General Electric Company v Gecorp Pty Ltd

[2017] ATMO 162

TRADE MARKS ACT 1995

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

Re:Opposition by General Electric Company to registration of trade mark application 1697178 (35) GECORP in the name of Gecorp Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Byron Angelopulo of Baker & McKenzie, Attorneys & Solicitors, accompanied by Niro Weerasinghe Applicant: Relied on written submissions prepared by Graham Elliot
Decision:	2017 ATMO 162 Opposition under s 52 of the Trade Marks Act 1995 – s 60 considered – confusion likely because of reputation of Opponent’s trade marks – opposition established and registration refused.

Background

1. This is an opposition brought by General Electric Company (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Gecorp Pty Ltd (“the Applicant”):

Application Number:        1697178

Filing Date:  31 May 2015

Services:Class 35: Business consultancy; Business administration

Trade Mark:  GECORP  (“the Opposed Mark”)

1. Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 22 October 2015.  The Opponent filed a Notice of Intention to Oppose on 8 December 2015, followed by a Statement of Grounds and Particulars (“SGP”) on 22 December 2015.  The Applicant filed a Notice of Intention to Defend the application (“NID”) on 20 January 2016.

2. I heard the matter as a delegate of the Registrar of Trade Marks on 18 October 2017 in Canberra.  Byron Angelopulo of Baker & McKenzie, accompanied by Niro Weerasinghe of the same firm, appeared for the Opponent via video link from Sydney.  His oral submissions were supplemented by written submissions copied to the Applicant and to me two weeks before the hearing.

3. Graham Elliot, whom I understand to be a director of the Applicant,[1] had earlier advised that the Applicant would not attend, or be represented at, the hearing.  He requested that the matter be decided in the Applicant’s favour based on the NID, on the evidence filed and on a letter dated 11 January 2016 he had (apparently prematurely) sent to IP Australia before formally filing the Applicant’s evidence in answer.  That said, I note that the single page letter is virtually identical to the one page declaration by Mr Elliot which forms the Applicant’s evidence in answer.  The sole differences are that the declaration commences with the additional sentence, “I am the registered owner of [the Applicant] and so authorized to make this declaration” and it also includes an additional sentence at the end referring to Internet searches on the terms “GE Corp” and “GECORP”.  Since the letter of 11 January 2016 is effectively redundant and nothing turns on the differences between the two documents I will only refer to Mr Elliot’s declaration in this decision.

   [1] Mr Elliot describes himself as the Applicant’s “registered owner.”

Grounds of Opposition, Onus and Standard of Proof

1. The SGP lists grounds corresponding to ss 42(b), 43, 44, and 60 of the Act and all were pressed at the hearing. To succeed the Opponent bears the onus of establishing at least one of these four grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[2] I have only found it necessary to address the s 60 ground in this decision and this is discussed below. Of course should the decision be appealed, it would remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

2. The date for assessing the registrability of the Opposed Mark is the date it was filed, 31 May 2015 (“the Relevant Date”).[3]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.

The Evidence

1. For their evidence the parties rely on the declarations described below, made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):

Evidence in Support

▪ Jeffrey D. Larson made 1 May 2016, with Annexures 1 to 18 (“Larson”)

▪ Lara Townsend Gun made 2 May 2016, with Annexures LTG-1 to LTG-2 (“Gun”)

Evidence in Answer

▪ Graham Elliot made 24 August 2016 (“Elliot”)

Evidence in Reply

▪ Rebecca Louise Rumens made 17 October 2016, with Annexures RR-1 to RR-8 (“Rumens”)

Section 60 Discussion

1. Section 60 of the Act is reproduced below:

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

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

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note: For priority date see section 12.

1. The ground based on s 60 is particularised in the SGP as follows:

   (a) The Opponent is the owner of the renowned marks GE and GE Monogram as set out in the table above[4] (referred to together as the GE Trade Marks).The Opponent also owns a number of other GE formative trade marks covering a range of different goods and services, as set out in the attached schedule.[5]

   (b) The Opponent is an American multinational conglomerate corporation founded in 1892 in New York.  Today it is one of the biggest companies in the world.

   (c) As of 2015 the Opponent operates through a number of segments, namely Appliances, Power and Water, Oil and Gas, Energy Management, Aviation, Healthcare, Transportation and Capital which cater to the needs of home appliances, financial services, medical device, life sciences, pharmaceutical, automotive, software development and engineering industries.

