Elmwood Design Limited v Dig & Fish Pty Ltd

[2018] ATMO 114

TRADE MARKS ACT 1995

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

ReOpposition by Elmwood Design Limited to registration of trade mark application 1543193 (35, 42) – DIG&FISH - in the name of Dig & Fish Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Andrew Musgrave of Counsel, instructed by IP Gateway Patent and Trade Mark Attorneys Pty Ltd

Applicant: Marcus Fleming of Counsel, instructed by Omond & Co

Decision:                   2018 ATMO 114

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58A, 59, 60 and 62A considered – s 58A not available to opponent – no ground established – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Elmwood Design Limited (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of Dig & Fish Pty Ltd (‘the Applicant’):

Application Number:	1543193
Filing Date:	26 February 2013
Services:	Class 35: Business advice relating to marketing; Business consultancy services relating to marketing; Marketing; Marketing advisory services; Marketing research; Provision of advice relating to marketing; Sponsorship (promotion and marketing services); Brand creation services; Business strategic planning; Strategic business consultancy; Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Graphic advertising services; Writing advertising copy; Consultancy relating to public relations; Public relations; Advertising; Advertising analysis; Business advice relating to advertising Class 42: Creating and designing web pages for others; Creating and maintaining weblogs (blogs) for others; Web site design; Web site design consultancy; Commercial and graphic art designing; Design of corporate identity; Design of printed matter; Design of promotional matter; Design of publicity material; Design of trade marks; Graphic art design; Graphic design services (‘the Applicant’s Services’)
Trade Mark:	DIG&FISH	(‘the Applicant’s Trade Mark’)

2. On 22 September 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 18 November 2016 and a Statement of Grounds and Particulars on 19 December 2016. The Registrar assessed the statement in accordance with reg 5.8 of the Trade Marks Regulations 1995 (Cth) and it was found to be adequate. The statement nominated grounds of opposition under ss 42(b), 44, 58A, 60, 62(a), 62(b) and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 10 January 2017. On 18 April 2017 the Opponent requested an amendment to the Statement of Grounds and Particulars to add a ground of opposition under s 59 of the Act. The request was granted and the statement was amended accordingly. For the remainder of this decision the statement as amended will be referred to as ‘the SGP’.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 18 April 2017. This evidence consists of a Statutory Declaration made on 13 April 2017 by Deborah Longbottom, the Finance Director and Company Secretary of the Opponent, with Exhibits DL‑01 to DL-19 (‘Longbottom 1’).

4. The Applicant filed Evidence in Answer (‘EIA’) on 26 July 2017. This evidence consists of a Statutory Declaration made on 26 July 2017 by Angie Bradbury, the Managing Director of the Applicant, with Annexures AB-1 to AB-16 (‘the Bradbury declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 27 September 2017. This evidence consists of a Statutory Declaration made on 26 September 2017 by Deborah Longbottom (‘Longbottom 2’).

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request an oral hearing. The Opponent requested to be heard and a hearing was set down for 15 May 2018. The Applicant did not request an oral hearing. The parties were given a schedule for submissions which indicated that written submissions were due prior to the hearing date. Submissions were prepared on behalf of the Opponent by Andrew Musgrave of Counsel who was instructed by IP Gateway Patent and Trade Mark Attorneys Pty Ltd. Submissions were prepared on behalf of the Applicant by Marcus Fleming of Counsel who was instructed by Ormond & Co.

7. In the end, both parties chose to rely on their written submissions only. As a Delegate of the Registrar of Trade Marks I am to decide the matter on the material before me being: the SGP, EIS, EIA, EIR and submissions of Counsel.

The Opponent

8. According to Longbottom 1:

[The Opponent] started life in 1977 as a small local design studio. Since then it has expanded throughout the world and now has offices in London, New York, Singapore, Hong Kong and Melbourne.

and

The Opponent is recognised as the world’s most effective brand design consultancy, having won more DBA Design Effectiveness Awards than any other agency since the scheme began … .

