Link Recruitment Pty Ltd v Link Employment And Training Inc

[2006] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by LINK RECRUITMENT PTY LIMITED to registration of trade mark application 861332(35 and 41) - LINK AND DEVICE OF FIVE PEOPLE IN SILHOUETTE - filed in the name of LINK EMPLOYMENT AND TRAINING INC.

Delegate:

Don Nancarrow

Representation:

Opponent: Fiona Symons of Davies Collison Cave, Patent and Trade Mark Attorneys, Melbourne

Applicant: Susan Gatford of counsel instructed by Macpherson + Kelley Lawyers, Melbourne

Decision:

s. 52 opposition. Grounds under s. 62(b) and s. 44 made out. Trade mark application refused. Costs awarded against applicant.

Background

1. Link Employment and Training Inc., (the applicant), filed application number 861332 on 22 December 2000 for services in classes 35 and 41 of the International Classification of Goods and Services (the Nice classification). The trade mark is as depicted below:

1. The services for which this application was accepted are:

Class 35:  “Services provided by employment agencies; recruitment services” and  Class 41: “Vocational training, management training, pre-employment training, training services, providing training to apprentices, providing traineeships, personal development and skills training, business and commercial training, organising business and commercial training; all being services offered in the recruitment, traineeships and apprentices sectors”.

1. The trade mark is also subject to endorsements which read: “Provisions of paragraph 44(3) applied” and “Provisions of subsection 44(4) applied.”

2. These endorsements indicate that a trade mark has a history of use prior to the making of the application. The Trade Marks Act 1995, (the Act), allows registration of identical or deceptively similar trade marks to occur, even where an element of deception or confusion could occur, under the circumstances outlined in s. 44(3) and 44(4). These circumstances are, respectively, that the use of the mark applied for has been, either, honest and concurrent with a mark cited against it, or has been prior to, and continuous from the date of application of a mark cited against it. In this instance, both provisions have been used to tolerate different problems from trade marks with earlier priority dates.

3. The applicant here is a not for profit private registered employment and training organisation which has been in operation since 1985. It was previously known as Dandenong/Westernport Group Training Scheme Inc. and  Dandenong Valley Group Apprentices Inc. The change of name to Link Employment and Training Inc. occurred on 9 January 1996. It is a State accredited private TAFE provider funded by the Victorian Department of Education, Employment and Training. The applicant’s operations broadly deal with training and employing apprentices and trainees and leasing them to suitable businesses for on-the-job training.

4. The applicant has used a variety of trade marks but claims use of the mark applied for, or of a substantially identical mark, from January 1996. The selection of this particular trade mark followed the result of an internal staff competition to choose a new name for the applicant – which name was changed in January 1996.

The opponent, Link Recruitment Pty Limited, previously operated under the name Link Recruitment Group Pty Limited, and before that, from 1986 until 1 April 1998, as Accountancy Link Pty Limited. The main business of the opponent is as an employment agency.

1. The present trade mark was accepted for registration and advertised on 9 January 2003. The opponent filed a Notice of Opposition on 9 July 2003 following a three month extension of time in which to do so. Thereafter the parties filed their evidence and the matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 15 February 2006.

The Evidence

1. At the time of the hearing, the evidence properly filed and served in the matter is as shown in the table below.

Declarant	Date Declared	Exhibits	Known As
Evidence in Support
Ann Tsoukalas	8.04.2004	NIL	Tsoukalas
Gerard James Burke	8.04.2004	“GJB-1” to “GJB-16”	Burke
Brett Lewis	8.04.2004	“BL-1” to “BL-3”	Lewis 1
Brett Lewis	10.09.2004	“BL-1” to “BL-5”	Lewis 2
Evidence in Answer
John Ackland	11.03.2005	“JA-1” to “JA-23”	Ackland
Evidence in Reply
Fiona Symons	14.09.2005	“FMS-1” to “FMS-3”	Symons
Elyce Capp	15.09.2005	“EC-1” to “EC-4”	Capp

1. At the hearing, the applicant also requested permission to serve further evidence, as per Regulation 5.15(1)(b). I will deal with this issue where the matter becomes relevant below.

