KYCU Financial Planning Pty Ltd atf KYCU Financial Planning Trust

[2023] ATMO 141

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 2293161 – INDEX WEALTH (word) – and 2293160 – INDEXWEALTH (fancy) – both in Class 36 and in the name of KYCU Financial Planning Pty Ltd atf KYCU Financial Planning Trust

Delegate:

Debrett Lyons

Representation:

Applicant:  written submissions from David Kwei of Epiphany Law

Decision:

2023 ATMO 141

Request to be heard under s 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under s 44 of the Act – s 44 considered – trade marks accepted.

Background

1. This is a decision following examination of trade mark application numbers 2293161 and 2293161 filed by KYCU Financial Planning Pty Ltd atf KYCU Financial Planning Trust (Applicant) on 12 August 2022 for INDEX WEALTH and the stylized version thereof shown below,

   in respect of the following services:

Class 36

 Financial planning services; financial advisory services; financial advisory services for companies; financial advisory services for individuals; financial advice; financial planning advice; investment advice; advice relating to investments in shares; advice relating to investments in financial securities; advice relating to fixed interest investments; advice relating to debt financing; advice relating to hire purchase financing; mortgage advice; advice relating to mortgages for residential properties; advice relating to mortgages for commercial properties; advice relating to re-financing of mortgages; loan advice; home loan advice, personal loan advice; investment loan advice, commercial loan advice; superannuation advice; advice relating to superannuation investment; advice relating to self- managed superannuation funds (SMSFS); advice relating to self-managed superannuation fund lending; insurance advice; advice on income protection insurance; advice on life insurance; advice on total and permanent disability insurance; advice on mortgage insurance; advice on mortgage protection insurance; advice on insurance claims; insurance claims assistance services; processing of insurance claims

(Services)

1. The trade marks were examined as required by s 31 of the Trade Marks Act 1995 (Cth).[1]  The examiner raised a ground for rejection against both trade marks which the Applicant was unable to overcome during correspondence with the Office and so on 28 June 2023 the Applicant requested a hearing by way of written decision.  The notional hearing date set was 26 July 2023.

   [1] All references to sections are references to a section of this Act.

   Legislative framework and ground for rejection

2. Under s 33(1)(b), the Registrar must accept the applications unless satisfied there exist grounds for rejecting them.[2]  The examiner identified three trade marks already on the Register as the basis for a ground for rejection under s 44.  Section 44(2) stipulates a ground for rejection premised on the existence of a trade mark with a priority date earlier than the priority date of an application which is registered by another.  The relevant priority date in this case is 12 August 2022.  The earlier trade mark must be either substantially identical or deceptively similar to the trade marks and must be registered for services that are similar to the Services, or goods that are closely related to the Services.   The trade mark registrations cited during examination are:

   [2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16] (Sundberg J).

NO.	MARK	PRIORITY	OWNER	SERVICES (which include)
4.     1997220	‘index partners’	21 March 2019	Illion Australia Pty Ltd	‘... Financial advice; Financial analysis; Financial research; ... Financial portfolio management; ...’ among other services in class 36, and other goods and services in classes 9 and 36.
5.     2094761	INDEX VENTURES	6.     10 June 2020	Yucca (Jersey) SLP	‘Financial services; financial investment services; ... venture capital services; ... financial consulting services; ... financial information and advisory services; ...’ in class 36 plus other services in classes 35 and 36.
7.     2177010	8.     8 May 2021	Professional Superannuation Management Pty Limited	‘Pension and retirement and superannuation plans and funds’ in class 36.

1. The priority date of each of the registrations is earlier than 12 August 2022.   The Applicant concedes that “at least some” of the registered services are similar to the Services but argues that the trade marks are not substantially identical or deceptively similar to the registered marks. 

   Discussion

2. I must consider the ground for rejection afresh[3], not constrained by the examiner’s reasoning or findings.  That said, I am in agreement with the examiner who in the course of her reports decided that none of the earlier registered trade marks was substantially identical to either of the trade marks, maintaining only that there was deceptive similarity.

   [3] MHFC Holdings Pty Ltd [2016] ATMO 96, [9] (Hearing Officer Wilson).

3. It is worth briefly revisiting the case law on substantial identity because it helps clarify the later assessment of deceptive similarity.  It is well understood that the test of substantial identity involves a side-by-side comparison of the relevant trade marks.[4]  In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd the Full Federal court held that this comparison should take cognisance of the essential elements of the trade marks.  The Court cautioned that descriptive elements are unlikely to be essential elements[5] and so, for example, the word “radiology” in one mark, and the phrase “clinical imaging” in the other, were largely discounted in the face of another term common to both marks, “insight”.   The case demonstrates, too, that what is descriptive and so, inessential, will be referrable to the goods or services at issue. 

