J Safra IP Holdings SCS v Safran Electronics & Defense

[2019] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by J Safra IP Holdings SCS to extension of protection of International Registration 1341366 (9, 12, 35, 37, 38) (Australian trade mark 1840704) - Safran Electronics & Defense – held by SAFRAN.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Davies Collison Cave Pty Ltd Holder: Griffith Hack
Decision:	2019 ATMO 59 Trade Marks Regulations 1995 Regulation 17A.33 opposition to registration – regulation 4.15A – services not similar – ground not established.

Background

1. An International Registration Designating Australia, (‘IRDA’), means a request, made under Article 3^ter (1) or (2) of the Madrid Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark.  In these proceedings under regulation 17A.33 of the Trade Marks Regulations 1995 (‘the Regulations’) SAFRAN (‘the Holder’) has sought extension of protection to Australia of International Registration 1341366 which appears below:

   Application No:           1840704

   IR No:    1341366
   Priority Date:               26 Feb 2016 (Based on 4252281 – France)

   Goods:Class 9: Electronic and digital apparatus, equipment and instruments for navigating, steering, piloting, stabilizing and locating of air, land, sea and space vehicles; gyrometers; accelerometric and gyroscopic equipment and apparatus; compasses; resetting by correlation of altitude; hybrid and inertial navigation systems; dopplers, odometers; pilot helmets and display equipment for civil and military applications; equipment and databases for preparing, tracking and recovering assignments of land, air and sea vehicles; digital mapping apparatus; digital bus management equipment; mission calculators; head-up display equipment; range finders (telemeters); anemometric plants; radio altimeters; data transfer housing; aeronautical apparatus, machines and devices; guiding, remote guiding, automatic pilot equipment and apparatus; maintenance assistance systems (ACMS); data analysis stations (AGS); cockpit control systems; sensors; control systems for shutters and burners; brake control and thrust inverter actuators; horizontal plane command systems; electric power distribution systems; electric converters; automatic flight control systems for helicopters; flight control calculators; trim systems; piloting actuators; altitude and directional inertial control units; flight data acquisition systems; optical equipment, apparatus and instruments for scientific applications, navigating, steering, piloting and stabilizing air, land, sea and space vehicles; optical apparatus, instruments and equipment for civil and military applications; super-conductive and semi-conductive components intended for infrared detection; high-precision optical devices; micro-coolers; piezoelectric scanners; infrared cameras; video cameras; equipment and apparatus for optical detection or infrared detection; fire control equipment and apparatus; thermal imagers; observation systems; infrared tracking and monitoring systems; periscopes; target glasses and telescopes; viewfinders; apparatus, instruments and equipment for unmanned vehicles for civil and military use; remote control equipment and apparatus; remote guiding equipment and apparatus; remote measuring equipment and apparatus; observation and reconnaissance systems; control stations; antennas; transmission and secure communication systems; heliborne monitoring systems; radio relay transmission systems; encryption and telecommunication terminals; secure networks; electronic apparatus, instruments and equipment for infantrymen and security personnel; thermal imaging cameras; day/night monitoring systems; high-precision optical devices; systems for digital image transmission in real time; day/night vision binoculars; batteries, accumulators; apparatus for charging electric accumulators; airborne surveillance systems; gyro-stabilized and rotating optronic platforms; target illuminators; geographical information production systems; apparatus and equipment for the acquisition, compression, transmission, analysis and recovery of aerial photographs and satellite images; systems for transmitting images by digital radio link; optical components; astronomical mirrors; space optics; air reconnaissance optics; optical metrology

   Class 12: Land, water, air and space vehicles; aircraft, unmanned aircraft, drones; instrument panels; steering handles with integrated levers

   (‘the Goods’)

   Class 35: Compilation of information into computer databases; management and compilation of databases; collection and systematization of data

   Class 37: Services of installation and repair of electronic equipment for the modernization of aircraft, missiles, boats and submarines; maintenance and repair of aircraft equipment; installation, maintenance and repair of land apparatus and instruments for astronomy, optoelectronic apparatus and instruments for the laser, semiconductor and defense industries, especially telescopes, lenses, mirrors

   Class 38: Provision of access to databases; secure communication services for aircraft flight data; transmission of information (telecommunication service) contained in a data bank and/or on a server via internet and/or intranet access; all these services used and/or intended for the aeronautical and defense fields

   Class 42: Design (development) of computer hardware and software; design and development of computer hardware and software; design and development of software for navigation systems (GPS and/or via satellite); design and development of software for information systems relating to defense; conversion of computer programs and data; duplication of computer programs; installation and updating of software; design, organization, provision, maintenance and exportation of software components and provision of software and IT solutions, namely, computer programs (software); technical, scientific and industrial research; engineering; research and development (services of engineers) in the field of aeronautics, space and defense; analysis of technical data; services provided by engineers relating to evaluations, estimates and research in connection with the technologies used in systems, equipment and parts for aeronautical and space vehicles; advisory and consultancy services relating to engineering; technical advice in the field of aeronautics and defense (services of engineers); operational engineering services for airline companies; data storage; maintenance of web portal provided for airline companies.

