Dow Jones & Company Inc v Wealth Street Pty Ltd & Michael Safar

[2017] ATMO 139

TRADE MARKS ACT 1995

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

Re:Opposition by Dow Jones & Company Inc to registration of trade mark application 1701629 (16, 36) - WEALTH STREET JOURNAL - in the name of Wealth Street Pty Ltd & Michael Safar.

Delegate:	Katrina Brown
Representation:	Opponent: Bill Ladas of King & Wood Mallesons Applicant: Self represented
Decision:	2017 ATMO 139 Decision on the written record Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 44, 60, 62A – s 60 established – registration of trade mark refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Dow Jones & Company Inc (‘the Opponent’) to the registration of the following trade mark:

Trade Mark No:	1701629
Trade Mark:	WEALTH STREET JOURNAL (‘the Trade Mark’)
Applicant:	Wealth Street Pty Ltd & Michael Safar (‘the Applicant’)
Filing Date:	19 June 2015
Specification:	Class 16: Newspapers relating to business; Newspapers relating to commerce; Newspapers relating to financial subjects; Financial newsletters; Newsletters; Newsletters relating to banking matters; Newsletters relating to financial matters; Newsletters relating to insurance; Newsletters relating to risk management; Periodical newsletters (‘the Applicant’s goods’) Class 36: Financial services; Provision of information relating to financial services; Advisory services relating to financial planning; Financial planning; Independent financial planning advice; Personal financial planning advisory services; Personal financial planning services; Advice relating to mortgages for residential properties; Advice services relating to enhancement of mortgages; Advisory services relating to mortgages; Mortgage advice; Mortgage brokerage services; Mortgage broking; Mortgage services; Provision of information relating to mortgages; Provision of online mortgage repayment calculators; Advisory services relating to real estate ownership; Consultation services relating to real estate; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of information in relation to real estate; Provision of information relating to property (real estate); Real estate advisory services; Real estate agency services; Real estate investment; Real estate investment advice; Real estate investment services (‘the Applicant’s services’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 10 December 2015.

2. The Opponent filed a Notice of Intention to Oppose on 10 February 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 10 March 2016.

3. The Applicant filed a Notice of Intention to Defend on 11 April 2016.

4. In due course the Opponent filed evidence in support of the opposition. On 27 July 2016 IP Australia wrote to the Applicant informing them that they had 3 months from the date of that correspondence to file evidence in answer. The Applicant did not file evidence in answer.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. On 11 January 2017 IP Australia notified the parties that as neither party had requested a hearing, the matter would be given to a delegate of the Registrar for a decision based on the written record. The parties were informed that they had one month from this notification to file any written submissions that they wished to rely upon. On 10 February 2017 the Applicant filed written submissions (‘Applicant’s Submissions’). On 13 February the Opponent filed written submissions (‘Opponent’s Submissions’).

6. The Applicant’s Submissions consist of statements in the nature of evidence in answer. As the Applicant chose not to file evidence in answer during the appropriate timeframe and has not made an application for the admission of late-filed evidence, this material will not be given the full weight of evidence.

7. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide.

Grounds of opposition and onus

1. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds of opposition in relation to all of the goods and services claimed in the trade mark application, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

4. In this matter the relevant date at which the rights of the parties are to be determined is 19 June 2015 (‘the relevant date’) being the filing date of the Trade Mark.[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

Evidence

1. The Opponent filed the following declaration as evidence in support:

• James Marcovitz (Opponent’s Senior Vice President and Deputy General Counsel) made on 18 July 2016 with accompanying Exhibits JW-1 to JW-20 (‘Marcovitz Declaration’). 

The Applicant

1. The Applicant was established in May 2009 with a vision to:

   [c]reate a holistic and strategic financial advisory service available to ‘middle Australia’ hard working families that wanted to better their financial future and navigate their way through the complex financial web and the challenges in modern society.[4]

   [4] Applicant’s Submissions [2].

2. The Trade Mark is or is intended to be used as the name of a newsletter that would:

   [p]rovide clients a way to stay informed with relevant financial matters, legislative changes, economic updates, educational reading to help people digest the complex environment associated with: superannuation and related  matters; personal insurance and protecting wealth; building wealth for retirement; retirement planning; cash flow management systems; debt management and investing principles  and wealth creation strategies.[5]

   [5] Applicant’s Submissions [11].

