Group 4 Securitas N.V. v Stonepack Pty Limited

[2000] ATMO 59

TRADE MARKS ACT 1955

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

Re:Opposition by Group 4 Securitas N. V. to registration of trade mark application 609693(42) - SECURITY GROUP III and device- lodged in the name of Stonepack Pty Limited.

Background

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition. Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Stonepack Pty Limited (the applicant) lodged the above numbered application on 20 August 1993 in respect of 'provision of security services' in class 42. The trade mark, depicted below, was accepted for registration on a first examination report with the endorsement: 'Registration gives no right to the exclusive use of the word GROUP and the Roman numeral III'. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks of 2 February 1995.

Group 4 Securitas N. V. (the opponent) lodged a notice of opposition to this acceptance on 1 May 1995. The notice set out grounds under ss.24-26, s.40, s.33 and s.28 of the Act and also raised an allegation that use by the applicant would be contrary to the provisions of the Trade Practices Act, 1974. The opponent served and lodged part of the evidence in support of its opposition on 10 March 1997 and the balance on 3 June 1999. The applicant submitted no evidence in the matter.

During the evidence in support phase, the opponent informed the Trade Marks Office that it had become aware of a change in the status of the applicant. This involved the appointment of an Administrator for the applicant company. From that time onward, this Office had no success in locating the applicant, for service of standard notices or letters containing information relevant to this opposition matter, until 29 November 1999. At this time, the address of the Administrator of the applicant company was obtained and a letter was dispatched from a Senior Examiner from the Hearings Section with details of the date and venue of the hearing on the opposition matter. The Administrator indicated in response to that letter that the applicant was in the process of selling its assets and would not be represented at the hearing.

The matter came before me in Sydney on 14 March 2000. Ms Annabel Reader of the Sydney firm of Baldwin Shelston Waters represented the opponent. The applicant was not represented. Ms Reader chose to rely on written submissions in the matter, which she handed up at the hearing. The only verbal submission made by Ms Reader was in respect of costs.

The Evidence

The total evidence in support consists of four declarations. These are as follows:

Declarant	Status	Date	Attachments	Hereafter
David Michael Felix Dufton	Group Legal Counsel (U.K.) for opponent	26/02/1997	'A' to 'C'	Dufton declaration
Annabel Jane Reader	Attorney (Aust.) for opponent	31/05/1999	'AJR1'	Reader declaration
Peter Olszak	Managing Director for authorised user of opponent in Victoria	01/06/1999	'PO1' to 'PO6'	Olszak declaration
Craig E Higgins	Chief Financial Officer and Secretary for authorised user of opponent in N. S. W.	31/05/1999	'CEH1' to 'CEH8'	Higgins declaration

The opponent owns trade mark registrations, numbered 448780, 448781, 448782, 448784, 448785, 448786, 582794 and 586609 registered in respect of the goods and services outlined below.

Number and Class	Goods or Services as Registered
B448780(42)	Surveillance, guard night-watch services, opening of locks, photographing and filming services, detective agency services including locating of persons, investigation into legal matters, protection and guarding of persons and buildings, protection services against theft, fire and other damage and loss and protection of any transportation by third parties, lease of protective, alarm and identification material and of all preventative and protective equipment essential for the safety in whatever area of application, services in this class provided by engineers, chemists and physicists, technical advisory services in this class
B448781(39)	Transportation and storage services being vehicle towing services, transportation of passengers, luggage and goods including bullion, money, valuables, documents, objects of art, jewels, fur, precious metals and valuable raw materials, delivery services including parcel delivery services, night and day delivery services, lease of transportation means
B448782(38)	Communication services being postal services, communications by telex, telegraph, telephone, radiophone and wireless telegraph
B448784(9)	Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus; electronic alarm-devices, -systems, -apparatuses and -installations; central(alarm)stations; security systems, -devices, -apparatuses and -installations
B448785(16)	Paper and paper articles, cardboard and cardboard articles (not included in other classes); printed matter, newspapers and periodicals, books; book-binding material; photographs; stationery, adhesive materials (stationery); artists' materials; paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' type and cliches (stereotype)
B448786(6)	Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles) cables and wires (non-electric); metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores; safes
B582794(42)	Security and guarding services; security consultancy services; monitoring of alarms; prison services and remand prison services; all included in class 42
B586609(39)	Transportation and storage; vehicle towing service; transportation of passengers and goods; transportation and escorting of prisoners and remand prisoners from prisons and remand prisons to court and vice versa; luggage transport; bullion transport; parcel delivery service; night and day delivery service; transport of money, valuables and other documents, transport of objects of art, jewels, fur, (precious) metals and valuable raw materials; lease of transportation means

The trade mark registrations involved here are identical, as represented below:

The Dufton declaration in the evidence in support provides information concerning the worldwide use of the opponent's mark. It displays the uniforms used by the opponent's security staff and details the companies worldwide using the opponent's mark. It also attests to the first use of the mark in Australia, by the opponent, in 1993.

