Empire Design and Construction Pty Ltd v Robert Malter

[2017] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by Empire Design and Construction Pty Ltd to registration of trade mark application no. 1667947 – URBAN EMPIRE CONSTRUCTION - in the name of Robert Malter.

Delegate:	Bianca Irgang
Representation:	Opponent: Peter Hallett of Watermark Intellectual Asset Management Applicant: Jurgen Bebber of Griffith Hack
Decision:	2017 ATMO 112 Section 52 opposition: sections 42(b), 44, 60 and 62A pressed – no ground of opposition established.

Background

1. Robert Malter (‘the applicant’), filed trade mark application number 1667947 on 13 January 2015 in class 37 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1667947            

   Filing Date:  13 January 2015

   Specification:  Class 37: Building and construction services; Building construction; Development of land (construction); Development of property (building and construction services)

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 4 June 2015. Subsequently Empire Design and Construction Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).            

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 1 May 2017. The applicant was represented by Jurgen Bebber of Griffith Hack. The opponent was represented by Peter Hallett of Watermark Intellectual Asset Management.

   Grounds of Opposition

5. The Notice nominated five grounds of opposition under the Trade Marks Act 1995 (‘the Act’). However, only those grounds under sections 42(b), 44, 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Gyles J in Pfizer Products Inc. v Karam[3] where Justice Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Huseyin Cobankara ( ‘Cobankara 1’) dated 21 January 2016

   ·Declaration of Cheryl Hrvoj (‘Hrvoj 1’) dated 21 January 2016

   ·Declaration of Peter Runting (‘Runting’) dated 21 January 2016

   Evidence in Answer

   ·Declaration of Robert Malter (‘Malter’) dated 2 May 2016

   ·Declaration of Jurgen Bebber (‘Bebber’) dated 3 May 2016

   Evidence in Reply

   ·Declaration of Huseyin Cobankara( ‘Cobankara 2’) dated 7 July 2016

   ·Declaration of Cheryl Hrvoj (‘Hrvoj 2’) dated 8 July 2017

   Discussion

   Section 44 – Substantially identical or deceptively similar

7. Section 44 of the Act relevantly provides:

   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.

8. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   • a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;
   • the trade mark(s) in the name of the other person must be in respect of similar services or goods of the same description; and
   • the priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the application.

9. The  opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

   Trade mark:  Empire Design & Construction (‘the opponent’s trade mark’)

   Trade mark application no: 1556523            

   Filing Date:  12 May 2013

   Specification:  Class 37: Advisory services relating to building construction materials; Advisory services relating to construction; Advisory services relating to the construction of buildings; Advisory services relating to the construction of civil engineering structures; Advisory services relating to the construction of mechanical engineering structures; Beneath ground construction work; Building (construction) supervision; Building and construction services; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Building project management (building construction supervision); Charitable services, namely construction; Civil construction services; Civil engineering construction; Construction; Construction consultation; Construction engineering; Construction information; Construction of buildings; Electrical engineering services (construction); Factory construction; Harbour construction; Hire of construction apparatus; Hire of construction equipment; Hire of construction machinery; Housing construction; Hydroelectric power station construction services; Landscaping (construction); Maintenance and repair of construction apparatus; Maintenance and repair of construction machines; Marine construction; Mechanical engineering services (construction); Nuclear power station construction services; Oil pipeline construction; On-site construction supervision; Pipeline construction; Pipeline construction and maintenance; Project preparation relating to construction engineering; Providing information, including online, about building construction, and repair and installation services; Provision of construction advice; Provision of construction information; Provision of information in relation to building construction; Rental of apparatus for use in the construction of buildings; Rental of building construction machinery; Rental of construction apparatus; Rental of construction equipment; Rental of construction machinery; Rental of cranes (construction equipment); Rental of machinery for use in construction; Road construction; Sign construction; Structural engineering services (construction); Supervision of building construction; Supervision of construction; Supervision of construction projects; Underground construction; Underwater construction; Underwater construction services; Warehouse construction and repair; Welding (construction, repair and installation services); none of the foregoing being property development or real estate development services

10. The registered owner of the above trade mark is Empire Design and Construction Pty Ltd as Trustee for Empire Holdings Trust. The above trade mark has an earlier priority date than that of the Trade Mark and the opponent’s trade mark covers the same services in class 37 as the Trade Mark. The final issue I will decide is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark	Trade Mark
Empire Design & Construction

1. It is obvious that the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (Shell?).[4] Both trade marks may contain the words EMPIRE and CONSTRUCTION but there are additional words and stylistic differences between the trade marks which preclude a finding of substantial identity.

