Crown Melbourne Limited v Steven Tintor - [2016] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by Crown Melbourne Limited to registration of trade mark application 1557211(36) - THE 2ND HAND CROWN - in the name of Steven Tintor

Delegate:	Adrian Richards
Representation:	Opponent: Joanna Lawrence of Ashurst Australia Applicant: Self represented
Decision:	2016 ATMO 75 Opposition under section 52 of the Trade Marks Act 1995 (Cth) grounds of opposition under sections 42(b), 44, 59 and 60 pressed no grounds of opposition established trade mark to proceed to registration

Background

Mr Steven Tintor (‘the Applicant’) filed an application for registration under the Trade Marks Act 1995 (Cth) (‘the Act’) in respect of the following trade mark:
Application Number:           1557211
Trade Mark:  The 2nd Hand Crown (‘the Trade Mark’)
Specification of Services:     Class 36: Pawn brokerage
Filing date:  16 May 2013 (‘the Relevant Date’)
The Trade Mark was examined and then accepted for possible registration, advertised as such in the Australian Official Journal of Trade Marks on 10 October 2013.
Crown Melbourne Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark on 10 December 2013, and a Statement of Grounds and Particulars (‘SGP’) on 10 January 2014. The SGP was forwarded to the Applicant, who responded by filing a Notice of Intention to Defend his application on 23 January 2014.
Evidence in support, answer and reply were filed by the parties over the course of 2014. The Opponent asked to be heard in person, and a hearing was set down for 21 May 2015. The hearing went ahead as scheduled before me, a delegate of the Registrar of Trade Marks. The Opponent was represented by Joanna Lawrence of Ashurst Australia, and the Applicant also appeared and made submissions on his own behalf.
At the conclusion of the parties’ oral submissions, the Applicant indicated that he would like some time to negotiate with the Opponent before the opposition was decided. Absent instructions, the Opponent made no submissions on this at the hearing. Noting that the parties had not previously attempted to negotiate an outcome, I adjourned the opposition until 5 June 2015 to enable the parties to arrange for a cooling-off period under reg 5.16 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’). The parties sought a cooling off-period of six months on 2 June 2015, which was cut short after negotiations apparently failed and, on 16 October 2015 the Applicant requested that the cooling-off period be discontinued.

Evidence

The evidence filed in this opposition in accordance with reg 5.14 of the Regulations consists of the following declarations:
Evidence in support
Declaration of Joanna Margaret Lawrence, Special Counsel at Ashurst, made 29 April 2014 with annexures 1 to 16, including confidential annexures 5 and 9 (‘Lawrence 1’).
Declaration of Kylie Burchmore, Group General Manager of Sales and Marketing Strategy at the Opponent, made 29 April 2014 with annexures 1 to 22 (‘Burchmore’).
Evidence in answer
Declaration of Steven Tintor, made 30 July 2014 with annexures A to J (‘Tintor 1’).
Evidence in reply
Declaration of Joanna Margaret Lawrence, Special Counsel at Ashurst, made 6 October 2014 with annexures JML2-1 to JML2-4 (‘Lawrence 2’).
Lawrence 1 sets out a large number of the Opponent’s trade marks with a priority date earlier than the opposed application. It then moves on to outline the history of the Opponent’s dealings with the Applicant, in relation to four other trade mark applications all containing the word CROWN and all filed by the Applicant or 1800 Supply Pty Ltd (of which the Applicant is a director). Another aspect of the history between the parties disclosed is a dispute relating to the domain name crown.com.au, which is registered in the name of 1800 Supply Pty Ltd. The declaration also annexes and discusses a report into ‘use of any “CROWN” trade marks by the Applicant’, which was commissioned by the Opponent.
Burchmore annexes the declaration of Angie Lee Becker, Director of Event Sales, Catering at the Opponent, made 21 June 2013 with annexure 1 (‘Becker’). Becker was filed in the Opponent’s opposition to earlier trade mark application no. 1473255 in the names of Steven Tintor and 1800 Supply Pty Ltd for CROWN WEDDING in class 45. Becker outlines the Opponent’s history and business operations, discusses its adoption of the trade mark ‘Crown’, and its use of a variety of trade marks including the word ‘Crown’. Since Becker was drafted in relation to a different application concerning different services, Burchmore supplements that earlier declaration by offering an account of what Ms Burchmore says relate to the Opponent’s reputation ‘in relation to the retail sale of goods, the exchange of items of value for cash and the storing of value’.
Tintor annexes several search results from ‘Google’ and the Register of Trade Marks, and provides some more background to the various disputes between the Applicant and the Opponent. Mr Tintor also provides an explanation of why he has not commenced use of the Trade Mark.
Lawrence 2 nominates classes 35, 36, 39, 41, 43 and 44 as ‘the core classes relevant to the Opponent’s business’, and annexes search results from the Register of Trade Marks containing the word ‘crown’ in those classes. It provides an update of the uses to which the website ‘crown.com.au’ (‘the Website’) had been put since Lawrence 1 was filed, and annexes searches for pawnbroker and second-hand dealer licenses in Queensland, Victoria and the Australian Capital Territory.

