Ingenuity Dental Pty Ltd v Ingenuity Management Group Pty Ltd

[2017] ATMO 78

TRADE MARKS ACT 1995

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

Re:Opposition by Ingenuity Dental Pty Ltd to registration of trade mark application 1686147(5) - INGENUITY MANAGEMENT GROUP (Fancy) - filed in the name of Ingenuity Management Group Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2017 ATMO 78

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 43, 58A, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Ingenuity Dental Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application detailed below in the name of Ingenuity Management Group Pty Ltd (‘Applicant’): 

Application Number:	1686147
Filing Date:	8 April 2015
Goods:	Class 5: Chemical preparations for dental use; Chemical products for dental purposes; Chemical products for use in dental surgery; Dental anaesthetics; Dental health gum (medicated); Medicines for dental purposes; Preparations for dental purposes (other than dentifrices) (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2.  Following the advertisement on 27 August 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 20 October 2015.  The Opponent then filed two documents amounting to a Statement of Grounds and Particulars on 17 November 2015 (collectively referred to as the ‘SGP’). The SGP was assessed by this office as inadequate. This issue was resolved by deleting from the SGP the grounds of opposition under s 40 and s 177 of the Act and the information provided by the Opponent in respect of Part 4 of the SGP. The Applicant filed a Notice of Intention to Defend on 23 December 2015. The SGP (following the deletion of the grounds of opposition under s 40 and s 177 of the Act) raised grounds of opposition under ss 41, 43, 58A, 59, 60 and 62A of the Act.

3.  On 12 September 2016 the Applicant sent a notice to this office indicating that, under court direction, the parties had agreed to attend a mediation.  Following a request for further information from this office the Applicant on 7 October provided this office with pleadings indicating that the Applicant and the director of the Opponent were parties to a dispute in the Supreme Court of Victoria identified as No. S CI 2015 02884 – WOORNACK PTYLTD as trustee of the Ryan Family Trust v Harrison Roxborough Pty Ltd as trustee of the Arrelette Family Trust: Ingenuity Management Group Pty Ltd in its personal capacity and as trustee of The Ingenuity Management Group Partnership and the Counter claim being Harrison Roxborough Pty Ltd as trustee of the Arrelette Family Trust: Ingenuity Management Group Pty Ltd in its personal capacity and as trustee of The Ingenuity Management Group  Partnership v WOORNACK PTY LTD as trustee of the Ryan Family Trust: Ingenuity Dental Pty Ltd: Fiona Willena Ryan: Michael John Ryan (the ‘Court Proceeding’).

4.  This office asked the parties to advise it of the outcome of the mediation and how the outcome of the Court Proceeding may impact on the present proceedings.  On 15 November 2016 the Applicant advised this office that no progress had been made in the mediation and that the Court Proceeding would proceed in the Supreme Court.  On 20 March 2017 and 15 June 2017, the Applicant wrote to this office advising that the Court Proceedings has been listed for various directions hearings and that it would assist if the Trade Mark Opposition was determined.  Noting the absence of any objection to the opposition matter being decided, this office wrote to the parties on 20 June 2016 indicating that the Trade Mark Opposition would be allocated to a delegate of the Registrar, for determination on the written record.

5.  I have reviewed the pleading documents provided in respect of the Court Proceeding.  It appears that the question of whether the Trade Mark should be registered is not the subject of the Court Proceeding.  In the event that, following the conclusion of this opposition proceeding, the Supreme Court of Victoria makes orders that direct the Registrar to take any action in respect of the Trade Mark, copies of such orders should be provided to the Registrar, however there is no basis (nor do the parties seek) to suspend this proceeding pending the outcome of the Court Proceeding.

Evidence

6.  The Opponent initially uploaded a series of documents as its evidence in this matter.  Following notification from this office that evidence in a trade mark opposition proceeding must be provided in a declaration, the Opponent filed Evidence in Support of its opposition (‘EIS’) on 15 February 2016. This evidence consists of a declaration made on 15 February 2016 by Michael Ryan, Manager of the Opponent, with Exhibits 1-7 (‘Ryan Declaration’). 

