Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd

[2007] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Macquarie Bank Limited to registration of trade mark application 1055042(36) - Thinking Forward - filed in the name of Great Southern Loan (SP) Pty Ltd

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Delegate:	Debrett Lyons
Representation:	Opponent : Ron Webb of Counsel instructed by Baker & McKenzie, Solicitors Applicant :  No appearance
Decision:	2007 ATMO 45 s. 52 opposition – s. 44: trade marks substantially identical; ground succeeds and opposition succeeds. Costs: applicant to pay opponent’s costs.

Background

1. Great Southern Loan (SP) Pty Ltd (‘the applicant’) filed a trade mark application number 1055042 (‘the application’) on 12 May 2005.  Details of the application are set out below.

   Priority Date:             12 May 2005 (‘the relevant date’)

   Goods :                      Class:36   Insurance, financial affairs, monetary   affairs, real estate affairs.          

   Acceptance Advert.:  15 September 2005 

   Trade Mark :            Thinking Forward

   (‘the trade mark’)

2. Macquarie Bank Limited (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 14 March 2006. Thereafter evidence in support and evidence in answer were duly filed and served by the parties according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’).

3. The opponent requested to be heard and the matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 16 May, 2007 in Sydney.  The opponent was represented at the Hearing by Ron Webb of Counsel.  There was no appearance by the applicant and it did not make any written submissions.

   Grounds of Opposition

4. The Notice of Opposition listed 12 grounds of opposition, but at the Hearing the opponent only pressed those grounds resting on sections, 42(b), 44 and 60 of the Trade Marks Act 1995 (‘the Act’).  I treat the other grounds as having been abandoned.

   The Evidence

5. The evidence filed and served in accordance with the Act and Regulations is set out in the table below.

Declarant	Date  Declared	Known As	Annexures
Evidence in Support
Kristine Neill	14 June 2006	Neill declaration	KN-1 to KN-27
Evidence in Answer
Simon Andrew Levingston	16 October 2006	Levingston declaration	None

Submissions and Reasoning

Section 44

1. Section 44 states, so far as relevant:

   Identical etc. trade marks

   (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). 

2. The opponent’s arguments focused on sub-section 44(2)(a). The opponent is the registered proprietor of trade mark registration number 909993 (‘the registration’), details of which are:

   Trade Mark:                FORWARD THINKING

   Filing Date:                  18 April 2002

   Services:                      Class: 36 Financial services; financial information services   including on-line information services; banking and investment   services; property investment banking, advisory and   management services; commodities trading; futures trading;   insurance services; leasing and financing services; valuation   services; real estate management; sponsorship management

   Endorsements: Accepted under the provisions of subsection 41(5)

1. The registration clearly pre-dates the priority date of the application. The applicant’s services are the same as services protected by the registration. I turn, then, to the question of whether the trade mark of the application is either substantially identical, or deceptively similar, to the trade mark of the registration, noting that the expression ‘deceptively similar’ is defined in section 10 of the Act as:

   Definition of deceptively similar

   10. For the purposes of this Act, 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.

2. The opponent submits that the trade marks are substantially identical. The test for substantial identity was succinctly put by Windeyer J. in Shell Co. (Aust) Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414 in these words:

   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 strict comparison of trade marks is between ‘Thinking Forward’ and ‘FORWARD THINKING’.

4. The opponent ignored the capitalisation of the registration and submitted simply that the reversal of the words did not create a substantial difference. It submitted that their meaning was the same and that the words had the same syntactical function in both cases.

5. The opponent drew my attention to the comments of Gummow J. in Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 371 at 391 where His Honour said:

   In the present case there would, in my view, be no material distinction to be drawn between “Fun Ship” and “Funship” or between the addition of the definite article or the use of the plural.

6. To my mind, there is nothing whatsoever controversial in those words.  Nonetheless, it can also be said that the reversal of two words might in some cases be a step further away from substantial identity. 

7. I am conscious, for example, that in the matter of Opposition by Automobile Club de l'Ouest (ACO) to registration of trade mark application 811110 (18, 24 & 25) & 826350 (32) - ADELAIDE LE MANS - filed in the name of Peter Gardiakos and Chris Kats (ATMO 29 April 2005), Hearing Officer McDonagh decided that the trade marks ADELAIDE LE MANS and LE MANS ADELAIDE were deceptively similar, but not substantially identical.

8. A comprehensive overview of the relevant case law can be found in Effem Foods Pty Ltd [ 1999] ATMO 80  (9 August 1999) where Hearing Officer Thomson considered:

   sections of the Trade Marks Act 1995 which deal with substantial identity, or under which substantial identity has been considered. In particular, where substantial identity has been considered under, subparagraphs 44(1)(a), 44(2)(a), section 58, subparagraph 60(a), subsection 65(2), subparagraphs 83(1)(a), 100(2)(a) and (b), 100(3)(a) and (b), 102(1)(a), subsections 120(1) and (2), subparagraph 120(3)(b), subsections 124(1), 133(2), 146(2), and subparagraph 230(2)(b), or the analogues of these sections where they existed under the Trade Marks Act 1955, or preceding British and Australian Acts.

   Under the above referred to sections of the relevant Acts, cases where substantial identity has been found include: Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.

   To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the delegate observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

9. Taking the measure of these cases as a whole, I find that the terms ‘Thinking Forward’ and ‘FORWARD THINKING’ fall marginally short of substantial identity.

10. That said, I return to Shell Co. (Aust) Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407, where at p. 415, His Honour continued:

    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.

11. I have no hesitation in finding that the compared trade marks are deceptively similar.

12. Accordingly, the ground of opposition based on section 44 of the Act succeeds.

    Decision

13. Under section 55 of the Act, I decide that since at least one ground of opposition has succeeded, the opposition also succeeds and so I direct that the application be refused one month from the date of this decision.

    Costs

14. The opponent requested its costs in the matter in the event that it was successful. The opposition having succeeded, I direct that the applicant pay the opponent’s costs according to the official scale.

    Appeal

15. An appeal of this decision lies with the Federal Court.  Should you intend to appeal this decision, please note the provisions of the Federal Court Rules Order 58, Rules 4(2) and 4(2A) which read, respectively:

    (2) an appeal must be instituted [at the Federal Court] within 21 days after the date of the decision appealed from or within such further time as the Court, on application, fixes, unless a law of the Commonwealth provides otherwise.

    (2A)  the notice of appeal must be served on the Commissioner (Registrar) and all other parties to the appeal within 5 days of the day on which the notice of appeal is filed.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    10 August 2007