Mint Payments Limited v Intuit Inc

[2018] ATMO 158

TRADEMARKSACT 1995

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

Re:      Opposition by Mint Payments Limited to registration of trade mark application 1746965 (9, 35, 36, 42) - MINT.COM - filed in the name of Intuit Inc.

DELEGATE:

Jock McDonagh

REPRESENTATION:

Opponent: Not represented at hearing, no submissions

Applicant:  Siobhan  Ryan  of  Counsel,  instructed  by Davies  Collison Cave, Attorneys

DECISION:

2018 ATMO 158

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b), 44, 58 and 60 considered – no grounds established – trade mark to proceed to registration

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Intuit Inc. (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No

1746965

Trademark:

MINT.COM
(‘the Trade Mark’)

PriorityDate:

4.02.2010 (Convention)

Specification:

Class 9: Computer software for personal and small business financial management; computer software for online banking, transaction management, financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; computer software for creating reports and graphs; computer software for forecasting and analysis of data; computer software for data aggregation; computer software for providing wireless access to data and databases; computer software for enabling users to retrieve account balance and transaction information using mobile phones, smart phones, and mobile telecommunication networks; none of the foregoing being computer software for providing alerts

Class 35: Providing information, news, opinions, and advice in the

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 3 March 2016.

1. Mint Payments Limited (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 29 April 2016. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

1. I note that there are separate opposition proceedings that have been initiated by a different opponent; however, that opposition has not yet been heard or otherwise determined.

1. I heard the matter by in Canberra on 3 July 2018 as a delegate of the Registrar of Trade Marks. The Opponent was not represented at the hearing nor did it file any submissions for my consideration. The Applicant was represented by Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Attorneys.

Grounds of Opposition

6. The Opponent nominated the following grounds of opposition under the Act, all of which were pressed at the hearing:

·Section 41: Trade mark not capable of distinguishing the Applicant’s goods and/or services.

·Section 42(b): Use of the Trade Mark would be contrary to law;

·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

·Section 58: Applicant not the owner of the trade mark; and

·Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia.

7.     To succeed in its opposition the Opponent bears the onus of establishing at least one of these grounds on the ‘balance of probabilities’.1

8.     The time at which the grounds of opposition must be established is the Priority Date.2

Evidence

9.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
David Tien-Ming Owyong (‘Owyong’)	CFO and company secretary of Opponent	21.09.2016	DO-1 to DO- 33
Evidence in Answer
Roseanne Mannion (‘Mannion’)	Attorney employed by Applicant’s attorney firm	23.12.2016	RM-1 to RM- 8
Larisa Vella-Xuereb (Vella-Xuereb)	Private Inquiry Agent	23.12.2016	LVX-1
Todd Santos (‘Santos’)	Senior Manager – IP Programs of Applicant	2.01.2017

1. Owyong  is  made  by  the  Chief  Financial  Officer  and  company  secretary  of  the Opponent. He has held this position since August 2011.

1 Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

2 See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

1. At [13] Owyong states that the Opponent was formerly known as Mint Wireless Ltd, for the period 16 November 2006 to 8 December 2014. References to ‘the Opponent’ are for both names.

1. Owyong states that the Opponent is the owner of the following Australian trade mark registrations (‘the Cited Marks’), and exhibits supporting extracts taken from the Register of Trade Marks (‘the Register’):

Trade Mark No.	Trade Mark	Classes of Goods/services	Priority Date
1089514	MINT	Class 9: Hand-held electronic devices for facilitating electronic payments, including such devices capable of facilitating credit card payments        and printing reciepts/tax invoices in respect of such payments; parts, fittings and accessories          for          the aforementioned goods; but not including computer software	7.12.2005
1094385	Class 9: Hand-held electronic devices for facilitating electronic payments, including such devices capable of facilitating credit card payments        and printing receipts/tax invoices in respect of such payments; parts fittings and accessories          for          the aforementioned goods; but not including computer software	16.01.2006

1. Owyong [23] describes the Opponent’s business as follows:

Mint Payments is a mobile payment and transaction processing company. The primary focus of Mint Payments is to supply products and services that enable corporate enterprises, small and medium sized businesses, business operators (including sole traders), app developments and merchants of all types to accept, process and record credit and debit card payments on iOS, Android, Windows and various other mobile phone and other portable platforms. Mint Payments supplies to its users, either directly or through Mint Aust, portable electronic devices (hardware) for facilitating electronic payments, software solutions necessary to facilitate, manage, record and report on those payments, technology distribution products and services ancillary to those products.

