iGuard Pty Ltd v iGuard Australia Pty Ltd
[2018] ATMO 91
•8 June 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Martin Maloney and iGuard Pty Ltd to registration of trade mark applications 1749463 and 1749464 (both in class 45) – iGuard AUSTRALIA with device and IGUARD AUSTRALIA - in the name of iGuard Australia Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponents: self-represented and no submissions provided. Applicant: written submissions prepared by Dr Robert Burrell, GO Trademarks trade mark attorneys. |
| Decision: | 2018 ATMO 91 Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – grounds under ss 44, 58A and 60 pursued – none established – registration may proceed. |
Background
This decision is pursuant to oppositions filed under s 52 of the Trade Marks Act 1995 (‘the Act’) by Martin Maloney and iGuard Pty Ltd (‘the Opponents’) to registration of the trade marks detailed below in the name of iGuard Australia Pty Ltd (‘the Applicant’).
| IGUARD AUSTRALIA | |
| Application no.: 1749463 | Application no.: 1749464 |
| Priority date: 1 February 2016 | Priority date: 1 February 2016 |
| Services: Class 45: services for the protection of property and individuals | Services: Class 45: services for the protection of property and individuals |
In this decision I will refer to the above trade marks collectively as ‘the Trade Marks’.
The applications for registration of the Trade Marks were examined in due course and both were accepted for possible registration. Their acceptance was advertised in the Australian Official Journal of Trade Marks on 23 June 2016.
Thereafter the Opponents filed Notices of Intention to Oppose and Statements of Grounds and Particulars (‘SGPs’). The SGPs were filed on 10 August 2016, and after rectification[1] particularised grounds of opposition under ss 44, 58A and 60 of the Act. In particular, the Opponents state in the SGPs under the section relating to s 44:
This trade mark is in the same industry and offering the same services as our business which trades extensively using our registered logo since 2006. The opposed trade mark has seemingly been derived from our existing logo.[2]
The trade marks we are opposing: 1749463 & 1749464.
Our trade marks are: 1517916 & 1197127(less prominent in our business now).
[1] Under Trade Marks Regulations 1995 reg 5.8 (‘the Regulations’).
[2] I take the reference to ‘This trade mark’ and ‘the opposed trade mark’ to be reference to both of the trade marks being opposed.
The parties filed evidence in due course, described in more detail later in this decision.
Neither party requested a hearing, although the Applicant’s attorney filed written submissions for the Registrar’s consideration. Now in order that the matter may be decided, it has been allocated to me, a delegate of the Registrar, for a decision based on the written record comprising the documents already mentioned and described further below.
The Opponents bear the onus of establishing at least one of their grounds of opposition. The relevant standard of proof is the ordinary civil standard of the balance of probabilities[3] and the relevant date at which the rights of the parties are to be determined is 1 February 2016, the priority date of the applications.
Evidence and submissions
[3] Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133].
Application 1749463
The Opponents filed Evidence in Support of their opposition and the Applicant filed Evidence in Answer as well as, as mentioned, written submissions. No Evidence in Reply was filed.
The Evidence in Support comprises a letter dated 5 January 2017 by Martin Maloney, with information pertaining to the Opponents’ trade marks (discussed below) under the heading ‘Declaration’. I note that the letter does not meet all of the requirements of a declaration in terms of reg 21.6 of the Regulations. Nonetheless, there is no apparent reason to doubt the information contained within it nor has the Applicant raised any issue with this informality and so I have given it due weight.