9. The Opponent is the owner of the registered trade mark detailed below:

Trade Mark Number:

1542176

Priority Date:

1 June 2012

Services:

Class 35: Marketing services; market research; marketing studies; advertising and publicity services; online advertising on a computer or telecommunications network; business advisory and consultancy services, all relating to marketing and advertising; marketing advisory services relating to "get-up"; provision of information services relating to marketing; public relations services; personnel advisory services; brand creation or enhancement services; company image services; corporate identity services; personal analysis and development services relating to business research into individual skills and attitudes and development of personal mental tools relating to goal setting, achievement and better communication; provision of space on websites or other telecommunications systems for advertising goods and services

Class 42: Brand recognition development services; brand awareness services; corporate identity creation services; brand recognition and development services, including internal and external communications programmes; all the aforesaid services being design services; design consultancy services; graphic design services; environmental or architectural design services; design of interior decor; packaging, product or industrial design services; interactive product design; new media design services, including design services for use with digital or electronic communications; website design; software programming services related to websites; creating and maintaining websites; designing, creating and maintaining websites for use in e-commerce; research services none of which are in relation to fish or aquatic vertebrates and allm ofn [sic] which relate to the provision of advertising and graphic design services; advisory and consultancy services relating to all the aforesaid services; web hosting; all included in class 42

(‘the Opponent’s Services’)

Trade Mark:

FISH  (‘the Opponent’s Trade Mark’)

10.     Also according to Longbottom 1:

The Opponent has used [the Opponent’s Trade Mark] extensively in Australia and overseas.

In or about October 2010 the Opponent began providing [the Opponent’s Services] under [the Opponent’s Trade Mark] in each of [the Opponent’s] offices, including Melbourne, Australia from which it provided [the Opponent’s Services] under [the Opponent’s Trade Mark] throughout all of Australia.

The use of [the Opponent’s Trade Mark] in relation to [the Opponent’s Services] has been continuous in Australia since this first use in or about October 2010.

The trade mark FISH was adopted to symbolise the design brief process followed by the Opponent …

[The Opponent’s Trade Mark] and the brief development process is central to the Opponent’s creative process and interaction with clients. …

The Opponent has a substantial reputation in [the Opponent’s Trade Mark] for the provision of [the Opponent’s Services] in Australia and globally.

This reputation was present at the time of the Applicant filing its trade mark application …

The Applicant

11.     Mr Bradbury stated in his declaration:

[The Applicant’s Trade Mark] was first used in 2013 by the Applicant, when I established the Applicant by merging my business (DIG MARKETING GROUP PTY LTD) with that of 2FISH MANAGEMENT PTY LTD … to create the Applicant …

The name of the Applicant (which is the basis of the mark) is an amalgamation of the names of the two businesses which were merged to form it …

The Applicant is now a partly-owned subsidiary of Project: WorldWide, the global agency network that also owns such agencies as George P. Johnson—the largest experiential marketing company in the world—Spinifex Group, and Raumtechnik. …

I established the DIG business when my former business partner and I split our previous business (Liquid Ideas) in 2005. This development received a great deal of media attention, including in some high profile, high readership publications …

The Applicant’s business was initially branded as ‘DIG’—initially trading as Dig Marketing Group (DMG), which then developed separate branches of the business offering differing services under the ‘DIG’ umbrella brand—this was portrayed in our marketing material as two separate business offers:

oDig Marketing, and

oDig Communications,

with plans for a third stream to also be developed further—Dig Market Development.

DMG provided specialist services to the food and beverage industry …

The digital communications part of the DMG business provided clients with assistance in developing and promoting their brand and operations in the online world of social media and its related spheres …

The name of the Applicant’s company uses an ampersand—ie DIG & FISH PTY LTD, although its logo uses the + sign:

When the Applicant first started trading under its new name, it used the spelling ‘DIG&FISH’ whenever the ‘brand’ was typed using words. The reason for this was that we wanted the name as spoken/pronounced to be ‘Dig and Fish’, as this sounded better, and more like a merger, rather than Dig plus Fish

Grounds of Opposition, Onus and Standard of Proof

12. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59, 60, 62(a), 62(b) and 62A of the Act. In his submissions Mr Musgrave indicated that the Opponent is not pressing the grounds of opposition under s 62.

13.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 26 February 2013, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

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

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 60

14. Section 60 of the Act is reproduced below:

Section 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.

15. The ground based on s 60 of the Act is relevantly particularised in the SGP as follows:

[The Applicant’s Trade Mark] is substantially identical with, or deceptively similar to, one or more trade marks that, before [the Relevant Date] in respect of its particular goods or services had acquired a reputation in Australia, and because of the reputation of that other trade mark the use of [the Applicant’s Trade Mark] would be likely to deceive or cause confusion (Section 60).

