D & M Group Pty Ltd v Cairns Airport Pty Ltd

[2012] ATMO 22

TRADE MARKS ACT 1995

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

Re:Opposition by D & M Group Pty Ltd to registration of trade mark application 1320218 (35, 39) - CAIRNS AIRPORT - filed in the name of Cairns Airport Pty Ltd.

Delegate:	Claudia Murray
Representation:	Opponent: Mr Thomas Stevens, partner, of O’Reilly Stevens Bovey Lawyers, Cairns. Applicant: Mr Andrew Musgrave of Counsel, instructed by Ms Sarah North of McCullough Robertson Lawyers, Brisbane.
Decision:	2012 ATMO 22 Section 52 opposition – sections 43, 58, 59 and 60 - opposition unsuccessful – application to proceed to registration - costs awarded against opponent.

Background

1. Trade mark application number 1320218 was filed by Cairns Airport Pty Ltd (‘the applicant’) on 11 September 2009, for the trade mark:

2. The application covers the following services in classes 35 and 39 of the Nice Classification of Goods and Services:

   Class 35:

   Tourism promotions (for others); business management advisory services; business information; business administration advisory services; business advisory services; business consultancy; business development services; provision of information in relation to business administration

   
   Class 39:

   Air transport; air transport of goods; air transport of passengers; air transportation services; airline transport; arrangement for the transportation of goods; arrangement of passenger transport; arrangement of taxi transport; arrangement of transportation; transportation by bus; packing of goods for transportation; transport by air; motor vehicle transport services; vehicle transport services; aircraft chartering; airport baggage handling; transportation of baggage; rental of motor vehicles; provision of car parking facilities; travel arrangement; storage of goods; transport information services; car parking; motor vehicle hire services; passenger vehicle hire.

3. No grounds of rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 21 January 2010.

4. D & M Group Pty Ltd (‘the opponent’) filed notice of opposition to registration on 21 April 2010. Seven grounds of opposition were listed in the notice.

5. Evidence in support, answer and reply was duly served and filed. On 21 July 2011, the opponent requested a hearing on the opposition. In due course I heard the matters, as a delegate of the Registrar of Trade Marks, on 23 November 2011 in Canberra. Mr Andrew Musgrave of Counsel, instructed by Ms Sarah North of McCullough Robertson Lawyers, Brisbane, represented the applicant by telephone. Mr Thomas Stevens, partner, of O’Reilly Stevens Bovey Lawyers, Cairns, represented the opponent, also by telephone.

   Evidence

6. The evidence in relation to this opposition comprises:

   Evidence in Support

   ØStatutory declaration of Jennifer Teresa Cutler, with Annexures A to M, dated 20 August 2010 (‘first Cutler declaration’).

   Evidence in Answer

   ØStatutory declaration of John Andrejic, with Exhibits 1 to 20, dated 17 March 2011.

   Evidence in Reply

   ØStatutory declaration of Jennifer Teresa Cutler, dated 17 June 2011.

   Further Evidence (Applicant)

   ØStatutory declaration of John Andrejic, with Exhibits A, B and C, dated 14 November 2011.

7. The first Cutler declaration was accompanied by a summary of the opponent’s position, which stated:

   On or about the 26 October 2007 the opponent adopted and first used the trade mark Cairns Airport Rentacars (with logo) "the Trade Mark" with the intention of conducting its car rental business utilising the Trade Mark. The opponent adopted the Trade Mark in good faith and ever since October 2007 the opponent has used its Trade Mark, in the course of trade, in good faith.

   The opponent has continuously used its Trade Mark since 26 October 2007 in relation to its business of renting motor vehicles to the general public.

   The opponent subsequently applied to register its Trade Mark, being application 1327883.

   The opponent opposes the registration of the applicant's trade mark number 1320218 in so far as it relates to the services in class 39 of "rental of motor vehicles, motor vehicles hire services and passenger vehicle hire". The opponent is the owner of its Trade Mark insofar as it is used in the course of trade with respect to such services and the applicant's substantially identical or deceptively similar trade mark is not entitled to be registered in class 39 for such services.

   The opponent's adoption and use of its Trade Mark in good faith preceded the incorporation of the applicant by nearly one year.

8. Relevant details of the opponent’s trade mark application are shown below. Although the application was pending at the time the first Cutler declaration was made, the Trade Marks Database now shows that the application lapsed on 17 March 2011.