Late Evidence

In addition to the properly filed evidence outlined above, when the Opponent filed its outline of submissions in accordance with reg 5.17(6)(b), it included a third declaration by Ms Lawrence (‘Lawrence 3’). The Applicant subsequently provided the entirety of his submissions in the form of a declaration (‘Tintor 2’), and in doing so also attempted to introduce some new material into the opposition. At the hearing, I took submissions from the parties as to why any of their late evidence should be considered in this opposition and reserved my decision on that question. Having reflected on the submissions made at the hearing, I have decided not to take into account any of the late evidence from either party, for the reasons that follow.
Lawrence 3 annexes screenshots from the Website taken on 8 May 2015. Stating the incontrovertible, Ms Lawrence observed that these screenshots could not have been provided sooner than the day they were taken. Ms Lawrence then submitted that the Opponent considers this new material to be ‘highly relevant’ to the opposition, since it shows the Website has changed considerably since the Opponent filed its evidence in reply, and that those changes provide further support for the Opponent’s position that the Applicant had no intention to use the Trade Mark, in relation to pawn brokerage services, at the Relevant Date. In particular, Lawrence 3 shows that the Website at 8 May 2015 included the Trade Mark, it linked to another subdomain (the2ndhand.crown.com.au), it no longer referenced buying or selling and instead appeared devoted solely to complaints. In response, the Mr Tintor questioned the relationship between the Trade Mark and the Website, and therefore the relevance of the Website to these proceedings generally.
As a starting point, it is worth noting that the inclusion of new evidence less than two weeks before a hearing will tend to bring with it some measure of prejudice, so the Opponent has its work cut out. While it is permissible to consider use of a trade mark after the relevant date in deciding whether an applicant had the requisite intention to use it at the relevant date, such evidence is by its nature more illustrative of an applicant’s intention at some point after the relevant date. This type of evidence is therefore unlikely to be decisive, in itself, of the ground of opposition under s 59. Turning to the screenshots, the header of the Website at 8 May 2015 indicates that the Website was merely sponsored by some entity trading under the Trade Mark. Given all of this, I am not convinced that the Opponent’s late evidence is crucial to my decision.
The new material within Tintor 2 relates to two issues: media reports of a dispute that the Opponent was involved in over naming rights to certain property developments, and a newspaper article relating to a decision of this office Qantas Airways Limited v Luke Edwards.[1] The Applicant is free to recall and seek to analogise his case with Edwards[2] in his submissions, but the inclusion of a newspaper report of that decision is not the type of evidence that is appropriate to be considered out of time. As for media reports of other disputes that the Opponent was involved in, Mr Tintor submitted that these support the proposition that the Opponent is not the only business in Australia to use the word ‘Crown’. Looking back at Tintor 1, much of the search results annexed to it are concerned with this very proposition, so this new material adds very little to proceedings. In all, the new material in Tintor 2 suffers from similar problems to Lawrence 3. It was also filed exceedingly late in proceedings, and is unlikely to be crucial in the opposition.
[1] [2014] ATMO 40 (‘Edwards’).
[2] Which has since been confirmed on appeal in Qantas Airways Limited v Edwards [2016] FCA 729.

