Fpinnovation Pty Ltd - [2012] ATMO 74

TRADE MARKS ACT 1995

DECISION OF A DEPUTY REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark numbers 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227, 1333731, 1334281, 1335206, 1336243, 1337662, 1347918 and 1349264 - KFH, KUWAIT FINANCE HOUSE and 12 others - in the name of fpinnovation Pty Ltd.

deputy registrar:

Michael Arblaster

Representation:

Trade Mark Owner: Michael Hall of Counsel and Andrew Gregory, Director of fpinnovation Pty Ltd.

Decision:

2012 ATMO 74

ss 38 & 84A revocation. Ground under sections 43, connotation in a trade mark, made out for thirteen of the fourteen trade marks. S33 considered - Registrar’s limited ability to question the applicant’s claim to ownership and intention to use upheld. fpinnovation Pty Ltd has done enough to support the claims to ownership and intention to use for the purposes of examination. Revocation action in relation to the thirteen trade marks which should not have been accepted or registered is considered reasonable. All thirteen revoked trade marks returned to examination.

Background

This decision with reasons arises out of a hearing into proposals by the Registrar of Trade Marks to revoke the registration / acceptance of a number of trade mark applications and registrations in the name of fpinnovation Pty Ltd (fpinnovation). The proposals to revoke are pursuant to ss 38 & 84A of the Trade Marks Act 1995 (the Act). The relevant details of the nine registrations and five applications, which were filed between 21 April 2009 and 5 March 2010, are shown in the table below.

Trade Mark Registrations:

TM NO	TRADE MARK	CLASS: GOODS/SERVICES
1295224	KFH	36: Insurance; financial affairs; monetary affairs; real estate affairs
1300339	Kuwait Finance House	36: Insurance; real estate affairs; none of the aforementioned relating to financial or monetary affairs
1314372	amislamic	36: Insurance; financial affairs; monetary affairs; real estate affairs
1323584	GFH	36: As above
1323765	GFHOUSE	36: As above
1326770	mashreq	36: As above
1332227	FIRST GULF	36: As above
1333731	cimb islamic	36: As above
1334281	rhb islamic	9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Trade Mark Applications:

TM NO	TRADE MARK	CLASS: GOODS/SERVICES
1335206	aminvestment	36: Insurance; financial affairs; monetary affairs; real estate affairs
1336243	adib	36: As above
1337662	zaid ibrahim	35: Advertising; business management; business administration; office functions 36: Insurance; financial affairs; monetary affairs; real estate affairs; 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
1347918	saadiq	36: Insurance; financial affairs; monetary affairs; real estate affairs
1349264	36: As above

It is worth recounting some of the history leading up to the proposals to revoke not only because the number of apparently unrelated marks involved is highly unusual but also because the evidence in examination is relevant to these proceedings.
Mr Gregory, a Director of fpinnovation, requested that the Registrar revoke acceptance of an unrelated trade mark 1263834 (at right), on the basis that the Arabic script translated into National Bank of Abu Dhabi, that a translation of the words had not been sought in examination and that use of the trade mark would be contrary to law because the Bank of Abu Dhabi, which was the applicant, did not have the requisite authority in Australia to call itself a bank. A delegate of the Registrar decided not to propose revocation of registration. He noted that the Bank was a highly reputable international organisation which could be expected prima facie to have in-house legal counsel and to ensure that it complied with Australian law. He concluded that he could not be satisfied that it was reasonable to revoke in these circumstances. Nonetheless, Mr Gregory was most persistent in arguing that it was in the public interest for the mark to be revoked, even after the trade mark became registered. Intending to make a file note about one of these later conversations the delegate conducted a search of ATMOSS to identify the relevant file. In doing so he discovered a second NBAD application owned by fpinnovation. The delegate conducted an owner search on ATMOSS and discovered some 36 applications and registrations. Not all of these are the subject of these proceedings. Some had not been accepted, some do not (at least clearly) conform to the general pattern outlined below and some others had been entered on the Register more than 12 months before hand[1].
[1] s84A(4) limits revocation of registration to those marks for which a notice of intention to revoke issues within 12 months of being entered on the Register.
Although there is some variation in specifics, a number of themes emerge. In most cases, the internet search, which is routinely conducted in examination, identified the existence of a significant overseas institution, which as a prominent part of its marketing, identified Sharia-compliant finance as one of its service offerings. The searches were mostly a Boolean combination of the mark in question with the word “finance” and even a casual glance at the results reveals significant activity by (generally) a financial institution with the name or acronym that is the subject of the application being examined. To take one example the headline information for CIMB reveals that it is one of Malaysia’s, and perhaps even one of South East Asia’s, largest banks, with branches in at least Singapore and Thailand as well as Malaysia. It also reveals that CIMB specialises in and has won awards for the provision of Islamic finance. Significantly, it is not apparent that any of the searches revealed use in Australia, nor did any of the examiners reference any evidence of a reputation in Australia associated with these institutions[2]. Generally, the marks were accepted at first report,[3] despite notations on file about the descriptive nature of some of them and about the extensive overseas use of the signs (in one case the examiner posited that such use was trade mark use albeit overseas of a bank of the same name).
[2] That said, none of the searches were limited to Australian web sites, and examiners do not search for reputation because this is not material to their decision.
[3] A s 41 objection was taken against 1300339 Kuwait Finance House in the first report and only removed in the 4^th report once financial services were excluded.
In any case, the marks were referred to Mr John Braybrooks, Deputy Registrar of Trade Marks, to consider possible revocation action. On 12 August 2010, he wrote two letters to fpinnovation. The first letter contained notification of a proposal to revoke registration of trade mark numbers 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227, 1333731 and 1334281. The second, essentially very similar letter, notified of the proposal to revoke acceptance of trade mark numbers 1335206, 1336243, 1337662, 1347918 and 1349264. In the cover letter conveying the two notices, Mr Braybrooks indicated that Mr Gregory’s attempt to have the NBAD mark revoked “in the public interest … whilst on the other hand applying for it yourself and claiming to be its owner” raised doubts about his bona fides. Both notices pointed to the fact that, with one exception, the trade marks at issue were the names of “major, internationally recognised Islamic banks”. The exception, zaid ibrahim, being the name of a “major, internationally recognised Islamic law firm”. Mr Braybrooks continued:
A review of filings by fpinnovation Pty Ltd shows a pattern of trade marks for the names of major, internationally recognised Islamic banking institutions. This raises questions about the applicant’s relationship with these companies and what has transpired to support the applicant’s claim to be owner of these trade marks.
Section 27 of the Trade Marks Act 1995 sets out the basis for making an application for registration. In line with Section 27, an applicant applies for a trade mark on the basis of being the owner. The information, [that the trade marks are names of Islamic banks], easily available though simple research, raises strong doubt about the applicant’s ability to claim ownership.
Another condition under Section 27 for making an application for registration is that the person is using or intending to use the trade mark. The information above also raises doubts about the applicant’s bona fides in using or intending to use all of these marks given they represent a wide number of different international banks.
Furthermore, according to Section 43 of the Trade Marks Act 1995, a ground for rejection exists if the trade mark is likely to deceive or cause confusion. I believe that customers in Australia for the applicant’s services are likely to form a view that the applicant has a licensed business connection with these banking institutions. This is most likely to be true for Islamic Australians. If there is no such connection, there is likely to be deception and confusion in the market place when these marks are used in relation to the nominated services.
Accordingly, it appears that if the Registrar had been aware of the pattern revealed through this review, then both elements of section 33(3) would have been met. In that case the Registrar should have rejected the applications and the trade marks should not have been accepted or registered.
Taking account of all circumstances now known to me, I believe these trade marks should not have been accepted or registered. I further believe that it is reasonable to propose revocation of [acceptance or] registration.
If the applicant can supply documentation supporting its bona fides in relation to use of these marks or its claim to be an authorised user, the revocation action will be re-considered.
On behalf of fpinnovation Mr Gregory provided several assurances to Mr Braybrooks that documentation establishing a connection with the relevant institutions could and would be provided. The time to do so was extended on three separate occasions but no documentation was forthcoming. After a number of further iterations of correspondence, Mr Gregory did provide a declaration pursuant to Reg 4.8(3) and s 27. In that document he reiterated the claim that fpinnovation was the owner of the marks in question and declared that fpinnovation had an intention to use the trade marks in relation to all the services specified. Mr Braybrooks indicated that without supporting evidence he was still not satisfied of fpinnovation’s bona fides and fpinnovation requested to be heard in relation to all of the proposed revocations.
It is also relevant to these proceedings that, at the time when the notices of intention to revoke were issued, AMMB Holdings Berhad had lodged an opposition[4] against trade mark 1335206 aminvestment (which is subject to these proceedings). On 12 January 2011 that opposition was withdrawn. One further opposition has been lodged by the firm Zaid Ibrahim against a mark of that name (1337662). This opposition has been suspended pending the outcome of these proceedings.
[4] On 29 July 2010.