Grounds of Opposition

1. The Notice of opposition nominated grounds under ss. 41, 42(b), 43, 44, 58, 59, 60, 62(a) and 62(b). At the hearing, however, only those grounds under ss. 42(b), 44, 60 and 62(b) were pressed. I formally dismiss opposition in relation to the other nominated grounds.

Submissions, the Law and Comments

1. It is my usual practice to consider opposition grounds in the numerical order in which they appear in the Act. Here, however, the finding under one of the grounds has an effect on many other issues and it is convenient to consider it first. 

(a) Section 62(b)

1. Relevant to this ground the Act states:

Application etc. defective etc.

62. The registration of a trade mark may be opposed on any of the following grounds:

(a) ….
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Note:  For file see section 6.

1. Concerning this ground Ms. Symons directed me to Lewis 2 which, at exhibit “BL-3”, presented a copy of a declaration (dated 1 November 2002 from John Ackland) that the applicant had provided during the examination process to overcome citations raised against the application. She submitted that the material provided during examination was false in material particulars because the declarant had given details of use of the mark that, in many instances, was use of a different trade mark.

2. Ms. Symons also submitted that the applicant claimed, at ¶16, ¶21 and ¶72 in the declaration of 1 November 2002, use of the trade mark from January 1996. This was not at all accurate, she claimed, because ¶23 gave a clear indication that it was a different mark that had been used during 1996 and 1997.

3. Additionally, she submitted that at ¶32 the applicant claimed use of the mark from 1996, but the associated exhibit (“JA-7”) showed the use to be from an address in Keys Street Frankston which did not begin operations until 6 April 1998 according to ¶17 of that same declaration. This identical difficulty was outlined by Ms. Symons for ¶41 and exhibit “JA-10” of the 1 November 2002 declaration.

4. Ms. Gatford, for the applicant, contested this submission by quoting ¶16 of the 1 November 2002 declaration, and stating that the paragraph did not demonstrate that the applicant had provided “representations that were false in material particulars” at all. Nothing had been hidden whatsoever, she claimed, because the applicant had used a form of the mark from January 1996 and then the mark as shown on the application from 1998.

5. Paragraph 16 that both parties had cited reads:

   “From January 1996, the applicant utilised the Mark in relation to all its services and on all its documents, brochures, correspondence and premises to distinguish itself and its services from the services of other traders in its field. The use of the word “LINK” has been use in association with the device in various position combination[s]. Included with this declaration are various brochures, letter heads and materials displaying:

   ·The word “LINK” without the device

   ·The word “LINK” and device as appears in application; and

   ·The word “LINK” and device in close proximity as appears in the early correspondence (see JA-3 for a sample)

   The reference to “Mark” within this declaration is taken to mean any of the above unless the context provides otherwise.”

6. The opening words of this paragraph and the last sentence, combine, in my view, to create the claim that all versions of the trade mark(s) described at the dot points have been used by the applicant since January 1996. Ms. Gatford’s submission was that this was not the impression that was intended by this paragraph. Nevertheless, I believe that such a view would generally be taken by a reader as the most logical inference.

7. The three trade marks in question here I have reproduced below.

(1) LINK         – the word without any device.

1. - the mark as applied for.

(3) The word and device “in close proximity”.

1. My task here is to assess use of the mark presently applied for. Sub-section 7(1) of the Act impacts on the situation. This reads:

Use of trade mark

7.(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note:  For prescribed court see section 190.

