HBF Health Limited
[2018] ATMO 109
•9 July 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1746524 MOMENTUM MEMBER BENEFITS & DEVICE (9, 36, 38, 42); 1746528 HBF MOMENTUM MEMBER BENEFTIS & DEVICE (9, 36, 38, 42) - in the name of HBF Health Limited.
| Delegate: | Katrina Brown |
| Representation: | David Stewart of Williams + Hughes |
| Decision: | 2018 ATMO 109 Trade Marks Act 1995 – s 33 proceedings – s 44 – deceptively similar – refinement to specification – trade mark applications accepted. |
Background
This matter is an ex parte proceeding, pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’), involving applications for the registration of each of the following trade marks (‘the Claimed Marks’).
| Trade Mark Number | 1746524 | 1746528 |
| Trade Mark | ||
| Filing Date | 21 January 2016 (‘the Priority Date’) | |
| Applicant | HBF Health Limited (‘the Applicant’) | |
| Goods & Services | Class 9: Computer software; software, including an application, to enable or facilitate uploading, downloading, posting, displaying, streaming, sharing, retrieval or otherwise of electronic media or information (including health records and information), including electronic documents, databases, videos, graphics and audio visual information, via the Internet or other communication networks; software, including an application, enabling users to create health records, timelines and reminders for health events and appointments | |
The applications were examined and grounds for rejection were raised under s 44 of the Act. In relation to Claimed Mark 1746524 the s 44 ground for rejection was on the basis of the following 7 trade marks:
| Trade Mark No. | Trade Mark | Specification |
| 632782 | MOMENTUM | Class 9: Computer software related to accounting systems |
| 747670 | MOMENTUM | Class 36: Insurance services |
| 781614 | MOMENTUM | Class 37: Information technology installation services Class 42: Computer software design, computer programming; information technology services including computer software maintenance and consulting |
| 1107595 | Class 36: Real estate services | |
| 1216629 | MOMENTUM PRIVATE WEALTH | Class 36: Banking services; lending services; mortgage services; financial consultancy, planning, evaluation, information and management services including retirement planning, wealth creation services and financial advice; financial services including investment services, funds management services and financial services for employers and employees; employee benefit schemes; superannuation services including superannuation consultancy services and rollover services; including all the aforementioned provided by telephonic means or online from a computer database, national or international telecommunications networks or the Internet |
| 1216631 | MOMENTUM FINANCIAL ADVICE | Identical services to trade mark number 1216629 |
| 1671662 | Class 36: Financial services; Provision of information relating to financial services |
In respect of Claimed Mark 1746528 the s 44 ground for rejection was on the basis of trade mark numbers 632782, 747670 and 781614 only.
After several examination reports the Applicant requested a hearing in relation to both trade mark applications under s 33(4) of the Act. The matter came before me, a delegate of the Registrar of Trade Marks, on 20 February 2018. David Stewart of William + Hughes made submissions on behalf of the Applicant.
In making my decision, I have taken into consideration the submissions made on the Applicant’s behalf during the examination of the applications, the submissions filed on behalf of the Applicant prior to the hearing and the oral submissions made at the hearing.
Section 44
As a preliminary matter I mention that this is not a review of the examiner’s decision and reasoning, but rather a fresh consideration of the ground for rejection.
Section 44 of the Act relevantly provides:
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
As a starting point, I note that trade mark number 747670 has now been removed from the Register and trade mark number 1671662 has now lapsed. As such, neither is now a barrier to acceptance. This leaves trade mark numbers 632782, 781614, 1107595, 1216629 and 1216631 (‘the Cited Trade Marks’), which were identified during examination as the basis for the s 44 ground for rejection.
In accordance with s 44, I must reject the trade mark applications if I am satisfied that the relevant Cited Trade Marks:
· have an earlier priority date than the Claimed Marks;
· are held in the name of a person other than the Applicant;
· are in respect of goods and or services which are similar or closely related to the goods and services of the Claimed Marks; and
· are substantially identical with, or deceptively similar to, the Claimed Marks.
In this matter, the first two requirements are straightforward. The Cited Trade Marks are in a name other than that of the Applicant and each has a priority date which is earlier than that of the Claimed Marks.
In Registrar of Trade Marks v Woolworths French J said:
The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.[1]
[1] [1999] FCA 1020 [39].
Applying this logic, my next consideration is whether the goods and services of the Claimed Marks are similar or closely related to the goods and services of the Cited Trade Marks.
Comparison of goods and services
Section 14(1) of the Act defines ‘similar goods’ as goods that are the same or of the same description. The concept of ‘goods of the same description’ is:
generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception.[2]
[2] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 [72].