Nature of the proceedings

Mr Gregory raised a number of preliminary matters prior to the hearing. Although, at hearing, Mr Hall indicated that he was not intending to pursue them, several are nonetheless relevant to clarify the Registrar’s practice in the conduct of proceedings before her.
The main preliminary matter was a request by fpinnovation for me to:
· issue a direction that Mr Braybrooks’ notices, and all the material on which he based his decision to propose revocation, should be tendered by Mr Braybrooks as sworn evidence, and that
· I subpoena Mr Braybrooks to appear before me at hearing and be available for cross-examination.
I declined to do either, giving the following reasons:
First, I do not consider that Deputy Registrar Braybrook’s reasons, set out in his notice of intention to revoke, constitutes “evidence”. As I explained in my letter, that material conveys the Deputy Registrar’s proposal to revoke and provides information about the reason for that intention. The Deputy Registrar has formed a view that the applications were not made in accordance with s 27 of the Act and that a ground exists under s 43 for rejecting the applications. His letter informs you that if the Registrar is satisfied about either matter then s 33 dictates that the Registrar must reject the applications. The Deputy Registrar indicated that on the information available to him both elements of s 33(3) have been met and that the trade marks should not have been accepted or registered. He provided information which sets out the basis of that belief. He wrote to you seeking further information or submissions to inform his belief. This provided an opportunity for you to identify any circumstances that he should take into account. You have asked to be heard and the decision is no longer his but mine.
Secondly, as I also explained in my letter, in making a decision, the Registrar may consider any material in her possession. The Deputy Registrar’s “notice” has no more or less standing than any other material on file. It evinces the Deputy Registrar’s proposal and that is not at issue here. The hearing is not an investigation into the thought processes of Deputy Registrar Braybrooks. Rather, I am charged with deciding whether or not the respective trade marks should have been accepted or registered and if not, whether or not it is reasonable to revoke that acceptance or registration. In reaching this decision I will consider the applicability of the various provisions of the Act, take account of material on the files, which I note that you have obtained through FOI, and consider any further evidence, information or submissions that you wish to make.
In relation to the conduct of the hearing and my decision I note:
·     The matter is to be determined on the basis of material on the file, and submissions by fpinnovation and its representatives. None of the administrative decision makers previously involved is represented in the proceedings and there is no presumption in favour of the correctness of their position. This applies equally to an examiner’s decision to accept the application and the Deputy Registrar’s position that the applications should not have been accepted.
·     The material on the file, the results of research and internet searches is available to inform my decision. While it is not ‘evidence’ in the sense of a sworn deposition it is available to fpinnovation and any of it could have been contested. I note that it is not the information itself which is contested so much as the Registrar’s interpretation of it and the Registrar’s right to enquire into the matters which that interpretation raises.
·     My role in this matter is to determine whether the application should succeed on its merits not review whether an administrative officer has lawfully discharged his duties.
As Deputy Registrar, I have statutory powers in relation to the matter and it came before me at hearing in Canberra on 17 March 2011. Mr Hall of counsel appeared on behalf of fpinnovation. fpinnovation had an opportunity to provide further submissions after the hearing and most recently in relation to both 1-800-FLOWERS.Com Inc v Registrar of Trade Marks [2012] FCA 209 and Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769.

Evidence

The evidence consists of:
· Statutory Declaration of Andrew William Gregory dated 9 October 2010.
· Declaration of Andrew Gregory dated 17 March 2011, with Exhibits A to U and Confidential Exhibit X.
Before submitting Exhibit X to me for consideration Mr Hall explained that it was the subject of a Confidentiality Agreement between his client and a third party and requested that I accept it in confidence. I agreed to do so, and whilst noting that I could not bind an FOI delegate, I annotated the document “Accepted in Confidence” so that this agreement would form part of any future deliberations under the Freedom of Information Act 1982.
I have also considered argument tendered in relation to statutory interpretation (primarily in a letter of 24 January 2011) and submissions made during the hearing – of which a written outline was provided to me.

fpinnovation Pty Ltd and its business

fpinnovation was incorporated in 2006 and Mr Gregory describes its business as involving the development “of innovative financial products that can be marketed to wholesale and retail customers.” The evidence establishes that since that time fpinnovation has engaged in a number of business development activities.
These have included the development of Sharia-compliant financial products including those suitable for real estate financing and insurance. These activities have included presentations to conferences, and to Federal Ministers. They can best be described as lobbying or perhaps market development or market readiness activities. There is a declaration that the company has “invested many hours and significant resources over five years in developing its financial products and in preparing to bring them to market.” The evidence does not quantify this activity or attempt to provide any detailed corroborating evidence.
While not insignificant, all this activity can be described as pre-commercial. However, in paragraph 11 of the declaration Mr Gregory attests to an “intention that the company or a related company under license would provide financial services products in Australia … under one or more of the company’s registered trade marks.” The evidence supports a contention that Mr Gregory has visited overseas countries with a view to conducting negotiations and Exhibit X provides corroborative support for a contention that fpinnovation is seeking to establish joint ventures to bring the products to market.
The specifications generally cover a wide range of financial and insurance services together with real estate affairs which are clearly at least sometimes related to Sharia-compliant financial products. For the sake of convenience I will refer to these collectively as “finance” or “financial products”.

Statutory Framework

The relevant provisions of the Act are as follows:
·     ss 38 and 84A relating to revocation of acceptance and registration respectively,
· s27 which deals with the making of an application,
·     s33 which governs the making of a decision at examination and specifies that an application must be rejected if not made according to the Act.
·     r4.8(3) which inter alia deals with a situation where the delegate reasonably expects the applicant does not intend to use in relation to all the goods specified in the application, and
· s43 which stipulates that if, because of some connotation inherent in the trade mark, use of it is likely to deceive or cause confusion then the application must be rejected.
The provisions of ss 38 and 84A mirror each other in important respects. In both the Registrar must be satisfied that the trade mark should not have been accepted or registered, taking account of all the circumstances that existed when the decision was made (whether or not the Registrar knew then of their existence). If the Registrar is satisfied of this then she must also consider whether revocation is reasonable (again taking account of all the circumstances).

