Evee Pty Ltd v Evie Mobility Pty Ltd
[2024] ATMO 145
•9 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Evee Pty Ltd to registration of trade mark application number 2149161 (9, 35, 36, 37, 39, 42) – EVIE GO ELECTRIC GO ANYWHERE (Figurative) - in the name of Evie Mobility Pty Ltd
Delegate:
Louise Tuohy
Representation:
Opponent: Andrew Sykes of Counsel instructed by Mark My Words Trade Mark Services Pty Ltd
Applicant: Robert Clark of Counsel instructed by Allens Patent and Trade Mark Attorneys
Decision:
2024 ATMO 145
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 58, 44, 60 and 42(b) considered – sections 58 and 44 partially established – trade mark to proceed to registration for amended specification
Background
1. This matter concerns an opposition by Evee Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Evie Mobility Pty Ltd (‘Applicant’):
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade mark number: 2149161
Trade mark: (‘Trade Mark’)
Filing date: 14 January 2021
Specification: Class 9: Electric apparatus for charging batteries; Battery charging apparatus for vehicles; Charging stations for electric vehicles; Batteries for electric vehicles; Advertising display apparatus (electric or luminous)
Class 35: Retailing of goods via a vending machine; Outdoor advertising; Advertising services provided over the internet; Outdoor advertising services; Promotional advertising services
Class 36: Commercial property investment services; Property portfolio management; Property management; Real estate acquisition (for others); Real estate selection and acquisition (on behalf of others); Real estate services relating to property development
Class 37: Battery charging services for vehicles; Vehicle battery charging; Battery charging services; charging of electric vehicles; Development of property (building and construction services); Advisory services relating to property development building and construction services; Property development (building and construction services); Vehicle breakdown repair services; Vehicle breakdown assistance (repair); Vehicle service stations (refuelling and maintenance); Maintenance and repair of vending machines; Maintenance of electronic monitoring devices; Maintenance and repair of electronic installations
Class 39: Parking services for vehicles; Provision of vehicle parking facilities; Vehicle parking services; Vehicle breakdown recovery services; Vehicle breakdown assistance (towing)
Class 42: Providing information, including online, about scientific and technological services and research and design relating thereto; Monitoring of computer systems to detect breakdowns; Remote monitoring of computer systems; Machine condition monitoring; Product monitoring services
(‘Applicant’s Goods and Services’)
2. The Application was examined as required by s 31 and advertised for possible registration on 6 June 2022.
3. On 20 July 2022 the Opponent filed a Notice of Intention to Oppose the registration followed by its Statement of Grounds and Particulars (‘SGP’) on 9 August 2022. The Applicant filed a Notice of Intention to Defend to opposition on 22 September 2022.
4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:
·Declaration of Viacheslav Kozlovskii, Chief Executive Officer of the Opponent, made on 19 December 2022, with Annexures VK-1 to VK30 and Exhibits VK-1 to VK2 (‘Kozlovskii 1’).
·Declaration of Catherine Macniel, Trade Marks Attorney at Mark My Words Trade Mark Services Pty Ltd for the Opponent, made on 22 December 2022 with Annexures CM1 to CM10 (‘Macniel’).
5. The Applicant filed the following evidence in answer:
·Declaration of Paul Andrew Fox, Director of the Applicant, made on 4 April 2023, with Exhibits PF-1 to PF2 (‘Fox’).
6. The Opponent filed the following evidence in reply:
·Declaration of Viacheslav Kozlovskii, Chief Executive Officer of the Opponent, made on 22 May 2023, with Annexures VK-31 to VK33 (‘Kozlovskii 2’).
·Declaration of Yike Ma, Trade Marks Attorney at Mark My Words Trade Mark Services Pty Ltd for the Opponent, made on 26 May 2023, with Annexure YK1 to YK3.
7. Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested an oral hearing. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 5 July 2024. Andrew Sykes of Counsel instructed by Jacqui Pryor and Mike Ma of Mark My Words Trade Mark Services Pty Ltd appeared on behalf of the Opponent. Robert Clark of Counsel instructed by Miriam Stiel, Bryanna Workman and Lena Balakrishnan of Allens Patent and Trade Marks Attorneys appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing.
Grounds of Opposition, Relevant Date and Onus
8. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. The Opponent did not press the ground of opposition under s 58A and I treat this ground abandoned.
9. The date at which the rights of the parties are to be determined is the filing date of 14 January 2021 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.
10. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).
Discussion
Section 58
11. Section 58 provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
12. In the SGP the Opponent particularises the s 58 ground of opposition as follows:
The marks depicted below and/or a substantially identical trade mark were first used by one or more other traders, including (at least) Fast Cities Australia Pty Ltd, in relation to the goods and services claimed and/or in relation to the same kind of thing. Noting, such use commenced well before the Priority Date and prior to the applicant’s first use of the Opposed Mark, and at least as early as 2019.
Earlier used marks:
Further, and in the alternative, the Opponent used the trade marks EVEE and EVEEH in relation to electric vehicle rental services and similar services, including electric car share and rental services, as early as 2016, which is well before the Priority Date and prior to the applicant’s first use of the Opposed Mark.
13. To establish this ground, the Opponent must establish the following requirements:
1.that the Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent;[4]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
2.that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent was used;[5] and
[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
3.that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[6]
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
14. I will now consider whether the Trade Mark is identical or substantially identical to all the trade marks nominated in the SGP.
15. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:
[7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J) (‘Shell’).
Nominated trade marks
Trade Mark
EVEE
EVEEH
16. On a side by side comparison, given the trade mark and the Trade Mark are identical, they are clearly also substantially identical.
17. The trade mark and the Trade Mark both share the stylised word EVIE with a device of a stylised bird in flight forming the letter V. While the Trade Mark also consists of the word term GO ELECTRIC. GO ANYWHERE, I do not consider this term an essential feature of the Trade Mark. For these reasons I find and the Trade Mark are substantially identical. The total impression emerging from aside by side comparison is one of similarity.
18. The trade marks EVEE and EVEEH are plain word trade marks. While these plain word trade marks and the Trade Mark share the prefix EV, the suffixes EE and EEH in the plain word trade marks are not present in the Trade Mark which consists of the stylised word EVIE, a device of a stylised bird in flight forming the letter V, and the word term GO ELECTRIC. GO ANYWHERE. For these reasons I do not find the trade marks EVEE and EVEEH are substantially identical to the Trade Mark. The total impression emerging from a side by side comparison is not one of similarity.
19. The Opponent submits that it is not contested that, as alleged in the SGP, Fast Cities Australia Pty Ltd (‘FCA’) and not the Applicant is the first owner of the Trade Mark in relation to various goods and services for which the registration is sought. The Opponent further submits that what is contested is whether FCA was the owner as at the priority date or whether the Applicant was. The Opponent argues that the documentary evidence provided appears to go no further than providing a back-dated document. It does not make out ownership as at the priority date.
20. The Opponent further submits that it does not matter that the Applicant and FCA may be related entities. As was held in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[8] only the true owner established at common law is entitled to register as at the priority date of an application. Subsequent assignment cannot rectify this error, and nor should it.
[8] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’).
21. In response the Applicant submits that it is common ground that the Applicant was not the first owner of the unregistered rights in the Trade Mark:
(a) the name EVIE was first adopted by FCA in September 2018 and, on 3 October 2018, FCA sought to register EVIE as a trade mark. This trade mark application subsequently lapsed; and
(b) the Trade Mark was first adopted by FCA in October 2018.
22. The Applicant submits that it was incorporated on 23 December 2020 and contrary to the Opponent's submissions, the rights in the Trade Mark were assigned to the Applicant either by means of the incorporation of the Applicant in December 2020, or at the latest, by means of the Applicant’s application for the Trade Mark shortly after in January 2021. The Applicant explains that:
(a) Senior management of the Evie Networks business sought to restructure the business ahead of the launch of the initial network of charging stations. A key aim of this restructure was to separate ownership of the intellectual property relating to the Evie Networks business from ownership of all other assets of the business, which would remain owned by FCA.
(b) The Applicant was incorporated on 23 December 2020 for the purpose of owning all intellectual property relating to the Evie Networks business, which would include any unregistered trade mark rights and goodwill associated with those trade marks existing at the date of incorporation.
(c) It was the intention of the directors of FCA (Mr St Baker and Mr Whitby) and the directors of the Applicant (Mr Fox, Mr Whitby and Mr Mills) that all intellectual property relating to the Evie Networks business, including all right, title and interest in and to any relevant trade marks, would be assigned to the Applicant and the Applicant would own all intellectual property relating to the Evie Networks business from December 2020 onwards.
