Ingeus Australia Pty Ltd and Ingeus Pty Ltd v Qantas Airways Limited

[2018] ATMO 23

TRADE MARKS ACT 1995

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

ReOpposition by Ingeus Australia Pty Ltd and Ingeus Pty Ltd to registration of trade mark application 1736615 (35, 36, 39, 41) – QANTAS ASSURE - in the name of Qantas Airways Limited

Delegate:  Robert Wilson

Representation:                  Opponents: Ed Heerey of Queens Counsel, instructed by Timothy O’Callaghan of Piper Alderman

Applicant: Justine Beaumont of Counsel, instructed by Frances Drummond of Norton Rose Fulbright Australia

Decision:  2017 ATMO 23

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no ground established – trade mark to proceed to registration

Background

1.     This decision concerns an opposition brought by Ingeus Australia Pty Ltd and Ingeus Pty Ltd (‘the Opponents’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Qantas Airways Limited (‘the Applicant’):

Application Number:	1736615
Filing Date:	23 November 2015
Services:	See Appendix 1  (‘the Applicant’s Services’)
Trade Mark:	QANTAS ASSURE	(‘the Applicant’s Trade Mark’)

2.     On 14 April 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponents filed a Notice of Intention to Oppose the registration on 10 June 2016 and a Statement of Grounds and Particulars (‘the SGP’) on 8 July 2016. The SGP nominated grounds of opposition under ss 44, 58, 60, 42, 43, 59 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 10 August 2016.

Evidence

3.     The Opponents filed the following Evidence in Support of its opposition (‘EIS’):

·Statutory Declaration made on 16 November 2016 by Chris Smedley, the Chief Executive Officer of Ingeus Australia Pty Ltd and a director of Ingeus Pty Ltd, with Annexures CS 1 to  CS 42. (‘the Smedley declaration’). Annexure CS 12 is indicated to be confidential.

·Statutory Declaration made on 15 November 2016 by Oliver Brecht, the President of the Employees Assistance Professionals Association of Australasia, with Annexures OB1 and OB3 (‘the Brecht declaration’); and

·Statutory Declaration made on 17 November 2016 by Jessica Farrell, an employee of Piper Alderman the solicitors for the Opponents, with Annexures JF 1 to JF 5 (‘Farrell 1’).

4.     The Applicant filed the following Evidence in Answer (‘EIA’):

·Statutory Declaration of Jo Boundy, the Chief Marketing Officer of Qantas Loyalty, with Annexures JB-1 to JB-25 and Confidential Annexures A to G. (‘the Boundy declaration’). Annexures JB-12, JB-12A and JB-13 are also indicated to be confidential. I note that the declaration is undated but was filed on 24 February 2017. That the declaration is undated was not raised by either party as an issue during the hearing; and

·Statutory Declaration made on 24 February 2017 by Rebecca Jane Brenikov, an Associate at Norton Rose Fulbright Australia, the legal representatives of the Applicant, with Annexures RJB-1 to RJB-5 (‘the Brenikov declaration’).

5.     The Opponents filed the following Evidence in Reply (‘EIR’):

·Statutory Declaration made on 2 May 2017 by Jessica Farrell with Annexures JF 6 to JF 10 (‘Farrell 2’).

6.     Once the time allowed for filing evidence had ended both parties requested an oral hearing. I heard the matter in Sydney on 21 November 2017 as a delegate of the Registrar of Trade Marks. Ed Heerey of Queen’s Counsel appeared for the Opponents. Mr Heerey was instructed by Timothy O’Callaghan of Piper Alderman. Justine Beaumont of Counsel appeared for the Applicant. Ms Beaumont was instructed by Frances Drummond of Norton Rose Fulbright Australia.

The Opponents

7.     According to the Smedley declaration:

The Opponents provide services to businesses to assist in the organisational development of a business, and the health and wellbeing of the employees of that business. These services in turn assist in the management and administration of the business.

8.     The core services which the Opponents provide are employee assistance program (‘EAP’) services and organizational development services. The Opponents currently employ 79 individuals across six states and territories in Australia. In addition to this the Opponents have a network of 606 associates who are contracted psychologists engaged by the Opponents to deliver the Opponents’ services on their behalf. The services are provided either in the Opponents’ offices or in the offices of their associates. There are over 400 physical locations where clients can receive the Opponents’ services.

