Lifestyle Soltions (Aust) Ltd v Care Connect Ltd

[2014] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by Lifestyle Solutions (Aust) Ltd to registration of trade mark application 1448599(35, 36, 37, 39, 41, 43, 44, 45) - My Life, My Choice, My Way - filed in the name of Care Connect Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent:  Ms Karla Brummell, trade marks consultant, IP Wealth Pty Ltd. Applicant:  Mr Dean McNamara, special counsel, Logie-Smith Lanyon Lawyers.
Decision:	2014 ATMO 63 s52 opposition, s58 applicant owner of the trade mark, s60 evidence does not establish reputation of the Opponent's trade mark. Opposition not established

Background

1. This opposition proceeding under the provisions of the Trade Marks Act 1995 (‘the Act’) arises out of the filing by Care Connect Ltd (‘the Applicant’) of an application (‘the Application’) to register the trade mark detailed below:

   Application No:           1448599
   Priority Date:               15 September 2011

   Services:Class 35: Management of social security and welfare services provided to individuals including specialist case management of social security and welfare services; management and administration of community support services provided to individuals including such services for pensioners, the aged, the disabled and social security recipients; brokerage services being the arrangement of contracts for, and business services for the provision of, health care, personal care and domestic assistance services in the welfare and community support areas; charitable services relating to the provision of all of the aforesaid services; none of the aforesaid services being business or management consulting services or the provision of accounting services

   Class 36: Solicitation of charitable testamentary bequests; organising of charitable collections of goods being the soliciting for donations and gifts; provision of long-term accommodation; provision of housing accommodation; none of the aforesaid services being the provision of financial planning or budgeting services, or lending or borrowing of funds or the brokerage of loans
   Class 37: Domestic cleaning services; cleaning of clothes; ironing of clothes; modification of buildings for access by disabled persons, including the widening of doors, installation of ramps, installation of hand rails
   Class 39: Personal transport, pick-up and taxi services; transport, pick-up and taxi services for refugees, the disabled, wheelchair users and the elderly; delivery of meals and prepared foods
   Class 41: Charitable services, namely educational services; provision of educational information, training and education relating to nursing, attendant care, personal care; personal development training; mentoring; arranging and conducting of training workshops; computer based training; organisation of training sessions; provision of seminars; organisation of events; organisation of social, cultural and sporting events; organising and staging of entertainment and social activities; staging of music theatrical events, dance events, art exhibitions; music recording, production and publishing; electronic publication of information on a wide range of topics, including on-line and over a global computer network; instruction and training in handicrafts including patchwork, needlework, quilting, scrapbooking, knitting, embroidery, tassel making, teddy bear making, sewing; organisation and staging of handicraft workshops and handicraft groups; conferences and retreats; conduct of recreational and educational camps; exercise and fitness training, personal fitness training, group exercise programs; physical education, sporting activities, sporting teams, soccer teams, cricket teams, football teams, carpet and lawn bowls; swimming lessons and swimming tuition; outdoor education activities including outdoor recreational activities, rafting, hiking, kayaking, horse riding, camping, rock climbing, abseiling all of the foregoing including training in same; cultural education activities including drama, singing, dance, music lessons, playing of musical instruments including training in same; musical, dance and theatrical performances; social clubs and conduct of social and recreational activities; school holiday programs for children and youths; life skills seminars and training; none of the foregoing services being services provided to minors other than minors who require support in order to be able to live independently at home in the community
   Class: 43 Housing and accommodation services; respite care (provision of temporary accommodation); providing food, drink and temporary accommodation including charitable services, hostels and boarding houses; food cooking services; preparation of meals; arranging for the provision of meals
   Class: 44 Community aged care services (not being accommodation); nursing homes; physiotherapy; psychological and psychiatric counselling; peer support services being psychological support services; personal care services being hygiene and beauty care; assessment, planning, coordination, brokerage and management of personal care; preparation of reports relating to personal care; case management and coordination of attendant care services, home care services for persons with a disability; rental of physical invalid aids other than wheelchairs or scooters; rental of crutches, walking frames, wheeled walkers and walking sticks; information and advisory service in relation to personal care, such information and advisory services being provided face to face, via telephone and via a global computer network; advocacy services relating to health issues; advisory services relating to nursing, attendant care; personal care; gardening, lawn mowing, lawn edging, tree lopping, tree pruning, hedge trimming; design and installation of garden beds, garden paths, lawn, garden ornaments and water features; none of the foregoing services being services for the diagnosis or treatment of diabetes; none of the foregoing services being services provided to minors other than minors who require support to be able to live independently at home or in the community
   Class: 45 Social visiting services for the aged, disabled, infirm, homeless, disadvantaged and socially isolated; social escorts and helpers to accompany aged, disabled, infirm, homeless, disadvantaged and socially isolated persons while shopping, to medical appointments, on social outings and on daily errands
   (‘the Services’)