The Olszak declaration concentrates on Australian use, by one of the authorised users, of the trade mark. It provides a history of the mark in Australia from June 1995. This particular authorised user has used the mark in relation to specific corrective services. Two private prison facilities, at Mount Gambier in South Australia and North Laverton in Victoria, are both managed by the opponent. These prison ventures involve use of the mark in relation to design, commissioning and management of prisons, prisoner transportation and associated services such as court security services, prisoner behaviour management and correctional programs. The evidence shows that these prison enterprises have been based on the opponent's international operations, particularly those in Europe, and because of the involvement of both state governments, these ventures have assumed high profiles in both Victoria and South Australia. The turnover figures for this user are also included for the years 1995-1998 inclusive.

Support for the opponent's claims for use of its mark in Australia is provided in the Reader declaration by means of copies of advertisements in the Telstra Yellow Pages directories.

Use in Australia of the opponent's mark by a second authorised user is declared in the Higgins declaration. This material is extensive and includes information concerning the opponent's international operations. In relation to Australia, this authorised user first used the mark in June 1993 and Mr Higgins provides annual reports from the years 1993-1996 inclusive to demonstrate this use, in relation to 'security services, manned guarding services, patrol guarding services and key holding services.' The turnover figures, in relation to use of the mark for the financial years 1992-3 to 1998-9, are also in evidence, as are the figures for advertising and promotion from December 1995 to February 1999.

Submissions

Ms Reader drew my attention to the eight prior registrations of the opponent, as listed in the Evidence section, the common use of the name 'Group 4' to identify the opponent's mark (as deposed in the Dufton declaration), and also argued the opponent's grounds of opposition in terms of s.33 and s.28 of the Act.

Discussion

As mentioned above, the opponent lodged a notice of opposition which set out grounds under ss.24-26, s.40, s.33 and s.28 of the Act and also raised an allegation that use by the applicant would be contrary to the provisions of the Trade Practices Act, 1974, (T.P. Act). No evidence or submissions were provided to support the claims made under ss.24-26, s.40 or the T.P. Act. Thus, I find the opposition in terms of those grounds not successful. It remains for me to consider the grounds of opposition taken under s.33 and s.28.

(a) Section 33 -Identical Marks

The relevant legislation for a trade mark whose registration is sought in relation to services is found at s.33(2) and reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Having conceded that the respective trade marks of the applicant and of the opponent are not substantially identical, Ms Reader set out the standard tests for deceptive similarity. The definition of deceptive similarity per s.6(3) of the Act reads:

For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion.

The classic test to which Ms Reader directed my attention is found in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641, where the judgement of Dixon and McTiernan JJ at 658 reads:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

First, in assessing the impression produced on the mind of potential customers by these two marks, is the question of the visual impact. Do the marks look alike, or do they at least have enough visual elements in common to appear to be similar? On the one hand, the application trade mark is a collection of architectural features, namely three stout pillars supporting, and supported on, robust masonry blocks. Under these features are the words SECURITY GROUP III. The mark that the opponent relies on has no pictorial elements at all - it is little more than a simple label mark stating 'group 4' with one margin of the border enclosing the word SECURITAS and three small discs. These two trade marks are not, visually, similar.

Second, is the question of the impression produced by the ideas of the two marks. Here again, the immediate impression generated by the application trade mark is an impression of sturdy architecture - particularly columns and masonry. The idea of the columns is echoed in the presence of the Roman numeral III. The words security group and the visual representation of architectural strength augment each other. The impression generated by the opponent's group 4 trade mark, however, is simply the idea of a label, attached to which is the word securitas. Securitas is a Latin word, and the effect of it on the general public is open to speculation. So far as the ideas of the marks are concerned, however, I do not find that these two trade marks hold much in common, other than a reference to a numbered group.