   [4] (1963) 109 CLR 407 at 414

2. Deceptive similarity is, however, defined by section 10 of the Act as referring to a trade mark which so nearly resembles another that it is likely to deceive or cause confusion. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have in recalling the opponent’s trade mark, to the impression they would get from the Trade Mark.[5] The probability of deception must be finite and non-trivial.[6]

   [5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415

   [6] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

3. The well-known test to determine whether trade marks are ‘deceptively similar’ is set out in Shell:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark][7]

   [7] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [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. In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The principles laid out in these tests have not been challenged.

6. The applicant discussed at length the proposition that the trade marks in question were not deceptively similar, drawing on the established authorities for comparison and focusing on grammar and stylization. I agree that the trade marks are not deceptively similar.

7. In coming to this conclusion I consider the layout of the trade marks is different and there is the additional word in the Trade Mark being URBAN and the word DESIGN in the opponent’s trade mark. While the respective trade marks share the term EMPIRE and the common and descriptive word CONSTRUCTION, this is not enough to establish that the trade marks are deceptively similar.

8. The applicant has argued that the definition of EMPIRE means the word is descriptive of the services. The definition of EMPIRE is as follows:

   Empire: 1. An extensive group of states or countries ruled over by a single monarch, an oligarchy, or an sovereign state. 2. An extensive sphere of activity controlled by one person or group.

9. The applicant has argued that the word EMPIRE within the Trade Mark may be used colloquially to refer to a collection of possessions or property owned by a single entity which forms a vast and impressive portfolio. The applicant asserts that when the word EMPIRE is applied to building and construction services that it is at least suggestive of a single person or company with a vast and impressive portfolio of building works. I agree with the applicant in so far as I consider it is unlikely that consumers would see services provided under the Trade Mark as being or being related to the opponent’s services.

10. In view of my finding that the Trade Mark is not substantially identical or deceptively similar to the opponent’s trade mark the opponent has not established its opposition based on section 44 of the Act.

    Section 60 - Reputation in Australia

11. 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.

12. The opponent is relying on the trade mark outlined in the above discussion of section 44 in order to establish the section 60 ground of opposition. Unlike section 44 of the Act, section 60 does not require that the services upon which the opponent uses its trade mark be of a specified standard of similarity with the services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the services are the same as I discussed in the proceeding paragraphs.

13. It is for me to determine therefore whether the opponent has established that before 13 January 2015 its trade mark were recognized by the public generally, or at least by a significant number of persons in the construction industry and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

14. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [8]

    (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

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

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[9]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [8] [1999] FCA 1020 [50]

    [9] [1973] HCA 43; (1973) 129 CLR 353, 362

15. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[10] by Kenny J at paragraph 81:

    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”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [10] [2000] FCA 1335

16. Cobankara 1 states that the opponent had been operating for around four years before the priority date of the Trade Mark. Mr Cobankara also provides an outline of the opponent’s revenue generated under its trade mark during this time. The amount is relatively modest considering the size of the construction industry and the average and more significant cost of construction services in Australia. The total spent on advertising since 2011 is, at best, de minimus.

17. While the opponent has argued that building and construction services are by their very nature highly visible and that consumers can readily identify construction sites, there is nothing in the evidence to support this assertion. It is true that many consumers drive past constructions sites each day but how much attention they pay to that signage is unclear. Exhibits 6 to 9 and exhibit 11 accompanying Cobankara 1 contain examples of how the opponent has used its trade mark on its employee uniforms, vehicles, t-shirts, stationary and on social media. Indeed, in exhibit 9 which contains photographs of body lotion promotional packs, the opponent has used the word EMPIRE solus prominently with its website address. However, the photographs are undated and it is unclear when these promotional activities took place or the extent and distribution of them. Exhibit 10 is a copy of the announcement in the 2015 Master Builders Excellence in Construction Awards for best hotel fitout. However, this announcement does not constitute trade mark use as it is use of the opponent’s name “Empire Design & Construction Pty Ltd” which I note also occurs in many examples in exhibit 11 on the opponent’s social media.