1. Clearly, any modification must not substantially affect the identity of the mark if use is to be attributed to the mark applied for. The wording here is analogous to the wording in s. 44 where the phrase “substantially identical with” is used (see AMWProjects Pty Limited v Ray Mullins & Sons Pty Limited 48 IPR 409 at 418). It would appear that the assessment of whether the identity of a mark used by the applicant was not substantially affected by modifications (in order for that use to be found use of the mark applied for) would follow the same general rules as an assessment of substantial identity between two conflicting trade marks, as per s. 44.

2. The standard test for substantial identity of competing trade marks is set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414.

   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.

3. The first mark here is merely the word LINK. The second mark, which is the mark applied for, is a combination word and device. The fonts of the respective words are different and the device is found within the word such that the letter L forms a “frame” around it. The differences are quite obvious and pronounced. The two marks are noticeably not the same and are not, in my view, substantially identical either.

4. The third mark contains the words LINK EMPLOYMENT AND TRAINING and the device of five people in silhouette. I make little of the words EMPLOYMENT AND TRAINING given that this is a description of the services offered. However, the device in the mark applied for is half the size of the lettering whereas in the third mark it is approximately seven times the lettering size. The prominence of the device gives this mark a very different impression from the mark in the application. The evidence provides the third mark in several exhibits in which the actual size of the device element is approximately 21 mm. The corresponding size of the device, in instances where the mark presently applied for has been depicted, varies from as small as 3mm. to approximately 8 mm. For those at the smaller end of this range the features in the device are not readily identifiable – unless the mark is shown in a larger size elsewhere (or the viewer is already familiar with it). The differences here lead me to the conclusion that the “total impression of resemblance or dissimilarity that emerges” for these two marks is that they are not substantially identical.

5. Thus, I find that any use of the first and third marks listed above cannot be credited as use of the mark applied for, as set out in s. 7(1).

6. Within the Ackland declaration of 1 November 2002, which had been submitted to the examiner during the course of examination, there are two trade marks that I would consider to be substantially identical to the mark of this application. These are depicted below:

1. These two trade marks do not help to provide evidence of instances of use of the mark from 1996 because all of the exhibits that contain either of these two marks are either undated, or only confirm use from some time after 6 April 1998, when the Keys Street address in Frankston began its operations. Taken together, I find that the claim made at ¶16 of the Ackland declaration that the mark applied for (or a mark substantially identical) has been used from January 1996 is not sustained by the evidence.

2. It could be argued on the basis of the above that, at worst, this merely showed that the declaration failed to support the application, not that it contained material that was “false in material particulars”. This is true for the large majority of this declaration. However, ¶41 claims that exhibit “JA-10” contains material from various years “including three brochures titled ‘Looking for a Job?’ and ‘Let’s Get Together’ from 1996”. The “Looking for a Job?” exhibit (as for many of the other documents in this declaration) is undated and clearly shows a representation of the trade mark of this application. However, an address on that document is Keys Street Frankston – a location that, according to ¶17 did not commence operations until 6 April 1998.  

3. This declaration and its exhibits amount to some 170 pages and it may well be that this page was unintentionally placed within the exhibit – but the fact remains it is “evidence or representations that were false in material particulars” by claiming to show use in 1996 whereas it could not have been used before April 1998.

4. Taken on its own, some may argue that the existence of this one instance in such a large document could not have a major effect on the overall assessment of the evidence. I don’t accept that this is the case. Because the claim in “JA-10” is that the mark in the application has been used from 1996, and the exhibit clearly shows the mark in the application, the examiner could not be expected to query the use claimed for 1996 in all of the undated documents that also show use of the mark. The wording of such paragraphs as ¶16 inferred use of the mark in the application from 1996 which I have discussed in detail above. There, I formed the opinion that the actual use in evidence was only of a similar trade mark rather than a substantially identical mark, prior to April 1998. I have little doubt that the applicant had no intention to deliberately mislead the examiner. The applicant was apparently of the opinion that the evidence that it provided demonstrated use of the mark by means of the similar mark, whereas the 1996 and 1997 use in the evidence provided does not support this contention.

