Janford Pty Limited v Anna Cohen and Amanda Frawley
[2023] ATMO 98
•17 July 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Anna Cohen and Amanda Frawley to registration of trade mark application number 2086961 (classes 41 and 43) – Kids & Co – in the name of Janford Pty Limited
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: None Applicant: None |
Decision: | 2023 ATMO 98 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 43, 44, 58, 58A and 60 considered – no grounds established – trade mark to proceed to registration |
Background
On 18 May 2020 (‘Relevant Date’) Janford Pty Limited (‘Applicant’) filed an application for the trade mark ‘Kids & Co’ (‘Trade Mark’), in classes 41 and 43 for various services outlined below (‘Designated Services’):
Class 41: Preschool teaching; Preschools (education); Advisory services relating to education; Career advisory services (education or training advice); Career counselling (education or training advice); Career counselling (training and education advice); Career information and advisory services (educational and training advice); Conducting of educational events; Conducting of exhibitions for educational purposes; Consultancy services relating to education; Education advisory services; Education services; Educational advisory services; Educational assessment services; Educational consultancy services; Educational instruction; Educational research; Educational seminars; Educational services; Educational services provided by special needs assistants; Health education; Information relating to education; Information services relating to education; Kindergarten services (education or entertainment); Lingual education; Mentoring (education and training); Providing facilities for educational purposes; Provision of information relating to education; Publication of educational materials; Providing online electronic publications, not downloadable; Charitable services, namely academic mentoring; Mentoring (training); Adult training; Charitable services, namely education and training; Coaching (training); Conducting workshops (training); Consultancy services relating to training; Employment training; Practical training (demonstration); Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of training; Staff training services; Physical education; Physical education instruction; Physical health education; Provision of educational information; Provision of facilities for education; Provision of tuition; Kindergartens (nursery schools)
Class 43: Provision of child care centres; Provision of day nurseries (other than schools)
The Trade Mark was examined and acceptance was advertised on 6 July 2021. The Trade Mark was accepted subject to s 44(4) of the Trade Marks Act 1995 (Cth) (‘Act’).[1] On 2 September 2021 Anna Cohen and Amanda Frawley (collectively, the ‘Opponents’) filed a Notice of Intention to Oppose and on 30 September 2021, a Statement of Grounds and Particulars. The Applicant filed a Notice of Intention to Defend on 28 November 2021.
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) (‘Act’) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Opponents filed Evidence in Support (‘EIS’) on 28 February 2022 and the Applicant filed Evidence in Answer (‘EIA’) on 26 May 2022. On 1 June 2022, this office wrote to the Applicant regarding a deficiency in the EIA regarding the requirements of reg 21.4(1)(b). This was remedied with a declaration from Jennifer Koutoulas dated 3 June 2022. Whilst initially represented, the Opponents acted on their own behalf from 4 August 2022 and filed their Evidence in Reply (‘EIR’) on 21 August 2022.
No party requested to be heard. However, the Applicant paid the requisite fees and requested a decision. I have decided the matter as a delegate of the Registrar of Trade Marks based on the material described in paragraphs 2 and 3 of this decision.
Onus and Grounds
It is the Opponents who have the onus in establishing any of the grounds of opposition[2] on the balance of probabilities.[3] They have nominated grounds under ss 42(b), 43, 44, 58, 58A and 60.
Evidence
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
EIS
The EIS consists of two declarations. One of Amanda Frawley, clinical psychologist and co-owner of the business outlined below, dated 28 February 2022 (‘Frawley Declaration’), with Exhibits AF-1 to AF-14 and another of Anna Cohen, dated 28 February 2022, clinical psychologist and co-owner of the same business (‘Cohen Declaration’), with Exhibits AC-1 to AC-11.
