Match Investments Pty Ltd v Match Realty Limited

[2012] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by Match Investments Pty Ltd to registration of trade mark application 1240733 (35, 36) - MATCH RETAIL EXPERIENCE, PROPERTY EXPERTISE - filed in the name of Match Realty Limited.

Delegate:

Bianca Irgang

Representation:

Opponent: Ms Melissa Marcus of Counsel instructed by Norton Rose Australia

Applicant: Ms Marianne Dunham of Francis Abourizk Lightowlers Commercial and Technology Lawyers

Decision:

2012 ATMO 90

s. 52 opposition: sections 44 and 58A – s 44 ground of opposition established for all services - trade marks deceptively similar and applicant’s evidence insufficient- costs awarded against the applicant.

Background

1.     Match Realty Limited (‘the applicant’) filed application number 1240733 on 15 May 2008 in classes 35 and 36 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:    (‘the Trade Mark’)

Trade mark application:              1240733

Filing Date:  15 May 2008

Specification:  Class 35: Business consultancy not including recruitment services, personnel management and placement services or any other personnel or staffing services

Class 36:Real estate and property consultancy with regard to commercial premises

Endorsements:  The applicant has advised that the second mark in the series of trade marks is depicted in the pantone colours BLUE 274 and Grey 424 as shown in the representation attached to the application form. Provisions of subsection 44(4) and/or Reg 4.15(5) applied.

2. During the examination of the trade mark application a ground for rejection was raised under section 44 of the Trade Marks Act 1995 (‘the Act’). The conflicting trade mark is the following trade mark registration currently in the name of Match Investments Pty Ltd:

Trade mark:  

Trade mark registration:             1204714

Filing Date:  12 October 2007

Specification:  Class 36: Real estate services including real estate sales, management, leasing, marketing, development, project management and consulting; raising and investment of funds for the purpose of property investment and development; providing information, advice and consultancy in relation to the aforementioned services

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

3.     In response to the ground for rejection, the Applicant provided evidence of use which was sufficient to satisfy the examiner that the provisions of subsection 44(4) could be applied. The trade mark was duly accepted and the acceptance was advertised in the Australian Official Journal of Trade Marks on 15 October 2009.

4.     Match Investments Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 15 January 2010. Thereafter the parties served and filed evidence as provided for by the Trade Mark Regulations 1995 (‘the Regulations’).

5.     I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 8 March 2012. Ms Melissa Marcus of Counsel instructed by Norton Rose Australia represented the opponent. Ms Marianne Dunham of Francis Abourizk Lightowlers Commercial and Technology Lawyers represented the applicant.

Grounds of Opposition

6. The Notice nominated most of the grounds of opposition available under the Act. The onus is upon the opponent to establish one or more grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

7. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 42(b), 44 and 58A of the Act. None of the evidence served and filed by the opponent appears to go to any of the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

8. Therefore, the grounds remaining for my consideration are those under sections 42(b), 44 and 58A of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for the other grounds of opposition to be considered.

Evidence

9.     The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Lloyd Richard Clark	Director of Match Investments Pty Limited	16 August 2010	LRC-1 to LRC-7
Evidence in Answer
Fiona Newton	Director of Match Realty Ltd	10 March 2011	1 to 10

Section 44

Sections 44(2) to 44(4) of the Act provide:

(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.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

10.   As discussed earlier, the opponent is the owner of trade mark registration 1204714 for the word MATCH. It has an earlier priority date than that of the Trade Mark and is for similar services. It is clear that the applicant’s claim for real estate services in class 36 covers the same services in that class which are claimed by the opponent’s MATCH registration. I also note that the opponent has claimed consultancy services in relation to its real estate services in class 36. I am satisfied that the applicant’s class 35 business consultancy services are similar services to those claimed by the opponent in class 36, particularly, since the applicant’s evidence makes it clear that the services of interest to the applicant are all related to real estate.

11. Section 44(2) will therefore be established if I find that trade mark of registration 1204714 is either substantially identical with, or deceptively similar to, the Trade Mark. There is no definition of the term ‘substantially identical’ in the Act but it has been the subject of judicial comment. The accepted test for determining whether trade marks are substantially identical is whether a side by side comparison gives rise to a ‘total impression of resemblance’[3].  I find there is no total impression of resemblance when the trade marks MATCH and the Trade Mark are compared side by side.

[3] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414

12. Section 10 of the Act defines a ‘deceptively similar’ trade mark as follows:

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.

13.   According to the authorities[4] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole.  Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark.  Similarities in ideas are also a possible source of confusion.