Third, however, is the question of the aural comparison, and the issue of contextual confusion.

As stated in Australian Woollen Mills v F. S. Walton, supra, at 658:

The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.

Given that consideration, I believe that the heart of the opponent's mark is the word and numeral 'group 4' and that this is the way in which it would usually be described in normal speech. On viewing the applicant's mark, used in relation to its security services, I believe that the prospective purchaser, having heard of the opponent's mark, would be lead to believe that 'group 4' and 'SECURITY GROUP III' (read as 'security group 3') both identify security services emanating from the same source. The applicant's device affords it little assistance where reference is made to the opponent's mark by spoken description, in this instance 'group 4', and that description does not include a device element. This principle of contextual confusion is set out in John Fitton & Co. Ltd's Application 66 RPC 110 at 113, 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 directed 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 one and the same trade source.

In my opinion, the spoken description of the applicant's mark, for similar reasons to those set out above for the opponent's mark, would be either 'security group 3' or 'group 3'. In the present case, the common elements in both spoken descriptions are the word 'group' and the presence of a numeral. A prospective purchaser of security services, having already heard of either the applicant's mark or the opponent's mark and then confronted by the other, would be likely to assume a common trade source. Even where the numeral, in the mark not directly available, was accurately recalled, this variation in the number may simply be seen as an identifier used by the service provider, or part of a series of trade marks as in 'group 1', 'group 2', etc. Ms Reader submitted, relevant to this point, that 'Groups III (3) and 4 could easily denote levels of security services offered by the one organization'. I am in agreement with this argument. The common word elements are sufficient, in my opinion, to cause deception or confusion and I find as per s.6(3) of the Act that the respective trade marks are deceptively similar. I am not satisfied that 'there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons'[1] if the applicant uses its mark in a normal and fair manner.

Having found the respective trade marks of the applicant and of the opponent to be deceptively similar, the opponent must still establish the two other legs of s.33(2), in relation to a particular registration, for it to constitute a barrier to the present application. The first of these legs is that the services claimed in the application must be found to be either the same as, or of the same description as the services in the opponent's registrations, or, alternatively, the services claimed in the application be found to be closely related to goods contained within the opponent's registrations. The opponent relies upon eight registrations of its composite trade mark to support its opposition. The trade mark is depicted along with details of the goods and services for the registrations in the Evidence section above.

The second leg is that the date of registration of the opponent's registered marks would have to be prior to the date of registration that would be granted to the present application, should it reach registration.

Of the eight registrations relied upon by the opponent, the registration date for numbers 448780 to 448782, inclusive, and 448784 to 448786, inclusive, is 18 July 1986. The remaining registration dates are 20 July 1992 for 582794 and 15 September 1992 for 586609. The present application was lodged on 20 August 1993. Thus, all eight of the opponent's marks have a date of registration earlier than the application.

The present application has been accepted in respect of 'provision of security services' in class 42. Some of the services within those for which registration 448780 is registered would have that general description. I particularly have in mind here 'surveillance, guard night-watch services, … detective agency services including locating of persons, … protection and guarding of persons and buildings, protection services against theft, fire and other damage and loss and protection of any transportation by third parties, lease of protective, alarm and identification material and of all preventative and protective equipment essential for the safety in whatever area of application, …'. Registration 582794 also contains services identical with the present application. Hence, I find that these two registrations fulfil all of the requirements contained in s.33(2) to constitute barriers to the registration of the present application. The s.33(2) ground therefore succeeds on the basis of these two earlier trade marks, and it is not necessary for me to further pursue the opponent's registrations to determine which, if any, of the remaining six registrations also constitute a barrier.

I find that this opposition succeeds under the s.33 ground of opposition in respect of registrations 448780 and 582794.

(b) Section 28 - Scandalous and improper marks

The relevant legislation in this matter reads:

[1] Smith Hayden & Co. Limited's Application (1946) 63 RPC 97 at 101

28. A mark:
(a) the use of which would be likely to deceive or cause confusion;
(b) the use of which would be contrary to law;
(c) which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in a court of justice,
shall not be registered as a trade mark.

