Dr Boom Communications Pty Ltd v Cases Pty Ltd

[2018] ATMO 183

TRADEMARKSACT 1995

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

Re:Opposition by Dr Boom Communications Pty Ltd to registration of trade mark application 1791685 (35, 37) - DR MOBILE (Logo) - in the name of V Cases Pty Ltd.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Mills Oakley Lawyers – written submissions Applicant: Cooper Mills Lawyers Pty Ltd – written submissions

DECISION:

2018 ATMO 183

Trade MarksAct1995
Section 52 opposition to registration: grounds under sections 41, 44,

60 and 42 – Evidence not filed in relation to section 41 ground; section 44 - trade marks not deceptively similar; sections 60 and 42(b) - no likelihood of confusion because of the reputation of the Opponent’s Trade Marks. Grounds of opposition not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) V Cases Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1791685

Priority Date:             29 August 2016

Services:Class 35: Discount services (retail, wholesale, or sales promotion services); Presentation of goods on communication media, for retail purposes; Retail services; Retailing of goods (by any means)

Class 37: Electrical apparatus repair; Glass repairs; Maintenance and repair of communications systems; Maintenance and repair of electronic apparatus; Maintenance and repair of telecommunications apparatus; Maintenance and repair of computers;  Telephone installation and repair; Telephone repair; Repair of telephone apparatus

Trade Mark:

(‘the Trade Mark’)

Endorsements:              Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.1

1 The endorsement reflects the examiner’s citation of registration 1741999 (9) Dr. Mobile during examination of the Trade Mark and the Applicant’s provision of evidence addressing the provisions of paragraph 44(3)(b) of

1. The Trade Mark was examined in accordance with section 31 of the Act and advertised as accepted for possible registration on 19 January 2017 in the Australian Official Journal of Trade Marks.

1. On 24 February 2017 Dr Boom Communications Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 24 March 2017, by a Statement of Grounds and Particulars which details grounds under sections 41, 44, 60 and 42 of the Act.

1. On 24 March 2017 the Applicant filed a Notice of Intention to Defend.

1. Thereafter, on 17 August 2017, the Opponent filed Evidence in Support of the opposition being a declaration by Jack Zervos, General Manager of the Opponent, made on 4 August 2017, with Exhibits JZ-1 to JZ-35.

1. Subsequently, on 9 November 2017, the Applicant filed Evidence in Answer being a declaration by Thuong Huyen Vu (Lily Vu), a director of the Applicant, made on 9 November 2017, with Annexures 1 to 13.

1. Both parties have been informed of their right to be heard or to make written submissions. The Opponent has filed written submissions by its legal representatives, Mills Oakley Lawyers. The Applicant has filed written submissions by its legal representatives Cooper Mills Lawyers Pty Ltd.

1. Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

the Act.  The Opponent does not rely on registration 1741999 (9) Dr. Mobile in its Statement of Grounds and Particulars.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition which are detailed in the Statement of Grounds and Particulars on the balance of probabilities.2

1. The relevant date at which the grounds under section 52 must be considered is the filing date of the opposed application.3 Where the grounds under sections 44 and 60 of the Act specify ‘the priority date’ as being the relevant date, that date is here the same as the filing date.

The Evidence

The Opponent

1. Since 1994 the Opponent has been in the business of repairing mobile phones and electronic tablet devices and selling accessories therefor, such as cables, power banks, cases, screen protectors and personal audio devices.

1. The Opponent has used a number of trade marks which include the words ‘Dr Boom’ since 1994 including, relevantly, those registered trade marks set out below:

Registration No:         1486751

Priority Date:             30 April 2012

Goods/Services: Class 9: Carriers adapted for mobile phones; cases adapted for mobile phones; holders adapted for mobile phones; mobile phone cases; mobile phone covers; mobile phone sets; mobile phone straps; mobile phones; mobile phones for use in vehicles; electrically powered apparatus for the repair of electronic assemblies

Class 35: Retail services in relation to phones, electronic music players and accessories for the aforementioned

Class 37: Electrical apparatus repair; glass repairs; maintenance and repair of communications systems; maintenance and repair of electronic apparatus; maintenance and repair of telecommunications apparatus; repair of computers; repair of telephone apparatus; telephone installation and repair; telephone repair

Class 38: Car telephone communications services; cellular communications services; communication services by electronic means; communication services for the electronic transmission of data; communication services for the electronic transmission of images; data communication services; electronic communication services; electronic communication services for the transmission of data; mobile telephone communication   services;   point   of  sale   communication   services;

