CSL Limited v Capital Securitisation (Holdings) Pty. Limited
[2010] ATMO 42
•2 June 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CSL Limited to registration of trade mark applications 1107845 – CSL AND DEVICE and 1147433(36) - CSL AND DEVICE - filed in the name of Capital Securitisation (Holdings) Pty. Limited.
Delegate: John Spence Representation: Opponent: Ms. Siobhan Ryan of Counsel instructed by Mr. Michael Wolnizer, Solicitor, of Davies Collison Cave, Patent and Trade Mark Attorneys
Applicant: Ms. Sue Chrysanthou of Counsel instructed by Mr. Peter Whitehead, Solicitor, of Hazan Hollander, Intellectual Property LawyersDecision: 2010 ATMO 42
Section 52 Opposition – Sections 42(b), 43, 44, 58 and 60 pressed – registration refused under Section 60 – Wayback Machine evidence considered.Background
Capital Securitisation (Holdings) Pty. Limited (“the Applicant”) has filed applications for registration in respect of two trade marks the short particulars of which are as follows, namely:
Trade Mark:
Number: 1107845
Priority Date: 9 April 2006
Class: 36
Services: Financial services
and
Trade Mark:
Number: 1147433
Priority Date: 17 November 2006
Class: 36
Services: Financial services.
Upon examination each of these applications was accepted for possible registration on 16 July 2006 and 4 March 2007 respectively, and the advertisement of acceptance in relation to each application took place in the Australian Official Journal of Trade Marks dated 10 August 2006 and 22 March 2007.
Pursuant to the provisions of Section 52 of the Trade Marks Act 1995 (“the Act”), on 14 December 2006 the company CSL Limited (“the Opponent”) filed a notice of opposition to the granting of registration in respect of the Applicant’s trade mark “CSL MONEY” AND DEVICE No. 1107845. Subsequently on 19 July 2007 the Opponent filed a further notice of opposition to the granting of registration in respect of the Applicant’s trade mark application “CSL MONEY” AND DEVICE No. 1147433.
The Opponent duly filed and served its evidence in support of the opposition proceedings for both applications. After the obtaining of appropriate extensions of time within which to do so, on 7 September 2007 the Applicant completed the filing of its evidence in answer. In turn, evidence in reply was filed on behalf of the Opponent on 13 October 2008.
The matter came before me, as a delegate of the Registrar of Trade Marks, for a hearing in Canberra on 7 April 2009. On that occasion, Ms. Siobhan Ryan of Counsel (instructed by Davies Collison Cave, Patent and Trade Mark Attorneys) appeared for the Opponent while the Applicant was represented by Ms. Sue Chrysanthou of Counsel (instructed by Hazan Hollander, Solicitors). The applications were heard and determined together.
The Marks
In conducting the hearing of this matter, the practical approach has been adopted of determining concurrently each of the two relevant trade mark applications Nos. 1107845 and 1147433. The present approach is warranted in the particular circumstances of this matter because of the close degree of resemblance and similarity between the appearance of the two marks. In addition, both applications are located in Class 36 and they both claim rights in respect of the corresponding specification of services (namely, “Financial services”). At the same time, the respective marks are not identical and there exist several important points of difference between them. However, the essential elements of the respective applications are corresponding in nature and overall they can be said to convey the same general impression. In terms of the Opposition proceedings, the same grounds and the same issues are applicable to both applications. It is on this basis that I have approached the conduct and determination of this matter.
Grounds of Opposition
In its notice of opposition, the Opponent nominated eleven grounds of opposition involving nine different Sections of the Act. However, both by prior correspondence dated 3 April 2009 and at the hearing, the legal representatives for CSL Limited indicated that the Opponent intended to rely only on five of the grounds nominated in the Notice of Opposition and relating to Sections 42(b), 43, 44, 58 and 60. The remaining grounds as set out in the Notice of Opposition (that is, pertaining to Sections 41, 59, 62(a), 62(b) and 62A as well as infringement of copyright) were not pressed or pursued and no submissions were put forward in respect of same. For the sake of completeness, I find that none of those grounds has been established and I dismiss the opposition so far as they are concerned. Those issues which now remain for determination relate respectively to each of the five individual Sections of the Act which the Opponent continues to maintain.
The Evidence
Evidence in support
The evidence in support of the Opponent comprises the following, namely:
1.Statutory Declaration of Edward Bailey made on 6 September 2007.
2.Statutory Declaration of Mark Dehrig made on 4 September 2007.
