JS & Co Pty Ltd v LAB35 Pty Ltd
[2022] ATMO 176
•10 October 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by JS & Co Pty Ltd to registration of trade mark application number 2079655 (class 35) – Rate my Rate – in the name of LAB35 Pty Ltd
Delegate:
Tracey Berger
Representation:
Opponent: A.E. McDonald of Counsel, instructed by Geoff Davidson and Eugene Ford of Halfords IP
Applicant: Melissa Marcus of Counsel, instructed by Natalie Williams of Switch Legal Pty Ltd
Decision:
2022 ATMO 176
Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – not established – trade mark to proceed to registration
Background
1. This is a decision on the opposition by JS & Co Pty Ltd (‘Opponent’) to registration of Australian trade mark application number 2079655 (‘Application’) for Rate my Rate (‘Trade Mark’) filed on 14 April 2020 (‘Relevant Date’) in the name of LAB35 Pty Ltd (‘Applicant’) for:
Class 35: Price comparison services; providing commercial information and advice for consumers in the choice of products and services (‘Services’).
2. As required by the Trade Marks Act 1995 (Cth)[1], the Application was examined, accepted for registration and advertised for opposition on 26 October 2020. The Opponent filed a Notice of Intention to Oppose on 10 November 2020 and a Statement of Grounds and Particulars (‘SGP’) on 1 December 2020. On 21 January 2021, the Applicant filed a Notice of Intention to Defend the opposition.
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
3. In accordance with the timetable set out in Reg 5.14, the parties had an opportunity to file evidence. The Opponent did not file any evidence. The Applicant filed evidence in answer on 10 August 2021 (‘EIA’).
4. Following the evidence stage, the parties were able to request a hearing. The Opponent asked to be heard by way of written submissions and the Applicant requested an oral hearing. The Opponent’s written submissions were filed on 8 September 2022 (‘Opponent’s Written Submissions’). On 15 September 2022, the Applicant filed a written summary of its arguments. This matter was heard before me, as a delegate of the Registrar of Trade Marks, via videoconference on 27 September 2022. At the hearing, the Applicant was represented by Melissa Marcus of Counsel, instructed by Switch Legal Pty Ltd. I make my submissions based on the particulars in the SGP, the EIA, Opponent’s Written Submissions, and oral and written submissions of the Applicant.
Grounds and Onus
5. The SGP nominates grounds of opposition under ss 42(b), 44, 58 and 60. Under the s 42(b) ground, the Opponent claimed in the SGP that the Applicant’s use of the Trade Mark would contravene the Australian Consumer Law[2] and constitute passing off. The grounds under ss 42(b), 58 and 60 require the Opponent to demonstrate some use of its mark and no evidence has been presented. Accordingly, the grounds of opposition under ss 42(b), 58 and 60 cannot be established and the Opponent elected to only press the s 44 ground of opposition. However, the other grounds would be available in the event of any appeal of this decision.
[2] Competition and Consumer Act 2010 (Cth), Schedule 2.
6. The Opponent bears the burden of establishing one or more of the grounds of opposition[3] on the balance of probabilities.[4] The rights of the parties are to be determined at the Relevant Date.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Discussion
7. Section 44 relevantly provides:
(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.
8. In support of this ground, the Opponent relies on the following marks:
Trade Mark Number
Trade Mark
(‘Prior Marks’)
Priority Date
Registered Owner
Specification
1125458
(‘Prior Device Mark’)
24 July 2006
Australian Loans & Mortgages Pty Ltd atf No. 3 Mortgage Trust
Class 36: Online mortgage originator and finance provider
1196504
myrate
(‘Prior Word Mark’)
30 August 2007
Australian Loans & Mortgages Pty Ltd atf No. 3 Mortgage Trust
Class 36: Online mortgage originator and finance provider
9. The Prior Marks meet the formality requirements of s 44 in that the marks are registered in the name of someone other than the Applicant and have a priority date earlier than the Relevant Date. Although the Prior Marks are not registered in the name of the Opponent, this does not affect the Opponent’s ability to succeed on the s 44 ground of opposition.[5]
[5] See for example, Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (Middleton, Yates and Lee JJ).
10. In the Opponent’s Written Submissions, the Opponent claims that the Prior Marks are deceptively similar to the Trade Mark and cover similar services to the Services. The Opponent has not asserted that the Prior Marks are substantially identical to the Trade Mark and for completeness, I note that I agree. On a side by side comparison, whilst the Prior Marks and Trade Mark have the words ‘my Rate’ in common, there are other distinct differences which means that there is not a total impression of resemblance.