5. This trade mark was accepted for registration with a comment from the examiner that the mark has been used since 1996. This is stated in the second examination report in a paragraph that is a pre-cursor to a request for a declaration to clarify certain aspects of the use that had been claimed. The examiner had formed a view that the mark had been used from January 1996 based on the statements that the variety of marks used by the applicant were all used from 1996 (as per ¶16 of the declaration discussed above) and the claims of such paragraphs as ¶17. However, when such information as the commencement of operations at Keys Street Frankston is read in conjunction with documents in the exhibits it is apparent that the evidence only unambiguously supports use of marks that are similar, rather than substantially identical, to the present mark from the earlier date.

6. I believe that evidence “false in material particulars” was unintentionally supplied during the examination phase for this application. Given the examiner’s comments at acceptance, it appears that this had a significant effect in bringing about the acceptance of this application and thus, from the foregoing, I find that the opponent has established the s. 62(b) opposition ground.

The Matter of Further Evidence

1. During the hearing the applicant requested permission to serve a copy of further evidence on the opponent as per Reg. 5.15(1)(b). Provided the application complies with procedural requirements under the Act and Regulations, there are three major factors (Oxon Italia SpA's Application [1981] FSR 408 at 409 following Ladd v Marshall (1954) 1 WLR 1489) to consider for a determination of admissibility. These are:

(1) Could the evidence have been obtained at an earlier stage by the exercise of reasonable diligence?

(2) Would the evidence, if admitted, probably have an important influence on the result for this opposition matter?

(3) Is the material submitted apparently credible?

1. This further evidence was designed to show that the mark applied for had been used prior to April 1998 when the Keys Street address was first in operation. The single document exhibited to the declaration does show use, on 12 March 1998, of a trade mark substantially identical to the mark in the application.

2. The document, however, does not meet the requirements of the second factor listed above. The ground of opposition that the opponent has made out above is based on the applicant having provided evidence or representations that “were false in material particulars” during the course of examination that led to the application being accepted for registration. That fact cannot be undone by information designed to contradict it but provided later. Moreover, I do not accept that the information provided in the further evidence could actually correct the deficiency in the evidence anyway. The false claim concerned an assertion that the mark had been used from January 1996 whereas the original document provided could only have been used from April 1998 at the earliest. The further evidence that the applicant requested to be considered shows one use on 12 March 1998. So, even had this document been part of the originally filed evidence, it would not have supported use from as far back as January 1996, and, would not, therefore, have affected the result of the opposition under s. 62(b).

3. Given that it would not affect the result for this opposition ground in this matter, I refuse to admit the further evidence.

(b) Section 44

1. The legislation allows:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

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

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

(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.

(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.

1. During the course of examination three conflicting trade marks had been raised against this application. These are numbered 584009, 761186 and 761190. The first of these is owned by a third party whereas the other two are owned by the opponent. All three had a priority date earlier than the present application and the citation of 584009 was overcome by evidence of honest concurrent use of the mark applied for (under s. 44(3) of the Act) whereas the other two citations were overcome by evidence of prior continuous use of the mark applied for (under s. 44(4) of the Act).

2. Ms. Gatford submitted that because the opponent only referred to its opposition in terms of its own trade marks under s. 44, problems for the applicant concerning the first citation could not be canvassed by the opponent under this ground of opposition. In most circumstances, I would tend to agree, but there is an element here that creates an obstacle to that submission. It is that I have already found that the evidence on which the citation had been overcome is flawed in terms of s. 62(b). Such a finding brings into question the validity of the endorsements under s. 44(3) and s. 44(4) that were applied to enable acceptance. This leads me to a consideration of the citation of 584009 as a natural consequence from my finding under s. 62(b) quite apart from any claim or submissions of the opponent.

