Medvisit LLC v Medvisit Pty Ltd
[2018] ATMO 80
•25 May 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Medvisit LLC to registration of trade mark applications 1733136 & 1733171 (both in class 44) - MEDVISIT HOME DOCTOR SERVICE and MEDVISIT HOME DOCTOR SERVICE with device - filed in the name of MedVisit Pty Ltd.
Delegate: | Nicole Worth |
Representation: | Opponent: written submissions prepared by Michael Seifried, FB Rice Patent and Trade Mark Attorneys. Applicant: written submissions prepared by Kelvin Lord, Lord & Company. |
Decision: | 2018 ATMO 80 Trade Marks Act 1995 (Cth) – oppositions to registration under s 52 – s 44 ground of opposition established – trade marks deceptively similar - goods closely related to services – similar services – insufficient evidence of use to apply provisions of ss 44(3)(a) or 44(4) – evidence does not warrant application of ‘other circumstances’ under s 44(3)(b) – registration refused. |
Background
This decision is pursuant to oppositions by Medvisit LLC (‘the Opponent’) to the registration of the trade marks the subject of the applications detailed below, in the name of MedVisit Pty Ltd (‘the Applicant’). I will refer collectively to the Applicant’s trade marks as ‘the Trade Marks’.
| MEDVISIT HOME DOCTOR SERVICE | |
| Application No.: 1733136 | Application No.: 1733171 |
| Filing date: 7 November 2015 | Filing date: 8 November 2015 |
| Services: Class 44: Advisory services relating to medical problems; Advisory services relating to medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Conducting of medical examinations; Consultancy and advisory services in relation to medical services; Emergency medical services; General practice (GP) medical services; Health care consultancy services (medical); Medical advisory services; Medical care services; Medical clinic services; Medical examination of individuals; Medical health assessment services; Medical treatment services; Preparation of reports relating to medical matters; Providing information including online, about medical services, and veterinary services; Provision of medical assistance; Provision of medical facilities; Provision of medical information; Provision of medical services; Provision of medical treatment; Services for the preparation of medical reports. | Services: Class 44: Advisory services relating to medical problems; Advisory services relating to medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Compilation of medical reports; Conducting of medical examinations; General practice (GP) medical services; Health care consultancy services (medical); Location of medical facilities for emergency medical treatment; Medical advisory services; Medical analysis services; Medical assistance; Medical care services; Medical clinic services; Medical examination of individuals; Medical health assessment services; Medical services; Medical treatment services; Provision of medical assistance; Provision of medical facilities; Provision of medical information; Provision of medical services; Provision of medical treatment; Services for the preparation of medical reports. |
| Endorsement: The following disclaimer has been requested under subsection 74(1): Registration of this trade mark gives no exclusive right to use or to authorise the use of the phrase HOME DOCTOR SERVICE. | Endorsement: The following disclaimer has been requested under subsection 74(1): Registration of this trade mark gives no exclusive right to use or to authorise the use of the phrase HOME DOCTOR SERVICE. |
After the applications were filed they were examined in due course and accepted for possible registration. Their acceptance was advertised in the Australian Official Journal of Trade Marks on 31 March 2016.
On 10 May 2016 the Opponent filed Notices of Intention to Oppose the applications, and on 10 June 2016 it filed Statements of Grounds and Particulars, particularising grounds of opposition under ss 44, 58, 60, 42 and 62A of the Trade Marks Act 1995 (‘the Act’) in respect of both oppositions.
The parties filed evidence in due course, discussed further below. Both parties were informed of their right to be heard, and although neither elected to avail themselves of this option both parties did file written submissions for the Registrar’s consideration.
Now in order that the matter may be decided, it has been allocated to me, one of the Registrar’s delegates, for a decision based on the written record comprising the documents already mentioned and discussed in more detail below.
The Opponent bears the onus of establishing at least one of its grounds of opposition. The relevant standard of proof is the ordinary civil standard of the balance of probabilities,[1] and the relevant dates at which the rights of the parties are to be determined are 7 November 2015 (in respect of application 1733136) and 8 of November 2015 (in respect of application 1733171), the filing dates of the applications.[2]
[1] Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
Evidence
The evidence in this matter comprises declarations by the following persons:
| Evidence in support |
| · Andres Leon, Chief Executive Officer of the Opponent, with exhibits AL-1 to AL-15, made 14 November 2016. |
| Evidence in answer |
| · Asim Shehzad, Director of the Applicant, with exhibits 1 to 14, made 21 February 2017. |
| Evidence in reply |
| · Andres Leon, with annexures AL-1 to AL-5, made 28 April 2017. |
Mr Leon’s first declaration identifies that the Opponent is the owner of a prior trade mark application (now registered), detailed below.