9.     Also according to the Smedley declaration:

On 31 August 2011, Ingeus Australia Pty Ltd acquired the business assets of Assure Programs Pty Ltd [(‘the Opponents’ predecessor in title’)] … That acquisition included the assignment of goodwill and trade marks including trade marks which incorporate the words ‘ASSURE’ and ‘ASSURE PROGRAMS’. …

[The Opponents’ predecessor in title] had used the trade marks ‘ASSURE’ and ‘ASSURE PROGRAMS’ continuously from 2002 until August 2011.

Since acquisition of the ‘Assure Programs’ business in August 2011, the Opponents have prominently used the trade marks ‘ASSURE’, and ‘ASSURE PROGRAMS’ as the primary trade marks in proposals, agreements, program and sales literature, on the internet and social media generally, at external conferences, at customer conferences and events and awareness collateral which it provides to customers and clients.

10.   Ingeus Australia Pty Ltd is the owner of the following registered trade marks or pending application:

Trade mark / application no.	Sign	Classes	Priority Date	Status
977253	35, 44	6/11/2003	Registered
1211631	ASSUREPLUS	35, 44	22/11/2007	Registered
1211644	ASSUREFIRST	35, 44	22/11/2007	Registered
1211648	ASSURE PROGRAMS	35, 44	22/11/2007	Registered
1768715	ASSURE	35, 44	4/5/2016	Pending/Opposed

Detailed specifications of the services of the above appear in Appendix 2.

The Applicant

11.   According to the Boundy declaration:

The Applicant is a well-established and very well-known company throughout the world. Qantas … is widely regarded as the world’s leading long distance airline and its brand, QANTAS, is one of the strongest brands in Australia. Founded in Queensland in 1920, the Applicant has gone on to become Australia’s largest domestic and international airline. …

In 1998, Qantas co-founded the oneworld alliance [sic] with American Airlines, British Airways, Canadian Airlines, and Cathay Pacific, with other airlines joining subsequently. …

The Applicant has a large social media following. The official Qantas Facebook fanpage has over 966,000 likes, 420,000 followers on twitter [sic], 154,000 followers on Linkedin, 475,000 Instagram followers, 45,000 subscribers to the YouTube channel and 33,000 Google+ followers. …

The Applicant has won several awards for its service and continues to top consumer lists. …

Qantas has been the official airline of the Wallabies, the Australian national Rugby Union team since 1990. … Qantas also supports the Socceroos, Australia’s national association football team and is the main sponsor for the Formula One Australian Grand Prix.

On 26 December 2011, Qantas signed a four-year deal with Australian cricket’s governing body Cricket Australia, to be the official carrier of the Australia [sic] national cricket team. Qantas is also the naming rights partner for the Australia mens and womens [sic] rugby sevens team, and the official airline for the Olympic and Paralympic committees. …

The Applicant often uses its QANTAS trade mark in combination with an additional word. This allows the Applicant’s consumers to easily differentiate between the various product offerings. …

The Applicant is party to a number of significant partnerships. This includes partnerships with a number of banks and credit cards. The QANTAS brand is used in combination with credit cards issued by HSBC, NAB, American Express, CommBank. …

The Applicant also makes use of the following formative trade marks:

·QANTAS POINTS (used in relation to the well-known frequent flyer and loyalty scheme)

·QANTAS BUSINESS REWARDS

·QANTAS EPIQURE [sic]

·QANTAS GOLF CLUB

·QANTAS STORE

·QANTAS HOTELS

·QANTAS VALET

·QANTAS ACTIVITIES

·QANTAS CLUB

12.   In respect of the Applicant’s Trade Mark, Mr Boundy stated:

The Applicant decided and agreed upon the trade mark QANTAS ASSURE in, or around, July 2015.

The Applicant’s QANTAS ASSURE product is offered, as is advertised [sic] as being offered, in partnership with NIB. NIB is a well-known health insurance provider in Australia. … The Applicant announced the launch of its insurance product and wellness program, and its partnership with NIB, on 23 November 2015. … The same day, [the] Applicant also announced the introduction of the QANTAS ASSURE product via email, a copy of which was sent to over 5 million frequent flyer members.

