Mayne Co Investments Pty Ltd v Dinsmit Pty Ltd

[2022] ATMO 226

TRADE MARKS ACT 1995

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

Re:Opposition by Mayne Co. Investments Pty Ltd to registration of trade mark application number 2100745 (class 44) – INTEGRATED SMILES & DEVICE – in the name of Dinsmit Pty Ltd as trustee for the McIvor Dental Surgery Trust

Delegate:

Katrina Brown

Representation:

Opponent: Melissa Marcus of Counsel, instructed by MacMillan Trade Marks Attorneys

Applicant: Chris Round and Pete Knowles, K&L Gates

Decision:

2022 ATMO 226

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 60 and 62A – no ground established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Mayne Co. Investments Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade mark no: 2100745

Trade mark:  

(‘Trade Mark’)

Applicant:Dinsmit Pty Ltd as trustee for the McIvor Dental Surgery Trust (‘Applicant’)

Filing date:  2 July 2020

Specification:  Class 44 - Dentistry; dental hygiene services; dental surgery services; implant dentistry services, periodontic dental services; prosthodontic dental services; oral and maxillofacial surgery services; orthodontic services; x-ray services; patient services relating to patient imaging (including by x-ray, ultrasound, computed tomography scans), analysis and reporting of results of such imaging; information and consultancy services relating to health care and dentistry; cosmetic dentistry; cosmetic treatment services; cosmetic injection treatment services including skin enhancement treatments; botulinum toxin injections treatments; dermal filler injections treatments; facial filler injection treatments; temporomandibular joint disorder treatment services; medical services for the treatment of facial pain; oral surgery services; oral medicine services; myofunctional therapy services; breathing retraining services; sleep apnoea diagnostic and monitoring services; healthcare services, namely, treatment of patients with snoring and sleep apnoea disorders; providing information in the field of snoring and sleep apnoea disorders consultancy and advisory services in relation to dentistry and dental surgery services (‘Applicant’s Services’)

1. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 3 December 2020.

2. The Opponent filed a Notice of Intention to Oppose on 20 January 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 19 February 2021.

3. The Applicant filed a Notice of Intention to Defend on 7 April 2021.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Roslyn Joy Mayne (Director of the Opponent) made on 29 June 2021 with Exhibits RJM-001 to RJM-013 (‘Mayne Declaration’); and

• Declaration of Roslyn Joy Mayne made on 11 November 2021 with Exhibit RJM-001.

1. The Applicant filed the following declaration as evidence in this matter:

• Declaration of Dinesh Rao (Director of the Applicant) made on 1 September 2021 with Annexures DR-1 to DR-27 (‘Rao Declaration’).

1. The Applicant’s evidence contains a number of letters exchanged between the parties and/or their legal representatives that are marked ‘without prejudice’ (‘Without Prejudice Correspondence’). A delegate may be informed on any matter that is before them in a way that the Registrar reasonably believes to be appropriate.[1] In the circumstances of this proceeding, it is not appropriate for me to consider the contents of the Without Prejudice Correspondence as the Opponent has expressly stated that it does not waive its privilege in relation to that correspondence. 

   [1] Trade Marks Regulations 1995 (Cth) reg 21.15(4).

2. Once the time allowed for filing evidence ended, a hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 21 September 2022. The Opponent was represented by Melissa Marcus of Counsel. The Applicant was represented by Chris Round and assisted by Pete Knowles, both of K&L Gates. The hearing was observed by Roslyn Mayne.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The ground under s 58 was not pressed by the Opponent at the hearing. As such, I consider the ground under s 58 to be abandoned.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 2 July 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 44

1. Section 44 of the Act relevantly provides:

   (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.

2. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods. 

3. In the SGP, the Opponent nominated the following trade marks (‘Opponent’s Trade Marks’) as the basis for this ground of opposition:

Trade mark no:	1515131	2095454
Trade mark:	(‘Opponent’s Composite Mark’)	(‘Opponent’s Device Mark’)
Owner:	Opponent
Priority date:	19 September 2012	12 June 2020
Specification:	Class 44: Dentistry; dental surgery services; oral surgery services; orthodontistry; consultancy relating to surgery; advisory services relating to medical services; compilation of medical reports; conducting of medical examinations; provision of information relating to medicine; X-ray services; rental of dental apparatus	Class 44: Dentistry; Dental surgery services; Oral surgery services; Orthodontistry; Consultancy relating to surgery; Advisory services relating to medical services; Conducting of medical examinations; Provision of information relating to medicine; X-ray services; Rental of dental apparatus; Services for the preparation of medical reports

1. From the information set out above, it is evident that the Opponent’s Trade Marks are held in a name other than that of the Applicant, have a priority date which is earlier than the Relevant Date, and are in respect of services similar to the Applicant’s Services.