Deceptive Similarity
11. Section 10 provides that “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”.
12. In determining if either of the Prior Marks and the Trade Mark are deceptively similar, I am guided by the longstanding principles relevant to the assessment of deceptive similarity summarised by Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd:
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: Woolworths6 at [49]; Australian Woollen Mills7 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’s8 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 Refrigerating9 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].[6]
[6] [2012] FCA 1022 (Jacobson J), [37]-[46].
13. The only textual element of the Prior Marks is ‘myrate’ which is wholly contained (as two words) in the Trade Mark. Whilst deceptive similarity can be found where one mark uses an essential feature of the other mark[7], this factor is not determinative. The respective marks as a whole must be considered.
[7] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).
14. The Applicant argues that in considering marks as a whole which contain words in common, “one should look primarily to those aspects that are not common”.[8] In this regard, the Applicant refers to the decision in Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2)[9] (‘Swancom’) which involved a comparison on the one hand of the marks CORNER, CORNER HOTEL and THE CORNER and on the other hand, JAZZ CORNER HOTEL and THE JAZZ CORNER HOTEL. The Court found that the addition of the word ‘JAZZ’ changed the mark such that JAZZ CORNER HOTEL and THE JAZZ CORNER HOTEL were not deceptively similar to CORNER, CORNER HOTEL and THE CORNER, which finding was not disturbed on appeal. In this case, Justice O’Bryan commented:
While the similarity between the marks must give rise to some prospect of confusion, the question is whether there is a real or tangible risk of such confusion as opposed to a mere possibility. That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[10]
[8] Cooper Engineering Company Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 (Dixon, Williams and Kitto JJ).
[9] [2021] FCA 328 (O’Bryan J).
[10] Ibid, [245].
15. The Applicant submits that the present case is similar in that the additional word ‘RATE’ in the Trade Mark is significant in that it effectively alters the term ‘MY RATE’ and creates a distinct impression from the Prior Marks by changing the look, sound and idea of the mark.
16. In the Applicant’s submission, the Prior Marks consist of a possessive noun with the Prior Device Mark containing the House Device to further explain what the mark is about. In the case of the Prior Device Mark, the Opponent contends that the House Device is not significant as it is smaller and an afterthought at the end of the mark. The Applicant argues that in the Prior Device Mark, the word element draws attention to the House Device and this device informs the person with an imperfect recollection that the rate is to do with housing (ie. a mortgage rate). To not give any significance to the House Device in the Prior Device Mark is to “effectively convert” the composite mark into something different. I agree that the House Device results in the Prior Device Mark leaving an impression that ‘my rate’ relates to a house loan rate.
17. The Opponent contends that the extra word ‘RATE’ in the Trade Mark acts to qualify the common words ‘my rate’ and relies on Application by Coles Myer Ltd[11] in support of this proposition. In my opinion, the first word RATE in the Trade Mark does not qualify the words ‘MY RATE’ in the same manner as BONZA in BONZA BRATS but rather changes the meaning. The Trade Mark comprises three words with the additional verb ‘RATE’ creating a call to action to “rate whatever rate the consumer has obtained”. Also, I consider the repetition of the word RATE in the Trade Mark to be a memorable feature of the mark.
[11] (1993) 26 IPR 577.
18. The Applicant notes that in other cases, the addition of a first word has been sufficient for marks to be considered not deceptively similar. In Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2),[12] a combination of the different prefix and the different order of the words resulted in a finding that DIGITAL POST AUSTRALIA was not deceptively similar to AUSTRALIA POST.[13] In Health World Ltd v Shin-Sun Australia Pty Ltd (“Health World’),[14] the marks INNER HEALTH PLUS and HEALTHPLUS were found not to be deceptively similar, despite the order of the words not being reversed, because the addition of the descriptive word INNER resulted in the two marks have different meanings. The marks in the present case are similar.
[12] [2012] FCA 862 (Marshall J).
[13] Ibid, [57].
[14] [2005] FCA 5 (Cooper J), upheld on appeal see [2008] FCA 100 (Jacobson J).
19. I find that the marks are visually, aurally and conceptually distinguishable. The extra word RATE sufficiently changes the Trade Mark in the same manner as in Health World, such that the Trade Mark is not deceptively similar to the Prior Marks and that there is no real tangible danger of confusion between Services offered under the Trade Mark and those provided by reference to the Prior Marks. The s 44 ground of opposition is unsuccessful.
Decision
20. Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
21. The Opponent has failed to establish a ground of opposition nominated in the SGP. Trade mark application number 2079655 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
22. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
10 October 2022
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