Dinsmit Pty Ltd v Mayne Co Investments Pty Ltd

[2022] ATMO 227

TRADE MARKS ACT 1995

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

Re:Opposition by Dinsmit Pty Ltd as trustee for the McIvor Dental Surgery Trust to registration of trade mark application number 2095454 (class 44) – Flower Device – in the name of Mayne Co. Investments Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Chris Round and Pete Knowles, K&L Gates

Applicant: Melissa Marcus of Counsel, instructed by MacMillan Trade Marks Attorneys

Decision:

2022 ATMO 227

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 41, 44, 58 and 59 – no grounds established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Dinsmit Pty Ltd as trustee for the McIvor Dental Surgery Trust (‘Opponent’) to registration of the following trade mark:

Trade mark no: 2095454

Trade mark:                 

(‘Trade Mark’)

Applicant:  Mayne Co. Investments Pty Ltd (‘Applicant’)

Filing date:  12 June 2020

Specification:  Class 44 - Dentistry; Dental surgery services; Oral surgery services; Orthodontistry; Consultancy relating to surgery; Advisory services relating to medical services; Conducting of medical examinations; Provision of information relating to medicine; X-ray services; Rental of dental apparatus; Services for the preparation of medical reports (‘Applicant’s Services’)

1. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 13 November 2020.

2. The Opponent filed a Notice of Intention to Oppose on 13 January 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 12 February 2021. The SGP was assessed as being inadequately particularised. The inadequacies were rectified by the Opponent.

3. The Applicant filed a Notice of Intention to Defend on 30 April 2021.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Dinesh Rao (Director of the Opponent) made on 2 August 2021 with Annexures DR-1 to DR-16 (‘Rao Declaration’); and

• Declaration of Dinesh Rao made on 9 December 2021 with Annexures DR-1 to DR-5.

1. The Opponent’s evidence contains a number of letters exchanged between the parties and/or their legal representatives that are marked ‘without prejudice’ (‘Without Prejudice Correspondence’). A delegate may be informed on any matter that is before them in a way that the Registrar reasonably believes to be appropriate.[1]  In the circumstances of this proceeding, it is not appropriate for me to consider the contents of the Without Prejudice Correspondence as the Applicant has expressly stated that it does not waive its privilege in relation to that correspondence.  

   [1] Trade Marks Regulations 1995 (Cth) reg 21.15(4).

2. The Applicant filed the following declaration as evidence in this matter:

• Declaration of Roslyn Joy Mayne (Director of the Applicant) made on 20 October 2021 with Exhibits RJM-001 to RJM-015.

1. Once the time allowed for filing evidence ended, a hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 21 September 2022. The Opponent was represented by Chris Round and assisted by Pete Knowles, both of K&L Gates. The Applicant was represented by Melissa Marcus of Counsel. Roslyn Mayne observed the hearing.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent particularised grounds of opposition under ss 41, 44, 58, 59 and 62A of the Act. The ground under s 62A was not pressed by the Opponent. As such, I consider the ground under s 62A to be abandoned.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [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).

3. The date at which the rights of the parties are to be determined is 12 June 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 41

1. Section 41 of the Act relevantly provides:

   (1)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 (the designated goods or services) from the goods or services of other persons.

   …

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

2. The inherent adaptation of a trade mark is assessed:

   [B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]

   [4] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

3. Whilst the above quotation refers to words, the principle is equally applicable to other types of trade marks including devices.[5] Assessing the inherent adaptation of a trade mark is a two-step process.[6] The first step is to identify the signification which the sign ordinarily possesses (ordinary signification). The ordinary signification is the ordinary meaning of the sign to any person in Australia concerned with the Applicant’s Services.[7] The second step is to determine whether other traders might legitimately need to use that sign, or something so nearly resembling it, for the ordinary signification in respect of their own similar services.

   [5] Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, [146] (Stone J).

   [6] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

   [7] Ibid [70].