·The Opponent has been continuously using [the Opponent’s Trade Mark] and other substantially identical variants thereof since prior to 26 February 2013 in relation to services of the same description as [the Applicant’s Services].

·The Opponent has developed a substantial reputation in [the Opponent’s Trade Mark] (and substantially identical versions of this trade mark) under which its services are provided.

The Law

16. To establish its ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent has stated that the Opponent’s Trade Mark and substantially identical versions of it have acquired such a reputation.

17.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[4] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[5]

[4] [2000] FCA 1335, [81].

[5] [1992] FCA 159, [118].

18.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[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 its 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.[6]

[6] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

19. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under the provisions of s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[7] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[8]

[7] [2000] FCA 1587.

[8] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.

The Evidence

20.     Briefly, the Opponent claims in its evidence continuous use of its trade mark, FISH, in Australia in connection with the Opponent’s Services from about October 2010. This is some two and a half years before the Relevant Date. Ms Longbottom declared that the Opponent has used its trade mark extensively in Australia and overseas, and more particularly:

In or about October 2010 the Opponent began providing [the Opponent’s Services] under [the Opponent’s Trade Mark] in each of [the Opponent’s] offices, including Melbourne, Australia from which it provided the Services under the Trade Mark throughout all of Australia.

The use of the Trade Mark in relation to the Services has been continuous in Australia since this first use in or about October 2010.

[The Opponent’s Trade Mark] was adopted in relation to [the Opponent’s Services] to symbolise the design brief process followed by the Opponent …

21.     Ms Longbottom included a number of exhibits to her declaration which, presumably, are intended to support her above statements. Exhibit DL-03 to Longbottom 1 is an extract from the Opponent’s website which is declared to have been obtained on about 10 April 2017. I note this is some four years after the Relevant Date; consequently, this exhibit is of negligible assistance to the Opponent in establishing that its trade mark acquired a reputation before the Relevant Date.

22.     Exhibit DL-04 is declared to be ‘an instruction leaflet and approximately 70 individual two sided cards, all of which relate to use of the Trade Mark’. None of the aforementioned are dated and Longbottom 1 does not indicate when, where or in what numbers they were distributed. The exhibit is of very limited assistance to the Opponent in establishing the required reputation.

23.     Exhibits DL-05 to DL-15 are declared to be ‘proposals and clients [sic] briefs, all of which relate to use of [the Applicant’s Trade Mark]’. The exhibits are dated variously from 7 November 2012 to ‘in or about February 2017’. Only the first (DL-05) is clearly indicated to have been provided to a client before the Relevant Date. Exhibit DL-05 is considered in further detail below. The second (DL-06) was ‘provided in or about February 2013’. The remainder are either undated (DL-08) or were provided to clients after the Relevant Date. Due to the date uncertainty surrounding DL-06 and DL-08, and that the remaining exhibits are dated after the Relevant Date they too are of negligible assistance to the Opponent; those exhibits will not be considered further.

24.     Exhibit DL-05 consists of what appears to be a document, as described by Ms Longbottom, which is some 28 pages long. The document principally shows and promotes ‘Elmwood’ as the company providing the services. ‘elmwood’ (not capitalised) appears prominently on the cover page beneath a crest and ‘© Elmwood’ appears at the bottom of most of the pages. The following composite signs (‘the Elwood FISH logos’) appear once each in the brochure:

The document describes a process which is used in providing the services: ‘We call this our Fish process …’ and ‘we can adapt the Fish process to work with you to develop a rollout strategy …’. On another page appears ‘This is our own special way of helping things along. It’s called FISH …’. These are the only apparent uses of the Opponent’s Trade Mark or a sign which incorporates the Opponent’s Trade Mark.

25.     The document in Exhibit DL-05 strongly promotes ‘Elwood’ as a business which provides brand design consultancy services, with ‘Fish’ being a process used in the provision of those services. There is nothing before me to suggest that ‘Fish’ is a term used for such a process outside of the Opponent’s business model and there is nothing before me that suggests that the use of the plain word ‘Fish’ in the manner used in the brochure is other than use as a trade mark.

