Moores MDP Pty Ltd v Moore Stephens International Licensing
[2023] ATMO 86
•29 June 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Moores MDP Pty Ltd to application by Moore Stephens International Licensing Limited for removal of trade mark 946814 (36, 42) – MOORES LEGAL (fancy) - in the name of Moores MDP Pty Ltd
and
Opposition by Moores MDP Pty Ltd to extension of protection of International Registration 1468802 (35) (Australian trade mark application 2012729) – MOORE – held by Moore Stephens International Licensing Limited
and
Opposition by Moores MDP Pty Ltd to registration of the trade mark subject of application 2059069 (35) – MOORE (figurative) – in the name of Moore Stephens International Licensing Limited
Delegate: Robert Wilson
Representation: Opponent: Ian Horak SC, instructed by MWL Ebsworth Lawyers
Applicant: Sonia Stewart of Counsel, instructed by Clayton Utz
Decision: 2023 ATMO 86
Trade Marks Act 1995 (Cth) – Three oppositions considered: Section 96 opposition to application for removal – unsuccessful – trade mark to be removed from Register; Regulation 17A.33 opposition to extension of protection to Australia – unsuccessful – protection to be extended to Australia; and, s 52 opposition to registration of trade mark – s 44 ground successful – registration refused
1. This document concerns three separate matters: an opposition to an application to remove trade mark 946814 from the Register of Trade Marks on the basis on non-use (‘Removal Opposition’); an opposition to extension of protection of International Registration 1468802 (Australian trade mark application 2012729) (‘IRDA Opposition’); and an opposition to registration of the trade mark the subject of Australian trade mark application 2059096 (‘Standard Opposition’). The three matters are considered together here because the outcome of the Removal Opposition potentially affects both of the other oppositions and the evidence filed in the other oppositions is the same. The background to the matters is provided, below, following which the oppositions are considered in turn.
Background to the Removal Opposition
2. Moores MDP Pty Ltd (‘Opponent’) is the registered owner of trade mark registration 946814, relevant details of which are as follows:
Trade Mark Number:
946814
Filing Date:
12 March 2003
Specification:
Class 36: Advice on real estate affairs, purchasing of real estate, sale of real estate, leasing of real estate, development of real estate; financial planning and investment advice; financial services; lending and investment services; provision of loans
Class 42: Legal services, provision of legal advice, legal analysis, legal consultancy, legal research, intellectual property consultancy, intellectual property watching services, licensing of intellectual property, intellectual property registration services, litigation services, real estate conveyancing
(‘Challenged Services’)
Trade Mark:
(‘Challenged Trade Mark’)
Endorsements:
Provisions of subsection 41(5) applied.[1]
[1] Unless otherwise indicated, any references to Parts, sections or regulations, below, are references to parts, sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
3. On 21 September 2021, Moore Stephens International Licensing Limited (‘Applicant’) filed an application for removal of the Challenged Trade Mark from the Register of Trade Marks (‘Application’). The Application was made under both ss 92(4)(a) and 92(4)(b). The Applicant alleged that on the Filing Date the Opponent had no intention in good faith to use the Challenged Trade Mark in Australia in relation to the Challenged Services: s 92(4)(a). The Applicant also alleged that the Challenged Trade Mark was not used by the Opponent in good faith in relation to the Challenged Services at any time during the three year period ending on 21 August 2021 (‘Relevant Period’): s 92(4)(b). In response, the Opponent filed a Notice of Opposition, consisting of a Notice of Intention to Oppose and a Statement of Grounds and Particulars. The Applicant subsequently filed a Notice of Intention to Defend the Application.
Evidence
4. The only evidence filed in this matter is the Opponent’s Evidence in Support of its opposition (‘EIS’) being:
· Declaration made on 1 July 2022 by Tessa van Duyn, the Chief Executive Officer and Practice Leader of the Opponent, with Exhibits TVD-1 to TVD‑12 (‘van Duyn declaration’).
Background to the IRDA Opposition
Trade mark number 2012729 is the Australian designation of a request made under the Madrid Protocol by the Applicant (as defined above) to extend protection of the trade mark subject of International Registration 1468802 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). When discussing an IRDA, the person who applied for extension of protection is normally referred to as ‘the Holder’; however, for the sake of simplicity ‘Applicant’ will be used here. The Opponent, as defined above, opposed extension of protection pursuant to reg 17A.33. Details of the IRDA are as follows:
IRDA:
2012729
International Registration:
1468802
Filing Date:
9 April 2019
Convention Priority Date:[2]
22 November 2018
(Based on UK 00003355436)
Services:
Class 35: Accountancy services; accounting, auditing and reporting, bookkeeping, and data processing services, business and management consultancy services; business information, research, and analysis services; business risk management services; forensic accountancy investigation services; business support services; economic forecasting and analysis services; remuneration and payroll preparation and consultancy services, advertising, marketing and market research services; tax preparation and consultancy services; personnel planning and consultancy services; recruitment services; arranging exhibitions; data management services; advisory services relating to data processing and data management; company secretarial services.
(‘Applicant’s Services’)
Trade Mark:
MOORE
(‘MOORE Word Mark’)
[2] Regs 17A.2 to 17A.4.
6. Following advertisement in the Australian Official Journal of Trade Marks of the IRDA’s acceptance on 14 January 2021 the Opponent filed a Notice of Opposition (‘Notice’) consisting of a Notice of Intention to Oppose extension of protection and a Statement of Grounds and Particulars. The statement nominated grounds of opposition pursuant to ss 42, 43, 44, 58, 58A, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend. On 16 June 2021 the Trade Marks Office sent a Notification Of Provisional Refusal Of Protection Based On An Opposition to the World Intellectual Property Organisation (‘WIPO’).
Evidence
7. The Opponent filed Evidence in Support (‘EIS’) of its opposition which consisted of:
·Declaration made on 12 September 2021 by Helen Nectaria Kavadias, a partner of HWL Ebsworth Lawyers representing the Opponent, with Exhibits HK-1 to HK-5 (‘Kavadias declaration’). Exhibit HK-1 exhibits the following:
oStatutory Declaration made on 9 January 2020 by David Wells, the Managing Principal of the Opponent, with Exhibits DW-1 to DW-8 (‘Wells declaration’). This declaration was originally filed during examination of applications to register trade marks owned by the Opponent to overcome grounds for rejecting those applications.