(d) A confirmatory assignment deed was entered into by the Applicant and FCA, which has an effective date of 24 December 2020 and confirms the equitable assignment had occurred.
23. Furthermore, the Applicant submits that it is an established principle that an assignment of unregistered intellectual property rights and rights to apply for future registrations relating to that intellectual property, can be founded upon the intention and conduct of the directors of the Assignee and assignor.[9] In particular it is not necessary for the directors intention to be documented in minutes of the directors meetings or the like.[10]
[9] See Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543, [549 to 553] (‘Speedy’) and upheld on appeal in Preston Erection Pty Ltd v Speedy Gantry Hire Pty Ltd (1998) 43 IPR 74, [82].
[10] (1998) 40 IPR 543, [552].
24. In this matter, the evidence before comprises company details of the Applicant and FCA. Annexure CM1 to Macneil comprises a company extract from the Australian Securities & Investment Commission (‘ASIC’) for the Applicant. The extract shows the Applicant was registered on 23 December 2020 and lists the directors as Paul Andrew Fox, Christopher Michael Mills and Rodger Peter Whitby. Annexure CM2 to Macneil comprises a company extract from ASIC for FCA. The extract shows FCA was registered on 5 July 2016 and lists the directors as, Roger Peter Whitby appointed 4 April 2018, Trevor Charles St Baker appointed 4 April 2018, with previous director David Andrew Finn appointed from 5 July 2016 to 4 April 2018.
25. On 15 December 2022 the Applicant and FCA entered into Deed of Assignment of Trade Marks,[11] then on 30 March 2023 a Trade Mark Licence between the Applicant (Licensor) and FCA (Licensee) was signed and listed the Effective Date as 24 December 2020.[12]
[11] Fox 15, [Confidential Exhibit PF-2 Tab 1].
[12] Fox [15], [Confidential Exhibit PF-2, Tab 2].
26. The Applicant relies on Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd a case where the intention of Mr Nielsen and Mr Richards that the company of which they were the only directors and shareholders should be the applicant for a patent of Mr Neilsen. Mr Nielsen’s conduct, in causing the application to be made in the company name amounted to the assignment to the company of his invention and the right to apply for a patent in respect of it.[13] However in the present case the Applicant shares only one of the directors of FCA and the evidence does not allow for me to infer the two companies had a unity of purpose.[14]
[13] Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543, [556]
[14]Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)[2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
27. Under s 58 the rights of the parties are at the Relevant Date. At the Relevant Date the deed of assignment did not exist, so it cannot on its own terms establish ownership. At best it might be said to reflect the intentions of the personnel involved in executing the deed. However, intention is not action. The only action put forward that might arguably have affected the assignment of the unregistered trade mark was the incorporation of the Applicant, since the Applicant claims it was incorporated for the purpose of owning all intellectual property relating to the Evie Networks business. However, there is no evidence of this purpose of incorporation before me. Moreover, at common law, no trade mark can be assigned without the goodwill of the business from which it came. Even if the assignment was dated before the Relevant Date, in respect of the six listed unregistered trade marks for which there is no trade mark application, the assignment would only be effective with the goodwill of the business which is not mentioned in the assignment.[15] As such I will now consider the use of the Trade Mark by FCA.
[15] Kraft Foods Group Brands LLC v Bega Cheese Ltd (2020) 377 ALR 387 (Foster, Moshinsky and O’Bryan JJ), [128] 420-1.
28. Fox and Macneil provide clear evidence that FCA had first use of the Trade Mark in November 2019. Exhibit PF-1 Tab 7 to Fox comprises screenshots from the Internet Archiving Service Wayback Machine for the website dated 3 December 2019. The extract shows use of the Trade Mark in relation to electric vehicle charging stations, battery charging services for vehicles and the provision of vehicle parking facilities for electric vehicle charging stations. Annexure CM9 to Macneil comprises a copy of an FCA report entitled Lessons Learnt Report dated September 2020. The Report notes that FCA opened its first charging station at Coochin Creek, Queensland in November 2019, and that as of September 2020 a further six charging sites were launched in NSW, VIC, QLD, SA and TAS.
29. In my assessment, I am satisfied that the evidence before me shows use of the Trade Mark by FCA since November 2019 in relation to electric vehicle charging stations, battery charging services for vehicles and the provision of vehicle parking facilities for electric vehicle charging stations (‘FCA Goods and Services’).
30. I consider that the FCA Goods and Services are of the same kind of thing as the Applicant’s claim for[16]:
[16] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).