Submissions

Mr Hall argued that neither s 38 nor section s 84A was properly invoked because:
·     the notification of proposal to revoke registration failed to identify the marks in question;
·     there was no allegation of error in examination;
·     absent an opposition, none of the grounds cited by the Deputy Registrar were properly grounds which could lead to rejection
In the alternative Mr Hall argued both that the respective grounds could not be made out, and that it was not reasonable to revoke because the proper place for considering the issues in question is opposition. He drew my attention to the Explanatory Memorandum in which the Minster indicated that revocation of registration was not intended to resolve competing claims to ownership. Finally, he argued that under the circumstances of this case, revocation of registration was not reasonable because a registered trade mark was personal property and should not be cancelled lightly because of its impact on the owner and on third parties. In relation to the question of seriousness and reasonableness he referred me to an earlier revocation of registration matter I have decided, Re Bobart (2010) 88 IPR 357. I consider this issue later.

Discussion

Invalid Notice

Mr Hall for fpinnovation alleges that one of the notices, that proposing revocation of registration dated 12 August 2010, was invalid because the notice states that it applies to all of the applicant’s registered trade marks (of which there were then thirty)[5]. Mr Hall cited Re Method Constructions Pty Ltd (2009) 84 IPR 598 in which Hearing Officer Thompson indicated that the notice in question was defective because it did not give the applicant enough information to know what evidence to put forward or what it was that he was expected to refute.
[5] A further mark was registered in August 2011
I observe that the two revocation notices, one relating to acceptance and the other to registration, went under cover of a letter of the same date and that although the notice of intention to revoke acceptance included the trade marks in question in the header, this was not the case with the notice relating to revocation of registration. I agree that the notice in question could have been better expressed. However, it identified nine registered trade marks, in a table, both by name and number, and the text which followed referred on a number of occasions to “these trade marks”. I do not think the context readily lends itself to a construct that reference was being made to all thirty registered trade marks or to any subset other than the list included in the notice. This conclusion is reinforced by a letter from Mr Gregory several weeks later[6] in which he refers clearly to the proposal to revoke nine trade marks (and correctly identifies them). That letter also demonstrates a clear understanding that the issues in question were whether there was a connection with the respective entities, and whether fpinnovation was entitled to claim ownership and had an intention to use the trade marks. In fact, by facsimile on 9 September Mr Gregory sought additional time to present “persuasive information” from overseas establishing our ownership of these trade marks”. In 16 other pieces of correspondence Mr Gregory makes reference to the proposal to revoke the registration of the nine trade marks in question and addresses the three grounds[7] raised by Deputy Registrar Braybrooks.
[6] Dated 9 September
[7] Strictly speaking only that under s43 is a ground of rejection, however s33 stipulates that an application be rejected if it is not made in accordance with the Act and claims to both ownership and intention to use are prerequisites for making an application. I will therefore use the word “ground” loosely to refer to all three.
I am satisfied that fpinnovation was in no real doubt about the scope or basis of the proposed action.

The scope and operation of ss 38 and 84A

Mr Hall argued that the operation of ss 38 and 84A was confined to circumstances of clear error in examination and that it was not intended to “resolve competing claims of ownership”, rightly pointing out that the Act provides an opposition process where there is a contradictor for such matters. Thus as Mr Hall has pointed out the Office has adopted a policy of not applying s 84A “in cases of dispute as to ownership where there are competing claims to be owner: Re Bobart (2010) 88 IPR 357 at [21].”
However, Mr Hall goes further and argues that ss 38 and 84A “arise only if the original acceptance was infected with error” and “in this case no error is alleged”. I cannot agree with the implication of these two statements which seems to be that in order to invoke these sections the Registrar must identify an error during examination. This was the case under the formulation of section 38 prior to March 2007[8] when it was amended to its current form. Although Mr Hall is correct that “ought not to have been accepted/registered” carries the corollary that the acceptance or registration was “in error”, it does not require the identification of any particular error during the course of examination. Indeed, both sections expressly refer to the possibility of information “which was not known” to the Registrar at the time of the original decision being the basis for a decision under these sections. Moreover, the Explanatory Memorandum says at [15] that “[The circumstances the Registrar may take into account] may include an error of judgment or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination…” and that “The Registrar is not limited in what he or she may consider”. (See also Katzmann J in 1-800-FLOWERS.Com Inc v Registrar of Trade Marks [2012] FCA 209 (12 March 2012) at [43] to [46].)
[8] The change was included in the Intellectual Property Laws Amendment Act 2006. The amendment to s 38 came into force on 27 March 2007.
Thus it may be that identifying an error during the course of examination which led to acceptance rather than rejection is sufficient to enliven the sections but it is not the only situation that does so. It is clearly safer to focus on whether, at the filing date, a relevant ground for rejection existed as a matter of fact, taking into account any information now known to the Registrar. If a ground of rejection or refusal did exist then it may be possible to say there was an error but this is both unnecessary and unhelpful because if a ground existed then the trade mark in question should not have been accepted or registered. That change shifted the focus of the decision maker away from identifying an error or omission and towards the grounds of rejection and refusal.
Mr Hall asserted that “something can only be a proper ground for revocation of acceptance if it would also have been a proper ground for refusal of acceptance.” I accept this formulation with the proviso that it is the ground that remains the same; the Registrar is not bound by the same set of information the original examiner used, nor is she bound to give the information the same weight. Although the Act allows the Registrar to consider any circumstances, these must I think be circumstances which are relevant to a determination of one of the grounds for rejection (or refusal). Otherwise, an accepted trade mark could be revoked on the basis of circumstances which are broader than the examiner was able to consider. The examiner would then be in a position of having to consider acceptance or rejection of the trade mark, without being able to take account of the material forming the basis of revocation. The mark could then be accepted but would presumably also be subject of further revocation setting up an impasse. That said, once the Registrar is satisfied that the trade mark should not have been accepted (or registered) she has very broad discretion over the range of issues she may consider in deciding whether or not it is reasonable in the circumstances to revoke.
Thus the Registrar must decide in terms of s 31 whether the application is properly made or a ground exists to reject the application. If the application is not properly made or a ground exists to reject the application then the application must be rejected. If in considering revocation the Registrar is satisfied that this situation exists then the application should not have been accepted and the Registrar must then consider whether revocation is reasonable in the circumstances.
In relation to the particular points of contention I do not accept Mr Hall’s argument that the Act removes “ownership and intention to use from examination entirely”. Indeed these concepts are so intertwined with the concept of a trade mark that to do so would be well-nigh impossible. What the Act does is provide for competing claims as to ownership or intention to use to be resolved in an inter partes environment where both parties’ arguments can be fully and properly tested.
That said, the Registrar must restrict herself to the grounds available to her. Moreover, for reasons of natural justice, I must restrict myself to those grounds about which fpinnovation has been put on notice and in relation to which it has had an opportunity to respond. On this occasion the Deputy Registrar cited ss 43, 31 and 27. Strictly speaking neither s 27 nor s 31 is a ‘ground’ of rejection. However s 31 does demand that the Registrar refuse an application if it is not made in accordance with the Act. At the very least this invokes s 27. I am in no doubt that fpinnovation has understood the nature of the potential impediment to registration. For the sake of completeness I note that fpinnovation has been provided with a complete copy of the relevant files, including working documents, research and all the information on which the Deputy Registrar based his decision to propose revocation. It is this information together with supplementary evidence provided by fpinnovation which will form the basis of my decision.

