Dawson Media Pty Ltd v News Digital Media Pty Ltd - [2009] ATMO 37

TRADE MARKS ACT 1995

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

Re:Oppositions by Dawson Media Pty Ltd (formerly Dawson Publications Pty Ltd) to registration of trade mark applications 1079107 and 1079166 - TRUE LOCAL & Device – both in classes 9, 16, 35 and 41 and both in the name of News Digital Media Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Sue Chrysanthou of Counsel instructed by Hodgkinson McInnes Patents, Patent and Trade Mark Attorneys

Applicant: Christian Dimitriades and Justine Beaumont of Counsel instructed by Gary Lo of Allens Arthur Robinson, Patent & Trademark Attorneys

Decision:

2009 ATMO 37

S.52 opposition – sections 41, 42(b), 43, 58 and 60 pressed– trade marks prima facie capable of distinguishing – trade marks neither substantially identical nor deceptively similar to Opponent’s trade marks – no relevant connotation in the opposed trade marks – oppositions not established. Costs awarded against the Opponent.

Background

These are oppositions brought by Dawson Media Pty Ltd, ACN 001 281 787, formerly Dawson Publications Pty Ltd (“the Opponent”), pursuant to s.52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade marks subject of application numbers 1079107 and 1079166 in the name of News Digital Media Pty Limited (“the Applicant”).
Details of the opposed applications are as follows:

Application Number: 1079107

Priority Date: 5 October 2005

Goods & Services: Class 9: Electronic publications including publications provided via a global computer network
Class 16: Printed matter including magazines, paper, cardboard, goods made from paper or cardboard, printed publications, newspapers, periodicals, books, stationery; bags of paper or plastics; manuals; notebooks; pamphlets; photographs; placards of paper; writing pads and writing materials; instructional and teaching material in this class (except apparatus)
Class 35: Advertising and business services in any form of media in class 35; computer database compilation and systemisation of information
Class 41: Publishing services including publication of books, texts, magazines, newspapers, booklets, journals, periodicals and other printed matter; electronic publishing services; provision of news, entertainment and current affairs via a global computer network, electronic mail, newspaper and magazine subscriptions; arranging and conducting of conferences, seminars and colloquiums; provision of production services pertaining to radio and television programs; management, organisation and conducting of entertainment, educational, cultural, recreational and sporting events, exhibitions and competitions; production of shows; amusement services; presentation of live performances; provision of information in respect of the preceding services

Trade Mark:

Application Number: 1079166

Priority Date: 5 October 2005

Goods & Services: Identical to those covered by application 1079107

Trade Mark:

I refer hereafter to the goods and services covered by the opposed applications as “the Goods and Services”.
The Applicant is part of the “News” group of companies headed by News Corporation, a worldwide publisher of newspapers, magazines and books with interests extending to related websites, pay television and entertainment services generally. The News group’s businesses include a number of digital or online businesses directed at Australian consumers in fields including sport, news, entertainment, lifestyle and classified advertising. The Applicant oversees or manages the operation of several of these online businesses, including those operated via websites such as < < and, relevantly to these oppositions, <>
The Opponent is a publisher and distributor of local telephone or business directories (“directories”) in the greater Sydney metropolitan area. Its evidence is that it has published and distributed directories pertaining to the Sydney region “for a number of years” under the trade mark PINK PAGES, which trade mark I note has been registered in Australia in Classes 16, 35 and 38 by the Opponent since September 2000. The Opponent says it “adopted and first used” the mark appearing below (“the Dawson Mark”) in January 2002 and that this mark has also appeared on the front cover of its directories “since 2002”. It is the perceived similarity of each of the opposed marks to the Dawson Mark, or to the words “Truly local” featured in the Dawson Mark, which is at the heart of the two oppositions:

For the sake of completeness I mention that the Dawson Mark is registered as a trade mark in Australia for goods and services in Classes 9, 16, 35 and 41, although since this registration only dates from 10 March 2006 it is of no direct relevance to the present oppositions.
The Opponent filed its Notices of Opposition (“the Notices”) on 18 October 2006. I confirm I am proceeding on the basis that the Opponent need establish one or more of its grounds of opposition on the balance of probabilities.[1]
[1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599
The parties lodged Evidence in Support, Evidence in Answer and Evidence in Reply as set out below:

Evidence in Support

▪Statutory Declaration(s) by Warwick Dawson made 23 May 2007, with Exhibits WD-1 to WD-3[2]

Evidence in Answer

▪Statutory Declaration by Nicholas Leeder made 23 January 2008, with Exhibits NL-1 to NL-12[3]

[2] Two essentially identical declarations were made by Mr Dawson, tailored appropriately for each opposition. Since both declarations and their Exhibits appear otherwise identical, I refer to both declarations for convenience in this decision as simply “the first Dawson declaration”.