| Trade Mark | (‘the Opponent’s Trade Mark’) |
| Application No. | 1721746 |
| Filing date | 15 September 2015 |
| Goods and services | Class 9: Electronic navigation instruments; Navigation systems using satellite reference Class 38: Providing user access to global positioning signals for navigation purposes Class 42: Computer software design (collectively referred to as ‘the Opponent’s Goods and Services’) |
Mr Leon goes on to explain that the Opponent has its principle place of business in Spain but operates under licence in Europe, the United States of America, New Zealand, Singapore and Australia, and now provides its goods and services in more than 40 countries around the world. It is in the business of providing patients with in-home medical consultations in various locations around the world by local doctors who have registered themselves with the Opponent’s service. It does so by way of an app (being application software) or telephone service, wherein a patient may request a doctor via the app or a telephone call and that request is sent, via the app, to doctors in an approximately 15 km radius of the patient’s location. The app also allows patients to pay for the services they are provided and to rate the doctor who provided the consultation.
It is in the context of providing medical consultations that Mr Leon asserts the Opponent’s Goods and Services are used, giving the example that ‘electronic navigation instruments’ and ‘navigation systems using satellite reference’ are used ‘in the context of patients and medical practitioners being able to use those particular instruments to arrange an in-house consultation’. He declares that the Opponent first used its trade mark in Spain on 24 February 2014 and in Australia in November 2014. He provides a small amount of documentation supporting the Opponent’s claimed use in Australia, however as will become clear it is not necessary to describe further the statements and exhibits of Mr Leon’s declaration.
On behalf of the Applicant Mr Shehzad declares that his company provides medical doctor home visit services, and has done so since April 2015. These services have been provided under the name MEDVISIT as well as the device below, amongst other common-law trade marks.
Mr Shehzad describes the ways in which customers may request the Applicant’s services, which includes both telephone and electronic bookings via the Applicant’s website or app.
The services have been provided in Adelaide, South Australia, with a view to expanding Australia-wide. The declared total value of the services provided under the Trade Marks (as at the date of Mr Shehzad’s declaration) is significant, although the value as at the filing dates of the applications is not provided. Similarly, the declared amount of advertising expenditure since the Applicant commenced trade is significant, but the amount as at the filing dates is not provided.
No invoices or receipts for services provided by the Applicant are exhibited to Mr Shehzad’s declaration, although the following documents are provided:
| Date | Document |
| 24 March 2015 | Certificate of company registration for MEDVISIT PTY LTD. |
| 24 May 2015 | Email from the jobseeker website ‘seek.com.au’ for confirmation of Mr Shehzad’s registration as a seeker of candidates on behalf of the Applicant. |
| 29 May 2015 | Invoice for fees paid for the Applicant’s accreditation as a provider of GP services. |
| 1 April 2015 – 30 June 2015 | Business Activity Statement (BAS) of the Applicant from the Australian Taxation Office. |
| 7 April 2015 | Email from the Applicant’s contracted printer confirming a shipment of brochures and fridge magnets. (Copies of the brochure and fridge magnet are exhibited and it is declared they were distributed to about 30,000 homes in South Australia, although it is not stated when they were distributed). |
| 10 April 2015 | Email from Apple iTunes Store® informing Mr Shehzad that the status of the ‘Medvisit’ app was ‘in review’ for publication. |
| 15 April 2015 | Email from the Australian Communications and Media Authority to the Applicant for confirmation of its right to use a particular ‘1300’ telephone number. |
| 20 April 2015 | Email from Mr Shehzad’s website developer that the ‘Medvisit’ website was built and ready to be uploaded. |
| 30 June 2015 | Invoice for payment of Medical Director’s fees from the Applicant to an individual. |
| 18 March 2016 | An image of the Applicant’s Facebook® page showing that it uploaded a photo of its logo on 4 June 2015. |
Mr Shehzad describes why he selected the name ‘Medvisit’, being that it was a contraction of the term ‘medical visit’ and therefore referred to a visit to a patient from a medical doctor. He adopted the ‘pin’ device (being the drop shaped device used in online mapping applications, such as Google® Maps, to identify specific locations) to represent a location to which a doctor is dispatched. He declares he was unaware of the Opponent’s business and trade marks until November 2015 when the Opponent disputed the publication of the Applicant’s app in the Apple® App Store and Google Play Store®.
The Law
Section 44 of the Act, under which I will decide this matter, relevantly provides:
44. (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) 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 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.
(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.
(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.
The Opponent relies upon its prior trade mark application, identified in paragraph 6, to substantiate the ground under s 44.