Grounds and onus

The Opponent has nominated grounds of opposition under ss 42(b), 44, 59 and 60 and pressed all of those grounds at the hearing. The onus is on the Opponent to satisfy me on the balance of probabilities[3] that it has established a ground of opposition, and only one of the abovementioned grounds needs to be established for the opposition to succeed. The rights of the parties are to be determined at the Relevant Date.[4]

Discussion of the Grounds

[3] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 44

Section 44 of the Act relevantly provides:
44 Identical 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.
To establish this ground of opposition, the Opponent must put forward an earlier trade mark application or registration (not in the name of the Applicant) which claims similar services or closely related goods, and is substantially identical with, or deceptively similar to the Trade Mark.
The Opponent has provided a list of 67 registered and pending trade marks, all in its name, of which it submits ‘one or more … are deceptively similar’ to the Trade Mark, and which I have reproduced below at Annexure A to these reasons. Most of the trade marks in the list include as an element the word CROWN (with the sole exception of 1506033 which uses the possessive form CROWN’S). The Opponent does not contend that the Trade Mark is substantially identical to any of the listed trade marks, nor do I see any that, when compared side by side with the Trade Mark, ‘convey a total impression of resemblance’.[5]
[5] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414-5 (Windeyer J).
Section 14 of the Act defines similar services as being services which are ‘the same’, or ‘of the same description’. The test for similarity of services requires consideration of the purpose of the services, their nature, and whether they are usually provided by the same trader, through the same outlets. Many of the listed trade marks claim services in fields such as gambling, entertainment, hospitality and accommodation that are plainly dissimilar to pawn brokerage on all three factors. These cannot be relied upon for this ground of opposition. The Opponent contends also that retail services are similar to pawn brokerage services. Since pawn brokers among other things engage in selling goods, this seems plausible. By my count, 20 of the trade marks in the list include a claim for retail services in class 35, which I have highlighted with an asterisk in Annexure A. Regardless of this similarity in services, for the following reasons, I consider that none of the 20 earlier trade marks are deceptively similar to the Trade Mark.
Section 10 of the Act 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 test has been expressed in the following terms:
…the comparison is…between, on the one hand, the impression based on recollection of the [earlier trade mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [opposed trade mark]. To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:
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.[6]
[6] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 (Windeyer J).
Deception ‘implies the creation of an incorrect belief or mental impression’.[7] Confusion sets a lower bar, requiring only a likelihood 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.’[8]
[7] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, 423.
[8] Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365, 382 [50] (French J).
Of the 20 trade marks nominated by the Opponent, two contain the word CROWN as their only textual element: trade mark nos. 904713 (CROWN) and 1282758 (CROWN and a crown device). With the exception of trade mark 1387477 (THE CARNIVAL COMES TO CROWN and device), all of the remaining trade marks are all in the form of the word CROWN usually followed by descriptors, such as 1176782 (CROWN GLOBAL RESORTS) or 1469481 (CROWN POKER).
Ms Lawrence, for the Opponent submits that a prominent feature of the Trade Mark is the word CROWN, and is more likely to be remembered by the relevant class of persons. At the hearing, she also argued that the phrase THE 2ND HAND is descriptive of pawn brokerage services, and therefore less attention is likely to be paid to those elements of the Trade Mark. I do not accept these arguments. Segmenting the Trade Mark in the manner the Opponent suggests is artificial the comparison is ‘between the marks themselves, not between one mark and a contraction or corruption of the other.’[9] The Trade Mark not only must be considered as a whole, its construction here lends itself to just such a reading. The words of the Trade Mark are in the form of pronoun (THE), adjective (2ND HAND), noun (CROWN). As such they form a complete sentence which is suggestive of a single object. Depending on the reader, the term might conjure up an image of a pre-owned item of regal headwear, or possibly a coin. An ordinary reading of the Trade Mark would be in contrast to the Opponent’s trade mark for CROWN. The latter is qualified by neither pronoun nor adjective, and therefore lends itself to being read in many ways, including as a verb, but none of which necessarily summon to mind a singular, used object. That is, the Trade Mark has ‘an entirely different connotation, construction and interpretation’[10] to the word CROWN. I do not consider there to be a likelihood that a person with the vaguest of memories of the Opponent’s CROWN trade mark would be caused to wonder whether pawn brokerage services offered under the Trade Mark come from the same source.
[9] SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1, 7 [27].
[10] Jockey International, Inc. v Darren Wilkinson [2010] ATMO 22 [39].
I now turn to the likelihood of contextual confusion. Invariably, the Opponent’s trade marks use the word CROWN in the sense of an entity or a destination, as in:
·CROWN. A WORLD OF ENTERTAINMENT.
·CROWN MELBOURNE
·CROWN GLOBAL RESORTS
·CROWN ENTERTAINMENT GROUP
·CROWN METROPOL
·CROWN EVENTS & CONFERENCES
·CROWN EVENTS
·CROWN RESORT
·CROWN RESORTS
·CROWN CLUB 23
·THE CARNIVAL COMES TO CROWN
·CROWN PERTH
·CROWN POKER
·CROWN HOTELS
·CROWN SYDNEY
·CROWN PROMENADE
In contrast, the Trade Mark conveys an image of an old object. Conceptually this is very different to a corporate entity or a location. Given this, I consider it unlikely that a person of ordinary intelligence and memory with knowledge of any number of the trade marks in the paragraph above would be caused to wonder whether the Trade Mark is an example of another brand extension of the Opponent’s CROWN house mark.
Of the 67 trade marks nominated by the Opponent I have found above that 47 do not claim similar services or closely related goods to pawn brokerage. I have also found that the Trade Mark is not substantially identical with, nor deceptively similar to, any of the Opponent’s remaining 20 trade marks. The Opponent has therefore failed to establish this ground of opposition.

