Goldman, Sachs & Co.

[2012] ATMO 108

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1380188 (36) – GS CUSTODYPLUS - in the name of Goldman, Sachs & Co.

Delegate:	Bianca Irgang
Representation:	Applicant: Roseanne Mannion of Spruson & Ferguson
Decision:	2012 ATMO 108 Ex parte - S33 – section 44 ground for rejection – Marks are deceptively similar – consideration of subsections 44(3)(a) and (b) – evidence insufficient for acceptance and no other circumstances made out – application rejected.

Background

1.     Goldman, Sachs & Co filed application number 1380188 on 25 August 2010 in class 36 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  GS CUSTODYPLUS

Trade mark application:      1380188

Priority Date:  25 August 2010

Convention details:              22 August 2010
  85/113050
  United States of America

Services Specification:         Class 36: Financial services, including financial asset transfer services; electronic financial trading services; financial portfolio management services; financial asset management services; investment management and advisory services; financial planning services; management of financial accounts; online management of financial assets and trading positions; movement of financial assets among various parties for the protection of such financial assets via an online platform; management of financial assets and trading positions; financial transaction and portfolio investment advisory services

Endorsements:  Convention priority claimed: 22 August 2010, United States of America, No. 85/113050 in respect of financial services, namely, financial asset transfer services; electronic financial trading services; financial portfolio management services; financial asset management services; investment management and advisory services; financial planning services; management of financial accounts; providing an online platform for management of financial assets and trading positions; providing an online platform for the movement of financial assets among various parties for the protection of such financial assets; management of financial assets and trading positions; financial transaction and portfolio investment advisory services.

2. At the examination stage an initial adverse report was issued to the applicant on 24 September 2010. The following trade mark registration nos. 1072679 and 1128798 were raised as a grounds for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis that they are deceptively similar to the applicant’s trade mark. The details of these registration are as follows:

Trade mark:  

Trade mark registration:     1072679

International Registration:  855961

Owner:  GS Holdings corp.

Priority Date:  1 October 2004

Convention Details:              2 April 2004
  40-2004-0014894
  KOREA, REPUBLIC OF

Goods Specification:            Class 1: Paraxylene; mixed fertilizers; naphthalene; chemical additives to motor fuel; polypropylene resins; polyester resins; polyethylene resins; antifreeze; brake fluid; transmission fluid

Class 4:Benzine; lubricants; benzene; light oils; kerosene; diesel oil; crude oil; gasoline; LPG (liquefied petroleum gas); propane gas; gasoline for industrial purposes: industrial grease; lubricating oil

Class 35:Advertising agencies; publication of publicity texts; business management and organization consultancy; commercial information agencies; marketing research; opinion polling; data search in computer files (for others); business management of hotels; business management of department stores; business management of supermarkets; business management of convenience stores; import-export agencies; marketing services; rental of vending machines; business management of gas stations; sales agency of washing and cleaning equipment; sales arranging of washing and cleaning equipment; sales agency of wire/wireless telecommunication machines and implements; sales arranging of wire/wireless telecommunication machines and implements; sales agency of records and videotapes; sales arranging of records and videotapes; sales agency of gymnastic and sporting goods; sales arranging of gymnastic and sport goods; sales agency of motor vehicles' parts and accessories; sales arranging of motor vehicles' parts and accessories; sales agency of liquid fuel; sales arranging of liquid fuel; sales agency of solid fuel; sales arranging of solid fuel; sales agency of gaseous fuel; sales arranging of gaseous fuel; sales agency of medical equipment; sales arranging of medical equipment; sales arranging of medical equipment; sales agency of kitchen utensils; sales arranging of kitchen utensils; sales agency of household electrical appliances; sales arranging of household electrical appliances; sales agency of household electrical appliances; sales agency of heating apparatus; sales arranging of heating apparatus; sales agency of furniture; sales arranging of furniture; sales agency of bags; sales arranging of bags; sales agency of musical instruments; sales arranging of musical instruments; sales agency of clothing; sales arranging of clothing; sales agency of liquors; sales arranging of liquors; sales agency of stationery; sales arranging of stationery; sales agency of clocks; sales arranging of clocks; sales agency of food; sales arranging of food; sales agency of footwear; sales arranging of footwear; sales agency of glasses; sales arranging of glasses; sales agency of toys; sales arranging of toys; sales agency of bedclothes; sales arranging of bedclothes; sales agency of cosmetics; sales arranging of cosmetics

Class 36:Issuance of membership credit cards; hire-purchase financing; rent collection; insurance brokerage; financial evaluation (insurance, banking, real estate); trade brokerage; real estate management; building allotment; real estate fiduciary; real estate brokers; rental of office (real estate); leasing of farms