Accordingly, applied to the matter at hand the questions for my determination are:
whether the priority dates of the Trade Marks are later than those of the Opponent’s Trade Mark;
whether the Trade Marks are in respect of services ‘similar’[3] to the Opponent’s services or closely related to the Opponent’s goods;
whether the Trade Marks are substantially identical with or deceptively similar to the Opponent’s Trade Mark; and
whether, if the previous questions are answered in the affirmative, I am satisfied that there has been honest concurrent or prior continuous use of the Trade Marks or that other circumstances exist which would make acceptance of the applications proper.
[3] As defined in s 14 of the Act, namely the same services or services ‘of the same description’.
Reasons
The priority dates of the Trade Marks are later than that of the Opponent’s Trade Mark, a matter which is not contested.
Before entering into a discussion of the parties’ respective trade marks, services and goods I note these are matters that should not necessarily be considered in isolation, as articulated by French J in Registrar of Trade Marks v Woolworths (‘Woolworths’):
In the end there is one practical judgement to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgement into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.[4]
[4] [1999] FCA 1020, [40].
Accordingly, although each matter is discussed in turn the conclusions made in each are informed by both the degree of resemblance between the parties’ trade marks and the similarity or closeness of the relationship between their goods and services.
Given that the question of similarity between the parties’ trade marks is relatively straight forward, I begin with that discussion and then move on to examine whether the Applicant’s services are similar to the Opponent’s services or closely related to the Opponent’s goods.
For ease of reference the parties’ trade marks are reproduced below.
| Opponent’s Trade Mark | Trade Marks | |
| MEDVISIT HOME DOCTOR SERVICE | ||
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’)[5] Windeyer J described the test for substantial identity as:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[5] [1963] HCA 66, [12].
I do not consider that the Trade Marks are substantially identical to the Opponent’s Trade Mark. In a side-by-side comparison the absence of a ‘pin’ or ‘drop’ device in the Applicant’s word trade mark is plain. In respect of the Applicant’s device trade mark the difference in placement of the ‘pin’ or ‘drop’ device as well as the difference between the house device and the cross device contained within each respective ‘pin’ is likely to be noted. Similarly the words ‘{a doctor wherever you are}’ and ‘Home Doctor Service’ are clearly different, though they are discounted somewhat on account of them being suggestive, if not purely descriptive, of the businesses that use them.
Accordingly, where the trade marks in question are side by side before the observer, they are not so similar that a total impression of resemblance emerges and hence they are not substantially identical.
Deceptive similarity on the other hand relies upon impression rather than a side by side comparison. The expression ‘deceptively similar’ is defined in s 10 of the Act 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’. Windeyer J continued his discussion in Shell as follows:
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 [Opponent’s Trade Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Trade Mark]. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.[6]
[6] Above n. 5, [13].
Whilst the differences between the parties’ trade marks, articulated in paragraph 25, may well be noted in a side by side comparison, those differences diminish when considering the impressions left by the trade marks, particularly bearing in mind that those impressions may be imperfectly recalled.[7] The primary identifying word of each trade mark, MEDVISIT, is identical. It is a distinctive, invented word (albeit that it is likely to be construed as a contraction of the words ‘medical visit’) thereby increasing the likelihood that the public will attribute a common source to the businesses using it.[8] The words ‘{a doctor wherever you are}’ and ‘home doctor service’ merely suggest or describe the nature of the respective businesses. They are unlikely to be recalled accurately, if at all, by the public given they bear the character of a tagline that merely indicates what it is the business does.
[7] Rysta Ltd’s Application (1943) 60 RPC 87, 108-109.
[8] William Bailey (Birmingham) Ltd’s Application (1935) 52 RPC 136, 153.
The Opponent’s Trade Mark and the Applicant’s device mark also contain a ‘pin’ or ‘drop’ device, implying that the goods or services involve locating (in this case locating a doctor). Whether the ‘pin’ device contains an image of a house as opposed to a cross is the sort of detail likely to be imperfectly recalled, particularly given those images are not prominent in the context of the entirety of the marks. Similarly, the precise location of the ‘pin’ device in the parties’ trade marks is likely to be imperfectly recalled. Rather it is more likely that the public will recall simply that a ‘pin’ device was present.
I am accordingly satisfied that the Trade Marks are deceptively similar to the Opponent’s Trade Mark. I turn then to the question of whether the Applicant’s services are similar to those of the Opponent, or closely related to the Opponent’s goods.
The Full Federal Court of Australia recently contemplated the notion of ‘services of the same description’ in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[9] albeit in the context of infringement under s 120 of the Act. Their Honours noted that the notion of services ‘of the same description’ is broader than whether services are true equivalents. They also listed the following as relevant considerations for determining services of the same description:
[9] [2017] FCAFC 56, [332]-[339].
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].[10]
[10] Above n.9, [339].