Section 60

Section 60 of the Act provides:
60 Trade 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.
To establish this ground of opposition, the Opponent must show that, at the relevant date, another trade mark had a reputation in Australia, and due to that reputation use of the Trade Mark would be likely to deceive or cause confusion. The Opponent must establish the reputation of that trade mark as a matter of fact.[11] Reputation can, for example, be demonstrated through direct evidence of consumer appreciation or it can be inferred from a high volume of sales together with substantial advertising figures and other promotions.[12] This reputation must be reputation as a trade mark.[13] The reputation must be amongst a significant section of the relevant market.[14]
[11] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193, 234.
[12] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.
[13] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551, 574-5 [121]-[131].
[14] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

The Opponent again relies on the 67 trade marks listed in Annexure A. Registration of a trade mark alone is not evidence of use, nor therefore can it be evidence of a reputation in any of the Opponent’s trade marks. The Opponent has not produced evidence that would go to the reputation in the majority of its Annexure A trade marks. It has, however, produced significant evidence of the reputation of its trade marks for the word CROWN, both with and without the crown device in relation to entertainment, gambling and accommodation services. That evidence consists of numerous examples of advertising and other promotional endeavours, details of some of the Opponent’s investments and business connections, and revenue figures commensurate with a business of the scale of the Opponent. An example of the Opponent’s crown device is reproduced below:

