Margaret Kerr, Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd v Invecon Australia Pty Ltd

[2008] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Margaret Kerr Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd to registration of trade mark application 1111173 (41 & 43) - KINDEROOS - filed in the name of Invecon Australia Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Tom Cordiner of counsel instructed by Holley Nethercote Lawyers

Applicant: Dean McNamara of Herbert Greer Lawyers

Decision:

2008 ATMO 102

Section 52 opposition – amendment to notice of opposition per s66 allowed – ss.44, 58 and 58A not established. Costs awarded against opponent.

Background

1. Invecon Australia Pty Ltd (‘the applicant’) filed an application to register a trade mark, current details of which appear below:

Application number:  1111173

Filing date:  1 May 2006

Acceptance date:  3 May 2007

Specifications:  Class: 41 Education, training, teaching and entertainment services provided by childcare centres and pre-schools

Class: 43 Childcare centres

Trade mark:  KINDEROOS 

1. The trade mark was accepted for possible registration, under the provisions of sections 44(3)(a) and 44(4) of the Trade Marks Act 1995 (‘the Act’) and advertised for opposition purposes. Margaret Kerr Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Act, objecting to the registration of the trade mark. The parties served and filed evidence in accordance with the Trade Marks Regulations 1995 after which the matter was set down before me, a delegate of the Registrar of Trade Marks, for a hearing on 15 September 2008, in Melbourne. 

Evidence

1. The following evidence was filed and served pursuant to the Act:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Margaret Kerr Kent Sasse	Owner of opponent	28 August 2007, Sasse 1	MS-1 to MS-20
Evidence in Answer
Hassan Awada	Director of the Applicant	26 February 2008, Awada	HA-1 to HA-10
Evidence in Reply
Margaret Kerr Kent Sasse	Owner of opponent	15 May 2008, Sasse 2

Preliminary Issue

1. By e-mail dated 21 August 2008, the opponent’s legal representatives advised that they sought to amend the notice of opposition pursuant to section 66 of the Act to include a ground under section 58A of the Act. It was submitted that ‘evidence submitted by both sides has clearly been directed in part to opposition under that section’. No evidence to support the application has been received.

2. Section 66 provides:

   The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:

   (a)         to correct a clerical error or an obvious mistake; or

   (b)if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

3. It was decided to hear submissions on the issue at the commencement of the hearing of the substantive matter, and for the decision to be made immediately before, and published with, the substantive matter.

4. Counsel for the opponent submitted that section 66 was meant to ensure all reasonable issues were put into context in a hearing and to avoid parties having to appeal the delegate’s decision to argue that point.

5. Counsel also suggested that section 58A was a strange ground that was hard to plead before knowing what evidence was being filed in an opposition. Counsel conceded that he was surprised that all the boxes on the notice of opposition had not been ticked as a precaution.

6. The applicant’s attorney pointed out that the opponent had been advised in writing by the Registrar on 3 May 2007 that the application had been provisionally accepted pursuant to sections 44(3)(a) and 44(4) of the Act. Therefore, the opponent was on notice that section 58A might have been applicable to the proceedings.

7. The applicant’s attorney also submitted that there was no error or mistake shown by the opponent; therefore, the Registrar was required to exercise his/her discretion if it was fair and reasonable to do so. My attention was drawn to Re the Application of Oddbins Corporate Beverage Suppliers’ (2001) 52 IPR 435 for the principles to be applied in the exercise of the Registrar’s discretion.

8. For the Registrar to be fair and reasonable in exercising a discretion the following should be taken into account:

• Relative inconvenience to the parties;

• The public interest

• The desirability of operating the trade mark system efficiently and without unreasonable delays.

1. While there is inconvenience to the applicant in having to revisit its submissions based on an additional ground of opposition (particularly as the advice regarding grounds to be pursued was also given at a late stage), the opponent would also be inconvenienced in not being able to canvass all grounds it believes it can support with the evidence already served.

2. Further, I consider it is in the public interest that trade mark applications are tested as completely as practicable by the Trade Marks Office at the examination and opposition stages. It should avoid increasing the probability of appeal, and the consequent additional costs to both parties.

3. It is also in the public interest that the system operates as efficiently and quickly as possible. Therefore, I intend to allow the opponent to add the section 58A ground to its Notice of Opposition, relying on the evidence already filed and served in the proceedings.

4. The Notice of Opposition, as amended, cited most grounds of opposition available to the opponent under the Act; however, in its submissions the opponent only relied upon the grounds of opposition under sections 44, 58 and 58A. For the sake of completeness, my reading of the evidence indicates that all other grounds of opposition are not supported and I find that they have not been established.