3.Statutory Declaration of David Petrie made on 4 September 2007.
4.Statutory Declaration of Michael Charles Wolnizer made on 7 September 2007.
The primary evidence on which the Opponent relies is provided by the Statutory Declaration of Edward Bailey who holds the position of Senior Corporate Counsel with the Opponent. The evidence of Mr. Bailey is extensive and it goes to establish the Opponent’s substantial history, background, reputation and standing. The evidence of Mark Dehrig (the Head of Investor Relations of the Opponent) briefly put goes to establish the extent of market securitisation of CSL Limited and the geographic breakdown and distribution of shareholders throughout Australia. David Petrie, described as the Managing Director and Head of Investment Banking at Merrill Lynch (a leading investment bank), was put forward as an expert witness, although no attempt was made to qualify him as such. Mr. Petrie gave evidence that the acronym CSL is known to him in the financial sector as indicating the Opponent, one of Australia’s largest companies. The evidence of Michael Wolnizer (the legal representative of the Opponent) goes to the providing of Internet and trade mark searches conducted by him in respect of the names CSL, CSL CAPITAL, CSL FINANCE and CSL MONEY.
Evidence in answer
The Applicant’s evidence comprises the single Statutory Declaration of Oliver Banovec made on 11 March 2008. Mr. Banovec, described as a Director and Secretary of the Applicant, indicates that the Applicant, which was incorporated in July 2005, has conducted business under the CSL MONEY name since August 2005, including in relation to the advertising and promotion of its services. The business name CSL MONEY has been registered since October 2005. The Applicant has a web site and an Internet address located at The Applicant conducts business in the area of financial services under and by reference to the two trade mark applications and the name CSL MONEY. The primary focus of the Applicant’s business is on arranging private mortgages and loan funds by acting as a facilitator to connect borrowers and lenders. The Applicant provides a range of financial services including the arranging of home loans and credit cards from financial institutions. Mr. Banovic indicates that he is not familiar with the Opponent providing any type of financial services, and he describes the nature of the Applicant’s business as being nothing like the business of the Opponent. Likewise, the achievements of the Opponent are said to be in different areas to the business of the Applicant and they do not relate to the financial services industry. Persons investing in or following the fortunes of the Opponent would not think that it was the Applicant. At no time have there been any instances of actual confusion having taken place.
Evidence in reply
The evidence in reply of the Opponent comprises the Statutory Declaration of Cheryl Hrjov made on 9 October 2008 and the second Statutory Declaration of Michael Wolnizer made on 10 October 2008. In her Declaration, Ms. Hrjov responds to the claims made by Mr. Banovec in relation to the alleged use of the “CSL MONEY” trade marks. In particular her investigations at the State Library of Victoria indicated that the words “CSL MONEY” did not feature prominently in any of those advertisements which were located. Further, each advertisement made reference to the companies The Crescent Securities (TCS) Limited and St Ives Securities Limited. There is no reference to the Applicant. The advertisements do not show use of the expressions “CSL” or “CSL MONEY” as trade marks or by the Applicant. In relation to the Applicant’s web site and the claim that the device mark of the Applicant has been used on that web site since October 2005, Ms. Hrjov has conducted research at the Internet address (known as the “Wayback Machine”) in respect of the Applicant’s web site. The result of that enquiry was that no pages were located for the Applicant’s web site in 2005. The earliest archived page which is available is dated 31 March 2006.
The second Wolnizer Declaration responds to the Applicant’s evidence and the claims of extensive use and public exposure of the applications. Mr. Wolnizer exhibits two reports prepared by the private investigation firm Rumore Associates in which the claims of the Applicant to extensive use and public exposure are challenged. The further point made by Mr. Wolnizer goes to the practice by larger companies of providing financial services and the giving of evidence of examples of high-profile companies which engage in such activities.
Issues
There are several contentious issues arising from the evidence which have been raised in the course of submissions and which require brief attention, namely:
(a) The legal representatives for the Opponent mounted an attack against the credibility of Mr. Banovec and a challenge to the veracity of his evidence. However, in the absence of specific evidence to that effect, I make no adverse finding as to the character or credit of Mr. Banovec.