To determine if goods are similar there are a number of factors to take into account including:
the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.[3]
[3] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
Section 14(2) of the Act defines ‘similar services’ as services that are the same or of the same description. The test for determining similar services has generally been equated with the test for determining similar goods. As such, the factors to be considered include the nature and respective uses of the services and the trade channels through which the services are made available to the consumer.
In the terms set out in s 14 and the relevant authorities I consider the following to be similar goods or similar services:
| Claimed Marks | Cited Trade Marks |
| 1746524 & 1746528 Class 9: Computer software; software, including an application, to enable or facilitate uploading, downloading, posting, displaying, streaming, sharing, retrieval or otherwise of electronic media or information (including health records and information), including electronic documents, databases, videos, graphics and audio visual information, via the Internet or other communication networks; software, including an application, enabling users to create health records, timelines and reminders for health events and appointments | 632782 Class 9: Computer software related to accounting systems |
| 1746524 Class 36: Insurance services, including services rendered in the provision of property insurance; services in this class rendered by insurance providers; advisory and consultancy services in relation to the aforesaid | 1107595 Class 36: Real estate affairs 1216631 & 1216629 Class 36: Financial consultancy, planning, evaluation, information and management services including retirement planning, wealth creation services and financial advice; financial services including investment services, funds management services and financial services for employers and employees. |
| 1746524 & 1746528 Class 38: Provision of Internet and telecommunication facilities for transmission of information (including health records and information) including text, electronic documents, databases, videos, graphics and audio visual information; provision of access to databases, including online; data transmission and instant messaging services; advisory and consultancy services in relation to the aforesaid | 781614 Class 37: Information technology installation services |
| 1746524 & 1746528 Class 42: Application service provider to enable or facilitate the uploading, downloading, posting, displaying, streaming, sharing, retrieval or otherwise of electronic media or information (including health records and information) including text, electronic documents, databases, videos, graphics and audio visual information, via the Internet or other communication networks; providing an online network service that enables users to record, maintain, transfer and share information (including health records and information), including text, electronic documents, databases, videos, graphics and audio visual information; hosting an online website and database providing information from searchable indexes and databases of information (including health records and information), including text, electronic documents, databases, videos, graphics and audio visual information, on computer and communication networks; database management and maintenance services, including online; providing temporary use of non-downloadable software applications for transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customised web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; advisory and consultancy services in relation to the aforesaid | 781614 Class 42: Computer software design; information technology services including computer software maintenance and consulting. |
In respect of the similarity of the services in class 36, it is important to note that the specifications of Claimed Mark 1746524 and Cited Trade Marks 1107595, 1216631 and 1216629 are extremely broad. For example, Cited Trade Mark 1107595 claims real estate affairs, which in my opinion encompasses far more than real estate agency services. Real estate affairs encompasses any service in class 36 that relates to property, including property insurance services which are included in the specification of Claimed Mark 1746524.
I do not intend to canvas in any great detail, whether the goods or services of the Claimed Marks are closely related to the goods or services of the Cited Trade Marks. This is because it will not alter the outcome of this matter. It is sufficient for me to say that there are indeed goods covered by the Claimed Marks, such as computer software in class 9, which are closely related to the claim of Cited Trade Mark 781614 in class 42 for computer software design and information technology services including computer software maintenance and consulting.
Comparison of trade marks
Substantially identical
The phrase ‘substantially identical’ is not defined in the Act. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
[t]hey should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]
[4] [1963] HCA 66 [12].
The Claimed Marks and the Cited Trade Marks each contain the word ‘momentum’. However, with the exception of trade mark numbers 632782 and 781614, each of the Cited Trade Marks contains additional word and or device elements. The Claimed Trade Marks also contain the additional phrase ‘member benefits’ and a device element consisting of two curved stripes attached to the final letter ‘m’ in the word ‘momentum’. Trade mark number 1746528 also contains the word element ‘HBF’.
On a side by side comparison, I find that a total impression of similarity or resemblance between the Claimed Marks and the Cited Trade Marks does not emerge. In my opinion the Claimed Marks are not substantially identical with any of the Cited Trade Marks.
Deceptively similar
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[a] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J 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 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.[5]
[5] [1979] RPC 410, 423.
In determining the question of deceptive similarity all of the surrounding circumstances must be considered:
You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods…[6]
[6] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
In Shell Windeyer J provided the following insights on deceptive similarity:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It 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 impressions that such persons would get from the defendant’s [trade mark].[7]
[7] [1963] HCA 66 [13].
In written submissions and at the hearing, the Applicant’s representative stressed that the word ‘momentum’ is laudatory in respect of the Applicant’s goods and services. As such, the Applicant submits that differences, even relatively minor ones, between the Claimed Marks and the Cited Trade Marks are sufficient to prevent any real and tangible danger of confusion.