Apart from the evidence of a reputation in relation to entertainment, gambling and accommodation services, the Opponent has also furnished evidence of use of its main marks, and certain other trade marks which include the word CROWN in relation to three other fields, which are characterised in Burchmore as ‘retail sale of goods’, ‘exchange of items of value for cash’ and ‘storing of value’. I have addressed each of these in turn below.
The Opponent’s activities in relation to the retail sale of goods consist of:
·   Crown Lobby Shop: ‘a standalone store located within CROWN TOWERS in Melbourne’, which sold Crown merchandise, gifts and convenience items between 1997 and 2012.
·   Crown Gifts: both a standalone store ‘located within CROWN METROPOL in Melbourne since March 2014’, in operation since ‘at least January 2009’, and an online store selling ‘Crown goods and services, such as bathroom accessories, bed linen and mattresses, as well as gift cards’ for various Crown services.
·   The Crown Entertainment Complex in Melbourne houses ‘an extensive retail precinct and retail sale of food and beverage items’ which Ms Burchmore declares are ‘currently promoted under the CROWN Trade Marks’.
Given it has operated both physical and online stores, I am prepared to accept that the Opponent’s CROWN trade marks likely enjoy some reputation in the retail sale of Crown merchandise, gift cards and the like. This is despite the Opponent not putting forward evidence of sales or revenue from those operations, nor evidence of direct customer appreciation. That is to say, I consider that it is uncontroversial to infer from the evidence that the Opponent has some reputation in the retail of goods which are peripheral or consequential to the primary sources of its reputation for its CROWN trade marks, being entertainment, gambling and accommodation services. However, whilst I consider some reputation in the retail of goods of this kind is likely as a consequence of the Opponent’s other better known services, the Opponent has not shown in evidence as a matter of fact that a reputation that is significant for the purposes of s 60. The Opponent’s assertion of some reputation in its CROWN trade marks in relation to the retail of other goods is less supported still. The corroborating evidence consists of two screenshots of the Opponent’s website, both from after the relevant date.
As for the ‘exchange of items of value for cash’, the Opponent’s evidence is that it offers its customers ‘vouchers that can be redeemed for table play, gaming chips or cash’. The vouchers described and shown in Burchmore are neither ‘items of value’, nor are they ‘exchange[d]…for cash’. It would be most unusual for a voucher to be made from inherently valuable materials, and certainly no evidence has been submitted that could lead me to that conclusion. Given they have no inherent value, necessarily the act of obtaining cash for a voucher could not seriously be characterised as exchanging an item of value for currency. These vouchers are more accurately described as financial products that can be redeemed for cash.
In relation to the ‘storing of value’, the Opponent has, since the mid-1990s, offered safe custody boxes and cheque cashing/credit facilities. Ms Burchmore also refers to the Opponent’s gift cards, loyalty program, and a ‘Ticket In Ticket Out’ system which is used in relation to electronic gaming products. The abovementioned vouchers and the various methods of storing value are all ancillary to the Opponent’s entertainment, gambling and accommodation services, and by far the majority of them relate squarely to the Opponent’s casino operations.
To sum up the first limb of s 60, the Opponent has shown that it enjoys a strong reputation in gambling services. It has also demonstrated a significant reputation in entertainment and accommodation services. But the attempts by the Opponent to present certain aspects of its gambling services as being akin to pawn brokerage are most unconvincing. A generous reading of the Opponent’s evidence permits me to draw out that it has some reputation in the retail of goods that relate to its gambling, entertainment and accommodation services. Those goods in turn are very limited, such as Crown merchandise and Crown gift cards. Even if the Opponent’s trade mark enjoys a reputation in the retail of those goods it has not been shown to be significant for the purposes of this ground.
Turning to the likelihood of deception or confusion as a result of demonstrated reputation in a trade mark, the Opponent argues that the likelihood of deception or confusion arises from the similarity of retail services and customer loyalty programs to pawn brokerage services. As mentioned in my discussion of s 44, as a general proposition, I consider it more likely than not that retail services and pawn brokerage services are similar. However, the Opponent has not led evidence of a significant reputation in a trade mark for the general retail of goods.
The Opponent further argues that there is a potential for deception or confusion arising from use of the Trade Mark in relation to pawn brokerage services over the Website. The Opponent submits that consumers visiting it are likely to assume that services offered there in relation to the Trade Mark ‘are somehow connected or associated with the Opponent’, and that this is likely because its trade marks are ‘particularly well known and ubiquitous’. Even if confusion were to occur in the way the Opponent has suggested here it does not follow that the confusion would as a result of a reputation in a trade mark, such confusion seems more likely to arise due to a similarity in domain names. In any case, the Applicant’s evidence shows there are several traders in Australia with no apparent relation to the Opponent that use the word CROWN in their own well established trade marks. The Opponent has not explained why a consumer visiting ‘crown.com.au’ is not just as likely to assume that it is related to the goods or services of one of those other traders, for example, Crown Lager. Moreover, it is a matter of public record that web addresses in the .com.au second level domain are made available to commercial entities on a first come, first served basis (subject to satisfying certain registration requirements). In addition to the circumstances outlined above, it is worth recalling my earlier finding that none of the Opponent’s trade marks are deceptively similar to the Trade Mark.
The Opponent’s reputation in its trade marks in relation to gambling, entertainment and accommodation services is not such that there exists a likelihood that use of the Trade Mark in relation to pawn brokerage services would cause deception or confusion in the marketplace. The s 60 ground of opposition is not established.