   (d) The GE Trade Marks are some of the oldest and most famous in the world and have been used for many years in Australia by either the Opponent, the Opponent’s predecessor in title or the Opponent’s licensee in connection with its technologies and associated services across the above-mentioned sectors.

   (e) The Opponent itself has distributed, marketed and sold GE products and services in Australia continuously and for many decades prior to the [Relevant] Date.

   (f) As a result of the Opponent’s use of the GE Trade Marks in Australia, as at the [Relevant] Date, the GE Trade Marks had acquired a reputation in Australia.

   (g) The Opposed Trade Mark consists of the word GECORP.  The element CORP in this word is likely to be interpreted by consumers as an abbreviation of the word CORPORATION.  The Opponent, known as GE, is one of the largest and best known American corporations in the world.

   (h) By reason of the foregoing, consumers are likely to presume an association or relationship with the Opponent with respect to the services of the Applicant, if they bear the Opposed Trade Mark.

   (i) Because of the Opponent’s reputation in the mark GE Marks [sic], use by the Applicant of the Opposed Trade Mark is likely to deceive or cause confusion.

   [4] See paragraph 10 below.

   [5] See paragraph 11 below.

2. The “table” referred to in paragraph (a) of the SGP contains details of four Australian trade mark registrations covering services in Class 35, two for the mark GE (“the GE Mark”) and two for the mark shown below:

   (“the GE Monogram”)

3. The “schedule” referred to in paragraph (a) of the SGP identifies some 25 Australian trade mark registrations covering a wide range of goods and services, the earliest dating from 1906.  Seven are for the GE Mark and 17 for the GE Monogram (collectively “the GE Trade Marks”).  The twenty-fifth mark is GE CAPITAL.  For the purposes of this decision I will only examine the likelihood of confusion or deception arising as a result of the reputation of one or both of the GE Trade Marks.

4. As far as assessing that reputation, as Mr Angelopulo noted in his submissions, Kenny J said the following in McCormick & Co Inc v McCormick:[6]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product…

   [6] (2002) 51 IPR 102 at [86].

5. The Opponent’s evidence in support consists of declarations by Jeffrey Larson and Lara Gun, with Mr Larson in particular describing the Opponent’s long history and varied activities and its associated use of the GE Trade Marks going back more than a century.  Mr Larson is the Opponent’s “Brand Counsel” and, like the Opponent itself, is based in Connecticut in the United States.  He refers to “the Opponent, together with its predecessors-in-interest, successors-in-interest, affiliated entities, and authorized licensees” collectively as “GE” and says GE “is engaged in the business of manufacturing, distributing, advertising and selling numerous lines of goods and services.”  His evidence going to the reputation of the GE Trade Marks was unchallenged and I accept the following characterization and summary of that evidence provided by Mr Angelopulo in his written submissions (with Mr Angelopulo’s footnotes omitted):

   46. The Opponent’s evidence establishes that [the] GE Trade Marks had a strong reputation in Australia before the [Relevant] Date.  This has not been disputed by the Applicant’s evidence.

   47. In particular, the Opponent’s evidence supports the conclusion that the GE [Trade Marks] had acquired a considerable reputation in Australia by the [Relevant] Date, including for the reasons set out below:

   (a) the GE [Monogram] was first developed around 1899 in the United States.  The Opponent has a company history dating back to 1878 when the well­known inventor Thomas Edison created the Edison General Electric Light Company.  Various acquisitions, divestitures and reorganisations thereafter resulted in the creation of the General Electric Company;

   (b) as at the [Relevant] Date, the Opponent employed more than 300,000 employees worldwide, was one of the world’s leading multinational technology, energy and industrial companies and operated in more than 100 countries, providing a wide array of products and services to customers across the globe.  The Opponent operates a number of business segments, including GE Healthcare, GE Oil and Gas, GE Energy Connections, GE Power and Water, GE Aviation, GE Transportation, GE Home & Business solutions, GE Capital, GE Digital and Current Powered by GE;

   (c) products and services bearing the GE Trade Marks are sold throughout the world.  The Opponent has trade mark registrations for the GE Trade Marks in over 160 countries, including Australia.  The Opponent owns almost 3,800 registrations and applications including the element GE or the GE Monogram, including a large number in Australia;

   (d) the Opponent uses the GE Trade Marks on or in connection with a vast array of goods and services; over half a million different products are sold around the world in association with the GE Trade Marks;

   (e) the GE Trade Marks are amongst the most well known trade marks in the world and are consistently ranked as one of the world’s best and most valuable global brands by prominent brand valuation agencies.  The Opponent is considered one of the most watched and admired companies in the world;