8. The Applicant filed Evidence in Answer (‘EIA’) which consisted of:
·Declaration made on 10 December 2021 by Anton Colella, Chief Executive Officer within the Applicant, with Exhibit 1 (‘Colella declaration’). The sole exhibit is divided into Tabs No. 1 to No. 7.
9. The Opponent did not file Evidence in Reply.
Background to the Standard Opposition
10. The Standard Opposition was brought by the Opponent, pursuant to s 52, to registration of the trade mark which is the subject of the application detailed below. The application is in the name of the Applicant.
Application Number:
2059096
Filing Date:
20 December 2019
Specification:
Applicant’s Services
Trade Mark:
(‘MOORE Figurative Mark’)
11. Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks on 21 May 2020, the Opponent filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars. The statement nominated grounds of opposition under ss 42, 43, 44, 58, 58A, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
12. The parties filed the same evidence in respect of the Standard Opposition as was filed in the IRDA Opposition.
Requests to be heard and hearing
13. Once the time allowed for filing evidence in the respective matters had passed the parties requested to be heard. The parties also requested that the three matters be heard on the same day. I heard the three matters on 28 February 2023 as a delegate of the Registrar of Trade Marks. Ian Horak SC, instructed by HWL Ebsworth Lawyers, appeared for the Opponent. Sonia Stewart of Counsel, instructed by Clayton Utz, appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing.
Clarification of references used
14. In this decision the following references are used:
·The ‘Opponent’ is Moores MDP Pty Ltd, being:
o the opponent to removal of (and owner of) the Challenged Trade Mark in the Removal Opposition;
o the opponent to extension of protection of the MOORE Word Mark in the IRDA Opposition; and
o the opponent to registration of the MOORE Figurative Mark in the Standard Opposition.
·The ‘Opposed Trade Marks’ are the MOORE Word Mark and the MOORE Figurative Mark, collectively.
·The ‘Applicant’ is Moore Stephens International Licensing Limited, being:
o the applicant for removal of the Challenged Trade Mark in the Removal Opposition;
o the holder of the IRDA in respect of the MOORE Word Mark in the IRDA opposition; and
o the applicant for registration of the MOORE Figurative Mark in the Standard Opposition.
· ‘Moore Global Group’ is, collectively, the Applicant and its affiliates, subsidiaries and controlled entities who use the trade marks MOORE STEPHENS and the Opposed Trade Marks under licence from the Applicant. This reference is used in the Colella declaration and is adopted here for simplicity.
· ‘SGP’ means the Statement of Grounds and Particulars filed in the matter being discussed at the time.
Background to Parties
The Opponent
15. According to the van Duyn declaration:
[The Opponent] is a leading multidisciplinary legal practice located in Hawthorn, Victoria, Australia, and offers a broad range of professional services that extend to business consultancy, real estate, advisory, risk management and taxation matters.
The legal practice conducted by the Opponent was founded by Alan Moore in 1971 and initially traded as AG Moore & Associates. The trading name was then changed to Moores Solicitors in 1968 and later, Moores Legal in 1999. In December 2013 the practice underwent a rebranding and its name was shortened to MOORES.
[The Challenged Trade Mark] was initially filed in the name of Murray Philip Baird and was assigned in full to the Opponent’s predecessor, Moores Legal Pty Ltd on or around 21 November 2011. On 12 October 2019, the full assignment of [the Challenged Trade Mark] from Moores Legal Pty Ltd to the Opponent was recorded.
16. The Opponent is also the owner of the registered trade marks detailed below (‘Opponent’s 2019 Registrations’):
Trade Mark Number:
2040638
Priority Date:
30 September 2019
Specification:
Class 35: Business consultancy, advisory services relating to business risk management, tax advice (accountancy)
Class 41: Training and education services; conducting seminars; arranging and conducting of workshops (training)
Class 45: Legal services; provision of legal advice, legal analysis, legal consultancy, legal research, litigation services, real estate conveyancing
(‘Opponent’s Services’)
Trade Mark:
MOORES (‘MOORES Simpliciter’)
Endorsements:
17. Evidence and/or other circumstances provided under subsection 41(4).
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
Trade Mark Number:
2040639
Priority Date:
30 September 2019
Specification:
Opponent’s Services.
Trade Mark:
(‘MOORES logo’)
Endorsements:
18. Evidence and/or other circumstances provided under subsection 41(4).
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The Applicant
19. According to the Colella declaration:
[The Applicant] is the holder of trade mark and other intellectual property rights licensed to Moore Stephens International Limited and from September 2019 to Moore Global Network Limited (‘Moore Global’). [The Applicant] controls and licenses those rights to Moore Global and associated entities (‘Moore Global Group’). [The Opposed Trade Marks] are always used under licence from and with the permission of [the Applicant]. …
Moore Global Group is a worldwide accountancy and consulting network. Its network incorporates over 260 independent firms in more than 110 countries, including Australia.
Consideration of Removal Opposition
Legal Framework
20. Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.
21. The Application was made under the provisions of both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:
Section 92. Application for removal of trade mark from Register etc
(1) … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.
(2) The application:
(a) must be in accordance with the regulations; and
(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.
…
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services to which the non‑use application relates and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
22. An application under s 92(4)(a) may be made at any time after the filing date in respect of the application for registration of a trade mark. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register a trade mark.[3] I confirm that five year period has passed in respect of the Challenged Trade Mark.
[3] Per s 93(2) prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.
23. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions paragraph (a) merges with paragraph (b) once a trade mark has been registered for five years.[4] As the Trade Mark has been registered for a period longer than five years as at the date of the Application, it is necessary only for me to consider the application for removal under s 92(4)(b). Section 92(4)(a) will not be considered further in this decision.
[4] Mark Davison, Tracey Berger and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4th ed, 2008) [70.510].
24. Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegation made under s 92(4)(b), either by establishing that the Challenged Trade Mark (or the Challenged Trade Mark with additions or alterations which do not substantially affect its identity) was used in good faith in Australia during the Relevant Period, or that there was a relevant obstacle to use. The Opponent has not asserted that there was a relevant obstacle to use, so that question need not be considered further. I proceed on the basis that the standard of proof required is on the balance of probabilities.[5]
[5] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] affirming Gyles J’s approach.
25. Section 101(1) provides the Registrar with the discretion to remove the Challenged Trade Mark from the Register ‘in respect of any or all of the goods and/or services to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove an impugned trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.