3. Under this ground of opposition, Ms. Symons led me to a further group of the opponent’s marks that she said operated as a family. I only intend to consider this ground of opposition concerning 584009 because if this decision goes to appeal (as the opponent has already established the overall opposition) then both parties have the opportunity to provide further evidence, as the applicant had already requested in the discussion in the section under s. 62(b), and argue their case “de novo”. For this reason it is superfluous to further consider the other registrations originally cited under s. 44, 761186 and 761190.

4. Trade mark 584009 is simply for the words LINK PERSONNEL. The services are specified in class 35 as being: “Business advice and personnel services (excluding services in relation to chemist shops).” Given the nature of the services here, the word “personnel” must be discounted to some extent in a comparison for similarity with the mark applied for. Clearly, the main feature of the applied for mark is the word LINK, as is also true of the cited mark. Since the mark of the application contains a device the marks could not be said to be substantially identical. However, they do not need substantial identity to fall foul of s. 44, deceptive similarity is sufficient. The test for such is described in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415 in the words of Windeyer J.:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

5. The mark on the application here does contain a device but as it is much smaller than the lettering in the word LINK it may not be readily recalled at all. The word in the mark applied for overwhelms the device element to such an extent that even those that do recall that there is something else in the mark may merely equate it to the descriptive element in the cited mark. A factor not to be overlooked in this case is that the respective marks would be used verbally in many instances (Pianotist Co Ltd’s Application (1906) 23 RPC 774 at 777). This is not a comparison of trade marks on goods on supermarket shelves but on “employment, recruitment and training” services on one hand and “business and personnel” services on the other. The scope for deception or confusion by verbal reference to these marks is quite high because both would be referred to as a LINK trade mark. The word LINK is the “heart” of both of these trade marks. I find that the mark applied for is deceptively similar to 584009.

6. A similarity in trade marks, however, is only one of the tests necessary to trigger a barrier under s. 44. The respective services involved for the parties are, “Business advice and personnel services (excluding services in relation to chemist shops)” in class 35 (cited mark) and “Services provided by employment agencies; recruitment services” also in class 35 (application). Notionally, “business advice and personnel services” could readily involve such advice and services in relation to staffing, including recruitment and training issues. There exists sufficient similarity in services here to persuade me that the opponent has satisfied the condition at s. 44(2)(a)(i). As trade mark 584009 has a priority date of 21 May 1987 all three requirements have been met and there does exist, in my view, a real likelihood of deception or confusion.

7. Having found that this trade mark is citable under s. 44, I turn to the endorsements that enabled acceptance of the mark applied for. These endorsements brought into play the provisions of s. 44(3) and s. 44(4) of the Act, dealing with either honest concurrent use of the mark with a citation, or with prior, continuous use of the mark. The “prior, continuous use” endorsement depends on the applicant showing that it had used the mark before the priority date of the cited mark.

8. Trade mark 584009 has a priority of 21 May 1987. The earliest claim for use of the mark applied for is January 1996, and, so the only endorsement available from either s. 44(3) or s. 44(4) is the former – involving honest concurrent use of the mark applied for (or other circumstances). The examiner, of course, believed that the mark had been used continuously from January 1996. The evidence filed during the course of examination, as discussed above under s. 62(b), however, only goes to support use from some time in 1998. This is only a little more than two years before the date of filing of the application.

9. The relevant tests for consideration of honest concurrent use were set out by the Assistant Comptroller in John Fitton & Co. Ltd’s Application (1949) 66 RPC 110. Five factors are to be considered. These are:

   ·the honesty of the concurrent use

   ·the extent of the use in duration, area and volume

   ·the degree of confusion likely to ensue

   ·whether any instances of confusion have in fact been proved

   ·the relative inconvenience which would be caused to the parties by the allowance or denial of registration.

10. The matter of honesty of selection and use of the mark has never been called into question. The Ackland declaration on this point has satisfied all parties.