(b) There is a serious argument which arises as the result of the reliance by the Opponent on evidence which has been obtained by means of an Internet search conducted in respect of archived material located at the web site (the so-called “Wayback Machine”) (see the Hrjov Declaration at paragraphs 14 to 16 inclusive and Exhibits CH-3 and CH-4). The Opponent argued that the absence of any archived pages on the site predating 31 March 2006 leads to the inference that the web address was not operating before that date. The Opponent also argued that if the Applicant’s evidence is erroneous in relation to this point then it cannot be relied upon more generally. The Applicant responded by raising issues as to the evidentiary value of the Wayback Machine. More generally, there arises the important consideration as to the weight that can be attached to materials located using the Wayback Machine resource.
13. The “Wayback Machine” is “a digital library of internet content that has been operating since 1996. It records and can show the contents of web sites as they were on particular dates in the past.”[1] The issue of the evidentiary value of the Wayback Machine[2] has received some judicial consideration in Australia and overseas[3] .This issue has also been the subject of attention in decisions before the Trade Marks Office.[4] Those decisions indicate that, absent any evidence to the contrary and with the exercise of appropriate caution in each instance, pages on the Wayback Machine are able to be accepted as valid evidence of the date on which a page appeared.
[1] See the decision of Hui Lin v. Hearst Communications Inc. [2006] NZIPOTM 24 per Assistant Commissioner Walden.
[2] For a description of the operation of the Wayback Machine, refer to the article by Beryl A. Howell entitled “Proving Web History: How to Use the Internet Archive”, Journal of Internet Law, February, 2006, pages 3-9. In general terms, the web pages are collected for the Internet Archive using search engine technology called “Alexa Crawl” (known a a “web crawler” or “web spider”) that traverses the Internet taking snapshots of web sites. The “Alexa Crawl” captures in the order of 1.6 terabytes (or 1600 gigabytes) of web content per day and it takes about two months to complete a snapshot of the more than 16 milliion web sites which are accessible on-line. The “Alexa Crawl” does not purport to capture all web sites accessible on the Internet but rather it prioritises the web sites and pages which are to be copied based on the number of times that a web site is requested. So, not every web site has an equal chance of being copied at all or in full. The “Alexa Crawl” search engine uses a rating system to determine the content that will be captured. Content that is not popular may be deliberately omitted if not visited often.
[3] E & J Gallo Winery v. Lion Nathan Australia Pty. Limited (2008) AIPC 92-293 at paragraphs 124-130 inclusive per Justice Flick at first instance. While this decision has been appealed both to the Full Bench of the Federal Court and to the High Court, the issue of the Wayback Machine was not considered on appeal.
[4] The relevant decisions of which I am presently aware are Source Homeloans Pty. Limited v. Coles Group Limited [2008] ATMO 17, DCK Australia Pty. Limited v. Vincona Pty. Limited [2008] ATMO 41, Action Tours Pty. Limited v. Dreamscape Tours Pty. Limited [2008] ATMO 65, Bissett Automation Pty. Limited v. Seagate Technology LLC [2008] ATMO 70, Careerbuilder, LLC v. Careerbuilders Pty. Limited [2009] ATMO 31 and Insfin Insurance & Finance Group Pty. Limited v. Razor USA LLC [2009] ATMO 81.
In this instance, however, I am being asked to accept that the absence of an archived page on the Wayback Machine is evidence that a page did not exist as at a particular date. Before proceeding further, it will be useful to summarise some of the problems which are identified in the literature,[5] namely:
[5] The relevant articles, which are referred to by Hearing Officer Murray in DCK Australia Pty. Limited v. Vincona Pty. Limited, op. cit., at paragraph 7 and footnotes 1, 2 and 5, are Beryl A. Howell, “Proving Web History: How to Use the internet Archive”, Journal of Internet Law, February, 2006, pages 3-9 and Matthew Fagan, “Can You Do a Wayback on That?” The Legal Community’s use of Cached Web Pages in and out of Trial”, Boston University Journal of Science and TechnologyLaw, 2007,volume 13, Part 1.
·It has not been established that the methodology employed by the Internet Archive was reliable, and as such that evidence should not be given any weight (see DCK Australia Pty. Limited v. Vincona Pty. Limited [2008] ATMO 41 at paragraph 6).
·The use of the Wayback Machine may constitute hearsay evidence (see the U.S. decision of Justice Guzman in Telewizja Polska USA, Inc. v. Echostar Satellite Corporation 2005 U.S. Dist. LEXIS 21756).
·The purported web-page printouts themselves may not be self-authenticating.
·The accuracy of the content of the archive is not guaranteed.
·Individual web sites may not be cached if they have not been indexed or if the owners have requested that the content not be cached.
