Intact Projects Pty Ltd v Intact Consulting Pty Ltd

[2018] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by Intact Projects Pty Ltd to registration of trade mark application 1647069 (37) – INTACT GROUP COMMERICIAL PROPERTY SERVICES (Device) - filed in the name of Intact Consulting Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 24

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – ground established – insufficient evidence to support prior use or honest concurrent use – registration refused

Background

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

Application Number:	1647069
Filing Date:	16 September 2014
Services:	Class 37: Building maintenance; Handyman repair, maintenance and installation services; Home maintenance services; Locksmithing (Repair, maintenance and installation); Locksmithing services being the installation, repair and maintenance of locks and locking systems; Maintenance and repair of buildings; Maintenance and repair of flooring; Maintenance and repair of gas installations and equipment; Maintenance and repair of utilities in buildings; Maintenance of buildings; Maintenance of plumbing; Maintenance, installation and repair of electrical items and equipment; Maintenance, installation and repair of household items and equipment; Property maintenance; Repair, maintenance and installation consultancy services; Sign maintenance; Window maintenance (‘Applicant’s Services’)
Endorsements:	Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. *
Trade Mark:	(‘Trade Mark’)

2.  Following the examination process, the application’s acceptance for possible registration was advertised on 21 April 2016 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 9 May 2016.  The Opponent then filed a Statement of Grounds and Particulars on 9 June 2016, which was later amended by letter on 28 June 2016.  The amended Statement of Grounds and Particulars (‘SGP’) raised grounds of opposition under ss 43, 44, 58A, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 19 July 2016.

Evidence and Submissions

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 7 October 2016.  This evidence consists of a declaration made on 30 September 2016 by Dane Pavivic, the Managing Director of the Opponent, with Exhibits DP-01 to DP 15 (‘Pavivic 1’). 

4.  The Applicant filed Evidence in Answer (‘EIA’) on 5 January 2017.  This evidence consists of a declaration made on 5 January 2017 by Nathan Dale, Managing Director of the Applicant, with Exhibits A to C (‘Dale Declaration’).  The Dale Declaration includes, as Exhibit A, a copy of a declaration dated 23 January 2016, also made by Nathan Dale, purporting to show that the Trade Mark has been in use prior to certain trade marks cited by the Examiner in considering the application (‘Exhibit A’).

5.  The Opponent filed Evidence in Reply (‘EIR’) on 2 March 2017.  This evidence consists of a declaration made on 29 February 2017 by Dane Pavivic, with Exhibit DP-1 (‘Pavivic 2’).

6.  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 17 May 2017 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 Opponent filed written submissions on 16 June 2017 (‘Opponent’s Submissions’).  The Applicant chose not to file any submissions.   

7. 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 on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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

8.  The Opponent was established on 8 July 1999 and changed its name to Intact Projects Pty Ltd on 15 May 2000.  It is a principal contractor that focuses on providing commercial interiors.

9.   The Opponent is the owner of the trade mark listed in the table below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Services’. 

Number	Trade Mark	Priority Date	Services
1260935	2 Sep 2008	Class 37: Building construction consultancy; building project management (building construction supervision)services for the development of commercial fitouts and refurbishments

10.       The Opponent is the applicant for the trade mark listed in the table below. 

Number	Trade Mark	Priority Date	Services
1705381	(‘New Mark’)	7 Jul 2015	Class 37: building construction consultancy; building project management (building construction supervision) services for the development of commercial fitouts and refurbishments

11.     The Pavivic Declarations contain the following claims/statements:

·     The Opponent has used the Opponent’s Trade Mark since at least 2008.  Given that the Opponent is a management company that uses a wide range of sub-contractors, there is a strong likelihood of confusion between the Opponent’s Trade Mark and the Trade Mark given that the Applicant and Opponent operate in the same industry, use the same suppliers and are engaged by the same clients.

·     The Opponent established its website in 2001 and provides a regular newsletter, which is delivered by e-mail to 8,628 recipients.  

·     The Opponent is aware of numerous instances of confusion between the Opponent Intact Projects Pty Ltd, and the Applicant Intact Consulting Pty Ltd.  Pavivic 1 provides numerous examples of emails showing third parties mistaking one party for the other.  

