Dinners Club International Ltd v Unterberger Intellectual Property Pty Ltd

[2007] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Diners Club International Ltd to registration of trade mark application 1002886(16) - GLOBAL VISION - filed in the name of Unterberger Intellectual Property Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent
Trevor Stevens of Davies Collison Cave, Patent & Trade Mark Attorneys.
Applicant
Was not represented and made no appearance

Decision:

2007 ATMO 25
1. Sec. 52 opposition. Secs. 44 & 60. Trade marks identical. Goods not closely related to Opponent’s services. Reputation not found.

2.  Application may proceed to registration.

Background

1. An Australian company, Unterberger Intellectual Property Pty Ltd, ( “the applicant”) filed a trade mark application, details of which are : 

   Appn No:  1002886
   Filing / Priority Date:                20 May 2004
   Goods:   Class: 16

   Greeting cards, postcards, postage sleeves and

   envelopes, greeting cards for housing data storage

   media, postcards for housing data storage media,

   postage sleeves for housing data storage media,

   and postage envelopes for housing data storage

   media, containers and packaging for data storage

   media, postable and mailable containers and

   packaging for housing data storage media

   
   
   

   Trade Mark:  GLOBAL VISION

   (“the application”)

2. The application was accepted for registration and advertised as such in the Australian Official Journal of Trade Marks on 23 December 2004.

3. On 22 March 2005, Diners Club International Limited (“the Opponent”) through its attorney filed a Notice of Opposition to registration of the trade mark (“the Notice”).  The opponent sought several extensions of time in which to file evidence in support of the opposition.  On 21 April 2006 the opponent filed part of its evidence in support and on 31 July 2006 the remainder of the evidence in support was filed.

4. The Applicant did not file evidence in answer and the opponent requested to be heard.  The matter came before me as a delegate of the Registrar on 7 March 2007 in Melbourne. The applicant did not appear at the hearing and no written submissions were made on its behalf.  The opponent was represented by Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys.

   The Evidence in Support

   The evidence in support of the opposition consisted of 3 sworn declarations :

Declarant	Date of Declaration
Jenny WATSON	15 March 2006
Fiona Neilson WARREN	27 March 2006
Theodore T. LEMBERIS	21 July 2006

The Notice

1. The Notice lists 10 grounds of opposition under the Trade Marks Act 1995 (“the Act”) and seeks an award of costs in favour of the opponent. At the hearing, Mr Stevens only pursued the grounds of opposition under sections 44 and 60 of the Act and this decision therefore only considers those grounds of opposition. The remaining grounds I hold to have been abandoned.

   Submissions and Reasoning

2. The fact that the applicant did not file evidence in support of the application or make oral or written representations is not of itself dispositive of the matter. Section 55(1) of the Act states that:

   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.

1. From the wording of this section, it is clear that the onus lies with the opponent to establish its opposition and I turn to Mr Stevens’ submissions.

   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)the applicant’s trade mark 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).

   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.

   Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

2. The opponent is the registered owner of the trade mark GLOBAL VISION under registration 596505. The applicant applied on 20 May 2004 to register the trade mark GLOBAL VISION under application 1002886. Section 44(1)(a)(i) applies. The following issues require consideration:

   -     whether the goods of the application are closely related to the services of  registration 596505,

   -     whether the applicant's trade mark is substantially identical or deceptively similar to the opponent's registered trade mark,  and

   -     the likelihood of deception or confusion (see Section 10).

3. The trade marks are identical and so there is no need to find a likelihood of deception or confusion.  The remaining question is whether the claimed goods are closely related to the services of the opponent’s registration.

4. The class 16 goods of the application are :-

   Greeting cards, postcards, postage sleeves and  envelopes, greeting cards for housing data storage media, postcards for housing data storage media, postage sleeves for housing data storage media, and postage envelopes for housing data storage media, containers and packaging for data storage media, postable and mailable containers and packaging for housing data storage media

5. The services covered by the opponent's registration are “financial services including travel expense account information services”. 

6. Mr Stevens claims that the opponent's service is a data reporting and analysis system which includes a data storage system for capturing travel expenses.  He submits that the application claims a range of goods specifically related to data storage media – in particular, containers/packaging for data storage media.  Mr Stevens argues that the reports, graphs, lists, and analyses produced by the opponent as part of its service are likely to be retained in various data storage media such as envelopes, packaging and other containers. 

7. Mr Stevens points to the tests for closely related goods and services laid out in the case of ReAussat Pty Ltd [1993] ATMO 55 and submits that the applicant's goods are directly related to the opponent's service under the trade mark GLOBAL VISION.

8. I questioned Mr Stevens as to whether the opposition was directed against the entire list of goods claimed in the application.  I do not believe that Mr Stevens directly answered that question however he did invite me to consider that the phrase, for housing data storage media, which appears several times in the specification of goods, in fact qualified all of the goods listed there and so his arguments applied with equal force to all the goods.

9. I am not persuaded by that interpretation of the specification.  Whilst the applicant may have made its intentions clearer by the use of semi-colons, rather than commas, the fact that the goods - greeting cards, postcards, postage sleeves and  envelopes – are listed both with and without the qualifying phrase clearly shows the applicant’s intention to itemise and describe the goods independently of each other.

10. There is no definition of ‘closely related’ goods and services in the Act. In the Aussat case, Hearing Officer Thompson suggested some tests which could be applied to goods and services:

    “In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

    ·are the goods and services of matching technical complexity?