1. Owyong  Exhibit  DO-25  shows  examples  of  the  type  of  goods  provided  by  the Opponent, for example:

1. Owyong includes some 33 exhibits, which include annual reports, copies of promotional materials, copies of user guides for the Opponent’s goods, media releases, copies of case studies relating to the Opponent’s goods, and copies of revenue figures. I will discuss such exhibits where relevant later in my decision.

1. I now turn to the grounds of opposition.

41  - Trade mark not distinguishing applicant’s goods or services

1. Section 41 of the Act relevantly states:

(1)   An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

(2)     A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)   the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)   the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services. Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

1. The Statement particularised the ground of opposition as follows:

…..The word “Mint” is commonly used to: (a) describe a large amount of money; (b) describe a secure facility to produce or store money and other valuables; and (c) refer to the accumulation of substantial wealth or otherwise indicate wealth. Given its descriptive nature, other traders acting in good faith should be permitted to use the word “Mint” to describe financial products or services used for the generation and management of wealth and finance. Given the descriptive nature of the trade mark and the nature of the goods and services in respect of which the Applicant seeks to register the trade mark, the trade mark is incapable of distinguishing the Applicant’s goods and services as claimed in the application.

1. The Opponent did not submit any evidence to support this ground and has not filed written submissions. Ms Ryan submitted that in these circumstances, the Opponent has not met its burden to prove this argument and has waived this argument. She cited Andando Pty Ltd v DDT Liners (Australia) Pty Ltd [2017] ATMO 124 (23 October 2017) where the Opponent did not file any evidence to support the sections 41, 58, 60, 43 and 62A grounds of opposition claimed in its Statement. In his decision, the Delegate dismissed the the opposition and stated at [12] and [13] :

Each of the grounds detailed in the Statement of Grounds and Particulars requires evidence to satisfy the Registrar that the ground has been established. It follows that, if there is no evidence to support those grounds, the opposition cannot be regarded by the Registrar as having been to any extent established.

1. Ms Ryan submitted that I could therefore dismiss this ground of opposition on that basis. In the alternative, she submitted that the Statement contrives to position “mint” as having a descriptive facility in the context of the specified goods and services.

1. Ms Ryan cited the High Court in Canterella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (Cantarella), which identified a two-step process for determining a mark’s inherent capacity to distinguish; by reference firstly to the ordinary signification of the mark and secondly to whether other traders may wish to use the mark without improper motive.

1. However, the Court stated that the assessment must also take into account the tempering effect of allusion. In Canterella, the majority noted at [59]:

   It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference“ to the relevant goods (prima facie not registrable) or makes a “covert and skillful allusion“ to the relevant goods (prima facie registrable). When the “other traders“ test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

And counselled that:

understanding the distinction is key to resolving this appeal.

1. The word “mint” does not say anything which is directly descriptive of any of the specified goods or services. The words do not make direct reference to the goods or services as assisting customers to make a lot of money. To refer directly to the goods or services having such a benefit, one would need to use ordinary descriptions such as ‘to increase wealth’ or (colloquially) ‘to make a mint. The word ‘mint’ on its own provides no direct description.

1. I am satisfied that the Trade Mark is capable of distinguishing the Applicant’s goods and services. I am not satisfied that this ground of opposition has been established.

Section 44 – Identical etc. trade marks

1. Section 44 of the Act states:

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) 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  goods or closely related   services; or

(ii)a trade mark whose registration in respect of similar  goods or closely related   services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar   goods or closely related   services.

Note 1:     For deceptively similar see section 10. Note 2:    For similar goods see subsection 14(1). Note 3:    For priority date see section 12.

Note4:     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.

(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.

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.

Note4:     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.

Note1:     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.

1. Thus to found its ground of opposition under subsections 44(1) or (2) the Opponent has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·has a priority date earlier than that of the opposed trade mark; and

   ·is  registered  or  made  in  respect  of  the  same  or  similar  goods  or services or closely related goods or services; and

   ·is substantially identical or deceptively similar to the opposed trade mark.

1. The marks relied upon by the Opponent are the Cited Marks shown above at [11], and both of the Cited Marks have a priority date earlier than that of the Trade Mark and are registered in class 9.

1. The evidence does not address the s 44 ground beyond identifying the Cited Marks and the Opponent has not filed written submissions, so there is no elaboration of this ground. Specifically, there is no evidence on the subject of whether the goods of the Cited Marks are similar or closely related to the goods and services of the Opposed

Application. Ms Ryan submitted that the Opponent has the burden of proving this ground, and that by failing to submit evidence and filing submissions, the Opponent has not met the burden.

