Highdawn Pty Ltd v John Howard

[2013] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by HIGHDAWN PTY LTD to registration of trade mark application 1354440 (37) - HOWARDS' HUBBY HIRE (and device) - filed in the name of JOHN HOWARD.

Delegate:	Heath Wilson
Representation:	Opponent: Written submissions from Freehills, Patent & Trade Mark Attorneys. Applicant: Self-represented at the hearing.
Decision:	2013 ATMO 48 s52 opposition – Sections 43, 44 and 60 not established – no connotation - trade marks are not deceptively similar - evidence of reputation not sufficient – trade mark may proceed to registration.

Background

1.      On 12 April 2010, John Howard (‘the Applicant’) applied to register the following trade mark in class 37 for Handyman repair, maintenance and installation services:

2.     The Applicant’s trade mark was advertised as accepted in the Australian Official Journal of Trade Marks on 12 August 2010.

3. On 11 November 2010 Highdawn Pty Ltd (‘the Opponent’) filed a notice of opposition to registration nominating the grounds under sections 43, 44 (with reference to trade mark nos. 715436, 933331, 1268890, 1323471) and 60 of the Trade Marks Act 1995 (‘the Act’).

4.     This matter was heard by a delegate of the Registrar of Trade Marks in Canberra on 25 September 2012. Mr Howard appeared in person and the Opponent relied solely on written submissions filed and served before the hearing.

5.     The Opponent bears the onus of establishing a ground of opposition stated in the notice of opposition on the balance of probabilities.[1] In its written submissions, the Opponent sought to rely on sections 42(b), 44 and 60 of the Act. However, the notice of opposition does not nominate the ground of opposition under section 42(b) and the Opponent has not applied to amend the notice of opposition at any stage of the proceedings. As a result, the ground under section 42(b) cannot be relied upon by the Opponent and I will now address the nominated grounds.

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Evidence

Evidence in Support 

·     Statutory declaration of Brian Maloney (Solicitor for the Opponent) dated 10 March 2011 (‘Maloney declaration’).

Evidence in Answer

·     Statutory declaration of John Howard dated 3 June 2011 with Annexure A.

Evidence in Reply

·     Statutory declaration of Rachelle Downie (employee of Freehills, Trade Marks and Patent Attorneys) dated 5 September 2011 with exhibits RAD-1 to RAD-5 (‘Downie declaration’).

Further Evidence

·     Statutory declaration of John Howard dated 5 October 2011 with appendices 1-4.

Reasons

Section 43

6. Section 43 of the Act provides:

Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

7. While the ground of opposition under section 43 of the Act was not specifically pursued in the written submissions from the Opponent’s legal representatives, the ground is nominated in the notice of opposition and clearly foreshadowed in the Maloney declaration. For completeness I will assess the merits of this ground.

8. For a successful opposition under section 43, any likelihood of deception or confusion must be as a result of some connotation inherent in the opposed trade mark and not dependent on external considerations such as its similarity to another trade mark[2]. The scope of section 43 was further clarified by Justice Spender in Winton Shire Council v Lomas[3]:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s60.

[2] Big Country Developments Pty Ltd v TGI Friday’s Inc [2000] FCA 720; 48 IPR 513 (at [43]).

[3] Winton Shire Council and Anor v Lomas (2002) 56 IPR 72 (at 19).

9. Mr Maloney argued that the connotation inherent in the Applicant’s trade mark is that the Applicant offers services to the customer of a handyman or tradesman able to complete jobs around the home or office. However, any deception or confusion that may result from this connotation cannot depend on a reputation in the Opponent’s trade marks. In addition, the question of whether consumers may expect such services to originate from the Opponent’s business due to similarities between the trade marks is not an appropriate one for section 43 of the Act.

10.     In the Maloney declaration, Mr Maloney submits that the Applicant’s use of the expression “Hubby Hire” in the trade mark connotes a service provided by qualified tradesmen who are appropriately insured, and if this is not the case then confusion in the marketplace will result. Despite these submissions, I am not satisfied that such a connotation exists in the Applicant’s trade mark. However, even if I were convinced of the existence of the connotation, the Opponent has not provided me with any evidence that would cause me to doubt whether the Applicant’s tradesmen are, in fact, qualified and insured.

