Corporate Express Inc v Winglide Pty Ltd

[1999] ATMO 78

TRADE MARKS ACT 1995

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

Re:Application by Winglide Pty Ltd for registration of applications 660509 and opposition thereto by Corporate Express Inc.

Winglide Pty Ltd (the applicant) applied to register the trade mark shown below on 9 May 1995 for a statement of services in Class 35 which now reads:

Legal secretarial services; corporate secretarial services; business and company formation and administration services; enquiry and search services in respect of government agency records; business management and consulting services; computer software services in respect of business and financial management and organization

In the course of examination of the application, the examiner objected to the acceptance of the application under the provisions of section 44 of the Trade Marks Act 1995, citing registration 589598 and application 653108.  Brief details of these prior trade marks are:

Number  Priority date               

1. 4 Nov 1992                

Trade Mark                CORPORATE EXPRESS

Services:Retail services, including retail services to commercial customers, and wholesale services; all the foregoing being services in the field of business and office products, business machines but not including services in connection with computer software and programs, and not including retail or wholesale services in connection with printed matter, newspapers, periodicals and magazines; being services included in Class 42

Number  Priority date               

1. 14 Feb 1995               
   

   
   Trade Mark

Services:Retail and wholesale services in the field of business and office products, business machines, but not including services in connection with computer software and programs, and not including retail or wholesale service in connection with printed matter, newspapers, periodicals and magazines

The applicant responded to the examiner's first report by deleting the words "office machine and equipment rental" which, till then, had been within its specification of services.  The applicant also submitted material which, it stated, demonstrated that it had use of the trade mark before the priority dates of either of the trade marks which had been cited as obstacles to the acceptance of its application for registration.  The examiner endorsed the application "Provisions of subsection 44(4) applied" and accepted it for registration.

Thereafter, within the period of time allowed by the Act and regulations, opposition to the registration of the trade mark was filed by Corporate Express Inc (the opponent).  The opponent, having sought and received extensions of time in which to do so, lodged evidence in support of the opposition.  At the applicant's second request for an extension of time in which to serve its evidence in answer, the opponent objected - this objection was upheld by the Registrar's delegate - the applicant declined the opportunity of being heard.

The opponent then sought a hearing of the opposition.

The evidence

The opponent's evidence consists of a statutory declaration by Kathleen Forbes who is corporate solicitor and company secretary of the opponent.  I will discuss the relevant portions of this evidence in my reasons.

Discussion

The substantive issues were heard before me as Delegate of the Register.  The opponent was represented by Mr Michael Hall of Counsel.  The applicant was represented by Ms Susan Charteris, a director of the applicant company.

In brief, Mr Hall's submissions relied on a criticism of the probity of the material which the examiner had considered prior to accepting the application.  He argued that applications or registrations in Class 42 which the opponent owns (which I have detailed above) are bars to the registration of the opposed application.  He suggested that the evidence submitted showed that the opponent was the proprietor of the trade mark in Australia.  He also submitted that the application should be refused on the basis of the applicant's trade marks' prior reputation in Australia - while conceding that this prior reputation amounted to one day prior to the lodgement of the application, he cited the case of Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 in support of his argument. Mr Hall argued that the material submitted by the applicant during examination of the application should not be considered by me as evidence in relation to the opposition itself.

The applicant's submissions were brief and did not materially address the substantive matters of the opposition.

The applicant's material

I believe that I should be able to consider the material submitted by the applicant during the examination of the application as being relevant to these proceedings.  It is quite apparent that the opponent has had ample opportunity to consider these materials to which it gained access via a freedom-of-information (FOI) request; indeed, the opponent criticised the examiner's decision to accept the application on the basis of these materials.  This FOI material is in the opponent's evidence in support.  It would be most strange if I were to, in effect, agree that I could consider these materials for one part of these reasons and not for the other.  I am concerned that, if I acceded to the approach suggested by Mr Hall, such an approach would lack in natural justice.

Section 44

Insofar as it is relevant to these reasons, section 44 of the Trade Marks Act 1995 reads:

44(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.

Both parties appear to agree that the applicant's and opponent's trade marks share a substantial identity and/or deceptive similarity and that the opponent's trade marks have an earlier priority date.  Thus what I am to consider is whether the services specified on the opponent's registration and application, enlisted above, are similar to the services nominated on the application of the applicant.  Further, if I find that the services are similar, I am to decide whether the delegate of the Registrar was correct in applying the provisions of subsection 44(4).