   (‘the Services’)

   Trade Mark:                Safran Electronics & Defense

   (‘the Trade Mark’)

2. The Trade Mark was examined in compliance with 17A.12 of the Regulations and advertised as accepted for possible protection on 25 May 2017 in the Australian Official Journal of Trade Marks.

3. As allowed by regulation 17A.33 of the Regulations, on 20 July 2017, J. Safra I.P. Holdings SCS (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection of the IRDA, followed, on 15 August 2017, by a Statement of Grounds and Particulars which details a single ground, that being under regulation 4.15A of the Regulations.

4. On 3 October 2017, the Holder filed a Notice of Intention to Defend, as provided for by regulation 17A.34H of the Regulations.

5. On 1 February 2018, the Opponent filed its Evidence in Support, being a declaration by Adam Matthew Sears, a Principal at Davies Collison Cave, made on 1 February 2018, with Exhibits AMAS-1 to AMS-10.

6. The Holder has not filed Evidence in Answer.

7. Thereafter, both parties have been advised of their right to request a hearing or to make written submissions.  Neither party has elected to do so.

8. Now, in order that the Registrar of Trade Marks may discharge the obligation imposed by regulation 17A.34N of the Regulations to decide the matter, the matter has been passed to me, a delegate of the Registrar, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Onus and Relevant Date

9. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

10. The relevant date (‘the Relevant Date’) at which the ground under regulation 4.15A must be considered is the “priority date”; here that is the convention date of 26 February 2016 based on application 4252281 in France.

    Evidence

11. Mr Sears attaches to his declaration various definitions of the expressions “business management”, “Compilation of information into computer databases”, and other data related services that occur in the parties’ specifications of Services.  I will discuss these later in this decision.

    Regulation 4.15A

    Statement of Grounds and Particulars

12. In its Statement of Grounds and Particulars the Opponent asserts:

    The Trade Mark is substantially identical with or deceptively similar to the following trade marks, which have an earlier date of priority than the IRDA and which are registered or applied for with respect to similar goods and services and/or closely related goods and services covered by the IRDA and, therefore, the extension of protection of the IRDA to Australia would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The Trade Mark has not been used by the Holder to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).

13. The trade marks specified by the Opponent are:

    Registration No:           1181917

    IR No  :  858064
    Priority Date:               27 April 2007

    Goods/Services:          Class 14: Precious metals and their alloys and goods made of or coated with these materials not included in other classes; ingots of precious metals, medals and medallions (jewelry), coins, jewelry, precious stones; horological and chronometric instruments

    Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking transactions, financial operations, monetary operations, financial analysis, financial information, financial consulting, financial management, brokerage, financing services, credit and loan services, exchanging money, credit card services, issuing of travellers’ checks, safe deposit rental (finance) or safe deposit services

    Trade Mark:                J. SAFRA

    Registration No:           1430046

    IR No:  1077578
    Priority Date:               14 January 2011
    Services:  Class 35: Business management

    Trade Mark:                J. SAFRA

    Regulation 4.15A - Principles

14. Absent evidence of use of the Trade Mark filed by the Holder, regulation 4.15A relevantly provides:

    4.15AGrounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

    (1)For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a protected international trade mark; or

    (ii)a trade mark in respect of which the Registrar has received notification of an IRDA;

    held by another person in respect of similar goods or closely related services; and

    (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the other trade mark in respect of the similar goods or closely related services.

    Note:Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

    (a)    may be inconsistent with the Act; and

    (b)    prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

    Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

    (2)For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a protected international trade mark; or

    (ii)a trade mark in respect of which the Registrar has received notification of an IRDA;

    held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.

    Note:Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

    (a)    may be inconsistent with the Act; and

    (b)    prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

    Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

15. It is therefore incumbent upon the Opponent to establish that at least one of the protected international trade marks upon which it relies:

    1.Has a priority date earlier than that of the Trade Mark (‘the First Requirement’); and is,

    2.held by another person in respect of similar goods or closely related services; OR are,

    held by another person in respect of similar services or closely related goods; (‘the Second Requirement’) and is,

    3.substantially identical or deceptively similar to the Trade Mark (‘the Third Requirement’).