Presumption of registrability

In both written and oral submissions Mr Hall argued that the presumption of registrability favoured allowing the acceptances and registrations to stand and that “with respect, the Deputy Registrar must have overlooked, or failed to have regard to (it).”
Although it is clear from policy documents and judicial comment that a presumption should apply in favour of an application, caution needs to be expressed in its application by the Registrar in decision making. It is not I think the case that the presumption can translate into a general undefined bias in favour of entering every application onto the Register. To the extent that it is a general bias it finds its expression in the view that even trade marks with little or no inherent adaptation to distinguish can be capable of distinguishing with enough use of the right kind. It stands in contrast with the situation under the 1955 Act in which it was clear that not all marks were registrable and in which the onus was on the applicant to persuade the Registrar to register the mark. The phrase ‘presumption of registrability’ thus became short-hand for this change of onus.
However, in considering any particular application the presumption of registrability finds its expression (primarily)[9] in the requirement that the Registrar accept a trade mark for registration unless satisfied that the application has not been made in accordance with the Act (s 33(1)(a)) or that a ground exists to reject it (s 33(1)(b)). The Registrar’s starting point is not a bias towards accepting an application but rather a commitment to reviewing the facts of the case, conducting research, searching the Register, and applying the grounds set out in the Act and the tests set out by the Courts.
[9] It is also present in the opposition provisions in which the onus in establishing a ground lies with the opponent.
Thus the presumption is not a general approach which informs all stages of decision making but rather guidance on what to do if, after examination, the delegate cannot say with certainty that no ground exists but is also not satisfied on the balance of probabilities that a ground does exist. In such a case the presumption expressed by s 33 dictates that the examiner must accept the application.[10]
[10] I have not included reference to the operation of the presumption in relation to s41 following the Oregon case (see footnote 12) as it is not at issue here.
In any case, my brief is not to review the Deputy Registrar’s decision but to decide whether, on the balance of probabilities, I am satisfied that a basis for rejection exits.

Connotation in a sign - s43

In applications for registration of a trade mark
· the rights of the applicant are to be determined as at the date of the application:[11]
· the Registrar must accept the application unless she is satisfied that it has not been made in accordance with the Act or there are grounds for rejecting it (see s 33(1))[12]
[11] Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 (1954) 91 CLR 592. (Southern Cross) at 595 per Kitto J.
[12] Blount Inc v Registrar of Trade Marks [1998] (Oregon) FCA 440; (1998) 83 FCR 50 at 56 per Branson J;
For the Registrar to be satisfied that a ground of rejection under s 43 has been made out there must be:
·     a connotation, inherent in the trade mark itself,[13]
·     which gives rise to a likelihood of deception or confusion,
·     having regard to the nature of the goods or services to which it is to apply and other relevant considerations.[14]
[13],Wilcox, Kiefel and Emmett JJ in TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358; 48 IPR 513 (TGI Friday's) at [43]); Winton Shire Council v Lomas (2002) 119 FCR 416 per Spender J
[14] Down to Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644-5.

The Deputy Registrar, and a Principal Examiner before him, considered that the trade marks in question carry a connotation of a connection to, or sponsorship by, the respective international organisations which are known to use the same or similar names overseas. They sought assurances from fpinnovation that there was such a connection.
Despite assurances[15] from fpinnovation that persuasive evidence would be provided to satisfy the Deputy Registrar that the requisite connection existed this was not forthcoming.
[15] Letter to the Registrar dated 13 October 2010.
Mr Hall emphasised that s 43 is concerned with the inherent qualities of the mark and not with the reputation in Australia of some other trade mark. It is clear that s 60 of the Act deals with questions of reputation in another trade mark or marks, and this ground is available in opposition but not prior to acceptance. In addition to Southern Cross and TGI Friday’s Mr Hall also referred me to additional cases in Elkington et al Annotated Trade Marks Act [at 43.15].
However, as we will see, the authorities have also found that s 43 can be made out where the trade mark is the name of a well known person or entity such that a reasonable person would believe an implication that a connection exists where it does not. In McCorquodale v Masterson (2004) 63 IPR 582 Kenny J said at [52]:
There are ample instances in which registration has been refused because of a connotation contained in the mark that referred directly to some person, entity or institution and, by so doing suggested an endorsement or approval by that person, entity or institution.
There is inevitably a fine line here. The distinction is that s 60 deals with situations where a sign has been used as an indicator of origin, and the confusion that might arise is that a consumer might have cause to wonder about the origin of the goods or services or be deceived into believing that the goods or services in question come from one trader when in fact they come from another. Section 43 on the other hand deals with confusion of a different sort. It may be that the sign conveys an impression of character, quality or even geographical origin that is false. Alternatively, it may suggest sponsorship or an endorsement, by a person or organisation, where no such connection exists.
The underlying principle is set out in Eno v Dunn[16] (Dunn’s Trade Mark) where Lord Macnaughten said at IPR 397; RPC 318:
Unfortunately in the competition for business a trader not infrequently endeavours to attract custom by representing that the goods for sale are different in origin, composition or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is not, as has been observed, the province of the court to protect speculations of this kind. Between rival traders the application of this principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no room for hesitation or doubt.

There is no reason to doubt that this principle applies equally to services.

[16] Eno v Dunn (1890) 1b IPR 391 (also reported as Dunn’s Trade Mark (1890) 7 RPC 311).

In Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448 (Radio Corporation) Latham CJ said (quoting Lord Macnaughten in Dunn’s Trade Mark at [319]) that, “A proposed trade mark should not be registered if it involves ‘a misleading allusion or a suggestion of that which is not strictly true’.”[17] In the same case Rich J held that “It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of a connection they will impute. Confusion involves indefiniteness of ideas.[18]”
[17] Radio Corporation at 453
[18] Radio Corporation per Rich J at 454.
Whether a mark connotes a connection with another person or entity, whether of license endorsement or sponsorship, will depend on all the surrounding circumstances. It needs to be assessed according to the facts in each case and will be a question of fact and degree. In Joseph Bancroft & Sons Co v Registrar of Trade Marks [1957] HCA 87; (1957) 99 CLR 453, the High Court (Williams, Kitto and Taylor JJ) in a joint judgment held that the suggestion contained in the ordinary English words “Miss America” was so “vague and indefineable” in relation to textile products that they: “could hardly be said to refer directly to the character or quality of the goods”, (this was in relation to s16 of the 1905 Act, the equivalent of s41 of the 1995 Act) adding (in relation to s114 of the 1905 Act which is the equivalent of s43 of the 1995 Act) that:
Nor would registration of the words as a trade mark be likely to deceive the purchasing public into the belief that "Miss America" had ordered some of the fabrics or had otherwise approved of them. They would at most create the impression that the fabrics were suitable to be worn by a person who desired to be dressed in the same style as such a publicised, attractive, glamorous and popular lady.
In Amalgamated Television Services Pty Ltd v Pickard[19] the Hearing Officer declined to register the trade mark SUMMER BAY. He found that the ground under s 43 had been made out because the mark connoted that goods sold under it were dealt with under the aegis or sanction of the opponent, the owner of the popular television series Home and Away.[20]
[19] Amalgamated Television Services Pty Ltd v Pickard (1999) 48 IPR 133 (Summer Bay).
[20] See also Danilo Spagnuolo v Mantra IP Pty Ltd [2010] ATMO 110; (2010) 90 IPR 413 at [24].
It is just such a connotation that the Principal Examiner and Deputy Registrar have suggested. The files show that s 43 was raised in relation to a number of marks and considered in relation to several others. Moreover, it is the connotation of a connection that is one of the proposed grounds of revocation. fpinnovation on the other hand argues that the signs carry no inherent connotation.