[3] I note Exhibits NL-4, NL-7, NL-8, NL-10 and NL-12 have been marked “confidential” and are considered by Mr Leeder to contain commercially sensitive information.

Evidence in Reply

▪Statutory Declaration by Warwick Dawson made 25 August 2008.

The matter was heard before me as delegate of the Registrar of Trade Marks on 2 March 2009 in Sydney. Sue Chrysanthou of Counsel, instructed by Hodgkinson McInnes Patents, Patent and Trade Mark Attorneys, appeared for the Opponent. Christian Dimitriadis and Justine Beaumont of Counsel instructed by Gary Lo of Allens Arthur Robinson, Patent & Trademark Attorneys, appeared for the Applicant.

Grounds of Opposition

The Notices, which are essentially identical, each list six specific grounds corresponding to various provisions of the Act, in addition to a general ground requesting exercise of the Registrar’s discretion in the Opponent’s favour. At the hearing itself, however, Ms Chrysanthou indicated the Opponent would only be pursuing those grounds based on sections 41, 42(b), 43, 58 and 60 of the Act. These grounds are discussed below, where I have found it convenient to first consider the section 41, 43 and 58 grounds before turning to the Opponent’s case under sections 60 and 42(b).

Discussion

Section 41

The ground based on section 41 is indicated in the Notices as follows:
The Opposed Trade Mark[s] [are] not capable of distinguishing the Applicant’s goods and/or services from the goods or services of other persons.
Section 41 of the Act[4] is reproduced below:
[4] As it stood on the 5 October 2005 filing date of the opposed applications, that is before the words “to any extent” were added to Section 41(6) by the Trade Marks Amendment Act 2006.

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

In her written submissions Ms Chrysanthou quoted from the judgment of Branson, J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (at 504-505) in relation to the operation of s.41. The first issue to be considered under s.41 indicated by her Honour is the extent to which the opposed trade marks are “inherently adapted to distinguish the designated goods or services from the goods or services of other persons” as specified in s.41(3). If it is considered the trade marks are sufficiently inherently adapted then s.41 is satisfied and the trade marks should be considered prima facie registrable. It is only where the trade marks are considered to contain insufficient inherent adaptation to assess their capacity to distinguish, or to contain no inherent adaptation at all, that the further enquiries under s.41(5) or s.41(6) need be undertaken. In this regard Ms Chrysanthou did not claim the opposed marks contained no inherent adaptation to distinguish the Goods and Services but did argue I might find that they contained insufficient inherent adaptation as to be prima facie registrable on that basis alone. In this case, she submitted, the s.41 ground of opposition might be established since the Applicant could not point to use of the opposed marks in Australia prior to the 5 October 2005 priority date of the opposed applications.
The basis for Ms Chrysanthou’s submission that I might find the opposed marks contained insufficient inherent adaptation to distinguish the Goods and Services was that “although devices, [they] are both primarily made up of the words ‘true local’ and these words “are intended to indicate a characteristic about the goods and services to which the brand is applied…”. She continued, “The words therefore do not distinguish the applicant’s goods or services –they just describe them.” Since the words ‘true local’ were likely to be needed by other traders for legitimate descriptive purposes, she submitted, the opposed marks themselves, when considered as wholes, must also lack the requisite inherent adaptation contemplated by s.41(3).
I am, however, unable to accept this argument. Even if the words ‘true local’ are considered entirely descriptive of the Goods and Services the Applicant is not on the face of it seeking, nor would registration of the opposed marks grant it, a monopoly in the words ‘true local’ alone. The opposed marks as a whole obviously contain a significant number of further distinguishing elements apart from these words. The well known case Diamond T Motor Car Co’s Application (1921) 38 RPC 373 is longstanding authority that a mark might be made up of discrete elements, none of which might individually be capable of distinguishing relevant goods or services, but which mark as a whole might yet be distinctive in relation to those goods or services.
It is not of course necessary here for me to form a view as to whether the opposed marks as wholes are currently distinctive of the Goods and Services in order to assess their capacity to distinguish in terms of s.41(3). In my opinion each of the opposed marks, when considered as a whole, does at least contain sufficient inherent adaptation to distinguish the Goods and Services from those of others as to prima facie qualify for registration on that basis alone. The opposition ground based on s.41 of the Act is therefore not established.