2 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Trade Mark:

telephone communication services; wireless communication services; mobile telephone communication services

Registration No:         1676502

Priority Date:             23 February 2015

Goods/Services: Class 9: Carriers adapted for mobile phones; Cases adapted for mobile phones; Cellular mobile telephones; Downloadable ring tones for mobile phones; Electronic ornaments for mobile phones to indicate incoming calls; Holders adapted for mobile phones; Local mobile telephone installations; Local mobile telephone systems; Local mobile telephones; Mobile communication terminals; Mobile data apparatus; Mobile data communications apparatus; Mobile data instruments; Mobile phone cases; Mobile phone covers; Mobile phone sets; Mobile phone straps; Mobile phones; Mobile phones for use in vehicles; Mobile telecommunications apparatus; Mobile telephones; Digital tablets; Electronic tablets

Class 14:  Decorative ornaments  for  mobile phones; Mobile  phone accessory charms

Class 35: Management of a retail enterprise for others; Presentation of goods on communication media, for retail purposes; Retail services featuring telecommunications services of others; Retailing of goods (by any means); none of the aforesaid being in relation to cranes or other construction vehicles, or parts, fittings, and accessories therefor Class 37: Repair of electronic business equipment

Class 38: Mobile telephone communication services; Communications by cellular phones

Trade Mark:               

Registration No:         1752958

Priority Date:             23 February 2016

Goods/Services: Class 9: Cellular phones; Mobile phones; Phone appliances; Carriers adapted for mobile phones; Cases adapted for mobile phones; Downloadable ring tones for mobile phones; Electronic ornaments for mobile phones to indicate incoming calls; Holders adapted for mobile phones; Mobile phone cases; Mobile phone covers; Mobile phone sets; Mobile phone straps; Protective films adapted for mobile phone screens;   Digital   tablets;   Electronic   tablets;   Tablet   computers;

Trade Mark:

Computers; Computer apparatus; Cameras; Camera apparatus; Apparatus for electronic digital processing; Headphones; Stereo headphones; Stereophonic headphones; Headphone consoles; Headphone-microphone combinations; Headphones for audio apparatus; Headphones for microphones; Electrically powered apparatus for the repair of electronic assemblies; Apparatus for use in audio-visual communication; Battery chargers; Power supply devices for battery chargers; Hands free kits for phones; Audio speakers; Speakers (audio equipment); Batteries; Wireless communication apparatus

Class 35: Discount services (retail, wholesale, or sales promotion services); Presentation of goods on communication media, for retail purposes; Retail services; Retail services featuring telecommunications services of others; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Intermediary business services relating to the commercialising of goods (wholesaling); Wholesaling of goods (by any means); Administration of the business affairs of franchises; Business advertising services relating to franchising; Business advisory services relating to the operation of franchises; Business assistance relating to franchising; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Provision of business information relating to franchising; none of the aforesaid being in relation to cranes or other construction vehicles, or parts, fittings or accessories therefore

Class 37: Electrical apparatus repair; Glass repairs; Maintenance and repair of communications systems; Maintenance and repair of electronic apparatus; Maintenance and repair of telecommunications apparatus; Repair of computers; Telephone installation and repair; Telephone repair; Repair of telephone apparatus

Class 38: Telecommunications; Mobile telephone communication services; Communication services by electronic  means; Communication services for the electronic transmission of data; Data communication services; Point of sale communication services; Wireless communication services

1. I will refer to the above, collectively, as ‘the Opponent’s Trade Marks’.

1. I note that in his declaration Mr Zervos refers to ‘the DR BOOM’ trade mark without defining what the ‘DR BOOM’ trade mark is – that is, whether in doing so, he is referring to

the plain wordmark DR BOOM or any of the above-listed registrations, either individually or collectively. In so observing, I note that I would be slow to conclude in terms of subsection 7(1) of the Act that a use of any of the Opponent’s Trade Marks is a use of the plain

wordmark DR BOOM without alterations or additions which do not substantially affect its identity (or vice versa).4

1. Mr Zervos states:

The [O]pponent uses a number of trade marks in relation to the provision of its goods and services, including the trade marks DR BOOM, DR BOOM logo, and the slogan TRUST YOUR LIFELINE TO THE DOCTOR. Colloquially, the [O]pponent’s business is known as “The Phone Doctor” or the “Mobile Phone Doctor”.

1. There is no corroborative support for the claim that the Opponent’s business is colloquially known as ‘The Phone Doctor’ or ‘The Mobile Phone Doctor’.