Is there a connotation?

It is convenient at this point to comment on what the files show in relation to the respective trade marks. The files were examined by twelve different delegates and the range of research conducted was quite varied. However, on each file, there are a number of different indications identifying the existence of an overseas organisation with a name or acronym identical to that applied for. For the sake of brevity I report only a high level summary of what the internet research, recorded on the files, shows in relation to each:

TM NO	TRADE MARK	COMMENT
1295224	KFH	The internet search “kfh + finance” revealed some 87,000 hits, overwhelmingly identifying the sign as the name of or an acronym for the Kuwait Finance House, a substantial, well established, highly reputed financial institution specialising among other things in Sharia-compliant financial products.
1300339	Kuwait Finance House	See above.[21]
1314372	amislamic	“amislamic” raised 153,000 hits again overwhelmingly identifying the sign as being the name of a major Malaysian bank specializing in Sharia-compliant products.
1323584	GFH	“gfh + financial” identified 53,000 entries with at least the first ten pointing to the apparently substantial Gulf Finance House in Bahrain. Similarly, “gfh + real estate” produced 34,600 entries with each of the first ten entries pointing to the provision of financial services for real estate transactions.
1323765	GFHOUSE	“gfhouse” produced a much smaller number of hits (4,530) and the impression left is much less clearly associated with the Gulf Finance House in Bahrain. That impression however is reinforced with the addition of “financial” in the search.
1326770	mashreq	“mashreq” carried another connotation – that of Arabic countries to the east of Egypt. However, the overwhelming impression left by the search either solus (162,000 hits) or in association with “finance” (47,500) or “real estate” (31,100) is that of the Mashraq Bank operating out of UAE (Dubai) and Qatar.
1332227	FIRST GULF	“first gulf” revealed 543,000 hits. Although 8 of the top ten entries relate to the middle eastern bank of that name, the examiner focused on entry 6 relating to the “first gulf war” and used that phrase to refine the search.
1333731	cimb islamic	“cimb” raised 1,580,000 hits relating to a banking and finance group based in Malaysia and operating widely in South East Asia. The examiner’s comment was that this revealed extensive trade mark use – but not in Australia.
1334281	rhb islamic	“rhb islamic” resulted in some 29,300 hits identifying the RHB Islamic Bank of Malaysia.
1335206	aminvestment	“aminvest” gave 35,100 results, the majority of which refer to a Malaysian bank/company.
1336243	adib	“adib +finance” produced 1,800,000 results, leaving an overwhelming impression of the Abu Dhabi Islamic bank.
1337662	zaid ibrahim	“zaid Ibrahim” produced 780,000 results – these reference Malaysia’s largest law firm and the Malaysian Minister for Finance, one of the firm’s principals, and Shariah-compliant finance.
1347918	saadiq	“saadiq + finance” produced 161,000 results referencing the Islamic banking arm of the Standard Chartered Bank.
1349264	“emirates nbd” produced 1,340,000 results predominantly referencing the Emirates NBD banking group, a leading retail banking franchise in UAE.

[21] I note that the specification was altered to exclude financial and monetary services. I am not clear what insurance services remain after those relating to financial and monetary affairs are deleted and it is clear that the applicant’s business is in fact in relation to financial products including those relating to real estate.

I note that it is very common in the financial services industry for banks and other organisations to abbreviate their name. In Australia for instance we have the NAB, CBA, ANZ, BOQ and CUA. In other jurisdictions we have, for example, HSBC. In most such situations the trade mark will also function as the common name of the institutions. It is likely therefore that in the context of the marketing of financial services the use of acronyms will be seen as references to an institution. Moreover, financial services are likely to be purchased with some care. A person in such a situation (seeking finance from an institution they have not previously dealt with) is likely to conduct an internet search to see what they can find out about the organisation concerned. This is even more likely I think if the person has ethical or religious standards to be met (such as green investment or, as here, Shariah compliance).
In such an event, the potential consumer cannot help I think to discover that the acronym in question is that of an overseas institution or a financial product provided by such an institution. The signs are not ordinary English words, such as “Miss America”. They are abbreviations and as they carry meaning (the name of an entity or product) they are akin to invented words. In the context of financial services they have no other obvious meaning than as references to the overseas organisations. Moreover, the suggestion of a reference to these organisations is neither vague nor indefineable (in contrast for example to the facts in Joseph Bancroft[22]). Not only are the signs a direct reference to those organisations but, in context, they can have no other meaning. In this situation, the signs do, I think, imply that some connection exists, whether of a license, endorsement or other relationship, between fpinnovation and the overseas institution.
[22] Joseph Bancroft & Sons Co v Registrar of Trade Marks [1957] HCA 87; (1957) 99 CLR 453.
Furthermore, Mr Gregory’s own correspondence of 9 September suggests that he thinks this himself. I also note the range of names applied for, Mr Gregory’s advice that he was seeking to enter into commercial arrangements with at least some of these organisations, and that he was intending to use some of the marks but not all of them – depending on the arrangements he could make. I am forced in light of this situation to conclude that the reason he chose to apply for these marks was precisely for the connotation of a connection that would arise.
I therefore find that there is a connotation in these signs to the extent that they relate to financial and monetary services broadly defined.
At this point I must turn to the specifications of trade marks 1334281 rhb islamic, 1337662 zaid ibrahim and 1300339 Kuwait Finance House because their specifications are broader than or do not include financial and monetary services. The first (rhb islamic) is for what might broadly be classed as scientific, teaching, computing and recording apparatus,[23] the second (zaid ibrahim) is for business and legal services in addition to financial services and the third (Kuwait Finance House) is for insurance and real estate affairs[24]. I consider that the reasoning above applies equally to someone seeking insurance and real estate services and also business or legal services. Someone entering into arrangements for these services will exercise a measure of diligence in the purchasing decision, especially when dealing with a previously unknown entity. Consequently, and for similar reasons to that outlined above I find that there is also a connotation in Kuwait Finance House and zaid ibrahim in relation to the services in the current specifications for these two marks.
[23] The full specification is as follows: “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus”.
[24] The specification for this mark was amended by removing ‘financial affairs’ and ‘monetary affairs’ and the remaining services (‘insurance’ and ‘real estate affairs’) were qualified through the addition of the following “none of the forementioned being for financial or monetary affairs”
In relation to rhb islamic, I note that the impression left by the sign is potentially that of a connection with an Islamic Bank in Malaysia. However, the goods claimed for this specification can loosely be described as scientific apparatus and instruments although they may include computer software of a financial nature and instructional DVDs with Islamic banking as their subject matter. In any case, it is not clear to me that a significant number of potential consumers for such goods would conduct the sort of internet search outlined above or if they did that there would be any implication from the results of their research that rhb islamic had any interest in these goods. In this case, I am not satisfied that a connotation does arise and in relation to this trade mark s 43 is not made out.

