Dale Cleves Music Pty Ltd v Allans Musical Instruments Pty Ltd

[2022] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by Dale Cleves Music Pty Ltd to registration of trade mark application 1983105 (15) – Australian Piano Centre (Figurative) – in the name of Allans Musical Instruments Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: By George Legal

Applicant: Self-Represented

Decision:

2022 ATMO 51

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Dale Cleves Music Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Allans Musical Instruments Pty Ltd (‘Applicant’): 

Application Number:

1983105

Filing Date:

14 January 2019

Goods:

Class 15: Autoplaying electronic pianos; Electric pianos; Electronic pianos; Intensity regulators for mechanical pianos; Pianos; Reproducing pianos; Piano keyboards; Pianofortes

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 29 October 2019 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 3 February 2020. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 1 May 2020 by Michael Dale Cleves, a Director of the Opponent, with Annexures MDC-1 to MDC-46 (‘Cleves declaration’).

   ·Declaration made on 28 April 2020 by Stefan John Krcmarov, an employee of the Opponent, with Annexures SJK-1 to SJK-2 (‘Krcmarov 1’).

   ·Declaration made on 29 April 2020 by Melissa Tang (‘Tang declaration’).

   ·Declaration made on 17 April 2020 by Paul Luke Zorzi (‘Zorzi declaration’).

   ·Declaration made on 27 April 2020 by Xiaoying Li (‘Li declaration’).

   5.  The Applicant filed the following evidence in answer:

   ·Declaration made on 6 August 2020 by Allan Wang, an employee of the Applicant, with Annexures A to C (‘Wang declaration’).

   ·Declaration made on 6 August 2020 by Brenda Yeo, an employee of the Applicant (‘Yeo declaration’).

   6.  The Opponent filed the following evidence in reply:

   ·Declaration made on 6 October 2020 by Stefan John Krcmarov (‘Krcmarov 2’).

   ·Declaration made on 7 October 2020 by Christopher Charles Hillier, an employee of the Opponent (‘Hillier declaration’).

   ·Declaration made on 6 October 2020 by Katherine Ly, an employee of the Opponent (‘Ly declaration’).

   ·Declaration made on 1 December 2020 by Joel Brady Masterson, a lawyer acting for the Opponent, with Attachment JBM-3 (‘Masterson declaration’).

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.   On 9 November 2020 the Opponent requested an oral hearing.  The matter was set down for a hearing in Canberra on 8 February 2022 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 22 December 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 25 January 2021 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 1 February 2021 (‘Applicant’s Submissions’).  At the hearing Marcus Fleming of Counsel instructed by Joel Masterson and Olivia Sasse of By George Legal represented the Applicant.  The Opponent did not appear.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

2. The Opponent is an Australian company that is involved in the retail of pianos.  

   10.     The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is registered are referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Services
1647008	15 Sep 2014	Class 35: Retail and wholesale services of musical instruments and their accessories including pianos, digital pianos, piano accessories, keyboards, including on-line retailing by electronic means of the aforementioned goods (‘Opponent’s Services’)

11.     The relevant claims/statements in the Cleves Declaration can be summarised as follows:

·     The Opponent is the owner of the Opponent’s Trade Mark and also uses the words AUSTRALIAN PIANO WAREHOUSE plain and logo form (‘APW Mark’) in connection with its business.  The Opponent was incorporated in 1979 and has sold pianos and keyboards since that date.

·     The Opponent is Australia’s largest piano retailer with stores trading under the Opponent’s Trade Mark and APW Mark in Brisbane, Melbourne, Adelaide and Sydney, where it opened its store in July 2018.  It has used the Opponent’s Trade Mark and APW Mark continuously since 2013 and has generated significant revenue under those marks.  It also extensively advertises its products under the Opponent’s Trade Mark and APW Mark, including through its website, social media, Internet advertising (such as through Gumtree), television advertising, newspaper advertising, direct marketing and through sponsorships.  As a result of the Opponent’s business practices, the goods and services offered under the Opponent’s Trade Mark and APW Mark received positive customer reviews.

12.     The Annexes to the Cleves Declaration display various marketing materials that use the Opponent’s Trade Mark and APW Mark. 

13.     Stefan Krcmarov is the Store Manager of the Opponent’s North Willoughby store.  He gives evidence in Krcmarov 1 that the Applicant, in 2019, opened a store 3 sites down from the North Willoughby Store under the name Australian Piano Centre.  He gives evidence that he receives regular enquires from customers confused between the two stores, with such enquiries occurring, on average, twice a week.  He then gives evidence of a number of unpleasant interactions with Allan Wang and suggests that Mr Wang is posting fake negative Google reviews.