TM No.	Filing Date	Trade Mark	Class / Services
1327883	26 Oct 09	Class 39: Rental of motor vehicles; passenger vehicle hire; car hire services; motor car rental; rental of cars; rental of motor cars

1. The first declaration by Mr Andrejic describes the history of ‘Cairns Airport’. The site’s history as a landing strip for aeroplanes is traced back to 1928, when ‘Tom McDonald started flying his Gypsy Moth off a sand ridge near the present airport location at Airport Avenue, Cairns, Queensland.’[1]

   [1] Statutory declaration of John Andrejic, dated 17 March 2011, para 17.

2. Mr Andrejic describes, in some detail, Cairns Airport as it is today:

   Cairns Airport is one of Australia's leading regional airports, providing air links to a range of domestic and international locations. It is Australia's seventh busiest airport for international passengers with direct flights to many locations such as Auckland, Tokyo, Osaka, Hong Kong, Guam, Port Moresby and to Singapore, via Darwin (Exhibit 2).

   Cairns Airport is located 7km north of the Cairns CBD and comprises of 768.3 hectares of land.

   Cairns Airport contains:

   (a) an international terminal (approximately 38,000 m2);

   (b) a domestic terminal (approximately 39,000 m2);

   (c) a large general aviation precinct;

   (d) an airport business park;

   (e) a large duty free offering;

   (f) 21 speciality stores (located in both the domestic and international terminals) including well-known retailers such as Newslink, FIRST Tax & Duty Free, Sunglass Hut, International Currency Exchange, Galerie Tropical and BeachCulture;

   (g) transport facilities including bus, taxi, limousine, car and other transfer services, car parking facilities (long and short term) and car rental;

   (h) an extensive array of food and beverages stores;

   (i) currency exchange facilities; and

   (j) parking facilities.

   (Exhibits 2 and 4)

   Various well-known domestic and international air flight carriers provide their services from Cairns Airport, including Qantas Airways, Virgin Blue, Pacific Blue, Jetstar, Tiger Airways, Cathay Pacific, Continental Micronesia, Air New Zealand, Air Niugini, Continental Airlines and Regional Pacific Airlines (Exhibits 2, 3 and 4).[2]

   [2] Statutory declaration of John Andrejic, dated 17 March 2011, paras 12 to 15.

   Grounds of opposition

3. Prior to the hearing, the opponent indicated that the grounds of opposition it wished to press were those under sections 43, 57, 58, 59 and 60, and those grounds only in relation to the services of ‘rental of motor vehicles, motor vehicle hire services and passenger vehicle hire,’ (‘the disputed services’) covered by the applicant’s trade mark. I note here that section 57 is not a separate ground of opposition as such, as it simply specifies that ‘registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected…’ The opponent did not mention section 57 again in its submissions, and I do not intend to discuss it further here. I should however note that the opponent’s notice of opposition specified at paragraph 1(d) that ‘The applicant was not entitled to apply for registration of the opposed trade mark pursuant to Section 27 of the Trade Marks Act 1995.’ The opponent’s submissions at the hearing did not address that section, but discussed both sections 58 and 59, although the latter was not specifically mentioned in the notice of opposition. Mr Musgrave did not dispute the opponent’s approach to these grounds, and I agree with his comments. He said:

   While s.57 of the Act now permits opposition on any grounds on which an application for the registration of a trade mark may be rejected under the Act (and no longer limited to Part 5 Division 2), it is not clear that s.27 provides any independent ground of opposition other than might be comprised by the combination of s.58 and s.59.

   This appears to have been the approach adopted in Food Channel Network v Television Food Network [2010] FCAFC 58. The principles should not be any different to the combined effect of the principles under section 58 (ownership) and section 59 (intention to use).

   Therefore, as to s.27(1)(a) the applicant relies upon the submissions made in respect of s.58.

   As to the grounds required under s.27(1)(b) the applicant relies upon the principles relevant to the operation of s.59.

4. I will discuss the opposition grounds at issue in the order in which they were pressed by Mr Stevens, finally noting for completeness that the other grounds listed in the notice of opposition have not been made out.

   Section 43 - Trade mark likely to deceive or cause confusion

5. Section 43 provides that an application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. Examples of the kinds of circumstances most clearly intended to be addressed by the section occurred in the VITAMIN[3] and ORLWOOLA[4] cases. In those cases, there was a danger the public might make a reasonable, but incorrect, assumption about a product based upon the trade mark, which could not easily be confirmed or discounted by even close inspection of the product.

   [3] J. Kitchen & Sons Pty LTD v Inman (1939) 9 AOJP 1383 (Reg).

   [4] Re Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.).

6. Gyles J, in Pfizer Products Inc v Karam[5], has discussed the operation of section 43 in the following manner:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]). Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.

   [5] [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599, at [53].