Section 43

The ground based on section 43 indicated in the Notices is that “The use of the Opposed Trade Mark[s] would be likely to deceive or cause confusion”. Section 43 itself is reproduced below:
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.
It was not in dispute that to establish this ground there must be some connotation inherent in the opposed marks such that their use was likely to deceive or cause confusion. In this regard Ms Chrysanthou cited the following words of Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [53], (as, I might add, did Mr Dimitriadis also in his submissions in response):
‘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 s43 is a similar purpose to that lying behind ss52, 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 some similarity with other marks…
Gyles, J’s words notwithstanding, Ms Chrysanthou argued that the offending connotation in the opposed marks was conveyed by the words ‘true local’ contained within each mark. To quote from her written submissions:
Because of that connotation, being that TRUE LOCAL is part of or related to the TRULY LOCAL brand[5], the use of the [opposed trade marks] in relation to directory services and related goods would be likely to deceive or cause confusion.
On the date of the application[s], 5 October 2005[,] Dawson’s use of the brand TRULY LOCAL and the Dawson Trade Mark had been ongoing for a number of years and, it can be inferred from the evidence, was widely known.
Therefore the use of the [opposed trade marks] would be likely to deceive or cause confusion in the market place because it would cause people to wonder whether the applicant’s goods and services (to the extent that they apply the [opposed trade marks]) are associated with Dawson’s goods and services that apply the Dawson Trade Mark or the TRULY LOCAL brand.
[5]Ms Chrysanthou elsewhere submitted that the words ‘Truly local’ appearing in the Dawson Mark constitute a separate trade mark in their own right (which she variously refers to as “the TRULY LOCAL brand” or “the brand TRULY LOCAL”) and to which I refer in this decision as “the words ‘Truly local’”.
Even were the evidence before me to indicate that either the “TRULY LOCAL brand” (that is, the words ‘Truly local’ alone), or the Dawson Mark as a whole, enjoyed this kind of notoriety in October 2005 I would reject this submission. Although Gyles, J did acknowledge “An implication of sponsorship or association might qualify as such a secondary meaning or connotation”, that is really beside the point here. It remains the case that whatever connotation the Opponent claims is carried by the words ‘true local’ in the two opposed trade marks, the words apparently only have this connotation because of their alleged resemblance to what is claimed to be another trade mark. In the above quote from Pfizer Products Inc v Karam Gyles, J expressly states that deception caused as a result of similarity to another trade mark is outside the scope of s.43[6]. The opposition ground based on s.43 of the Act is therefore not established.
[6] See also Winton Shire Council v Lomas (2002) 56 IPR 72, per Spender, J at [19].

Section 58

The ground based on section 58 of the Act is indicated in the Notices as follows:
The Applicant is not the owner of the Opposed Trade Mark[s].
Section 58 itself is reproduced below:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To establish its section 58 ground the Opponent would need to show a party other than the Applicant first used the opposed marks, or marks substantially identical to the opposed marks, in Australia, for goods or services adjudged to be “the same kind of thing” as the Goods and Services. The use must have taken place before the 5 October 2005 filing date of the opposed applications, or before the Applicant’s first use of the trade marks for relevant goods or services, whichever is the earlier[7].
[7] Re Hicks’ Trade Mark (1897) 22 VLR 636; Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375
The Opponent points to its own claimed use of the Dawson Mark and of the words ‘Truly local’ as trade marks for its directories prior to 5 October 2005 as establishing its claim to be the owner of the opposed marks. The claim to ownership is thus dependent on, inter alia, my finding that one or both of the opposed marks is/are the same as, or substantially identical to, either the Dawson Mark or the words ‘Truly local’ alone.

The generally accepted test for assessing substantial identity is as set out by Windeyer, J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 1B IPR 523, where his Honour said at 528:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
When such a side by side comparison is made it is quite obvious neither of the opposed trade marks is the same as either of the marks relied upon by the Opponent. It is moreover obvious in my view that although each of the opposed trade marks features the words ‘true local’ as a significant element, each also contains a number of elements in addition to these words which readily allow the opposed trade marks to be distinguished both visually and aurally from the marks relied upon by the Opponent. Additionally, of course, the words “true local” contained in the opposed trade marks are not the same as the words “Truly local” in any event. Taking these matters into account, I conclude neither opposed trade mark is substantially identical to the Dawson Mark or to the words ‘Truly local’ alone.
The opposition ground based on s.58 of the Act is therefore not established.