26. To successfully oppose the Application the Opponent must establish that it, as the owner of the Challenged Trade Mark used the trade mark in the course of trade in respect of all the Challenged Services, in good faith, during the Relevant Period. It is necessary that the Opponent provide evidence of use which is clearly dated and shows use during the Relevant Period. Evidence of use which falls outside of the Relevant Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.
27. In the SGP, the Opponent asserted that it used the Challenged Trade Mark not only during the Relevant Period but continuously ‘from at least March 2003 to the present date’. The Opponent also asserts that the Challenged Trade Mark, ‘has been used on Moore’s legal services and the promotion of these services’. The Opponent conceded that it had not used the Challenged Trade Mark in respect of financial services.
Trade marks upon which Opponent relies
28. In its submissions, the Opponent indicated that it ‘relies upon two broad forms of [the Challenged Trade Mark] as continuously used during the Relevant Period, specifically:
First, the Opponent submits that the use of ‘Moores’ (without the word LEGAL) in the Relevant Period is use of a trade mark with additions or alterations not substantially effecting (sic) the identity of the Trade Mark. The Opponent has made significant use of this trade mark …
The essential element of both trade marks is the word ‘MOORES’ with the word ‘LEGAL’ merely describing the services and its presence (or lack thereof) does not substantially effecting (sic) the identity of the trade mark. It follows that no distinction should be made in trade marks which use ‘MOORES’.
Second, the evidence shows that the Opponent continued to make use of trade marks incorporating the word (sic) ‘MOORES LEGAL’ in the Relevant Period and such use would constitute use with additions or alterations not substantially affecting the identity of [the Challenged Trade Mark].
29. The trade marks referred to by the Opponent, above, are juxtaposed with the Challenged Trade Mark, below:
The Challenged Trade Mark
(‘MOORES Simpliciter’)
(‘MOORES LEGAL trade mark’)
MOORES
MOORES LEGAL
30. Section 7(1) provides that the Registrar,
having regard to the circumstances of a particular case, thinks fit, … may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
31. A trade mark ‘with additions or alterations that do not substantially affect the identity of the trade mark’ has been interpreted to mean that the trade marks being compared must be substantially identical.[6] There is long standing authority with respect to the assessment of whether two trade marks are substantially identical. As far as the visual comparison goes, the trade marks in question are to be
compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]
[6] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ) (‘Wicked’).
[7] Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66, [12] (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ) (‘Shell’).
32. A finding of substantial identity ‘requires a total impression of similarity to emerge from a comparison between two word marks’.[8] ‘Identical’ has been held to mean, ‘corresponding exactly in nature, appearance, manner, etc’.[9]
The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ … [10]
[8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 391 (Gummow J) (‘Sitmar’).
[9] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901, [58] (Bennet J).
[10] Ibid (citation omitted).
33. ‘The identification of an essential feature depends partly on the Court’s own judgement and partly on the burden of evidence that is placed before it’.[11]
[11] de Cordova v Vick Chemical Coy (1951) 68 RPC 103, 106 (Radcliffe LJ).
34. It has been held that a change to the typeface of a trade mark might allow a finding of substantial identity. In Pioneer Computers Australia Pty Ltd v Pioneer KK, Bennett J found that use of the trade mark shown below left constituted ‘continuing use of the trade mark’ shown below right, noting, ‘[t]he differences are minor and reflect a change of style’[12]
[12] [2009] FCA 135, [117].
35. Registration of word marks provides broad protection which allows the owner to use the trade mark in a variety of forms. This includes in conjunction with varying devices and other get-up. In the Barefoot case the High Court considered use of the word mark BAREFOOT on the label of bottles of wine. The use was always in close proximity to an image of a bare foot. The Court found
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. … The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).[13]
[13] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Heydon, Crennan and Bell JJ).
The essential features of the Challenged Trade Mark
36. Regarding the circumstances of this particular case, I note the following. The Challenged Trade Mark was accepted under the provisions of s 41(5) (as it was at the time). This indicates that the examiner was of the view that the Challenged Trade Mark is ‘to some extent inherently adapted to distinguish [the Challenged Services] from the goods or services of other persons’ but the examiner was unable to decide, on that basis alone, that the Challenged Trade Mark was ‘capable of so distinguishing’. The examiner explained his view in the first adverse examination report as follows:
The main feature of your trade mark is the word MOORE. This word is also the surname of many Australians.
Other traders with this surname should be able to use this word in connection with goods or services similar to yours.
(Note: as a guideline, a surname will be regarded as occurring frequently in the Australian population if it has 750 or more entries on the electoral role. This surname occurs 22,654 times.)
37. During examination, the Opponent provided evidence of use of the Challenged Trade Mark to the examiner which satisfied the examiner that the Challenged Trade Mark was, in fact, capable of distinguishing the Challenged Services from the goods or services of other persons. This finding on the part of the examiner enabled the application to register the Challenged Trade Mark to be accepted; the s 41(5) endorsement was entered in the Register accordingly.
38. In the matter at hand, the Applicant submitted the following, as matters relevant to the circumstances of this case:
That [the Challenged Trade Mark] is insufficiently inherently adapted to distinguish is a matter relevant to the Removal Application. ‘Moore’ is an Anglo-Celtic surname common in Australia and it is also the origin of the Applicant’s name. The Australian Register of Trade Marks indicates that the name ‘Moore’ features in numerous and diverse registrations and that in many instances, the marks are owned by persons with the surname ‘Moore’. …
Section 219 … permits the following to be taken into account in ‘an action or proceeding relating to a trade mark’: ‘the usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons’. This includes … the marks at Annexure A.
Annexure A to the Applicant’s submissions contains a list of some 27 trade mark registrations in various classes which contain ‘MOORE’ as an element.
39. The Applicant also submitted:
‘MOORE’ or ‘MOORES’ is nothing more than a common surname, lacking sufficient inherent capacity to distinguish …
[The Challenged Trade Mark] lacks an essential element that is distinctive per se, as both ‘MOORES’ and ‘LEGAL’ have little or no inherent capacity to distinguish or at most a very low level of inherent capacity to distinguish, even when used together …
[The Challenged Trade Mark] as registered has particular morphology, with the word ‘Legal’ appearing in italics and the word MOORES in bold, with the letters ‘OO’ appearing to be connected in the unusual shape of a Figure 8 …
[B]oth words are surrounded by a rectangle, with white text on a black background, creating the impression of [an] old-fashioned ‘stamp’ or ‘seal’, such as might be used for stamping or sealing documents.