There is not a lot of guidance in the way of judicial decisions concerning similar services.  Some guidance can be drawn from the general principles enunciated in Re Jellinek’s Application (1946) 63 RPC 59; 1A IPR 393, Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372 and Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84. This approach was adopted by the delegate of Registrar in Re Aussat Pty Ltd 27 IPR 309 where the discussion focussed on closely related goods and services and I believe that a similar adaptive approach is appropriate here.

I do not believe that one would normally expect office supplies and stationery to arrive at the marketplace via the services nominated on the application.  It is not normal for the providers of legal or corporate secretarial services to be in the business of supplying stationery or office supplies.  I agree with Mr Hall that those supplying such secretarial services will use stationery and office supplies; however, this does not go to support the proposition that the services are similar.  As a parallel example, one would not normally view a taxi company as being the trade source of the cars that they ply for hire (although the car manufacturer may have other legal remedies if a taxi company adopted its trade mark).

In Crowther's application, supra, the Assistant Comptroller listed the factors to be considered, adapting them here for services:

The nature and characteristics of the services, their origin, their purpose, whether they are usually provided by one and the same provider or organised by the same business houses, whether they are originate in the same business through the same office during the same seasons and to the same class or classes of customers, and whether those engaged providing the services are regarded as belonging to the same trade.

As I have indicated, I do not believe that the services are closely related.  It is possible that the reason that the objection was raised during examination was because of the phrase "office machine and equipment rental" which was subsequently removed from the specification of services on the application.  Such rental services may be similar services to the specified retail services.  If this analysis is correct, the application should have been capable of acceptance in the absence of any evidence of prior use.  It thus falls out that the endorsement entered on the application, that it was accepted under the provisions of subsection 44(4), is not necessary even though the documents tendered during examination may show that the applicant did have prior use of the trade mark.

It follows that the opposition under subsection 44(2) of the Act is not successful.

Section 58

This section allows:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The principles enunciated in Re Hicks Trade Mark (1897) 22 VLR 636, at 640, are that to establish a claim for proprietorship (the equivalent of ownership under the current Act) it is necessary to demonstrate prior use of the same trade mark in respect of the same kind of thing.

Having decided that, in effect, the services of the applicant are not the same kind of thing as those of the opponent, the opposition under this heading must fail.  However, I believe that it is appropriate to mention at this stage that the material submitted during the examination of this application, in support of the applicant's prior use arguments, does show that the applicant was using its trade mark CORPORATE EXPRESS in respect of company formations and company secretariat work at least as early as 2 April 1992 - seven months before the priority date of the opponent's registration and well earlier than first reference to the opponent's trade mark within newspapers in Australia on 10 February 1995.

Section 60

This section allows:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)       because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

As I have foreshadowed above, the opponent founded its argument under this heading on the basis of one day's publicity in some newspapers prior to the lodgement of this application.  In support of its case, the opponent has referred me to Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196. As I understand this case, bad faith on the part of the defendant was shown by the plaintiff in that the defendant had, alerted by newspaper articles, registered a company or business name (which it was not using or needing to use) required by the plaintiff with an idea to gain from this.

I do not think that there is any question of bad faith here.  It is apparent that, at the date of application, the applicant had been using her trade mark in relation to her services for some few years.  Possibly as a result of publicity stemming from the newspaper articles in the opponent's evidence, she sought to protect her position by filing an application for registration of a trade mark.  There is no suggestion that the applicant has sought monetary gain from the opponent.  Indeed, if my analysis of the evidence is correct, the applicant has behaved very prudently.

Mr Hall made much of evidence of actual confusion at the hearing.  However, it is apparent that the confusion has arisen from the opponent's use of the trade mark subsequent to the applicant's first use of the trade mark.  Indeed, some of the evidence of confusion appears to be material given to the opponent by the applicant by way of complaint since it would seem that for the first few months of the opponent's entry into the Australian market, the opponent did not have an entry in the telephone directory and the applicant (who did) received many telephone calls intended for the opponent.  Failing any demonstration of bad faith on the part of the applicant, and in view of the applicant's own use the the trade mark, I do not agree that references in newspapers to the applicant's intention to commence use of its trade marks in Australia at a later date is evidence that the trade marks of the opponent had the requisite reputation to sustain the opposition under this heading.

Therefore, the opposition under section 60 of the Act must also fail.

Decision

The opposition fails on each of the grounds that it was argued and, subject to any appeal from my decision, the application may proceed to registration.

Costs

Costs may follow the event and I award the applicant its costs.

Ian Thompson

A/Hearing Officer

7 August 1999