Section 60

The ground based on section 60 is indicated in the Notices as follows:
The [opposed trade marks are] substantially identical with or deceptively similar to a trade mark that, before the priority date of the registration of [the opposed trade marks] in respect of its particular goods or services, had acquired a reputation in Australia, and because of the reputation of that other trade mark, the use of [the opposed trade marks] would be likely to deceive or cause confusion.
Section 60 of the Act (as it stood at the date the opposed trade mark applications were filed[8]) is reproduced below:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
[8] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80
Here the comparison is between an existing trade mark or trade marks which “had acquired a reputation in Australia” and the opposed marks. The Opponent submits the opposed trade marks are each substantially identical to, or deceptively similar to, the Dawson Mark and/or to the words ‘Truly local’ alone and that these marks had acquired the requisite reputation as at the 5 October 2005 date the opposed applications were filed. As regards the threshold question in paragraph (a) of Section 60, I have already found that neither of the opposed trade marks is substantially identical to either of the marks relied upon by the Opponent. I thus turn now to the issue of deceptive similarity.
Section 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. Section 60(b), for its part, indicates that it must be “because of the reputation of that other trade mark [that] use of the first-mentioned trade mark would be likely to deceive or cause confusion”. It is accordingly appropriate to first consider the nature and extent of the “reputation” of the Dawson Mark and of the words ‘Truly local’ as 5 October 2005.
Evidence concerning the reputation of the Dawson Mark and of the words ‘Truly local’ is contained in the first Dawson declaration.
Mr Dawson is Managing Director of the Opponent, a position he has held since 1968. He states that the Dawson Mark “was adopted and first used by the Opponent in January 2002 in Australia”. He says that such use was “in respect of printed publications, specifically directories” and that “in addition it is used on the internet to promote and advertise third party services and in connection with the rental of advertising space to third parties”. There is, however, no further specific mention of any internet use in Mr Dawson’s evidence. No internet site is in fact identified and there are no examples of either the Dawson Mark or the words ‘Truly local’ alone in use on any website. I am thus unable to say whether either of the marks relied upon by the Opponent in fact enjoyed any internet use relevant to the Opponent’s s.60 ground prior to 5 October 2005.
Mr Dawson’s declaration does exhibit “copies of a random selection of the front covers of the directories dated from 2002 onwards”, all of which prominently feature the Opponent’s registered PINK PAGES trade mark in their title and prominently show the Dawson Mark in their bottom right hand corner. Each of the eight covers exhibited in addition bears, inter alia, the date of issue and the name of the particular region of greater Sydney to which the directory pertains, namely:
May 2002 Macarthur
August 2003 Eastern Suburbs
November 2003 Bankstown
December 2003 Liverpool
January 2004 Blacktown
March 2004 Drummoyne/Leichhardt/Strathfield
April 2004 North Shore
June 2007 St George
I note that the cover from June 2007, which is of course some time after the relevant date of 5 October 2005, is the only one of the exhibited covers on which the ™ symbol has been used, placed after the words ‘Truly local’ appearing in the Dawson Mark, and presumably intended to indicate the Opponent was at that time claiming either the words ‘Truly local’ or the Dawson Mark as a whole as a trade mark. Mr Dimitriadis submitted that none of the other covers exhibited suggested the words ‘Truly local’ were being used in any other than a descriptive manner. He further submitted that the words were not used independently of the Dawson Mark but were simply one element contained within it. Thus, he said, the exhibited covers did not demonstrate use of the words ‘Truly local’ alone as a trade mark at all.