The SGPs identify then-registered trade marks numbered 1197127 and 1517916. The details of those trade marks are shown below. Despite them being owned by only one of the Opponents - the co-opponent being the company of which Mr Maloney is the sole director and shareholder - I will nonetheless refer to them collectively as ‘the Opponents’ Trade Marks’ for ease of reference. Of them, Mr Maloney states that trade mark no. 1197127 is not currently in use (its use having declined since 2012) and 1517916 has been used in ‘variations of [the below] form’ since 2007. Both of these trade marks have since been removed from the Register, a matter which impacts upon two of the grounds of opposition pursued and discussed later in this decision.
| Registration no.: 1197127 | Registration no.: 1517916 |
| Owner: Martin Maloney | Owner: Martin Maloney |
| Priority date: 10 September 2007 | Priority date: 3 October 2012 |
| Services: Class 37: Installation of security systems | Services: Class 37: Installation of electronic security systems incorporating live video transmission to mobile phone |
| Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. |
He points to similarities between the parties’ trade marks, including that in use it appears the Trade Marks are rendered with the letter ‘i’ in red and the words ‘Guard’ and ‘Australia’ in blue. I note that the image of the Applicant’s web page, shown in Mr Maloney’s declaration to demonstrate this, is not dated. He also shows that a Google® search (undated) for the word ‘iguard’ brings up results in which the Applicant’s website is listed first (at the address ‘iguardaus.com.au’) and the Opponents’ website is listed second (at the address ‘ He submits that those websites might be perceived to be one and the same, causing deception or confusion amongst those seeking the services of ‘iGuard’.
Mr Maloney submits that the services of the parties are similar and quotes from each of their websites to demonstrate that they both provide for the installation of CCTV and alarm systems.
In terms of use Mr Maloney states that trade mark no. 1517916 has been continuously used since 2006. (I note this contradicts his earlier statement that it had been used in variations of the form shown in paragraph 9 since 2007, however nothing substantial rests upon the discrepancy of these dates). He provides the number of active clients and suppliers who he states ‘recognise the trade mark 1517916 to be associated with CCTV and Alarm installations’. Those numbers are relatively modest although not insignificant.
He registered the business name I GUARD on 22 February 2006 and opened a business account for the business on 6 February 2007 (and a further business account in the name of the incorporated entity in 2013). He provides an image of his online bank account page to show current trading activity. He also provides an image of his Security Agent’s Licence, which is undated but has an expiry date of 18 December 2013, and in respect of it he states ‘Licensed Security Agents, Installers & Consultants since 2006’ and that the license was renewed. I Guard Pty Ltd was incorporated in 2013.
Undated images of marketing materials are included in Mr Maloney’s declaration, including what appears to be a pamphlet (said to be from 2011); vehicle graphics (said to be from 2010); web pages from his website (which, from a ‘project agreement’ with a software developer, appears to have been created in 2010); electronic letter heads; a business card; signage; an advertisement in the online directory True Local®; and images of the business’s Facebook® and Twitter® accounts. All show the trade mark the subject of then-registration 1517916.
The Evidence in Answer comprises a declaration by Luther Shannon, director of the Applicant, with exhibits A to F, made 11 April 2017. Mr Shannon explains that he chose the name ‘I GUARD AUSTRALIA’ because he liked it and it was suggestive of the services provided. He states he was not aware of the Opponents’ Trade Marks when he chose it, nor is he aware of any instances of confusion between the parties’ marks.
As to the appearance of the Applicant’s logo, Mr Shannon states that the logo was designed by a graphic designer in October 2014, based upon a stock image that Mr Shannon located on the internet (that image is in evidence, and contains a depiction of a three dimensional lightning bolt within a three dimensional circle).
Mr Shannon declares that trade mark 1749463 has been used since July 2015. He provides turnover figures generated under that trade mark, as well as advertising expenditure, for the financial year ending 2016 and the 2017 year to date. Those figures are substantial. Examples of the Trade Marks in use are shown, including the Applicant’s logo upon invoices and both Trade Marks within a brochure.
Application 1749464
The document filed as Evidence in Support in respect of application 1749464 is shown below. To protect his personal information I have omitted Mr Maloney’s address as well as an image of his driver’s licence which were shown under the heading ‘DECLARATION’.
I note Mr Maloney makes reference to ‘Trademark 174964’, however I take this to be a typographical error and that his intention was to refer to 1749464.
No other information or submissions have been forthcoming from the Opponents in respect of the opposition to this trade mark.