4. In the SGP, this ground of opposition is particularised as follows:

   Australian trade mark application no. 2095454 (Opposed Mark), consists entirely of 6 molars arranged around a central point. Molars are the most common image used in dental logos in Australia because they are the most distinctive tooth type and so can be represented simply in images. The mere arrangement of 6 molars without any other distinctive features around a central point lacks the inherent capability to distinguish the services…In the ordinary course of trade, other traders within the dental industry have a legitimate need to use similarly stylised and arranged molars in dental-related logos and are already doing so.

5. Seemingly, the Opponent’s view is that the Trade Mark is not capable of distinguishing because it consists of molars arranged around a central point, which is a commonly used device in respect of dentistry services. I do not find this submission persuasive. Firstly, the Opponent has not established that molars arranged around a central point is a device common to the trade. Annexure DR-1 to the Rao Declaration contains screenshots from the websites of six dental surgeries with logos which could be described (at the most generalist level) as molars arranged around a central point. Six examples are not sufficient to establish that this element is common to the trade. This position is not advanced by the 15 examples of Adobe Stock images containing depictions of teeth arranged in a circle.  

6. Furthermore, in assessing inherent adaptation, consideration is given to the trade mark as a whole.[8] When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[9] The relevant enquiry is whether the trade mark as a whole, that is, the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services.

   [8] Hudson’s Trade Mark (1886) 3 RPC 155.

   [9] Diamond T. Motor Car Co’s Appn (1921) 38 RPC 373, 380 (Lawrence J).

7. In this instance, the Trade Mark is a representation of a flower formed by arranging five molar like shapes (petals) around a central point with a sixth molar shaped petal extracted from the central point. It is a fanciful representation and a covert and skillful allusion to the nature of the Applicant’s Services, namely tooth extraction. Accordingly, it is capable of distinguishing the Applicant’s Services.

8. The ground of opposition under s 41 of the Act has not been established.

Section 58

1. Section 58 of the Act provides:

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

2. 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.

3. To succeed under this ground of opposition, the Opponent must establish the following requirements:

1. the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Mark;[10] and

2. the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark relied upon by the Opponent has been used;[11] and

3. a person, other than the Applicant, has an earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Trade Mark or any actual use of the Trade Mark (whichever is the earlier).[12]

   [10] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

   [11] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [12] Settef SpA v Riv-Oland Marvle Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

1. In the SGP, the Opponent nominated the following trade mark as the basis for this ground of opposition:

Trade mark no: 1770747

Trade mark:  

(‘Device Mark’)

Priority date:  14 May 2016

Specification:  Class 44 - Dentistry

1. The first consideration is whether the Device Mark is identical or substantially identical with the Trade Mark. It is plainly evident that the Device Mark is not identical to the Trade Mark.

2. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   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.[13]

   [13] [1963] HCA 66, [12] (Windeyer J).

3. The Trade Mark consists of a device reminiscent of a flower formed by arranging five molar like shapes (petals) around a central point with a sixth molar shaped petal extracted from that central point. The Device Mark consists of 6 tooth like shapes arranged in a circular pattern so as to form a star in the negative space at the centre. In my opinion, a total impression of resemblance does not emerge from the required comparison. The extraction of the petal in the Trade Mark and the star in the centre of the Device Mark are unlikely to go unnoticed in a side by side comparison of the trade marks. As such, I do not consider the Trade Mark to be substantially identical with the Device Mark.

4. In reaching this conclusion, I have considered the various hypothetical examples provided by the Opponent to support its view that the trade marks are substantially identical. The examples include side by side comparisons of the following:

1. I do not intend to make any comment as to whether the signs in these examples are substantially identical. For present purposes it is sufficient to state that the examples are not analogous to the circumstances before me. In the examples the device elements are identical but for a circular border, shading or the intentional dislodging of part of the same device. In the current matter, there are differences between the devices beyond shading, a circular border or the dislodging of one part of the same device.  To put it another way, for the examples to assist the Opponent the comparison in the current matter would need to be of the following devices, which it is not.

1. The Trade Mark and the Device Mark are neither identical nor substantially identical and consequently the ground of opposition under s 58 of the Act cannot be established.

Section 44

1. Section 44 of the Act relevantly provides:

   (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.

2. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods. 