11. I find that the ground of opposition under section 43 of the Act has not been established.

Section 44

12. Subsection 44(2) of the Act provides:

Identical 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

13.     The Opponent has nominated the following trade mark registrations in support of this ground:

TM No.	Trade Mark	Filing Date	Class / Statement of Services
715436	HIRE A HUBBY	20.8.96	Class 37: Services for the construction and repair of buildings and homes, and parts thereof, including general home maintenance and repairs; clearing guttering, plumbing, and carpentry services; repair and restoration services for furniture and household equipment; handyman services; cleaning services for buildings and premises included in this class; services for the removal of rubbish and debris from buildings and properties included in this class Class 42: Gardening and lawn mowing services
933331	6.11.02	Class 37: Services for the construction and repair of buildings and homes, and parts thereof, including general home maintenance and repairs; clearing guttering, plumbing, and carpentry services; repair and restoration services for furniture and household equipment; handyman services; cleaning services for buildings and premises included in this class; services for the removal of rubbish and debris from buildings and properties included in this class
1268890	22.10.08	Class 37: Services for the construction and repair of buildings and homes, and parts thereof, including general home maintenance and repairs; clearing guttering, plumbing, and carpentry services; repair and restoration services for furniture and household equipment; handyman services; cleaning services for buildings and premises included in this class; services for the removal of rubbish and debris from buildings and properties included in this class Class 44: Gardening and lawn mowing services
1323471	29.9.09	Class 37: Services for the construction and repair of buildings and homes, and parts thereof, including general home maintenance and repairs; clearing guttering, plumbing, and carpentry services; repair and restoration services for furniture and household equipment; handyman services; cleaning services for buildings and premises included in this class; services for the removal of rubbish and debris from buildings and properties included in this class; electrical services Class 44: Gardening and lawn mowing services

14.     All of the registrations referred to above are owned by the Opponent and they all have earlier priority dates to that of the Applicant’s trade mark. In terms of the similarity between the Applicant’s services, “handyman repair, maintenance and installation services” are encompassed within the Opponent’s specifications: “services for the construction and repair of buildings and homes” and are also similarly described as “general home maintenance and repairs”. I find that the services for the respective trade marks are the same or of the same description.[4]    

[4] Section 14(2) of the Act.

15.     The submissions from the Opponent’s legal representative under this ground are that the Applicant’s trade marks are deceptively similar to the Opponent’s trade marks. However, for completeness, I will confirm that the visual and aural differences existing between the Applicant’s and Opponent’s trade marks lead me to the conclusion that, on a side-by-side comparison,[5] they are not substantially identical.

[5] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415.

16. Section 10 of the Act provides that for a trade mark to be deceptively similar to another, it must be a trade mark that “so nearly resembles that other trade mark that it is likely to deceive or cause confusion.” In assessing the resemblance between trade marks, Dixon and McTiernan JJ found in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[6] that:

[T]he marks ought not … 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 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.

[6] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

17.     For the purposes of this comparison I will primarily compare the Opponent’s word trade mark “HIRE A HUBBY” with the Applicant’s trade mark. The remaining trade marks owned by the Opponent contain additional and differing material that would only further distance them from the Applicant’s trade mark in terms of deceptive similarity. Therefore, if the word trade mark “Hire A Hubby” is not deceptively similar to the Applicant’s trade mark it follows that the others are also not deceptively similar.

18.     Putting the presence of the house device in the Applicant’s trade mark to one side for the moment, the word elements are “Howards’ Hubby Hire”. The words common to both the Applicant’s and Opponent’s trade marks are therefore “hubby” and “hire” albeit used in a different order and fashion. I note that the word “Hubby” is a familiar colloquialism for husband[7], and has long been in common parlance. The weight given to common elements in trade marks under comparison is dependent on the nature and prominence of those elements (including, whether or not those elements are common to the trade). The expressions ‘Hubby Hire’ and ‘Hire a Hubby’ both allude to home handymen offered for hire to perform the repair and maintenance services traditionally the domain of hubbies (or husbands). As a result, the expressions by themselves may be less likely to be viewed by consumers as the badge of origin of a particular trader. This is not to say that the expressions are devoid of any inherent adaptation to distinguish the services, but it does mean that the other material (the device and additional words) must be given due weight when comparing the two trade marks.  

[7] Oxford English Dictionary Online, March 2013. Oxford University Press.

19.     While the words in composite trade marks are generally the most important for the purposes of comparison,[8] the device of the house in the Applicant’s trade mark cannot be entirely disregarded. Similarly, the name “Howards” (despite operating as an identifier as to the ownership of the business) also cannot be discounted. In an aural comparison, I also note that the Applicant’s trade mark features some alliteration with a repetition of the sound of the letter ‘H’ (‘Howard’s Hubby Hire’). This alliteration is bolstered in the visual appearance of the Opponent’s trade mark with the placement of the words featuring three letters ‘H’ stacked one on top of the other. Such alliteration is not present in the Opponent’s trade marks.