Class 9: Electric apparatus for charging batteries; Battery charging apparatus for vehicles; Charging stations for electric vehicles
Class 37: Battery charging services for vehicles; Vehicle battery charging; Battery charging services; charging of electric vehicles
Class 39: Provision of vehicle parking facilities
31. This leaves the following goods and services claimed by the Applicant which I do consider to be of the same kind:
Class 9: Batteries for electric vehicles; Advertising display apparatus (electric or luminous)
Class 35: Retailing of goods via a vending machine; Outdoor advertising; Advertising services provided over the internet; Outdoor advertising services; Promotional advertising services
Class 36: Commercial property investment services; Property portfolio management; Property management; Real estate acquisition (for others); Real estate selection and acquisition (on behalf of others); Real estate services relating to property development
Class 37: Development of property (building and construction services); Advisory services relating to property development building and construction services; Property development (building and construction services); Vehicle breakdown repair services; Vehicle breakdown assistance (repair); Vehicle service stations (refuelling and maintenance); Maintenance and repair of vending machines; Maintenance of electronic monitoring devices; Maintenance and repair of electronic installations
Class 39: Parking services for vehicles; Vehicle parking services; Vehicle breakdown recovery services; Vehicle breakdown assistance (towing)
Class 42: Providing information, including online, about scientific and technological services and research and design relating thereto; Monitoring of computer systems to detect breakdowns; Remote monitoring of computer systems; Machine condition monitoring; Product monitoring services (‘Remaining Goods and/or Services’)
32. The Opponent has partially established the ground of opposition under s 58. In the circumstances, it is appropriate that I consider the additional grounds of opposition in terms of the Remaining Goods and Services.
Section 44
Section 44 provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(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.
(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.
(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.
34. To satisfy the s 44 ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date in the name of a person other than the Applicant, and in respect of similar goods and/or services or closely related goods or services to the Applicant’s Remaining Goods and Services.
In the event that each of these requirements is satisfied it may still be possible for me to accept the Application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make acceptance of the Application for registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon trade marks.
36. At the hearing the Opponent pressed the following trade marks as the basis of its s 44 ground of opposition as particularised in its SGP:
Trade mark number: 1792666 (short title ‘666’)
Trade mark: EVEEH
Filing date: 26 August 2016
Specification: Class 39: Arrangement of vehicle rental; Booking agency services for car hire; Booking agency services for travel; Booking of hire cars; Booking of vehicle rental; Car rental; Car transport; Motor car rental; Motor car transport services; Motor vehicle transport services; Providing information, including online, about transport,; Rental of cars; Rental of vehicles; Services for the booking of travel; Travel reservation; Vehicle transport services; Vehicle hire; Vehicle rental
and
Trade mark number: 2021674 (short title ‘674’)
Trade mark: EVEE
Filing date: 8 July 2019
Specification: Class 39: Booking agency services for car hire; Booking agency services for travel; Booking of hire cars; Booking of vehicle rental; Car rental; Car transport; Motor car rental; Motor car transport services; Motor vehicle transport services; Providing information, including online, about transport,; Rental of cars; Rental of vehicles; Services for the booking of travel; Travel reservation; Vehicle transport services; Vehicle hire; Vehicle rental; Arrangement of vehicle rental
37. Each of 666 and 674 are in the name of a person other then the Applicant and have a priority date that is earlier than the Relevant Date of the Trade Mark. It is then customary to consider whether the services covered by 666 and 674 are similar or closely related to the Applicant’s Remaining Goods and Services.
38. Pursuant to s 14(2) ‘similar services’ are services that are the same, or of the same description. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd the Full Court set out the principles to be applied in determining the scope of the phrase ‘services of the same description’:
The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:
There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the Assistant‑Comptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.[17]
[17] [2017] FCAFC 56, [333] (Greenwood, Besanko and Katzmann JJ) (‘Accor’).
39. The Full Court went on to describe the principles in the following terms:
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[18]
[18] Accor ibid [339].
40. Whether goods are closely related to services (or vice versa) involves different considerations. In the Registrar of Trade Marks v Woolworths French J made the following observations:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… it is a term of wider import than “similar”…[19]
[19] [1999] FCA 1020, [37].