   Trade Mark:                My Life, My Choice, My Way
     (‘the Trade Mark’)

   Endorsement:               Provisions of paragraph 44(3)(b) and/or Reg 4.15A (3)(b) applied.

2. The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 7 March 2013.

3. On 3 May 2013, Lifestyle Solutions (Aust) Ltd (‘the Opponent’) filed Notice of Intention to Oppose and on 27 May 2013 filed a Statement of Grounds and Particulars (‘the Statement’). The Statement cites grounds under sections 58 and 60 and asserts:

   Section 58 -Applicant not the owner of the trade mark

   The Opponent is the owner of trade mark MY LIFE, MY CHOICE, MY FUTURE (subject to trade mark application 1509688) for which they have legitimate and prior use of dating back to January 2007 in relation to a broad range of services as specified in trade mark application 1509688. The Opponent is of the opinion that the trade marks MY LIFE, MY CHOICE, MY WAY and MY LIFE, MY CHOICE, MY FUTURE are substantially identical in their total impression and applied to the same or similar services. Due to this total impression of similarity and the Opponent's prior use dating back to January 2007, the Applicant is not the rightful owner of the trade mark MY LIFE, MY CHOICE, MY WAY subject to opposition.

   Section 60 - Trade Mark is similar to a trade mark which has acquired a reputation in Australia

   The Opponent is the owner of the trade mark MY LIFE, MY CHOICE, MY FUTURE (subject of trade mark application 1509688). The Opponent first began using this trade mark in January 2007 and has acquired considerable reputation in the trade mark in respect to a broad range of services as specified in trade mark application 1509686. The Applicant’s trade mark MY LIFE, MY CHOICE, MY WAY is deceptively similar, and/or substantially identical to, MY LIFE, MY CHOICE, MY FUTURE. The Applicant's trade mark is also applied to the same or similar services. Therefore, registration of the Applicant's trade mark will lead to deception and confusion in the marketplace due to the similarity of the respective trade marks, the respective services, and the extensive reputation that the Opponent has established through prior use.

4. On 7 June 2013 the Applicant filed a Notice of Intention to defend.

5. The parties have subsequently filed evidence in support, evidence in answer and evidence in reply in respect of their positions as detailed below.  Thereafter the parties applied to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 27 June 2014.  Ms Karla Brummell, trade marks consultant of IP Wealth Pty Ltd, represented the Opponent.  Mr Dean McNamara, special counsel of Logie-Smith Lanyon Lawyers, represented the Applicant.

   Onus and Relevant Date

6. The Opponent bears the onus of establishing one or more grounds of opposition 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]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

7. The relevant date at which the grounds must be considered is the filing  date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

   Evidence

8. The evidence comprises the following statutory declarations:

   Evidence in Support

   David Hogg, Managing Director of the Opponent, with Exhibits 1-15 made on 13 September 2013.

   Evidence in Answer

   Paul Ostrowski, Chief Executive Officer of the Applicant, with Exhibits PO-1 to PO-6.