Section 42(b)

Section 42(b) of the Act is reproduced below:
42 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
In order to establish this ground of opposition, it is not sufficient for the Opponent to demonstrate that use of the Trade Mark could be contrary to law, I must be satisfied that use would be contrary to law.[15] The Opponent has nominated two legal norms which it says use of the Trade Mark would breach: misleading or deceptive conduct within the meaning of s 18 of the Australian Consumer Law and the tort of passing off at common law.
[15] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, 32.
Section 18 of the Australian Consumer Law imposes a standard of behavior on persons that engage in trade or commerce in Australia, such that they are expected to not engage in conduct which is likely to mislead or deceive.[16] Conduct will mislead or deceive when it leads (or is likely to lead) members of the relevant class of persons into error.[17] Here, the Opponent submits that use of the Trade Mark is likely to lead consumers into the error that the Applicant’s pawn brokerage services are connected in some way to the Opponent. I have already found above that despite the registration of a number of the Opponent’s trade marks (s 44), and the Opponent’s reputation therein (s 60), use of the Trade Mark would not be likely to deceive or cause confusion. To find here that use of the Trade Mark would be likely to lead into error would be incongruent with those earlier findings under ss 44 and 60. The Opponent has not established a ground of opposition with respect to s 18 of the Australian Consumer Law.
[16] Brown v Jam Factory Pty Ltd (1981) 53 FLR 340, 348.
[17] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.
An element of the common law tort of passing off is misrepresentation. As with its claims in relation to s18 of the Australian Consumer Law, the Opponent contends that use of the Trade Mark would misrepresent that there is a connection between the Trade Mark and the Opponent. For the reasons already given, I have not been convinced that use of the Trade Mark would amount to such a misrepresentation. The Opponent has therefore failed to establish a ground of opposition under s 42(b).