41. In the present case the Opponent submits that there is a direct overlap between providing information, including online, about transport in class 39 covered by 666 and 674 and providing information, including online, about scientific and technological services and research and design relating thereto claimed by the Trade Mark in class 42. However, I do not agree that these services are similar. The services covered by 666 and 674 are specific to transport. In comparison the Applicant’s services are information services provided in relation to the theoretical and practical aspects of complex fields of activities and consumers would not expect that these services are provided by the same traders.
42. The Opponent also submits that motor car transport services and motor vehicle transport services in class 39 covered by 666 and 674 are similar to vehicle breakdown assistance (repair) services in class 37 and vehicle breakdown recovery services and vehicle breakdown assistance (towing) in class 39 claimed by the Applicant. In this matter, I agree with the Opponent that these services are similar. These services involve, amongst other things, towing and removal, which are services for the transport of vehicles.
43. I have found that the Applicant’s vehicle breakdown assistance (repair) services in class 37 and vehicle breakdown recovery services and vehicle breakdown assistance (towing) in class 39 (‘Similar Services’) are similar services. For completeness, I find that none of the remaining services covered by 666 and 674 are similar or closely related to the Applicant’s Remaining Goods and Services.
44. I have already found that trade marks 666 and 674 are not substantially identical to the Trade Mark. The remaining question is whether the Trade Mark is deceptively similar to 666 and 674.
45. The expression ‘deceptively similar’ is defined by s 10:
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.
46. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from 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].[20]
[20] Ibid [13].
47. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[21] conveniently stated the relevant principles, which may be summarised as follows:
[21] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[22]
[22] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[23]
[23] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[24]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[25]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[26]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[27]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[28]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [29]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[30]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[31]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[32] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[33]
[24] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[25] Ibid.
[26] Ibid.
[27] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[28] Shell (n 7), 415.
[29] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[30] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[31] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[32] Australian Woollen Mills Ltd (n 23).
[33] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 23), 657.
48. Furthermore, the Court, in the same case, noted the following[34]:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[35]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[36], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[37]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[38]
Trade mark 666
[34] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[35] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].
[36] Act, s 68.
[37] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.
[38] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].
49. The Opponent’s 666 trade mark is comprised of the plain word EVEEH and the main and distinguishing feature of the Trade Mark is the stylised word EVIE. Visually trade mark 666 and the Trade Mark both contain the prefix EV, however 666 consists of the suffix EEH and the Trade Mark consists of suffix IE. Aurally the word EVEEH and EVIE are pronounced in the same way. However, EVEEH an invented word with no particular connotation, in contrast to the Trade Mark which is a first name. On balance I do not consider it likely that consumers relying on imperfect recollection would be caused to wonder whether the trade source of the Similar Services are one and the same. The Opponent has not established that the Trade Mark is deceptively similar to trade mark 666.
Trade mark 674
50. The Opponent’s 674 trade mark is for the word EVEE and the main and distinguishing feature of the Trade Mark is the word EVIE. Visually 674 and the Trade Mark contain the prefix EV, however, 674 consists of the suffix EE and the Trade Mark consists of suffix IE. However, aurally the words EVEE and EVIE are pronounced in the same way and do not have any identifiable conceptual differences as both words are variations of the same first name. Even though the Similar Services are not identical, what is important is the impression recalled by the average buyer of these services. I consider that there is a real likelihood that some people, upon seeing the Similar Services branded with the Trade Mark will wonder or be left in doubt about whether those services come from the same source as the Opponent’s motor car transport services and motor vehicle transport services branded with the 674 trade mark.
51. For completeness the Applicant has not filed evidence that would permit a finding of honest concurrent use or prior use. Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under s 44(3)(b).
52. I have found that the Opponent has established the ground of opposition under s 44 in respect to the Similar Services. I will consider the remaining grounds with respect to the Applicant’s Remaining Goods and Services other than the Similar Services.
Section 60
53. Section 60 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.
54. In the SGP the Opponent particularises the s 60 ground of opposition as follows:
As at the Priority Date of the Opposed Mark, similar marks had already acquired a reputation in Australia, and because of that reputation use of the Opposed Mark for the claimed goods and services would be likely to deceive or cause confusion.
Since as early as 2016, the opponent has promoted and provided electric vehicle rental services and similar services such as electric car share and rental services in Australia under and by reference to the word marks EVEE and EVEEH (collectively, the Prior Reputable Marks).
The opponent has worked hard to promote and advertise its services under and by reference to the Prior Reputable Marks through various media, and the opponent has consistently generated significant revenues from the sale/provision of its services under and by reference to the Prior Reputable Marks. As a result, the Prior Reputable Marks have become generally known amongst Australian consumers of the opponent’s services.