The partnership with the Applicant and NIB was notified to the ASX and the public announcement regarding the partnership, as well as the QANTAS ASSURE product, was well reported in the Australian news. …

The QANTAS ASSURE product was launched in March 2016 as an insurance membership, which is connected with [a] wellness program that rewards people with Qantas Points for being active if the take out an insurance policy. … Travel and Life insurance products are also offered under the QANTAS ASSURE brand.

Grounds of Opposition, Onus and Standard of Proof

13. As indicated above, in the SGP the Opponents nominated grounds of opposition under ss 44, 58, 60, 42, 43, 59 and 62A of the Act. At the hearing Counsel for the Opponents argued only grounds pursuant to ss 42(b), 44 and 60. The onus of proof in the opposition rests upon the Opponents.[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 23 November 2015, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

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

[2] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 60

14. 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.

15.   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’.[4] Her Honour quoted with approval the following words of Lockhart J from Re 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 …[5]

[4] [2000] FCA 1335, [81].

[5] [1992] FCA 159, [118].

16.   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.[6]

[6] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

17. 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[7] 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 us with 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 …[8]

[7] [2000] FCA 1587.

[8] Ibid [91]. 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.

18. The ground based on s 60 of the Act is particularised in the SGP as follows:

Before the priority date of the registration of the Opposed Trade Mark, the trade marks ASSURE and ASSURE PROGRAMS had acquired a reputation in Australia, relating to the Opponents, and in respect of the same or similar services as those claimed in the Opposed Trade Mark, particularly where those services relate to health or wellbeing. Because of that reputation, the use of the Opposed Trade Mark by the Applicant would be likely to deceive or cause confusion.

The Opponents did not define ‘ASSURE’ or ‘ASSURE PROGRAMS’ to mean anything other than the plain words.

19.   As the SGP has nominated only the word trade marks ASSURE and ASSURE PROGRAMS (‘the Opponents’ Word Trade Marks’) it is necessary that at the Relevant Date the Opponents establish that at least one of those trade marks has acquired a reputation in Australia and because of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.  

20. Mr Heerey submitted: ‘In the present case, there can be no real doubt that the Opponents’ ASSURE trade mark has ‘acquired a reputation in Australia’ within the meaning of s 60(a)’. Mr Heerey did not define the term ‘the Opponents’ ASSURE trade mark’ to mean other than the plain word ‘ASSURE’ and I take it, therefore, to have that meaning. Ms Beaumont submitted:

The Applicant accepts that the ‘other trade mark’ in s 60 need not be registered, but it must be an integer which is used as a trade mark. The Opponents’ evidence does not support such a conclusion in relation to the word ‘ASSURE’ either in relation to ‘use’ as a trade mark or in relation to independent reputation in that integer.

Rather there is de minimus evidence on the issue of use of, or certainly any relevant reputation in, the mark ASSURE solus as at [the Relevant Date].

21.   The EIS in this matter has some significant shortcomings. Many of the claims of use made in the principal declaration—the Smedley declaration—are unsupported by cogent, dated evidence. Much of the evidence is undated or dated after the Relevant Date. For example, the Smedley declaration indicates that in 2011 Ingeus Australia Pty Ltd acquired the business assets of Assure Programs Pty Ltd. That acquisition included ‘the assignment of goodwill and trade marks, including trade marks which incorporate the words “ASSURE” and “ASSURE PROGRAMS”’ and that ‘The Opponent’s [sic] Predecessor had used the trade marks “ASSURE” and “ASSURE PROGRAMS” continuously from 2002 until 2011’. There are no annexures to the Smedley declaration which provide examples of such use. The Farrell declaration does include screen captures of the website from the internet archive ‘Wayback Machine’ found at The screen captures are dated variously from April 2003 up to, and beyond, the Relevant Date. The screen captures show use of a number of relevant signs; however, the only internet traffic figures which are provided are for the 12 months prior to the date of the Smedley declaration. As the Smedley declaration is dated almost 12 months after the Relevant Date, this information is of limited assistance to the Opponents. Some further examples which highlight the shortcomings follow.