1. Mr Zervos also states:

The first DR BOOM mobile phone accessories and repair store was opened in 1994, in Liverpool, New South Wales. Since then, a further 23 DR BOOM stores have been opened throughout New South Wales, Queensland, Victoria, and the Australian Capital Territory. Another two stores in Victoria are expected to be opened during August 2017 and November 2017.

1. Mr Zervos supplies of approximate revenue figures for goods sold and services supplied under ‘the DR BOOM’ trade marks’ for the financial years ending 2014, 2015, and 2016 as well as examples of the Opponent’s advertising its services under the Opponent’s Trade Marks in fliers, on social media, and on commercial radio.

1. I also note that Mr Zervos makes a number of allegations about the Applicant’s motives for authoring the Trade Mark but these assertions lack corroborative support. I observe that, while the Applicant did at one time negotiate for a lease in a shopping centre close to an outlet of the Opponent, this negotiation was one year after the Applicant had authored the Trade Mark.

4 See, Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, PB Foods v Malanda Dairyfoods Ltd [1999] FCA 1602; (1999) 47 IPR 47.

The Applicant

1. Ms Vu states that the Applicant operates from a number of retail locations which include shopping centres in Chadstone, Casey, Narre Warren, and Traralgon and traded under the name ‘V Cases’ until adopting the Trade Mark.

1. Ms Vu states:

In or about September 2015 I decided that V Cases gave the impression that the Applicant only sold mobile phone cases. I thought that we needed another brand to make it more obvious to consumers that the Applicant did more than just sell mobile phone cases.

I contacted the Applicant’s staff members using What’s App, to seek out ideas for a new brand.

1. As a result of these interactions5 the trade mark DR MOBILE was selected. Both store layouts and the logo were designed for the Applicant by a branding agency.

1. Ms Vu states that she was not aware of the Opponent or its trade marks either when the Trade Mark was created or when the Applicant filed the application for trade mark registration.

1. Ms Vu also denies the Opponent’s allegations as to the Applicant’s motives in selecting the Trade Mark and applying to register it.

Section 41

The Act

1. Section 41 of the Act provides:

41  Trade mark not distinguishing applicant’s goods or services

(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.

Note:       For goods of a person and services of a person see section 6.

(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:

5 Printouts of the relevant What’s App interactions are attached to Ms Vo’s declaration.

(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.

Note1:     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:          For goods of a person and services of a person see section 6.

Note3:      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 (5) and 7(3) and section 8).

(5)    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.

Note2:     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).

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The term DR MOBILE is not capable of distinguishing the applicant’s services. The term DR MOBILE indicates that the applicant is in the nature of repairing mobile telephones. These services are included in the specification of services covered by the opposed application. Other traders should be free to use DR MOBILE to describe their similar services.

Evidence

1. The Opponent has not filed any evidence in support of this ground.

Submissions

1. The Opponent has made extensive submissions in support of this ground. However, in my consideration, without evidence to support what the Opponent asserts in those submissions the Opponent could not be held to have discharged the onus which is on it to establish the ground.

1. I also observe that without Evidence in Support of this ground, the Applicant has nothing to respond to in its Evidence in Answer and for the Registrar to take notice of the Opponent’s submissions would accordingly be to deny the Applicant procedural fairness.

1. I further note that a search of the Australian trade marks online database attached to Ms Vo’s declaration shows that it has been the Registrar’s practice to view ‘Dr’ or ‘Doctor’ trade marks that are of similar ilk to the Trade Mark as being immediately acceptable for registration in terms of section 41 for services of a non-medical nature.

Conclusion

1. The Opponent has not established the ground under section 41 of the Act.

Section 44

The Act

1. Section 44 of the Act provides, inter alia:

44  Identical etc. trade marks

[…]

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

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

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

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

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

Note 1:     For deceptively similar see section 10. Note 2:         For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a

trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. To successfully oppose the application under section 44 of the Act the Opponent needs to establish the requirements of subsection 44(2) that:

(1)    the Opponent’s Trade Marks have a priority date which is earlier than the Relevant Date (‘the first requirement’); and

(2)    the Opponent’s Trade Marks are in respect of at least some goods/services which are similar/closely related to at least some of the Applicant’s services (‘the second requirement’); and

(3)    The Opponent’s Trade Marks is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The opposed trade mark application has a later priority date, is substantially identical or deceptively similar to, and covers identical or similar goods as the [Opponent’s Trade Marks].