·The Wayback Machine does not hold archived versions of all web sites or copies of every page for the web sites that are archived.
·When a search for an archived web site has negative results, that outcome does not necessarily mean that the web site does not exist, is not archived, or is only of current vintage.
·Archived web sites on the Internet Archive are compilations made over time. While the archived versions of web sites are date-stamped and time-stamped, the pages for each version of the web site may not have been copied simultaneously. In short, due to bandwidth and storage constraints, all of the data on a web site may not be captured at the same time.
·The archived versions of web pages available through the Wayback Machine may not contain all of the content on each web page that is captured. What you see is not always the complete story.
·The process of copying a web site for archiving purposes may result in changes to the extent that the archived web site may not show accurately any links that may have existed at the time shown for the web storage date.
·There is a delay in the archiving of web sites. No pages are archived in the most recent six months and sometimes versions of a page are not added to the Wayback Machine database for up to twelve months.
·The Wayback Machine does not save a copy of a page every time that the page is updated. Rather, the Wayback Machine saves a copy every time that it actually visits the page by crawling the web.
·Images are often left out of cached archives. This limitation could give rise to difficulty if the archived web page is being offered as proof that trade mark graphics were present on a web site.
·There may be a problem of authentication with an archived web site.
15. Thus, where the Wayback Machine reveals a document, I accept that it is prima facie evidence (though rebuttable) as to the existence of that document and the veracity of what it contains (including the date of same). However, in the light of those problems which are identified above, where the Wayback Machine does not produce an archived document as at a particular date, it does not necessarily follow that no page existed. I am therefore not able to accept in this instance that the Wayback Machine evidence establishes that there was no use of the “CSL MONEY” trade marks by the Applicant as at that date.
Reasons
By virtue of Section 55 of the Act, I am required to decide whether to refuse to register either or both of the “CSL MONEY” AND DEVICE trade mark applications Nos. 1107845 and 1147433 or whether to register those marks having regard to the extent (if any) to which any ground of opposition has been established. In so doing, I propose to direct attention to Section 60 as affording the primary ground of opposition which was argued by Ms. Ryan in the making of her submissions.
Section 60
Preliminary
There exists an important substantive issue which needs to be addressed as a preliminary matter. That issue relates to the form and wording of Section 60 which is properly applicable to the determination of this matter. The issue arises because of those changes to the wording of Section 60 which were implemented by virtue of the provisions of the Trade Marks Amendment Act 2006 (“the Amendment Act”) and which commenced as from 23 October 2006.
Prior to 23 October 2006, the wording of Section 60 read as follows:
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)
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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
That Section was amended by virtue of Items 31 and 32 of Part 1 of Schedule 1 of the Amendment Act. Pursuant to Section 2 of the Amendment Act and the table of commencement information which is provided therein, amendments brought about by Schedule 1, Part 1 were expressed to commence on the date of Royal Assent of that Act (namely, 23 October 2006). A number of Schedule 1, Part 1 amendments, notably Items 29 and 30 (pertaining to Section 58A) and 35 and 36 (in relation to Section 62A), carry “Transitional”,“Application” or “Application and Saving” qualifying provisions which state how the amendments will operate. The amendment to Section 60 was not subject to a provision of that kind.
Following the adoption of the Amendment Act, and in its present form, Section 60 states:
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.
In the course of her submissions, Ms. Ryan (for the Opponent) has proceeded on the assumption that the provisions of the Trade Marks Amendment Act 2006 (“the Amendment Act”) are applicable to the later application No. 1147433 but that the previous and unamended version of Section 60 applies to the earlier application No. 1107845 because the priority date of that application precedes 23 October 2006. Relevantly, the Amendment Act has the effect of altering the wording of Section 60(1) so that the previous requirement that an application which is opposed pursuant to this Section must be shown to be “substantially identical with, or deceptively similar to” an existing trade mark has been removed and no longer exists.
This point was not in contention at the hearing, and the adoption of that approach follows the decision of Hearing Officer Lyons in Apple Computer Inc. v. Todaytech Group Limited [2007] ATMO 40 (the “MACRON” case). However, in that decision both the application date and the date of filing the Notice of Opposition preceded the date of the amendment taking effect. In the present matter, although the earlier of the two applications was filed before the date of effect of the Amendment Act, the Notice of Opposition was lodged after that date. This position mirrors the fact situation which arose in Television Food Network G.P. v. Food Channel Network Pty. Limited (No. 2) (2009) 80 IPR 314 in the course of which Justice Collier (at page 350, paragraph 156) indicated that “It is not in contention that the amended version of s 60 is relevant in these proceedings”.