22.   Annexure CS 11 to the Smedley declaration is declared to be a printout of the Opponents’ social media accounts. These are captures taken on 31 October 2016—nearly twelve months after the Relevant Date. The captures show use of the signs ‘Assure’ and ‘Assure Programs’ and on LinkedIn the sign shown below. The captures indicate that as at 31 October 2016 there were 17 followers on Twitter, 691 followers on LinkedIn, and the YouTube channel had two subscribers. None of this information compels a finding that any of the signs used had acquired a reputation.

23.   The strongest evidence to support a finding of the acquisition of reputation is found in the confidential advertising and sales figures and the list of corporate customers and their employee numbers found in the Smedley declaration. However, the evidence here falls short again as there is insufficient evidence to conclude that the advertising or sales figures concerned use of relevant signs or that any of the employees were exposed to relevant signs before the Relevant Date.

24.   Annexures CS 20 to CS 41 to the Smedley declaration are declared to be:

samples of the use of the Assure Trade Marks in promotional material of the Opponents. This material is widely distributed to our customers for display to employees at places of work, or to the employees of our customers to take to their homes.

The annexures show variously: fridge magnet, single page calendar, wallet card and promotional material provided to various corporate entities. The items shown in the annexures are almost all undated or dated after the Relevant Date. The only item which appears to be dated before the Relevant Date is found in Annexure CS 23 which is a document entitled ‘Lunchbox Seminars 2013’. There is no indication in the declaration when, where or in what numbers any of the items in the annexures was distributed. Consequently, this evidence is of little assistance to the Opponents.

25.   Because of its many shortcomings, the evidence provided by the Opponents is insufficient to satisfy me that ASSURE or ASSURE PROGRAMS acquired a reputation before the priority date. Consequently, this ground of opposition falls at the first hurdle.

Section 42

26. Section 42(b) of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) …

(b) its use would be contrary to law.

27.   The onus is on the Opponents to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[9]

[9] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

28. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

The Opponents and predecessors had, before the priority date of the registration of the Opposed Trade Marks, acquired a reputation in Australia in the trade marks ASSURED and ASSURE PROGRAMS, particularly in relation to services relating to health and wellbeing. In the circumstances, the use and proposed use of QANTAS ASSURE by the Applicant contravenes sections 18 and 29 of the Australian Consumer Law and the tort of passing off.

29. In the present matter the Opponents failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[10] I am satisfied that the Opponents have also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[10] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

30. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[11] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[12]

[11] [2003] FCA 104, [107].

[12] [1989] FCA 506, [40] (citations omitted).

31.   For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponents have failed to establish this ground of opposition.

Section 44

32. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)…

(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.

(3)… .

Section 10 - Definition of deceptively similar

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

33. In the SGP the Opponents nominated trade marks numbers 977253 and 1211648 (detailed at para 10, above) in respect of s 44 (together ‘the Opponents’ Trade Marks’).

34. To successfully oppose the application pursuant to s 44 of the Act the Opponents must at least establish the requirements of s 44(2), i.e. that at least one of the Opponents’ Trade Marks:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     is registered in respect of services which are similar to at least some of the Applicant’s Services (‘the second requirement’); and

·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

35.   The Opponents’ Trade Marks both have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement. The Applicant has claimed services including the broad claim of business services in Class 35. This claim encompasses the business consulting services in Class 35 for which trade mark 977253 is registered and the various business services including business consultancy in the same class for which trade mark 1211648 is registered. The second requirement is therefore satisfied. I will move now to consider third requirement.

Substantially identical or deceptively similar?

36.   Mr Heerey made submissions in respect of both substantial identity and deceptive similarity. I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponents’ Trade Mark. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  (‘Shell’) Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]

[13] [1963] HCA 66, [12].

37.   Mr Heerey submitted that:

In undertaking this comparison, it is appropriate to consider which components of the marks are the ‘dominant cognitive cues’ which will be taken away by a viewer, and by which a person seeking out the goods will recognise a way of connecting the goods with a particular trader.

38.   The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the recent decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[14] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[15] The court stated in Pham Global:

There is no doubt in our view that the Full Court in Accor in using the phrase ‘dominant cognitive cues’ was making analogical reference to the ‘essential features’ of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical. …

The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[16]

[14] [2017] FCAFC 56.

[15] [2017] FCAFC 83.

[16] [2017] FCAFC 56, [51]-[52].