1. I note here that the above assertion is wrongly put as the Trade Mark is filed in respect of services and not in respect of goods. While noting that this error might be viewed as being of the same genus as the Opponent’s oversight in not filing evidence to support its section 41 ground of opposition, the Opponent here has specified the Opponent’s Trade Marks within the Statement of Grounds and Particulars, and filed both evidence and submission in support of the section 44 ground and the Applicant has demonstrably had (and taken) the opportunity to respond to such with both its own evidence and submission. I further observe that as I will find that the ground is not established there is no damage to the Applicant’s interests in discussing why this is so.

The First and Second Requirement

1. As the Opponent’s Trade Marks have earlier priority dates than that of the Trade Mark and the specified services of the parties are, in essence, the same services, the first and second requirements are satisfied.

The Third Requirement

1. Concerning substantial identity the Opponent submits:

In this case, the relevant trade marks [the Trade Mark] and [the Opponent’s Trade Marks] are to be considered side by side. It is clear that the marks both use the same word DR to denote the first part (prefix) to each mark. The word DR is the first part of the mark that consumers observe in both trade marks. The word ‘DR’ denotes an identical, distinct and essential part of the trade marks and is an identical word contained within the [Opponent’s Trade Marks].

It is our case too that the word DR/DOCTOR is a special category of word that is well-known and its meaning clear.

The prefix DR is a highly specialised word with a common meaning. Forming such an essential and vital part of the [Trade Mark], identical to the [Opponent’s Trade Marks] means that consumers view this part of the mark first. Its prominence changes the context of the [Trade Mark] completely to make it substantially identical to the [Opponent’s Trade Marks].

The addition within the [Trade Mark] of the word MOBILE when compared to the [Opponent’s Trade Marks] [the word] BOOM is irrelevant for the purpose of identical similarity. In our view the marks are identical and consumers would pronounce the word DR the same and the word has the same manner of articulation. The DR prefix is an established and common prefix in English.

1. The Applicant submits:

The Opponent appears to submit that the word ‘MOBILE’ in the [Trade Mark] ought to be disregarded when applying the test of substantial identity.25 Although the Opponent offers no explanation as to why this should be case, the Applicant assumes it is because the word ‘MOBILE’ is arguably descriptive of the services.

It is true that descriptive words are often disregarded in the test of substantial identity. However, the Applicant submits that this is because they are often not a dominant cognitive cue and not because of some general rule that descriptive words must always be disregarded. Words that have descriptive significance have been taken into account where they are responsible for forming part of the total impression of a mark – in other words, where, in the context of the mark, the descriptive word is a dominant cognitive cue.

In the present case, the [Trade Mark] consists only of the words ‘DR MOBILE’. The word ‘MOBILE’ is prominent and stylised. Further, the word ‘DR’ is commonly understood to be a prefix. Consumers would expect the word ‘DR’ to be immediately followed by another word or name and are likely to have regard to that word or name. Accordingly, the word ‘MOBILE’ is a dominant cognitive cue that forms part of the total impression of the Opposed Mark.

By comparison, each of the [Opponent’s Trade Marks] include, as an essential feature, the verbal element ‘BOOM’ and accompanying graphical elements depicting a bomb. It cannot be suggested that the word ‘BOOM’ is not a dominant cognitive cue within the [Opponent’s Trade Marks]. Indeed, given its

size and prominence, it is the primary, essential and most striking feature of those marks. As the [Trade Mark] contains no similar dominant cognitive cue,  it follows that the marks are not substantially identical.

Discussion

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J stated:6

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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J.

(1945) 70 CLR, at pp 114, 115 , and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

40.In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd7 the court referred to the ‘dominant cognitive cues’ within the trade marks under consideration whereas in Pham Global Pty Ltd  v Insight  Clinical Imaging Pty Ltd8 the court  referred to the ‘dominant cognitive clues’. The import of the expressions ‘essential features’ and ‘dominant cognitive cues’ is the same – it is necessary to consider the essential elements of the trade marks: those parts of the trade marks which are, or go to form, their distinguishing characteristics.

1. The dominant cognitive cues, or essential elements, of the Opponent’s Trade Marks lie in the strong graphics of those trade marks in which the word ‘boom’ is dominant and one or more of the alphabetical letters ‘O’ within the word represented as a spherical bomb with a string wick – such as those portrayed in cartoons involving bomb-wielding anarchists. Thus, at one level, the Opponent’s Trade Marks are immediately seen as complex trade marks made up of several essential elements whereas the Trade Mark is not. Viewed from this perspective, the trade marks are not substantially identical.