Discussion

1. Sasse 1 and Sasse 2 provide details of the operations of the opponent under various trade marks, including 909137 Toddler Kindy Roo, 944468 kindy roo, 981975 KindyRoo and 1015363 KINDYROO. Those operations commenced in 1982, as Toddler Kindy Gymbaroo, with a number of other trade marks centred around the following device:

1. The business of the opponent is the provision of intellectual, physical and emotional development of children through the education of parents/carers. The material, for example in exhibit MS-1 to Sasse 1, stresses that the services provided are not child care or daycare services, rather education of parents/carers with their children to achieve the desired intellectual, physical and emotional outcomes for the children.

2. Sasse 1 advises that as a result of Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 (12 May 2000), the opponent was restrained from using the name Gymbaroo in specified areas of South East Queensland. The opponent decided to use the words “kindy roo” and “kindyroo” in the place of “Gymbaroo” in Queensland and overseas.

3. On 12 April 2003, 20 February 2003, 15 December 2003 and on 11 August 2004 the opponent registered 909137 Toddler Kindy Roo, 944468 kindy roo, 981975 KindyRoo and 1015363 KINDYROO respectively. Relevant to this opposition, the class 41 statements of services are as follows:

   909137: Education and training services; gymnasia and other education and training services for infants and preschool children.

   944468, 981975 & 1015363; Education and training services, gymnasia and other education and training services for infants and pre-school children, education and play classes, gymnastic instruction classes and sensory motor play programs, all being for children.

4. The opponent’s above mentioned trade marks were cited against the application during examination of it. However, following the applicant’s provision of evidence of pre-application use of the trade mark, the provisions of section 44(3)(a) were applied in respect of 909137 and 944468 and the provisions of section 44(4) in respect of 981975 and 1015363.

Grounds of Opposition

1. The three remaining grounds of opposition each share the requirement for a decision as to the identity or degree of similarity or identity of the competing trade marks, the similarity of the services to which they apply and when they were first used.

2. The initial examination of the application indicated that it was deceptively similar to the opponent’s trade mark registrations. I can see no reason why that conclusion should not be maintained. The examination also suggested that the applicant amend the class 41 statement of services to that shown in paragraph 1, above.

3. Indeed, having regard to the evidence and the submissions from the parties, I see no reason to disturb the original determination of deceptive similarity pursuant to section 44(2) of the Act with regard to the cited marks and to apply the provisions of section 44(3)(a) in respect of 909137 and 944468 and the provisions of section 44(4) in respect of 981975 and 1015363.

4. This logically leads me to the section 58A ground of opposition.

58AOpponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)similar goods or closely related services; or

(ii)similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:For predecessor in title see section 6.

1. This ground is applicable to the opponent’s registrations 981975 KindyRoo and 1015363 KINDYROO only, because I accept the applicant’s evidence that it commenced using its trade mark in October 2003 or November 2003. To establish this ground of opposition, the opponent must satisfy me that the specified marks have been used continuously in respect of similar goods to the applicant from a date prior to October 2003.

2. The opponent’s evidence is not clear as to which of its trade marks have been used, and to what extent, from the time it was restrained from using the “Gymbaroo” mark and name to the date of application for the various cited marks.

3. It appears from the evidence, and is likely, that the opponent simply removed the word “gymba” and the mark effectively became Toddler Kindy Roo. While I must accept that the opponent ceased using “Gymbaroo” in its trade mark use, I am unable to be satisfied whether either of the section 44 trade marks, rather than the section 44(3)(a) trade marks predate the applicant’s use of its mark.

4. Even if I were to find such use, I am not satisfied that the use was in respect of ‘similar services’ for the purposes of the Act. The opponent provides education and training services for the development of young children, whereas the applicant provides temporary accommodation – albeit with some educational and recreational context – for unaccompanied children.

5. Further, it would be anomalous if 94468 can lawfully coexist with the application but 981975 and 1015363, with identical statements of services, could not. I intend to take this into consideration as part of my requirements under section 55 of the Act.

6. In any event, I am not satisfied that the initial requirements of section 58A(2)(a) are made out and I find that this ground is not established.

7. The remaining ground is that under section 58 of the Act, which provides:

Applicant not owner of trade mark

58. 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.

1. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. The proper comparison for substantial identity is side by side, as described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J, 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.

1. However, I am not satisfied that any of the opponent’s cited marks that predate use by the applicant are substantially identical to the application. In my opinion, there are sufficient aural and visual differences between the marks, because of a combination of the plural ‘s’ and the additional letters ‘er’ rather than ‘y’ and, in the case of the earliest marks, the separation of ‘kindy’ from ‘roo’.

2. In any event, I have already determined that the opponent’s marks are not used in respect of the same kind of services as the applicant. I find that this ground is not established.

Decision

1. Section 55 of the Act provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, 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.

2. I have found that the opponent has been unsuccessful under each of the grounds pursued at the hearing.

3. The trade mark 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 against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

Costs

1. The opponent sought costs in the matter. As the applicant has been the successful party and there is nothing before me to suggest that I should not apply the general rule, I award costs against the opponent in accord with the Official scale as set out in Schedule 8 of the Regulations to the Act.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

24 December 2008