39.   The trade marks which were compared in Pham Global are shown below:

The court found the elements ‘insight’ and the devices in each trade mark to be the essential elements. In finding the two trade marks substantially identical the court discounted the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.[17]

[17] [2017] FCAFC 83, [56].

40.   Mr Heerey noted that in Accor the court found that the trade mark shown below is substantially identical to the plain word trade mark HARBOUR LIGHTS.

Mr Heerey submitted that:

This finding of substantial identity was despite the presence of the separate distinctive trade mark THE SEBEL. The Full Court noted that use of the trade mark THE SEBEL simply tells the viewer that there is a relationship between the services badged HARBOUR LIGHTS in the advertisement, the developer of the HARBOUR LIGHTS complex, and, in some way or other, an accommodation operator described by THE SEBEL.[18]

[18] Mr Heerey cited Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [225].

41.   Ms Beaumont disputed Mr Heerey’s interpretation of Accor, submitting:

[Mr Heerey’s submissions] inaccurately describe the effect of the decision of the Full Court … The Court in Accor did not find that [the trade mark above] was substantially identical to the word HARBOUR LIGHTS. As is clear from the paragraphs immediately preceding the one relied on by the Opponents, the Court made clear that it regarded the THE SEBEL as a separate mark in the context of the advertisement under consideration. …

All the court found at [225] of Accor was that the mark HARBOUR LIGHTS was substantially identical to the mark HARBOUR LIGHTS (with the words CAIRNS underneath).

42.   My reading of Accor accords with that of Ms Beaumont.

43.   In respect of the comparison in the present matter Mr Heerey submitted:

It is convenient to analyse first the plain words ASSURE PROGRAMS against QANTAS ASSURE. On any view, in the context of the specified business consultancy services, the word PROGRAMS plays no material role in distinguishing the services of one person from those provided by other persons. Rather, the essential feature and dominant cognitive cue of the prior registration is the word ASSURE.

That same word ASSURE is an essential feature and dominant cognitive cue of QANTAS ASSURE.

As with the trade mark THE SEBEL in [Accor], the trade mark QANTAS simply tells the viewer that there is a relationship between the business consultancy services badged ASSURE and, in some way or another, the well-known airline business QANTAS.

The likelihood of the viewer drawing this conclusion is reinforced by the Applicant’s long history of highly publicised joint ventures with brand owners in other fields, resulting in a combined use of QANTAS trade marks with the trade marks of those other brand owners, such as QANTAS AMERICAN EXPRESS.

Applying the test explained by Windeyer J in [Shell] and by the Full Courts in [Accor] and Pham Global, comparing the marks side by side and noting the similarities and differences and the importance of these having regard to the essential features of the registered mark, the total impression that emerges from the comparison is one of resemblance, not dissimilarity.

It follows that the respective marks should be considered substantially identical, such that the ground of opposition is made out under s 44(2).

44.   That the Applicant has a long history of joint ventures is addressed in the Smedley declaration. The declaration lists some 16 partnerships in which the Applicant has been involved. The partners listed include, by way of example: NIB, Mastercard, American Express, Vodafone, Tourism Australia and R M Williams. It is apparent from the evidence that it is unusual for the Applicant’s partnerships to result in a trade mark which is coined and used specifically in connection with those partnerships. Out of the 16 partnerships listed this appears to have occurred in only three cases. The partnership with Mastercard gave rise to QANTAS CASH and the partnership with NIB gave rise to the Applicant’s Trade Mark. The only time where a trade mark of the partner appears to have been combined into a trade mark with ‘QANTAS’ is the QANTAS AMERICAN EXPRESS trade mark referred to by Mr Heerey. This does not evidence a pattern of behaviour on the part of the Applicant which might increase the likelihood of a viewer of the Applicant’s Trade Mark drawing the conclusion asserted by the Opponents. Given the Opponents’ reliance on this long history and the doubtful interpretation and application of Accor I find do not find Mr Heerey’s submissions persuasive.

45.   There are sufficient differences between the trade marks that on a side by side comparison I am not satisfied that the Applicant’s Trade Mark is substantially identical to QANTAS ASSURE. As Mr Heerey has made no submissions in respect of substantial identity in respect of trade mark 977253, and given the additional elements present in that trade mark, neither am I satisfied that the Applicant’s Trade Mark is substantially identical to trade mark number 977253. I move then to consider deceptive similarity.