1. However, I also observe that if the trade marks were both wordmarks – ‘Dr Mobile’ vs ‘Dr Boom’ – they still differ in their essential elements.  Even if the word ‘mobile’ were to be

6 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

7 [2017] FCAFC 56; (2017) 345 ALR 205.

8 [2017] FCAFC 83.

discounted in the comparison as the result of its reference to the nature of the services, the word ‘boom’ within the putative wordmark, ‘Dr Boom’, is not susceptible to the same analysis and forms an essential element of the putative wordmark. However, in the context of the Trade Mark, I consider that both elements of that trade mark (the prefix ‘Dr’ and the word ‘mobile’) make an equal contribution to its identity and any discount of the word ‘mobile’ is inappropriate.

1. An impression of dissimilarity emerges from a side by side comparison of the trade marks.

1. The trade marks are not substantially identical.

1. As far as deceptive similarity is concerned, the Opponent submits:

The opponent submits that there is a likelihood that consumers who are familiar with, and have an imperfect recollection of, the [Opponent’s Trade Marks], will be deceived or confused into believing that the Applicant’s Services offered under the [Trade Mark] come from the same trade source.

The [Trade Mark] contains the additional element MOBILE which is of weak distinctive character in relation to the services in question, being in relation to “mobile” phone retail and repair. The [Trade Mark] also incorporates a low level of stylisation in the nature of a fancy font.

The [Opponent’s Trade Marks] contain the additional word BOOM, together with the descriptor COMMUNICATIONS in small font below. The element COMMUNICATIONS is of weak distinctive character in relation to the services in question, being in relation to “telecommunications” and “communications” products and services. The [Opponent’s Trade Marks] contain various visual elements, such as a ‘stacked’ arrangement of the word elements and stylisation of the font used in the logo by way of incorporating a ‘bomb’ device into the letter ‘O’.

Overall, the prominent and memorable impression of each of the [Opponent’s Trade Marks] is DR BOOM. The impression of the Opposed Mark, and that which will be recalled by consumers, is DR MOBILE. The likelihood of deception and confusion is not diminished by the additional element MOBILE in the Opposed Mark which is of weaker distinctive character in relation to the relevant services.

As stated above, the prefix DR (DOCTOR) has an ordinary English meaning, namely expert or specialist. This word, together in relation to the services, creates in the mind of consumers an impression of a technology specialist. DR MOBILE and DR BOOM together have the potential to create confusion in the minds of consumers. The prefix DR is of such character that it’s the only part of significance in the recollection of the marks.

At Paragraph 32 and Annexure 8 to [Ms Vo’s] Declaration, [she] refers to a search of the Australian trade mark database for all pending and registered trade marks which include the element ‘DR’, with results numbering 711. The results cover all trade marks including this element in all classes of goods and services, and the Opponent therefore submits that these results are irrelevant and have no bearing on the current matter.

At Paragraph 33 and Annexure 9 to [Ms Vo’s] declaration [she] refers to a ‘sample’ of these search results selected by the Opponent, further refined to classes 35 and 37. None of these results directly conflict with the mobile phone retail and repair services of interest to the Opponent. In fact the majority of the search result ‘samples’ cover services entirely unrelated to those of interest to the Opponent such as “retail of cosmetics” (TM 782883), “plumbing, draining and gas fitting maintenance” (TM 962862) and “mineral and aerated waters”

The element ‘DR’ is not in common usage in relation to the specific services of interest to the Opponent, as implied by the Applicant, and is distinctive and memorable. The motives of the Applicant in adopting this element are questionable.

1. For its part, the Applicant submits:

The Opponent contends that the “prefix DR is of such character that it’s the only part of significance in the recollection of the marks”. Even a cursory examination of the [Opponent’s Trade Marks] reveals that the Opponent’s contention has no merit. In the context of the [Opponent’s Trade Marks], the word ‘DR’ comprises a very minor element, both in terms of size and emphasis. The word ‘DR’ is significantly overshadowed by the word ‘BOOM’ which is by far the most prominent, visually striking and memorable element. The use of the graphical bomb elements serves to further emphasise and draw attention to the word ‘BOOM’. The result is that when the [Opponent’s Trade Marks] are considered as a whole, the word ‘DR’ is reduced to a largely insignificant element.

The ‘BOOM’ element of the [Opponent’s Trade Marks] does not correspond with any aspect of the Opposed Mark. Accordingly, the impression left by the Opposed Mark compared to the Opponent’s Marks is one of dissimilarity.

Consideration

1. In Shell at [13] Windeyer J said of ‘deceptive similarity’:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the

defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him .

. . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.”