3. In the outline of submissions for the hearing, the Opponent identified the Device Mark and also trade mark number 1521169 as the basis for this ground of opposition. However, only the Device Mark was particularised in the SGP and at no stage did the Opponent seek to amend the SGP under reg 5.12 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to include trade mark number 1521169 in the particularisation of s 44. Consequently, I will only consider the Device Mark which was particularised in the SGP.

4. From the information set out above at [23] of this decision, it is evident that the Device Mark is held in a name other than that of the Applicant, has a priority date which is earlier than the Relevant Date and is in respect of services similar to the Applicant’s Services.

5. I have already determined in respect of s 58, that the Trade Mark is not substantially identical to the Device Mark. As such the remaining consideration in respect of s 44, is whether the Trade Mark is deceptively similar to the Device Mark. Section 10 of the Act defines deceptively similar as:

   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.

6. In Shell, Windeyer J provided the following insights on deceptive similarity:

   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].[14]

   [14] Ibid [13].

7. As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Device Mark and of the Trade Mark. I must consider the look, sound, and idea conveyed, allowing for imperfect recollection.

8. The Opponent asserts that the trade marks are deceptively similar as the impression left in the mind of a consumer of both the Trade Mark and the Device Mark is that of teeth arranged in a circle.

9. In my view, the impression conveyed by the trade marks cannot be distilled down to teeth arranged around a central point. This characterisation is overly simplistic. Consumers are likely to recall the distinctive manner of representation, not just that each device is possibly teeth in a circle. In this respect I note the following observation of O’Bryan J in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2):

   That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[15]

   [15] [2021] FCA 328, [245].

10. The impression that a consumer of ordinary intelligence and memory would have of the Trade Mark is that of a flower with an extracted petal. The extracted petal is a striking and memorable feature of the Trade Mark. It would be noticed by even the most casual observer. Additionally, as the extracted petal is the shape of a tooth, a consumer might carry away the impression of tooth extraction.

11. The Device Mark is arguably less reminiscent of a flower due to the central star device, and it certainly does not convey any impression of extraction. The impression that a consumer of ordinary intelligence and memory would have of the Device Mark is teeth arranged around a star. The star at the centre of the Device Mark is a striking and memorable element which is not present in the Trade Mark.

12. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the services are offered and the character of the probable acquirer of the services.[16] The services in this matter are broadly speaking dentistry and medical services. They are personal care services and can be of considerable expense, consequently they are typically engaged with a relatively high degree of care and attention. This heightened diligence further diminishes the likelihood of deception or confusion.

    [16] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).

13. Considering all of the above, I am not satisfied that there is a real and tangible danger of deception or confusion. In my opinion, when considered as wholes, the Trade Mark and the Device Mark contain numerous elements which set them apart from each other.

14. The ground of opposition under s 44 of the Act has not been established.

Section 59

1. Section 59 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

1. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[17] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[18]

   [17] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

   [18] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).

2. In support of the prima facie case, the Opponent asserts that the Applicant has not provided any evidence of use of the Trade Mark. The Opponent asserts that all of the use by the Applicant is of the composite trade mark (reproduced below) which is the subject of registration number 1515131.

1. As such, the Opponent submits that the Applicant did not intend to use the Trade Mark but instead filed the application to block registration of other trade marks including the Opponent’s application for trade mark number 2100745.

2. The fact that the Applicant has not used the Trade Mark solus does not, of itself, imply a lack of intention to use the Trade Mark. In Suyen Corp v Americana International Ltd Dodds-Streeton J pointed out that:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[19]

   [19] Suyen Corp v Americana International Ltd (n 17) [207].

3. Furthermore, when faced with similar allegations the court has held that a heavy burden rests upon an opponent to show that at the time of making the application, an applicant only intended to use the trade mark as part of a composite sign.[20]

   [20] Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530, [393]–[404] (Stewart J).

4. In this matter, the Opponent has not discharged the heavy onus it bears. The material before me does not rise above assertion. Consequently, I am not satisfied that the Applicant only intended to use the composite trade mark. Nor am I satisfied that the Opponent has substantiated that the Applicant filed the application for the Trade Mark merely for speculative or defensive reasons.

5. The ground of opposition under s 59 of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2095454 may proceed to registration one month from the date of this decision.

3. 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 that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

21 December 2022