Thus there exists an issue as to the interpretation and application of Section 60 in the situation where the priority date of a trade mark is earlier than 23 October 2006 but where Opposition proceedings in respect of same are commenced after that date. In any event, in relation to the present matter this issue is moot because, for those reasons which follow, I find that the Applicant’s trade marks are deceptively similar to those of the Opponent so that even on the application of the more stringent test which existed under the former wording of Section 60 the requirements of that Section are satisfied and met.
Applicable Law
“Deceptively similar to”
It appears to be common ground between the parties that the requirement of “substantially identical with” is not applicable in relation to the present matter. However, in the course of their submissions, the respective legal representatives have set out those principles which are applicable in determining whether the relevant applications of the Applicant are deceptively similar to the prior existing registrations of the Opponent. In particular, reference has been made to the definition of “deceptive similarity” in Section 10 of the Act and to the well-established test as set out in Australian Woollen Mills v. F.S. Walton & Company Limited (1937) 58 CLR 641 at 658. Ms. Chrysanthou additionally placed reliance on the method of comparison of the trade marks for this purpose as discussed in C.A. Henschke & Company v. Rosemount Estates Pty. Limited (2000) 52 IPR 42 at paragraphs 40-42 (an infringement case) and the test therein stated as being “the impression or recollection which is carried away and retained”. In that decision, the Full Bench of the Federal Court referred favourably to the following words from the Australian Woollen Mills case, namely:
But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained. . . .
To those authorities I would add the test as restated by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 428 paragraph 50 where, in order to accommodate the presumption of registrability which was introduced by Section 33(1) of the Act, his Honour stated:
50 In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
After comparing the respective trade marks and considering those factors and circumstances which are relevant for purposes of the former wording of Section 60, I find that the Applicant’s “CSL MONEY” trade mark applications are deceptively similar to the “CSL” trade marks of the Opponent.
Other Elements
In addition to the requirement that the Applicant’s trade marks must be “substantially identical with, or deceptively similar to” a trade mark of a third party, the additional elements of Section 60 which must be met for this ground to be successful are as follows, namely:
·before the priority date, the other trade mark had acquired a reputation in Australia such that:
·use of the applicant’s trade mark would lead to deception or confusion.
Moreover it is established that for purposes of Section 60 there is no essential requirement that the respective goods or services must be the same or closely related in nature.[6]
[6] By way of example, cases in which there was found to exist the likelihood of confusion or deception being caused despite the different activities in which the respective parties were engaged include Hugo Boss AG v. Jackson International Trading Co. Kurth D. Bruhl GmbH & Co KG (1999) 47 IPR 423, Virgin Enterprises v. Bowes (2000) 51 IPR 615 at 639, Kellogg Company v. Exxon Corporation (2001) 53 IPR 177, General Motors Corporation v. Nicholls (2003) 61 IPR 370, and Jireh International Pty.Limited trading as Gloria Jean’s Coffees v. Vladimirovich (2006) 70 IPR 359.
The evidence establishes that, having existed in one form or another for more than ninety years, the Opponent has a substantial and impressive history and reputation in Australia in respect of its “CSL” trade marks and acquired over a significant period of time.7 Indeed the extent of that reputation is overwhelming. The profile, standing, importance and recognition of the Opponent in the Australian community and economy generally and in particular in the field of health sciences cannot be denied. The existence of the Opponent’s reputation precedes the priority dates of the two relevant applications. Given the long history of the Opponent both in its former status as the organisation of the Commonwealth Government responsible for developing biopharmaceutical and diagnostic products, together with its more recent life as a publicly listed company, it is clear and unequivocal that the Opponent enjoys an extensive reputation in respect of its use of the acronym “CSL” such that the Opponent can lay claim to having an entitlement for that acronym to be regarded as a “famous” or “well-known” trade mark in Australia. The “CSL” mark is a household name and an icon or, if not, it must come close to being so. It follows unavoidably to my mind that in adopting or using its “CSL MONEY” trade marks and in endeavouring to obtain registration in respect of same the Applicant is likely to cause instances of deception or confusion to occur in the minds of a significant section of the Australian public who, on seeing the “CSL MONEY” trade marks of the Applicant would be led erroneously to presume that there exists some connection, association or relationship between those marks and the Applicant when such is not the situation. There arises the real likelihood that the particular combination of letters “CSL” would be regarded by a significant section of the Australian public as being synonymous with the Opponent or as having an association with the Opponent. In this regard, that section of the Australian public which is relevant as being likely to be deceived or confused can be said to comprise:
· the general public, or the public at large at least some significant portion of whom could be said to be familiar with the “CSL” name and to associate that name with the Opponent;
· those members of the public who are involved in the healthcare and pharmaceutical industries in Australia;
· those members of the public who have health issues, who are customers of CSL, and who are consumers of CSL products;
and
· those members of the public who are involved in financial services or in the finance industry or who are investors and who would be likely to be well-aware of the “CSL” name in denoting the Opponent as a prominent, high-performing and publicly-listed Australian company.