I add to the Applicant’s description of the Challenged Trade Mark that the two words as they appear in the trade mark are conjoined.
40. The Applicant further submitted that the assessment here has similarities to that undertaken by the Full Federal Court in the Wicked case. That case concerned an application for removal of the trade mark shown below left (‘Wicked Tail Mark’). The owner of that trade mark sought to rely on use of the trade mark shown below right (‘New Wicked Mark’) to rebut the allegation of non-use.
41. In Wicked, their Honours unanimously held that the Wicked Tail Mark and the New Wicked Mark were not substantially identical, stating at [162]:
Having regard to the presentation of the two marks, including the distinctive tail on the ‘D’ of the Wicked Tail Mark and the font and block characteristics of the New Wicked Mark, we do not consider them to be substantially identical. We do not consider that intended use in respect of the New Wicked Mark equates to intended use of the Wicked Tail Mark in respect of the goods currently under consideration.
42. Referring to Wicked the Applicant submitted:
The fact that each of the marks comprised a single, identical word and would have been pronounced in exactly in the same manner was insufficient to conclude that the marks were substantially identical. The modestly different stylisation, including ‘the font and block characteristics’ of the later mark were nonetheless meaningful differences.
In circumstances where the Opponent’s predecessor in title deliberately undertook a rebranding and adopted new marks which later became the Opponent’s 2019 Registrations, the same conclusion should be reached. It did so precisely because the new marks were different from [the Challenged Trade Mark]. It is appropriate to conclude that use of the ‘new’ marks does not equate to use of the ‘old’ [Challenged Trade Mark], which had been superseded.
43. I concur with the Applicant to the extent that there is no single element of the Challenged Trade Mark which can be considered an essential element. Each of the elements of the Challenged Trade Mark lacks distinctiveness to varying degrees. We are not faced here with a registered trade mark such as BAREFOOT or PIONEER—which are single words which are inherently adapted to distinguish their respective goods. Here, each of the elements of the Challenged Trade Mark lacks distinctiveness and the trade mark as a whole also lacks inherent distinctiveness.
44. The combination of the removal of the black background, the separation of the ‘O’s in MOORES, the insertion of a space between the two words, and the removal of the italicisation of LEGAL—resulting in the MOORES LEGAL trade mark—are alterations which substantially affect the identity of the Challenged Trade Mark. Having removed those elements, we are not left with two trade marks which on a side by side comparison give ‘a total impression of similarity’, are ‘corresponding exactly in nature [and] appearance’, and ‘are exactly similar in everything that matters for all relevant purposes’. It might be that a single one of the aforementioned alterations made to the Challenged Trade Mark would not substantially affect its identity but in combination they do. The aforementioned alterations to the Challenged Trade Mark, plus the removal of the word LEGAL—resulting in the MOORES Simpliciter trade mark—are also alterations which substantially affect the identity of the Challenged Trade Mark.
45. For the reasons discussed above, I am not satisfied that having regard to the circumstances of this case, use of the MOORES LEGAL trade mark, or the MOORES Simpliciter trade mark, by the Opponent are uses of the Challenged Trade Mark with additions or alterations that do not substantially affect the identity of the Challenged Trade Mark. Consequently, use of those trade marks by the Opponent does not assist it in rebutting the allegation of non-use.
46. The Challenged Trade Mark, albeit in a coloured form, appears in Exhibit TVD-4 of the van Duyn declaration. It is stated in the declaration:
[The Challenged Trade Mark] has been used to refer to [the Opponent] and promote the [Challenged Services] during the Relevant Period by members of the Australian legal profession and other legal organisations. This is demonstrated by the following examples: …
(a)Annexed as Exhibit TVD-4 are extracts from the Aussie Legal website …demonstrating use of [the Challenged Trade Mark] during the Relevant Period.
47. Use of the Challenged Trade Mark ‘by members of the Australian legal profession and other legal organisations’ to refer to the Opponent is not use by the Opponent and does not assist the Opponent in rebutting the allegation of non-use. An extract of one page of the Aussie Legal website also appears as the last page of Exhibit TVD-12. This page is, essentially, a reproduction of one of the pages of the Aussie Legal website as it appears in TVD-4. It seems that this page appears in TVD-12 in error as TVD-12 is declared to be, ‘the Google database search results for [the Challenged Trade Mark] in Australia conducted on 30 June 2022’. The page from the Aussie Legal website clearly is not such a search result, whereas the other pages of the exhibit fit that description. These are the only places that the Challenged Trade Mark, as registered, appear in the evidence. There is no evidence before me that the Opponent caused the appearance of the Challenged Trade Mark on the Aussie Legal website.
48. This is not the end of the matter, however, as the Opponent has submitted that having found that the Challenged Trade Mark was not used during the Relevant Period the Registrar ought to exercise the discretion available under section 101(3) in favour of the Opponent.
Determination of the opposed application
49. Section 101 deals with the determination of the opposition to the Application. Section 101(1) states, essentially:
If the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
50. The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(2) provides a similar discretion to ‘the court’. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove.
Consideration of the Registrar’s Discretion
51. The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[14] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[15] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:
There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[16]
[14] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].
[15] Ibid [69].
[16] [2002] FSR 51 (Ch) 790, [19].
52. In considering the discretion in the Barefoot case, Flick J stated:
Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[17] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[18] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[19]
[17] Kowa Co Ltd v Organon [2005] FCA 1282, [92].
[18] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].
[19] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210]. (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point.)
53. Flick J also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:
·whether there has been abandonment of the trade mark;
·whether the registered proprietors of the mark still had a residual reputation in the mark;
·whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
·whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[20]
[20] Ibid, [202]–[203].
54. The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[21]
[21] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44].
55. The Opponent submitted regarding residual reputation:
[I]t would be reasonable for the Registrar to exercise its discretion to not cancel the Trade Mark due to the Opponent’s ongoing reputation in the Trade Mark.
As noted at paragraph 10 of the van Duyn Declaration, the legal practice operated by the Opponent was founded in 1971 and initially trade as A.G. Moore & Associates, before the name was changed to Moores Solicitors in 1986 the Moores Legal in 1999. The practice subsequently shortened its name to Moores in December 2013 and continues to trade under this name to date.