The Opponents jointly own registered trade marks 864984 KIDS & CO. CLINICAL PSYCHOLOGY and 2226963 KIDS & CO. CLINICAL PSYCHOLOGY with device (‘Opponents’ Trade Marks’). The Opponents appear to have structured their business as a partnership between Anna Cohen and Amanda Frawley.[4] Two additional corporations are mentioned as being licensed to use the Opponents’ Trade Marks. One of these corporations, Sandcastles Enterprises Pty Ltd (‘S-Corporation’) has Anna Cohen as a director alongside another person; Anna Cohen is the sole shareholder. S-Corporation owns various business name registrations, which include the words ‘Kids & Co’ combined with various geographical references. The second corporation, Nurturing Kids Pty Ltd (‘N-Corporation’), has Amanda Frawley as the sole director and shares held by Brendan Frawley and Amanda Frawley jointly. Various business name registrations are also held by N-Corporation. No documentary evidence of any licensing agreement between the Opponents and either N-Corporation and S-Corporation is provided.
[4] Cohen Declaration, Exhibit AC-1, ASIC Extract.
The Frawley Declaration, in summary provides some background to adoption of the Opponents’ Trade Marks, noting licensed use by N-Corporation. There is a website owned by N-Corporation called kidsandco.com.au and managed by Amanda Frawley (‘Opponents’ Website'). Various extracts of the Opponents’ Website are provided, as well as examples of internal documents, signage and advertising material. The Cohen Declaration also provides background in similar terms, mentioning S-Corporation. It declares that Anna Cohen manages five practices in NSW centered around Sydney covering the Blue Mountains, Inner-west and Eastern Suburbs clinics. It states that the Opponents agreed upon the name Kids & Co in or about 1999. Importantly it declares first use of the trade mark ‘Kids & Co Clinical Psychology’ from at least 2000.[5] The exhibits document use of the Opponents’ Trade Marks in social media, on stationery and promotional material. The exhibits disclose confidential figures regarding the annual turnover and marketing expenditure of the Opponents’ business. The exhibits also provide numerous articles where ‘Kids & Co’ is mentioned. Certain other promotional references in directories are also attached. Variously there is evidence concerning interactions with other traders, medical professional and interested persons.
[5] Cohen Declaration, [13].
EIA
The EIA consists of a declaration of Jennifer Koutoulas, a director of the Applicant (‘Koutoulas Declaration’), dated 3 June 2022, with Exhibits A to J. The Koutoulas Declaration provides background to the commencement of the business of the Applicant. The declaration asserts operations since 1991. Exhibit A consists of a business registration certificate and extract, a workers’ compensation document dated 20 March 1995, a letter from the Garvan Research Foundation dated 1 March 1996 concerning fundraising efforts, a letter from NSW Department of Community Services dated 30 October 1998, a letter from University of Western Sydney regarding participation in a Questionnaire dated 23 April 1999, a business award for the Menai area from 2005 and an undated advertising clipping. Exhibit B consists of undated testimonials from the website of the Applicant, undated greeting cards and one dated greeting card from 2017. Exhibit C consists of a news article dated 19 February 2018. Exhibit D concerns a video to be published in which Applicant participated. Exhibit E is an article on a third party website from 2019, which was last updated 20 January 2022. Exhibit F is an email from 12 August 2020 noting the participation of Jennifer Koutoulas in a panel discussion about everyday practice for a charity. Exhibit G is an agenda and email concerning a presentation of an unclear date. Exhibit H contains correspondence with a research student from University of Wollongong, dated 28 February 2018 concerning participation in a study. Exhibit I contains correspondence with a research assistant from Queensland University of Technology regarding teacher training of an unspecified nature. Exhibit J contains an article which is undated concerning participation in a government initiative for language learning.