46.   Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[19]

[19] [1963] HCA 66, [13].

47.   In Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) French J consider the expression ‘likely to cause confusion’ as found is s 10:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[20]

[20] (1999) 45 IPR 411, 428, [50]. French J was restating the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

48.   In considering ‘likely to deceive or cause confusion’ in the same case, French J stated:

The use of the word ‘likely’ in this context does not import a requirement that it be more probably than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger or its occurring’: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-95 (Kitto J).[21]

[21] Ibid 426 [43].

49.   Mr Heerey noted that the Registrar’s delegate ‘must allow for consumers to have an “imperfect recollection” of the prior mark when they come across the later mark’[22] and that it ‘is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed or mixed up”’.[23]

[22] Reckitt & Colman Australia (Australia) Ltd v Boden (1945) 70 CLR 84, 98.

[23] MID Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 42 IPR 561, 569.

50.   Mr Heerey submitted:

Applying the above principles, and particularly in a context where the Applicant has a long and highly publicised history of conducting joint ventures with other brand owners in diverse fields, there is a real risk that a notional consumer with an imperfect recollection of the Prior Registrations would view the QANTAS ASSURE trade mark and be, at the very least, perplexed or caused to wonder if it might not be the case that the services provided under QANTAS ASSURE are associated with those provided under ASSURE PROGRAMS or other Prior Registrations.

51.   In respect of deceptive similarity Ms Beaumont referred me to the decision of the Full Federal Court in Woolworths. That case considered the deceptive similarity of, inter alia, the following two trade marks:

METRO

52.   In referring to the decision of the single judge, French J held in Woolworths:

His Honour’s reference to the familiarity of the name ‘Woolworths’ in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name ‘Woolworths’ cannot be assessed without its notorious familiarity to consumers.[24]

[24] (1999) 45 IPR 411, 431 [61].

53.   There was no dispute in this matter as to the significant familiarity and notoriety of the QANTAS trade mark in Australia. In my view the notoriety and familiarity of QANTAS is at least equal to that of WOOLWORTHS and the Registrar is justified in taking judicial notice of this fact. Ms Beaumont submitted:

The word QANTAS, as a well-known mark, is a dominant cognitive cue in [the Applicant’s Trade Mark] and cannot be disregarded. …

The approach in Woolworths is directly applicable here. The inclusion of the word QANTAS in [the Applicant’s Trade Mark] removes any possibility that consumers could be confused about the source of the services provided under [the Applicant’s Trade Mark].S

54.   Mr Heerey submitted that the facts in Woolworths are distinguishable from the facts in this case because of the asserted reputation that QANTAS has in entering into partnerships. On the basis of my findings on this point, above, I am not satisfied that particular aspect of QANTAS reputation increases the likelihood of deception or confusion in this matter. While I would not go so far as Ms Beaumont and say that the inclusion of QANTAS ‘removes any possibility’ of deception or confusion, I am satisfied that the reputation of the QANTAS trade mark significantly mitigates the likelihood of deception or confusion.

55.   There are significant differences between the Applicant’s Trade Mark and the Opponents’ Trade Marks. In the case of the logo trade mark 977253 the differences are numerous and significant. In the case of the plain word trade mark 1211648 it is unlikely that the ASSURE element alone would be seen as indicating the trade source. On balance, I am not satisfied that the Applicant’s Trade Mark is deceptively similar to either of the Opponents’ Trade Marks. The Opponents have, therefore, failed to establish this ground of opposition.

Decision

56.   The Opponents have failed to establish any of the grounds of opposition it pressed at the hearing. Accordingly, application 1736615 may proceed to registration after 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 a court so orders.