Section 59

Section 59 of the Act is set out below:
59 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.
Note: For applicant see section 6.
This ground of opposition presents two serious difficulties to an opponent. It is required to produce evidence of the absence of something, and that something relates to the state of mind of the applicant at a particular point in time. Given those difficulties, the law recognises that it is sufficient for an opponent to make a prima facie case of a lack of intention to use the trade mark. Once a prima facie case has been put, the evidentiary onus shifts to the applicant to respond.[18] Use of a trade mark (or not) after the date of application may be relevant to drawing inferences in relation to the intention of an applicant at the time of application.[19]
[18]Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [38].
[19] Ibid [74].
As starting point it is important to acknowledge that the Applicant’s act of applying for registration of the Trade Mark brings with it the presumption that he intends to use it.[20] The Opponent has sought to make out a prima facie case for this ground of opposition in three ways. First, it points to content which appeared on during 2014, none of which relates to pawn brokerage services. Second, it refers to investigations commissioned by the Opponent into the Applicant’s business activities which found that the Applicant was not conducting business of any kind, nor had the Applicant taken steps toward commencing the provision of pawn brokerage services, such as applying for a license to operate as such in various jurisdictions. Finally, the Opponent seeks to establish the existence of a pattern of behaviour on the part of the Applicant of applying for trade marks which include the word CROWN, without an intention to use any.
[20] Suyen Corp v Americana International Ltd (2010) 187 FCR 169, 199 [197].
In respect of the first two issues raised by the Opponent, the Applicant declares that he intends to use the Trade Mark, but has not done so yet because he wishes to secure its registration first. Indeed, I note that waiting for registration of a trade mark in order to avoid unnecessary expense is ‘not uncommon’.[21] Mr Tintor declares that his motivation for waiting also lies in the added defence to infringement that comes with holding a registered trade mark.[22] The Opponent’s submissions seek to diminish the Applicant’s explanation by reference to the appearance on the Website, after the Applicant had been put on notice of the s 59 ground of opposition, of images of coins along with statements about buying and selling crowns and other coins. The Opponent submits that this was ‘clearly calculated to demonstrate an “intention” to use’ the Trade Mark, and that the mixing of that content with disparate subject matter and a ‘lack of any genuine business being conducted’ on that website suggest that the Applicant lacked the requisite intention. Having considered these submissions, it strikes me that the Opponent has made too much of the information appearing on the Website. The Applicant has also said that he intends to register a new website for his proposed pawn brokerage business, and that he plans not to use the Website in relation to the Trade Mark. Another factor is the nature of the services that have been applied for, and how relevant any website could be in the delivery of those services. An essential element of the business of pawn brokerage is to hold onto chattels as security for small loans. In deciding on the size of the loan, a pawn broker must first form a view as to the value of the item offered in pawn. Attempting to conduct a valuation or indeed to take possession of physical property via any channel other than in person brings with it a number of inherent difficulties.
[21] Newcastle Permanent Building Society Ltd v Allan Crew [2009] ATMO 55, [25].
[22] Section 122(1)(e).
Turning to the third issue, the Opponent refers to four earlier trade mark applications containing the word CROWN filed between 2011 and 2013 by the Applicant and by 1800 Supply Pty Ltd. These are: CROWN (for music recordings), CROWN WEDDING (for arranging wedding services), CROWN DOLLARS (for currency exchange services and similar), and CROWN (for chat room services). The Opponent submits that ‘it is highly unlikely that the Applicant can have had a genuine intention to use all of the above trade marks for such a bizarre range of goods and services’. Even if I were to accept the Opponent’s reasoning in relation to those other applications, it does not follow that there is no intention to use the present Trade Mark. As it stands, Mr Tintor has explained that he is self-employed and has been trying to find a niche to trade in. He also volunteered that he felt compelled to withdraw his application for CROWN WEDDING because he had formed his own view that it was more likely than not that the Opponent offered wedding services. Mr Tintor went on to assert that if he had been similarly convinced of the Opponent’s evidence in relation to pawn brokerage services that he would have done the same in reaction to the present opposition.
In sum, the presumption that the Applicant intends to use the Trade Mark has not been convincingly displaced by the Opponent’s submissions. Even had that presumption been weakened, the Applicant’s assurances that he intends to use the Trade Mark, together with his detailed descriptions of the steps he intends to take if he secures its registration are sufficient to counter the Opponent’s prima facie case under this ground of opposition. The Opponent has therefore failed to establish a ground of opposition under s 59.

Decision

Section 55 of the Act relevantly provides:
55 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.
Note: For limitations see section 6.
A ground of opposition has not been established to any extent and under s 55, I must register the Trade Mark. The trade mark application may therefore proceed to registration one month from the date of this decision. However, if the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
22 September 2016

Annexure A