Flight Centre Pty Ltd v World Flight Centre Pty Ltd

[2003] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Flight Centre Pty Ltd to registration of trade mark application 890683(39) - GLOBE FC DEVICE plus WORLD FLIGHT CENTRE - filed in the name of World Flight Centre Pty Ltd.

Date of Decision:

20 October 2003

Delegate:

Terry Williams

Representation:

Opponent: Celia Cumming, solicitor, Freehills solicitors

Applicant: written submissions

Decision:

S 52 opposition: s 60 ground fails on lack of deceptive similarity. Registration to proceed

Background

1. Trade mark application 890683 was filed by World Flight Centre Pty Ltd (the applicant).  It consists of the following trade mark, sought to be registered for services in class 39 described as "travel agency - international and domestic airline ticketing".  

 

1. The application has been accepted for registration but this is opposed by Flight Centre Pty Ltd (the opponent).  The opponent has based its opposition entirely on its use of the words FLIGHT CENTRE as a trade mark.  It has filed, and properly served, evidence of use of a relevant trade mark.  It has also filed, in a subsequent proceeding, an application to register those words as a trade mark.  That application, I note, faces an objection because it is said by the examiner to be deceptively similar to the presently-opposed application, among other failings.

2. The applicant in the present matter, for its part, has filed evidence in answer to the opposition.  However, that evidence was not served on the opponent within the proper time and is not material on which the applicant can now rely. 

3. In due course the matter came on for hearing and I am now to decide the opposition under delegation from the Registrar of Trade Marks.

4. At the hearing, the opponent appeared by video conference, represented by its solicitor, Celia Cumming.  Mr Robin Raju, a principal officer of the applicant, attended by telephone as an observer only, relying on written submissions filed beforehand, which Ms Cumming addressed in her submissions.

Issues and Decision

1. The single ground of opposition relied on by the opponent goes to s 60 of the Trade Marks Act 1995.  This reads:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10: "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".

Note 2:  For priority date see section 12.

1. Before turning to the specifics of that provision, I think it will be useful to look at the facts - the context in which the competing trade marks exist.  The opponent's evidence makes it clear that the words FLIGHT CENTRE are used in a number of ways.  The most familiar, from the trend of the evidence, is as a trade mark resembling the following:

 

1. The opponent's evidence also shows that it uses the words FLIGHT CENTRE as the main identifier of at least some of its travel agents, in signage that, sometimes, does not feature the device of a jet airliner.  What role the opponent intends colour to play in this is difficult to say but the use of the colour red is, to my eye, a very striking feature.

2. The applicant's submissions assert that the words "flight centre" are generic in the industry.  However, there is no evidence on which the applicant can rely to show that these words are ordinarily used to indicate a travel agent who specialises in airline bookings, discount or otherwise.  The trend of the opponent's evidence, limited as it is, is in the other direction entirely.

Main issue - deceptive similarity of marks

1. I have already noted the relevance to s 60 of the terms of s 10: "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". This becomes the threshold issue for s 60 purposes.

2. I am not called on to decide if the opponent has exclusive right to the trade mark "Flight Centre" for the purposes of its own application, which is still pending. It will be sufficient to activate s 60 for me to find that it has used those words as a trade mark, to distinguish its booking service from those of others. This is clear from the evidence.

3. On the other hand, Ms Cumming, in her submissions, very much glossed over the variations in the marks actually used by the opponent.  She referred to them collectively as variations on the use of the FLIGHT CENTRE mark.  The usage, however, is most typically with a picture of what appears to be a Concorde aircraft.  I think that most people in this country would appreciate that the Concorde is a commercial airliner, used by at least one airline to provide a high-speed transcontinental air service.  Its presence in - or, in Ms Cumming's view "with" - the opponent's trade mark is something that I cannot ignore, but nor, on the other hand, can I take it as a decisive difference in the comparison.

4. Ms Cumming noted the importance of the word elements of the competing trade marks.  There is evidence that the service of a travel agent is often accessed via telephone bookings or via the internet.  Some idea of the magnitude of the opponent's business can be gleaned by the fact that it made over a million telephone sales in the 2000-2001 financial year.  Similarly, in the twelve months prior to the priority date of the opposed application, there were 63 million hits on the opponent's Australian website.

5. The same evidence shows that a search for "flight centre" in an online telephone directory, restricted to a small enough area, in this instance, to Parramatta, New South Wales, will reveal the applicant and the opponent and no others.  However, the evidence is silent about the general extent to which searches based on terms with a very strong descriptive import will return hits.  Nor does it show what the result might be for a larger area.  Therefore, I think this aspect of the evidence may be somewhat circular or self-serving and is not something that I should trust to bear a great deal of weight.