Class 37: Construction engineering services; building repair; demolition of buildings; building fixture installation construction; factory construction; apartment construction; road construction; electric appliance installation; dam and reservoir construction; atomic reactor construction; pipeline construction; construction for waste disposal facilities; rental of construction equipment; railway construction; construction supervision; machinery maintenance repair; motor vehicle maintenance and repair; mining extraction; street cleaning; car wash

Class 38:Data communication; message sending; communication by telephone; computer aided transmission of messages and images; communication by computer terminals; cellular telephone communication; electronic mail; television broadcasting; television home-shopping broadcasting; Internet broadcasting

Class 39:Liquid fuel transport; gas fuel transport; transport by pipeline; transport of waste; marine transport; rental of ships; petroleum storing; gas fuel storing; rental of warehouses; escorting of travellers; distribution of energy; distribution of electricity

Class 40:Petroleum refining; processing of plastics; processing of rubber; rental of generators; decontamination of hazardous materials; air freshening; destruction of waste and trash; processing of oil; recycling of waste oil; recycling of waste and trash; service for treatment of environment pollution control

Class 41:Theater operating services; entertainer services; production of television programs; news reporter services; teaching; providing karaoke services; arranging and conducting of seminars; television entertainment; publication of electronic books and journal online; providing golf facilities; providing recreation facilities; amusement parks management; game services provided on line from a computer (network)

Class 42:Construction drafting; architectural consultation; computer software design; licensing of intellectual property; consultation in environment protection; land surveying; geological prospecting; geological surveys; research and development (for others); design of interior deco; maintaining shopping web site; oil-field exploitation

Class 43:Restaurants; restaurant chain services; self-service restaurant; catering (food and drink); cafes; cafeterias; rental of temporary accommodation; tourist homes; hotel reservations; retirement homes; day-nurseries

Endorsements:  Convention priority claimed: 2 April 2004, Republic Of Korea, No. 40-2004-0014894. * Convention priority claimed: 2 April 2004, Republic Of Korea, No. 41-2004-0007390

Trade mark:  

Trade mark registration:     1128798

International Registration:  889692

Owner:  GS Holdings corp.

Priority Date:  18 April 2005

Convention Details:              10 November 2004
  45-2004-0003834
  KOREA, REPUBLIC OF

Goods Specification:            Class 35: Advertising agencies; publication of publicity texts; business management and organization consultancy; commercial information agencies; marketing research; opinion polling; data search in computer files (for others); business management of hotels; import-export agencies; marketing services; business management of gas station; procurement services for others (purchasing goods and services for other business); sales agency for carpets; sales arranging for carpets; sales agency for agricultural products; sales arranging for agricultural products; sales agency of stationery; sales arranging of stationery; sales agency of boiled oil; sales arranging of boiled oil; sales agency of aquatic products; sales arranging of aquatic products; sales agency of clocks; sales arranging of clocks; sales agency of food; sales arranging of food; sales agency of glasses; sales arranging of glasses; sales agency of toys; sales arranging of toys; sales agency of lubricating oil; sales arranging of lubricating oil; sales agency of livestock products; sales arranging of livestock products; sales agency of bedclothes; sales arranging of bedclothes; sales agency of cameras; sales arranging of cameras; sales agency of cosmetics; sales arranging of cosmetics; sales agency of bags, sales arranging of bags; sales agency of footwear; sales arranging of footwear; sales agency of musical instruments; sales arranging of musical instruments; sales agency of grains; sales arranging of grains; sales agency of clothing; sales arranging of clothing; sales agency of liquors; sales arranging of liquors; sales agency of pressure vessels; sales arranging of pressure vessels; sales agency of furniture; sales arranging of furniture; sales agency of knives for domestic use; sales arranging of knives for domestic use; sales agency of books; sales arranging of books; sales agency of records; sales arranging of records; sales agency of gymnastic and sporting goods; sales arranging of gymnastic and sporting goods; sales agency of motor vehicles' parts and accessories; sales arranging of motor vehicles' parts and accessories; sales agency of household electrical appliances; sales arranging of household electrical appliances; sales agency of construction materials; sales arranging of construction materials; sales agency of solid fuel; sales arranging of solid fuel; sales agency of gaseous fuel; sales arranging of gaseous fuel; sales agency of heating apparatus; sales arranging of heating apparatus; sales agency of liquid fuel; sales arranging of liquid fuel: sales agency of medical equipment; sales arranging of medical equipment; sales agency of lighting apparatus; sales arranging of lighting apparatus; sales agency of kitchen utensils; sales arranging of kitchen utensils; import-export agencies related to gaseous fuel; sales agency of tableware; sales arranging of tableware; sales agency of gasoline for industrial use; sales arranging of gasoline for industrial use; sales agency of material of plastic; sales arranging of material of plastic; sales agency of electronic heating equipment for domestic use; sales arranging of electronic heating equipment for domestic use; sales agency of washing and cleaning equipment; sales arranging of washing and cleaning equipment; sales agency of wire/wireless telecommunication machines and implements; sales arranging of wire/wireless telecommunication machines and implements; sales agency of jewellery and ornaments; sales arranging of jewellery and ornaments; business management of department stores; business management of convenience stores; business management of supermarkets; business management of discount stores; shopping agency