14.     The Tang, Zozi and Li declarations are each similar.  Each of them are from members of the public unconnected to either party who were confused between the Opponent and the Applicant as the entities operate stores that trade under similar names (the Australian Piano Warehouse and the Australian Piano Centre) in close proximity in Willoughby. 

15.     In reply, the Hillier and Ly declarations rebut the statements made in the Wang Declaration about him not offering Mr Hillier and Ly a job.  Krcmarov 2 rebuts statements made in the Wang Declaration about the interaction between himself and Mr Wang.

16.     The Masterson declaration annexes documents filed in respect of an opposition by the Applicant to trade mark application number 2040386.  In that case the Opponent is seeking to register a mark, being a slightly stylized version of the APW Mark, for goods and services in the music field.  In that case the Applicant has, in its statement of grounds and particulars, argued that the stylized version of the APW Mark is deceptively similar to the Trade Mark.

The Applicant

17.     The Wang declaration contains numerous paragraphs that are submissions about the similarity or lack thereof between the Trade Mark and the Opponent’s Trade Mark which are not necessary to set out here.  The factually relevant claims/statements in the Wang declaration can be summarised as follows:

·     The Applicant was established in 2013 and commenced using the lyre element in the Trade Mark as early as 2014.  In 2018 the Applicant changed its business name from ‘Aarons Pianos’ to ‘Australian Piano Centre’ and registered its business name with ASIC in January 2019.

·     There are numerous businesses in Australia that trade under marks containing ‘australia’ or ‘piano’, including Australia Piano World, Piano World Australia, Australia Music World and EPG Piano Warehouse.

·     While customers visiting the parties’ North Willoughby stores may well be confused such confusion may arise from the fact that the stores are located close to each other and customers may not have read the shop names and addresses carefully.  The Applicant and Opponent’s North Willoughby stores sell different pianos (the Applicant stocks a more premium, European line) and the Applicant does not mislead consumers into claiming its business is the Australian Piano Warehouse.   The Applicant’s decision to expand on the same street as the Opponent was co-incidence and the Opponent took no action against the Applicant until they found out that the stores were in close proximity.

·     The Declarant denies the statements in Krcmarov 1 regarding unpleasant incidents emanating from the Applicant and refers to certain incidents arising from the actions of the Opponent’s employees.  The Deponent denies formally offering jobs to Katherine Ly and Christopher Hillier.  He criticises the conduct of the Opponent in posting an unapproved sign-board on a public footpath.  He denies that his company is the source of the Google reviews and notes that his company has received (and reported) several fake 1 star reviews.

18.     The Annexes to the Wang Declaration display various examples of the promotion undertaken by the Applicant using the Trade Mark.   

19.     The Yeo declaration consists of material praising Mr Yang.  She acknowledges, that confusion has arisen between the Applicant’s and Opponent’s North Willoughby stores but that the Applicant has never sought to take advantage of that confusion for commercial gain.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   21.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is the filing date 14 January 2019 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

2. The relevant provisions are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)             a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   23. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

3. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which has a priority date that is earlier than the priority date of the Trade Mark. 

   Closely related services

   26. The present case is curious since the Applicant, which according to its evidence, operates a business selling third party pianos, has sought to register a trade mark for musical goods despite the fact that it does not appear to have ever sold its own goods under the Trade Mark. Nevertheless, for the purposes of considering the ground of opposition under s 44, I must consider the goods for which the Trade Mark is sought to be registered, not the services for which the Applicant appears to be using the Trade Mark.

   27.     The case of Paypal, Inc v Braintree Communications Pty Ltd[4] summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Marks are registered are closely related to the Applicant’s Goods as follows:

   [4] [2017] ATMO 90.

   In Qantas Airways Ltd v Edwards[5] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[6]:

   [5] [2016] FCA 729, [111] (Yates J).

   [6] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [7] 

   [7] [2017] ATMO 90, [28]-[29] (Hearing Officer Thompson).

   28.     The Applicant’s Goods are pianos and related products.  The Opponent’s Services are the retail of pianos and related products.  The Applicant has conceded in its submissions that the goods are closely related to the Opponent’s Services. In circumstances where some producers of pianos, keyboards and other musical instruments (such as Yamaha) sell their products directly to the public, I consider that the respective goods and services are closely related.  To put it another way, the use of the same mark for a piano and a piano retail service would clearly suggest to the general public that there is an association between the provider of the retail service and the manufacturer of the product sold.     