The Opponent

1. The Opponent was founded in 1882 in New York by three reporters: Charles Dow; Edward Jones and Charles Bergstresser. At [4] of the Marcovitz Declaration it is declared that:

   [s]ince its establishment, the Opponent has provided financial and business news, analysis and commentary to consumers by publishing newspapers, newswires, websites, apps, newsletters, magazines, and proprietary databases in print form and more recently in digital form, as well as organising conferences.

2. The Opponent’s publications are distributed through online and offline channels under a range of trade marks including The Wall Street Journal (‘the Opponent’s Trade Mark’).

Section 60

1. Section 60 of the Act provides:

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

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   b) because of the reputation of that other trade mark, the use of the first- mentioned trade mark would be likely to deceive or cause confusion.

2. To establish this ground of opposition, the Opponent must demonstrate that at the relevant date there was another trade mark that had acquired a reputation in Australia amongst a significant or substantial number of people.[6] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[7] The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

   [6] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.

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

3. In the SGP, the Opponent particularised this ground of opposition as follows:

   The Opponent has used THE WALL STREET JOURNAL Trade Mark in relation to a newspaper and associated goods and services since 1889. The newspaper published under THE WALL STREET JOURNAL Trade Mark is one of the highest circulating newspapers in the US. It also circulates internationally, including directly in Australia. In addition to the direct use of THE WALL STREET JOURNAL Trade Mark in Australia, Australian consumers are also exposed to THE WALL STREET JOURNAL in the US, including as a result of travel, exposure in the media in general, and the close connections between Australia and the US in the fields of baking and business. The newspaper offered under THE WALL STREET JOURNAL Trade Mark is a well-known and respected publication internationally, and has won 39 Pulitzer Prizes.

In view of the above use of THE WALL STREET JOURNAL Trade Mark, the Opponent enjoys a substantial and valuable reputation in THE WALL STREET JOURNAL Trade Mark in Australia. Because of that reputation, and the similarity of the Opposed Trade Mark to THE WALL STREET JOURNAL (including because the Opposed Trade Mark combines the elements STREET and JOURNAL), use of the Opposed Trade Mark would be likely to deceive or cause confusion, including as to an association with the Opponent and its goods and services.

Reputation

1. In McCormick & Company Inc v McCormick (‘McCormick’) Kenny J made the following comments in relation to reputation:

   As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes      far beyond mere examination of sales or turnover of goods sold          under that trade mark and contemplation of the advertising and          promotional figures.

   As regards a trade mark, its reputation derives both from the     quantum of sales under that mark and also the esteem, or image,      projected by that trade mark. The quantum of sales, advertising and          promotion contributes to the `recognition' component of the trade         mark's reputation. The credit, image and values projected by a trade            mark attaches to the `esteem' component of the reputation as do the     public events and other trader's marks with which [the] owner of the      trade marks in question chooses to associate the trade marks via         sponsorships, cross-promotions, `contra deals' and so forth.

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

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[8]

   [8] [2000] FCA 1335 [86].

2. Turning to the reputation demonstrated in the evidence, the Marcovitz Declaration provides a history of the Opponent’s Trade Mark commencing in July 1889 with a daily newspaper titled The Wall Street Journal in the USA. Exhibit JW-1 to the Marcovitz Declaration contains a photograph of the front page of the newspaper dated Monday July 8, 1889.

3. At [11] of the Marcovitz Declaration it is declared that the print edition of the newspaper has been available in Australian libraries since 1964. Exhibit JW-6 to the Marcovitz Declaration is an extract from a library search which indicates that the University of Queensland library has copies of The Wall Street Journal dating from 1964 onwards.

4. At [18] of the Marcovitz Declaration it is declared that the Opponent has operated the website ‘ (‘the Opponent’s website’) since 1996. Exhibit JW-3 to the Marcovitz Declaration contains extracts from the Opponent’s website dated from 3 December 1996 to 23 June 2016. The extracts which are dated prior to the relevant date show use of the Opponent’s Trade Mark in respect of publications with a financial and business focus.  In addition to the Opponent’s website, online editions of The Wall Street Journal have been available via apps (‘the Opponent’s apps’) since 2005.

5. Confidential Exhibit A1 contains figures relating to traffic to the Opponent’s website and the Opponent’s apps. The figures prior to the relevant date demonstrate substantial traffic from Australia to the Opponent’s website and significant traffic from Australia to the Opponent’s apps.

