark is not in and of itself a persuasive factor that the trade marks are deceptively similar.
[15] See Exhibits FG-27 to FG-28 to Gomez Declaration, 361–364.
[16] See Exhibit FG-12 to the Gomez Declaration, 139.
[17] See, eg, Australian trade mark application numbers 1557871 (‘Cat Concierge’), 1585195 (‘The Expat Concierge’), 1623326 (‘The Design Concierge’), 1738251 (‘Restaurant Concierge’), 1832781 (‘Digital Concierge’) and 1851598 (‘Health Concierge’).
In the present comparison, the trade marks contain noticeable visual differences. The Trade Mark contains five words, two of which are significantly enlarged and rendered in a stylised manner. The Word Marks are comprised of a solitary word portrayed in plain typescript. In contrast, the term ‘lux it’ forms a prominent element of the Trade Mark by virtue of its size, central position and stylisation. Depicted below this element is the phrase ‘your beauty concierge’. The diminished size of this phrase renders it subsidiary in nature to the ‘lux it’ element. In addition, the ‘concierge’ element is embedded at the termination of this subsidiary phrase, reinforcing its lesser importance and thereby reducing the likelihood that it would be a memorable element. Indeed, it is plausible that the ordinary consumer may not even ascertain or recollect the ‘concierge’ element of the Trade Mark. As such, pronounced visual differences exist between the respective trade marks.
Aurally, the trade marks are quite different. The Trade Mark is comprised of five words consisting of seven syllables whereas the Word Marks are constituted by a solitary word with only two syllables. Given the depiction of the Trade Mark, it is conceivable that it will be articulated as ‘lux it’, being its prominent element, with the subsidiary phrase potentially not even verbalised. The word ‘concierge’ clearly bears no aural resemblance to the term ‘lux it’. Several points of difference arise when ‘concierge’ is compared with the subsidiary phrase, given the latter contains the additional words ‘your beauty’ preceding the common element. It follows that the trade marks are aurally distinct.
Conceptually, the trade marks diverge. While the term ‘lux it’ has no readily defined dictionary meaning, it is evocative of an upgrade or improvement of an undefined object. This is self-evidently dissimilar to the concept conveyed by ‘concierge’. The phrase ‘your beauty concierge’ conjures up the idea of a person who provides personalised beauty services such as recommendations or advice. Again, this differs from the idea conveyed by ‘concierge’ solus. Accordingly, the conceptual impression of the trade marks are different.
For the aforementioned reasons, I am satisfied that there is no real and tangible danger of confusion between the Word Marks and the Trade Mark. While the trade marks contain ‘concierge’ as a common element, I do not consider the overall impressions left by the trade marks to be deceptively similar. There are significant visual, aural and conceptual differences between the trade marks such that, even allowing for imperfect recollection, the trade marks are distinguishable when considered in their entirety. It follows that the Device Marks are also not deceptively similar to the Trade Mark.
The s 44 ground of opposition has not been established.
Section 58
Section 58 of the Act relevantly provides:
Applicant 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.
In order to succeed under this ground of opposition, the following requirements must be established:
the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;[18]
the Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent has been used;[19] and
a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark by the Applicant.[20]
[18] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936.
[19] Re Hicks’s Trade Mark (1897) 3 ALR 75.
[20] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
The Opponent’s asserts that the Applicant is not the owner of the Trade Mark because the Opponent was the first user of substantially identical trade marks to the Trade Mark in Australia. The Concierge Marks are particularised as supporting this ground of opposition. For the reasons provided in the s 44 discussion, the Trade Mark is not substantially identical to any of the Concierge Marks. As such, requirement (i) set out at [46] has not been satisfied. It is therefore unnecessary to consider the remaining requirements.
Accordingly, the s 58 ground of opposition has not been established.
Section 58A
Section 58A of the Act relevantly provides:
Opponent's earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4).
The application for the Trade Mark was not accepted under the provisions of s 44(4) of the Act or a similar provision of the regulations made for the purposes of Part 17A of the Act. Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to the Concierge Marks, the provisions of s 44(4) are not available to be applied in this opposition proceeding. As such, s 58A of the Act is not enlivened in the present circumstances.
Consequently, the s 58A ground of opposition has not been established.
Section 59
Section 59 of the Act provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date of the application, being 12 April 2017. The filing of an application creates a favourable presumption that the Applicant’s intends to use the Trade Mark.[21] However, this is a rebuttable presumption. If the Opponent establishes a prima facie case of lack of intention to use the Trade Mark at the date of filing, the evidentiary onus shifts to the Applicant for rebuttal.[22] As such, the Applicant’s subsequent use, or lack thereof, can be probative in assessing whether the requisite intention existed as at the filing date of application.[23]
[21] Aston v Harlee Manufacturing Co. [1960] HCA 47, [21].