EIR
The EIR consists of a joint declaration of Amanda Frawley and Anna Cohen, signed on 20 August 2022 and 18 August 2022 respectively, including Exhibits A to J (‘Joint Declaration’). Exhibits A and B do not go to any of the ground of opposition. Exhibit C is titled as a ‘license agreement’ for use of consultation rooms, signed by Amanda Frawley for the Opponents’ ‘Kids & Co’ business, dated 15 July 2022. Exhibit D is an undated screen capture from the Opponents’ Website asserted as being from 9 August 2022. Exhibit E is an undated screen capture from the Applicant’s website. Exhibit F lists a number of books and publications which Anna Cohen has either authored or to which she has contributed. These consist of titles and hyperlinks only, not actual extracts. Exhibit G is titled, ‘Master of Psychology (Clinical) Placement Agreement’ and is undated, though it refers to a placement period of 8 July 2020 to 21 December 2020. Exhibit H is an email addressed to Amanda Frawley, dated 5 July 2021 from a university lecturer concerning a placement program for a university student. Exhibit I consists of screen captures of a website from 19 August 2022, showing registration of the Opponents each as Registered Board Approved Supervisors for the Psychology Board. Exhibit J is an extract from the domain name Registrar concerning the Opponents’ Website.
Consideration
Section 44
The Opponents rely upon s 44, which relevantly provides:
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.
The Opponents’ Trade Marks are relied upon as the basis for this ground of opposition.
To establish the s 44 ground of opposition the Opponents must show that at least one of the Opponents’ Trade Marks:
a)is in the name of a person other than the Applicant; and
b)has an earlier priority date than the Relevant Date; and
c)is substantially identical with, or deceptively similar to, the Trade Mark; and
d)is in respect of services which are similar to the Designated Services, or in respect of goods which are closely related to the Designated Services.
From the outset, I note that the priority date of Trade Mark 2226963 (‘Logo Trade Mark’) is 10 November 2021, which is after the Relevant Date. As such it cannot be relied upon to establish this ground of opposition.
The remaining trade mark relied upon by the Opponents is trade mark 864984 for ‘KIDS & CO. CLINICAL PSYCHOLOGY’ (‘Earlier Trade Mark’) for ‘specialised psychological services to the general community’, which was filed on 3 February 2001 in the name of the Opponents. It is evident that the Earlier Trade Mark is held in a name other than that of the Applicant, and that is has a priority date earlier than the Relevant Date. I now turn to a comparison of the services.
Comparison of services
The services of the Earlier Trade Mark consist of: ‘Specialised psychological services to the general community’ (‘Earlier Trade Mark’s Services’) in class 42.
I must consider whether the Designated Services are ‘similar’ to the Earlier Trade Mark’s Services. In this regard, s 14 relevantly provides a definition of ‘similar’:
14 Definition of similar goods and similar services
(1) …
(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.
The services are plainly not ‘the same’ as they are not identical so I turn to consider whether any of the services is ‘of the same description’. For that comparison I should look to their respective natures, uses and trade channels.[6] I must examine the essential characteristics of each.[7] Ultimately, I should also look to the language of the respective claims and rely upon the evidence that is before me. The comparison of services should be based on what can be done if the Trade Mark is registered, and is not limited to any particular actual use of the parties.[8] When comparing services I should compare the totality of the services rather than just individual aspects and must not overlook the respective essences.[9] Any alignment in the course of trade or business should also be considered.[10] Whether consumers would regard or expect the trade origin to be same for the services can also be relevant.[11] The Court in Accor considered particularly relevant the factors such as the purpose of the services and their inherent character, the persons to who the services are offered, how they are provided and used, method of communication and how they are perceived by the consumers.[12]
[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’), adopted in Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (‘MID Sydney’) (Burchett, Sackville and Lehane JJ).
[7] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [337] (Greenwood, Besanko and Katzmann) (‘Accor’).
[8] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J) (‘Woolworths’).
[9] Sensis Pty Ltd v Senses Direct Mail and Fulfilment Pty Ltd [2019] FCA 719, [125] (Davies J).
[10] Reckitt & Colan Ltd v Boden (1945) 70 CLR 84, 94 (Dixon J).