In this regard he referred to the recent registry decision of Ruralco Holdings Limited v Robert and Alison Kerr [2007] ATMO 61 (28 September 2007) where Hearing Officer Williams found a trade mark featuring the words ‘THE LOCAL BLOKE Lawn & Garden Care’ combined with a simple device was not deceptively similar to marks that had been in use for more than 30 years featuring the words ‘Your Local Bloke’ in combination with the letters CRT and a simple device. It must be said that the evidence of the opponent’s prior marks’ longstanding use before the hearing officer was apparently significantly more substantial than that before me. Nevertheless, after noting the descriptive nature of the words ‘local bloke’ common to the marks under consideration, the hearing officer reasoned that:
Perhaps, however, a finding adverse to the opponent can safely be rested on a degree of equivocation; to the extent that the opponent has used the words in question as a trade mark, they are inherently words of such a character that their use by others is not likely to cause deception or confusion.
I agree with Mr Dimitriadis that the present case is very similar. Here too I believe the words ‘Truly local’ are “inherently words of such a character that their use by others is not likely to cause deception or confusion”. This is particularly so in the context of the use of the words on the covers of the Opponent’s directories, whose very rationale is as a guide to businesses in a discrete local area. Moreover the words ‘Truly local’ only ever appear as an element within the Dawson Mark and the Dawson Mark itself is at best a “secondary” trade mark in relation to the directories. In this regard it is apparent the Dawson Mark is dominated on the exhibited covers by the PINK PAGES trade mark rendered in significantly larger point size than the words ‘Truly local’. Given their inherently non-distinctive character, the Opponent would need to show much more significant use of the words ‘Truly local’ than it has in the evidence before me to establish it had a relevant reputation in the words alone as at 5 October 2005.
I mention that with one exception Mr Dawson’s evidence is on the face of it exclusively concerned with the Dawson Mark[9] rather than the words ‘Truly local’ alone in any event. The one exception is Mr Dawson’s statement that:
There has been significant coverage for over two years when the directories and the services have been promoted with the words TRULY LOCAL. Such use of the trade mark has been as trade mark usage.
[9] A copy of which Mr Dawson exhibits in his first declaration as Exhibit WD-1 and which he refers to in the declaration as the “trade mark TRULY LOCAL”.
I am, however, unable to give this statement, made in May 2007, any significant weight in assessing reputation as at 5 October 2005 for the purposes of s.60. It is simply too vague. Although Mr Dawson elsewhere in his first declaration states that “The directories and services provided by reference to [the] trade mark TRULY LOCAL[10] have been promoted on 96.1 FM commercials, 2DAY FM commercials, Channel 7 television commercials with such advertising taking place in or around 2004/2005”, this is insufficient information for me to be satisfied either the Dawson Mark as a whole or the words ‘Truly local’ alone enjoyed the kind of reputation contemplated by s.60 as at the relevant date.
[10] That is, the mark referred to in this decision as the Dawson Mark.
I highlight the fact that there are no examples in evidence of any of the Opponent’s advertising, be it advertising featuring the words ‘Truly local’ alone, or featuring the Dawson Mark, and whether in the print media, the electronic media or otherwise. It is thus impossible for me to assess the manner and extent to which the marks relied upon by the Opponent may have featured. Neither am I able to assess Mr Dawson’s claim that “Such use has been as trade mark usage”.
Mr Dawson does state that “The approximate amount spent by the Opponent in promoting its goods by reference to the [Dawson Mark] from March 2002 to date [that is up to 23 May 2007] is somewhere between $150,000 and $200,000”. It is however not stated how much may have been spent from March 2002 to 5 October 2005, nor is any other information given of how this money may have been spent nor of the extent to which it may have featured the Dawson Mark. I am not in a position to speculate on these issues.
Mr Dawson also provides a rudimentary estimate of the circulation figures for the Opponent’s directories and some information as to how they are distributed. In particular he states that:

“The [Dawson Mark] has been applied to over 4 million printed directories which have been delivered to households in Australia.”;
“Each directory lists between 5,000 to 10,000 businesses under various classifications and approximately 1,000 of the businesses purchase some form of advertising. The businesses in the directory are listed by classification in an alphabetical format and each edition is hand delivered to approximately 60,000 homes across 18 regions.”; and
“I estimate that there are approximately 4 million directories bearing the [Dawson Mark] within the Australian marketplace since 2002.”

I note that whereas Mr Dawson refers to “Australia” and “the Australian marketplace” in the above quotes there is no evidence before me that the Dawson Mark has ever been used for directories outside the greater Sydney area. In this regard it is apparent from the three pages forming Exhibit WD-3 to the first Dawson declaration[11] that the “18 regions” to which Mr Dawson refers in the above quote are all located within greater Sydney. I mention in passing that there is no indication in the evidence as to when or how the materials forming Exhibit WD-3 may have been used or distributed and I am thus unable to accord them any significant weight.
[11] Mr Dawson describes this 3 page Exhibit as “samples” of “stationery, for example, letterhead, fax sheets, with compliments slips and proposal leaflets”.
Mr Dimitriadis pointed out that, as with the advertising figures provided by Mr Dawson and discussed earlier, the circulation figures Mr Dawson provides make it impossible to say how many of the Opponent’s directories were distributed prior to 5 October 2005. It is nevertheless reasonable to infer from Mr Dawson’s evidence, I believe, that their delivery to individual households in Sydney was unsolicited, that the directories were free to the recipients, and that the directories were not therefore asked for or ordered by individual householders by reference to any name or trade mark at all. Whatever the number of directories distributed by the relevant date, however, I am not prepared to infer that their mere delivery would have been sufficient for the Dawson Mark, or for the words ‘Truly local’ contained within it, to garner the kind of reputation with which s.60 is concerned.
Mr Dimitriadis raised the further point that although the Leeder declaration details the wide use the opposed marks have enjoyed in Australia since 30 January 2006, there is no evidence from the Opponent of any instances of actual confusion. Mr Dimitriadis conceded such evidence was not in principle essential to the Opponent’s case, but argued that its absence was telling given the deficiencies in the evidence the Opponent was otherwise relying upon.
When all the foregoing matters are weighed up and when I consider the parties’ marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers, I am not satisfied deception or confusion amongst a significant number of people is likely. I do not on balance believe there is a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ products and services dealt with under their respective trade marks come from the same source. I thus find that the Opponent has not established its s.60 ground.

Section 42(b)

The ground based on section 42(b) is indicated in the Notices as “The use of the [opposed trade marks] would be contrary to the law”, echoing the words of section 42(b) which simply state “An application for the registration of a trade mark must be rejected if its use would be contrary to law.”
At the hearing Ms Chrysanthou submitted use of the opposed trade marks would be contrary to law because it would constitute common law passing off and would offend against s.52 and certain subsections of s.53 of the Trade Practices Act 1974 (“the TPA”). These sections deal respectively with misleading or deceptive conduct and with the making of false or misleading representations and, insofar as relevant, are reproduced below:
S.52 Misleading or deceptive conduct
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) …

S.53 False or misleading representations
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:
(a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use;
(aa) falsely represent that services are a particular standard, quality, value or grade;
(b)      …
(bb)     …
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have;
(e)      …
(ea)     …
(eb) make a false or misleading representation concerning the place of origin of goods;
(f)       …
(g)       …

Ms Chrysanthou’s submission was simply that the Opponent has established sufficient reputation in both the Dawson Mark and the words ‘Truly local’ alone to support a finding that use of the opposed marks would offend against the relevant sections of the TPA and would constitute a “misrepresentation” sufficient to found the tort of passing off. I cannot agree with this submission. I have already found the opposed trade marks are not deceptively similar to the Opponent’s claimed trade marks in terms of section 60 of the (Trade Marks) Act. There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct, (or by extension conduct amounting to the making of false representations), than is the case with trade marks likely to deceive or cause confusion under section 60. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684, by way of example, Gibbs, CJ noted (at 688):
In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
As I have found that the use of the opposed trade marks is not, as a minimum, likely to “confuse”, it follows that use is not, on the stricter test posited by the TPA, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of the relevant subsections of s.53 of the TPA.
I am similarly not satisfied use of the opposed trade marks would constitute passing off given the paucity of the evidence concerning the reputation of the Dawson Mark and/or the words ‘Truly local’, the apparently descriptive nature of those words, the apparently limited distribution of the Opponent’s goods, the fact that they appear to be distributed on an unsolicited basis and the fact that no instances of confusion have apparently occurred. Nor does the evidence satisfy me that the Opponent has suffered, or is likely to suffer, any damage as a result of use of the opposed trade marks[12].
[12] Cf Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (at 196) and Ward Group Pty Ltd v Brodie & StonePlc (2005) 64 IPR 1 at [35].
I thus find that the Opponent has not established its ground under section 42(b).

Decision

Section 55 of the Act provides:
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.
Note: For limitations see section 6.
I have found that none of the opposition grounds pressed at the hearing has been established. I have accordingly decided the opposed trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice (or notices) of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued.

Costs

Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the Opponent in accord with Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Michael Kirov

Hearing Officer

Trade Marks Hearings

2 June 2009