7.  The Applicant filed Evidence in Answer of its opposition (‘EIA’) on 13 July 2016.  This evidence consists of a declaration made on 15 June 2016 by Maree Arlette, Director of the Applicant, with Exhibits MPA-1 to MPA-20 (‘Arlette Declaration’).  This material was filed out of time due to a technical issue with the uploading of the Arlette Declaration and this office made a direction extending the date for filing to 20 July 2016.

8.  The Opponent chose not to file Evidence in Reply.

9.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 18 November 2016 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  The Applicant filed its submissions (‘Applicant’s Submissions’) on 16 December 2016 and the Opponent filed its submissions (‘Opponent’s Submissions’) on 19 December 2016. 

1. Section 1 of the Opponent’s Submissions consists of statements in the nature of evidence in reply. As the Opponent chose not to file evidence in reply, has made no application for the admission of late-filed evidence and has not provided this information in the format of a declaration I will not have regard to this late evidence. I take the same approach to other parts in the Opponent’s Submissions that consist of evidence in reply such as the first sentence of paragraph 3.4.2. Section 3.4 of the Opponent’s Submissions consists of submissions in respect of the ground of opposition under s 58 of the Act. As the Opponent in its SGP chose not to oppose the Trade Mark under s 58 of the Act (and has not applied to amend the SGP to allow the s 58 ground of opposition), these submissions are of limited relevance. I will have regard to them to the extent that they relate to any pleaded ground of opposition but will not be making a finding in respect of the un-particularised s 58 ground of opposition.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

The Opponent

1. The Opponent is a company that appears to supply dental products. 

2. The Ryan Declaration contains the following claims/statements:

   ·     The predecessor of the Opponent first used the term Ingenuity for its dental practice in 1984.  The Deponent registered Ingenuity Marketing as a business name in 1993 and incorporated the Opponent as Ingenuity Dental Pty Ltd on 1 April 2013.  It established its website at in 2013 and offers its products using a mark consisting of a tooth surrounded by a circle next to the words ‘Ingenuity Dental’ (‘Ingenuity Logo’).  Exhibit 8 to the Ryan Declaration indicates that the Opponent has offered various dental products under the Ingenuity Dental and Ingenuity Logo since 2013 and has advertised through columns in dental magazines.

   ·     The Deponent considers that the use of the trade mark will not distinguish the Applicant’s Goods from goods provided by the Opponent or from other persons.

The Applicant

1. The Applicant is the corporate nominee for a partnership established under the terms of a Partnership Deed dated 1 July 1997 (‘Partnership’). 

2. The Arlette Declaration contains the following claims/statements:

   ·     The Applicant has continuously since 1997 offered for sale and sold dental products and provided services relating to the sale of dental products trading under the name ‘Ingenuity Management Group’.

   ·     The Director of the Opponent, Michael Ryan was previously a director of the Applicant and a director of one of the partners of the Partnership.  He was also employed by the Partnership from 1 July 1997 to 3 March 2013 and provided services to the Applicant including the promotion and sale of its products.

   ·     The Opponent, from its incorporation on 19 June 2003 to 8 March 2013, was known as Carnegie Dental Care Pty Ltd.  Following Michael Ryan’s cessation of employment with the Applicant, the Opponent changed its name to Ingenuity Dental Pty Ltd on 8 March 2013 and commenced trading under that name.

   · The Applicant has commenced proceedings against the Opponent in the Supreme Court of Victoria alleging that its conduct has amounted to a breach of the Australian Consumer Law and passing off. On 15 February 2016 the Opponent changed its name to Acumen Dental Pty Ltd.

   ·     Michael Ryan did register the name Ingenuity Marketing in 1993 but cancelled it in 1996 and to the best of the deponent’s knowledge no business was ever carried out under that name since 1997.

   ·     The Applicant has continuously used the Trade Mark since 1997 through the use of order forms, publications, advertisements and promotional material, newsletters, signs, business cards, invoices, presentations and as part of e-mail addresses and e-mail signatures.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 43, 58A, 59, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The Opponent, despite the fact that the s 40 ground of opposition has been deleted from the SGP, continues to press s 40 as a ground in its submissions. Section 57 of the Act says ‘The registration of a trade mark may be opposed on any of the grounds on which an application for registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.’  By reason of this provision the Opponent is not entitled to raise the s 40 ground of opposition and to the extent the Opponent presses this ground of opposition I dismiss it.

3. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 8 April 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Section 41

1. The relevant provisions of the Act with respect to the s 41 ground are is reproduced below:

Section 41 - Trade mark not distinguishing applicant's goods or services

1. An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

2. A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

3. This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

4. This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)              the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)             the use, or intended use, of the trade mark by the applicant;

   (iii)              any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

5. Given the circumstances leading up to this opposition it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[4] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   [4] (1998) 40 IPR 498, 505.

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

   Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

   The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

   Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

   Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

   (a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

   (b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

   (c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][5]

   [5] [2017] ATMO 25, [38]-[40].

6. Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[6]:

   As mentioned in paragraph [18] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods and Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.][7]  In this regard both parties agreed that, as Mr Rubetzki put it:

   When assessing whether a mark is sufficiently adapted to distinguish the Applicant’s Goods and Services, it should be presumed that the mark is sufficiently adapted to distinguish unless the Registrar is satisfied otherwise. However, if it is necessary to consider the mark under ss 41(3)(b) or (4)(b) (as they now stand), the Applicant must demonstrate that the criteria referred to in those sub-sections are made out.

   [6] [2015] ATMO 69 at [16]-[18]. I have in the main also retained the Hearing Officer’s original footnotes.

   [7] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point,

   Consideration of the Opposed Mark under section 41(3)

   In accordance with Branson J’s analysis then, the first issue which arises for consideration is “the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.”  Justice Kitto in Clark Equipment Company v Registrar of Trade Marks stated that:

   [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. [8]

   More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited considered the former s 41(3) and in particular the question of whether a trade mark is inherently adapted to distinguish in some detail. In a joint judgment the majority of the Court explicitly approved Kitto J’s above-quoted words and went on to say at [70]-[71] (with original footnotes omitted and my emphasis added in bold):

   Interpretation of s 41(3)

   [70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd[9]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[10]] and [Burger King Corporation v Registrar of Trade Marks[11]], determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

   [71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with.  Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.  If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly.  However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it.  Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. [12]

   [8] (1964) 111 CLR 511, 514. The case concerned possible registration of the claimed trade mark MICHIGAN in Part B of the then two part Register as a mark ‘capable of becoming distinctive’ under s 25(1) of the now repealed Trade Marks Act 1955.  Under s 26 of that Act a trade mark could not be considered distinctive unless it was ‘adapted to distinguish’ the relevant goods or services.

   [9] (1956) 95 CLR 190.

   [10] (1965) 112 CLR 537.

   [11] (1973) 128 CLR 417.

   [12] (2014) 254 CLR 337, [70]-[71].

1. The ground based on s 41 of the Act is particularised in the SGP as follows:

   Section 41: The Ingenuity Management Group trademark does not distinguishing this applicant’s goods or services unlike our Logo and Trademark which is Ingenuity Dental below:

   As per this section and as per this application 1686147 by Ingenuity Management Group the registration of this trademark must and should be rejected as the trade mark is not capable of distinguishing this applicant’s goods or services in respect that this trademark application is sought to be registered being and being applied to the “Chemical preparation for dental use; Chemical products for dental use; chemical products for dental surgery; dental anaesthetics; dental health gum (medicated); medicines for dental purposes; preparations for dental purposes (other than dentifrices)” from the goods or services of Ingenuity Dental. Ingenuity Dental clearly states which market we are in and whom we provide services to.

   This trademark application is not capable of distinguishing the designated goods or services from the goods or services of other dental companies such as Ingenuity Dental.

   In addition this trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. In fact this applicant has traded as Oral BioScience and has used that trademark and other brands such as DentalCare and others in the past and is seeking to confuse our customers by now using this name.

   In this particular instance this trademark “is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other companies in the dental industry; and the trade mark does not distinguish the designated goods or services as being those of this applicant having regard to the combined effect of the following that this trademark application has not met the test of being inherently adapted to distinguish the goods or services from the goods or services of other persons” and on this basis as well it should be rejected.

   Trademarks that are not inherently adapted to distinguish goods or services are mostly trademarks that consist wholly of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (b) the time of production of goods or of the rendering of services.