In view of the established reputation of the Prior Reputable Marks as at the Priority Date, the applicant’s use of the Opposed Mark for the claimed goods and services would be likely to deceive or cause confusion as to the trade source of such goods and services, or as to the existence of some relationship or affiliation between the applicant and the opponent, when there is none. Accordingly, registration of the Opposed Mark should be refused under section 60 of the Act.
55. To satisfy s 60 the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
56. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[39] and quoted with approval the following words of Lockhart J in 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…[40]
[39] [2000] FCA 1335, [81].
[40] [1992] FCA 159, [118].
57. Justice Kenny 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 sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.14F11F[41]
[41] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
58. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided 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.F12F[42]
[42] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).
59. Each mark is separate when considering the operation of s 60 and it is appropriate to consider the use of which they have been put.
60. In Kozlovskii 1, Mr Kozlovskii states that the Opponent provides car rental, car sharing and associated services specifically for electric vehicles, throughout Australia. The Opponent was incorporated on 16 December 2015, and at that time the company was called Eveeh Pty Ltd. On 17 January 2019 the company name was changed to the Opponent.[43]
[43] Kozlovskii (12), [Annexure VK2].
61. Mr Kozlovskii provides confidential sales figures and marketing expenditure for the Opponent for the financial years 2015/2016 to 2021/2022.
62. Mr Kozlovskii states that the Opponent commenced promotion of its services under the 666 trade mark in around February 2016 and these promotional activities continued until around October 2017. In October 2017 the Opponent acquired the domain name evee.com.au and it transferred all its existing website to its new domain name.[44] The Opponent also updated its social media accounts, company material and promotional materials.
[44] Kozlovskii (18 to 20), [Confidential Annexures VK4, 6, and 8; Annexures VK 5 and 7].
63. Mr Kozlovskii avers that since 2016 the Opponent has enjoyed significant online and print press coverage. Annexure VK3 to Kozlovskii comprises a collection of online articles dated between May 2016 to January 2021. The publication/media sources include The Guardian Online, The Driven Online, EV Talks Magazine, GQ Australia and The Canberra Times. The articles dated from May 2016 to April 2017 are in relation to car rental and car sharing services provided under the 666 trade mark. The articles dated from November 2017 to January 2021 are in relation to car rental and sharing services provided under the 674 trade mark.
64. Mr Kozlovskii states that the Opponent has promoted its 674 trade mark from 2016 to 2017 and its 666 trade mark from 2016 to 2017 on its Facebook, Twitter, Instagram and Linkedin accounts in relation to car rental and sharing services.[45]
[45] Kozlovskii (21), [Annexure VK9 to VK12].
65. Mr Kozlovskii states that the Opponent has promoted it car rental and sharing services provided under the 666 and 674 trade marks at a number of events and exhibits in Australia including the CeBIT Australia Expo in 2016 and the Northern Rivers EV Forum in 2019.[46]
[46] Kozlovskii (25) [Annexure VK16].
66. Mr Kozlovskii states that the Opponent has undertaken paid advertising via the Facebook and YouTube platforms as well as the Google search engine. Annexure VK17 to Kozlovskii comprises examples of paid advertising on Facebook and Google under the 674 trade mark in relation to the car rental services. The Opponent also places advertisements in third party publications. Annexure VK21 to Kozlovskii comprises an advertisement on The Driven website in July 2019 for car rental services under the 674 trade mark. Annexure VK23 comprises an advertisement published in the Australian Hockey League Journal in June 2016 for care rental services provided under the 666 trade mark.
67. In my assessment of the evidence, the Opponent’s 666 trade mark has only been used for the years 2016 and to 2017 in relation to car rental, sharing and booking services. The use of 666 stopped in 2017 and mere use of 666 over this period is insufficient to establish, as a matter of fact, that the Opponent’s 666 trade mark had acquired a reputation in Australia amongst a significant or substantial number of consumers.
68. The evidence before me in relation to the Opponent’s 674 trade mark has been used by the Opponent from 2016 to 2021 in relation to car rental and sharing services. The Opponent’s sales growth is steady, and its advertising expenditure is evident from its advertising and promotional activities. The Opponent’s car rental and sharing services specifically for electric vehicles has also resulted in enthusiastic recognition from third parties. On the basis of the evidence, I am satisfied that the Opponent has demonstrated the existence of a reputation in Australia in respect of its 674 trade mark in relation to car rental and car sharing services for electric vehicles as at the Relevant Date sufficient for the requirements of s 60(a).