18. In Runting, Mr Runting states that that in his opinion, the use of the Trade Mark would be likely to cause consumer deception and confusion given his 39 years of involvement in the industry. Cobankara 1 outlines a single case of confusion whereby the opponent was contacted by a website developer who wanted to speak to the applicant. This web developer was not named and there is nothing in the evidence to support this assertion that confusion was taking place.

19. While the opponent has been able to show that it has used its trade mark since around 2011, the evidence before me is simply not sufficient to demonstrate reputation in its trade mark sufficient to trigger section 60 of the Act. I am not satisfied that the opponent had such a reputation as at the priority date of the Trade Mark that use of the Trade Mark is likely to cause deception and confusion in the marketplace. Therefore, the opponent has not established the section 60 ground of opposition.

    Section 42 – Contrary to Law

20. Section 42 of the Act provides:

    An application for the registration of a trade mark must be rejected if:
                     (a) the trade mark contains or consists of scandalous matter; or
                     (b) its use would be contrary to law.

21. The opponent’s attorney submitted that use of the Trade M ark for the relevant services would breach section 18 of the Australia Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations.

1. As I have found that the use of the Trade Mark is not, at a minimum, likely to “confuse” under section 44 or 60, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 18. I thus find that the opponent has not established it ground of opposition under section 42(b).

   Section 62A – Application made in bad faith

2. Section 62A of the Act provides:

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

3. Bennett J in DC Comics v Cheqout Pty Ltd[11] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [12], wherein her Honour commented:

   Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in the 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 [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

   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…

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

   [11] [2013] FCA 478; (2013) 101 IPR 334.

   [12] [2012] FCA 81; (2012) 94 IPR 551, at [164].

4. I am not persuaded that the opponent has discharged the onus of establishing that the applicant, as at the priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behavior.

5. Malter outlines that the word EMPIRE was incorporated into the Trade Mark as a result of Mr Malter and Tobijs Lorbergs working on a property owned by Harry Angus in September 2013. Mr Angus is the lead musician in their favourite band, The Cat Empire, and Mr Malter and Mr Lorbergs had always loved the name of the band which is why they came up with the Trade Mark because they wanted it to incorporate connections to things they loved.

6. The opponent has argued that this explanation of events surrounding the adoption of the Trade Mark is unconvincing and that any (and if) legal advice had been obtained, that the advice should have been put into evidence otherwise I should apply the rule in Jones v Dunkel[13] and conclude that the advice obtained did not support the applicant’s position. The opponent goes on to state:

   ·that the applicant was aware of the opponent’s trade mark given that both parties are located in the same geographical area;

   ·the applicant failed to conduct any searches prior to adopting the Trade Mark; and

   ·that the applicant proceeded to file its application despite being on clear notice by the opponent that the opponent objected to the applicant’s Trade Mark.

   [13] (1959) 101 CLR 298

7. I am not persuaded by the above that the opponent has discharged the onus upon it sufficient to establish the bad faith ground of opposition which is a serious allegation. While the parties may operate in a similar geographical area there is nothing in the evidence to suggest that the opponent’s trade mark had any bearing on the applicant’s choice of Trade Mark. Indeed, the evidence establishes that there are a number of independent traders in the construction and building industry who use trade marks incorporating the word EMPIRE.

8. As pointed out by Mr Bebber, representative for the applicant, Mr Malter wrote to Mr Cobankara in January 2015 in response to Mr Cobankara’s letter, to indicate he had obtained advice that his use of the Trade Mark did not infringe the opponent’s rights. Mr Bebber is right that the applicant is not required to provide privileged information as part of his evidence in order to support statements of what he personally believed at the time the Trade Mark was filed. While it may be of use in some circumstances that is not the case in the matter before me.

9. What I have before me is a case of two traders who have rather regrettably individually struck upon the word EMPIRE as forming part of their respective trade marks. Mr Malter’s desire to seek to apply to register the Trade Mark after the letter from Mr Cobankara is also not an indication of behavior that falls short of acceptable commercial behavior. Indeed, the evidence before me does not support the opponent’s assertions that the applicant applied for the Trade Mark in bad faith and I find that the opponent has not established this ground of opposition either.

   Decision

10. Section 55 of the Act 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:          Forlimitationssee section 6.

11. I find that the opponent has not met the onus upon it, in terms of any of the grounds of opposition argued at the hearing. The trade mark application may accordingly 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 of the Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

12. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    5 October 2017