Frontier Economics Pty Ltd v Frontier Advisors Pty Ltd

[2022] ATMO 68

TRADE MARKS ACT 1995

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

Re:Request by Frontier Economics Pty Ltd under section 83 of the Trade Marks Act 1995 (Cth) to amend the representation of the trade mark in the opposition by Frontier Economics Pty Ltd to the application under section 92 of the Trade Marks Act 1995 (Cth) by Frontier Advisors Pty Ltd to remove trade mark number 842723 (classes 35, 36) – FRONTIER ECONOMICS (Figurative) - in the name of Frontier Economics Pty Ltd.

Delegate:	Timothy Brown
Representation:	Opponent: Banki Haddock Fiora Applicant: Russell Kennedy
Decision:	2022 ATMO 68 Trade Marks Act 1995 (Cth) s 83(1)(a) – request to amend representation of registered trade mark – amendment does not substantially affect the identity of the trade mark – request allowed.

Background

1. This decision concerns a request made by Frontier Economics Pty Ltd (‘Opponent’) under section 83(1)(a) of the Trade Marks Act 1995 (Cth) (‘Act’) to amend the representation of the following trade mark registration:

   Trade Mark Number:         842723

   Trade Mark:    (‘Trade Mark’)

   Owner:   Frontier Economics Pty Ltd

   Filing Date:  18 July 2000

   Specification:   Class 35: Economics consultancy services

   Class 36: Financial services, including economic consultancy for financial purposes

2. The request arises during the course of two applications made on 8 September 2021 by Frontier Advisors Pty Ltd (‘Applicant’) under section 92(4)(b) of the Act seeking removal of the Trade Mark from the Register for non-use.

3. On 22 September 2021 the Opponent filed the request to amend the representation of the Trade Mark as shown below:

Trade Mark	Amended Trade Mark
(‘Amended Trade Mark’)

1. On 5 November 2021, a delegate of the Registrar of Trade Marks granted the request and amended the representation of the Trade Mark.

2. On 19 November 2021 the Opponent filed a Notice of Intention to Oppose both of the applications for removal.

3. On 23 November 2021 the Applicant requested to be heard by written submission on the amendment by the Registrar of Trade Mark pursuant to section 203 of the Act. Banki Haddock Fiora filed written submissions on behalf of the Opponent. Written submissions were filed on behalf of the Applicant by Russell Kennedy.

   Section 83

4. Section 83(1)(a) of the Act relevantly provides:

   Subject to Part 11, the Registrar may, at the written request of the registered owner of a registered trade mark:

   (a)  amend the representation of the trade mark as entered in the Register if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application for the registration of the trade mark were published under section 30;

5. The power to amend the representation of a registered trade mark may only be exercised if the amendment does not substantially affect the identity of the trade mark as entered in the Register. This limitation exists to ensure that there is a degree of certainty as to the nature of a trade mark once it has been registered.[1]

   [1] Woolworths Limited v BP plc (No 2) [2006] FCAFC 132, [43]-[46] (Heerey, Allsop and Young JJ).

6. It is common ground between the parties that whether an amendment to the representation of a trade mark substantially affects its identity is assessed by the test for substantial identity expressed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia Limited)[2](‘Shell & Esso’):

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [2] [1963] HCA 66.

   [3] Ibid [12].

7. The phrase ‘does not substantially affect the identity of the trade mark’ is also used in sections 7(1) and 65(2) of the Act.[4] In Optical 88 Limited v Optical 88 Pty Limited (No. 2)[5], Yates J treated the expression ‘with additions or alterations that do not substantially affect the identity of the trade mark’ under section 7(1) as being the same in essence to the test for substantial identity.[6] Similarly, in Sports Warehouse, Inc v Fry Consulting Pty Ltd[7] Kenny J referred to Windeyer J’s test for substantial identity when considering whether a trade mark was used with additions or alterations that do not substantially affect the identity of the trade mark:

   Adapting Windeyer J’s statement to the inquiry under s 7(1), whether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[8]

   [4] See also: The phrase ‘not substantially affecting its identity’ in ss 100(2) and 100(3) of the Act.

   [5] [2010] FCA 1380 (Yates J).

   [6] Ibid [256].

   [7] [2010] FCA 664.

   [8] Ibid [154].

8. In the context of an amendment to the representation of a trade mark application under s 65(2) of the Act, the Full Court recognised in Woolworths Limited v BP plc (No 2)[9] that the analysis of the ‘identity of the trade mark’ is not necessarily straightforward,[10] and that:

   Bound up in the notion of “identity” is the feature or features by which the mark will be recognised as distinguishing the proprietor’s goods or services from those of others. When the mark is a word or device or combination thereof, any change that affects what is conveyed in terms of distinctiveness will affect the identity of the mark.[11]

   [9] [2006] FCAFC 132 (Heerey, Allsop and Young JJ).

   [10] Ibid [48].

   [11] Ibid.

9. Accordingly, the request will be allowable if when viewed side by side a total impression of similarity emerges from the comparison between the Trade Mark and the Amended Trade Mark having regard to their essential features.

10. The Applicant contends that the amendment would substantially affect the identity of the Trade Mark due to the following differences between the respective representations:

    ·The word ‘FRONTIER’ is represented in the Amended Trade Mark in bold letters and a significantly larger font.

    ·The word ‘ECONOMICS’ is significantly smaller in the Amended Trade Mark.