There are two arguments of substance which have been raised on behalf of the Applicant. Firstly, it is said that the two relevant trade mark applications are in respect of a composite mark of which the acronym “CSL” is only one part or component, and that when regard is had to those applications considered as a whole and in their entirety they are visually distinct from the “CSL” trade marks of the Opponent. The Applicant has adopted and added a form of device which distinguishes its marks. The Opponent has no exclusive right or entitlement in respect of the acronym CSL (that being in the nature of a simple combination of three ordinary letters). The impression left on consumers by the Applicant’s trade marks is that of a device (which is said to be the prominent feature) and of something to do with money. Consumers are thereby left in no doubt that the trade marks of the Applicant are different from the expression “CSL” as used by the Opponent. The respective marks, it is submitted, are not deceptively or confusingly similar.
By way of rebuttal, this argument is challenged by the Opponent on several bases. In determining the likelihood of deceptive or confusing similarity, the relevant factors which are to be applied include “the effect or impression produced on the mind of potential customers by the mark”, the “effect of spoken description” and the “similarities both of sound and of meaning” (see Australian Woollen Mills v. F.S. Walton & Company Limited (1937) 58 CLR 641 at 658). The so-called doctrine of “imperfect recollection” (being the impression or recollection which is carried away and retained) must be taken into account. In this instance, the element of aural similarity is said to assume greater significance having regard to the circumstances in which the financial services of the Applicant are typically offered (that is, the frequency of telephone usage, television and radio advertising, and verbal references and advice). Again, the “common and essential feature” of each of the relevant marks is said to be the acronym CSL which they share in common. Taking these principles into consideration, and conducting a comparison of the marks themselves, the Opponent maintains that the requirements of Section 60 as a valid ground of opposition are adequately met and satisfied.
In the main, I am persuaded by the submissions of the Opponent. I accept the substantial and extensive reputation of the Opponent that exists, both in Australia and internationally, in respect of the “CSL” trade mark and the relevance of that reputation for purposes of Section 60. I accept the argument of the Opponent relating to the notoriety of the “CSL” trade mark for the purposes of this Section. In particular I am mindful of the observation of Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 431 paragraph 61:
Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as in the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perspective of them. For in the end the question of resemblance is about how the mark is perceived. It is the case the visual impact of the name “WOOLWORTHS” cannot be assessed without a recognition of its notorious familiarity to consumers.[7]
I accept that the extent of the Opponent’s reputation in respect of the expression “CSL” is borne out and substantiated by the evidence. For the purposes of Section 60, I accept the relevance of the family of “CSL” marks and the existing registrations and applications for registration of same which are held by the Opponent. In this regard, I refer to the decision of Hearing Officer Thompson in McDonalds Corporation v. Bellamy (2004) 62 IPR 133 at paragraphs 28 and 29. I accept that the acronym “CSL” is the essential feature of the respective trade marks. For these reasons, I do not accept the Applicant’s argument that its two applications are sufficiently distinguished from the Opponent’s “CSL” trade marks as to avoid any likelihood of deception or confusion occurring. In this regard, there is an analogy with the decision of Polo Textile Industries Pty, limited v. Domestic Textile Corporation Pty. Limited (1993) 26 IPR 246 (which was an infringement matter). In that case, Justice Burchett held (at 251) that the component “POLO” is the distinctive element of the composite “POLO CLUB” trade mark and that the taking of that element would be bound to cause confusion which the mere addition of the word “Club” did not dissolve. In that case, the respondent’s argument that the word “Club” provided a sufficient differentiation was not accepted. In the course of his judgment, his Honour stated (at 249):
On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version. And a shopper with a less than perfect recollection of a “Polo” product, who saw a similar product bearing the mark “Polo Club”, might well immediately link it to a memory of association with the key word “Polo”.