The Applicant asserts that:
“momentum” is a term with positive meaning, not just positive connotation. To “gain momentum” means to get better or increasingly advance. To “lose momentum” has a negative meaning, of being a dispiriting development. “Momentum” by itself however has the positive meaning of getting on top of something or accelerating in a positive way.
…
“MOMENTUM” in this context means (and does not merely connote) a positive advance in respect of the services on offer.
…
It is much more likely to be viewed as referring to the character or quality of the goods or services than it is as denoting an origin in trade of the goods or services.
This line of argument is surprising for two reasons. Firstly, if it is followed to its natural conclusion, it is questionable whether trade mark number 1746524 is capable of distinguishing given that: all of the words in trade mark number 1746524 are laudatory (‘momentum’) and in common use (‘member benefits’[8]) in regards to at least some of the Applicant’s goods and services; the only other element is two curved stripes attached to the letter ‘m’ at the end of the word ‘momentum’.
[8] At the hearing, the Applicant conceded that ‘member benefits’ had little or no capacity to distinguish health insurance services.
Secondly, the notion that ‘momentum’ is a laudatory term seemingly conflicts with R v McCann-Erickson Advertising Limited’s Application[9]; a decision of the Office for Harmonization in the Internal Market (Trade Marks and Designs) put forward by the Applicant in its correspondence to the Examiner dated 6 April 2017. This decision was in relation to a trade mark for MOMENTUM in classes 35, 36 and 42 and states:
However, the Board finds first that the mark itself is clearly inherently distinctive in relation to the services provided under it and therefore capable of distinguishing the services provided by the opponent from identical and similar services provided by its competitors. The mark is self-evidently fanciful for the opponent’s business activities.[10]
[9] [2001] ETMR 52 (‘McCann-Erickson’).
[10] Ibid [23].
I agree with the sentiments expressed in the above quotation from McCann-Erickson. In my opinion, the word ‘momentum’ is at best a skillful allusion[11] to the potential impetus gained from using the Applicant’s goods and services. In the words of Dixon CJ:
in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods…Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude…They may have an emotive tendency, but they do not appear to convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods.[12]
[11] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41 [6].
[12] Ibid [2].
The Applicant also refers to the word ‘momentum’ as being ‘weak trade mark material’. The Applicant has provided no support for this assertion aside from its opinion as to the laudatory nature of the word.
Bearing this in mind, I will now turn to the comparison of the Claimed Trade Marks and the Cited Trade Marks.
Claimed Mark – 1746524
Claimed Mark 1746524 consists of the words ‘momentum’ and ‘member benefits’ with two curved stripes attached to the final ‘m’ in the word ‘momentum’. The representation of the Claimed Mark is such that the word ‘momentum’ is accentuated; it is in a considerably larger font than the words ‘member benefits’, it is depicted in a different colour in the application and the device element emanates from it. In my opinion, the word ‘momentum’ is an essential feature of the Claimed Mark; it is likely to fix itself in the mind of the consumer and be the principal element by which the Claimed Mark will be recalled.
Each of the Cited Trade Marks contains the word ‘momentum’. Cited Trade Marks 632782 and 781614 (‘Momentum Solus Trade Marks’) consist of the word ‘momentum’ with no other indicia. In Mount Everest Mineral Water Limited the delegate stated:
It is generally true to observe that where one of the trade marks consists solely of the shared element (whatever its inherent adaptation to distinguish might be), the matter may be relatively straightforward: that is where the rights sought or granted must lie and the trade marks should on the face of it be considered to be deceptively similar in terms of section 44 of the Act.[13]
[13] [2012] ATMO 65 [15].
Cited Trade Marks 1107595, 1216629 and 1216631 consist of the word ‘momentum’ with the additional words: ‘wealth’; ‘private wealth’; ‘financial advice’. Each of the additional terms has some relevance in relation to the services claimed by the respective Cited Trade Marks. The additional words do not alter the meaning of ‘momentum’, nor do they dilute the prominence of it within each of the Cited Trade Marks.
In my opinion, the word ‘momentum’ is an essential and memorable element of each of the Cited Trade Marks and of Claimed Mark 1746524. Furthermore, in my opinion this gives rise to a real and tangible danger of ‘contextual confusion’[14] whereby the common and essential element in all of the trade marks, namely the word ‘momentum’, may induce traders and the public into believing that the goods or services offered under the trade marks emanate from the same source. I am satisfied that Cited Trade Marks 632782, 781614, 1107595, 1216629 and 1216631 are deceptively similar to Claimed Mark 1746524.
Claimed Mark – 1746528
[14] Ravenhead Brick Co Ltd v Ryabon Brick & Terracotta Co Ltd (1937) 54 RPC 341.
As mentioned earlier in this decision, only the Momentum Solus Trade Marks were raised by the examiner as a ground for rejection under s 44 of the Act in relation to Claimed Mark 1746528.