    ·is the technical training of the people who make the goods or provide the services the same?

    ·do the people who make the goods or provide the services belong to the same unions or associations?

    ·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in "vehicle hire services" and the goods "cars", there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

    ·do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

    ·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as "transportation services" and "vehicles"; or, "vehicle hire services" and "vehicles"; or "restaurant and take-away food services" and "food").

    ·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements? (Such as "curtains and furnishings" and "the sewing of furnishings"). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

    ·are the goods and services commonly offered by the one company or organisation? (For example, "retail sales" and the equivalent "goods"; or, "telephone communication services" and "telephones").

    ·. are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, "advertising services" and "directories", or "publications"; or, "travel agency services" and "publications"; or "telephony services" and "directories").

    This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.”

11. Mr Theodore Lemberis is the Senior Vice President and Assistant General Counsel of the opponent.  He declares that as part of the service provided under the trade mark, the opponent “supplies a wide range of printed materials including forms, workbooks, manuals as well as other printed publications as well as items of stationery” (para. 14).  Appendix B to his declaration is a “Diners Club Global Vision” training manual.  It provides a programme of tuition for what is clearly a financial data management system aimed at corporate customers of the opponent.  Appendix C is an extract from the opponent’s website ( which describes the “Diners Club Global Vision” product as “a sophisticated internet-based tool for data reporting and analysis.  Designed for capturing, viewing and reporting travel and entertainment data…”.

12. To the extent that what is being described by the opponent is a service rather than a class 9 good, I have the greatest of difficulty in applying any of the tests laid out in the Aussat case in such a way as to find the opponent’s services to be closely related to any of the goods described simply as greeting cards, postcards, postage sleeves or envelopes.  I find they are not closely related.  In relation to those remaining goods which are qualified by either the additional phrase “ for housing data storage media” or “ for data storage media”, I am not convinced that these goods are closely connected with the opponent’s services, even as they are laid out by Mr Lemberis.  I note from Appendix A to his declaration the list of places around the world where the opponent has registered the trade mark or variations on it.  I note that those registrations are as often in class 9 as they are in class 36.  There is no class 9 registration in Australia.  Were there, and were it included in these proceedings, I might be faced with a different question as to whether the applicant’s class 16 goods which had data storage capacity were similar to certain class 9 goods.  That is not the case before me.  Simply, I am not persuaded that any of those goods are closely related to financial services including travel expense account information services.  To my mind their relationship does not satisfy any of the tests in the Aussat case.  The highest proposition that can be put is that those goods might be used in the opponent’s business under the trade mark.  I am reminded of the common practice before the introduction of service class registrations for service providers to seek registration of their marks in various goods classes, frequently class 16 with a claim to “paper and printed materials”.  The claim was based on a deceit in many cases since the applicant was neither a manufacturer of paper nor a publisher.  There was, in most cases, no question of those class 16 goods, to use Mr Thompson’s words, being “a necessary adjunct to the particular service” any more than the applicant’s goods here are related to the opponent’s services, other than as part of the paraphernalia of doing business.

13. I decide that the opponent’s section 44 ground must therefore fail.

    Section 60

14. Section 60, in its original form and against which this opposition must be tested, stated:

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

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    
    
    

    Note 1:  For deceptively similar see section 10.
    Note 2:  For priority date see section 12.

15. The opponent must here prove:

    - the existence of a substantially identical or deceptively similar mark,

    - which has acquired a reputation in Australia before the priority date,

    - amongst a significant section of the public,

    - such that use of the opposed mark would be likely to deceive or cause   confusion

16. The trade marks are identical as noted.

17. The relevant priority date is 20 May 2004.  The question is whether GLOBAL VISION enjoyed a reputation in Australia before that date.  Mr Lemberis’s declaration exhibits a list of foreign registrations for the mark and for another mark, DINERS CLUB GLOBAL VISION.  Many of those registrations predate the application but, of themselves, they do not show a reputation in Australia.  Mr Lemberis states that his company enjoys a worldwide reputation in the mark “demonstrated by the volume and extent of trading activities under the mark in many countries around the world” but the evidence does not go to make that demonstration in any way.  He speaks of 70 corporate clients in Australia with revenue over $100,000 per annum.  In his words, “my Company has not allocated a specific advertising budget to GLOBAL VISION.  Diners Club Corporate Sales partners sell the product in direct sales presentations to clients and prospective clients”.  The exhibits to his declaration uniformly show use of the mark in the form DINERS CLUB GLOBAL VISION.

18. The Lemberis declaration does very little to convince me of a reputation in the mark in Australia before May 2004.  There is no time frame to the evidence as a whole, the claims of worldwide reputation are bald assertions unsupported by evidence other than a list of trade mark registrations, many not in class 36.  A business with the opponent’s annual turnover is relatively small, and the suggestion of the evidence is that the GLOBAL VISION product is not promoted widely and is presented to existing Diners Club corporate members in Australia as an added offering of the opponent.

19. In my opinion neither the Watson nor Warren declaration does anything to advance the opponent’s cause in regard to proof of reputation in the mark in Australia prior to May 2004.

20. Accordingly, I find that the opponent has failed to prove a critical element of section 60 and therefore its ground of opposition based on this section also fails.

    Decision

21. The opponent has not succeeded with either ground of opposition. Trade mark application number 1002886 may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    8 May 2007