7. The opponents’ submissions regarding deception and confusion of the public in terms of section 43 did not focus primarily on any possibility that this might occur because of a connotation inherent within the applicant's trade mark, but rather relied upon its similarity to the trade mark used by the opponent, an interpretation of the section discounted by the courts, as discussed above. However, Mr Stevens also argued that the ground of opposition under section 43 applied to the words ‘CAIRNS AIRPORT’ in the applicant’s trade mark because it referred to a geographic location, ‘in the nature of a suburb’ with ‘one road in and out’ – the opponent’s business being located, not in the actual airport ‘suburb’, but very close by, on that access road.

8. Mr Musgrave responded that:

   Put at its highest, the opponent's argument is this: the opposed mark states, as a part of the logo mark, the name of the place where the Applicant carries on the business of operating an airport.

   However:

   ·     The applicant is entitled to carry on business at this location. The opponent is not.

   ·     The applicant is the owner of the airport and the land on which it is situated. The opponent is not entitled to occupy the Cairns Airport without the licence of the applicant. The opponent has no such licence.

   The opponent endeavours, by raising this issue, to infer that some confusion will arise by reason of the reference to "Cairns Airport”, the name of a geographical location and therefore contains some connotation regarding the geographic location which would be likely to deceive or cause confusion.

   Several issues arise:

   ·     This is an application for a device mark with words and a logo.

   ·     The applicant's situation does not mirror that in the MID Sydney Case.[6] The location of the applicant's business is different from the location of the opponent's business. The opponent does not fall into one of those categories of those traders who at the same time may wish to able to use the mark for the purposes of identification.

   Cairns Airport is not a "town, a suburb or a municipality.”[7] It is a large concern, but it is owned entirely by the applicant. The applicant has the exclusive power to licence people to attend or to operate a business at the airport. There is no other entitlement to be on the airport other than as licensed by the applicant…

   The opposed mark is for a logo mark which is a brand that has been applied to a privately owned airport and retail complex.

   [6] Mid Sydney Pty Ltd v The Australian Tourism Co Ltd & Ors (1998) 90 FCR 236 at 250-251.

   [7] MID Sydney, ibid, at 251.

9. I accept much of the applicant’s argument and evidence upon this point. I am satisfied that there is no ground for refusing the applicant’s trade mark on the basis that it contains a connotation which would result in its use on the disputed services being likely to cause deception or confusion of the public. The opponent has not made out its ground of opposition under section 43.

   Section 58 – Applicant not owner of trade mark

18. Section 58 of the Act provides:

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

1. To succeed on this ground, absent any evidence of use by an applicant before the priority date of its application, (as is the case here), an opponent must be able to demonstrate use prior to that date, of the same or a substantially identical trade mark, in relation to services which are the ‘same kind of thing’.[8] To take the latter point first, there is no dispute between the parties that the services of interest in this opposition are the same, being the services covered by the applicant’s trade mark which accord with those which have been provided by the opponent’s car rental business in Cairns since 2007.

   [8] Re Hicks Trade Mark (1897) 22 VLR 636.

2. The identity of the disputed services being established, the critical issue to be resolved under section 58 is therefore whether the relevant trade marks are substantially identical. As Mr Stevens pointed out, the accepted test for substantial identity involves side-by-side visual comparison of those trade marks.[9] I would further observe that a finding of substantial identity means that ‘in a real sense a claim to proprietorship of the one [trade mark] extends to the other.’[10] Mr Stevens submitted that, according to a side-by-side visual comparison, the ‘essential feature of both marks is the words Cairns Airport.’ Comparing the trade marks in this way, while Mr Stevens is clearly correct in his observation that the words ‘CAIRNS AIRPORT’ comprise an essential feature of both trade marks, I cannot agree with him that the trade marks are substantially identical. Each mark also contains other features which are distinctive in their own right and which ensure that in no sense could ownership of one of the trade marks be considered to extend to the other.

[9] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414-5.

[10] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, at 391.

1. I find that the trade marks at issue are not substantially identical. Accordingly, the opponent has not made out its ground of opposition under section 58.

   Section 59 - Applicant not intending to use trade mark

2. Section 59 deals with an applicant’s intention to use its 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.

3. Mr Stevens submitted that the applicant had provided no evidence of either an intention to use its trade mark on the disputed services, or evidence of actual use, despite having had ample opportunity to do so. He argued that the applicant has never directly offered the disputed services under its own trade mark, but rather has sublicensed those services to third parties who provide those services under their own trade marks such as ‘Avis’, ‘Europcar’ and ‘Hertz’. However, as Mr Musgrave pointed out, the photographs tendered by the opponent in its further evidence (see example below) clearly show the applicant’s trade mark now (since May 2011) in use in conjunction with the trade marks owned by the car rental companies licensed to operate out of its airport precinct:

   [11]

   [11] Statutory declaration of John Andrejic, dated 14 November 2011, Exhibit C.