Despite having rebranded to Moores over 9 years ago, the Opponent continues to interchangeably be recognised as both Moores and Moores Legal. This underpins the inessential nature of the word ‘Legal’ which can be readily added or dropped depending on the context. Consumers in Australia of [the Challenged Services] recognise the Opponent as being associated with the word ‘Moores’ and ‘Moores Legal’. …
56. Regarding abandonment, the Opponent submitted:
[T]he Opponent has not abandoned [the Challenged Trade Mark]. …
In addition to the evidence of the Opponent’s use of [the Challenged Trade Mark] during the Relevant Period, and its residual reputation in [the Challenged Trade Mark] … the Opponent’s intention to continue using [the Challenged Trade Mark] in respect of [the Challenged Services] is shown through maintaining its registration of the Domain Names. Each of the Domain Names consist of [the Challenged Trade Mark] and re-direct to the Opponent’s Website which promotes [the Challenged Services].
This provides a strong indication that the Opponent has not abandoned [the Challenged Trade Mark], and name ‘Moores Legal’.
57. Regarding the public interest the Opponent submitted:
[A]s a result of the Opponent’s residual reputation in [the Challenged Trade Mark], it would be in the public interest for the Registrar to exercise its discretion to allow [the Challenged Trade Mark] to remain on the Register.
The removal of [the Challenged Trade Mark] from the Register would be likely to give rise to confusion amongst members of the public if the Applicant or another third party began to offer [the Challenged Services] (or similar services or closely related goods …) under [the Challenged Trade Mark] (or a substantially identical, or deceptively similar mark to [the Challenged Trade Mark]).
58. The Opponent’s submissions on residual reputation refer to residual reputation in the words ‘MOORES’ and ‘MOORES LEGAL’. Any reputation which might have been acquired by those signs, is not a reputation acquired by the Challenged Trade Mark—for reasons discussed above. Similarly, the Opponent’s submissions regarding abandonment refer to its ongoing use of those words, and not the Challenged Trade Mark. It follows that the Opponent’s submissions on the public interest carry little sway.
59. The Applicant’s submission in regard to the exercise of the discretion included:
The Opponent’s evidence does not contain any assertion that the Opponent would be disadvantaged by removal of [the Challenged Trade Mark] or experience any commercial disruption. The Opponent has not filed any evidence that it has any bona fide intention to use or to authorise the use of [the Challenged Trade Mark] in Australia in the future, despite being on notice since September 2021 of the Removal Application. …
The absences of any positive assertion of disadvantage that might be suffered by the Opponent is consistent with the evidence that:
(a)the Opponent’s predecessor in title rebranded in or about 2013;
(b)neither the Opponent’s predecessor in title nor the Opponent used [the Challenged Trade Mark] in good faith as a badge of origin during the Relevant Period;
(c)the Opponent does not use [the Challenged Trade Mark] now;
(d)the Opponent dose not have any future intention to use [the Challenged Trade Mark]; and
(e)the Opponent itself filed the Opponent’s 2019 Registrations, being the marks used since the 2013 rebranding was implemented and which it continues to use.
A further factor is that the period of non-use is substantially longer than [the Relevant Period]. This is because the Opponent’s predecessor in title implemented the rebrand in 2013, some five years before the commencement of [the Relevant Period]. As at the date of hearing, there is no evidence that [the Challenged Trade Mark] has been used by the registered owner in almost 10 years and there is no evidence of any objective, commercial bona fide intention by the Opponent to do so, either now or in the future.
60. The Applicant also referred to the relative commercial interests of the parties and submitted:
The Opponent seeks to rely upon its unused registration for [the Challenged Trade Mark] as a basis to oppose the Applicant’s Opposed Applications. In doing so, it is attempting to monopolise a common surname and prevent other traders, actuated without proper motive, from using it. This is contrary to the public interest and to the statutory scheme.
61. I find the Applicant’s submissions against the exercise of the discretion in favour of the Opponent broadly compelling. I am not satisfied that the discretion available to the Registrar ought to be exercise in favour of the Opponent and I decline do so.
Decision on Removal Opposition
62. As the Opponent has not rebutted the allegation of non-use, the ground for removal has been established. I decide therefore that the Challenged Trade Mark be removed from the Register after one month from the date of this decision. In the event of an appeal from this decision, the Challenged Trade Mark will not be removed from the Register until the appeal has been discontinued or dismissed, or in the event of a decision from the court, the registration will be subject to that decision.
Consideration of the IRDA Opposition
Grounds of Opposition, Onus and Standard of Proof
At the hearing, the Opponent pressed only grounds of opposition pursuant to ss 42(b), 44, 58 and 60. The onus of proof in an opposition rests upon the Opponent.[22] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[23] The date at which the rights of the parties are to be determined is the filing date of the application. The filing date here being 9 April 2019 (‘IRDA filing date’).[24] The Applicant has also claimed a Convention Priority Date pursuant to the Madrid Protocol, being 22 November 2018—this is the priority date for the grounds of opposition pursuant to ss 44 and 60.
[22] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[23] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[24] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Grounds for rejecting and opposing IRDA
Regulation 17A.28 relevantly states:
(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:
(a)a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(b)… and
(c)each reference in subparagraphs 44(1)(a)(i) and (2)(a)(i) to a trade mark registered by another person included a protected international trade mark held by another person; and
(d)each reference in subparagraphs 44(1)(a)(ii) and (2)(a)(ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person. …
65. Regulation 17A.34 relevantly states:
(1)The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.
(2)The extension of protection may also be opposed on any of the grounds set out in sections 58 to 61 and 62A of the Act, as affected by subregulation (3).
(3)sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if:
(a)a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(iii)to the registration of a trade mark were a reference to the extension of protection in Australia to the trade mark that is the subject of the IRDA; and
(b)the reference in paragraph 60(a) of the Act to the priority date for the registration of the trade mark were a reference to the priority date for the trade mark that is the subject of the IRDA.
Section 44 – Identical etc trade marks
66. In the SGP the Opponent nominated the Challenged Trade Mark, and the trade marks the subject of the Opponent’s 2019 Registrations to support its ground of opposition pursuant to s 44. However, in its submissions, the Opponent indicated that it ‘relies upon a single citation against [the MOORE Word Mark] being [the Challenged Trade Mark]’. As I have decided, above, that the Challenged Trade Mark is to be removed for non-use, it is no longer able to support this ground of opposition. Consequently, this ground of opposition is not established.