[…]

The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

1. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity: 9

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths10 at [49]; Australian Woollen Mills11 at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s12 at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74]. Fourth, the effect of the spoken description must be considered: Woolworths at [49];

   Crazy Ron’s at [75]; Australian Woollen Mills at 658.

9 [2012] FCA 1022, [38]-[46].

10 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
11 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

12 Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating13 at 594 – 595.

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].

1. I consider that the issue adverted to in Ms Vu’s declaration concerning the number of Australian registered trade marks which contain the ‘prefix’ ‘Dr’ is relevant as it shows that the public may be readily inferred to being accustomed to seeing such trade marks used by a number of traders who deal with goods and services in a variety of different trades to allude to their skill and professionalism in repair services. The public are not likely, in my estimation, to view the element ‘Dr’ as being uniquely associated with the Opponent in its trade. Further, the element ‘Dr’ forms a minor part of the Opponent’s Trade Marks in which the emphasis is on the word ‘Boom’. This emphasis on the word ‘boom’ is stressed by the pictorial rendition of one or more of the alphabetic letters ‘O’ within those trade marks as bombs of the type wielded by villains in cartoons.

13 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

1. As the Opponent infers, the element ‘Dr’ is weak trade mark material – as is the element ‘mobile’ in the Trade Mark. Although the Trade Mark is inherently adapted to distinguish, the elements that make it up are not. It is otherwise with the Opponent’s Trade Marks – the word ‘boom’ has no obvious denotation in relation to the services and those registrations contain strong graphical elements which further distinguish them from the Trade Mark.  In

   Australian  Woollen  Mills  Ltd14   it  was  said  that  “What  confusion  or  deception  may  be

   expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded.” It is difficult to apprehend that an ordinary person exercising an ordinary amount of attention could confuse the parties’ trade marks.

1. It might be otherwise if, for example, the Trade Mark consisted of the elements ‘Mr’ and ‘Boom’.

Conclusion

1. The Opponent has not established its ground under section 44 of the Act.

Section 60

The Act

1. Section 60 of the Act provides:

60  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.

Note:       For priority date see section 12.

1. In terms of section 60 of the Act it is thus incumbent on an opponent to establish to the satisfaction of the Registrar that:

   (a)    The trade mark(s) upon which it relies had a reputation in Australia at the priority date such that

   14 Op cit at 658.

(b)    Because of that reputation the use of the opposed trade mark would deceive or cause confusion.

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The opponent has used the DR BOOM and DR BOOM COMMUNICATIONS trade marks in relation to services covered by the opposed application since before the priority date of the opposed application. As at the priority date of the opposed application, the opponent’s DR BOOM and DR BOOM COMMUNICATIONS trade marks had acquired a significant reputation through use of the trade marks in Australia. As a result of this reputation, use of the opposed trade mark by the applicant on the services covered by the opposed application is likely to cause confusion.

Submissions

1. In it submissions the Opponent states:

The opponent uses and promotes a number of trade marks including DR BOOM, various stylised versions of the DR BOOM logos (the Prior Marks), and the slogan TRUST YOUR LIFELINE TO THE DOCTOR.

[The] Opponent has acquired a reputation in this ‘family’ of trade marks and colloquially the Opponent’s business is known as “The Phone Doctor” or “Mobile Phone Doctor”.

Recognising the reputation it had accrued in the DR/DOCTOR elements of its trade marks over a number of years, the Opponent adopted the tagline TRUST YOUR LIFELINE TO THE DOCTOR in 2014.

The opponent has intentionally built up a reputation in its family of trade marks by placing emphasis on the common and pivotal DR/DOCTOR element of its trade marks.

1. The Applicant submits:

The [Statement of Grounds and Particulars] does not refer to the Opponent’s reputation in marks other than ‘DR BOOM’ and ‘DR BOOM COMMUNICATIONS’. In particular, the Opponent did not claim any reputation in:

(a)  the word ‘DR’ or ‘DOCTOR’ solus;

(b)  any family of ‘DR’ marks;

(c)  the slogan ‘TRUST YOUR LIFELINE TO THE DOCTOR’; or

(d)   its purported colloquial names ‘THE PHONE DOCTOR’ or ‘MOBILE PHONE DOCTOR’.

In its written submissions, the Opponent nonetheless seeks to rely on these marks as forming part of its section 60 ground of opposition.

The requirement for [a Statement of Grounds and Particulars] was introduced by the Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013. The Explanatory Statement to the Regulations states (emphasis added):

Requiring grounds to be particularised gives an applicant an indication at an early stage of the opposition process of the case they are likely to have to meet.