[11] Corporate Express Inc v Winglide Pty Ltd [1999] ATMO 78 (Hearing Officer Thompson).
[12] Accor (n 7) [339].
Other than examples of their own actual services, the parties provide limited specific and direct evidence about the purpose, nature and trade channels of these type of services in general. The Joint Declaration refers to the role of psychologists and clinical psychologists as being the assessment, diagnosis formulation and psychological treatment of mental health, behavioural and emotional disorders.[13] The Joint Declaration also suggests that psychologists are specialised, highly qualified and regulated, and asserts that ‘counselling’ is linked to psychology and psychologists, despite counsellors not requiring the same qualifications or professional accreditations as psychologists.
Career related services
[13] Joint Declaration, 6, [12].
The Opponents submit that the ‘counselling’ services specified for the Trade Mark should be considered similar to its psychological services. They express concern that the Applicant is apparently expanding into ‘counselling services’ which would come within the Earlier Trade Mark’s psychological services. However, a reference to ‘counselling’ in a broad sense does not appear in the Designated Services; the language is qualified as ‘career counselling’. All I can compare are the Designated Services and the Earlier Trade Mark’s Services. The nature, purpose and trade channels for these services are different and the evidence does not demonstrate otherwise. When I make the comparison, I do not consider the Designated Services for ‘Career advisory services (education or training advice); Career counselling (education or training advice); Career counselling (training and education advice); Career information and advisory services (educational and training advice)’ to be similar to the Earlier Trade Mark’s Services.
Education related services
The majority of the remaining Designated Services in class 41 are otherwise for ‘education’, ‘preschool’, ‘teaching’, ‘training’ or ‘tuition’ related services. The language for each of these designated services is sometimes without specified subject matter. At other places the language is more specific and relates to ‘preschool teaching’, ‘lingual education’ or ‘staff training services’.
The language of the Earlier Trade Mark’s Services is specific in that is involves ‘specialised psychological services’. The word ‘psychological’ is defined as, ‘pertaining to the mind or to mental phenomena, especially to the subject matter of psychology’.[14] The word ‘psychology’ is defined as, ‘the science of mind or of mental states and processes’, ‘the science of human and animal behaviour’ and ‘the mental states and processes of a person or of a number of persons’.[15] The language of the Earlier Trade Mark’s Services is wide enough to denote services directed widely to individual persons including children, families or businesses. However, the language is limited to services that are psychological in nature and therefore to the study of a patient’s mind and/or as to their health, diagnosis and treatment.
[14] Macquarie Dictionary (2e, 1995) 1421. See also, Macquarie Dictionary (online at 16 June 2023) ‘psychological’.
[15] Macquarie Dictionary (2e, 1995) 1421. See also. Macquarie Dictionary (online at 16 June 2023) ‘psychology’.
Consumers are not likely to approach providers of educational services for psychological services; the purposes are specific and respectively different in nature. Conversely, a person seeking educational services or training, is not likely to approach psychological services providers. However, the services could well encounter one another especially in the context of services relating to children. I acknowledge that there could be some intersection by the broad overall goals of the services at times concerned with, for example the development of children. Early childhood education can involve consultation with psychologists, though specific evidence of this is not provided. I acknowledge a psychological specialist might visit a childcare centre or school to make observations about a specific child and compile a report concerning development or education. I also note that sometimes schools or educational institutions may have a resident counsellor for students. Sometimes a psychologist will ‘educate’, ‘teach’ or ‘train’ a patient or a guardian about certain techniques and other matters to assist with treatment. The respective services perhaps have within their remits, elements of each other yet these elements are only incidental parts of the respective services and are not offered as such separately.[16] What is delivered by a psychological services provider and paid for by the ordinary consumer is generally treatment not training. However, even if there is some intersection between these two disciplines in the marketplace, this does not necessitate a conclusion that the services are similar. The incidental nature of the overlap and the nature, purpose and expectations of the consumers can overshadow such, with any incidental services taking their character from the whole.[17]
[16] Communicare Inc v Communicare Sydney [2009] ATMO 19, [11] (Hearing Officer Thompson).