The Opponent’s services are ‘providing user access to global positioning signals for navigation purposes’ and ‘computer software design’. The Applicant’s services are listed in the table at paragraph 1, which I will summarise as various medical services. Whilst in a prima facie assessment these would not necessarily be considered similar services, the evidence provided in this matter demonstrates that both parties are operating the same kind of business. They are both concerned with the provision of medical consultations at a patient’s location (as opposed to a doctor’s surgery or emergency ward), arranged via an app that each party has created, as well as through a telephone service. They have specified in their applications different aspects of the services they provide. Nonetheless the evidence highlights how use in a normal and fair manner by each party within the scope of their respective specifications would be likely to result in deception or confusion.
Here it is shown that the Opponent’s ‘computer software design’ and ‘[provision of] user access to global positioning signals for navigation purposes’ is in relation to application software designed for use by patients to request nearby doctors and doctors to locate nearby patients, in order that medical consultations may take place wherever the patient is located. It is also shown that the Applicant’s medical services are provided at the patient’s location, and are requested by ways including an app and a website, which dispatches doctors to patients’ locations. Had the Opponent been more specific about the nature of its services in its application, so that their context and purpose was explicit, then it is likely that its trade mark would have been cited against the Trade Marks at the examination stage. As it stands, however, it is the evidence provided by the parties which demonstrates that deception or confusion is likely should they use their trade marks within the scope of their respective specifications, owing to the similarity of their relevant markets, the way in which their services are engaged, and their ultimate purpose.
Similar comments may be made in respect of the Opponent’s goods. On their face ‘electronic navigation instruments; navigation systems using satellite reference’ are not necessarily goods closely related to medical services. However, when they are viewed in the context of such instruments and systems provided for the purpose of locating doctors and patients to provide medical consultations at the patient’s location, their relationship is illuminated. It is also a business reality that the link between the methods used to engage services and the services dispatched is increasingly converging, owing to modern technology and the prevalence of portable electronic devices. Uber® for example claims both transportation services and various software-access related services in its registrations. Similarly Deliveroo® claims both services for the provision of food and drink and various goods relating to computer software.
Considered in the context of trade marks with a high degree of resemblance, which of themselves also have a high degree of distinctiveness, it is very likely that (in Woolworths terms[11]) the result of the Applicant’s use of its trade marks upon its services would be that a number people are caused to wonder whether they come from the same source as the Opponent’s Goods and Services, or entertain a reasonable doubt that this is the case.
[11] Above n. 4, [50], wherein it is stated ‘A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt’.
I am therefore satisfied that the Trade Marks are deceptively similar to the Opponent’s Trade Mark and are in respect of similar services and services closely related to the goods of the Opponent. Section 44(2) is accordingly established and I turn to the question of whether the Applicant can avail itself of either of the provisions of ss 44(3) or (4).
The filing date of the applications is the relevant date for the assessment of ss 44(3)(a) and 44(3)(b).[12] As at 7 and 8 November 2015 the Applicant had undertaken a number of activities in preparation for entering the market, including registering itself as a company, developing its website and app, securing its telephone number, and taking steps to advertise itself to the public. The difficulty with the Applicant’s evidence is that very little is shown of its use of the Trade Marks in the public domain. It is only the image of the Applicant’s Facebook page, showing that a depiction of its logo was uploaded on 4 June 2015, which provides any dated evidence of public use. Moreover this use took place only 5 months before the applicant filed its applications. This is an insufficient basis upon which to apply the honest concurrent use provisions of s 44(3)(a). Nor is there any apparent ‘other circumstances’ which would make registration proper (and the Applicant itself makes no submissions in this regard). As such I am not satisfied that the provisions of 44(3)(b) should be applied.
[12] Tivo Inc v Vivo Corporation Pty Ltd [2012] FCA 252, [244] and [295]-[297].
In terms of prior continuous use, under s 44(4), the evidence of public use is again insufficient. The Applicant does not state how much of its advertising expenditure relates to the period before filing, or how much of the value of its services were provided prior to filing. Nor does it state when its brochure and fridge magnets were distributed to the public. The single instance of dated public use (being the image of the logo upon the Applicant’s Facebook® page) is an insufficient basis upon which to conclude that prior continuous use of the Trade Marks has taken place. For that reason I am not satisfied that the provisions of s 44(4) should be applied.
The ground of opposition under s 44 is accordingly established. It is therefore not necessary for me to address the remaining grounds of opposition, although the Opponent may rely upon them (or any other ground) in the event of an appeal.
Decision and costs
Section 55 of the Act relevantly provides:
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.
Note: For limitations see section 6.
The Opponent has established the ground of opposition under s 44 of the Act. I therefore refuse to register trade mark applications 1733136 and 1733171.
Both parties sought an award of costs. Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks and Designs Hearings and Oppositions
24 May 2018
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