6. Ms Cumming went on to note that there was a second level of similarity between the applicant's and opponent's trade marks.  The opponent's trade mark included, or as she put it, was used with, the tag-line "World's Number One Discount Flight Specialist" where the applicant used WORLD FLIGHT CENTRE as an integral part of its trade mark.  Both, she noted, therefore included the word "World".  Both, moreover, featured aircraft devices.

7. While there is no doubt about the correctness of these observations, the weight that I can give them is minimal.  The words "World's Number One Discount Flight Specialist" are so clearly advertising puffery that I cannot think they give weight to the opponent's case.  The applicant uses the word World in a different context.  I do not think the opponent's advertising puffery can shed any great light on the overall level of deceptive similarity.  I also think it is somewhat ambitious for the opponent to claim, on the one hand, that its trade mark is FLIGHT CENTRE, while, a few breaths later, suggest that the tag-line is inseparable from, yet not part of, the trade mark.

8. The inclusion of an aeroplane in both trade marks is hardly significant given the limited services specified in the application.  Equally, within the limit that both aeroplanes are jets, they are quite noticeably different jets.

9. Finally, Ms Cumming notes that the letters FC within the applicant's mark stand for "flight centre".  The only way that this is seen to be so, in my view, is in the limited context where the globe device is simultaneously read as "world", a situation that is likely to arise because the words "WORLD FLIGHT CENTRE" also appear in the mark.  In the absence of the words the derivation of the letters FC would not be likely to occur to most viewers.  Either way, however, the letters FC are an obvious visual difference between the marks.

10. Ms Cumming noted that the opponent is a very large organisation with a very valuable trade mark, of considerable reputation.  Even so, were it clear that the ordinary words "flight centre" were indeed a generic term, the applicant's case would be strong.  However, the only evidence shows that the opponent has a trade mark that has acquired a very extensive reputation, and that the words FLIGHT CENTRE are a central plank of that reputation, although the words in question are clearly very descriptive.  The applicant has failed to bring in any evidence to support its claim that they are a term in ordinary use to describe the selling of discount airfares.  It would not be safe for me to make an absolute finding on that question but the words are a clear indication that the travel agent in question specialises in airline tickets.  Against that background, the words are, taking the evidence of the opponent and the lack of evidence from the applicant together, well on the way to indicating the travel services of the opponent. 

11. Ms Cumming argued that the opponent's mark will readily be abstracted to simply FLIGHT CENTRE, just as the opponent's mark in Re Application by Hardings Manufacturers (1987) 8 IPR 147 was abstracted to GOLDEN CRUMPETS. That is obvious. However, I observe that the opponent is very far from establishing that the words FLIGHT CENTRE are the essence of the applicant's mark

12. Ms Cumming argued that the notoriety of the opponent's trade mark(s), together with the other aspects to which she referred, "will increase the likelihood of (consumers) being caused to wonder whether it might not be the case that the two services came from the same source".  However, it may be that the more widely the opponent is known, nationwide, as FLIGHT CENTRE, plain and simple, and the more widely recognised are those words seen to be its trade mark, the less likely is it that clearly different trade marks will be seen as denoting the same trade source.  Reputation in a trade mark can thus be a double-edged sword and may either reinforce or mitigate the effect of differences.

13. I note that this is an issue touched on by Bennett J in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901. At paras 89 and 90 she observed:

    ... When comparing two words which are both well known, one as a word used in ordinary parlance and the other a word associated with a particular person, it is more difficult to establish a likelihood of mistaken impression.

    90  In Johnson & Johnson[1], the court dealt with a submission that, with a famous mark, the likelihood of imperfect recollection should be discounted.  The evidence there did suggest that perception and recognition do not involve the whole word so much as certain features which are then matched to that which is contained in the memory, so that the word is then recognised.  There is no such evidence in this case and the situation is reversed, in that the evidence leads to the conclusion that, as between 'Thorpedo' and 'Torpedoes', the former was, at the relevant date, the more well known and, it could be said, famous.

    [1] Johnson & Johnson v Kalnin, 26 IPR 435

14. In the present case, it is not so easy to distinguish what the court said in Johnson & Johnson.  However, neither Bennett J nor Gummow J have expressed any criticism of the submission itself.  There is now no longer any doubt about the context in which reputation is relevant[2].  On balance I think that, to the extent that the opponent is or may be known to be the principal user of the otherwise descriptive words FLIGHT CENTRE, the obvious visual differences between that trade mark and the presently-opposed one probably reduce, rather than increase, the risk of either deception or confusion.