[17] MID Sydney (n 6), where ‘hotel management services’ was found to be not similar to ‘property management services’.
Educational services are concerned with imparting particular knowledge and skills, by training or instruction. Specialised psychological services are ultimately concerned with treatment for particular psychological conditions, with consumer expectations of clinical insights and clinical solutions. Whilst educational approaches can be informed by psychological insights, educational services in practice usually do not entail specialised psychological services. Educational services are delivered by teachers or tutors, often in ‘classes’, by training and instruction, sometimes with various exercises and practices. There is also often a particular skill or topic as a subject matter. Psychological services are delivered by qualified specialists in that field, often with highly specialist training and qualifications, through observation, consultations, sometimes diagnosis and then treatment activities. The providers of the respective services are attended by different obligations and duties. Indeed, the professional associations and qualifications of each of these also appear to be quite separate.
‘Educational assessments’ are mentioned in extracts of the Opponents’ website. Whilst this is the exact language used in the Designated Services, the Opponents provide no indication of what exactly ‘educational assessments’ involve or what it would mean in the context of the psychological services. These might be psychometric testing referred to in evidence of actual use by the Opponent.[18] Just because a single trader offers two services which are otherwise not of the same description does not necessarily make them of the same description; a trader might separately provide both psychological services on the one hand and yet educational services on the other. Importantly also, the language of the Earlier Trade Mark’s Services does not mention ‘educational assessments’. As there is no evidence before me on the link it would have with ‘specialised psychological services to the wider community’, I cannot simply infer that educational assessment services are inherently psychological in nature or purpose. At its highest this evidence suggests that psychological service providers may sometimes provide psychological assessments for educational institutions and persons in those institutions.
[18] Frawley Declaration, 94.
A fee schedule in the Frawley Declaration reflects some differences in delivery, with fees attached to initial and subsequent ‘consultations’, and separate unspecified services to schools. The fee schedule also reflects that core psychological specialist services likely qualify for different government rebates to those of childcare or education. Fundamentally, as I have mentioned above a psychological specialist provider has as their end treatment, not training. The consumer would recognise this as that for which they are paying. There would be a different kind of reliance occurring when, for example, a parent or patient approaches the respective providers for services. It is also likely that the consumer, parents, patients and their proxies, will have attention when seeking these services. I note that little evidence has been provided in respect of this question and it is the Opponent that has the onus in this matter.
Based on the nature, use, trade channels and the way the ordinary consumers would view the services, including their expectations, I am not satisfied that the services are of the same description. Whilst I am mindful of the caution required in referencing past cases on the question of similar services[19], past decisions also appear to support a finding that the respective services compared here are not similar.[20]
Preschool services
[19] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 [282] (Burley J).
[20] In Australian Pensioners Insurance Agency Pty Ltd v Annette Brennan and Bruce Woodberry [2007] ATMO 26 (Hearing Officer Nancarrow), the delegate compared ‘real estate services’ with broad ‘educational services’, concluding that these are not similar. In The Ritz Hotel Limited v Institut Hotelier Cesar Ritz SA [2003] ATMO 28 (Hearing Officer Thompson) the delegate considered the similarity between educational and training services for hospitality and hotel services in class 41 and various class 42 accommodation, hospital and hotel services as such. The delegate considered the services to be different. In Wyndella Pty Ltd v C Sparkes-Carroll, C Baffsky [2007] ATMO 79 (Hearing Officer Williams) (see [29]) the delegate considered ‘[s]ervices that seek to provide health and beauty benefits for both humans and animals’ compared with educational services. These were considered to be different.