Class 36:Issuance of membership credit cards; hire-purchase financing; rent collection; insurance brokerage; financial evaluation (insurance, banking, real estate); trade brokerage; real estate management; building allotment; real estate fiduciary; real estate brokers; rental of office (real estate); leasing of farms

Class 37:Building repair; demolition of buildings; building fixture installation construction; factory construction; apartment construction; road construction; electric appliance installation; dam and reservoir construction; atomic reactor construction; pipeline construction; construction for waste disposal facilities; rental of construction equipment; railway construction; construction supervision; machinery maintenance repair; motor vehicle maintenance and repair; car wash; oil-field exploitation

Class 38:Data communication; message sending; communications by telephone; computer aided transmission of messages and images; communication by computer terminals; cellular telephone communication; electronic mail; television broadcasting; television home-shopping broadcasting; Internet broadcasting

Class 39: Liquid fuel transport; gas fuel transport; transport by pipeline; transport of waste; marine transport; rental of ships; petroleum storing; gas fuel storing; rental of warehouses; escorting of travellers; distribution of energy; distribution of electricity; home-delivery service; operation of vehicle parking facilities

Class 40:Petroleum refining; processing of plastics; processing of rubber; rental of generators; decontamination of hazardous materials; air freshening; destruction of waste and trash; processing of oil; recycling of waste oil; recycling of waste and trash; treatment of waste materials relating to environmental pollution control

Class 41:Theater operating service; entertainer services; production of television program; news reporters services; teaching; providing karaoke services; arranging and conducting of seminars; television entertainment; publication of electronic books and journals online; providing of golf facilities; providing recreation facilities; amusement parks; game services provided online (from a computer network); interpretation services

Class 42:Construction drafting; architectural consultation; computer software design; computer programming; licensing of intellectual property; consultation in environment protection; land surveying; geological prospecting; geological surveys; research and development (for others); design of interior deco; maintaining shopping web site; construction engineering service

Class 43: Restaurant; restaurant chain services; self-service restaurant; catering (food and drink); cafe; cafeterias; rental of temporary accommodation; tourist homes; hotel reservations; retirement homes; day-nurseries; resting area (place); wedding hall management, included in this class

Class 44:Stock farming (for others); horticulture (for others); health care; hospitals; pharmacy; nursing homes; rest home management; landscape gardening; afforestation

Class 45:Funerals; clothing rental; dating services; security consultancy; marriage agencies; facility guards; security visiting services

Endorsements:  Trade Mark Description: Colour Claimed: ORANGE, GREEN, BLUE and gradation of each color

3.     A total of three adverse examination reports were issued to the applicant in relation to the present application. In response, the applicant provided submissions which the examiner did not consider sufficient to overcome the objection. As part of the third adverse trade mark examination report the examiner wrote that unless the applicant was able to produce evidence or other circumstances in support of the application he would initiate the rejection process against the application. As an alternative, the applicant was reminded that it had the right to request a hearing.

4.     The applicant requested a hearing which I conducted as a delegate of the Registrar of Trade Marks on 21 June 2012 in Sydney. Roseanne Mannion of Spruson & Ferguson appeared for the applicant.

The Law

5. Section 33 of the Act provides:

33  Application accepted or rejected

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

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

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

Note:For this Act see section 6.

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

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

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

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

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

The Evidence

6.     The applicant has provided a statutory declaration in support of its trade mark application the short particulars of which are as follows:

Declarant	Position	Date Made	Exhibits
Roseanne Mannion	Employee of Spruson & Ferguson	21 June 2012	A to O

Presumption of Registrability

7. Ms Mannion argues that the presumption of registrability which arises under subsection 33(1) of the Act is particularly relevant for this matter. She has relied on the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

[1] (1999) 45 IPR 411; (1999) AIPC 91-499 at paragraph 34.

8. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

9. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

Discussion

10. The applicant requested a hearing in order to argue that the section 44 ground for rejection against its trade mark application was not appropriate since the trade marks were not deceptively similar. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

11.     The cited trade mark registration has an earlier priority date than the applicant’s trade mark and its broad claim for financial services in class 36 are the same as some of those services claimed in class 36 by the earlier registrations. The applicant has not argued these points. The key issue to be decided by me is whether the applicant’s GS CUSTODYPLUS trade mark is substantially identical with or deceptively similar to the cited ‘GS’ stylised trade marks.

Comparison of the trade marks

12.     It is obvious that the applicant’s GS CUSTODYPLUS trade mark is not substantially identical with the cited ‘GS’ trade marks according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[2]. The applicant’s trade mark includes the additional word CUSTODYPLUS the presence of which provides a clear visual difference from the cited ‘GS’ stylized trade marks.

[2] (1961) 109 CLR 407 at 414

13. On the other hand, deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the applicant’s trade mark.[3]  The probability of deception must be finite and non-trivial.[4]

[3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, per Windeyer J at 415

[4] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, per French J at [43]

14.     The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415 where Windeyer J. stated:

‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]’

15.     His Honour added at 416, that:

‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

16.     The principles laid out in these tests have not been challenged.

17.     Ms Mannion discussed at length her submission that the trade marks in question are not deceptively similar, drawing on the established authorities for the purpose of making the comparison. Despite that submission, whilst I accept that there are clearly differences between the respective trade marks I cannot agree that they are not deceptively similar.

18. In comparing the trade marks in terms of section 44, the letters GS are the common element in all of the trade mark representations. While the cited ‘GS’ trade marks do contain some stylization in text together with the addition of a device (arguably rendered in the shape of a stylized letter ‘G’), the most prominent element of these trade marks is the letters GS. It is likely that the trade marks will be referred to as ‘GS’ by consumers without reference to the stylization. With this observation in mind, I turn to the applicant’s trade mark for GS CUSTODYPLUS. I note the applicant’s submission that CUSTODYPLUS has no meaning and is therefore distinctive. I believe that it is probably for this very reason, along with the fact that GS is located at the beginning of the trade mark, that consumers are likely to focus on the GS part of the trade mark. Given the structure of the applicant’s GS CUSTODYPLUS trade mark I consider it probable that consumers who know of the cited GS trade marks upon seeing services bearing the applicant’s GS CUSTODYPLUS trade mark are likely to believe that the services come from the same trade source or are related to the services bearing the cited trade marks.

19.     The applicant has submitted that the trade mark is GS CUSTODYPLUS and not GS solus. The applicant states that ‘GS is too indefinite an element, given the difficulty in trade marks consisting of two letters being considered inherently distinguishable, to have such a distinctive impact that the phrase CUSTODYPLUS will be ignored’. I do not believe that the CUSTODYPLUS element of the applicant’s trade mark should be disregarded but at the same time I hold the view that consideration must be given as to whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in each of the respective trade marks may induce traders and the public to believe that the marks emanate from the same trade source.[5]

[5] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

20.     The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[6] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

‘With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.’

[6] 66 RPC 113

21.     Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that GS CUSTODYPLUS would be seen as a member of the ‘family’ of GS trade marks because of a commonality that has been produced by a mutual feature.

22.     As already discussed, the letter GS are the common element in all the trade mark representations. Although the conflicting trade marks contain stylised images of a letter G, consumers are more likely to refer to them by the word or letter element, which in this case is the letters GS.  It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader.

23.     I consider this situation to be applicable in the present instance.  The conflicting marks consist of the acronym GS; the trade mark is GS CUSTODYPLUS.  Consumers are likely to think that the conflicting trade marks denote related products from the same provider.  It is also likely that consumers will believe CUSTODYPLUS to be referring to a specific range of financial and investment services being provided by the same trade source as the services provided under the conflicting trade marks, and that GS is indicating the house mark. I am satisfied that the applicant’s trade mark is deceptively similar to the cited GS trade marks.

Acceptance under section 44(3)(b) of the Act – Other Circumstances

24. I note the applicant’s submissions regarding acceptance of its trade mark under section 44(3)(b) of the Act due to other circumstances being:

·The applicant’s existing trade mark registrations in Australia;

·The state of the Register;

·The element GS is a reference to the applicant’s name, Goldman Sachs;

·The fact that the trade marks co-exist in the US and New Zealand without complaint.