[4] Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

14.   Justice French in Registrar of Trade Marks v Woolworths Ltd[5] observed in relation to the expression “likely to deceive or cause confusion”:

… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

[5] supra

15.   The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[6] where it was stated :

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

[6] (1979) RPC 410 at 423

16.   The decisive question is whether the use of the Trade Mark for the services in classes 35 and 36 given the previous registration for the word MATCH in respect of services in class 36 would result in a real tangible danger of confusion or deception. I believe it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7]

[7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

17.   In comparing the trade marks the common element of both of the marks is the word MATCH. I note that the applicant’s trade mark includes the additional words ‘retail experience, property expertise’, however, the prominent and essential word in all the trade marks is the word MATCH and it is likely that all of the trade marks will be seen and referred to as MATCH by the potential consumer. It is also likely that the prominent word MATCH in the respective trade marks, will induce traders and the public into believing that goods branded with the trade marks emanate from the same trade source.[8]

[8] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

18.   The addition of the words ‘retail experience, property expertise’ to the Trade Mark is a minor variation particularly when the structure of the Trade Mark placed emphasis on the word MATCH which is depicted in large font on top of the additional words in smaller font. The words ‘retail experience’ and ‘property expertise’ are also descriptive of the applicant’s claimed services in classes 35 and 36.

19. I am satisfied there is a real tangible danger of these trade marks being confused in the marketplace. This finding is supported by the degree of compatibility of the respective services of the parties in classes 35 and 36. Taking everything into account, the opponent has established the ground of opposition under the provisions of section 44. However, paragraphs 44(3)(a) or (b) and subsection 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

20. The applicant was able to overcome the section 44 objection during the examination stage by providing evidence of use of its Trade Mark. I have carefully considered this evidence and I am not persuaded that the applicant used the Trade Mark in Australia let alone before the priority dates of the cited registration.

21.   In coming to this conclusion I refer to the statutory declaration of Fiona Newton (‘the Newton declaration’) which states that the applicant is a boutique retail leasing consultancy based in New Zealand which provides services such as leasing agency, hospitality business sales and leasing, retail intelligence, development advisory, project leasing and site acquisition. The Newton declaration states that the applicant works with the majority of Australian retail companies (such as Country Road, Dick Smith Electronics, Harvey Norman and JB Hi-Fi) assisting them with their leasing and retail needs in the New Zealand market. These statements are supported by the exhibits accompanying the declaration which show that the applicant is providing real estate and leasing services for property in New Zealand required by Australian clients (exhibits 2, 3 and 4). However, many of the remaining exhibits are invoices or letters which relate to real estate services regarding New Zealand properties which are being provided to New Zealand companies who are related to Australian companies. Alternatively, all examples of correspondence refer to activities taking place in New Zealand.

22.   Looking carefully at exhibits 2, 3 and 4 accompanying the Newton Declaration I note that exhibit 2 does not contain any reference to the Trade Mark. Exhibit 3 is in regards to the applicant providing advice on a leasing contract for a New Zealand property which had already been negotiated by the client prior to being brought to the applicant. I also note that exhibit 4 is in relation to the client’s sale of its New Zealand business and that the applicant looked forward to helping its client with any further matters throughout New Zealand. In all of these cases it appears that the client already had interests in New Zealand and has approached the applicant when requiring real estate services. There is no evidence before me that the applicant has actively sought to advertise its services in Australia to Australian clients. I note the applicant’s proposition that New Zealand and Australia are often seen as the same region by multinational corporations. However, dealing with the New Zealand branch of a multinational corporation does not automatically mean that the applicant is offering or selling its services to Australian customers particularly when there is nothing in the applicant’s evidence to support this proposition.

23.   The Newton declaration states that the vast majority of the applicant’s marketing is done through work of mouth or on a referral basis so it is unlikely that there would be examples of advertisements in this situation. Ms Newton states that the applicant has actively sought Australian clients with the applicant’s primary marketing focus for the last three years being as the lead sponsor of the annual New Zealand Property Council’s Retail Conference. However, these are all activities which have occurred after the priority date of the opponent’s trade mark registration and which are not supported by the evidence. While the evidence does clearly demonstrate use of the Trade Mark in New Zealand since at least 2004, a consideration of the evidence demonstrates that the applicant had not used the Trade Mark in Australia before the opponent’s priority date. I note that even if I were to accept some of the invoices as being evidence of use in Australia, the evidence provided would simply not be sufficient to apply the provisions of paragraphs 44(3)(a) or (b) and subsection 44(4). This is because a few incidental and non-continuous instances of an Australian company facilitating its New Zealand branch’s lease agreements in New Zealand is not sufficient evidence of prior or continuous use of a trade mark in Australia. I have considered Carnival Cruise Lines Inc v Sitmar Cruises Limited[9] but I am not satisfied from the evidence before me that the situations are analogous.

[9] [1994] FCA 936; (1994) Aipc 91-049 (1994) 120 ALR 495 (28 February 1994)

24. The applicant has not been able to provide sufficient evidence of use before its filing date so the provisions of section 44(3)(a) are not applicable. Nor has the applicant been able to provide any evidence which would support acceptance of its trade mark because of other circumstances relevant to a consideration of the provisions of section 44(3)(b). Therefore, the opponent has established the section 44 ground of opposition.

25. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

26. Section 55 of the Act provides:

Decision

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.

27. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 44 argued at the hearing. Accordingly, I refuse to register trade mark application 1240733.

Costs

28. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Match Realty Limited.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

15 October 2012