Ex Parte v Richard Peter Jefferies

[2018] ATMO 161

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1809431 (36) – Jade Finance- in the name of Richard Peter Jefferies.

Delegate:

Nicole Worth

Representation:

Applicant: Richard Holt, Worcestor & Co Solicitors

Decision:

2018 ATMO 161

Trade Marks Act 1995 (Cth) – s 33 proceedings – s 44 ground for rejection – trade marks deceptively similar – evidence insufficient – application rejected.

Background

1. This is a decision pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) in respect of an application to register the trade mark detailed below, filed in the name of Richard Peter Jefferies (‘the Applicant’).

   Trade Mark: Jade Finance (‘the Trade Mark’)

   Filing date: 16 November 2016

   Services:Class 36: Advisory services relating to finance; Advisory services relating to financial investment; Advisory services relating to financial matters; Advisory services relating to financial planning; Advisory services relating to financing; Advisory services relating to investment finance; Agencies for the exchange of financial operations; Arranging finance for construction projects; Clearing-houses (financial); Collection of financial information; Commodities financing; Computerised financial services; Conducting of financial transactions; Consultancy services relating to finance; Consultancy services relating to personal finance; Consultation services relating to financial matters; Consultations (Financial); Corporate finance consultancy; Corporate finance services; Corporate financing; Credit (financing); Finance leasing; Financial advice; Financial advisory services; Financial advisory services for companies; Financial advisory services for individuals; Financial consultancy; Financial consultation services; Financial credit services; Financial evaluation (insurance, banking, real estate); Financial evaluations; Financial information; Financial information services; Financial leasing; Financial lending; Financing services; Hire purchase financing; Hire-purchase financing; Lease purchase finance; Lease-purchase financing; Loan financing; Loans (financing); Personal finance services; Preparation of financial reports; Project finance; Project financing; Providing finance for credit sales; Provision of commercial finance; Provision of equipment finance; Provision of finance; Provision of information relating to financial services; Provision of lease-purchase finance facilities; Provision of trade finance; Tax consultancy (financial); Tax consultations (financial).

2. The application was examined as required by s 31 of the Act and a ground for rejection under s 44 was raised. Section 44 deals with prior trade marks that are substantially identical or deceptively similar to an applied-for trade mark and are in respect of similar and/or closely related goods and services. The basis for the ground for rejection was one prior registered trade mark and two pending trade marks. The two pending marks have since lapsed. However prior registration 1494944, detailed below, remains registered.

   Trade Mark:  (‘the prior trade mark’)

   Owner: Duncan Financial Advisors Pty Ltd

   Priority date: 6 June 2012

   Services:Class 36: Advisory services relating to financial matters; brokerage services relating to financial instruments; conducting financial feasibility studies; consultation services relating to financial matters; consultations (financial); estimates for financial purposes; financial advisory services for individuals; financial appraisals; financial assessments; financial brokerage; financial consultancy; financial consultation services; financial evaluation (insurance, banking, real estate); financial information; financial information services; financial leasing; financial lending; financial loan services; financial services; personal financial banking services; provision of financial information; real estate assessment (financial); financial brokerage; mortgage banking and brokerage; mortgage brokerage services; mortgage brokering

3. Despite the Applicant’s submissions the examiner maintained the ground for rejection. After five adverse examination reports the Applicant requested to be heard.

4. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 4 July 2018. Richard Holt of Worcestor & Co Solicitors prepared written submissions and spoke at the hearing on the Applicant’s behalf. Below are my reasons based upon the submissions of the Applicant’s solicitor as well as a declaration by the Applicant, described in more detail later in this decision.

5. As a preliminary matter I mention that the focus of this decision is not to review the examiner’s decision and arguments, but rather to consider afresh the ground for rejection that has been raised.

Section 44

1. Section 44 of the Act relevantly provides:

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.

1. 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.

1. 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.

2. Accordingly, applied to the matter at hand the questions for my determination are:

   ·whether the priority date of the Trade Mark is later than that of the prior trade mark;

   ·whether the Trade Mark is in respect of services ‘similar’[1] to those of the prior trade mark;

   ·whether the Trade Mark is substantially identical or deceptively similar to the prior trade mark; and

   ·whether, if the previous questions are answered in the affirmative, I am satisfied that there has been honest concurrent or prior continuous use of the Trade Mark or that other circumstances exist which would make acceptance of the application proper.