2. The Opponent does not assert that the Trade Mark is substantially identical to either of the Opponent’s Trade Marks. For the sake of completeness, in my opinion a total impression of resemblance does not emerge from a side by side comparison of the Trade Mark and the Opponent’s Trade Marks. I am satisfied that the trade marks are not substantially identical.

3. My next consideration is whether the Trade Mark is deceptively similar to the Opponent’s Trade Marks. Section 10 of the Act defines deceptively similar as:

   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.

4. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on deceptive similarity:

   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 [trade mark].[4]

   [4] [1963] HCA 66, [13].

5. As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Opponent’s Trade Marks and of the Trade Mark. I must consider the look, sound, and idea conveyed, allowing for imperfect recollection.

6. The Opponent asserts that the trade marks are deceptively similar due to the shared essential feature, namely a flower device with petals shaped as molars.

7. As a preliminary observation, I note that it is not surprising for devices of teeth to be used in respect of dental services. Perhaps more surprising, it is seemingly not entirely unusual for flower like devices to be used in association with dental services. Annexure DR-7 to the Rao Declaration contains examples of at least six Australian dentistry practices using logos containing varying depictions of teeth arranged in a manner reminiscent of a flower.

8. I agree with the Opponent that the Trade Mark and the Opponent’s Trade Marks all contain a device reminiscent of a flower with petals shaped as molars. However, this does not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

   That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[5]

   [5] [2021] FCA 328, [245].

9. The extracted petal is a memorable feature of the Opponent’s Trade Marks. It is particularly striking and likely to contribute to a consumer’s general impression or recollection. In my opinion, the impression a person of ordinary memory and intelligence would have of the device in the Opponent’s Trade Marks is that of a flower with an extracted petal. Additionally, as the extracted petal is quite obviously in the shape of a molar and bearing in mind the nature of the Applicant’s Services, an ordinary consumer may carry away and retain the idea of tooth extraction.  

10. The Trade Mark does not bring to mind any association with extraction. The device element in Trade Mark consists of 5 molars arranged around a central pentagon. The molars are somewhat more angular in shape and do not overlap or intersect. The likely impression of the device in the Trade Mark is that of a complete flower.  

11. Additionally, the trade marks must be considered in their entirety.[6] The Trade Mark contains the words ‘Integrated Smiles’. The Opponent’s Device Mark does not contain any word elements. The Opponent’s Composite Mark contains the words ‘Goulburn Valley Orthodontics’. These words are not similar in look or sound to ‘Integrated Smiles’, and there is no apparent logical nexus of close association between them. The placement of the words is also different; in the Trade Mark the words are underneath the device element whereas the words are to the right of the device in the Opponent’s Composite Mark. Furthermore, I note that where a trade mark combines a device with a word (or words), customers will more naturally refer to the word.  

    [6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).

12. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the services are offered and the character of the probable acquirer of the services.[7] The services in this matter are broadly speaking dentistry and medical services. They are personal care services and can be of considerable expense, consequently they are typically engaged with a relatively high degree of care and attention. 

    [7] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).

13. Assessing the trade marks in their entirety, and the likely impression on the mind of the relevant consumer, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Marks.

14. Consequently, the ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. The Opponent relies on the reputation in the Opponent’s Trade Marks as the basis for this ground of opposition.

Reputation

1. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[8] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[9] number of people or potential consumers but this is tempered by the nature of the relevant market. In the current matter, the services are dentistry and medical services. The relevant market for such services would be a wide cross section of the population.

   [8] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

   [9] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

2. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent[10] and it must exist at the Relevant Date. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[11]

   [10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

   [11] [2019] FCA 923 [83] (O’Bryan J).

3. Turning to the Opponent’s evidence in this matter, the Mayne Declaration states that the Opponent’s Device Mark has been used continuously since 2012, approximately 8 years before the Relevant Date. It is declared that use of the Opponent’s Device Mark has been vast and wide reaching. However, the Opponent has not provided sufficient material to support this statement. For example, the Opponent has not provided an indication of the revenue derived from services in connection with the Opponent’s Trade Marks, nor has the Opponent provided any indication of the expenditure on marketing and/or promoting the Opponent’s Trade Marks.

4. Exhibit RJM-002 to the Mayne Declaration contains examples stated to demonstrate use of the Opponent’s Device Mark. Firstly, I note that the examples largely show use of the Opponent’s Composite Mark. Additionally, many of the examples are undated. Although dated extracts from the Opponent’s website have been provided, the Opponent has not provided any means to determine the exposure of this website in the Australian market, such as the number of hits or page views before the Relevant Date. Similar issues apply to the article published in The Advisor and the advertisement in the Yellow Pages. In respect of the latter, I acknowledge that an indication of the ‘Yellow Pages Network’ in the local area has been provided for 2012. However, there is no indication as to the size of this network in any of the other years from 2013 to 2020.