·     The Opponent engages in considerable marketing and promotion featuring the name ‘Intact Projects’ (‘Intact Mark’), Opponent’s Trade Mark and New Mark.  This includes its website, sponsorship of third parties, and donations of money to worthy causes.

·     The Declarant believes that the Trade Mark was filed in bad faith in an attempt to trade off the reputation of the Opponent.

The Applicant

12.     The Applicant is a company that provides building maintenance services.  It was incorporated in October 2006.

13.     The Dale Declaration contains the following claims/statements: 

·     The Applicant is part of the Intact Group.  The Intact Group commenced trading in the early 1990s and was incorporated as Intact Construction Services Pty Ltd on 6 June 1996.  The Intact Group has traded continuously under the Intact Group name since the 1990s. 

·     The Trade Mark was created for the Intact Group in January 2008.  Intact Group has used the Trade Mark for the Applicant’s Services continuously since February 2008, several months before the priority date of the Opponent’s Trade Mark.

·     The Opponent provides evidence of confusion occurring between the companies, however such confusion arises because of the shared use of the word ‘Intact’ which the Applicant, through the Intact Group, was the first to use in the 1990s.

·     The Intact Group has been the recipient of a number of industry achievement awards and has a considerable reputation in the industry.

Grounds of Opposition, Onus and Standard of Proof

14. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 44, 58A, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of the abovenamed grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

15.     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 16 September 2014 (‘relevant date’), being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

[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).

Discussion

Section 44

16. The relevant provisions of the Act with respect to the ground pursuant to s 44 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)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)              the similar goods or closely related services; or

(ii)             the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

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.

17. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

18. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, other circumstances or that the Applicant has continuously used the trade mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act. There are no relevant other circumstances in this case.

19.     The Opponent has particularised the ground of opposition in the SGP by reference the Opponent’s Trade Mark.  I find that the Opponent’s Trade Mark has a priority date which is earlier than that of the Trade Mark and is registered in respect of similar services to the Trade Mark, the categories ‘Building construction consultancy’ and ‘building project management (building construction supervision) services’ being similar to the services for which the Trade Mark is sought to be registered.  The first and third requirements are satisfied.

Substantially identical or deceptively similar?

20.     I will now address the first element of the second requirement, namely whether the Trade Mark is substantially identical to any of the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[4]

[4] (1963) 109 CLR 407, [12].

21.     The Trade Mark and the Opponent’s Trade Mark are depicted below.

22.     On a side by side comparison there are clear and significant differences between the respective trade marks preventing a finding that they are substantially identical, indeed the only common element is the word ‘intact’.  In particular the marks have different fonts, use different devices and are arranged in a different matter, with the words ‘Intact Group’ being incorporated into the rectangular devices in the Trade Mark and separate to (and below) the various square/rectangular devices in the Opponent’s Trade Mark.  I move on then to consider whether the Trade Mark and the Opponent’s Trade Mark are deceptively similar.

23.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from 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].[5]

[5] Ibid [13].

24.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

[10] [2012] FCA 1022, [38]-[46].

25. Each of the trade marks consist of the word ‘intact’, a selection of words that are descriptive or standard in the industry (i.e. ‘projects’ and ‘group commercial property services’) and devices that consist of a number of squares. The word ‘intact’ is the essential feature of each of marks. Allowing for imperfect recollection, I find that by reason of the presence of the word ‘impact’ and the limited capacity of the other elements in the respective Trade Marks to distinguish the marks, there is a real, tangible danger that a number of persons will be ‘caused to wonder’ whether the services offered by the Applicant under the Trade Mark and the Opponent under the Opponent’s Trade Mark come from the same source. The Opponent has established the ground of opposition pursuant to s 44(2). It is necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

Subsection 44(4): Prior Continuous Use

1. Paragraph 6 of the Dale Declaration and paragraph 10 of Exhibit A state that the Intact Group has continuously used the Trade Mark since February 2008. However, the requirement under s 44(4) is that the use of the Trade Mark must be by the Applicant or a predecessor in title of the Applicant. The evidence on this point is as follows:

   ·     Paragraph 1 of Exhibit A refers to the Intact Group as a provider of building maintenance services.