The extent of the use in terms of duration, area and volume brings these factors into question in respect of what has actually been shown in the evidence. The assertions in the declaration had claimed that use of the mark began in 1996. However, as discussed above under the heading for s. 62(b), the use as shown in the evidence did not begin until at least some time in 1998. The evidence also showed use of a group of similar marks that were not substantially identical to the mark in the application. It also quoted amounts of revenue connected with the applicant’s business but not amounts that were specifically linked with any particular mark. It is virtually impossible to evaluate the amount of use of the mark applied for (including use of any that are substantially identical) in volume terms without making many assumptions from the evidence provided. Some documents dated 1999/2000 clearly show use of the mark. Yet, exhibit “BL-1” to Lewis 2 provides a copy of a declaration dated 20 December 2000 from Saba Hakim, a legal representative of the applicant, requesting expedited examination of the application. This declaration appears to suggest that the mark is about to be used extensively but that it has not yet been so used. Taken together, I believe that these factors indicate some use had been made prior to 20 December 2000 but that the mark had not achieved any obvious level of recognition at that date. For these reasons, I am not satisfied that the applicant has met the requirement of a sufficient amount of use in duration, area and volume for this trade mark by the date of application, 22 December 2000, to warrant favourable assessment under the honest concurrent user provisions.

1. In terms of the degree of confusion likely to ensue, I note that the some of the services offered by both parties fall in class 35, with “personnel” services and “education, training and recruitment” services being fairly closely allied. Given the facts that the cited owner has rights to operate in the same geographic area as the applicant, offer similar services and both use deceptively similar trade marks I believe that the likelihood of deception or confusion is far from remote. The opponent had argued that it was not aware of any actual cases of confusion and that this should be considered in my weighing the factors for the degree of confusion likely to ensue. I note another factor here that acts against finding that the degree of confusion is acceptable. It is that the use of the mark by the applicant has not been clearly defined. If the use has, in fact, not been significant then it would be expected that little confusion would have been documented because not many people would be aware of the mark’s existence.

2. There is no evidence of actual confusion between the mark applied for and 584009 – which is not owned by the opponent. I note, however, that Ms. Tsoukalas, the office receptionist for the opponent, avers a degree of confusion between the present mark and the opponent’s LINK trade marks to the extent of three or four telephone calls per week where people mistakenly believe they have contacted the office of the applicant. The applicant claims no knowledge of such confusion. I accept the Tsoukalas claim that a not insignificant degree of confusion between the mark of the application and the opponent’s marks has actually occurred in the present case. Although this confusion is not in respect of 584009, which is owned by a third party, it does support a general view that the likelihood of deception or confusion is non-trivial.

3. An assessment concerning the “relative inconvenience which would be caused to the parties by the allowance or denial of registration” led to a variety of submissions. Ms. Symons claimed that the applicant would not be inconvenienced because the trade mark had already been superseded by the mark depicted below and additionally, the applicant has been using a number of other different trade marks:

1. To support her contention Ms. Symons pointed to a website page of the applicant (shown in exhibit “BL-3” to Lewis 2) that showed a mark substantially identical with that applied for. This mark was shown with the note “LINK Logo 1996 – 2003”.

2. Ms. Gatford disagreed with these propositions claiming that the trade marks had been used in parallel for a period in excess of seven years without complaint. She maintained that the note on the website had been placed there by an inexperienced staff member and had been removed from the website as soon as it was noticed in the office of the applicant. She also directed me to two exhibits where the mark was used as late as 2004. Additionally, Ms. Gatford commented that refusal of the application would severely disadvantage the applicant because of the resources already expended in promoting the trade mark. The relative inconvenience for the owner of 584009 is difficult to establish because it is a third party to this opposition. One problem here, for the applicant, is that the actual amount of use of the mark applied for has not been clearly shown in the evidence. Evidence of use for similar trade marks is combined with use of the present mark to allow accurate evaluation difficult. This weighs against finding that the applicant will be greatly inconvenienced if registration is denied.