6. In addition to the Opponent’s website and the Opponent’s Apps, The Wall Street Journal is also available on the Factiva and ProQuest databases which are subscribed to by public and academic libraries in Australia. Exhibit JW-7 to the Marcovitz Declaration lists 18 Australian institutions who subscribe to the above mentioned databases.

7. The Opponent also draws my attention to the esteem component of the reputation of the Opponent’s Trade Mark.

• In 2014 The Wall Street Journal was named as one of the 10 most influential global brands on LinkedIn in The 2014 Professional Content Consumption Report.

• Paragraph 8 of the Marcovitz Declaration states that The Wall Street Journal has been awarded 36 Pulitzer Prizes.

• Paragraph 22 of the Marcovitz Declaration states that news, commentaries and analyses published in The Wall Street Journal are frequently quoted by Australian publications. Exhibit JW-15 to the Marcovitz Declaration consists of search results from the Westlaw AU database showing references to The Wall Street Journal in Australian newspapers including The Australian, The Financial Review, The Age and The Sydney Morning Herald between 1 January 2010 and 1 May 2015. Exhibit JW-15 contains 200 search results however it is declared at [22] of the Marcovitz Declaration that there were over 3500 results.  

1. Considering all of the above I am satisfied that at the relevant date, the Opponent’s Trade Mark had acquired a reputation in Australia with respect to publications with a financial and business focus, amongst a significant or substantial number of people. 

Likely to deceive or cause confusion

1. I now need to determine if, given the reputation of the Opponent’s Trade Mark in Australia, use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

2. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[9]

   [9] [1979] RPC 410, 423.

3. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following:

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[10]

   [10] [1999] FCA 1020 [51].

4. Section 60 of the Act does not require that the goods upon which the Opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the Applicant, nor is there a requirement that the Opponent’s Trade Mark is substantially identical or deceptively similar to the Trade Mark. However:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[11]

   [11] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].

5. In the current matter, the Applicant’s goods are newspapers and newsletters relating to finance, commerce, business and insurance, which are of a similar nature to the publications for which I am satisfied that the Opponent’s Trade Mark has acquired a reputation for in Australia. I am also satisfied that there is some association between the services claimed by the Applicant, all of which have a financial component, and the publications with a financial and business focus in which the Opponent’s Trade Mark has acquired a reputation.  

6. The Trade Mark and the Opponent’s Trade Mark have a similar construction. Each of the trade marks contains a single syllable word beginning with the letter ‘W’ directly followed by the words ‘Street Journal’. I note that the Opponent’s Trade Mark commences with the definite article ‘The’ and the Trade Mark does not. However I do not consider this to be of much significance. In everyday use of the English language it is not uncommon to add or remove the definite article. The evidence before me contains instances of the Opponent’s publications being referred to as ‘Wall Street Journal’. For example, Exhibit JW-15 to the Marcovitz Declaration contains an article from the Herald Sun on 12 April 2015 titled ‘How the world honoured Richie’ which states:

   The New York Post, Wall Street Journal and Washington Post were among the many US media outlets carrying reports of Benaud’s death.

7. It is also of note that at the date of this decision, the Trade Mark and the Opponent’s Trade Mark are the only trade marks on the Australian Register of Trade Marks that contain the words ‘Street Journal’.

8. Overall I am satisfied that given the extent of the reputation acquired by the Opponent’s Trade Mark, the similarity of the trade marks and the nexus between the goods and services, that a significant number of consumers would at the very least experience a reasonable doubt[12] as to the existence of some sort of connection between the Opponent’s Trade Mark and the Trade Mark in respect of all of the goods and services claimed in the trade mark application.

   [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594.

9. I find that the ground of opposition under s 60 of the Act has 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 established the ground of opposition under s 60 of the Act. Accordingly I refuse to register trade mark number 1701629.

3. As I have found that a ground of opposition has been established in relation to all of the goods claimed in the trade mark application, it is unnecessary for me to consider the remaining grounds that were argued. Those grounds, and any others under the Act, will be available to the Opponent to pursue in the event that this decision is appealed.

Costs

1. The Opponent sought costs. Costs generally follow the event, and I see no reason to depart from the general principle. Accordingly, I award costs against the Applicant in accordance with the amounts set in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown
Hearing Officer
Trade Mark Hearings & Oppositions
13 November 2017