   This trademark application meets none of the required criteria. Ingenuity Dental can prove we have used our logo and mark before this applicant applied for their trademark and as such this application fails as “a trademark by a predecessor in title of an applicant”

2. The Trade Mark has been filed for the Applicant’s Goods, being in class 5 relating to various products for dental use. It is clear that the Trade Mark is not descriptive of the Applicant’s Goods in any way. The ordinary signification of the words ‘Ingenuity Management Group’ are not a reference, direct or otherwise, to the character or quality of the goods, are not laudatory and are not words that other traders would need to use for their ordinary signification in relation to their products. To the extent the Opponent raises the possibility of confusion with Ingenuity Dental, such an issue is not relevant under the s41 ground of opposition. I find that the Opponent has failed to establish the ground of opposition under s 41.

Section 58A

1. Section 58A of the Act is reproduced below:

   (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.

   (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.

2. The ground of opposition pursuant to s 58A of the Act was particularised in the SGP as follows:

   The date of first use of the name Ingenuity under s58 4.15A(5) by Ingenuity Dental was in 1984 initially as Ingenuity Marketing it was a registered Business Name and the name our family traded under in the dental market up until 1 April 2013 at which time it became Ingenuity Dental Pty Ltd we also established in 2013

3. The s 58A ground of opposition only applies if the Trade Mark was accepted because of ss 44(4) of the Act which requires the presence of an earlier registered trade mark. The Trade Mark was not accepted because of ss 44(4) of the Act and the Opponent has not raised a ground of opposition under ss 44 of the Act. In particular the Opponent has not identified an earlier registered trade mark upon which to base an opposition under s 44 and hence s 58A of the Act. The s 58A ground of opposition is not established.

Section 60

1. Section 60 of the Act is reproduced below:

   Section 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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’.  Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[13]  Her Honour quoted with approval the following words of 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 …[14]

   [13] [2000] FCA 1335, [81].

   [14] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[15]

   [15] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under the provisions of s 60 is the consideration of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

   [16] (2000) 50 IPR 1.

   [17] Ibid 20.  It is to be noted that Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted, indeed the court specifically noted that Heerey J’s approach contained no error, see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75]

6. Furthermore, in practice the degree of reputation required must also depend on how closely the trade marks resemble one another.[18]

   [18] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The ground of opposition pursuant to s 60 of the Act was particularised in the SGP as follows:

   Ingenuity Dental was in 1984 initially as Ingenuity Marketing it was a registered Business Name and the name our family traded under in the dental market up until 1 April 2013 at which time it became Ingenuity Dental Pty Ltd we also established in 2013 this new entity is trying to trade on our families reputation of over 30 years in the dental market.             

8. The Opponent has provided no evidence, as opposed to unsupported assertions, that the Opponent or any unnamed predecessor had traded under Ingenuity Dental or Ingenuity Marketing prior to 2013.  In particular I note the evidence of the Applicant that the Opponent registered the business name Ingenuity Marketing in 1993, cancelled the registration in 1996 and never, to the knowledge of the Applicant, operated a business under this name.  I accept the evidence of the Applicant (being ASIC records) that the Opponent was formerly known as Carnegie Dental Care Pty Ltd, changed its name to Ingenuity Dental Pty Ltd on 8 March 2013 and changed its name to Acumen Dental Pty Ltd on 15 February 2016.

9. Taking the Opponent’s evidence at its highest, the Opponent traded as Ingenuity Dental and sold dental products under that name for approximately 2 years before the relevant date.  The Opponent also paid for certain advertisements to be featured in dental magazines. However, no evidence of sales figures or sums spent on promotion, or customer base have been provided by the Opponent in its EIS.  The Opponent provides no evidence of the recognition, reputation or esteem in which the Ingenuity Dental name was held as at the relevant date.  I am not satisfied that, before the relevant date, the Ingenuity Dental name had acquired a reputation in relation to Dental products.

10. As the Opponent has failed to demonstrate that the Ingenuity Dental name or any other potential mark had acquired a reputation before the relevant date I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 43

1. Section 43 of the Act is reproduced below:

   43 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.

2. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [19]

   [19] [2006] FCA 1663; (2006) 70 IPR 599, [53].