   (f) as a result of the fame of the Opponent and its GE Trade Marks, the Opponent has been referred to by the media, industry personnel and consumers as simply GE (the abbreviation for General Electric) both internationally and in Australia;

   (g) in Australia, the GE Trade Marks have been used for many years, by either the Opponent, its predecessors in title or its licensees.  The Opponent’s involvement in Australia dates back to 1882;

   (h) today, GE Australia operates through a number of core businesses servicing customers in relation to Aviation, Power Generation and Distribution, Healthcare, Lighting, Mining, Oil and Gas, Rail, and Water.  These core businesses are represented in Australia in multiple locations and the Opponent employs over 6,000 people across Australia and New Zealand;

   (i) the Opponent has generated substantial revenue from sales of its goods and services under the GE Trade Marks.  For example, for the years 2011 to 2015, the Opponent’s worldwide annual revenues averaged over USD $140 billion and in 2012, the Opponent’s total revenue in Australia and New Zealand (excluding GE Capital) was over $3.5 billion; and

   (j) advertising and promotion relating to the GE Trade Marks both internationally and in Australia, covers a range of activities such as advertising over the radio, in publications and online, social media, in­ store collateral material, events and sponsorships, with global advertising expenditure in the hundreds-of-millions-of-dollars.

   48. As a result of the extensive and prolonged use of the GE Trade Marks by the Opponent, its predecessors, authorised users and licensees, the [Opponent] enjoys a very substantial reputation in the GE Trade Marks both in Australia and worldwide.

6. As I said, I accept that the foregoing is a fair summary of Mr Larson’s evidence, which evidence, as Mr Angelopulo also noted, is supported by some 2,350 pages of documentation. This includes copies of the Opponent’s Annual Reports for the years 2011 to 2015, extracts from the Opponent’s various websites and social media platforms, the results of several worldwide famous brand surveys featuring the GE Trade Marks and copies of a large number of third party print and online articles in which the Opponent is referred to simply as “GE”. Based on this evidence I am more than satisfied that each of the GE Trade Marks enjoyed a strong reputation in Australia as at the Relevant Date sufficient to enliven the s 60 ground of opposition.

7. Taking the reputation of the GE Trade Marks into account, then, I must consider whether notional use of the Opposed Mark in a normal and fair manner for “business consultancy” or “business administration” services (“the Claimed Services”) would be likely to deceive or cause confusion amongst, as is often said, a “significant” or “substantial” number of potential consumers of such services as at the Relevant Date.  As Heerey J put it in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[7]

   …the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[8]  What is “significant” or “substantial” will depend on the nature of the goods or services in question.  For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [7] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.

   [8] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

8. In the present case, as Mr Angelopulo emphasized, the Claimed Services are very broad.  While on the face of it relatively sophisticated, they might in principle be offered to a wide range of business people or potential business people of all kinds.  It is with this broad cohort then, those seeking business consultancy services of some sort or those seeking assistance with the administration of a business, that I need be concerned.

9. Moreover I agree with Mr Angelopulo that the Claimed Services implicitly include services the same as some of the services the Opponent offers under the GE Trade Marks and thus that the potential market for the parties’ services is to that extent also the same.  I have set out the Applicant’s evidence in answer in full below, but note here that it is no answer for Mr Elliott to say that the Applicant’s “operating activities and services…have not and do not compete or conflict directly or indirectly, nor reflect any trademarks or operating entities same or similar to that registered by [the Opponent].”  It is not relevant to my decision what use the Applicant may have made of the Opposed Mark in the past; what I need be concerned with is what the Applicant can do with the mark if it be used in a fair manner for all of the Claimed Services.  As noted, those services are very broadly defined.  In this regard Mr Angelopulo cited Barwick CJ’s well known words from Berlei Hestia Industries Limited v The Bali Company Inc:[9]

   But the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark.  The question is whether its use is likely to confuse.  In answering that question, the capacity of the respondent to apply its mark to merchandise of the same kind as that sold by the appellant must be borne in mind even though as yet it has not done so.  The answer to the question cannot be confined to the circumstances of the trade presently obtaining.

   [9] [1973] HCA 43; (1973) 129 CLR 353.

10. As to the significance of the words “likely to deceive or cause confusion,” the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said in The Coca-Cola Company v All-Fect Distributors Ltd (“Coca-Cola”):[10]

    [39] …No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

    “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

    [10] (1999) 96 FCR 107; 47 IPR 481 at [39].