   Evidence in Reply

   David Hogg (‘Hogg 2’)

9. I note that the latter part of the Ostrowski declaration and all of Hogg 2 are critiques of the earlier-filed evidence by the other party and are more of the nature of submissions and I consequently accord them weight as such.

10. Mr Hogg’s evidence shows that the Opponent provides support services under its primary trade mark LIFESTYLE SOLUTIONS to people with disabilities through 100 services outlets around Australia.  These support services include housing, training programmes, self-managed services, foster care, community services, out of home care camps, accommodation and criminal justice programmes.

11. Mr Hogg states that the Opponent is the owner and applicant for registration of a trade mark MY LIFE, MY CHOICE, MY FUTURE in respect of which the Opponent made application for registration on 22 August 2012 (pending application 1509688) details of which are as follows:

    Application No:           1509688
    Priority Date:               22 August 2012

    Services:Class 35: Advertising; business management; business administration; office functions; charitable services, namely business management and administration; charitable services, namely organising and conducting volunteer programmes and community service projects; career counselling (employment advice and information); employment recruitment; executors services of estates, businesses, real property, securities and pension and other employee benefit plans; resume compilation for personnel seeking employment; vocational guidance (employment advice and information); career information and advisory services (other than educational and training advice); business, recruitment and employment assistance and information for disabled people and/or by means of a self-management community participation program for disabled people business management; business information; business planning; business promotion services; logistics services (business management and organization of facilities and resources); management of business (for others); providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services

    Class 36: Financial and monetary affairs, including financial planning and guidance; charitable services included in this class; charitable collections; organising of charitable collections; charitable fundraising; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services
    Class 41: Education; providing of training; entertainment; sporting and cultural activities; provision of education, training, entertainment, sporting and cultural activities for disabled people and/or by means of a self-management community participation program; charitable services, namely academic mentoring; charitable services, namely education and training; organising charitable fundraising events being the provision of entertainment, sporting and cultural services; employment training and career counselling; charitable services, namely arranging of cultural events, exhibitions, activities, holiday camps (entertainment); provision of instruction for the disabled; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services
    Class 43: Services for providing food and drink; temporary accommodation; housing and accommodation services; services for providing food and drink, and accommodation for disabled people and/or by means of a self-management community participation program for disabled people; charitable services, namely providing food and drink catering; charitable services, namely providing temporary accommodation; cafe services; holiday camp services (temporary accommodation); social clubs (provision of accommodation); temporary accommodation; respite care (provision of temporary accommodation); retirement home accommodation services, including aged care services; child care services; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services
    Class 45: Personal and social services rendered by others to meet the needs of individuals, including those for disabled people and/or by means of a self-management community participation program; social welfare services, including to assist in the general needs for the disabled; charitable services, namely mentoring (personal or spiritual); personal care services (non-medical nursing assistance); personal introduction agencies; personal shopper services; social escort services to assist the disabled; providing information, including online, about personal and social services meeting the needs of individuals; social work services; personal care and support services (non-medical); providing non-medical assisted living services for personal purposes; personal and spiritual mentoring; guardianship services; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services

    Trade Mark:                MY LIFE, MY CHOICE, MY FUTURE

    (‘the Opponent’s trade mark’)

12. The services under the Opponent’s trade mark are described by Mr Hogg as being a self management and family governance programme which enables young people with disabilities and special needs to design and implement a support programme suited to their requirements.  Mr Hogg states that the Opponent first used the Opponent’s trade mark in February 2007 – this was when the Opponent tendered to the NSW government (‘DADHC’) for funding for the programme.  Mr Hogg states that following acceptance of the tender by DADHC the programme was introduced as a two-year pilot.  I assume this was only in New South Wales and that the pilot programme started some time after February 2007 and that the first public use of the Opponent’s trade mark was thus at whatever unstated date that the pilot programme started.  Although Mr Hogg states that the use of the Opponent’s trade mark is now throughout Australia, there is no detail given in his declaration of when this programme spread beyond New South Wales, what dates it started in States other than New South Wales or the extent of these services in States other than New South Wales.