[22] Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].
[23] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74].
This ground of opposition was particularised in the SGP as follows:
Based on an internet search, Applicant does not appear to have used the mark, Applicant was or should have been aware of the Opponent’s use and applicants/registrations, accordingly it is apparent that the Applicant has only filed in order to frustrate and harass the Opponent, and consequently the Applicant does not have the requisite intention to use the trade mark in good faith
The internet search referred to in the SGP has not been exhibited and, in any event, is unlikely to have a determinative bearing on this ground of opposition. The Opponent points out that the EIA indicates the Applicant is primarily a beauty therapy provider and argues that beauty therapy providers do not conventionally provide information technology services, it is ‘logically impossible’ for the Applicant to have an intention to use the Trade Mark in relation to all the Goods and Services.
In my view, the Opponent has not established a prima facie case for the Applicant to answer. The line of deduction advanced by the Opponent is speculative at best and not corroborated by any substantive evidence. In contrast, beyond the initial act of filing the application, the Applicant’s intention to use the Trade Mark is readily made out by its subsequent use of the Trade Mark in relation to goods such as application software. Also, the Trade Mark is consistent with its existing portfolio of trade mark registrations which cover the same classes as the Goods and Services. The Opponent has failed to satisfy me that at the time the Applicant filed the application it had no intention to use the Trade Mark. This ground of opposition is, therefore, not made out.
The s 59 ground of opposition has not been established.
Section 60
To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 12 April 2017. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[24] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd, (‘ConAgra’):[25]
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...
[24] [2000] FCA 1335, [81].
[25] [1992] FCA 159, [118].
The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[26] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[27]
[26] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 25).
[27] ConAgra (n 25), [77].
The Concierge Marks were nominated in the SGP as having acquired the requisite degree of reputation in Australia prior to 12 April 2017. The Opponent’s Submissions do not distinguish between the individual trade marks that comprise the Concierge Marks when discussing the s 60 ground of opposition. For the discussion that follows, it is convenient to adopt a similar approach notwithstanding the fact that each trade mark should be considered individually for the purpose of s 60 of the Act.[28]
[28] Qantas Airways Limited v Edwards [2016] FCA 729, [160].
According to Danilovic 1, the Concierge Marks were first used in October 2015. Accepting this at face value, the Concierge Marks had therefore been in use approximately 17 months before the priority date of the Trade Mark. By any reasonable measure, this is a relatively short time frame in which to acquire a reputation amongst a significant or substantial number of consumers. This is particularly so given the relevant market is by no means specialised. Contrary to the Opponent’s bald assertion that the target audience would be a ‘niche market’, I consider the relevant market for consumers of services such as beauty treatments and goods such as software applications to be large, given these goods and services would be sought by a broad cross section of the population.
The evidence substantiating the alleged reputation enjoyed by the Concierge Marks is highly problematic for three main reasons. First, the Opponent has declined to disclose any particularised revenue figures derived from use of the Concierge Marks. Second, specific details regarding the promotion and advertising of the Concierge Marks before the priority date have not been disclosed. These particulars were withheld on the basis that such information is private, commercially sensitive and confidential in nature. Instead, blanket statements such as the Opponent’s current expenses tally ‘in the hundreds of thousands of dollars’ are provided. Obviously, withholding particularised information makes it difficult to assess what degree of recognition, if any, the Concierge Marks had amongst Australian consumers as at 12 April 2017. Third, the actual evidence demonstrating use of the Concierge Marks is underwhelming. A total of thirteen exhibits are provided across Danilovic 1 and Danilovic 2. However, only six of these thirteen exhibits relate to the Concierge Marks. As the Applicant points out, the material in these six exhibits is largely undated, heavily redacted, after the filing date of the application and/or of poor image quality. The paucity of evidence simply does not provide any cogent basis to conclude that any of the Concierge Marks enjoyed a sufficient reputation in Australia.
Accordingly, I am not satisfied as a matter of fact that, as at 12 April 2017, the Concierge Marks had acquired a reputation in Australia amongst a significant or substantial number of Australian consumers. As s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
The s 60 ground of opposition has not been established.
Section 42
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[29] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 12 April 2017. However, ‘prospective conduct after registration’ may be considered.[30]
[29] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[30] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
This ground of opposition was particularised in the SGP as follows:
Applicant's use of the mark would amount to passing off of the reputation of the Opponent in the mark. Applicant's use of the mark would mislead and or deceive customers into believing there was an sponsorship / association / or other relationship between the opponent and the applicant, contrary to Australian Consumer Law
Accordingly, the SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
As explained above, the Opponent’s evidence falls well short of establishing that the Concierge Marks possessed the requisite reputation to satisfy the s 60 ground of opposition. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[31] As such, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[31] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
In Monster Energy v USA Nutraceuticals Inc the Registrar’s delegate observed:
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL …[32]
Accordingly, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 29 of the ACL.