The connotation gives rise to a likelihood of deception or confusion

The pattern of applications and their number makes it unlikely that a connection exists with each of the overseas institutions. Mr Gregory on behalf of fpinnovation was given an opportunity to “supply documentation supporting [his] bona fides in relation to use of these trade marks”[25]. I note that despite his protestations[26] that he would be able to provide evidence of such a connection – no such evidence has been provided. There is not a single licensing agreement or any other information before me to conclude that an agreement exists with any of these institutions. I have evidence that fpinnovation entered into discussions with at least one overseas organisation in 2008 but have no information about the progress of these or any other discussions or any indication that any organisation has given consent to the use of its name by way of license or any form of endorsement. If anything, the evidence suggests that the grant of any rights in intellectual property were excluded from discussions. Thus, the most that can be said is that fpinnovation has declared an intention, an intention which I have no reason to doubt, to seek some form of commercial arrangement from one or more of these organisations. In light of the number of applications, and fpinnovation’s failure to provide any evidence of a connection, license or endorsement I am satisfied that I can draw an adverse inference that no such connection exists.
[25] Cover letter and notices of proposal to revoke all dated 10 August, 2010.
[26] Letter to the Registrar dated 9 September 2010.
In McCorquodale v Masterton [2004] FCA 1247; (2004) 63 IPR 582 her Honour Kenny J found that allowing for the differences between ss 43 and 44 of the Act,[27] the well established tests[28] under s 44 in relation to the likelihood of confusion help in the construction of s 43. She drew particular attention to requirements that:
·     There must be a real tangible danger of deception or confusion;
·     It is enough, if the result of use is that a number of persons … are caused to wonder … if the ordinary person entertains reasonable doubt;
·     All the circumstances must be considered including the way in which the mark will be used, the nature of the goods or services and the way they will be traded, and the character of the probable consumers.
[27] Principally that s44 requires a conflicting mark to be the source of confusion.
[28] Per French J, in Woolworths at FCR 382 -383, and Kitto J in Southern Cross, at 594 – 595
In Woolworths at 380,[29] French J said:
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.

See also Southern Cross at 594 – 595 per Kitto J.[30]

[29] Registrar of Trade Marks V Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; 45 IPR 411.

[30] Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd [1953] HCA 73: (1954) 91 CLR 592.

With globalisation it is not uncommon for overseas banks to operate in Australia. HSBC, Citibank, BNP Paribas and Barclays are just a few examples.
The nature of the consuming public must also be considered. Australia is a broadly multicultural society with many immigrants from Islamic countries, including from the Gulf countries, Malaysia and Indonesia. Furthermore, Australians engage in a significant amount of international travel and it can I think be assumed that organisations the size of those in question will be known to many Australians of middle eastern and south east asian descent, at least in a general way. As I have already indicated, I think it likely, that consumers of these services will conduct some form of due diligence activity. As the examiners’ work files show, the services in relation to which the respective marks relate have a real connection to the overseas organisations and institutions.
The signs directly and immediately reference or connote a connection or association with the relevant organisations. I consider that the average consumer, when seeing the signs marketed in relation to the relevant services, would at the very least have cause to wonder whether there was an association with the respective organisation, albeit without perhaps having a clear idea of what that association might be. I do not need to consider the actual proposed use and whether that use will give rise to confusion; the question must be based on what the applicant can do if registration is gained[31]. With this in mind, without a connection of the sort implied, it will, I think, be impossible for fpinnovation to negate all likelihood of this confusion, even if it wished to do so. Finally, it appears to me that the trade marks have been intended and designed to create exactly such a connotation. The likelihood of this misunderstanding is sufficient to create a likelihood of confusion or deception in Australia, by reason of the connotation of the mark.
[31] Kitto J in Southern Cross at 595, requoted by French J in Woolworths at [50].)
In summary, in relation to thirteen of the trade marks, the Registrar has raised concerns about the connotation in the signs and given fpinnovation an opportunity to argue either that there is no connotation or that a connection does exist. I am satisfied that a reasonable person seeking information about a potential supplier of finance, or in the case of ZAID IBRAHIM of business and legal services, particularly in relation to Shariah-compliant finance, would be likely to infer a connection or licensing agreement between the owner of the trade marks and the institutions of the same name, or an endorsement of the products in question by those overseas organisations. In fact, as I have said, I consider that the evidence points to this being fpinnovation’s express intention. The failure to provide evidence of any such agreement leaves me satisfied that the connotation inherent in the trade mark is likely to be false and in light of the above information is likely to result in deception or confusion.
I find therefore that thirteen[32] of the fourteen trade marks should not have been accepted or registered (because a ground under s 43 exists). The exception is trade mark 1334281 (rhb islamic).
[32] 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227, 1333731, 1335206, 1336243, 1337662, 1347918 and 1349264

Ownership and Intention to use Sections 27 and 33(3)

Section 33(3) of the Act stipulates that if the Registrar is satisfied, after examination, that the application was not made in accordance with the Act, then it must be rejected. Section 27 relevantly sets out a requirement that to make an application a person must:
· claim to be the owner[33] and
· have an intention to either use the mark, authorise its use or assign it to a body yet to be incorporated with a view to use by that body.
[33] The terms ‘owner’ and ‘ownership’ are direct equivalents of the terms ‘proprietor’ and ‘proprietorship’ used under earlier legislation and in this decision I use the terms interchangeably depending on the context.
Deputy Registrar Braybrooks cited s 27 with reference to both “ownership” and “intention to use” as the basis for proposing revocation. Mr Hall for fpinnovation argued that neither use nor ownership were proper grounds for consideration at examination and so could not form a proper basis for revocation. Mr Hall asserts that both ownership and intention to use are matters between rival claimants and therefore can only rightly be dealt with in inter partes opposition proceedings where competing claims can be properly tested.
Mr Hall drew my attention to the comments of Fullagar J in Aston v Harlee Manufacturing Co (Tastee Freez) [1960] HCA 47; (1960) 103 CLR 391 (4 August 1960) in his Honour says:
There is another element mentioned by Dixon J. in the Shell Co.'s Case (1949) 78 CLR, at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that "intention" in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time. A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use. If he in fact does not use any of them for the period specified in s. 72, the unused mark or marks may be expunged under that section. On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars: the effect of In Re Registered Trade-Marks of John Batt & Co. (1898) 2 Ch 432; (1899) AC 428, is, I think, correctly stated in the first paragraph of the headnote to the report of the case before Romer J. and the Court of Appeal. (at p401)[34]
[34] At para 21.
I agree with Mr Hall that his Honour’s comments are pertinent in the present case. Clearly, the Registrar is not to act as a protagonist. That is not her role, even in support of the public interest. As a result, in the ordinary course of an application, the information available to the Registrar on ownership or intention to use will be very limited. However, this begs the question about what the Registrar’s role is when material in her knowledge challenges the evidential value of the application.
The comments of Branson J in Woolworths, in discussing the difference between s 43 and s 60, suggest that the bounds are drawn by the information ordinarily available to the delegate in the course of examination. Branson J says that the differences between the two sections, and their placement in the Act, reflect:
…. an appreciation of the practical reality that before the acceptance for registration and advertising of an application for registration of a trade mark, the information available to the registrar touching on issues of likely deception and confusion will be limited. at [0-80]

She goes on to say in the same paragraph “As French J has pointed out, the acceptance stage is not the time for detailed adversarial examination of an application.” Given this, the practical reality is that the Registrar will generally have little information in relation to questions of ownership and intention to use. However, in the present case, the information challenging the evidentiary value of the application was the applicant’s own applications, raised on a number of occasions by examiners, together with the applicant’s own representations.