Having these two components strikes a balance between not delaying notification of opposition proceedings and ensuring that an opponent has sufficient time to prepare the statement of grounds and particulars.

Item 25 of Schedule 3 to the Raising the Bar amends section 66 of the Trade Marks Act to prevent an opponent using the broad powers of the section to later add grounds of opposition or particulars that should have been included when the notice of opposition documents were first filed.

In the present case, the Opponent has not requested that the section 60 ground of opposition be amended to add additional marks in respect of which it claims a substantial reputation. Further, even if such a request was made, the Applicant submits that there is no basis for the amendment to be permitted given there is no new information relevant to the making of the amendment.

Accordingly, the Applicant submits that the proper enquiry under the section 60 ground of opposition is whether the [Opponent’s Trade Marks] had a reputation in Australia at the Relevant Date and whether the Applicant’s use of the Opposed Mark would cause confusion.

1. I agree with the Applicant’s submissions and exclude those particular submissions of the Opponent from my considerations. However, in doing so, I also note that there is no corroborative support for the Opponent’s assertion that the Opponent is colloquially known as ‘The Phone Doctor’ or ‘Mobile Phone Doctor’. Further, the Opponent has no corroborated use of the tagline ‘Trust Your Lifeline to the Doctor’ separate from the use of any of the Opponent’s Trade Marks; there is no consistency of use of the tagline which the Opponent appears to use only occasionally; and, the tagline had been in use for only two years at the priority date.

1. It would accordingly have been most difficult to agree with of either of the submissions which I have excluded that the Opponent has a reputation in either the element ‘Dr’, solus, or a ‘family’ of ‘doctor’ trade marks.

Consideration

1. In McCormick & Co Inc v McCormick15 (‘McCormick’) Kenny J asked:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

1. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee16 Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)17 was to be:

... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

(Implicitly approved by the Full Federal Court (Moore, Tamberlin  and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). 18

1. Regarding the measurement of reputation, in McCormick Her Honour went on to state:19

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd

15 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

16 [2000] FCA 1587; (2000) 50 IPR 1.

17 The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

18 [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

19 Op cit at [86].

(1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91- 560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a

$100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. There is no threshold as regards geographical scope or sales/advertising which needs to be established for it to be held that a trade mark has a reputation. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd Greenwood, Jagot and Beach JJ observed:20

   61. It seems to us that there was some confusion in the parties’ submissions, or at least those of IR, about this issue. Section 60(a) refers to a “reputation in Australia”. It was not in dispute that ICI’s composite mark had acquired a significant reputation in and around Perth, which is undoubtedly in Australia. As a result, we do not accept IR’s submission that the issue is whether the primary judge erred in finding that the ICI composite mark also had acquired a reputation outside of Western Australia or, more particularly, in New South Wales and Tasmania where IR used its mark (albeit many years after ICI had commenced to use its mark). As ICI submitted, this invites an erroneous approach to s 60. The fact that it was common ground that the ICI composite mark had acquired a reputation in and around Perth before IR used the IR composite mark means that s 60(a) was satisfied. The issue was whether, on the facts of the case, it could be concluded that “because of the reputation of that other trade mark [the ICI composite mark], the use of the first-mentioned trade mark [the IR composite mark] would be likely to deceive or cause confusion” as required by s 60(b).

1. In my assessment of the Opponent’s evidence, discussed above, I consider that the Opponent has a reputation in the Opponent’s Trade Marks and consequently in the wordmark DR BOOM as that is how the Opponent’s Trade Marks are likely to be remembered, recalled and used orally (noting also that the wordmark DR BOOM has been used orally in radio advertisements). I do not consider that the Opponent has established that it has a reputation in the element ‘Dr’ (or ‘Doctor’) except inasmuch as it occurs within its trade marks and as an integral part of those trade marks.

20 [2017] FCAFC 83 at [61].

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed:21

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. Here I do not consider that there is any similarity between the trade marks of the parties apart from the shared element ‘Dr’ which is, as Ms Vo’s evidence of the state of the Register shows, frequently adopted by traders who offer repair services to allude to the professionalism and care that they practice in the performance of those services. The ‘doctor’ trade marks are of the same ilk as the numerous ‘Mister’ or ‘Master’ trade marks on the Register which are hoped by their owners to indicate some special expertise in a particular trade. The public, in my consideration, apprehends the use of the element ‘Dr’ as being suggestive of such repair services and understands that element as not being unique to the services of any particular trader.