26.     Longbottom 1 contains confidential ‘sales turnover figures’ from 2012 to 2016. Given the assertion that the Opponent has been using the Opponent’s Trade Mark from late 2010, and given their high relevance, it is surprising that sales figures for 2010 and 2011 have not been provided. The figures for 2012 and 2016 are substantial; however, I am not prepared to make any assumptions regarding sales in earlier years. The figures for 2012 and 2013 reflect sales for a little over one year before the Relevant Date. This is quite a short time in which a trade mark might acquire a significant reputation, although, a high level of sales in an appropriate market may be sufficient. The sales figures for 2013 are relevant for a little less than two months of that year.

27.     In the present matter it is not clear who constitutes the relevant market. However, given the nature of the services and the importance of brand recognition in commerce today it seems unlikely that the services are what might be described as being provided to a niche market. There are likely, it seems to me, to be a very broad spectrum of potential purchasers of the services provided by the parties and the potential market is likely to be very large.

Submissions

28.     With respect to reputation acquired by the Opponent’s Trade Mark the Applicant has submitted:

It cannot be inferred that all (or even any) of the Opponent’s sales revenue … can be attributable to the use of [the Opponent’s Trade Mark] alone. On the contrary, the evidence establishes that, where the Opponent has used [its trade mark], it has been in conjunction with, and often in close proximity to, the Opponent’s Elmwood brand. There is no evidence that the Opponent has used [the Opponent’s Trade Mark] independently of the Elmwood brand. …

Other than one isolated use on the Opponent’s English website …, the Opponent’s only evidence of use of [the Opponent’s Trade Mark] comprises confidential instructional material, and confidential sales pitches and presentations made to a dozen or so companies located in Australia. Particularly in circumstances where most of the Opponent’s evidence of use … is said to be confidential and presented directly to customers as part of a significant amount of other material … it cannot be inferred from the Opponent’s evidence that it has developed a significant or substantial reputation in Australia … .

Conclusion on section 60

29.     I am persuaded by the Applicant’s submissions and am not satisfied that the Opponent’s Trade Mark—or any of the Opponent’s trade marks containing ‘FISH’—has acquired a reputation in Australia. Even had any of those trade marks acquired a reputation, such reputation would have been only slight and given the differences between the respective trade marks deception or confusion would not be likely because of that reputation. The Opponent has therefore failed to establish this ground of opposition.

Section 42(b)

30. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

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

(a) …

(b) its use would be contrary to law.

31.     The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[9]

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

32. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

The use of [the Applicant’s Trade Mark] would be contrary to law (Section 42).

·The Opponent has been continuously using [the Opponent’s Trade Mark] and other substantially identical variants thereof in Australia and globally since prior to [the Relevant Date] in relation to services of the same description as [the Applicant’s Services].

·The Opponent has developed a substantial reputation in [the Opponent’s Trade Mark] in Australia and globally.

·The use of [the Applicant’s Trade Mark] in relation to the proposed services is likely to constitute the common law action of passing off …

·Due to the reputation of the Opponent in the marketing, advertising and design industries, the use of [the Applicant’s Trade Mark] in relation to [the Applicant’s Services] is likely to mislead and deceive consumers in contravention of the Australian Consumer Law.

33. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[10] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[10] 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) 149 CLR 191, 198 (Gibbs CJ).

34. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 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 Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[11] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 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 s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[12]

[11] [2003] FCA 104, [107].

[12] [1989] FCA 506, [40] (citations omitted).

35.     For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Section 44

36. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)…

(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.

Note 4: 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.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)            the similar goods or closely related services; or

(ii)           the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

37. In the SGP the Opponent nominated the Opponent’s Trade Mark in respect of s 44.

38. Subject to ss 44(3) and 44(4), to successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that the Opponent’s Trade Mark:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     is in respect of at least some services which are similar to at least some of the Applicant’s Services (‘the second requirement’); and

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

39.     The Opponent’s Trade Mark has a priority date which is earlier than the Relevant Date and it is not controversial that the services are similar. The first and second requirements are therefore satisfied. I move, then, to consider the third requirement.

Substantially identical or deceptively similar?

40.     I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  Windeyer J said:

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.[13]

[13] [1963] HCA 66, [12].

41.     On a side by side comparison there is a clear difference between the two trade marks; the Applicant’s Trade Mark includes the distinctive element ‘DIG’ which is not present in the Opponent’s Trade Mark. This difference is sufficient to cause the respective trade marks not to be substantially identical. I move, then, to consider whether the trade marks are deceptively similar.