Section 60 – Trade mark similar to that has acquired a reputation in Australia
The ground based on s 60 was particularised in the SGP as follows:
The Opponent has used the mark MOORES in relation to legal services (class 45) and similar/related services in class 35 (business consultancy and tax advice), 36 (real estate and financial service) and 41 (training and education) in Australia since at least 1986, and has thus acquired significant reputation in Australia in relation to that mark. Use of the opposed mark by the applicant is likely to deceive or cause confusion as a result of the opponent’s reputation in the MOORES mark.
68. Section 60 is reproduced below:
Section 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.
69. To establish this ground of opposition, the Opponent must establish the MOORES Simpliciter trade mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the MOORE Word Mark by the Applicant would be likely to deceive or cause confusion.
70. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[25] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[25] [2000] FCA 1335, [81].
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[26]
[26] [1992] FCA 159, [118].
71. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[27]
[27] Hugo Boss AG Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KGv (1999) 47 IPR 423, 426.
72. The Opponent submitted that as at the priority date of the IRDA
the Opponent had acquired a significant reputation in [MOORES Simpliciter] at least in relation to legal services, consultancy and training and education in Australia. [MOORES Simpliciter] has been in use since at least 1986, when the Opponent’s firm was then known by Moores Solicitors until 1999, when it then changed its name to MOORES Legal. In any event, the Opponent’s firm has been known as Moores since November 2013, and has therefore acquired a reputation in ‘MOORES’ as at the priority dates of the Opposed Marks, the earliest of which is 22 November 2018 for [the MOORE Word Mark].
Evidence of the Opponent’s reputation in [MOORES Simpliciter] is set out in some detail in the Kavadias and Wells declarations. In particular, the widespread recognition of [MOORES Simpliciter] can be inferred through the Opponent’s expenditure on marketing and advertising between 2013 to 2019, as disclosed in Confidential Exhibit DW-7 of the Wells declaration.
73. For ease of reference, the trade marks under consideration here are shown below:
Applicant’s trade mark
Opponent’s trade mark (asserted to have acquired reputation)
Opponent’s trade mark (also appearing in evidence)
MOORE
MOORES
(MOORE Word Mark)
(MOORES Simpliciter)
(MOORES Logo)
74. The Wells declaration was initially filed during examination of the applications to register the MOORES Simpliciter and MOORES Logo trade marks in order to overcome grounds for rejecting those applications under ss 41 and 44. In the Wells declaration, the MOORES Simpliciter and MOORES Logo trade marks are, together, referred to as ‘the Trade Marks’. According to the Wells declaration:
[The Opponent] is a leading multidisciplinary legal practice located in Hawthorn, Melbourne Australia.
The legal practice conducted by [the Opponent] was founded by Alan Moore in 1971 and trade as A.G. Moore & Associates until 1986 when the partnership then operating the practice changed the name to ‘Moores Solicitors’. There was a further name change to ‘Moores Legal’ in 1999.
The practice was conducted in the Melbourne suburb of Box Hill from 1975 until September 2016.
On 1 July 2006, the partnership transferred ownership of the practice transferred ownership of the practice to [the Opponent’s] predecessor, Moores Legal Pty Ltd as trustee for the Moores Legal Trust. [The Opponent’s] predecessor traded under the name ‘Moores Legal’ from 2006 until December 2013.
[The Opponent’s] predecessor chose the Trade Marks in October 2013. [The Opponent’s] predecessor selected the ‘MOORES’ marks as part of the re-branding of the firms business and the launch of a new website. The new website was intended to re-focus and re-brand the business as more than simply a ‘legal’ practice and so the word ‘LEGAL’ was dropped from its branding.
The Trade Marks had been used by [the Opponent’s] predecessor since November 2013 and then [the Opponent] from 1 July 2018 to promote its services, namely consultancy, training and education, and legal services. …
[The Opponent’s] predecessor relocated the practice from Box Hill to Hawthorn, Melbourne in October 2016. …
[T]he Trade Marks have been used by [the Opponent] (including its predecessor) … continuously and consistently throughout Australia since November 2013.
75. The Wells declaration lists services ‘further to’ the Opponent’s Services which are said to be provided by the Opponent; these include ‘advisor training’, ‘child safety training’, ‘Professional Development Sessions for Independent and Catholic Schools’, and ‘master classes and seminars’, all covering various topics.
76. Confidential Exhibit DW-7 is declared to be, ‘a table setting out [the Opponent’s] advertising expenditure in respect of the Trade Marks for the financial years 2013/2014 to/2017/2018’. Confidential Exhibit DW-8 is declared to be, ‘a table setting out [the Opponent’s] annual turnover for the Services branded with the Trade Marks for the financial years 2013/2014 to 2017/2018’. The tables do not break down expenditure and revenue for each of those trade marks, but provides a single figure for each of the years.
77. Besides exhibiting the Wells declaration in Exhibit HK-1, the Kavadias declaration has four exhibits. Ms Kavadias declared:
The Opponent has continued to use the Applicant’s Mark (sic) since January 2020 to the present date. Annexed to this Declaration as Exhibit HK-2 are screenshots captured on 12 September 2021 from the Applicant’s website (sic) and other social media platforms showing use of the Applicant’s Marks (sic).
Exhibit HK-2 is some four pages long and exhibits screenshots which show use of the Opponent’s MOORES Simpliciter and MOORES Logo trade marks and screenshots from sites including the website at It is assumed, therefore, that the references to ‘the Applicant’s Mark’, ‘the Applicant’s website’, and ‘the Applicant’s Marks’, above, are intended to be references to the Opponent’s trade marks and its website. The examples provided are
·A Linkedin page, showing use in connection with the description ‘Law Practice’ and the statement ‘Moores is a leading legal practice located in Hawthorn. … Whether your legal needs are business or personal the expertise of our lawyers is available in (a number of areas of the law)’. There is an indication on the page that there are ‘1,851 followers’. There is no indication in the example of when the account was created;
·a Facebook page, showing use in connection with legal services. There is no indication in the example of when the account or the page was created;
·a Twitter page, showing use in connection with the statement, ‘We are a values-driven law firm, here for like-minded organisations, causes and individuals’. The partial date ’10 Sep’ appears on the page. As the page was captured on 12 September 2021, it is assumed that ’10 Sep’ indicates the two ‘Tweets’ were made on 10 September 2021. The following information appears in the example: ‘Joined May 2014’, ‘721 Following’, ‘620 Followers’, ‘755 Tweets’;
·an Instagram page, showing use in connection with what appears to be a tag ‘Lawyer & law firm’, and the statement, ‘We are a values-driven law firm (etc)’. The following information appears on the page: ‘179 posts’, ‘449 followers’, ‘346 following’. There is no indication in the example when the account was created.