5. Exhibit RJM-003 to the Mayne Declaration consists of an information booklet referred to as a Smile Care Kit. Exhibit RJM-003 contains invoices to the Opponent from the supplier of these booklets. The invoices indicate that a relatively small number of these booklets were supplied to the Opponent over this period. Additionally, there is no indication of when, to whom and how many of these booklets were actually distributed. This deficiency is exacerbated because the Opponent has not provided any indication of client numbers.  

6. Overall, the Opponent’s evidence lacks the specificity to establish, as a matter of fact, that either of the Opponent’s Trade Marks had acquired a reputation in Australia amongst a significant or substantial number of consumers at the Relevant Date.  

7. Even if I were to proceed on the basis that the Opponent had demonstrated the existence of a reputation in Australia, that reputation would be limited and in respect of the Opponent’s Composite Mark. Bearing in mind the limited nature of any reputation, and the differences between the Trade Mark and the Opponent’s Composite Mark, I would not be satisfied that use of the Trade Mark would be likely to deceive or cause confusion.

8. The ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law.

2. The Opponent asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off and copyright infringement.

ACL

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[12]

   [12] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

2. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[13]

   [13] [1989] FCA 506, [40] (Hill J).

1. Section 18 of the ACL is the equivalent of s 52 of the TPA.[14] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [14] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

2. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Copyright

1. Section 36(1) of the Copyright Act 1968 (Cth) (‘Copyright Act’) provides:

   Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

2. Section 14(1)(a) of the Copyright Act provides that doing an act in relation to a work, includes the doing of that act in relation to a substantial part of the work.

3. In support of this ground, the Opponent relies on its ownership of the copyright in the Opponent’s Device Mark. For the purposes of this discussion, I accept that the flower device is an original artistic work of Roslyn Mayne, noting that the threshold is not particularly rigorous[15] and that the Applicant did not contest the subsistence of copyright.

   [15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [17] (Madwick J).

4. Copyright in an original artistic work provides exclusive rights to reproduce a work in material form, and to publish the work. Reproduction of a copyright work requires two elements to be satisfied: an objective similarity between the relevant works and a causal connection.[16]

   [16] SW Hart & Co v Edwards Hot Water Systems [1985] HCA 59, [4] (Gibbs CJ).

5. Having regard to the significance of the similarities and dissimilarities between the Trade Mark and the Opponent’s Device Mark, as discussed in regards to the ground of opposition under s 44 of the Act, I am not satisfied that the Trade Mark constitutes a reproduction of the Opponent’s Device Mark or a reproduction of a substantial part of it.

6. The ground of opposition under s 42(b) of the Act has not been established.

Section 62A

1. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[17]

   [17] [2013] FCA 478, [62].

3. Accordingly, I must determine what the Applicant knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether it fell short of acceptable standards of commercial behaviour in applying for the Trade Mark.[18] In doing so, I note that all of the surrounding circumstances are relevant to determining bad faith.[19]

   [18] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [166] (Dodds-Streeton J).

   [19] Ibid [167] (Dodds-Streeton J).

4. The Opponent submits that the application for the Trade Mark was filed in bad faith because not only was the Applicant aware of the Opponent and the Opponent’s Trade Marks, but it was also aware that the Opponent thought the trade marks were too similar.

5. I accept that the Applicant was aware of the Opponent and the Opponent’s Trade Marks at the Relevant Date. Prior to the Relevant Date, the parties had interactions with one another including in June 2020 when the Opponent contacted the Applicant after seeing an announcement on Facebook of the Applicant’s intention to adopt the Trade Mark as part of its branding. During the course of this interaction, the Opponent informed the Applicant that it was concerned about the similarity between the Opponent’s Trade Marks and the Trade Mark.

6. However, mere awareness of the Opponent and the Opponent’s Trade Mark is not, of itself, sufficient to amount to bad faith. Furthermore, I note my finding in relation to the ground under s 44 of the Act, namely that the trade marks are not deceptively similar.

7. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [20]

   [20] [2009] ATMO 26, [12] (emphasis added).

8. The evidence before me does not establish that the knowledge of the Applicant at the Relevant Date was such that the decision to apply for the Trade Mark would be regarded as in bad faith by persons adopting proper standards.

9. The s 62A ground of opposition has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2100745 may proceed to registration one month from the date of this decision.

3. If the Registrar is 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 otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

21 December 2022