42.     In respect of deceptive similarity the Opponent has submitted:

Given the primacy of the element ‘Fish’ in each of the marks, there is a finite and non-trivial risk of deception and confusion. There is a real tangible danger having regard to the marks that consumers will be caused to wonder whether there is a connection between [the Applicant and the Opponent].

43.     Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

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 [trade mark].[14]

[14] [1963] HCA 66, [13].

44.     The Opponent has also submitted:

The deceptiveness contemplated must result from similarity, but the likelihood of deception must be judged not by the degree of similarity ‘that is, [not by] the degree of near resemblance alone, but by the effect of that similarity in all of the circumstances’.[15] There must be a ‘finite and non-trivial’ risk of deception or confusion. There must be a ‘real tangible danger’.[16] The marks must be compared as a whole; regard must be had to the prominence of the elements;[17] the marks must be compared visually and orally.

[15] JBS Australia Pty Ltd  v Australian Meat Group Pty Ltd [2017] FCA 1421, [220].

[16] Registrar of Trade Marks v Woolworths (1999) 93 FCR 365, 382.

[17] Optical 88 Limited v Optical 88 (No 2) [2010] FCA 1380, [100].

45.     The existence of a common element in two trade marks is not, of itself, sufficient to mean that the trade marks are deceptively similar. In the case of a comparison of a two word trade mark with a one word trade mark:

[W]here one of the two words which alone constitutes a word mark is identical, both visually and aurally to the single word which constitutes and earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, are normally to be regarded as similar … [18]

[18] Oriental Kitchen SARL v Office for Harmonization in the Internal Market (Trade Marks and Designs) (2003) Case T-286/02, [39].

However, that is not the case here. We are faced with a comparison of a one word trade mark with what is essentially a three word trade mark—assuming for the sake of simplicity that an ampersand is a word. Additionally, the common word, FISH, is not a word with no conceptual meaning. It is not, say, an invented word but is a common word forming part of the English language. It is necessary to consider the trade marks as a whole. The visual, the aural and the conceptual impressions must be assessed.

46.     In the present comparison, there are significant visual and aural differences created by the additional words in the Applicant’s Trade Mark. The conceptual impressions left by the respective trade marks are open to interpretation. The Opponent’s Trade Mark, FISH, might be taken to be a verb or a noun, or it could be taken to be a person’s name. Similarly with DIG&FISH, the DIG could be taken as a verb or potentially even as a noun. In both cases this variability in interpretation results in conceptual impressions which are relatively weak and not, I suggest, particularly memorable. The overall impressions left by the two trade marks, while having some similarities, are sufficiently visually and aurally different that there is no real and tangible danger of confusion arising from the use of the Applicant’s Trade Mark. The Opponent has therefore failed to establish this ground of opposition.

Section 58A

47. The ground of opposition under s 58A is particularised in the SGP as follows:

The Opponent has earlier use of the same or similar trade mark in respect of similar or closely related services, and has continuously used that same or similar trade mark in respect of those services since that first use (Section 58A).

·Trade Mark No. 1542176 – priority date: at least 1 June 2012.

48. Section 58A is reproduced below:

Section 58A – Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)    similar goods or closely related services; or

(ii)   similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:  For predecessor in title see section 6.

49. The application for the Applicant’s Trade Mark was not accepted because of s 44(4) or a similar provision of the regulations made for the purposes of Part 17A; consequently, this ground of opposition is not available to the Opponent.

Section 59

50.     This ground of opposition was particularised in the SGP as follows:

The Applicant does not intend:

(a)    to use, or authorise the use of, the trade mark in Australia, or

(b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

in relation to the goods and/or services specified in the application (Section 59).

·There has been no use of DIG&FISH as a trade mark by the Applicant in relation to the services set out in the Applicant’s trade mark application, in Australia.

·The Applicant has used an alternative trade mark DIG&FISH in relation to the services set out in the Applicant’s trade mark application, in Australia. This indicates there was never an intention to use DIG&FISH as a trade mark in Australia in relation to the Applicant’s services.

51. Section 59 of the Act is reproduced below:

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(c)   to use, or authorise the use of, the trade mark in Australia, or

(d)   to assign the trade mark to a body corporate for use by the body Corporate in Australia;

in relation to the goods and/or services specified in the application.

52. As observed by Jacobson J, s 59 is a ‘difficult’ ground for an Opponent to establish because of ‘the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent’.[19]

[19] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161].