13. Mr Hogg also exhibits to his declaration details of the Opponent’s total revenue from donations and fundraising and also advertising expenditure in relation to all of its activities.

14. In answer, Mr Ostrowski states that the Applicant is an Australian not-for-profit organistation which has been incorporated since August 2000 and is a provider of community care services.

15. Mr Ostrowski says that the Applicant adopted the Trade Mark in 2010 for use in relation to services which assist clients to live independently at home with the assistance, as required, of the Applicant.  The client may be any person who requires support to remain living independently at home, be they children, young people, adults, older adults or carers.

16. The Applicant employs around 300 people who deliver its services in New South Wales, Victoria and Queensland.

    Section 58

17. Section 58 of the Act provides:

    58  Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:    For applicant see section 6.

18. To found its ground under section 58 the Opponent must establish to my satisfaction the use of a trade mark owned by a person other than the Applicant in Australia before the date of filing or first use of the Trade Mark by the Applicant.[2]  That first used or filed trade mark must be, as a minimum, substantially identical to the Trade Mark[3] and have been used in respect of goods or services which are the same kind of thing as the Services.[4]

    [2] The Kendall Company v Mulsyn Paint and Chemicals [1963] HCA 1; (1963) 109 CLR 300 at 304; Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 at 601-602; Moorgate Tobacco Co Limited v Philip Morris Limited (No. 2) [1984] HCA 73; (1984) 156 CLR 414 at 432.

    [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

    [4] In re Hicks’s Trade Mark (1897) 22 VLR 636; Jackson & Co v Napper (1886) 35 Ch D 160

19. Here the Opponent has had the first use of the Opponent’s trade mark in respect of services which are conceded by the Applicant to be, or include, services which are the same kind of thing as the Services.

20. The remaining consideration is whether the trade marks My Life, My Choice, My Way and MY LIFE, MY CHOICE, MY FUTURE are substantially identical.

21. In Shell Co of Australia Ltd v Esso Standard Oil [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said at [12]:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

1. The above is true in respect of inherently distinctive trade marks.  It may be otherwise with trade marks which lack prima facie inherent adaptation to distinguish.  In Colorado Group Ltd v Strandbags Group Pty Ltd [2006] FCA 160; 67 IPR 628; [2006] AIPC 92-182 (‘Colorado’) Finkelstein J said at [23]

   In the case of an inherently distinctive mark nothing more than first use is necessary to establish proprietorship. The applicant need not show that the mark has gained public recognition. Any general use of the mark as a trade mark will be enough, although in a rare case the use may be so inconsequential that it should be ignored as de minimus. Perhaps care should also be taken when there has been only a slight use of the mark followed by a long period of non-use, where something akin to the doctrine of abandonment might apply. If a mark is not inherently distinctive but indicates that an article emanates from some (usually anonymous) source because, or partly because, the mark has acquired a secondary meaning, strictly speaking first use is not sufficient to establish proprietorship. To make out proprietorship it is also necessary to show that the mark does in fact distinguish the applicant’s goods from the goods of others. Even if this is not an aspect of proprietorship (as I think it is), unless a secondary meaning is established s 41 would bar registration of the mark.

2. The above comment was made in the context of a consideration of the ownership of trade marks which prominently incorporated the geographical word ‘Colorado’ which obviously lacks prima facie inherent adaptation in relation to rucksacks, bags, shoes, boots etc.

3. ‘Distinctiveness’, or inherent adaptation to distinguish, is to be assessed according to the test in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

4. I consider the situation before me to be somewhat analogous to that in Colorado, albeit the trade marks of the parties may not completely lack inherent adaptation.  Both trade marks are nevertheless comparatively weak in terms of their inherent adaptation to distinguish when used in relation to the services of the parties: they are slogans which are more likely to be viewed as such rather than as trade marks denoting the origin of the services: Unilever Australia Ltd v Société des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; (2006) 69 IPR 255 (‘Go On …’ trade mark). The parties’ trade marks are used subordinate to the parties’ primary trade marks which must further increase the prospect that they will not be immediately recognised as denoting the origin of the services.