25.     In support of its claims that the applicant pointed to the acceptance of the ten trade mark registrations owned by the applicant. The applicant asserted that the Trade Marks Office had already determined that these trade marks were distinguishable from the cited GS trade marks for the same services. The applicant further asserted that its prior rights in some of these registrations which incorporate the letters “GS”, extended to the present application. The applicant further asserted that while many of their trade mark registrations pre-date the cited trade marks some of them post-date the cited trade marks.  It stated “For those marks that post-date the registration of the cited trade marks, no objections to acceptance based on the Cited Marks was raised by the Office during the examination of these marks. Equally, and possibly more importantly, the cited owner did not file an opposition to registration of any of these marks during the relevant period”.

26.      I, however, do not accept this reasoning.

27.     A consideration of the applicant’s previously registered trade marks shows that there are very few similarities with those registrations and the current trade mark application. The applicant’s previous trade mark registrations are as follows:

Number(s)	Class	Trade Mark	Priority Date
609334	36	GOLDMAN SACHS	17 August 1993
742207	36	GSAM	21 August 1997
767487	36	GSAM	15 July 1998
843331	36	20 July 2000
1011584	36	GSAT	16 July 2004
1266980	16, 36	GS SUSTAIN	9 October 2008
1353237	36	GSQUARTIX	29 March 2010
1379941	36	GSET	23 August 2010
1379942	36	GSET 1CLICK	23 August 2010
1396638	36	GSET REDI	24 November 2010

28.     It is apparent from a consideration of the above trade marks that only one of the trade marks registrations (no. 1266980) could be considered analogous to the present trade mark application. While it is clear that the applicant does own various trade marks which incorporate the letters G and S that is where the similarities end. However, if I considered (which I do not) that trade mark registration no. 1266980 GS SUSTAIN would be analogous to the present GS CUSTODYPLUS trade mark I have also taken into account the history of the cited trade mark registrations nos. 1072679 and 1128798. I accept that in each instance it is probable that the examiner did not consider the applicant’s trade mark registration no. 1266980 GS SUSTAIN when the cited trade marks were accepted for registration. A close inspection of the official files for the two G GS trade marks reveals that the search strategies employed by those examiners would not have located trade mark no. 1266980 GS SUSTAIN. As a consequence of this, the examiners did not extract or apparently consider the GS SUSTAIN trade mark before accepting the two GS cited trade marks.

29. It is not possible to ascertain whether the examiners ever assessed registration 1266980 GS SUSTAIN against the two GS cited trade marks in terms of s. 44 but it is very likely that this step was simply not taken. Therefore, I cannot agree with the applicant’s argument that the acceptance of these two GS trade marks in the face of its earlier registration means that the present application is not deceptively similar to either of the G GS cited trade marks.

30.     Each case must be assessed on its merits - with regard to the relevant judicial tests and not with regard to the state of the Register.  In this regard, I refer to the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579; (2000) AIPC 91-539 at paragraph 35 where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited [1996] RPC 281 at 305 to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:

‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’

31.     I also note that the mere fact that the registrant of the conflicting trade marks may not have ever sought to oppose other seemingly similar trade marks does not indicate any particular ability for the present application to co-exist with those trade marks.

32.     The applicant has provided information that the letters GS are a well-known acronym for the applicant’s name, Goldman Sachs. I note from the evidence provided that GS is how the applicant is referred to on the NYSE and the NASDAQ Indexes. However, there are a number of other meanings for the letters GS which have nothing to do with the applicant. While the applicant may be one of the most well-known financial institutions in the world it is also clear that the applicant has not used its GS CUSTODYPLUS trade mark in Australia and it is the GS CUSTODYPLUS trade mark that the applicant is seeking to register, not the acronym GS solus.

33.     In addition, the applicant’s arguments that the cited trade marks co-exist with the applicant’s trade marks in the USA and New Zealand are not a sufficient reason to accept the GS CUSTODYPLUS trade mark application in Australia. The registration of a trade mark in another country with different trade mark legislation is not necessarily a precedent for its registrability in Australia, nor can I be aware of any special circumstances which may have been applied in relation to these trade marks in the United States.

34. In conclusion, I arrive at the finding that the respective trade marks are deceptively similar for the purposes of section 44. The applicant has not been able to provide any evidence of use before the filing date so that the provisions of subsection 44(3)(a) are not applicable. Nor am I satisfied that the current other circumstances which might be said to apply make it proper to accept this trade mark for registration. The applicant has simply not provided sufficient reasons for the present application to be accepted under the provisions of subsection 44(3)(b). Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) to the applicant’s trade mark in this matter.

Decision

35.     A valid ground for rejection of the application exists under subsection 44(1). The applicant has failed to overcome this ground for rejection under subsection 44(3).

36.     Therefore, I reject trade mark application no. 1380188.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
13 November 2012