Costs

57. 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 Opponents have failed to establish a ground of opposition, I award costs against the Opponents under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Hearings and Oppositions

19 February 2018

Appendix 1

The Applicant’s Services

Class 35: Management, organisation, operation and supervision of loyalty schemes or programs; business services including business management, administration and information services; appraisal, consultancy, information, management, research and organisation services all of the foregoing being business related; the supply of benefits in connection with loyalty and incentive schemes; loyalty programs involving discounts or incentives

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; financial analysis; financial consultancy; financial information; financial management; financial sponsorship; financial planning; financial portfolio management; financial research; financial administration; financing services; fiscal assessments; fund investments; guarantees; banking services; mortgage banking; mutual funds; instalment loans, financial business liquidation services; capital investments; cheque verification; actuarial services; credit card services; financial evaluation; securities brokerage; insurance information; insurance brokerage; insurance consultancy; insurance administration; insurance underwriting; accident insurance underwriting; fire insurance underwriting; health insurance underwriting; hire-purchase underwriting; life insurance underwriting; retirement payment services; stock exchange quotations; stocks and bonds brokerage; issuance of tokens of value; risk management services; provision of investment products; money management and investment services; issuing of vouchers or tokens of value in relation to the supply of benefits for customer loyalty and frequent buyer schemes

Class 39: Air travel services; airline services; aircraft chartering; passenger transport and air cargo transport services; booking and reservation of travel services including but not limited to booking and reservation services for holidays and tours; providing information and data relating to the transport of goods and people; tourist information services; sightseeing tour and cruise arranging services; package holiday services; transportation and travel services, including priority boarding, check-in, seating and reservation services and ticket upgrades, all the aforesaid provided as benefits in relation to a bonus program for frequent air travellers; planning, booking and ticketing of and information about travel and transport via electronic contact and communication with customers, such services being in relation to airline services; transport; transportation and delivery of goods and passengers by land, air and sea; seating reservation services; travel and transport reservation services; travel management services; baggage services; tourist offices; travel agency services; arranging and operation of tours; courier services; vehicle hire services; chauffeur services; airport parking for vehicles; car parking valet services; freight services; packaging and storage of goods; storage and warehousing services; information services in relation to travel and transport; energy distribution and supply services including in connection with water, electricity, gas, energy and fuel; bonus, loyalty and reward programs being the supply of travel benefits, travel incentives, travel services and travel schemes; information, advisory and consultancy services relating to all of the aforesaid

Class 41: Entertainment services; organising and managing events and tours for entertainment purposes; ticket reservation and booking; sale of tickets; booking of seats for shows; electronic ticket reservation and booking services; ticket agency services; entertainment services via a global computer network; organising and managing events and tours for entertainment purposes via a global computer network; ticket reservation and booking via a global computer network; sale of tickets via a global computer network; booking of seats for shows via a global computer network; ticket agency services via a global computer network; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes

Appendix 2

977253 specification

Class 35: Organisational and business consulting including facilitation and strategic review services

Class 44: Psychological services, employee assistance programs being psychological counselling and psychology services

1211631 specification

Class 35: Business consultancy; business consultancy to firms; business consultancy to individuals; human resource management; team building (personnel management); business advisory services; business management and organisation consultancy; business administration consultancy; corporate management consultancy; professional business consultancy; risk management consultancy; business planning consultancy; strategic business consultancy; employment consultancy; consultancy relating to the management of personnel; consultancy relating to the selection of personnel; employment recruiting consultancy; personnel management advice; personnel management assistance; psychological testing for the selection of personnel; personnel career counselling; employment counselling services; recruitment advertising; personnel recruitment agency services; evaluation of personnel requirements; resume compilation for personnel seeking employment; recruitment of personnel; selection of personnel; placement of permanent personnel; selection of executive personnel; temporary personnel employment services; interviewing services; collection of personnel information; maintenance of personnel records (for others); business information; business research; business statistical analysis; business strategy services; strategic business planning; writing of business reports; business management; business administration; office functions; advertising; marketing; retail; sales by any means; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 44: Psychological services; psychotherapeutic services; psychological or psychiatric counselling; occupational psychology services; lifestyle counselling (medical and psychological); employee advice and information; preparing psychological profiles; psychological examination; provision of information relating to psychology occupational; health and safety services (therapeutic and rehabilitation services); provision of medical treatment; health clinic services; remedial therapy services; speech therapy services; consultancy services relating to personal appearance; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