This section of this Act has undergone changes in the way that it is interpreted in recent times. For some years, following the Registrar's inference of the High Court decision[2] in the Moo/Moove case, s.28(a) had been read conjunctively with s.28(d) and had led to opposition matters only succeeding, under this ground, where the opponent could establish, not only a likelihood of deception or confusion being caused by use of the applicant's mark, but also an element of blameworthy conduct on the part of the applicant. However, a decision of the Full Federal Court on appeal in the case of Nettlefold Advertising Pty Ltd v NettlefoldSigns Pty Ltd 45 IPR 393 has overturned this interpretation. There, the Full Court said that a disjunctive reading of s.28 was the correct approach when deciding oppositions to registration. This approach has been confirmed by the High Court in Campomar Sociedad, Limitadav NikeInternational Ltd and Another 46 IPR 481. Therefore, conduct, which is deemed to be 'blameworthy', need not now be shown in order for the opponent to succeed under s.28(a).

[2] New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd 38 IPR 385

Significantly, it must be noted that this section of the Act does not directly require a finding of similarity of the respective trade marks, of the applicant and of the opponent, or similarity of their respective goods. What is required is to find that, in the prevailing circumstances, use of the applied for mark by the applicant, will produce deception or confusion in the minds of the relevant purchasing public.

The relevant date at which this assessment must be made is the date of lodgement of the present application[3], - here 20 August 1993. In order to establish that use of the applicant's mark 'would be likely to deceive or cause confusion', it is necessary, however, for the opponent to establish a reason that would lead to such a circumstance.

[3] Southern Cross Refrigerating Co v. Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594.

The opponent argued that the level of recognition of the mark by the purchasing public would lead to such deception or confusion. It supplied evidentiary material setting out the opponent's use of its 'group 4' trade mark in Australia. This material consists of several exhibits attached to the opponent's declarations. It establishes that the mark has been used from June 1993 by one authorised user (Higgins declaration) and from 1995 by another user (Olszak declaration). In addition, some use had been made of the name 'Group 4', in Australia, as part of the company name of 'TNT Group 4 Security Limited' from the time of incorporation in 1976. This company went through four name changes until it was purchased by one of the authorised users in 1995. Three of the four names of this company included 'Group 4' as part of the company name. I note that the services in respect of which the mark has been used in Australia are 'security services, manned guarding services, patrol guarding services and key holding services' (from June 1993) and 'design, commissioning and management of prisons, prisoner transportation and their related services' (from 1995). The opponent also leads evidence that the mark was in use in 26 overseas countries prior to 1993.

The present application was lodged on 20 August 1993. At this date, the evidence indicates use of the mark by Tempo Services Limited for two only months although the words 'group 4' had been a part of a company name since 1976. I find that the evidence does not show that the purchasing public would recognise a part of the company name as being use of a trade mark. The two months use by an authorised user, despite the evidence of some millions of dollars of turnover in that time (Higgins declaration at paragraph 12) also fails to convince me that the relevant purchasing public was then sufficiently cognisant of the opponent's trade mark by 20 August 1993. Two months is an extremely short time to produce market awareness for a trade mark. Unless direct evidence of the level of recognition of the opponent's mark was provided, I do not believe, from the evidence before me, that I can find that use of the applicant's mark will be likely to deceive or confuse the purchasing public. I think it highly unlikely that two months use, for services of this kind, will provide grounds for s.28(a) opposition.

I also note that the copies of the entries in the Telstra Yellow Pages submitted in the evidence, as exhibits to the Reader declaration, all post-date the date of the present application and provide little support for the opponent's reputation in its trade mark.

In the circumstances, I find that that the opposition ground taken under s.28 is not successful because the opponent has not established the requisite recognition in its own mark as at the date of lodgement of the present application.

Conclusion

I have found that the opposition succeeds under s.33 of the Act in respect of the opponent's registered trade marks, numbered 448780 and 582794. The s.28 ground is not successful. The other grounds raised in the notice of opposition, under ss. 24-26 and s.40, and also under the Trade Practices Act, 1974, were neither supported by evidence nor argued by the opponent. Trade mark application 609693 is, however, in breach of s.33 of the Act and, as a delegate of the Registrar, I therefore refuse to register this trade mark.

Costs

The opponent has requested costs in the matter. As I have nothing before me to indicate why an award of costs should not follow the result, in my capacity as a delegate of the Registrar, I direct that Stonepack pay the opponent's costs in accordance with the Official scale set down in Schedule 6 of the Trade Marks Regulations 1955.

Don Nancarrow
Hearing Officer
20 June 2000