3. In Winton Shire Council v Lomas Spender J said:

   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 s 60. [20]

   [20] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

4. The ground of opposition pursuant to s 43 of the Act was particularised twice in the SGP as follows:

   Ingenuity Dental was in 1984 initially as Ingenuity Marketing it was a registered Business Name and the name our family traded under in the dental market up until 1 April 2013 at which time it became Ingenuity Dental Pty Ltd we also established in 2013 - we are concerned this will confuse our customers as they are using the primary word “Ingenuity” in their application and then describing their main business as dental products, exactly the same business to the same market in and to which we have traded for over 30 years

   Under section 43 this Trademark if approved is likely to deceive or cause confusion and therefore does not meet this test either. This application for the registration of a trade mark in respect of particular goods or services must be rejected, because there is a clear conflict with our logo and brand Ingenuity Dental and there is some connotation that the proposed trademark and the words contained in the trade mark has, the use of the trademark in relation to those goods or services would be likely to deceive or cause confusion.

   They (the applicant, 1686147: Ingenuity Management Group) are trying to trademark three common words without a graphic device or means of distinguishing these words – they have no right to attempt to claim the words “ingenuity”, “management” or “group” as theirs – they have used a basic font of which they cannot claim ownership of and they are on purpose trying to confuse the market with the use of the highlighting the word Ingenuity when they are well aware this has been a name and brand our family has used since 1984. 

5. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations in this matter. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in Ingenuity Dental or Ingenuity Marketing.

6. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under s 43 has not been established.

Section 59

1. Section 59 of the Act is reproduced below:

   59 - Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)    to use, or authorise the use of, the trade mark in Australia, or

   (b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

   in relation to the goods and/or services specified in the application.

2. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 8 April 2015.[21]

   [21] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437. (‘Food Channel’)

3. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:

   In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[22]

   [22] [2008] 75 IPR 478, [160].

4. There is a presumption that where an application has been filed the applicant, has the requisite intention.  However:

   There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[23]

   [23] Ibid [162]-[63] (citations omitted).

5. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

   The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[24]

   [24] Ibid [161] (citations omitted).

6. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

7. The Opponent has particularised the ground of opposition in the SGP as follows:

   We have been informed that Ingenuity Management Group have also registered Prescribing and Dispensing Pty Ltd in case this TM application fails

8. The Opponent has not provided any evidence in support of this ground of opposition sufficient to shift the evidentiary onus, nor has it made any submissions on this point. Furthermore, I accept the Applicant’s evidence that it has and continues to use the Trade Mark for the Applicant’s Goods. The Opponent has failed to establish a prima facie case that the Applicant lacked the requisite intention as at the priority date, and has, consequently, failed to establish a ground of opposition pursuant to s 59 of the Act.

Section 62A

1. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[25]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[26]

   [25] [2004] EWCA Civ 1028; [2005] FSR 10.

   [26] [2012] FCA 81, [147].

2. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[27]

   [27] Ibid [165]-[166].

3. The Opponent has particularised this ground of opposition in the SGP as follows:

   Ingenuity Dental was in 1984 initially as Ingenuity Marketing it was a registered Business Name and the name our family traded under in the dental market up until 1 April 2013 at which time it became Ingenuity Dental Pty Ltd we also established in 2013 - it can only be construed that it is in bad faith and mischievous that they apply for this Trademark

4. As noted in respect of the s 60 ground of opposition, the Opponent has provided no evidence as opposed to unsupported assertions that it or any entity connected to the Opponent ever operated a business under the Ingenuity name, let alone a dental supplies practice, until 2013. The Applicant has provided evidence that it had offered the Applicant’s Goods under the Trade Mark or a substantially identical form to the Trade Mark for almost 18 years at the relevant date. As such I find it difficult to conclude that the Applicant’s decision to apply to register a trade mark that it has continuously used for that period is conduct that is unscrupulous, underhand or unconscientious.

5. In the absence of any evidence that the Applicant sought or seeks to gain some benefit from any association with the Opponent, I am not satisfied that the application was made in bad faith. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1686147 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Regulations.

Nicholas Smith

Hearing Officer

Trade Mark and Designs Hearings

1 August 2017