The Designated Services in class 43 are even further removed from those of the Earlier Trade Mark as they are for the provision of nurseries and childcare centres, some specifically noted as being ‘other than schools’. I consider this to denote a more basic form of temporary care for children and as having little if any connection to psychological services. The nature, use and trade channels are even further removed from the Earlier Trade Mark’s Services than the educational services. I do not consider the class 43 Designated Services to be of the same description and thus they are not similar.
Miscellaneous other Designated Services
A psychological service as such is not of the same description as provision of online electronic publications that are not downloadable. Again, these services are of a different nature, use and trade channel. A psychological service is also not as such of the same description as charitable services. These services are of a different nature, use and trade channel. Lastly, the provision of information online about education and provision of online publications are not clearly of the same description as the psychological services.[21] No evidence has been provided that otherwise demonstrates that these are of the same description.
Conclusion on s 44 ground of opposition
[21] Natural Supplementary Assn Inc v Body For Life International Pty Ltd [2004] ATMO 13 (Hearing Officer McDonagh) which concerned an application for a trade mark in respect of class 41 services for ‘sporting and recreation services including provision of health and fitness training centre’, compared to an earlier trade mark for ‘Magazines, books and information brochures relating to body building, sports, fitness, exercise, nutritional supplements and health issues’. Relevant considerations there included: the fact relevant consumers are clearly the same, reinforcing words in the trade mark, same nature directed to health, fitness and nutrition, the purpose is the same, the target market and trade channels are the same. Despite a thematic link, the services were not considered closely related to goods of the same theme.
As none of the Designated Services are similar to the Earlier Trade Mark’s Services I am not satisfied that a ground of opposition under s 44 has been established. It has not been necessary for me to decide for the purposes of this ground of opposition whether the respective marks are deceptively similar or substantially identical, though I do engage with the obvious similarities in these trade marks in passing further below.
Section 58A
The Opponents also rely on s 58A. This provides that were the Trade Mark to overcome a potential ground of opposition under s 44 because the Applicant shows continuous use of the Trade Mark from before the filing date of the Earlier Trade Mark, as set out in s 44(4), the Trade Mark may then be opposed on the basis that the Earlier Trade Mark has seen earlier use than the Trade Mark. Given my discussion immediately above, s 58A is not enlivened as a ground of opposition.
Section 60
The Opponents rely upon s 60, which provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
It is for the Opponents to establish acquired reputation in a trade mark earlier than the Relevant Date as a matter of fact.[22] ‘Reputation’ means ‘the recognition of the [trade mark] by the public generally’.[23] More than a reputation among a small number of persons is required but the size and extent of the class of persons may vary depending on the circumstances.[24] A reputation may be inferred from a high sale volume, together with substantial advertising expenditure and other promotions, and/or by direct evidence of consumer appreciation the Trade Mark.[25] The Opponents rely on an alleged reputation in the words ‘KIDS & CO’, ‘KIDS & CO CLINICAL PSYCHOLOGY’ and the Logo Trade Mark in asserting that s 60 should be enlivened. The Opponents have pleaded specifically that they have a reputation resulting from their use of the Earlier Trade Mark and the Logo Trade Mark for specialised psychological services to the community.
[22] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 (‘ConAgra Inc’), [77] (Lockhart J). See also Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[23] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).
[24] Conagra Inc (n 22) [131]-[132] (Lockhart J) cited with approval in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81] (Greenwood, Jagot, and Beach JJ)
[25] McCormick (n 23) [80] (Kenny J).
