David Baker & Lucy Nixon v Ricardo Picciau

[2022] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by David Baker and Lucy Nixon to registration of trade mark application number 2010622 (classes 37 & 45) – ICU Security Services - in the name of Ricardo Picciau

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Collison & Co

Decision:

2022 ATMO 63

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 58A and 60 pursued – no grounds established – trade mark to proceed to registration

Background

1.     This is a decision on the opposition by David Baker and Lucy Nixon (‘Opponent’) to the registration of trade mark application number 2010622 (‘Application’) in the name of Ricardo Picciau (‘Applicant’) filed on 21 May 2019 (‘Relevant Date’), for the trade mark and services below: 

Trade Mark:      ICU Security Services      (‘Trade Mark’)

Services: Class 37: Installation of security systems; maintenance and servicing of security systems

Class 45: Advisory services relating to security systems; advisory services relating to security systems for the security of premises; consultancy services relating to security systems; provision of information relating to security systems

(‘Applicant’s Services’)

Endorsement:   Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

2.     As required by the Trade Marks Act 1995 (Cth)[1], the Trade Mark was examined and during examination, objections were raised under s 44 based on Australian trade mark registrations  1949108 ICU Security Cameras in classes 9, 37 and 45 and 1949169   in classes 9 and 37 both in the name of Comsec Surveillance Pty Limited.  Following the filing of evidence by the Applicant and an amendment to the services claimed, the Trade Mark was accepted for possible registration and advertised for opposition purposes on 16 February 2021. The Opponent filed both a Notice of Intention to Oppose registration of the Trade Mark and a Statement of Grounds and Particulars (‘SGP’) on 12 March 2021.  The Applicant filed Notice of its Intention to Defend the Trade Mark from opposition on 3 June 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Regulations. The Opponent did not file any evidence. The Applicant filed evidence in answer on 29 October 2021 consisting of a declaration of Ricardo Picciau, made on 5 February 2021, with Exhibits RP1- RP6 (‘EIA’).

4.     After the period for filing evidence had ended, the Applicant requested that the matter be decided without a hearing.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings.

Grounds and Onus

5.     The SGP nominated grounds of opposition under ss 44, 58, 58A and 60. 

6.     The Opponent bears the onus of establishing one or more of the grounds of opposition[2] on the balance of probabilities[3].   The rights of the parties are assessed as at the Relevant Date, being the filing and priority date of 21 May 2019.

Discussion

Section 44

1. The relevant provisions are reproduced below:

   44  Identical etc. trade marks

   …

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

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

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

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

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

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

   Note 3:       For priority date see section 12.

   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.

1. To successfully oppose the Application pursuant to s 44, the Opponent must establish that 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 goods and/or services which are similar or closely related to the Applicant’s Services (‘the third requirement’).

   9.     In support of the s 44 ground, the Opponent relies on Australian trade mark registrations  1949108 ICU Security Cameras in classes 9, 37 and 45 (‘Prior Mark 1) and 1949169   in classes 9 and 37 (‘Prior Mark 2’) both in the name of Comsec Surveillance Pty Limited (‘Comsec’)[4].  These registrations are obviously in the name of a person other than the Applicant and meet the first requirement in that they have an earlier priority date.   

   10.   My next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Prior Marks.

   11.   Section 10 provides:

   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.

   12.   The assessment of deceptive similarity was considered by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd who observed:

   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 [mark].[5]

   13.   The essential element of each of the three marks in question is the element ICU.  The Trade Mark and Prior Mark 1 differ only in the third word which in each case is descriptive.  The Trade Mark and Prior Mark 1 are at least deceptively similar, if not substantially identical.  In the case of Prior Mark 2, again the only difference in the word elements is the non-distinctive terms Services/Cameras.  The marks are aurally similar.  Although Prior Mark 2 includes a device element, I consider that there is a significant risk that a consumer relying on imperfect recollection who was aware of the Prior Mark 2 would be caused to wonder whether services provided under the Trade Mark were offered by Comsec or otherwise connected to them.  Accordingly, the second requirement is met.

   14.   The Applicant’s Services are the same or obviously similar to the services covered by the Prior Marks.  The third requirement is satisfied.

   15.    Given that I have found that a prima facie ground of opposition exists under s 44 I must now consider whether the Applicant is entitled to registration under s 44(3) and/or s 44(4).

   Prior Continuous Use

   16.   Turning first to s 44(4), the Applicant must establish that it has used the Trade Mark in relation to the Applicant’s Services since before the priority date of the Prior Marks, being 24 August 2018, and continuously up until the Relevant Date. 

   17.   In the EIA, the Applicant attests to continuous use of the Trade Mark since 2004 in relation to the Applicant’s Services.  Details of gross annual turnover for the Applicant’s Services offered under the Trade Mark from Financial Years 2016-2019 has been provided together with samples of invoices ranging from 2004 to 30 June 2018.

   18.   Based on the EIA, I am satisfied that the Applicant has established prior use of the Trade Mark for the Applicant’s Services, which are the same or similar to the services covered by the Prior Marks, since before the priority date of the Prior Marks and that use has been continuous.  Accordingly, the requirements of s 44(4) have been met and the s 44 ground of opposition fails.

Section 58A

19.   This section provides:

58A  Opponent’s earlier use of similar trade mark

(1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)  subsection 44(4); or

(b)  a similar provision of the regulations made for the purposes of Part 17A.

Note:    Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)  The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)  first used the similar trade mark in respect of:

(i)  similar goods or closely related services; or

(ii)  similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:          For predecessor in title see section 6.

20.   This ground of opposition is intended to enable the owner of a trade mark that is substantially identical or deceptively similar to another mark (which has been accepted for registration on the basis of s 44(4)) to oppose its registration on the basis of first use.[6]

21.   In the SGP, the Opponent relies on use of the Prior Marks since 24 August 2018.  However, the onus is on the Opponent to substantiate this claim in supporting documentary evidence. However, no evidence was filed.  In any event, the alleged first use of the Prior Marks is well after use of the Trade Mark by the Applicant.  Accordingly, this ground of opposition is unsuccessful.

Section 58

22. Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

23.   Again, the Opponent relies on use of the Prior Marks since 2018 which is not supported by documentary evidence.  Further, both the use and the priority dates of the Prior Marks is after the Applicant’s first use of the Trade Mark.  Hence this ground of opposition fails.

Section 60

24.   To succeed under this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

25.   Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[7] 

26.   Once again, the Opponent relies on the Prior Marks and use of those marks since 2018. No documentary evidence has been provided to support the Opponent’s assertion that the Prior Marks have been used since 2018 or to demonstrate the existence of a reputation in the Prior Marks at the Relevant Date. 

27.   Consequently, the s 60 ground of opposition has not been established.

Decision

28. Section 55 of the Act relevantly provides:

55  Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:          For limitations see section 6.

29.   The Opponent has not established a ground of opposition.  Accordingly, trade mark application number 2010622 may proceed to registration one month from the date of this decision. 

30.   If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

28 April 2022

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

[4] Hereinafter, Prior Mark 1 and Prior Mark 2 are referred to as the ‘Prior Marks’.

[5] [1963] HCA 66, [13].

[6] Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) at [4.9.2].

[7] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77].