   [1] As defined in s 14(2) of the Act, namely the same services or services ‘of the same description’.

3. I consider it straight forward that the priority date of the prior trade mark is earlier than that of the Trade Mark, and that both are in respect of similar services. The Applicant makes submissions that the parties in fact offer different types of loans to the market and in his declaration the Applicant submits that he is willing to limit his specification of services to ‘equipment finance’, which will be discussed later in this decision. For the time being it is sufficient to note that the parties’ services, as they stand, are similar.

4. Substantial identity between trade marks involves a side by side comparison, noting the similarities and differences between them to assess whether a total impression of resemblance or dissimilarity emerges.[2] For convenience the trade marks in issue are reproduced side by side, below.

   [2] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) [1963] HCA 66, [12].

The Trade Mark	The prior trade mark
Jade Finance

1. I do not consider the Trade Mark to be substantially identical to the prior trade mark. In a side by side comparison the stylisation of the letter ‘A’ is likely to be noted, as is (although perhaps to a lesser degree) the device of chevrons becoming sequentially lighter in shade. I note also that the Trade Mark contains the word ‘finance’ whereas the prior trade mark contains the words ‘financial solutions’. Although these words are either utterly descriptive of the relevant services or nearly so (and therefore do little by way of distinguishing trade marks in respect of those services), they do nonetheless provide a further slight degree of differentiation.

2. Deceptive similarity on the other hand relies upon impression rather than a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act, which indicates ‘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’. Deceptive similarity therefore includes either deception (being the creation of an incorrect belief or mental impression) or confusion (which may go no further than perplexing the mind).[3] The causing of confusion is the lower threshold, and a trade mark is likely to do so if the result of its use is that a number of persons are caused to wonder or entertain a reasonable doubt as to whether two services (or closely related services and goods) come from the same source.[4]

   [3] Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, 423.

   [4] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020, [50].

3. The assessment of impression relies upon ‘on the one hand, the impression based on the recollection of [the prior trade mark], that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from [the Trade Mark]’.[5] Relevant also to this assessment is that the impressions left by the trade marks may be imperfectly recalled[6] and that the possible confusion need not be limited to mistaking one trade mark for another but rather wondering whether the trade marks, which might be readily distinguished from each other, are nonetheless associated.[7]

   [5] Shell, supra, [13].

   [6] De Cordova v Vick Chemical Co, (1951) 68 RPC 103, 106.

   [7] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253; Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415; and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407; all cited in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [145].

4. Here, both parties’ trade marks are primarily identified by the word JADE. JADE refers to a semi-precious stone, as well as to a particular shade of green or person’s name (both of which derive from the stone). Although JADE is not altogether unusual in respect of trade marks generally (as at the time of writing there are 106 registered trade marks which contain it), it is distinctive in respect of financial services. It has no descriptive or allusive significance and the only currently registered trade mark in class 36 which contains it is the prior trade mark. Whilst these are not the only factors relevant to the determination of how distinctive the word JADE is in respect of financial services (and therefore how likely it is that different trade marks containing it will be assumed to be associated), they nonetheless give a good indication that the word is unusual in respect of financial services in Australia.

5. Although the prior trade mark contains a degree of stylisation, in that the letter ‘A’ is in a different shade and is formed from an upturned chevron and diamond shape, and there is a small device of chevrons in sequentially lighter shades, these are the types of details likely to be imperfectly recalled by the public. So too are the words ‘financial solutions’ and ‘finance’. Rather, what is likely to be recalled is the element JADE and given both trade marks are primarily identified by that element, there is a tangible risk that a significant portion of the relevant public would at least wonder whether the similar services offered under the two marks originated from the same source. I am therefore satisfied that a ground for rejection exists in terms of s 44(2).

6. In so finding, the Applicant submits in that case that it has made honest, concurrent use of the Trade Mark such that its application should proceed under the provisions of s 44(3)(a). I turn then to consider its evidence of use, summarised below.

7. On 17 January 2013 the company Jade Equipment Finance Pty Ltd was registered. The Applicant owned 8 out of 10 shares in that company and another person, Christopher Phillips, a then director of the company, owned 2 out of 10 shares.