In such a situation the Act requires the Registrar to examine and report on an application (s 31) and that examination includes whether the application has been made in accordance with the Act. It further requires that if the Registrar is satisfied that it has not been, then the application must be rejected (s 33(3)).
Moreover, r 4.8(3) expressly provides one example where the information provided in the application itself challenges the claim to an intention to use. Where the applicant has made a very broad claim, that on its face is improbable, the statute clearly does not expect the Registrar to simply accept it nor does it prevent her from seeking assurances. This mirrors the above comments, from Fullagar J, that “a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars.”
What then is the Registrar to do when faced with a very large number of applications (40) for marks which on the face of it are the names or acronyms of foreign institutions? Fullagar J deals with another principle that is relevant here. That is that an applicant may be “entitled to register three trade marks ... though he intended only to use two of them and had not made up his mind as to which two he would use” (my emphasis). It is instructive I think that his Honour made reference to the use of not one but two of the three applied for marks. If his Honour had intended to establish a general principle that a person could apply for any number of trade marks intending to use only one of them, the most obvious way of saying this was to refer to only one. As it is, the comment cannot easily I think be translated into using one or two out of forty. Moreover, where an applicant applies to register forty marks which on the face of it are the names of foreign institutions this raises at least the possibility of fraud or trade mark piracy. In such a situation I do not think that Tastee Freez provides authority for a view that the Registrar may ignore information in her knowledge that, by challenging the applicant’s bona fides in making an application, challenges the evidentiary value of the application itself. The Registrar must I think seek assurances from the applicant about their bona fides. This is not a question of instituting an inquiry by acting as a protagonist, or conducting an adversarial examination but rather fulfilling her statutory responsibility to examine.
Similarly, there can not I think be any obligation in the Regulations for the Registrar to simply accept an obviously deficient declaration. In the context of s 27 “use” must be as a trade mark, in the course of trade, to distinguish the applicant’s goods or services from those of others. If the material before the Registrar brings into question whether the intended use meets this definition, and the declaration does nothing to dispel the misgivings the Registrar must I think seek additional information about the nature of the intended to use in order to satisfy herself that application was made in accordance with the Act. If after being provided additional information the Registrar believes on the balance of probabilities that the applicant is not intending to use the trade mark, then s 33(3) stipulates that she must reject the application.
The key point here is that competing claims (whether about ownership or intention to use) belong in Opposition. But that is not the situation here. The level of investigation is that required by the Act – the Registrar must examine, and having examined must report on the results of that activity. Any material provided by the applicant is to be dealt with according to the standards usually applying in examination. If satisfied that the application is not in accordance with the Act or that a ground exists to reject the application the Registrar must do so. But this is where the presumption of registrability comes in, if after raising an issue with the applicant and receiving a response the Registrar still has some doubts but is not satisfied that a ground exists then she must accept the application.
In order to make an application, s27 stipulates that a person must claim to be the owner and have an intention to use the trade mark in relation to the relevant goods and services. In the present case, the Deputy Registrar raised the grounds of ownership and intention to use and Mr Gregory for fpinnovation promised “persuasive information establishing our ownership of the marks”.[35] On three separate occasions, fpinnovation was given additional time to provide the promised evidence. After failing to provide this information Mr Gregory provided a declaration under r 4(8)(3), although he had not been required to do so. However, the Deputy Registrar concluded that the declaration in question did nothing to address either the issues raised or the adverse inference to be drawn from the failure to produce the promised documents. At Mr Gregory’s request the matter was referred for a hearing.
[35] In a letter dated 9 September 2010.

Discussion

It is well established, as a general statement, that the owner of a trade mark in Australia is the first person to use it.
Mr Hall invited me to make a finding that there was no use in Australia of any of these trade marks. However, the evidence before me is only suggestive of that fact. That evidence is two-fold. There is the material on file showing the results of internet searches and there is tendered into evidence material showing that none of the overseas institutions in Australia has a banking license. As already established it is not appropriate for me to initiate a further enquiry in what would amount to a discovery exercise. That is not my role. Nonetheless, absent any evidence of use I am prepared to accept that fpinnovation may, in ordinary circumstances, be entitled to claim ownership of the trade marks in Australia by virtue of being the first to apply to register them.
Relevantly, the authorities have also said in relation to a trade mark so far unused in Australia, that the right to registration depends on proprietorship. This in turn involves a combination of authorship, intention to use and an application to register the mark in question. In Shell Co[36] Dixon J said at [627-628]:
“It is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and applying for registration”
[36] Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601.
An applicant may be the “author” of a trade mark although he has deliberately copied or adopted a mark registered in a foreign country in respect of the same goods[37]. Moreover, authorship of an unused trade mark may be established in such circumstances by application for registration.[38] Thus where a foreign trade mark has not been used in Australia the owner is the first person to apply to register it and even the most extensive use by another person in foreign countries will not avail by itself to defeat an applicant for registration in this country[39].
[37] Aston v Harlee Manufacturing Company (1960) 103 CLR 391 (Tastee Freez) per Fullagar J at [20]
[38] Tastee Freez op.cit. at 399.
[39] Tastee Freez, also at [20]
The closest parallel to the current set of facts is a class of cases dealing with claims to ownership by importers, dealers or distributers in Australia of foreign manufactured goods. In this situation the owner of a trade mark affixed to imported goods will generally be the overseas manufacturer of the goods and not the importer.
“[A trade mark’s] denotation is not limited by any concept of the physical use of a tangible object and we have no doubt that when an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer.” Per Barwick CJ, McTiernan, Taylor and Owen JJ at 271[40]
[40] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254
When compared to services, the chain of ownership of manufactured goods is typically clearer because the manufacturer affixes the trade mark to its goods. In respect of services it will generally be that the mark is used in relation to those services and the connection is not so immediate. Nevertheless, although I am not aware of any authority for this, I see no reason why the principles which apply to goods in this situation should not also apply to traded services if what is being offered to the consumer is essentially the financial services of the overseas entity. That said, short of instigating further inquiries, which I am not at liberty to do, I cannot be satisfied about the nature of possible future use in relation to what are apparently still inchoate services.
To satisfy the requirement for an intention to use, the intention must be bona fide in relation to the relevant goods or services. In Re Registered Trade Marks of John Batt & Co (1898) 15 RPC 534 (Batt’s case), Lindley LJ said at [538] that the applicant must have:
“some definite and present intention to deal …, and not a mere general intention of extending his business at some future time to anything he may think desireable”

In Ducker’s Trade Mark, Lord Hanworth MR referring to the provisions of the old British Act said:

“I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods. I think that the words “proposed to be used” mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.”[41]
[41] Re Ducker’s Trade Mark (1928) 45 RPC 397 at 402.