Turning to the Opponents’ evidence, I note that some is undated or is dated after the Relevant Date, such material will not assist the Opponents. Each of the Opponents provide sales figures for the aspects of the business which they manage, and they are substantial as a total figure. There is no demarcation between the different services for the sales figures. These figures are basically turnover figures. The Opponents provide a Daily Telegraph article dated from 17 October 2014 mentioning ‘Kids & Co.’ and various other articles on third party websites either as promotions, features or news articles with discussion of childrearing, some dated from years 2010 and 2014 to 2021. I consider these to be mostly feature articles though not necessarily direct evidence of consumer recognition. Extracts from the social media account of the Opponents are also supplied, though none specifically mention childcare or educational services as being offered. The articles reflect a psychologist’s views, those of Anna Cohen, on child development and other such matters. The articles also mention the Opponents’ Website, usually at the end. The Frawley-Declaration also extracts numerous articles from the Opponents’ Website, dated as early as 2008. Dated landing pages from the Opponents’ Website for 2011 to 2021 are also provided; the services mentioned as available are ‘treatments’, ‘family interventions’, ‘workshops’ and ‘consultative services for schools’. I read the mention of consultative services for schools contextually as at most observations, diagnosis, treatment and overall provision of services which are psychological in nature to schools or to patients. Regardless, there is no information regarding traffic to the website. The Opponents’ evidence about the specific nature of the services does do not go further than the provision of psychological services. My earlier comments on ‘educational assessments’ apply, and there is no evidence about what those involved. The documented use is limited to predominately in Sydney and surrounds. Various redacted and confidential internal documentation also reflect psychological services delivered in 2006, 2007, 2011, 2015 and 2021. Evidence exists of a room rented by the Opponents and six locations, though this is undated. Numerous publications of Anna Cohen are listed by title bibliographically, including editorials on a number of websites. However, these are provided merely as hyperlinks, without extraction, so I am unable to determine whether these say anything about a reputation of an earlier trade mark. Even so, it might only show a reputation specifically for Anna Cohen and not ‘Kids & Co’. Even the dated articles in the Cohen Declaration concern general topics associated with the behaviour and general development of children and sometimes with school-related theme with titles such as, ‘What to do if your child doesn’t want to go to school’ or ‘Choosing childcare: how to get it right’. Some of the articles are of a more general nature such as ‘Raising boys’ or ‘Are we overmedicating our kids’. I do not consider any reputation for educational services to be evidenced in these articles. I note that there is no evidence regarding the traffic to any website or extracted articles. Nor is this evidence of a reputation for provision of publications as such. That is, the Opponents are respectively being published, rather than acting as a publisher. This and the social media evidence does not concern education as such and is more focused on developmental and behavioural themes and does not demonstrate a likely reputation other than perhaps a narrow one for specifically psychological services. I note a feedback page from the Opponents’ website is undated. The Opponents provide some limited evidence around participation in student supervision programs for university students and delivery of a few workshops mostly from 2015 concerning bullying and depression. Overall, this evidence does not reflect a reputation for provision of workshops or training. Nor is the evidence sufficient to demonstrate a reputation for the provision of information relating education. In my assessment of this evidence the core of the Opponents’ reputation is very similar to that claimed in the Earlier Trade Mark – specialist psychological services.
The next question is whether, based on that reputation which does exist, deception or confusion is likely to follow from use of the Trade Mark for the Designated Services.[26] What is relevant here is the Designated Services[27] and I must consider the hypothetical use of the Trade Mark for those Designated Services in the whole of Australia. It is enough if a person would be caused to wonder whether the services derive from the same trade source. The evidence reflects at its highest some reputation for psychological services for children. I acknowledge that the trade marks are very similar, and in some examples identical. This lends some weight to a finding of a likelihood of confusion or deception. However, the reputation is confined to a specific geographical area and importantly to psychological services. And, as I have already found, those are different to the Designated Services. Whilst similarity between services is not a requirement for s 60, deception or confusion may be more likely the closer the respective services.[28] The consumers for each of the parties’ respective sets of services are also likely to have higher levels of discernment. As I have mentioned earlier, one does not typically approach a school for mental health treatment, nor a psychologist for training in a particular field. On the Opponent’s evidence it also appears that its industry has legal restrictions and requirements for qualifications which I consider to also lessen the likelihood of any confusion.[29] The onus being on the Opponents here, there is limited evidence concerning association by consumers between these respective services.[30] To put it another way, the respective fields are different and are specialised forms of activity.[31] I add that the Applicant has traded for many years and there are no declared or notable instances of confusion.