11. It is well established too that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J said in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:[11]

    A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495.  There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.

    [11] (1997) 38 IPR 495 at 501. His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

12. Given the threshold for finding a likelihood of confusion is lower than that for a likelihood of deception I will focus on the former in the discussion which follows.  In this regard I note the well accepted guiding principles concerning confusion highlighted by French J in Registrar of Trade Marks v Woolworths Ltd and quoted by Mr Angelopulo in his submissions:[12]

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    [12] (1999) 45 IPR 411 at [50], based on Kitto J’s formulation in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

1. In his submissions on the likelihood of confusion Mr Angelopulo referred to the evidence of Lara Gun and Rebecca Rumens in particular.  It is accordingly useful at this point to identify the most relevant of parts of this evidence and also to consider what the Applicant says in its evidence in answer.

2. Ms Gun is a solicitor with the Opponent’s attorneys and the import of her declaration is its two annexures.  The first is an extract from the Macquarie Australian Dictionary which, as she puts it, “defines CORP to mean CORPORATION.”  The second annexure is a copy of the first four pages of a Google^® search limited to Australia that Ms Gun conducted on the term “ge corp”.  She notes this “reveals references to the Opponent.”  Indeed, I observe in passing, all 40 search results shown refer to the Opponent.

3. As mentioned, the Applicant’s evidence in answer to Larson and Gun is contained in a brief declaration by Graeme Elliot which effectively includes the “submissions” Mr Elliot filed separately in his letter of 11 January 2016.  It is convenient to set this out in full here:

   1. I am the registered owner of the [Applicant] and so authorized to make this declaration.

   2. The evidence in this Declaration comes from my personal knowledge, experience and involvement with the registration and operation of the company GECORP Pty Ltd.

   3. I am aware that the Opponent is opposing the registration in Australia of trade mark application number 1697178 for [the Opposed Mark] in the name of the company GECORP Pty Ltd which covers business consultancy; business administration in Class 35 and has a priority filing date of 31 May 2015.

   (a) GECORP is a registered trading company with the Australian Securities and Investments Commission, trading professionally without opposition since 08.05.2012.

   (b) The trademark is a representation of the registered company owners initials G.E (Graham Elliot), having no bearing or correlation to the letters used in the opposing party or similar registered trademark/s bearing the same two “initials” letters.

   (c) The proposed trade mark GECORP represents the registered and trading company GECORP Pty Ltd’s operating activities and services that have not and do not compete or conflict directly or indirectly, nor reflect any trademarks or operating entities same or similar to that registered by [the Opponent].

   (d) GECORP is also the registered owner of the mediums such as the Domain, GECORP.com.au, the Instagram account GECORP, Social Facebook account GECORP, Facebook business page GECORP, neither of which have been pursued, registered, opposed or challenged by the opposing party.

   (e) The opponents’ [sic] documentation references a range of internet search [sic] in the name GE Corp (with a space between GE & Corp), where a search of GECORP will show several companies Globally trading, advertising and actively trading on the internet as GECORP.

4. The declaration by Rebecca Rumens, a trade mark searcher employed by the Opponent’s attorneys, constitutes the Opponent’s evidence in reply.  As described below, she annexes the results of several searches she conducted that were prompted by Mr Elliot’s evidence.

5. As to Mr Elliot’s statement at paragraph (a), Ms Rumens annexes an extract from ASIC’s database showing the Applicant was incorporated on 8 May 2012 (as Mr Elliot says), but originally with the name “The Graham Elliot Family Company Pty Ltd.”  The change of name to “GECORP Pty Ltd” (which is the manner, I note, in which Mr Elliot renders the name in his above declaration) was recorded with ASIC on 15 March 2013.  I note Graham Elliot has always been one of its two Directors and its Company Secretary.

6. Responding to paragraph (d) of Elliot, Ms Rumens continues:

   Mr Elliot states in paragraph (d) of his declaration that “GECORP is also the registered owner of the mediums such as the Domain, GECORP.com.au, the Instagram account GECORP, Social Facebook account GECORP, Facebook business page GECORP...”  On 23 September 2016 I conducted:

   (a) a domain name Whois search in relation to the domain name gecorp.com.au.  An extract showing the results of this search is attached at Annexure RR-2;

   [Annexure RR-2 shows the registrant as “Fastrack Drag Racing Pty Ltd, with Graham Elliot indicated as the registrant’s contact.]