The Evidence in Answer from the Applicant provides the same information as that in respect of application 1749463 with the exception that the information in relation to the design of the logo is not included. The Applicant also provides submissions which state:
Status of the opposition
1.On the 5 January 2017 Mr Martin Maloney, the first opponent and sole director of the second opponent, lodged the following statement in place of lodging evidence in support: ‘I Martin Maloney, on behalf of iGuard Pty Ltd, will not be making further opposition to Trademark 174964’.
2.This statement from Mr Maloney can only be taken as an attempt to withdraw the opposition. The fact that the opponents, acting in their own capacity without representation, were unaware of the ordinary process does not alter the substance of what they were seeking to communicate to the Office. The opposition must therefore be dismissed.
3.In this context it must also be emphasised that it is the opponent that bears the onus of proof…As no evidence has been lodged in support of the opposition it must be dismissed.
The Applicant nonetheless goes on to make brief submissions in respect of the substantive case and to attach its submissions in respect of trade mark 1749463, relying upon the points made therein.
Preliminary matter
As a preliminary matter, it is necessary to deal with the ‘evidence’ filed by the Opponents in respect of trade mark 1749464.
It not clear to me what the Opponents intended by the filing of that document. One interpretation could be that they intended to withdraw their opposition, on the basis of the statement ‘I Martin Maloney, on behalf of iGuard Pty Ltd, will not be making further opposition to Trademark 1749[4]64’. Another interpretation could be that Mr Maloney did not intend to make any further submissions beyond those he had already made in the SGP. I note that under the heading ‘Declaration’ he states ‘I myself, acting as the sole director of iGuard Pty Ltd, will be the opponent to the registration of Trade Mark: 1749464’. This statement seems to indicate Mr Maloney’s intention to have a role in the opposition, which tends to indicate that he considers the opposition to be ongoing.
I bear in mind also that the Applicant has filed Evidence in Answer, and has made submissions in respect of the substantive grounds. To that extent the Applicant would not be disadvantaged if the opposition proceeded (and, as will be seen, it prevails in both oppositions in any event).
In the absence of any positive statement that the opposition is withdrawn, I do not intend to treat it as such or to dismiss the opposition on that basis. Accordingly, I will decide the opposition to trade mark 1749464 on the basis of the statements in the SGP, the ‘evidence’ filed by the Opponents, the Applicant’s Evidence in Answer and the Applicant’s submissions.
The grounds of opposition
Section 44
Section 44 of the Act relevantly provides:
44. (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) 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 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.
Subsections (3) and (4) are provisions under which acceptance of an application may be granted, notwithstanding the existence of prior substantially identical or deceptively similar trade marks. They relate to honest concurrent or prior continuous use, or other circumstances which would make registration proper. For reasons that will become clear none of those provisions are relevant here.
To establish the ground under s 44 the Opponents must establish that another trade mark exists which has an earlier priority date than the Trade Marks; which is in respect of similar services or goods that are closely related to the services of the Trade Marks; and which is substantially identical with, or deceptively similar to, the Trade Marks. For this purpose the Opponents rely upon the trade marks nominated in the SGPs and discussed in their evidence in respect of trade mark 1749463, being then-registrations 1197127 and 1517916.
Trade mark 1197127 was removed from the Register on 5 April 2018 on account of its registration not being renewed, and trade mark 1517916 was removed from the Register on 9 January 2018 under s 97 of the Act following an unopposed application for removal. The issue of trade marks which, at the filing date of a contested trade mark application, were registered or pending registration but had by the time of the decision lapsed or been removed from the Register has previously been discussed in decisions of the Trade Marks Office.[4] The delegates in those decisions held the view that such ‘zombie’ trade marks cannot form the basis of a ground of opposition under s 44.[5] I consider that view persuasive, namely that:
[S]ubsections 44(1) and 44(2) must be read in conjunction with other provisions of the Act and Regulations (such as section [36], regulation 4.13, and sections 63 to 65), which look to the operation of subsections 44(1) and 44(2) at the present time and in relation to the situation as it now pertains.