[26] Section 60(b).
[27] Sym Choon & Co Ltd v Gordon Choon's Nuts Ltd (1949) HCA 54, [6] (Latham CJ).
[28] Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) 615 (‘Shanahan’s’).
[29] NV Sumatra Tobacco Trading Co v British American Tobacco Australia Services Ltd [2011] FCA 1051 (Greenwood J).
[30] Kellogg Company v Exxon Company [2001] ATMO 67 (Hearing Officer Williams).
[31] Shanahan’s (n 28) 615 citing The Totally and Permanent Disabled Soldier's Association v The Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Limited [2001] ATMO 63 (Hearing Officer Narrancow); ABB Asea Brown Boveri Ltd v ABB Grain Ltd [2001] ATMO 123 (Hearing Officer Pervis-Smith).
Taking account of the reputation demonstrated in the trade marks nominated by the Opponents, I am not satisfied that use of the Trade Mark in relation to the Designated Services is likely to deceive or cause confusion. Accordingly, the ground of opposition
Section 43
The Opponents rely upon s 43, which provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish 43, the Opponents must clearly identify a connotation in the Trade Mark, or a part of it, and that because of that connotation, the use of the Trade Mark in relation to the Designated Services would be likely to deceive or cause confusion. It is long established this ‘connotation’ is one which must be inherent in, and arising from, the Trade Mark itself.[32] Section 43 is not generally directed to deception or confusion caused by a reputation in Australia of some other trade mark.[33] In this case, no identification of an intrinsic connotation in the Trade Mark is provided. Accordingly, I cannot be satisfied that the ground of opposition under s 43 has been established.
[32] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J); Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).
[33] Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); Woolworths Ltd (n 8) [80] (Branson J, dissenting). See also, Shanahan’s (n 28) 413-414.
Section 42(b)
Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponents must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.
The Opponents submit that use of the Trade Mark would be contrary to ss 18 and 20 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). The Opponents also assert that use of the Trade Mark would amount to the common law tort of passing off, and also trade mark infringement.
Australian Consumer Law
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. As already indicated in respect of s 60, I am not satisfied that use of the Trade mark is likely to cause deception or confusion with the Opponents’ Trade Marks. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading representation.
Passing Off
Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.
Trade Mark infringement
The Opponents have asserted that use of the Trade Mark will amount to infringement of the Earlier Trade Mark under s 120. Section 120 requires the relevant trade marks to be in respect of goods or services of the same description, or closely related goods.
I have already found in respect of s 44 that the Designated Services are not of the same description as the Earlier Trade Mark’s Services. It follows that the claim for trade mark infringement under s 120 has not been made out.
The Opponents have not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.
Section 58
Section 58 provides, ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’. In order to make out this ground the Opponents must establish various elements including that the Designated Services are the ‘same kind of thing’ as the services for which the Earlier Trade Mark has been used, namely specialised psychological services to the general community.
The threshold here is that the services be ‘the same kind of thing’. This is a higher threshold than services ‘of the same description’ which I have already discussed for s 44 purposes. To be the same kind of thing, the services must be ‘essentially the same’.[34]
[34] Re Hicks Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 (Holroyd J).
I have already found that the Designated Services are not similar to specialised psychological services to the general community. It follows that on the stricter test posited by s 58, I am not satisfied that the Designated Services are the ‘same kind of thing’ as specialised psychological services to the general community. Accordingly, s 58 has not been established as a ground of opposition.
Decision
The Opponents have not established any ground of opposition. Accordingly, the Opposition has not been made out. The Trade Mark should proceed to registration after the appeal period expires.
Costs
Costs ordinarily follow the event and there is no reason to depart with this approach. I award costs against the Opponents in accordance with schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 July 2023
0
16
6