1. Such ‘mister/master/doctor’ trade marks only function with a second word as in, for example, ‘Mister Donuts’ or ‘Master Loaf’ where neither word functions as a separately distinctive element but both words contribute to the inherent adaptation of the whole and enables the combination to function as a trade mark. Such is the case with the Trade Mark. In the case of the Opponent’s Trade Marks (and its wordmark ‘Dr Boom’) the word ‘Boom’ functions as a distinctive element which further distinguishes it from the Trade Mark.

1. Accordingly, each of the trade marks under consideration has its own corporate identity and are likely to be apprehend by the public as such.

21 [2012] ATMO 124 at [40].

1. On this basis, there was no real likelihood of confusion or deception because of the reputation of the Opponent’s Trade Marks (or its wordmark Dr Boom) at the priority date of the Trade Mark.

1. The Opponent has not established its ground under section 60 of the Act.

Subparagraph 42(b)

The Act

1. Subparagraph 42(b) of the Act relevantly provides:

42  Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if: […]

(b) its use would be contrary to law.

The Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

Use of the opposed trade mark would be contrary to law because the opponent is the owner of a prior reputation in the trade marks DR BOOM and DR BOOM COMMUNICATIONS in relation to various goods and services including services covered by the opposed trade mark application in Australia.

The opponent’s reputation in the DR BOOM and DR BOOM COMMUNICATIONS trade marks has accrued through extensive use of the marks in Australia. Due to the opponent’s reputation in the trade marks, use of the opposed trade mark on services covered by the opposed application would be likely to mislead or deceive consumers, thereby contravening section 18 of the Australian Consumer Law (being schedule 2 to the Competition and Consumer Act 2010 (Cth)).

Use of the opposed trade mark would also constitute passing off in that it would result in the applicant passing off and threatening to pass off;

1.  the applicant’s services as those of the opponent;

2.   the applicant’s services as being of the same kind or quality as those of the opponent;

3.     the  applicant’s  services  as  being  supplied  by  or  under  or  with  the authority of the opponent, or as having the approval of the opponent; and/or

4.    the applicant as being the opponent or as having the approval of the opponent or as being associated in trade with the opponent.

1. I note that the Opponent’s submissions under this ground in part also rely upon its claim to have a family of ‘doctor’ trade marks: this assertion is absent from the Statement of Grounds and Particulars and I take no notice of it. This ground is also dependent in part on the Opponent’s submission that:

At Paragraph 17 of the [Ms Vu’s] Declaration, the [she] asserts that [the Applicant] was unaware of the Opponent and its trademarks at the time of filing the Opposed Application, on 29 August 2016. There is strong evidentiary support that this statement is untrue.

1. There is, however, no corroborative support for Mr Zervos’s allegations about the Applicant’s knowledge and motives at the priority date of the Trade Mark and this element of the ground as argued is also absent from the Statement of Grounds and Particulars.

1. The Opponent has not posited otherwise why the ground under subparagraph 42(b) of the Act could be well-founded if the ground under section 60 is not established.

Discussion

1. The onus is on the Opponent to establish that use of the Applicant’s trade mark would, rather than could, be contrary to law on the balance of probabilities.22 Apart from those submissions previously discussed and addressed, above, the Opponent’s submissions addressed similar issues to those addressed with respect to the section 60 ground.

1. The Opponent has failed to establish the ground of opposition under section 60 of the Act. As the test for ‘misleading or deceptive conduct’ under section 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for ‘deception or confusion’ under section 60,23 I am satisfied that the Opponent has also failed to establish that the use of the Trade Mark would be contrary to section 18 of the ACL.

1. Where a trade mark does not run afoul of section 18 of the ACL, neither will it be contrary to section 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered – in connection with the superseded Trade Practices Act 1974 (‘the TPA’) – that ‘the Court’s conclusion on section 52 would necessarily carry

22 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

23  See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

with it a conclusion on section 53(c) and (d)’.24 Section 53(d) of the TPA is the equivalent provision to section 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between section 52 of the TPA and passing off. His Honour considered that:25

The scope for the operation of section 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under section 52 or section 53 will invariably mean that proceedings for passing off would likewise fail.

1. For these reasons I am not satisfied that use of the Trade Mark would be contrary to law.

Conclusion

1. The Opponent has not established the ground of opposition under section 42 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

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

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

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

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

Note:       For limitations see section 6.

1. The Opponent has not established a ground of opposition.

1. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

24 [2003] FCA 104, at [107].

25 [1989] FCA 506.

Costs

1. The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 7 November 2018