I am satisfied, to use Mr Gregory’s own words, that he has applied himself over “many years in preliminary planning and commercial negotiation directed towards the adoption and implementation of the trade marks in Australia.”[42] What is clear from the material in front of me is that fpinnovation has developed a business model which involves some form of partnership, joint venture or other relationship in which the overseas entity provides some or all of the financial support for the products in question. I accept that the existence of a business plan, and of the negotiations which are in evidence before me, are sufficient to establish fpinnovation’s bona fides in this regard; it does have the resolve and settled purpose which is required and it may well be that it intends to choose one or more of the trade marks depending on how negotiations unfold.
[42] The evidence does not go to whether the activity has been directed towards the adoption of any particular mark, so my finding is a general rather than specific one.
That said, the authorities are unclear about how many trade marks might be given such latitude. On the one hand 169 (taken together with an offer to sell all but 14 of them)[43] has given rise to a finding of no intention to use whilst on the other in Tastee Freez it was suggested that three applications with an intention to use two, to be selected at a later date, might be sufficient to establish the intention (but only where the three applications covered goods that the applicant already dealt with under other marks).
[43] Batt’s case.
In summary, the evidence before me shows that fpinnovation does have the requisite resolve and purpose to use one or more of the trade marks, in conjunction with the relevant overseas organisation. It also reveals evidence of commercial negotiations with one or more of the overseas institutions. In light of this evidence and despite the number and character of the trade marks in question there is sufficient doubt such that I cannot be satisfied that there is no intention to use the trade mark.
I should make it clear, if I have not already done so, that I have not found that fpinnovation is the owner of the trade marks or that it has an intention to use them. Rather, I am satisfied, on the basis of the evidence as it now stands, that the applicant has done enough to satisfy the requirements of s 27.
Accordingly, I do not find that the requirements of s 27 by virtue of ss 31 and 33(3) provide a basis for revocation (of either acceptance or registration).
For the sake of completeness, I mention that the notices of proposal to revoke invited fpinnovation to identify any relevant circumstances for the Registrar’s consideration and only those so far mentioned were forthcoming.

Reasonableness

I have found that 13 of the trade marks should not have been accepted or registered. Both ss 38 and 84A require that if I find this I must still consider whether I can be satisfied that it is reasonable to revoke the trade marks. The Deputy Registrar also invited fpinnovation to provide additional circumstances for consideration in this context. The only such circumstance which has been brought to my attention is the gravity of revoking a registered right, which I will deal with later. In particular, I note that I have been provided no evidence of use by fpinnovation in relation to any of the trade marks, or even a claim to such use.
Mr Hall drew my particular attention to four issues:
·     Revocation was not reasonable because no valid ground could be made out;
·     The seriousness of revocation of registration;
·     The potential impact on third parties with possible claims to an interest or simply an interest in making an application themselves; and
·     The fact that revocation of registration was not intended to be an alternative to opposition as a mechanism for resolving competing claims.
Contrary to fpinnovation’s submissions I have found that it is reasonable to conclude that use of thirteen of the trade marks is likely to mislead or deceive because of a connotation inherent in the marks.
Mr Hall urges that “s 84A requires an even higher degree of caution than s 38, because it involves divesting the trade mark owner of a piece of property”. I accept Mr Hall’s caution about the seriousness of revocation of registration. However, I am also mindful that this situation has arisen because fpinnovation knowingly selected the names of foreign institutions, presumably because of their connotation. I also note that despite being invited to do so fpinnovation has not claimed that it has used any of the marks in question in Australia.
Mr Hall also argues that “Third party rights are affected – for example of those who might claim an equitable interest in the mark, or have taken a license to use it, or indeed elected not to use it or a similar mark because of the registration.” Although there may be such an equitable interest by third parties, they have not made use of Part 11 of the Act to notify the Registrar of this and fpinnovation has not identified any particular interest as being affected. I also note that in considering the balance of interests it is appropriate also to consider the interests of the consuming public not be deceived or confused by a false connotation in the trade marks.
Fourthly, this is not a case of competing claims. Although limited, the information before the Registrar has been obtained in the ordinary course of examination and by the applicant’s own hand. That information is sufficient to cast doubt on the evidentiary value of the application(s). On the other hand, fpinnovation has had an opportunity to address the concerns raised by the Registrar and has failed to do so. Indeed the assurances and evidence supplied by fpinnovation have confirmed the Registrar in her view. Moreover, revocation does not result in a transfer of rights to another party or even a determination about who is the owner of the trade marks.
Finally, in considering what is reasonable in the circumstances, I will look at the immediate consequences of revocation. Section 38(2) of the Act requires that following revocation of acceptance a trade mark is to be returned to examination to give an applicant an opportunity to overcome any objections. Section 84C(5) on the other hand provides that in revoking registration the Registrar may also revoke acceptance and if she does this need not reexamine but may reject the application.
In correspondence dated 4 March 2011, I indicated to fpinnovation that if I were to find that the registrations should be revoked then I would give consideration to whether the trade marks should also be rejected. I have received no submissions on this matter either at the hearing or since. On reflection, if fpinnovation does conclude negotiations with one or more of the overseas organisations then it is possible to conceive that they will then be in a position to provide evidence that the connotation of a connection contained in the trade marks is unlikely to deceive or cause confusion.
Similarly, there may be other strategies for fpinnovation to overcome the s 43 objection. It may be possible for instance to obtain a letter of consent or to amend the specification. Given these possible scenarios it would not be reasonable to reject the registered marks outright. They should be returned to examination.
In accordance with reg. 4.12.1(b) the examination process will start afresh, and the period for lapsing will be calculated from the date of the next report. In order to overcome the objection under s 43 the applicant (as it will then be) will need to demonstrate:
· That there is no longer a connotation (eg by amending the specification to goods or services not associated with the banking or finance or legal services sectors); or
· That the connotation is not false eg by showing that relationships are in place between fpinnovation and the overseas institution concerned.

100. In light of the reasons outlined above, I am satisfied that it would be reasonable to:

·    revoke registration of eight registered trade marks, 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227, and 1333731;
·    revoke acceptance of these eight trade marks 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227, and 1333731; and
·    revoke acceptance of the five pending trade marks 1335206, 1336243, 1337662, 1347918 and 1349264.

Accordingly, I exercise my power under ss 84A, 84C(5) and 38 to revoke registration and acceptance respectively. I direct that thirteen of the fourteen trade mark applications be returned to examination, the exception being that of registration 1334281 rhb islamic which will remain on the Register.

Michael Arblaster

Deputy Registrar

Trade Marks

3 September 2012

Actions

Download as PDF Download as Word Document

Citations

Fpinnovation Pty Ltd [2012] ATMO 74

Most Recent Citation

FPInnovation Pty Ltd v Registrar of Trade Marks (No 2) [2013] FCA 975

Cases Citing This Decision

6

Proposed revocation of acceptance of trade mark application number 2152027 (35, 41) – RV 24/7 - in the name of Campfire Creative Agency Pty Ltd [2021] ATMO 107

JB Hi-Fi Limited [2019] ATMO 115

Mt Shadwell Pty Ltd [2018] ATMO 25

Cases Cited

17

Statutory Material Cited

0

1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209

Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769

Aceto Balsamico del Duca di Adriano Grosoli SrL v Registrar of Trade Marks [2008] ATMO 2