   Substantially identical and/or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

   [8] (1963) 109 CLR 407, 414.

   30.     The Trade Mark and the Opponent’s Trade Marks are set out below:

   31.     On a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison between the Trade Mark and the Opponent’s Trade Mark. Indeed, the only common element is the shared use of the descriptive words ‘Australian Piano’ in similar (though not identical) font.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   32.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[9]

   [9] Ibid [13].

   33.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[10] at [49]; Australian Woollen Mills[11] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[12] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[13] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[14]

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [12] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [14] [2012] FCA 1022, [37]-[46].

2. In the present case, there are some minor similarities in the manner in which the marks are set out (being the combination of the words and logo element), but such similarities are not particularly significant.  The key similarity between the marks is the shared words ‘australian piano’.  In the context of the goods and services for which the Trade Mark and the Opponent’s Trade Mark are registered/sought to be registered, being pianos and piano retail services the words ‘australian piano’ are both descriptive and common to the trade.[15]  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

   [15] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34] (Hearing Officer Thompson).

3. Justice Stephen  observed[16] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[17]

   [16] Albeit in relation to trade practices.

   [17] 140 CLR 216, 229.

4. There are numerous differences between the respective marks, including the significantly different logos located prominently at the top of each mark, the presence of the words ‘a dale cleves music store’ in the Opponent’s Trade Mark and the differing words ‘centre’ and ‘warehouse’.  Notwithstanding the similarity of the idea conveyed by each mark, a finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘australian piano’ in respect of piano retail services and other similar services and closely related goods.  The Opponent does not have such a monopoly.  Any confusion that might occur, and both parties have given evidence that confusion has occurred, stems from the use of the descriptive term in the respective marks (and the close physical proximity of the North Willoughby stores) and not from the deceptive similarity of the parties’ trade marks within the meaning of the term. 

5. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

6. Section 60 is reproduced below:

   Section 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.

7. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[18]

   [18] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

8. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[19]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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 …[20]

   [19] [2000] FCA 1335, [81].

   [20] (1992) 33 FCR 302, 343.

9. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [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 its 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 attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s 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.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[21]

   [21] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

10. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[22] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[23]

    [22] (2000) 50 IPR 1.

    [23] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

11. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    DCM is Australia’s biggest piano retailer and since about September 2013, it has traded extensively in Australia under or by reference to the DCM Trade Mark and the words AUSTRALIAN PIANO WAREHOUSE. As at the Priority Date, DCM had two large-format stores in Melbourne and one in each of Sydney, Brisbane and Perth. By that time, it was a large and genuinely national retailer.

    By reason of the matters referred to in paragraph 4 above, the Opponent had, before the Priority Date, acquired a reputation amongst relevant consumers in Australia in relation to the goods and services provided by the opponent and those consumers have come to associate the DCM Trade Mark and the words AUSTRALIAN PIANO WAREHOUSE with the opponent.

    Because of the reputation referred to in paragraph 5, the use of the Opposed Trade Mark by the applicant in relation to the goods claimed in the Opposed Application would be likely to deceive or cause confusion.

    The prima facie likelihood of deception and confusion referred to in paragraph 6 is exaggerated in this case because the Opponent’s abovementioned Sydney store is located at 285 Penshurst Street, North Willoughby. After this store was established by the Opponent, the Applicant established a store that trades under or by reference to the Opposed Trade Mark at 301-307 Penshurst St, North Willoughby. This store is separated from the Opponent’s store by only two other shop fronts. This has caused actual confusion among Australian consumers.

12. I note that for the purposes of considering the s 60 ground I must only consider whether the use of the Trade Mark for the Applicant’s Goods would be likely to deceive or cause confusion. The fact that the parties have piano retail stores located physically proximate to each other would naturally be expected to cause some level of confusion, regardless of what trade marks the parties used, however such confusion would not necessarily be as a result of the use of the Trade Mark.

13. I am satisfied on the evidence before me that the Opponent’s Trade Mark and the APW Mark had, before the relevant date, acquired a reputation in Australia for piano retail services, sufficient for the requirements under s 60(a). I reach this conclusion noting the specialised nature of the market, the fact that the Opponent is Australia’s largest piano retailer and has significant sales (and incurs significant advertising expenditure) under its marks. I also note the length of time the Opponent has used the Opponent’s Trade Mark and the APW Mark and the geographic spread of stores displaying the Opponent’s Trade Mark and the APW Mark.

14. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[24]

    [24] (1937) 58 CLR 641, 658.

15. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    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.

    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.[25]

    [25] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

16. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[26]

    [26] [2012] ATMO 124, [40] (Hearing Officer Thompson).

1. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[27]

   [27] [2016] FCA 729, [142] (Yates J).

2. In the present case, to the extent that the Trade Mark and Opponent’s Trade Mark and the APW Mark are similar, it is largely due to the presence of the common elements ‘australian piano’ which is descriptive in respect of the Applicant’s Goods and the services for which the Opponent’s Trade Mark and the APW Mark have a reputation.  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[28] extracted at paragraph 35 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  In the present case I am not satisfied that any confusion that could arise (and indeed the significant confusion that has arisen) between the Trade Mark and the Opponent’s Trade Mark and the APW Mark is because of the reputation of the Opponent’s Trade Mark and the APW Mark, as opposed to the shared use of the descriptive term ‘australian piano’ in respect of pianos and piano retail services and the physical proximity of the North Willoughby stores.

   [28] (1978) 140 CLR 216, 229.

3. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

4. Section 42 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:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

5. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[29]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[30]

   [29] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [30] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

6. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The opponent relies only on sub-paragraph 42(b) of the Trade Marks Act 1995 (Cth). That is, it alleges that the use of the Opposed Trade Mark by the Applicant would be contrary to law. In particular, that use would be contrary to sections 18 and 29 of the Australian Consumer Law and it would also constitute the commission of passing off.

   In this regard, the opponent refers to and repeats the particulars set out in paragraphs 4-7 above [the s 60 particulars] and in relation to passing off, it adds that the use of the Opposed Trade Mark by the applicant in relation to services claimed in the Opposed Application has caused it damage.

7. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[31] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [31] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

8. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[32], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[33] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[34]

   [32] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [33] [2003] FCA 104, [107] (Beaumont J).

   [34] [1989] FCA 506, [40] (citations omitted).

9. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

10. For completeness I note that the Opponent submits that the circumstances of the present case are similar to the circumstances of the case in Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd.[35]  However while both cases involved competing business trading in close physical proximity, they can be easily distinguished by the fact that the shared elements of the respective trade marks in the present case, ‘australian piano’ are entirely descriptive and hence the principles set out in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[36] extracted at paragraph 35 above apply.

    [35] [2004] FCA 1394 (Weinberg J)

    [36] (1978) 140 CLR 216, 229.

    Section 62A

11. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

12. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

13. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[37]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[38]

    [37] [2004] EWCA Civ 1028; [2005] FSR 10.

    [38] [2012] FCA 81, [147].

14. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[39]

    [39] Ibid [165]-[166].

15. The Opponent has particularised this ground of opposition in the SGP as follows:

    By reason of the matters referred to in paragraph 7 above, the Opposed Application was filed in bad faith.

16. Paragraph 7 of the SGP is as follows: 

    The prima facie likelihood of deception and confusion referred to in paragraph 6 is exaggerated in this case because the Opponent’s abovementioned Sydney store is located at 285 Penshurst Street, North Willoughby. After this store was established by the Opponent, the Applicant established a store that trades under or by reference to the Opposed Trade Mark at 301-307 Penshurst St, North Willoughby. This store is separated from the Opponent’s store by only two other shop fronts. This has caused actual confusion among Australian consumers.

17. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[40]  I note that the scope of s 62A is limited to finding that a trade mark application is made in bad faith and the fact that the Applicant chose to establish a store near the Opponent’s North Willoughby store does not provide a sufficient basis to conclude that the Applicant’s decision to apply to register a trade containing the same descriptive terms as the Opponent’s Mark, was made in bad faith.  

    [40] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

18. The Applicant has made submissions suggesting other reasons to find bad faith that are not properly particularised, and as such I do not need to address them in this decision.  In any event based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the words ‘australian piano’ in respect of pianos, was a decision made to take advantage of the reputation of the Opponent, as opposed to the use of the word ‘australian piano’ to describe the pianos to be provided under the mark.  Furthermore, I am not prepared to find that the incidents of poor conduct between the parties documented in great length in the evidence are an appropriate basis to find that the Trade Mark was applied for in bad faith.  Such incidents are best litigated in another forum.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision and Costs

19. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1983105 may proceed to registration not less than 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 discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

20. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    5 April 2022