   (b) a search of the Internet using the Google search engine for A screenshot of the results of that search is attached at Annexure RR-3;

   [The first 10 search results are shown.  None of these relates to the Applicant but one result identifies the Opponent’s website at search of the FaceBook website at for gecorp.  Screenshots of the results of that search are attached at Annexure RR-4;

   [This located no presence or activity by the Applicant.]

   (d) a search of the Instagram website at for gecorp. Screenshots of the results of that search are attached at Annexure RR-5;

   [This located the Applicant’s Instagram^® page shown below:]

   and on 6 October 2016 I conducted a search of the Internet using the archival search engine at (the Wayback Machine) in relation to the domain name A screenshot of the results of that search is attached at Annexure RR-6.

   [The screenshot indicates the domain name had not yet been used.]

7. In relation to paragraph (e) of Elliot, Ms Rumens says:

   Mr Elliot states in paragraph (e) of his declaration that “...a search of GECORP will show several companies Globally (sic) trading, advertising and actively trading on the internet as GECORP”.  On 23 September 2016 I conducted:

   (e) a worldwide search of the Internet using the Google search engine for the term GECORP.  Screenshots of the results of that search (first 10 pages) are attached at Annexure RR-7;

   [The sole reference to the Applicant is the 71^st result, being a copy of a November 2015 Sydney Morning Herald article concerning “Graham Elliot, driver of the GE Corp/Pro Signs dragster.”  I note the first search result returned is for the Opponent.]

   (f) an Australian search of the Internet using the Google search engine for the term GECORP.  Screenshots of the results of that search are attached at Annexure RR-8.

   [Again, the sole reference to the Applicant is in the Sydney Morning Herald article concerning Graham Elliot mentioned above, that is as “GE Corp”.  There are however several references to the Opponent.]

8. Referring to the evidence of Ms Gun and Ms Rumens, Mr Angelopulo highlighted the following matters bearing on the likelihood of confusion in this case which I have found persuasive (original footnotes retained):

   29. Marks are likely to be considered deceptively similar[13] where the later trade mark incorporates the essential distinguishing or memorable feature of the earlier trade mark.  If “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”,[14] then confusion is likely to result if that feature is adopted in the trade mark of another.[15]

   …

   31. The [Opposed Mark] consists of the word GECORP.  The main identifying element of the Applicant’s mark, the prefix GE, is the strongest visual component of the mark.  The GE prefix is identical to the [GE Mark] and is the main identifying element in the [GE Monogram].

   32. The presence of the element CORP in the [Opposed] Mark does not diminish the likelihood of consumers being deceived or confused when comparing the respective marks on the basis of imperfect recollection.  The principal reason for this is that that element is likely to be interpreted by consumers as an abbreviation of the word CORPORATION. …

   33. The likelihood of such an interpretation is reinforced by the fact that, in common parlance, the term CORPORATION is generally understood, including by Australian consumers, to refer to US corporate entities.  Accordingly, notwithstanding the fact that the Opponent’s actual corporate name, General Electric Company, does not contain the word “Corporation”, consumers are likely to consider the terms GE Corporation or GE Corp to be references to the Opponent.  This likelihood is demonstrated by the results of the search of the Internet using the Google Australia database set out in Annexure LTG-2 of the Gun Declaration.  That search returned very large numbers of results, the overwhelming majority of which refer to the Opponent or its related entities.

   34. Given the considerable reputation of the Opponent, the term GE…and the meaning ordinarily ascribed to the term CORP, there is a significant likelihood that consumers of the relevant services would interpret the [Opposed] Mark as consisting of two elements, GE and CORP, rather than of a single, composite element.

   [13] This submission was made in the context of the s 44 ground of opposition, but is also relevant to the likelihood of deception or confusion under s 60.

   [14] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162 (HL).

   [15] Shanahan’s Australian Law of Trade Marks & Passing Off 6th Edition at 291-292.

9. To the extent it relates to the s 60 ground of opposition I also agree with Mr Angelopulo’s following submission:

   66(c) Mr Elliot alleges in (b) of [Elliot] that the [Opposed] Mark is a “representation” of his initials.  The fact that Mr Elliot happens to have initials that are identical to one of the world’s best known trade marks does not, in and of itself, entitle him to adopt, use and register those initials (or a version of them) as a trade mark.  Trade mark law prohibits his doing so if the mark adopted is deceptively similar to the registered mark of the owner of that well-known mark and is sought in relation to the same or similar services, if use by him of his mark would be likely to deceive or cause confusion, either because of the reputation of the well-known mark or because it would convey a connotation to consumers, or if use of his mark would be contrary to law.  If, as is the case here, each of those circumstances applies, Mr Elliot’s allegation that his initials GE have “no bearing or correlation to the letters used in [the Opponent’s mark]” (that is, GE) must clearly be rejected.