·a YouTube page, showing what appears to be the Opponent’s YouTube channel. It is unclear from the example what services the use is in connection with;
·a page from the Opponent’s website. There is no indication in the example of what services are provided by the Opponent, or when the page was created.
78. Due to the fluid nature of pages on websites, caution must be exercised when drawing conclusions as to how a page might have appeared at a particular time based on examples of how the web page appeared after, or before, that time. By way of illustration, in the absence of anything to suggest the contrary, it is likely that a web page retrieved on a particular day appeared that way on the previous day, or the day after. As a generally principle, however, the greater the time gap between the retrieval of a web page and the time frame under consideration, the more likely it becomes that the page has changed. Numbers appearing on example web pages which indicate things such as ‘Followers’, ‘Tweets’, and ‘Posts’ are particularly problematic from this point of view as such numbers can be expected to change over time. Evidence obtained from an internet archive service showing how a page looked at a particular date of interest is likely to be much more reliable.
79. The examples in HK-2 were captured on 12 September 2021. This is nearly three years after the IRDA’s priority date. Taking into account the problems associated with examples of web pages, just discussed, very little weight can be afforded to this evidence as far as it might be purported to establish reputation acquired by MOORES Simpliciter before the IRDA’s priority date.
80. Exhibit HK-3 is declared to be
a Google search result for ‘MOORE LEGAL’ showing the Applicant’s website promoting legal services which is outside of [the Applicant’s Services] as claimed as a top search result, and the Opponent’s website promoting [the Applicant’s Services] in a lower position’.
HK-3 consists of a single page showing the first page of an internet search conducted on 10 September 2021. This exhibit does not assist the Opponent in establishing that MOORES Simpliciter had acquired a reputation as at the IRDA’s priority date.
81. The Kavadias declaration refers to the Applicant providing services outside of the Applicant’s services, including legal services. Exhibits HK-4 and HK-5 are intended to support this assertion. Neither of those exhibits assist the Opponent in establishing acquisition of reputation by the Opponent’s trade mark.
82. Returning to the Wells declaration, some of the exhibits in the declaration suffer from the shortcomings discussed above in respect of the Kavadias declaration. Nevertheless, on balance I am satisfied that MOORES Simpliciter had acquired, by the IRDA’s priority date, a reputation in respect of legal services; however, I am not satisfied that the trade mark had acquired, by that date, a reputation in respect of any other services. That is not the end of the matter, as it is now necessary to consider whether because of that reputation, use of the MOORE Word Mark would be likely to deceive or cause confusion.
83. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘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. [28]
[28] [1979] RPC 410, 423 (citations omitted).
84. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[29]
[29] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.
85. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
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. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[30]
[30] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
86. The question to be determined at this point can be distilled as follows, whether: ‘Because of the reputation acquired by MOORES Simpliciter in respect of legal services, the use of the MOORE Word Mark in connection with the Applicant’s Services is likely to give rise to deceive or cause confusion’. In my view, deception or confusion are unlikely. The Applicant’s Services are quite different from legal services. The lack of inherent distinctiveness of ‘Moore’, discussed above—in particular it being a common surname—mean that it is unlikely that consumers will be deceived or confused that the trade source of the Applicant’s Services is, or might be, the Opponent. This ground of opposition is, therefore, not established.
Section 42(b) – Use of trade mark contrary to law
87. The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
The opponent has used the MOORES trade mark in relation to legal services in class 45 and similar/related services in classes 35 (business consultancy and tax advice), 36 (real estate and financial services) and 41 (training and education) in Australia since at least 1986, and has thus acquired a significant reputation in Australia in relation to that mark. Use of the opposed mark by the applicant is likely to mislead or deceive in breach of the Australian Consumer Law, as well as constituting passing off at common law.
88. Section 42 is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
89. The onus is on the Opponent to establish that use of the MOORE Word Mark would be, rather than could be, contrary to law on the balance of probabilities.[31] The relevant time for assessing whether the use of the MOORE Word Mark would be contrary to law is at the IRDA filing date but ‘looking forward to prospective conduct after registration’.[32]
[31] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).
[32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
90. In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[33] I am satisfied that the Opponent has also failed to establish that the use of the MOORE Word Mark would be contrary to s 18 of the ACL.
[33] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
91. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[34] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
[34] [2003] FCA 104, [107] (Beaumont J).
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.[35]
[35] [1989] FCA 506, [40] (Hill J) (citations omitted).
92. For these reasons I am not satisfied that use of the MOORE Word Mark would be contrary to law. Therefore, this ground of opposition is not established.
Section 58 – Applicant not owner of the trade mark
93. The Opponent submitted at the hearing:
The Applicant is not the owner of the [MOORE Word Mark] because at the priority date of 22 November 2018, the Opponent had established itself as owner of the Moores Legal Mark which is substantially identical to the aforementioned. The filing of the Moores Legal Mark on 12 March 2003 gave the Opponent proprietorship in respect of goods directly overlapping services of the same kind in class 36 namely ‘financial planning and investment advice; financial services; lending and investment services; provision of loans’.
94. The ‘Moores Legal Mark’ referred to by the Opponent is the Challenged Trade Mark, the subject of Removal Opposition considered above. The reference used there will continue to be used here. The Challenged Trade Mark is reproduced below for ease of reference here.
95. Section 58 is reproduced below:
Section 58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
96. The owner of a trade mark for particular goods/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the MOORE Word Mark is identical, or substantially identical, to the Challenged Trade Mark;[36]
[36] Sitmar.
· that the Applicant’s Services are the ‘same kind of thing’ as the goods and/or services in connection with which the Challenged Trade Mark was used;[37] and
[37] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd, à Beckett and Hood JJ).
· that a person other than the Applicant has the earlier claim to ownership of the MOORE Word Mark based on use prior to whichever is the earlier of: (a) the IRDA filing date; or (b) any actual use of the MOORE Word Mark by the Applicant.[38]
[38] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
97. I found in respect of the Removal Opposition that the MOORES Simpliciter trade mark was not substantially identical to the Challenged Trade Mark. For similar reasons, I am satisfied that the Challenged Trade Mark is not identical, nor substantially identical, to the MOORE Word Mark. The Opponent has therefore fallen at the first hurdle, and failed to establish this ground of opposition.
Decision on IRDA Opposition
98. The Opponent has failed to establish any of the grounds of opposition it pressed at the hearing. Accordingly, extension of protection of the Holder’s Trade Mark may proceed one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.