1. If the section 44 case is put on the basis that the Opponent’s hand-held electronic devices for facilitating electronic payments are similar to the financial management services claimed in the Opposed Application, then this approach is wrong. The Full Court explained the dangers of this approach with reference to ‘property management services’ in MID Sydney Pty Ltd v Australian Tourism Company Ltd3, at IPR 566:

   "It follows, the argument ran, that the business or activities of the manager of an hotel include, as a necessary and substantial part of them, services among those in respect of which the trade mark was registered. In our view, neither the broad nor the narrower submission should be accepted. The answer to the broad submission is, we think, simply that one who conducts or manages a business on property of another is not for that reason alone to be regarded, within the ordinary meaning of the words, as providing property management services."

and at 567:

"But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel. Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which Touraust intends to conduct."

1. The Cited Registrations are limited to Hand-held electronic devices for facilitating electronic payments and specifically excludes computer software. To the extent that the Opponent’s case under s 44 attempts to broaden those claims, it is clearly unsustainable on the principles above.

1. As the Opponent fails on the second limb of the section 44 ground, it is not necessary to consider it further.

3 MID Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 90 FCR 236: 42 IPR 561.

1. I am not satisfied that this ground of opposition has been established.

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

33. Section 60 of the Act provides:

60 Trade mark similar to trade mark that has acquired a reputation in Australia

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.

1. To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

1. It is necessary to bear in mind that each of the Cited Marks is a separate mark for the purpose of considering the operation of section 60 of the Act in the present case4, although for convenience I refer to them collectively below as ‘the MINT Trade Marks’.

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick5 per Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in

   The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

4 Qantas Airways Limited v Edwards [2016] FCA 729 (‘Qantas’) at [160]

5 (2000) 51 IPR 102

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

1. Further, at [86], Kenny J said:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

1. Overall, the Opponent’s evidence of use of its MINT Trade Marks is unreliable and ambiguous. Most of the evidence of use post-dates the Priority Date and is therefore irrelevant. The declarations of Mannion and Vella-Xuereb disclose further inconsistencies.

1. The conventional indicators of reputation, marketing expenditure and sales revenue, which are disclosed at Owyong DO-32 and DO-33 do not assist the Opponent’s case.

1. The revenue figures provided do not indicate the precise goods and services that these figures relate to. Specifically, it is unclear whether such goods are software or hardware goods.

1. The Opponent has provided no invoices that relate to the sale of any MINT goods or services and accordingly there is no evidence that such products were in fact sold.

1. The Opponent bears the onus and it has failed to provide a reliable indication of the nature or extent of the reputation of any of the MINT Trade Marks in Australia pre- 4 February 2010. As the Opponent's evidence does not establish a sufficient reputation it is not necessary to address the likelihood of deception or confusion aspect of section 60.

1. I am not satisfied that this ground of opposition has been established.

Section 42(b): Trade mark’s use contrary to law

1. Section 42 of the Act relevantly provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(b)       its use would be contrary to law.

1. The Opponent nominated the Australian Consumer Law (‘ACL’), but did not nominate specific sections which would allegedly be contravened. I would assume that it would be sections 18 and 29: section 18 when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers, and section 29 where use of the Trade Mark would amount to a ‘false representation’.

1. There must be a ‘real but not remote chance or possibility’ that a customer will be misled or deceived regardless of whether that chance is less or more than 50 percent.6

1. As I have found that the use of the Trade Mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the ACL7, likely to mislead or deceive, nor do I believe use would amount to a false representation.

1. I therefore find that the Opponent has not established the ground of opposition under section 42(b) of the Act.

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. The applicable law regarding ownership of a trade mark in Australia is well known. As eloquently put by Hearing Officer Michael Kirov in L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 at [18]:

6  Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

7 Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited 1982] HCA 44.

The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods8 (or in relation to  goods considered to be “the same kind of thing” or to apply to register it).9

1. The reference to a trade mark includes one that is at least substantially identical to it10.

1. Insofar as the Opponent’s case depends on prior registration no 1089514(9), the question is whether the class 9 goods for which the Cited Mark is registered are the same kind of thing as the goods applied for under the Opposed Mark. They are clearly not. The express exclusion of software is fatal to the Opponent’s case.

1. I am not satisfied that the Opponent has established this ground of opposition.

Decision

1. Section 55(1) of the Act 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.

1. Subsection (3) does not apply to these proceedings.

1. The opponent has not established any grounds of opposition. Subject to any decision relating to the separate opposition proceedings I mentioned at [4], the Trade Mark application may accordingly proceed to registration. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

8 Seven Up Co v OT Ltd (1947) 75 CLR 203.

9 Re Hicks’ Trade Mark (1897) 22 VLR 636.

10  Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Jock McDonagh Hearing Officer

   Hearings and Oppositions 2 October 2018