16. However, as I understand Mr Sears’ declaration, the Opponent’s concerns under this ground relate only to the parties’ services insofar as they may involve “business management”, “Compilation of information into computer databases” and the Holder’s related data management services in its Class 35 specification.  In short, the Opponent relies only on protected international trade mark 1077578 (Australian registration 1430046) (‘the Opponent’s Trade Mark’) to found this ground.  For the sake of completeness, I find the goods and services specified on protected international trade mark 858064 (Australian registration 1181917) are not similar goods or closely related services to those specified under the Trade Mark.

17. Section 14 of the Act relevantly provides:

    14Definition of similar goods and similar services

    […]

    (2)For the purposes of this Act, services are similar to other services:

    (a)if they are the same as the other services; or

    (b)if they are of the same description as that of the other services.

18. The expression “services of the same description” was discussed in MID Sydney Pty Ltd v Australian Tourism Co Ltd (‘MID Sydney’) by Burchett, Sackville, and Lehane JJ:[2]

    [2] [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051.

    Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID’s mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, “The Trade Marks Amendment Act 1978” (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (“TM Act 1955”), although the expression “services of the same description as [services in respect of which the trade mark is registered]” was used in the earlier legislation: see TM Act 1955 , ss 33(2), 36(1A). The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

    “There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek’s Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...’. “

    Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128:

    “In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... ‘in a business sense’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase `goods of the same description’ ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.”

    We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance MID’s argument.

    For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

19. Further, in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd Greenwood, Besanko, and Katzmann JJ stated:[3]

    [3] [2017] FCAFC 56; (2017) 345 ALR 205; 124 IPR 264 at [339].

    As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

    (1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

    (2) To whom are the services offered?

    (3) How are they provided?

    (4) How are they used?

    (5) What is their purpose?

    (6) Are they bundled together with other services?

    (7) Are they differentiated by the functional level at which they are provided: wholesale or retail?

    (8) Where do they originate?

    (9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

    (10) How closely contestable are the services in substance: are they in the same market or trade?

    (11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].

1. Additionally, in my view, a means of determining whether the services involved are in the same trade lies in a consideration of the training and expertise of the personnel involved in the delivery of the particular services.

   Regulation 4.15A - Discussion

2. The registration (1430046) upon which the Opponent relies has an earlier priority date than that of the Trade Mark: the First Requirement is thus established.

3. As regards the Second Requirement, the Opponent relies on the following definitions of “business management”:

   The activities associated with running a company, such as controlling, leading, monitoring, organizing, and planning.[4]

   Management in all business areas and organizational activities are the acts of getting people together to accomplish goals and objectives efficiently and effectively.[5]

   [4] BusinessDictionary.com.

   [5] The Law Dictionary – Featuring Black’s Law Dictionary Free Online Legal Dictionary.

4. Mr Sears also exhibits to his declaration a wikibooks.org article, and one from that discuss the compilation, nature, and/or utility of data-bases.

5. However, when these definitions and articles are weighed in the light of both the Opponent’s “business management services” and the Services in Class 35, I consider that the observations of the court in Mid Sydney are apposite and I paraphrase them with application to the matter before me: “the service of managing a business may involve the performance of incidental services akin to those carried out by database managers”.  Nonetheless, when viewed more specifically, the particular expertise offered, and training involved, in relation to the delivery of a service of managing a business are both quite distinct from the expertise and training involved in relation to the delivery of the service of managing a database.  Would-be specialists in business management study for a degree in Business Management; would-be database managers study for a degree in Computer Science.  Although the services under consideration share some incidentals and objectives, the skill sets (and hence the inherent natures of the services) are quite different and, accordingly, the services in question are not “services of the same description”.

6. These observations are a fortiori true of the services of the Holder other than those in Class 35.  It follows that the Opponent has not established the Second Requirement and there is no need to consider the Third Requirement.

7. The Opponent has not established its opposition under regulation 4.15A of the Regulations.

   Decision

8. Regulation 17A.34N provides:

   17A.34NDecision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)The Registrar must notify the International Bureau of the Registrar’s decision.

9. The ground on which the IRDA was opposed has not been established.  It is therefore appropriate that protection be extended to all of the Goods and all the Services.

10. The IRDA may then proceed to protection one month from the date of this decision and I direct that the International Bureau be appropriately notified.  If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the court’s order or direction.

    Costs

11. The Opponent requested its costs in this matter. However, as the Opponent has not established its opposition to extension of protection it is appropriate that, in terms of section 221 of the Trade Marks Act 1995, I award costs against the Opponent at the official scale at Schedule 8 to the Regulations.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    17 April 2019