8. On the same day a Trust Deed for the Jade Equipment Finance Unit Trust was executed which named Jade Equipment Finance Pty Ltd as Trustee. The unit holders in that trust were (1) Jeffrick Pty Ltd, a company of which the Applicant was the sole director and shareholder, and (2) Jade Holdings (Qld) Pty Ltd, the ‘controlling mind’ of which the Applicant submits was Christopher Phillips.[8] From inception of the trust the Applicant and Christopher Phillips had a close working relationship, and they conducted the business of the trust using the expressions ‘jade finance’ and ‘jade equipment finance’. The Applicant submits that Christopher Phillips also engaged in other work in the financial sector through the company Jade Consulting (Qld) Pty Ltd[9] using ‘the trade mark logo “Jade Financial Solutions”’, which I take to be a reference to the prior trade mark.

   [8] The unit holdings in the Jade Equipment Finance Unit Trust was altered to incorporate a third party in 2015, however that is not material to the decision here.

   [9] An entity separate to Jade Holdings (Qld) Pty Ltd, but apparently also controlled by Christopher Phillips.

9. Later, on 31 October 2014, both a Unit Holder Agreement (in relation to the trust) and a Shareholder Agreement (in relation to the company Jade Equipment Finance Pty Ltd) were executed. The Shareholder Agreement defined the business of Jade Equipment Finance Pty Ltd as ‘asset finance for cars, motor bikes, equipment, boats, caravans, trucks and personal loans’. I note that both agreements contained non-competition clauses that for the term of the agreements and for 12 months following their cessation neither the trust, Jade Equipment Finance Pty Ltd, nor any of the Applicant’s entities would compete in the business of mortgages or home loans; and neither Jade Holdings (Qld) Pty Ltd nor Christopher Phillips’ entities would compete in the business of asset finance for cars, motor bikes, equipment, boats, caravans, trucks and personal loans. (I mention this here because I consider it may inform the Applicant’s stance that the parties’ operate in separate sectors).

10. On 28 February 2017 Christopher Phillips resigned as director and secretary of Jade Equipment Finance Pty Ltd and sold his two shares in that company to the Applicant, making the Applicant the sole director and shareholder. On the same day Christopher Phillips’ company, Jade Holdings (Qld) Pty Ltd, sold its units in the trust to the Applicant’s company, Jeffrick Pty Ltd.[10] These sales were executed by way of a Sale Agreement which, among other clauses, specified that the parties would respect and not infringe upon each other’s trade marks, web sites, trading names, staff or business operations.

    [10] The third party referred to in footnote 8 retained ownership of its units in the trust.

11. In May 2017 Christopher Phillips sold the business of Jade Consulting (Qld) Pty Ltd to Duncan Financial Advisors Pty Ltd, and it is the Applicant’s understanding that as part of that sale agreement he also sold the rights to the prior trade mark (which is now in the name of Duncan Financial Advisors Pty Ltd).

12. Jade Equipment Finance Pty Ltd, as trustee for the Jade Equipment Finance Unit Trust and with the Applicant as its sole director and shareholder, has continued to carry on its business.

13. Turning to the discretionary provisions of s 44(3) I firstly do not consider that the honest concurrent use provision of s 44(3)(a) would be the appropriate mechanism by which to achieve registration, although I consider and discuss it below. This is not a case of separate entities carrying on business independently of each other under similar trade marks. Rather, the Applicant and a person submitted to be associated with the predecessor in title to the prior trade mark carried on a joint operation, and the benefit of use inured to that business. I would consider s 44(3)(b) to have been the more appropriate provision to pursue, although as will be seen I am not satisfied that either should be applied.

14. The Applicant points to the five criteria identified in John Fitton & Co Ltd’s Application[11] for the application of honest concurrent use provisions. They are not exhaustive criteria but are a useful guide,[12] listed below:

    ·     the honesty of the concurrent use;

    ·     the extent of the use in terms of time, geographic area and volume of sales;

    ·     the degree of confusion likely to ensue between the marks in question;

    ·     whether any instances of confusion have in fact occurred; and

    ·     the relative inconvenience that would ensue to the parties if registration were to be permitted.

    [11] supra, 112.

    [12] McCormick & Co Inc v McCormick [2000] FCA 1335, [30].