69. It is not sufficient that the Opponent merely establishes that its 674 trade mark has a reputation, the Register must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. This is linked to how similar the respective trade marks are. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd the Delegate Lyons said:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.[47]
[47] [2010] ATMO 5, [39] to [40].
70. In this case I have already found that the Opponent’s trade mark 674 and the Trade Mark are deceptively similar. However, I am not satisfied that the Opponent’s limited reputation in car rental and sharing services specifically for electric vehicles extends to the balance of the Applicant’s goods and services. Having regard to the markets within which each party operate and focus, I am not satisfied that there is a real tangible likelihood that consumers would be caused to wonder whether there is some connection between 674 and the Trade Mark.
71. The Opponent has not established the ground of opposition under s 60.
Section 42(b)
72. Section 42(b) 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.
73. In the SGP the Opponent particularises the s 42 ground of opposition as follows:
In view of the established reputation of the Prior Reputable Marks as at the Priority Date of the Opposed Marks (as detailed above in relation to the ground under Section 60), the applicant’s use of the Opposed Mark for the claimed goods and services would be contrary to law. Specifically, such conduct would be likely to mislead consumers into believing that goods and services offered or provided under the Opposed Mark originate from the opponent or that such goods and services have the licence, sponsorship or approval of the opponent and/or that there is some other affiliation between the applicant and the opponent, when this is not in fact the case, potentially resulting in damage to the reputation of the Prior Reputable Marks.
Such conduct would amount to:
a) misleading and deceptive conduct and the making of false statements, contrary to Sections 18 and/or 29 of Schedule 2 to the Competition and Consumer Act 2010 (Cth) (the ‘Australian Consumer Law’); and
b) passing off at common law.
Furthermore, to the extent that the applicant is not the owner of copyright in the Opposed Mark, in the absence of an effective assignment or licence in favour of the applicant being in place prior to the Priority Date, the applicant’s use of the Opposed Mark would amount to copyright infringement.
74. The Opponent did not press an allegation of copyright infringement in relation to the ground of opposition under s 42(b) in its written or oral submissions. I proceed on the basis that this statement has been abandoned.
75. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[48]
[48] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
76. Section 18 of the Australian Consumer Law[49] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[50] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.
[49] Competition and Consumer Act 2010 (Cth), sch 2.
[50] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.
77. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[51] and nor will it constitutepassing off.[52]
[51] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.
[52] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
78. The Opponent has not established the ground of opposition under s 42(b).
Decision
79. Section 55 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.
80. The Opponent has partially established grounds of opposition under s 58 and s 44 in relation to the Applicant’s Goods and Services. Accordingly, I decide that trade mark number 2149161 may proceed to registration one month from the date of this decision for the following goods and services:
Class 9:
Electric apparatus for charging batteries; Battery charging apparatus for vehicles; Charging stations for electric vehicles;Batteries for electric vehicles; Advertising display apparatus (electric or luminous)Class 35: Retailing of goods via a vending machine; Outdoor advertising; Advertising services provided over the internet; Outdoor advertising services; Promotional advertising services
Class 36: Commercial property investment services; Property portfolio management; Property management; Real estate acquisition (for others); Real estate selection and acquisition (on behalf of others); Real estate services relating to property development
Class 37:
Battery charging services for vehicles; Vehicle battery charging; Battery charging services; charging of electric vehicles;Development of property (building and construction services); Advisory services relating to property development building and construction services; Property development (building and construction services); Vehicle breakdown repair services;Vehicle breakdown assistance (repair);Vehicle service stations (refuelling and maintenance); Maintenance and repair of vending machines; Maintenance of electronic monitoring devices; Maintenance and repair of electronic installationsClass 39: Parking services for vehicles;
Provision of vehicle parking facilities;Vehicle parking services;Vehicle breakdown recovery services; Vehicle breakdown assistance (towing)Class 42: Providing information, including online, about scientific and technological services and research and design relating thereto; Monitoring of computer systems to detect breakdowns; Remote monitoring of computer systems; Machine condition monitoring; Product monitoring services
81. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
82. Both parties sought an award of costs. As both parties has had a degree of success I make no order as to costs.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
9 August 2024
Key Legal Topics
Areas of Law
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Intellectual Property
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