[8] See American Trading & Shipping Co Ltd’s Appn (1936) 6 AOJP 78; Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331.

20.     The presence of a similar idea or meaning was emphasized by the Opponent in its written submissions. The Opponent argued that consumers are likely to recall the overall impression of “hiring a hubby” from the two trade marks rather than their precise wording. However, in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[9] (‘Cooper Engineering’) Dixon, Williams and Kitto JJ held:

The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

[9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536.

21.     After considering the above comments in Cooper Engineering, Wilcox, Heerey and Lindgren JJ in Sports Café Ltd v Registrar of Trade Marks[10] found:

Thus the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

[10] Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614.

22.     The Opponent’s submissions also referred to the reasoning in Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd[11] as analogous to the current matter. In that case, Hearing Officer Lyons found that the trade mark ‘Thinking Forward’ was deceptively similar to ‘FORWARD THINKING.’ In order to make the two cases analogous, the name ‘Howards’ and the device of a house in the Applicant’s trade mark must be ignored, as must the word “A” in the Opponent’s trade marks. Only then would the trade marks become “Hubby Hire” and (a grammatically awkward) “Hire Hubby”. Such an argument from the Opponent does not, in my view, have the intended effect. It instead highlights the many differences between the trade marks under consideration and the changes that would need to occur before a finding of deceptive similarity may be reached.

[11] Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd (2007) 73 IPR 573.

23.     The following reasoning in Clark v Sharp[12] is particularly apt at this point:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

[12] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

24.     Despite some similarity in concept behind the trade marks and use of some of the same words, the visual and aural differences are such that I find the overall impression between the trade marks is not one of deceptive similarity. There is not a ‘real and tangible danger of confusion’[13] between the Applicant’s trade mark and the Opponent’s trade marks and I find that the ground of opposition under section 44 of the Act has not been made out.

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

Section 60

25. Section 60 of the Act provides:

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.

26.     Under this section, the Opponent must demonstrate a reputation in its trade mark(s) extant at 12 April 2010 such that the use of the Applicant’s trade mark in the Australian marketplace would be likely to deceive or cause confusion. There must be a significant number of purchasers likely to be deceived or confused,[14] but that requirement should be sensibly applied according to the nature of the goods and services to which the trade marks are applied.

[14] Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170.

27.     In terms of the types of evidence that may be sufficient to demonstrate reputation in a trade mark, Lockhart J commented in ConAgra Inc v McCain Foods (Aust) Pty Ltd[15]:

But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

[15] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234

28.     In McCormick & Co Inc v McCormick[16], Kenny J said:

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.

[16] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.

Evidence of Reputation in the Opponent’s Trade Mark

29.     The Maloney declaration states that the Opponent’s “Hire A Hubby” is one of Australia’s largest franchise businesses with over 299 franchisees. The franchisees provide home, office and factory property maintenance services (such as painting, tiling, fencing cleaning and landscaping) under the Opponent’s trade mark. Mr Maloney asserts that since 1996 “Hire A Hubby” has been applied to invoices, brochures, business cards, websites, franchise agreements, social networking and general correspondence. Despite these assertions, there are no examples of this use attached to the Maloney declaration.

30.     The declaration provides an approximate annual figure for advertising and Mr Maloney declares that there have been references to “Hire A Hubby” on radio, television and in print advertising. Specifically, the Maloney declaration refers to use of the trade mark on ‘A Current Affair’, ‘Today Tonight’, in ‘The Financial Review’, ‘Better Homes & Gardens’, ‘The Herald Sun’, ‘The Daily Telegraph’, ‘The Courier Mail’, ‘The Sydney Morning Herald’, and on ‘Mornings with Kerrie Anne’. Once again, no exhibits to that declaration have been provided to support these statements. As a consequence, the nature of the advertisements is unknown, as are the particular services the Opponent’s trade mark was used in relation to, which particular trade mark of the Opponent was advertised and how prevalent its use was in those advertisements. That particular evidence is not sufficient by itself to establish any of the Opponent’s trade marks had a reputation before the filing date of the Applicant’s trade mark.     

31.     The Downie declaration filed and served as evidence in reply attempts to complement the Maloney declaration by supplying further information as to the reputation of the Opponent’s trade mark ‘HIRE A HUBBY’. Apart from the Opponent’s web site, Facebook and Twitter pages, Ms Downie has also annexed the results from the Google® search engine, the White Pages and the Australian Trade Marks Online Search System (‘ATMOSS’) to highlight a reputation in the Opponent’s trade marks. The results are contained in annexures RAD-1, 4, and 5 to the declaration.