The second argument of the Applicant which requires consideration is that the activities of the respective parties and the use of their trade marks are different. On this argument, the Opponent is described as being involved in the medical and biopharmaceutical industries while the pending applications Nos. 1107845 and 1147433 are restricted to “Financial services” so that the two relevant forms of activity are very different with the result that there is no risk of deception or confusion. The parties and their respective trade marks are engaged in different fields of activity so that there is no overlap. The Applicant has no interest or involvement in the medical or biopharmaceutical area while the Opponent is not directly involved in relation to financial services. I disagree with this argument which is rejected by me. The specification “Financial services” is an expression which has potentially broad ambit and scope. That general description could be said to extend to encompass a wide range of activities including the dealing in shares, stocks and equities, the conduct of transactions in the financial market, the provision of everyday banking facilities, the provision of credit cards and personal loans, and the arranging of high-end fund raising. Further, in the context of Section 60, the relevant use which needs to be considered is the notional use which the Applicant might make of its trade marks rather than the actual manner in which it may have used those marks in the past. So, in comparing the nature of the activities of the respective parties for the purpose of Section 60, regard must be had to the full gamut of financial services which might be offered under the “CSL MONEY” trade marks of the Applicant. This aspect is not limited to any particular use but rather it must be based on what the Applicant can do potentially if registration of its trade marks were to be obtained.
The Opponent contends that there exists a strong nexus between its “CSL” trade marks and the area of financial services. That connection is made out by the existence of a number of indicia or factors, including:
· The Opponent is a publicly-listed company on the Australian Stock Exchange (“ASX”);
· The acronym “CSL” is the identification code used by the ASX in respect of the Opponent;
· Stocks in the Opponent are owned (either directly or indirectly) by a large number of Australian shareholders;
· Shares in the Opponent are traded every day on the ASX;
· As one of the country’s largest companies, movements in the stock of the Opponent and in the pricing of same are watched every day by many investors and their advisors;
· The Opponent receives widespread and extensive media attention with the “CSL” name featuring in newspapers (particularly in relation to the financial pages) and on a daily basis, as well as in articles regularly appearing in magazines and journals in the financial sector (such as Smart Investor, Business Review Weekly, and the like);
· The Opponent has an existing controlled or subsidiary company which bears the name “CSL Financial Services Pty. Limited” and which was set up to raise finances and to arrange funding for member companies of the CSL Group;
· Funds and finances are arranged and capital raising takes place by the Opponent (or through its subsidiary) through the making of share issues as well as by other means;
and
· The Opponent holds two pending applications Nos. 1162053 and 1162054 which extend to include “financial services” (in Class 36) and “business services” (in Class 35) respectively.
The overall result is that the acronym “CSL” can reasonably be said to be well-known to traders, stockbrokers, financial consultants, business analysts, investment advisors, bankers, ordinary shareholders, and other persons involved in and familiar with the providing of financial services as indicating an association with the business activities of the Opponent. As such the Opponent can fairly claim that its “CSL” name and trade marks have an established nexus with the activity of financial services. At least for the purpose of making a comparison under Section 60, the Applicant’s argument that the respective trade marks can be differentiated on this basis is answered and overcome. The obvious inference that is reasonably available to members of the public on encountering the “CSL MONEY” trade marks of the Applicant is that the Opponent has commenced the conduct of business in its own right in relation to financial services and by means of use of the expression “CSL MONEY”.
Some additional assistance is provided by the decision of Kimberly-Clark Worldwide, Inc. v. Goulimis (2008) AIPC 92-307 and in particular, I refer to the following wording of Justice Jagot, namely:
Section 60 involves deceptive similarity by reason of reputation. The evidence establishes that the opponent’s trade mark HUGGIES has acquired a reputation in Australia. The opponent’s trade marks (registered and unregistered) involve both the word HUGGIES alone and the word HUGGIES with other words. HUGGIES is the dominant brand in the market for baby-toddler personal care items in the form of disposable nappies, liners, and ancillary items (such as wipes, cloths, and lotions). I accept the opponent’s submission that HUGGIES is a household name with a substantial degree of notoriety or familiarity in Australia; HUGGIES automatically brings to mind baby-toddler personal care items, particularly nappies.