5. In the context of this comparative lack of inherent adaptation, the difference between the trade marks (which if the trade marks were fully adapted to distinguish may have been de minimis) assumes a greater significance: PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117. The difference between the trade marks My Life, My Choice, My Way and MY LIFE, MY CHOICE, MY FUTURE (setting to one side the capitalization of one of the trade marks and the lack of capitalization in the other) is such that I am not satisfied that the trade marks are substantially identical.

6. It follows that the Opponent has not established its opposition under section 58.

   Section 60

7. Section 60 of the Act provides:

   60Trade 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.

8. Reputation is to be assessed according to the test in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] where Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

   and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[5] (‘Cordon Bleu’) said that the reputation required to be demonstrated was:

   one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [5] [2000] FCA 1587; (2000) 50 IPR 1: in relation to subsection 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case also required reputation to be established.

9. Here the reputation of the Opponent’s trade mark would need to exist amongst the disabled and their support groups given these people are the target ‘market’ of both parties’ relevant services.  The Australian Bureau of Statistics states that 4.2 million Australians, or 18.5% of the population, have a disability.[6]  The reputation of the Opponent’s trade mark is, in terms of Cordon Bleu and McCormick, required to be established by the Opponent amongst the target ‘market’ of the Opponent – that is the 4.2 million people (or at least whatever the proportion might be of them who are young) who have a disability.

   [6] >

   Reputation may be assessed in different ways: in McCormick Kenny J said at [85]:

   It may be correct to say, as counsel for Mary McCormick did, that the volume of the company's sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company's products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

10. It follows that lack of precise details of revenue and advertising figures are not necessarily fatal to the establishment of grounds under section 60 although such is the case here. The Opponent has provided via Mr Hogg’s first declaration the total revenue the Opponent has received from donations and fundraising and also advertising expenditure in relation to all of its activities. It is not possible to gauge what fraction of the Opponent’s activities are comprised of the programme under the Opponent’s trade mark and thus apportion appropriate revenue and advertising figures to that programme and the Opponent’s trade mark. Nor are there any specifics in the Opponent’s evidence that go to the establishment of the reputation of the Opponent’s trade mark. Rather Mr Hogg in his first declaration states:

    The Opponent has been successful in providing support to people with disabilities across Australia through the provision of more than 100 services outlets, to over 1000 individuals and their families nationwide.  The Opponent has established a widely known and well-regarded reputation in the community and nationally.

11. While it is the reputation of the Opponent’s trade mark (rather than that of the Opponent) that it must establish, the services provided under the Opponent’s trade mark are, I gather from the above, provided to some unstated percentage of the 1000 individuals (and their support groups) mentioned in the previous subparagraph.  Thus if the Opponent’s programme under the Opponent’s trade mark is used or provided, it is amongst some subset which is less than 1,000 disabled people and their support groups.  Whatever the number of these individuals is who in fact avail themselves of services under the Opponent’s trade mark, they are a very small fraction of the 4.2 million disabled people in Australia and the Opponent.  There is no evidence that there is an awareness of the Opponent’s trade mark beyond this subset, nor can it be inferred or estimated from either the revenue and advertising figures, or evidence analogous to that referred to in Hugo Boss, to exist beyond that subset.  The Opponent has not therefore established that the Opponent’s trade mark has a reputation generally in that particular marketplace.

12. It follows that as the Opponent has not established that the Opponent’s trade mark has the extent of reputation contemplated to enliven the ground under section 60, it cannot establish the ground under section 60.

    Decision

13. Subsection 55(1) provides:

    55Decision

    (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.

    Note:For limitations see section 6.

14. The Opponent has not established its opposition.

15. The Application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

16. The Applicant, having been successful, is entitled to its costs at the Official Scale which I order against the Opponent.

    Iain Campbell Thompson
    Hearing Officer
    Trade Marks Hearings
    11 July 2014