The Momentum Solus Trade Marks consist of the word ‘momentum’ with no other indicia. The Claimed Mark also contains the word ‘momentum’ but in combination with ‘HBF’, ‘member benefits’ and two curved stripes attached to the letter ‘m’ at the end of the word ‘momentum’.
The Applicant submits that its parent brand HBF is such a well-known trade mark, that its presence in the Claimed Mark diffuses any real and tangible danger of confusion with the plain word ‘momentum’.
In Registrar of Trade Marks v Woolworths Ltd French J stated:
Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.[15]
[15] [1999] FCA 1020 [61].
For the approach in Woolworths to be positively applied in the matter before me, the Applicant must establish that HBF is, in fact, notorious amongst consumers. In C A Henschke & Co v Rosemount Estates Pty Ltd the Full Bench of the Federal Court said:
Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.[16]
[16] [2000] FCA 1539 [52].
The Applicant has provided information about the awareness of its HBF brand. From that information, HBF is undoubtedly well-known in Western Australia, particularly in Perth, in relation to health insurance services. However, being well-known does not, in my opinion, equate to being ‘notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it’[17]. It must also be remembered that the conflicting goods and services are not health insurance but rather computer software and information technology services in classes 9, 37, 38 and 42. On the information before me, I am not satisfied that it is appropriate for judicial notice to be taken of HBF.
[17] Ibid [52].
Once again the words of the Delegate in Mount Everest Mineral Water Limited come to mind (quoted above at [34] of this decision). The word ‘momentum’ is the only indicia in the Momentum Solus Trade Marks. The Claimed Mark consists of the word ‘momentum’ in combination with other word elements and a device element. However, the additional elements do not change the meaning of ‘momentum’, nor do they have the effect of subsuming its identity into the meaning of the trade marks as a whole.
For the reasons above, I am satisfied that Claimed Mark 1746528 is deceptively similar to Cited Trade Marks 632782 and 781614 in respect of the Claimed Mark’s goods and services in classes 9, 38 and 42.
Refinement of the specifications
I have considered whether refinements to the specifications of the Claimed Marks in classes 9, 36, 38 and 42 would allow them to proceed to registration. During examination the Applicant displayed a willingness to restrict its goods and services to its specific area of interest being health records, timelines and reminders for health events and appointments. The most obvious difficulty with this approach is that many of the claims of the Cited Trade Marks are broad and not restricted to a particular industry or area of interest.
In respect of Claimed Mark 1746528, the ground for rejection does not apply to class 36. As such, amending the specification to class 36 only, would allow Claimed Mark 1746528 to proceed to acceptance.
In respect of Claimed Mark 1746524 refining the specification in class 36 to health insurance services; advisory and consultancy services in relation to health insurance would remove any similarity with the real estate affairs claimed by the Cited Trade Mark 1107595. This refinement would also overcome the obstacles posed by the Cited Trade Marks 1216631 and 1216629. As such, if the specification of Claimed Mark 1746524 was restricted to health insurance services; advisory and consultancy services in relation to health insurance in class 36, the Claimed Mark could proceed to acceptance for class 36 only.
Prior use, honest concurrent use or other circumstances
Sections 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise be rejected under s 44(1) or 44(2), on the basis of honest concurrent use, other circumstances or prior use.
In this matter, there is nothing before me that is sufficient to support the application of s 44(3) or s 44(4).
Decision
Section 33 of the Act provides:
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.
I am satisfied that there is a ground for rejecting each of the Claimed Marks under s 44 of the Act.
In respect of Claimed Mark 1746528 the ground for rejection only relates to classes 9, 38 and 42. It does not relate to class 36.
In respect of Claimed Mark 1746524 the ground for rejection relates to all of the classes claimed. However, as explained at [47] of this decision, if the specification of Claimed Mark 1746524 was amended to health insurance services; advisory and consultancy services in relation to health insurance in class 36, it could proceed to acceptance for that class only.
On 24 May 2018 I informed the Applicant’s representative that it was my intention to reject the Claimed Marks unless the specifications were amended to:
1746524 – Class 36: Health insurance services; advisory and consultancy services in relation to health insurance
1746528 – Class 36: Insurance services, including services rendered in the provision of health insurance, and other property insurance; services in this class rendered by health insurance funds and other insurance providers; financial services; sponsorship of educational programmes including programmes related to health; advisory and consultancy services in relation to the aforesaid
On 20 June 2018 the Applicant’s representative informed IP Australia of the Applicant’s agreement to the amendments set out in [54] of this decision. The specifications have been amended.
Accordingly I accept the Claimed Marks 1746524 and 1746528 for the amended specifications as set out in [54] of this decision.
Katrina Brown
Hearing Officer
Trade Marks Hearings
9 July 2018
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