The same reasoning and the same elements are applicable in respect of the present matter and in relation to the “CSL” trade mark. The Opponent’s “CSL” trade mark has acquired a reputation in Australia. The Opponent’s trade marks (registered and unregistered) involve both the acronym “CSL” alone and that element in combination with other words and components. “CSL” is a dominant brand in the market for medical and biopharmaceutical products. The “CSL” mark is a household name with a substantial degree of notoriety or familiarity in Australia.
In relation to the expression “reputation” as it is used in Section 60, the meaning of that word was considered by Justice Lockhart in ConAgra Inc. v. McCain Foods (Australia) Pty. Limited (1992) 23 IPR 193 at 234 where he stated:
( 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.
The consideration of reputation was taken further by Hearing Officer Thompson in Hugo Boss v. Jackson International Trading Company Kurt D. Bruh/ Gmbh & Co. KG (1999) 47 IPR 423 at 426 where he said:
. . . [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition component of the trade mark’s reputation. The credit, image and values projected by a trade mark attached to the ‘esteem’ component of the reputation as do the public events and other traders’ trade marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
Both those statements were quoted with approval by Justice Kenny in McCormick & Company Inc. v. McCormick (2000) 51 IPR 102. In that case, her Honour (at 127) considered what might be intended by the word “reputation” and having consulted the Macquarie Dictionary she decided that in Section 60 reputation is “the recognition of the [trade mark] by the public generally”. Her Honour went on to observe:
In practice, it is commonplace to infer a reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.
There remains to be considered the issue as to whether use of the opposed trade mark would be likely to deceive or cause confusion and whether that element is able to be made out. In this regard, the Applicant places reliance on the fact that there is no evidence of any actual instances of deception or confusion having occurred. For its part, the response of the Opponent is to argue that because the Applicant has made limited use of the “CSL” trade marks the absence of any evidence of actual deception or confusion is not particularly significant. In clarifying this issue, assistance is derived from the decision of Berlei Hestia Industries Limited v. The Bali Company Inc. (1973) 129 CLR 353 where Chief Justice Barwick observed:
But the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark. The question is whether its use is likely to confuse. In answering that question, the capacity of the respondent to apply its mark to merchandise of the same kind as that sold by the appellant must be borne in mind even though as yet it has not done so. The answer to the question cannot be confined to the circumstances of the trade presently obtaining.
In relation to Section 60, having regard to the substantial and undisputed reputation of the Opponent in respect of the expression “CSL”, the test of the likelihood of deception or confusion is made out and satisfied.
Weighing up and assessing those considerations which are raised above, I am satisfied that the necessary elements are met and I am led to the conclusion that because of the extensive reputation acquired by the Opponent in Australia in respect of the expression “CSL” and in relation to a wide range of goods and services, the registration of the Applicant’s “CSL MONEY” trade marks would be likely to deceive or cause confusion. Accordingly, I find that the ground of opposition pursuant to Section 60 has been made out. So, regardless as to the form of Section 60 which is properly applicable (that is, pre-Amendment Act or post-Amendment Act), in either event I arrive at the same position and outcome in reaching the finding that in the present instance the ground of opposition pursuant to Section 60 is satisfied and that the Opponent is successful in this regard.
Other Grounds
36.. In order for the Opponent to be successful, it is only necessary for one of the available grounds of opposition to be established by it. In this instance, I find that the Section 60 ground has been made out. That being so, I do not need to consider any of the remaining four grounds of opposition, and I make no formal determination or finding in relation to those grounds. However, for the sake of completeness, I would express the view that should I have needed to do so I would have been prepared to find that the grounds under Sections 42(b) and 43 are met while the grounds under Sections 44 and 58 are not made out.
Decision
On the reasoning which has earlier been set out, I find that the Opponent has established its opposition so far as the Section 60 ground is concerned. In the circumstances, the Opposition succeeds and I refuse to grant registration in respect of the trade mark applications Nos. 1107845 “CSL Money” AND DEVICE and 1147433 “CSL MONEY” AND DEVICE which are the subject of these proceedings.
Costs
The Opponent has requested an award of costs in its favour in this matter. I see no reason as to why the general rule should not apply and why costs should not follow the cause. The Opponent having been successful, I award costs against the Applicant in accordance with the official scale as provided in Schedule 8 of the Trade Mark Regulations In relation to the assessing of costs, I make the point that the two Opposition proceedings have been considered and determined concurrently, and that presumably this factor will need to be duly taken into account when costs are calculated.
John Spence
Hearing Officer
Trade Marks Hearings
2 June 2010
Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellanys rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a martk, the fact that the mark , or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. . . .
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