32.     As at 5 September 2011 (the date of the Downie declaration), the Opponent’s web site (at RAD-2) confirms the Opponent “has been operating as a National Handyman Franchise business since 1996.” Between 2008 and 2011 the Opponent was involved in over 20 media appearances. Some of these occurred after the priority date of the Applicant’s trade mark. The nature of these appearances and the prominence of the Opponent’s trade mark(s) are not explained beyond the listing of the feature titles on the Opponent’s web site.   

33.     The printouts from the ‘Facebook®’ and ‘Twitter®’ pages (exhibit RAD-3) are also dated 5 September 2011 and indicate a significant web presence for the Opponent but once again there is no indication from the Opponent that this is a reflection of the relevant pages as they appeared to the Australian consumer on or before April 12 2010.

34.     The exhibit at RAD-4 displays Ms Downie’s search in the ‘White Pages’ for the business name ‘Hubby Hire’(also undertaken on 5 September 2011) and shows one result in New South Wales, being the Opponent’s ‘Hire A Hubby’ business. Exhibit RAD-5 is a list of trade marks from the ATMOSS database indicating that only the Applicant and Opponent have registered or pending trade marks on the Australian Register in the relevant classes.

35.     While the Google® search for the words Hubby Hire on 5 September 2011 (RAD-1) shows the Opponent’s ‘Hire a Hubby’ as ranked number one, and the results from a specific search on ATMOSS for pending and registered trade marks containing the words “Hubby” and “Hire” only turned up the Applicant’s and Opponents trade marks, this does not demonstrate the reputation in the Opponent’s trade marks existing at 12 April 2010.

36.     Despite the aforementioned deficiencies in the Opponent’s evidence, I am satisfied that the Opponent has demonstrated some reputation in the expression ‘Hire A Hubby’ predominately via a media campaign involving radio, television and the Internet. The question remains whether the level of reputation established is sufficient for deception or confusion to result from the Applicant’s use of his trade mark. 

‘Likely to deceive or cause confusion’

37. For section 60 to be established, the Opponent’s and the Applicant’s trade marks are not required to be deceptively similar. However, the extent of similarity between the trade marks has some effect on the likelihood of deception or confusion. I have already found that the Opponent’s trade mark: ‘Hire A Hubby’ and the Applicant’s trade mark are not deceptively similar. The nature of the established reputation in the Opponent’s trade mark(s) is also relevant including considerations such as the trade channels and the type of consumers.

38.     The Opponent argues that handyman services are undertaken on an urgent basis and consumers do not labour over the choice. The consequence of this (the Opponent argues) is that the likelihood of deception or confusion between the trade marks is increased. I am not, however, convinced by this argument. While there may be certain instances (such as plumbing emergencies) where handyman services are urgently needed and selected quickly, the majority of handyman jobs are either not urgent (such as outdoor maintenance, painting or fencing) or are so complex and financially significant to a consumer (such as kitchen and bathroom renovations, landscaping) as to warrant careful attention when selecting the appropriate tradesperson.    

39.     While the number of franchisees for the Opponent appears to have increased over time, when the Opponent’s trade mark is used, it does not appear to vary from ‘Hire A Hubby’ and does not feature the name of any particular tradesperson as part of the trade mark (as the Applicant’s trade mark does). Some examples from the Google searches in the Downie declaration include “Hire A Hubby Sutherland”, “Hire A Hubby Double Bay”, and “Hire A Hubby Lindfield”. The particular expression does not vary and that expression is different to the Applicant’s trade mark.   

40.     I am not convinced that the ordinary consumer viewing the Applicant’s trade mark would likely assume a trade connection with the Opponent’s services on the strength of the demonstrated reputation in the trade mark(s). While there may be a possibility of confusion between the trade marks, I am not satisfied on the balance of probabilities that the danger of confusion is ‘real and tangible.’[17] I find that the ground of opposition under section 60 of the Act has not been established.

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

Decision

41.     Section 55 (1) of the Act provides:

(1) 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.

42.     The Opponent has not established a ground of opposition. As a result, the opposition fails. I direct that trade mark application no. 1354440 may proceed to registration after one month from the date of this decision.

43.     If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

44. As the Applicant has been successful in this matter, I award costs against the Opponent to the extent allowed under the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Trade Marks Hearings
13 June 2013