1211644 specification

Class 35: Business consultancy; business consultancy to firms; business consultancy to individuals; human resource management; team building (personnel management); business advisory services; business management and organisation consultancy; business administration consultancy; corporate management consultancy; professional business consultancy; risk management consultancy; business planning consultancy; strategic business consultancy; employment consultancy; consultancy relating to the management of personnel; consultancy relating to the selection of personnel; employment recruiting consultancy; personnel management advice; personnel management assistance; psychological testing for the selection of personnel; personnel career counselling; employment counselling services; recruitment advertising; personnel recruitment agency services; evaluation of personnel requirements; resume compilation for personnel seeking employment; recruitment of personnel; selection of personnel; placement of permanent personnel; selection of executive personnel; temporary personnel employment services; interviewing services; collection of personnel information; maintenance of personnel records (for others); business information; business research; business statistical analysis; business strategy services; strategic business planning; writing of business reports; business management; business administration; office functions; advertising; marketing; retail; sales by any means; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 44: Psychological services; psychotherapeutic services; psychological or psychiatric counselling; occupational psychology services; lifestyle counselling (medical and psychological); employee advice and information; preparing psychological profiles; psychological examination; provision of information relating to psychology occupational; health and safety services (therapeutic and rehabilitation services); provision of medical treatment; health clinic services; remedial therapy services; speech therapy services; consultancy services relating to personal appearance; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

1211648 specification

Class 35: Business consultancy; business consultancy to firms; business consultancy to individuals; human resource management; team building (personnel management); business advisory services; business management and organisation consultancy; business administration consultancy; corporate management consultancy; professional business consultancy; risk management consultancy; business planning consultancy; strategic business consultancy; employment consultancy; consultancy relating to the management of personnel; consultancy relating to the selection of personnel; employment recruiting consultancy; personnel management advice; personnel management assistance; psychological testing for the selection of personnel; personnel career counselling; employment counselling services; recruitment advertising; personnel recruitment agency services; evaluation of personnel requirements; resume compilation for personnel seeking employment; recruitment of personnel; selection of personnel; placement of permanent personnel; selection of executive personnel; temporary personnel employment services; interviewing services; collection of personnel information; maintenance of personnel records (for others); business information; business research; business statistical analysis; business strategy services; strategic business planning; writing of business reports; business management; business administration; office functions; advertising; marketing; retail; sales by any means; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 44: Psychological services; psychotherapeutic services; psychological or psychiatric counselling; occupational psychology services; lifestyle counselling (medical and psychological); employee assistance programs; preparing psychological profiles; psychological examination; provision of information relating to psychology occupational; health and safety services (therapeutic and rehabilitation services); provision of medical treatment; health clinic services; remedial therapy services; speech therapy services; consultancy services relating to personal appearance; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

1768715 specification

Class 35: Business consultancy; business consultancy to firms; business consultancy to individuals; human resource management; team building (personnel management); business advisory services; business management and organisation consultancy; business administration consultancy; corporate management consultancy; professional business consultancy; business risk management consultancy; business planning consultancy; strategic business consultancy; employment consultancy; consultancy relating to the management of personnel; consultancy relating to the selection of personnel; employment recruiting consultancy; personnel management advice; personnel management assistance; psychological testing for the selection of personnel; personnel career counselling; employment counselling services; recruitment advertising; personnel recruitment agency services; evaluation of personnel requirements; resume compilation for personnel seeking employment; recruitment of personnel; selection of personnel; placement of permanent personnel; selection of executive personnel; temporary personnel employment services; interviewing services; collection of personnel information; maintenance of personnel records (for others); business information; business research; business statistical analysis; business strategy services; strategic business planning; writing of business reports; business management; business administration; office functions; advertising; marketing; retail; sales by any means; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 44: Psychological services; psychotherapeutic services; psychological or psychiatric counselling; occupational psychology services; lifestyle counselling (medical and psychological); employee health, medical and wellbeing programs; preparing psychological profiles; psychological examination; provision of information relating to psychology; health and safety services (therapeutic and rehabilitation services); provision of medical treatment; health clinic services; remedial therapy services; speech therapy services; consultancy services relating to personal appearance; consultancy in relation to occupational health and safety (therapeutic and rehabilitation services); advisory services relating to health; health assessment surveys; health risk assessment surveys; information services relating to health care; medical health assessment services; preparation of reports relating to health care matters; provision of health care services; personal care services (medical nursing, health, hygiene and beauty care); health counselling; preparation of reports relating to health care matters; providing information, including by electronic means and via a global computer network, about all of the aforesaid services