15. As already stated the primary difficulty the Applicant faces is that the use made of the word ‘Jade’ in respect of financial services was not concurrent with the owner of the prior trade mark but rather in concert with it (assuming for the time being that the owner of the prior trade mark at the relevant time was indeed an entity controlled by Christopher Phillips). Proving genuine use and honest adoption of the Trade Mark does not change this fact. Moreover the prior trade mark was applied for in 2012, indicating that it was not newly adopted with the formation of the business partnership but was already being applied to financial services by the then owner[13] of the prior mark.

    [13] The prior registration was assigned to its current owner on or about 9 June 2017.

16. A second significant difficulty is that there is for the reasons already discussed a high degree of confusion likely between the parties’ trade marks. As to the respective activities of the parties, the Applicant submits that it is primarily involved in the provision of caravan finance, truck finance, boat loans and marine finance, motor bike loans and car loans; whereas the owner of the prior trade mark is primarily involved in the provision and refinancing of home loans, building and construction home loans, commercial property finance and reverse mortgages. According to the Applicant ‘these distinct differences in the fields of business of the trade marks ensures no public confusion’.

1. The first problem with this submission is that s 44 is concerned with what a party might notionally do within the bounds of its trade mark registration,[14] and here both parties notionally offer a broad range of similar services such as financial advisory services, loan financing and financial consulting. Even were the Applicant to restrict its services to ‘equipment finance’, they would still be encompassed within the services specified in the prior trade mark, such as ‘financial lending’, ‘financial loan services’ and ‘financial services’. Secondly, I do not believe the public would consider entities involved in the provision of equipment finance are necessarily separate to those involved in the provision of home loans and mortgages. Financial entities commonly offer both.

   [14] See Woolworths at [50] wherein French J states at (v) that ‘the question of deceptive similarity must be considered in respect of all goods or services coming with the specification in the application and in respect of which registration is desired…’, citing Mason J in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43.

2. The Applicant also declares that he has no knowledge of any confusion occurring in the minds of the clients of the businesses conducted by himself and Christopher Phillips, or with Duncan Financial Advisors Pty Ltd since it bought the prior trade mark and associated business. However it is not only confusion in the minds of the businesses’ clients that is of concern, but also the broader public who may not reach the stage of becoming a client but nonetheless may become confused when, for example, investigating potential service providers.

3. As to the relative inconvenience, I appreciate that the Applicant faces significant inconvenience. He has been involved in the provision of services under names incorporating the name ‘Jade’ for more than five years, he employs five staff and the documents and promotional material of the Jade Equipment Finance Unit Trust all display that name. However, I am also aware that I do not have the benefit of a contradictor here and the inconvenience to the owner of the prior mark is largely unknown – although given the prior trade mark was applied for in 2012, before any partnership between the Applicant and Christopher Phillips, it may be assumed that the inconvenience would be at least equal to (if not more than) the Applicant’s.

4. Bearing all of these factors in mind and balancing the interests of the Applicant with the interests of the owner of the prior trade mark, I do not consider it appropriate to apply the provisions of s 44(3)(a).

5. Nor do I believe that other circumstances exist which would make registration proper. As already indicated, I consider this a case more appropriately contemplated in the context of s 44(3)(b). However, the same factors which indicate that s 44(3)(a) should not be applied also indicate that the circumstances under which registration of the Trade Mark is sought would not make registration proper. I note also that the Applicant has not provided a letter of consent from the owner of the prior trade mark. The Applicant has declared that the close cooperation between his entities and those of Christopher Phillips was made known to the purchaser of Christopher Phillips’ business, who had no objection to the conduct of the Applicant’s business and his continued use of the words ‘jade finance’. Given this, a letter of consent would appear to be the most appropriate avenue open to the Applicant. That none has been provided could indicate that even if the application were to be accepted, there is a likelihood that it may be opposed. The potential for further effort and expense in an opposition is another (albeit speculative) factor weighing against acceptance of the application.

Decision

1. I am satisfied that there is a ground for rejection under s 44(2) of the Act in relation to the Trade Mark. I am not satisfied that any of the provisions of s 44(3) can be applied in order to overcome that ground for rejection.

2. Section 33 of the Act relevantly provides:

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

1. Given I am satisfied there is a ground for rejection and the Applicant is unable to overcome it, I must reject the application in accordance with s 33(3) of the Act, which I now do.

Nicole Worth

Hearing Officer

Trade Marks Hearings

14 September 2018