10. That is to say, as indicated in the quotation from Coca-Cola at paragraph 18 above, in order for s 60 to apply, “No intention to deceive or cause confusion” is necessary.

11. Mr Angelopulo also emphasized the manner in which the Applicant and/or Mr Elliot themselves actually render or refer to the Applicant’s name and the Opposed Mark, citing a number of cases which have concluded that “if the evidence shows that the applicant has in fact adopted a particular manner of use it may be difficult for the applicant to deny that this is not a ‘normal and fair’ notional use of the trade mark.”  In this regard I think Mr Angelopulo was right to highlight that:

    61(g) for purposes of these proceedings, the most pertinent result disclosed by the various searches undertaken to assess the credibility of Mr Elliot and the accuracy of the allegations contained in [Elliot] relates to the search of the Instagram website, referred to in paragraph 4(d) of [Rumens].  The results of that search, set out [in paragraph 26 above], are illuminating.  They appear to undermine rather than support the statements in [Elliot] that seek to differentiate between the [Opposed] Mark and the GE Trade Marks.  The Instagram search revealed use of the GECORP mark in the following form:

    GECORP

    Relevantly, the mark displays the elements GE and CORP in different colours, GE in green and CORP in black.  Though there is not a space between GE and CORP, the different colours used makes it overwhelmingly likely that consumers would interpret the mark as consisting of two separate elements, GE and CORP, rather than a unitary mark GECORP. …

12. Mr Angelopulo made several further submissions with which I am in general agreement but which I do not believe it is necessary to detail here. It is sufficient to say that I find his closing submission on the s 60 ground persuasive:

    55. Because of the Opponent’s very substantial reputation in the [GE Trade Marks], in combination with:

    (a) the extremely broad range of good and services provided by the Opponent prior to and at the [Relevant] Date;

    (b) the Opponent’s longstanding practice of combining the mark GE with other terms to identify its various business units and goods and services offered under marks consisting of or incorporating the letters GE and the likelihood that Australian consumers of the relevant services would be familiar with that practice;

    (c) the likelihood that Australian consumers of the relevant services would:

    i. understand the CORP element of the [Opposed Mark] to be an abbreviation of or a reference to the word “Corporation”;

    ii. accordingly, understand the mark GECORP to be an abbreviation of or reference to “GE Corporation”;

    iii. equate references to “GE Corporation” with references to the Opponent,

    it is extremely likely that consumers would be caused at least to wonder whether the [Claimed] Services provided under the [Opposed Mark]:

    i. come from the same source as the same and similar services provided under the GE … Trade Marks by the Opponent; and/or

    ii. are offered or provided by the Opponent or pursuant to some form of authorisation, licensing, endorsement or other collaborative arrangement between the Applicant and the Opponent.

13. To conclude, I find I am satisfied on balance that because of the reputation of each of the GE Trade Marks as at the Relevant Date use of the Opposed Mark for the Claimed Services was likely to at least cause confusion (in the sense discussed in paragraphs 18 to 20 above) amongst a significant number of people, even if such confusion might not persist to the point of inducing purchases. The Claimed Services are very broad, as are the services provided under the GE Trade Marks since the 1890s. In this regard the parties’ relevant services may be considered notionally the same and in principle aimed at the same potential market. Based on the evidence and on my own observation the GE Trade Marks are very well known in Australia. The evidence indicates the Opponent is almost invariably referred to in the commercial world and by the public simply as “GE” and internet searches on the term “GE Corp” overwhelmingly identify websites discussing, or operated by, the Opponent. The Opposed Mark conjoins the letters “GE”, being the essential (or sole) element of the GE Trade Marks, with the element CORP, which I accept most Australians would recognize as a standard abbreviation for the word “corporation”. In sum I am satisfied the Opponent has established its ground of opposition under s 60.

Decision

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar
   must, at the end, decide:

   (a)  to refuse to register the trade mark; or
                 (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then
     specified in the application;

   having regard to the extent (if any) to which any ground on which the
   application was opposed has been established.
   Note: For limitations see section 6.

2. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1697178.

Costs

1. Mr Angelopulo requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
19 December 2017