3. Weighing up these factors leads me to the conclusion that the evidence provided by the applicant does not justify the “honest, concurrent use” endorsement under s. 44(3). This conclusion is particularly founded in the short term of use prior to filing (from some time in 1998 until 22 December 2000) and the difficulty in quantifying the amount of use of the mark applied for from the overall figures provided. Thus, in respect of 584009, the applicant’s evidence has not overcome the s. 44 ground for rejection.

4. Thus, the opponent has established this ground of opposition.

(c) Section 60

1. Here the legislation allows:

Trade mark similar to trade mark that has acquired  a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. In relation to this opposition ground the opponent listed 22 trade marks in which it claimed a reputation. I do not believe that the present mark is either substantially identical with, or deceptively similar to all 22 of these trade marks. Certainly, some would fall into that category but not all. The opponent has not separated out the evidence of volume of sales or the level of advertising and other promotions to enable me a clear picture of reputation for each of those marks. I am, therefore, left in a circumstance with incomplete information. I accept Ms. Gatford’s submissions on this issue, that in these circumstances I cannot be sure that the opponent’s reputation is positively attached to marks that I would find to be either substantially identical with, or deceptively similar to, the present mark.

2. Thus, I find that this ground of opposition has not been made out.

(d) Section 42(b)

1. Relevant to this ground the legislation reads:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) ….
(b) its use would be contrary to law.

1. In terms of s. 42(b) Ms. Symons, for the opponent, submitted that use of the subject mark would constitute passing off and/or be contrary to s. 52 and s. 53 of the Trade Practices Act, 1974 (TPA). She went on to refer to the words of Justice Gummow in ConAgra Inc. v McCainFoods (Aust) Pty Limited, 23 IPR193 in relation to passing off where he said at 247:

   Now, Nourse LJ … has said that the formulations by Lord Diplock and Lord Fraser had not in his experience given the same degree of assistance in analysis and decision as “the classical trinity” of (1) reputation (2) misrepresentation and (3) damage.

2. In that judgement the trade mark involved was “Healthy Choice” which had been used by both parties and the task of ascertaining the reputation of ConAgra Inc. in that mark in Australia became the focus. In the present situation, the matter of reputation is blurred for the reason outlined in my discussion of s. 60. Just which trade marks of the 22 listed by the opponent have had the majority of use to build the opponent’s reputation? Is it those marks that I would find, at least, deceptively similar or marks that would not provide a barrier for the applicant? If use of the present mark by the applicant could be seen as misrepresentation in relation to the opponent’s evidenced reputation then that reputation would need to be clearly defined. In ConAgra v McCain, supra, the relevant reputation could be readily defined – only one trade mark was involved. Here, however, it is not clear whether use of the mark by the applicant would produce misrepresentation in the face of the reputation that can be credited to the opponent by means of its own use of several different trade marks.    

3. In terms of s. 52 and s. 53 of the TPA a similar difficulty arises for the opponent. I accept that if virtually all of the reputation for the opponent resides in one of its marks that use of the present mark by the applicant may well produce misleading or deceptive conduct (s. 52) or false or misleading representations (s.53). Whereas if that reputation resided in a different one of the opponent’s 22 marks then the applicant would not have a case to answer. I am left with insufficient direct information to form a firm opinion.

4. In view of the foregoing I find that the ground of opposition taken under s. 42(b) is not made out.

Decision

1. From the foregoing, I have found that the opponent has established grounds of opposition in terms of s. 62(b) and s. 44. My decision is that I refuse registration of trade mark number 861332. However, if the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that refusal shall not occur until the appeal has been decided or discontinued.

Costs

1. The opponent has requested costs in the matter. I see no reason why costs should not follow the general rule. I award costs against the applicant and direct that the applicant pay the costs of the opponent in accord with Schedule 8 of the Trade Mark Regulations.  

Don Nancarrow

Hearing Officer

Trade Marks Hearings

12 May 2006