    ·The letter ‘e’ in the ‘ECONOMICS’ element of the Trade Mark is represented in a larger font than the other letters but is of the same size font as the other letters in the Amended Trade Mark.

    ·The noticeable changes to the device element of the Trade Mark. In the Trade Mark, the device is a curved rectangle represented in a gradient pattern. In the Amended Trade Mark, the device only has three sides, appears to be more of a triangle, and is uniform in shade and pattern.

11. The Applicant further submits that the cumulative effect of these differences alters the nature of the Trade Mark, placing greater significance on ‘FRONTIER’ while diminishing the presence of ‘ECONOMICS’ in the Trade Mark.

12. Conversely, the Opponent contends that in a side-by-side comparison there are very few differences between the essential features of the respective representations. In support of this submission, the Opponent notes that the words ‘FRONTIER ECONOMICS’, the use of lowercase, the arc shaped device and its positioning along the top right-hand side of the trade marks are consistent in both trade marks. The Opponent also submits that the request aligns with the purpose of section 83(1)(a), to allow a registrant to update its registered trade mark when a new, or more modern representation, is adopted.

13. In my view, the amendment sought by the Opponent would not substantially affect the identity of the Trade Mark. The Trade Mark comprises of the phrase ‘FRONTIER ECONOMICS’ and an arc shaped device to the top right of the words. These are the essential features of the trade mark. Those features are also present in the Amended Trade Mark, but subject to a degree of change. The effect of those changes needs to be considered in the context of the essential elements of the trade marks. In the Amended Trade Mark, the word ‘FRONTIER’ is bolded while the word ‘ECONOMICS’ is represented in a smaller and non-bolded font. The size of the letter ‘E’ in ‘ECONOMICS’ has also been reduced to the same size as the other letters in the word and the four-sided arc device has been substituted with a three-sided shape. Whilst these changes are apparent, their effect on the identity of the Trade Mark is minimal. The bolded font of ‘FRONTIER’ and changes to the size of the font do not result in any markedly different changes to the words ‘FRONTIER ECONOMICS’. Furthermore, I agree with the Opponent that the visual differences between the devices in the trade marks are slight with the device in the Amended Trade Mark remaining identifiable as the shape of an arc. I also note that the positioning of the device is consistent with the Trade Mark.

14. With respect to the ‘ECONOMICS’ element of the Trade Mark, the Applicant submits that the changes are particularly significant in the context of the Trade Mark’s ‘financial services’ in Class 36 because ‘ECONOMICS’ is only descriptive of the services in Class 35. I do not accept this submission. In my view, the term ‘ECONOMICS’ is descriptive of all of the services specified in the Trade Mark, which include various economic services in Class 35 and broad financial services, including economic consultancy in Class 36. Whilst dependent on context, it is not often that descriptive elements will be the essential elements of a trade mark.[12] This is not to say that it is appropriate to ignore differences in the descriptive elements of a trade mark, only that the side-by-side comparison in determining whether trade marks are substantially identical is to be carried out cognisant of the essential elements of the trade marks.[13] Even if I were to consider ‘ECONOMICS’ distinctive in connection with some of the services specified in the Trade Mark, I do not consider the changes to that element significant enough to affect the identity of the Trade Mark.

    [12] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

    [13] Ibid.

15. With respect to the differences in the overall arrangement of the representations, the Applicant refers me to the decision of Galipoglu Hidromas Hidrolik Otomotiv Sanayi Ve Ticaret Anonim Sirketi v HMS MYG b.v [14] (’Galipoglu’). The decision concerned the removal of a trade mark for non-use, and required consideration of whether the following trade marks were substantially identical:

    [14] [2020] ATMO 153 (Hearing Officer Smith).

Trade Mark Trade Mark Used

1. The delegate found that despite the trade marks sharing essential features, the trade marks were not substantially identical because of the overall differences in the way the respective trade marks were composed.[15] I acknowledge that the arrangement of elements contributes to the total impression conveyed by a trade mark. However, unlike the trade marks under comparison in Galipoglu, there are no significant differences in the overall manner in which the Trade Mark and the Amended Trade Mark are represented. Rather, in my view, the overall arrangement of the essential features of the trade marks is noticeably consistent.

   [15] Ibid [23].

2. The Applicant also refers to the changes in the indexing terms of the Trade Mark when the amendment was processed, contending that this reflected a substantial change in the Trade Mark. The changes in indexing referred to by the Applicant are the image description, ‘Curved Stripe’, and the indexing constituents, ‘Stripe’, ‘Curved’ and ‘Arc’, all of which were added following the amendment. These indexing details serve an administrative purpose, allowing for the trade marks to be discoverable when searching the Register. They are not particulars of the trade mark,[16] nor does a change in these details necessarily indicate whether there has been a substantive change to a trade mark.

   [16] See: Trade Mark Regulations 1995 (Cth) reg 4.7(1).

3. For the reasons given, in my view, when compared side by side there is a total impression of resemblance between the Trade Mark and the Amended Trade Mark. Accordingly, I am satisfied that the amendment to the representation of the Trade Mark does not substantially affect the identity of the Trade Mark.

   Decision

4. I am satisfied that the Opponent’s request to amend the representation of the trade mark 842723 is allowable.

5. If the Registrar is served with a notice of appeal, I direct that the disposition of the request should be in accordance with the Court’s orders or direction.

   Timothy Brown
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   3 May 2022