   [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

   [5] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

4. Were it necessary for me to determine the substantial identity of the Applicant’s word mark, INDEX WEALTH, with the registered marks, tested against the backdrop of class 36 financial services, I would not find any of the words “index”, “wealth”, “partners”, “ventures” or “super” to stand out above the others.  It follows that I would not find the word “index” to be the essential element (or as it has been called more recently, the dominant cognitive cue) of any of the marks.  The same would be true, a fortiori, of the Applicant’s stylised mark and indeed, for all that follows, I find no differences between the two applied-for trade marks which would cause different outcomes and so the use of  “Trade Mark” hereinafter is inclusive of both.

   Deceptive similarity

5. The examiner’s reasoning regarding deceptive similarity follows:

   INDEX WEALTH contains a shared elements (sic) with the earlier marks, being the word INDEX. In all the marks, the word ‘INDEX’ is an essential distinguishing feature with the additional words WEALTH, SUPER, PARTNERS and VENTURES being descriptive of the type of financial services offered or area of the business a consumer would be interacting with.

   In general, if one trade mark incorporates the essential distinguishing or memorable feature of another trade mark then confusion may still be likely despite the existence of other materials in the trade marks. Whilst consideration is given in circumstances where, because of the additional or different material, the trade marks as a whole convey significantly different impressions. I do not agree that this is the case with this application. The addition of the word WEALTH is merely descriptive of the services claimed and does not sufficiently alter the impression or meaning of the mark. INDEX retains its identity as a distinctive and essential feature of the marks, that is, the trade mark, with or without an image element or slogan, does not form a new idea as a whole as INDEX WEALTH is not known or definable idea that creates a conceptual difference to that of INDEX SUPER, INDEX PARTNERS, or INDEX VENTURES.

6. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resembles another that it is likely to deceive or cause confusion.[6]   The Applicant’s argument, in summary, is that:

   The overriding requirement when determining deceptive similarity is to consider the effect of the respective wholes of the marks in question. The distinctiveness of the Applicant’s Marks largely arises from the combination of two words into a single phrase, being ‘INDEX WEALTH’. The Applicant’s Marks are not of the type which may be bisected into individual components, with the word ‘INDEX’ being elevated to the status of an essential feature and the word ‘WEALTH’ being discounted as a mere descriptor.

   [6] Trade Marks Act 1995 (Cth) s 10.

7. I am wholly in agreement with the submission that the word “index” is not of a character which stands out as the essential feature of the Trade Mark.  In my assessment it is of no greater distinctive value than the word “wealth”.   Further, I find that a more-or-less equal relationship exists between the word “index” and the words “partners”, “ventures” or “super” in the earlier marks and, were the issue in each case one of inherent distinctiveness, I might find that that the only reason for acceptance of any of the trade marks is, as the Applicant suggests, the combination of otherwise descriptive or generic terms[7].  The fact that the earlier marks are registered side by side for similar services is sufficient proof of that logic.  Further, judicial support can be found in the decision of Markovic J in GAIN Capital UK Limited v Citigroup Inc.[8] who found, for the purposes of s 44(2), that the marks shown below were not deceptively similar.

   [7] and, in the case of regn. No. 2177010, the inclusion of a device element.

   [8] (No 4) [2017] FCA 519.

8. His Honour stated:

   neither the word “city” nor the word “index” take prominence in the CITYINDEX Mark.  Contrary to Citigroup’s submission, I do not accept that the word “city” is the essential feature of the CITYINDEX Mark. 

   …

   Where no component of a mark is “sufficiently prominent” a mark may not have any essential features. …  In my opinion, the word “CITY” in the CITYINDEX Mark no more strikes the eye and fixes itself in recollection than the word “INDEX”. Both words are, as I have already observed, ordinary English words and neither can, in my opinion, be characterised as an essential feature of the mark.[9]

   [9] Ibid [100 – 101].

9. The obvious commonality between the earlier marks and the Trade Mark is the descriptive/generic word, “index”, and its presence, alone, is not enough to trigger a likelihood of confusion.  Its positioning as the initial word of all of the marks might, in some circumstances, be an influential factor but here the marks are otherwise  different in all other respects and so the similarity is of no real weight.

10. I find that the Trade Mark is not deceptively similar to any one of the earlier registered trade marks and so find that s 44 is not a ground for rejection.

    Decision

11. I am not satisfied that there are grounds for rejection and so I accept the applications.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    21 September 2023