…
As subsections 44(1) and 44(2) are to be read in the present tense, and because the Opponent does not have a registered trade mark or a trade mark whose registration is being sought on which to base the ground, the ground under subsections 44(1) and (2) is not established.[6][4] See for example 1872 Holdings VOF v Havana Club Holding SA (‘Havana’) [2017] ATMO 12, [18]-[31]; and Omega SA v Robinson [2012] ATMO 92 cited therein.
[5] The term ‘zombie’ arising from Michael Handler and Robert Burrell, ‘Zombie Marks? Ceased registrations, failed applications and citation objections under s 44 of the Trade Marks Act’ (2013) 23 Australian Intellectual Property Journal 206.
[6] Havana, [2017] ATMO 12, [30]-[31].
Given that the Opponents’ Trade Marks, at the time I am considering the opposition, are removed from the Register there is no basis for the s 44 ground of opposition. Accordingly the ground under s 44 fails.
Section 58A
Section 58A of the Act provides:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
As explained earlier, there is no currently pending or registered trade mark identified by the Opponents upon which to base the ground of opposition under s 44. It is accordingly unnecessary to consider s 44(4) at all, and, as indicated by s 58A(1)(a), this in turn makes consideration of s58A unnecessary. The ground is not established.
I confirm, in any event, that the evidence of use provided by the Opponents would be insufficient for me to conclude that they had established use prior to the filing of the applications. That which is dated relates to the internal business activities of the Opponents (such as business name registration and company incorporation, the online business account, and the ‘project agreement’ in relation to the Opponents’ website), and that which shows public use of the trade marks is either undated or is the subject of unsubstantiated claims as to their date of use.
Section 60
Section 60 of the Act relevantly provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
To establish the ground under s 60 the Opponents must demonstrate that another trade mark had acquired a reputation in Australia such that by the priority date of the Trade Marks, being 1 February 2016, use of the Trade Marks would be likely to deceive or cause confusion. In this respect the Opponents state in the SGPs:
The trade mark we currently use does have a good repute in WA for security installation services. We do have some major clients who could get our services confused with that of this contested imitation.
Please refer to our website: and the opposed business indication for similarity just google ‘iGuard’.
In terms of the opposition to trade mark application 1749464, this is the extent of the information provided in respect of s 60 (the only ‘evidence’ in support of that opposition being the document shown in paragraph 18). As stated by Kenny J in McCormick & Co v McComick:
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.[7]
Her Honour also cited Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation 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... [8]
[7] McCormick & Company Inc v McCormick [2000] FCA 1335.
[8] [1992] FCA 159; (1992) 33 FCR 302.
None of this kind of information is provided by the statement in the SGPs, and perusal of the parties’ websites or a google search of ‘iGuard’ (as the SGPs suggests I do) would not, in any event, establish as at the priority date a reputation of the kind contemplated by s 60 in the unidentified ‘trade mark we currently use’.
More information is provided by the Opponents in respect of their opposition to trade mark application 1749463. However it suffers from the shortcomings identified in paragraph 34. I note also that there is no definitive indication that the trade mark relied upon by the Opponents in relation to s 60 is that which is the subject of then-registration 1517916. However for the sake of this discussion I have assumed it to be so (there being no evidence of use at all of then-registration 1197127).
There is simply insufficient dated evidence of public use and little indication of direct customer appreciation, or the amount of turnover or advertising expenditure in respect of the Opponents’ trade mark before the priority date to be satisfied that it had sufficient reputation at that time to enliven the s 60 ground of opposition.
Accordingly, the ground under s 60 is not established.
Decision
Section 55 of the Act relevantly provides:
Unless subsection (3) applies to the proceedings, 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.
The Opponents have not established a ground of opposition.
Accordingly, trade mark applications 1749463 and 1749464 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice or notices of appeal before that time, I direct that registration shall not occur until the appeal(s) has been decided or discontinued and that the disposition of the application(s) should be in accordance with the Court’s order or direction.
Nicole Worth
Hearing Officer
Trade Marks Hearings and Oppositions
08 June 2018
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