4. An application to register a trade mark is prima facie evidence of the applicant’s intention to use that trade mark on the goods or services specified in the application.[12] At the outset, the onus is upon the opponent to make its case under section 59 as for any other ground of opposition. The relevant date at which the applicant’s intention to use must have existed is the filing date of the application.[13] Once the opponent has made out a prima facie case that there was a lack of intention to use the mark at that time, the onus then shifts to the applicant to establish its intention.[14] However:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured…

   Although non-use does not, in itself, imply a lack of the intention, the intention would usually accompany genuine use in Australia, which accordingly may constitute evidence of its existence. As confirmed by the Full Court in Food Channel [supra] and Burchett J in Conde Naste Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509, use of the mark after the date of filing the application may also throw light on the existence of the intention at that earlier time.[15]

   [12] Aston v HarleeManufacturing Co [1960] HCA 47; (1960) 103 CLR 391

   [13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (2 June 2010) at [74].

   [14] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478). Food Channel Network Pty Ltd v Television Food Network GP [2010], op. cit. at [72].

   [15] Suyen Corporation v Americana International Ltd [2010] FCA 638; (2010) 187 FCR 169; (2010) 87 IPR 262; [2010] AIPC 92-389, at [207] and [211].

5. In this instance, I find that the opponent has not made out its case that the applicant had no intention to use its trade mark at the time of filing its application. Its mere allegations fall far short of evidence sufficient to shift the burden of proof onto the applicant. The applicant was entitled to wait for the conclusion of an opposition process, and subsequent registration, before using its trade mark. The applicant accordingly has no case to answer in terms of section 59. However, had I found that in fact it did have a case to answer, I would also have found that the applicant’s subsequent use of its trade mark, as put into evidence, had indeed thrown light onto the existence of its intentions at the time of filing.

1. The opponent has not established a ground of opposition under section 59.

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

2. The provisions of section 60 read:

   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.

3. To satisfy the provisions of section 60, therefore, the opponent must here demonstrate that, at the priority date of the opposed application (11 September 2009), there existed a reputation in its own trade mark such that use of the opposed trade mark for the services covered by it would likely cause members of the public to be deceived or confused. The trade mark relied upon need not be subject of a pending application or registration in order to be relevant in terms of this section. Further, section 60 does not require the trade mark relied upon to be ‘deceptively similar’[16] to the opposed trade mark or that it has been used on similar services or closely related goods. Instead, the focus of the provision here is squarely upon the likelihood of public deception or confusion being generated by the applicant’s use of its trade mark in the face of the reputation of the trade mark relied upon by the opponent. The reputation of a trade mark may develop in a variety of ways, and be influenced by the particular trading environment in which it has evolved.[17] However, ‘in practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the [trade] mark, as opposed to the product.’[18]

   [16] As defined in section 10 of the Act.

   [17] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129; McCormick & Company Inc v McCormick (includes corrigenda dated 18 September 2000) [2000] FCA 1335 (15 September 2000), per Kenny J at [85].

   [18] Ibid. at [86].

4. The opponent has provided evidence of its use of its trade mark since October 2007. While its business does appear to be growing, the evidence before me is not persuasive in the terms envisaged by Kenny J which I have quoted above. The evidence does not reflect a high volume of rental transactions, or substantial advertising expenditure, such as might reflect the development of a significant reputation in its trade mark. And while success under section 60 does not require an established reputation in a substantially identical or deceptively similar trade mark, if there are significant differences between the trade marks, as is the case here, this cannot help but play to the opponent’s disadvantage when the question is posed as to whether the applicant’s use of its trade mark is likely to cause deception or confusion because of the opponent’s reputation in its own trade mark. I believe such deception or confusion of the public to be most unlikely in this instance.

5. I find that the opponent has not established its case in terms of section 60.

   Decision

6. Subsection 55(1) of the Act provides:

   (1)     Unless the proceedings are discontinued or dismissed, 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.

7. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[19] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[20]

   [19] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.

   [20] [2009] FCA 891 (18 August 2009), paragraphs 22-27.

8. I find that the opponent has not met the onus upon it, in terms of any of its grounds of opposition. The trade mark may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

   Costs

9. The applicant has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent, D & M Group Pty Ltd.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   15 February 2012