    [2] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539,

15. I come now to a point at which I must disagree with Ms Cumming, both on principle and in application.  She has relied, for her formulation, on law much as it arose under the 1955 legislation, specifically Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. This was updated by French J in Registrar of Trade Marks v Woolworths (1999) 41 IPR 411. While the standard has not shifted, the onus has. The mere possibility that persons might be caused to wonder might have been fatal to a case where the applicant has an onus to demonstrate registrability. However, such is no longer the case, due to the interaction of sections 55 and 60. Registration must proceed unless, as a threshold test, I am satisfied that there is deceptive similarity between the mark applied for and one or more of the opponent's trade marks.

16. In Woolworths, supra, French J was addressing this test as manifested in s 44 and the same approach can be adopted for s 60. In that case, at para 43, French J noted:

    For there to be a deceptive similarity ... the degree of resemblance must be such that the service mark is "likely to deceive or cause confusion".  The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5 per Kitto J.

17. Subsequently, at para 50, he noted and recast, "absent the imposition of an onus on the applicant", a classic formulation from that case.  He stated:

    (i)  To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

    (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.

18. I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a less than significant number of people would be left in doubt.  Firstly, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the "ordinary" person must be a "reasonable" one.  Secondly, the requirement that the number of people affected by doubt or confusion be "substantial" has been repeatedly endorsed.  The benchmark comes from Smith Hayden's application (1946) 63 RPC 97 and Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300 at 305, where Kitto J himself repeated and expanded what he said in Southern Cross.  He added the reference to "substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

19. True it is that FLIGHT CENTRE is an element of that mark.  That alone is not necessarily enough to establish deceptive similarity (Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA).  Also relevant is the infringement matter in SAP Australia Pty Ltd v Sapient Australia Pty Ltd at both the initial decision and on appeal[3].  In the initial decision, Wilcox J commented at paras 40 and 41:

    The task for the court is to determine whether the use by Sapient Australia of the word "Sapient", standing alone or with an additional word such as "Corporation" or "Australia", is deceptively similar to SAPIENT COLLEGE.  I think it is not, whether or not the respondent's word is, or words are, printed in block letters.

    I reach this conclusion because of the contextual significance of the word "College".

    [3] SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 25 IPR 169 and 48 IPR 593

20. What then is the context of the words FLIGHT CENTRE in the present trade mark?  As a package, the applicant's trade mark does not look particularly like the words FLIGHT CENTRE on their own, nor can it be said that the words emerge from the totality with any force.  They are, as I have said, highly descriptive.  What emerges, on recollection just as with a side by side comparison, is the extent of the differences between the two marks.  When I allow for ordinary levels of imperfect recollection, I do not see the differences as being sufficiently diminished as to allow for a real likelihood of confusion. 

21. Nor do I accept that there is a reasonable likelihood that, despite the differences, some form of connection will be inferred, even when I also allow for some imperfection of recollection.  I think that the correct approach is that no problem will exist under s 10 unless the shared elements are seen to be sufficiently prominent and memorable and also to be serving a trade mark function in the opposed application.  The present is not a simple case of PAN - HYPERPAN[4], or more relevantly, FLIGHT CENTRE - WYANDRA FLIGHT CENTRE[5]. What is at issue here is the extent to which the descriptive words FLIGHT CENTRE, themselves a part of the name WORLD FLIGHT CENTRE, and very much subordinate to the device element, will give rise to reasonable doubts about a common trade origin. Absolute deception need not arise, and a reasonable level risk of confusion will suffice. Even so, arguments for confusion seem artificial and abstract rather than real or tangible. Whatever rights the opponent may have to obtain registration of the words FLIGHT CENTRE for its own separate use, there is insufficient evidence here to suggest the public would infer a monopoly to extend to the use of those words in the present context. Deceptive similarity is not established and the ground under s 60 likewise fails.

    [4] See the list of examples and authorities at p 181 of Shanahan's Australian Law of Trade Marks and Passing Off, 1990 Edition.

    [5] See Application by Hardings Manufactures Pty Ltd (1987) 8 IPR 147, to which Ms Cumming referred

Conclusion

1. The opponent has not established the ground on which it relies.  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 shall not occur until the appeal has been decided or discontinued.  I decline to award costs as the applicant has made little effective contribution to the proceeding.

T. E. Williams

Hearing Officer