53.     The making of an application for registration of a trade mark is prima facie  evidence of an intention to use the trade mark applied for.[20] Additionally, the onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Applicant’s lack of intention, at which stage the onus moves to the Applicant for rebuttal.[21] The intention to use a trade mark must exist at the date of application,[22] consequently, it is incumbent upon the Opponent to establish that the Applicant did not intend to use the trade mark at the Relevant Date.

[20] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [67], [72].

[21] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].

[22] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] .

54.     The Opponent’s particulars for this ground indicate that it is relying, at least in part, on the Applicant’s lack of use of the Applicant’s Trade Mark to support this ground. Mere lack of use of a trade mark following an application to register that trade mark is not sufficient, of itself, to indicate that an applicant did not have an intention to use the trade mark at the date the application was filed. Neither is the mere use of a different, but similar, trade mark sufficient, without more, to indicate that an applicant did not have an intention to use the trade mark applied for. Neither are these two things taken together sufficient to shift the onus to an applicant for rebuttal.

55.     In any event, if the two factors above taken together were sufficient to shift the onus to the Applicant in the present matter, the Applicant has provided evidence which shows its use of its trade mark shortly after Relevant Date—such evidence is highly persuasive that an intention to use existed at the Relevant Date. Annexure AB-15 to the Bradbury declaration contains a copy of a letter dated 9 April 2013 to a customer of the Applicant which includes the opening sentence ‘Thanks for choosing DIG&FISH to assist you running your [promotion]’. The letter contains a quotation for various services which the Applicant is to provide. This use of the Applicant’s Trade Mark shortly after the Relevant Date is sufficient, had it been necessary, for the Applicant to rebut the allegation of no intention to use. The Opponent has, therefore, failed to establish this ground of opposition.

Section 62A

56. In the SGP the ground under s 62A was particularised as follows:

The application for [the Applicant’s Trade Mark] was made in bad faith (Section 62A).

·The Opponent has a substantial global reputation, and is an established provider of services in the marketing, advertising and design industry throughout Australia and globally.

·A search of the Australian Trade Marks Database prior to filing [the application] would have revealed [the Opponent’s Trade Mark].

·[The Applicant’s Trade Mark] is deceptively similar to [the Opponent’s Trade Mark] and it’s unlikely they can co-exist without any confusion arising in the marketplace.

·Given the above, it is highly likely that as at the filing date of [the application], the Applicant would have been aware of the high likelihood of confusion that would ensue from its use of DIG&FISH.

·Rather than adopting a different trade mark, being wholly aware of the Opponent’s trade mark rights, the Applicant proceeded to file the current trade mark application on 26 February 2013 for services similar to those that the Opponent provides under its registered trade mark no. 1542176 for FISH.

·It is the Opponent’s belief that the current trade mark application was filed in an attempt by the Applicant to attain registration without the Opponent being aware of same (ie to deceive the Opponent and usurp its trade mark rights), and thereby springboard off the Opponent’s Australian and global reputation.

57. Section 62A of the Act is reproduced below:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

58.     The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

59.     The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …

The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[23]

[23] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].

60.     Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[24]

[24] Ibid [165]-[166].

61.     The Bradbury declaration describes how the Applicant formulated the Applicant’s Trade Mark:

[The Applicant’s Trade Mark] was first used in 2013 by the Applicant, when I established the Applicant by merging my business (DIG MARKETING GROUP PTY LTD) with that of 2FISH MANAGEMENT PTY LTD (owned by Caroline Ryan) to create the Applicant, with the former chairman of Grey Group, Paul Gardner, appointed as independent chairman of the Applicant.

The name of the Applicant (which is the basis of the mark) is an amalgamation of the names of the two business which were merged to form it … .

62.     The Applicant appears to have arrived at its trade mark via a fairly natural and unsurprising route: a route which appears unconnected with the existence of the Opponent’s Trade Mark. Further, the adoption by the Applicant of a trade mark which is not deceptively similar to the Opponent’s Trade Mark is, in this case, sufficient to dispel any view that the conduct of the Applicant was of an unscrupulous, underhand or unconscientious character. The Opponent has, therefore, failed to establish this ground of opposition.

Decision

63.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1543193 may proceed to registration after 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 either the appeal is withdrawn or a court so orders.

Costs

64. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Oppositions and Hearings
18 July 2018