   ·     Paragraph 7 of Exhibit A states that Intact Group commenced trading under the name Intact Construction Services.  It was incorporated as Intact Construction Services Pty Ltd ACN 074 251 620 and has traded continuously to the present date.  Exhibit J to Exhibit A confirms that the name ‘Intact Group’ is the registered business name for Intact Construction Services Pty Ltd.

   ·     Paragraph 11 of Exhibit A states that Intact Group began using the Trade Mark in February 2008, continuing until the date of the declaration.

   ·     Paragraph 1 of the Dale Declaration states that the Applicant is part of the Intact Group.

   ·     Paragraph 3 of the Dale Declaration repeats the claims made in paragraph 7 of Exhibit A, namely that Intact Group commenced trading under the name Intact Construction Services and then was incorporated as Intact Construction Services Pty Ltd ACN 074 251 620 and has traded continuously to the present date.

   ·     Paragraph 6 of the Dale Declaration repeats the claims made in paragraph 11 of Exhibit A.

   ·     Paragraph 9 of the Dale Declaration is in the nature of submission and makes a number of statements based on the evidence earlier in the Dale Declaration including:

   o   The Applicant was… incorporated at least 3 years before the Opponent was established

   o   The Applicant stated using its trade mark in February 2008

   o   The Applicant has been the recipient of a number of industry achievement awards

2. The first and third statements in Paragraph 9 of the Dale Declaration referred to above are factually incorrect.  The Applicant was not incorporated 3 years before the Opponent was established.  Rather the entity that was established was Intact Construction Services Pty Ltd which trades under the name Intact Group.  The various industry awards were also won by the Intact Group.  There is no documentary evidence to support the second statement.

3. It appears that Paragraph 9 of the Dale Declaration contains a number of statements that conflate Intact Construction Services Pty Ltd t/a Intact Group with the Applicant, including the statement ‘the Applicant started using its trade mark in February 2008’.  Taking the EIS at its highest, I am not satisfied that it shows any use of the Trade Mark by the Applicant (as opposed to use by the Intact Group) at all, let alone before the priority date of the Opponent’s Trade Mark.  There is no evidence that the Trade Mark was created for the Applicant and licensed to Intact Construction Services Pty Ltd t/a Intact Group, indeed the evidence in Exhibit A is that the Trade Mark was created by a Nathan Hunt for Intact Group. 

4. Paragraph 1 of the Dale Declaration states that the Applicant is part of the Intact Group.  No further explanation of the relationship between Intact Construction Services Pty Ltd t/a Intact Group and the Applicant is provided including any ASIC or corporate documentation.  It is not stated, nor is there any evidence to infer, that Intact Construction Services Pty Ltd is the predecessor-in-title of the Applicant.

5. I am not satisfied that the Applicant or a predecessor-in-title continuously used the Trade Mark for a period beginning before the priority date of the Opponent’s Trade Mark in respect of services similar to the Opponent’s Services and ending on the Priority Date. Hence the Applicant has not satisfied the requirements of s 44(4) of the Act.

   Subsection 44(3): Honest Concurrent Use

   31.       In McCormick & Co Inc v McCormick[11] Kenny J stated:

   [11] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the  marks  in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

6. In the present case there is little or no evidence of any use of the Trade Mark by the Applicant (as opposed to Intact Construction Services Pty Ltd t/a Intact Group).  Furthermore the EIS shows significant and repeated confusion between the Opponent and Intact Construction Services Pty Ltd t/a Intact Group, some of which may have been caused by the similarities between the Trade Mark and the Opponent’s Trade Mark.  In the absence of any evidence of use by the Applicant I am not satisfied of any particular inconvenience to the Applicant if registration was not permitted.  The Applicant has not established honest concurrent use of the Trade Mark. 

   33. I accordingly find the opposition ground based on s 44 of the Act established.

   Decision

   34. I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

   Costs

   35. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   20 February 2018