[32] [2017] ATMO 22, [58] (citations omitted).
Given my finding in relation to ss 18 and 29 of the ACL, the observations of Hill J in considering the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth)[33] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation[34] are also relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[35]
Thus, I am not satisfied that use of the Trade Mark would amount to passing off at common law.
[33] Section 52 of the superseded Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[34] [1989] FCA 506.
[35] Ibid [40].
For completeness, I note Danilovic 1 mentions instances of actual confusion where the Opponent’s customers had asked the Opponent if they were associated with the Applicant.[36] However, no particularised information or evidence regarding these alleged instances has been tendered into evidence. Consequently, the alleged instances of actual confusion amount to nothing more than unsupported statements and are insufficient to establish a ground of opposition under s 42(b) of the Act.
[36] Danilovic 1, [30].
In light of the above, I am not satisfied that use of the Trade Mark would be contrary to law. Therefore, the s 42(b) ground of opposition has not been established.
Section 62A
Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
To establish this ground of opposition, the Opponent must demonstrate that the act of making the application was in bad faith. The concept of bad faith was considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) and Dodds-Streeton J provided the following insight:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards …[37]
[37] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] – [167].
The SGP alleges that the application has been filed in bad faith because:
see s59 particular. Furthermore due to the apparent lack of good faith and with the apparent intention to frustrate and harass the Opponent, Applicant made the Applicant [sic] in bad faith.
The Opponent contends that the Applicant should have known of the Concierge Marks. By incorporating ‘concierge’ into the Trade Mark and filing for registration of same, the Applicant is allegedly harassing the Opponent and seeks to derive benefit from the reputation of the Concierge Marks. The Opponent’s contention rests on the premise that the Concierge Marks are well known and that the Applicant was put on notice of the Opponent’s trade mark rights by virtue of the correspondence sent in March 2017. As the application for the Trade Mark was filed after the first correspondence was sent, the Opponent concludes that the application was made in bad faith.
A finding of bad faith will not be found easily given the serious nature of the allegation[38] and, as observed by Dodds-Streeton J in the abovementioned case, equating mere awareness of the Concierge Marks to bad faith is unduly absolute. In this instance, there is doubt as to whether the Applicant was aware of the Concierge Marks given the correspondence issued by the Opponent was returned undelivered and the Applicant has denied any knowledge of the Opponent and the Concierge Marks as at the filing date of the application. As the contents of the correspondence is not in evidence, it is unclear what, if any, notice it would have put the Applicant on. Even if I were to accept that the Applicant was aware of the Concierge Marks, this does not provide a sufficient basis to conclude that the application was made in bad faith. The Opponent has not provided any cogent evidence to demonstrate the Applicant’s filing of the Trade Mark was ‘unscrupulous, underhand or unconscientious’.
[38] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
In the absence of any probative evidence impugning the Applicant’s conduct in making the application, the Opponent has failed to satisfy me that the application was made in bad faith.
The s 62A ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
Decision
(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.
The Opponent has not established a ground of opposition. It follows that trade mark application number 1837550 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant has sought an award of costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 April 2020
Annexure 1
Class 9: application software; communication software; communications processing computer software; computer software; computer software applications (downloadable); computer software for business purposes; computer software products; computer software programs; computer software programs for database management; data communications software; data processing software; downloadable software applications (apps); computer programs for use in telecommunications; data processing programs; data processing systems; data recorded in computer accessible form; data recorded in electronic form; programs for data-processing; programs for processing data on computers
Class 38: communication of data by means of telecommunications; telecommunications; telecommunications services for the distribution of data; communication services for the electronic transmission of data; communications services for accessing a data-base; communications services for the exchange of data in electronic form; computer data transmission services; computerised data communications; data communication by electronic means; data communication services; data transmission; electronic data communications; electronic data exchange services; electronic transmission of data; transmission of data; transmission of data by computer; transmission of data by electronic means; communication of information by computer; communication of information by electronic means; communication services for the transmission of information; communication services for the transmission of information by electronic means; computer communications for the transmission of information; electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums; electronic transmission of information; transmission of despatches by electronic means
Class 41: information services relating to entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of information relating to training
Class 42: data storage (other than physical storage); computerised business information storage
Class 44: providing information, including online, about hygienic and beauty care for human beings or animals
Class 45: providing information, including online, about personal and social services meeting the needs of individuals
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
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Statutory Interpretation
Legal Concepts
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Appeal
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Statutory Construction
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Remedies
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