99. In accordance with reg 17A.34N(2), WIPO will be notified of the Registrar’s decision.
Consideration of Standard Opposition
Grounds of Opposition, Onus and Standard of Proof
The Opposition concerns the MOORE Figurative Mark. The grounds of opposition pressed at the hearing in respect of this opposition are the same as those pressed in the IRDA Opposition, being grounds of opposition pursuant to ss 42(b), 44, 58 and 60. The onus and standard of proof here are as discussed in respect of the IRDA Opposition. The date at which the rights of the parties are to be determined is the filing date of the application. The filing date here being 20 December 2019 (‘Relevant Date’).[39] The Relevant Date is also the priority date for the grounds of opposition pursuant to ss 44 and 60.
[39] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 44 – Identical etc trade marks
101. In the SGP the Opponent nominated the Challenged Trade Mark, and the trade marks the subject of the Opponent’s 2019 Registrations to support its ground of opposition pursuant to s 44. At the hearing the Opponent relied on all of those trade marks to support this ground. As I have decided, above, that the Challenged Trade Mark is to be removed for non-use, it is no longer able to support this ground of opposition. Consequently, the Challenged Trade Mark need not be considered here; however, the Opponent’s 2019 Registrations remain to be considered.
102. Relevant provisions of s 44 are reproduced below:
Section 44 - Identical etc. trade marks
(1)…
(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.Section 10 - Definition of deceptively similar
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.
103. As a starting point, to successfully oppose the applications pursuant to s 44 the Opponent must establish that at least one of the Opponent’s 2019 Registrations:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’);
· is in respect of at least some services which are similar to at least some of the Applicant’s Services (‘the second requirement’); and
· is substantially identical with or deceptively similar to the MOORE Figurative Mark (‘the third requirement’).
The first requirement
104. The priority dates of the Opponent’s 2019 Registrations are earlier than the Relevant Date, thus satisfying the first requirement.
The second requirement
105. The Opponent’s Services include business consultancy and advisory services relating to business risk management in Class 35. These services are similar to the following of the Applicant’s Services in the same class:
business and management consultancy services; business information, research, and analysis services; business risk management services; business support services; remuneration and payroll preparation and consultancy services, tax preparation and consultancy services; personnel planning and consultancy services; advisory services relating to data processing and data management
106. The Opponent’s Services also include tax advice (accountancy) services in Class 35. These services are similar to, at least, the following of the Applicant’s Services in the same class:
Accountancy services; accounting, auditing and reporting, bookkeeping, and data processing services, forensic accountancy investigation services
The second requirement is therefore satisfied.
The third requirement
Substantially identical?
107. The Opponent submitted that the MOORE Figurative Mark is substantially identical to each of the Opponent’s 2019 Registrations. The respective trade marks are juxtaposed below, for ease of reference.
MOORE Figurative Mark
Opponent’s 2019 Registrations
MOORES Simpliciter
MOORES Logo
MOORES
108. A detailed discussion of principles and case law surrounding ‘substantially identical’ appeared in the Removal Opposition, considered above. I would add here that pluralisation does not usually avoid a finding of substantial identity.[40] Nevertheless, following those principles and case law, I am not satisfied that, on a side by side comparison, the MOORE Figurative Mark is substantially identical to either of the Opponent’s 2019 Registrations. A total impression of similarity does not emerge from a comparison between the trade marks. Reasons include: the lack of inherent distinctiveness of ‘Moore’, and by extension ‘Moores’; the distinctive graphical element which appears in the MOORE Figurative Mark; and the graphical element which appears in the MOORES Logo.
[40] Sitmar.
Deceptively Similar?
109. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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 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].[41]
[41] Ibid [13].
110. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[42]
[42] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[43]
[43] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
Third, allowance must be made for imperfect recollection.[44]
[44] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
Fourth, the effect of the spoken description must be considered.[45]
[45] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
Fifth, it is necessary to show a real tangible danger of deception or confusion.[46]
[46] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
Sixth, 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 the two products come from the same source.[47] …
[47] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[48]
[48] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[49]
[49] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[50] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[51] [52]
[50] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).
[51] Ibid [100].
[52] [2012] FCA 1022, [37]–[46].
111. In respect of the similarity between the trade marks the Opponent submitted:
A comparison of [the trade marks] reveals that the marks share the same essential element, being the word ‘MOORE’ or its plural form. Whilst [the MOORE Figurative Mark] also consists of a triangle device it does not change the identity of the trade mark under comparison. A total impression of similarity emerges from the comparison of [the trade marks].
Furthermore … the same overall impression is created by [the MOORE Figurative Mark] and each of [the Opponent’s 2019 Registrations]. Any additional stylistic elements (to the extent they exist noting one of the citations comprises the words simpliciter) does not detract from the resemblance between the marks, which would likely cause consumers with an imperfect recollection to wonder if [the MOORE Figurative Mark] and [the Opponent’s 2019 Registrations] are from the same source or somehow related.
112. The Applicant submitted that the MOORE Figurative Mark is not deceptively similar to the Opponent’s trade marks largely because it ‘has a distinctive and unusual device element as part of the mark’.
113. I am inclined to the Opponent’s view on deceptively similarity. We are concerned here with the use of the respective trade marks on similar services—in some instances, identical services. Notwithstanding the issues surrounding lack of inherent distinctiveness of the ‘Moore’ element, in the circumstances of this case—in particular in the light of imperfect recollection—I am of the view that there is a real tangible danger that persons familiar with the Opponent’s 2019 Registrations, who are wishing to purchase the relevant services, upon seeing those services offered in connection with the MOORE Figurative Mark will be caused to wonder whether those services originate from the Opponent. The differences between the trade marks do not sufficiently ameliorate this likelihood.
114. The Applicant did not submit that should the MOORE Figurative Mark fall foul of s 44(2) that the provisions of either s 44(3) or s 44(4) would apply. This ground of opposition is, therefore, established. Having found this ground of opposition established it is unnecessary that the remaining grounds be considered.
Decision on Standard Opposition
115. The Opponent has established the ground of opposition it raised pursuant to s 44. As a delegate of the Registrar, I accordingly refuse to register the Trade Mark.
Costs
Costs in respect of Removal Opposition
116. The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to rebut the allegation on non-use, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Costs in respect of IRDA Opposition
117. The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Costs in respect of the Standard Opposition
118. The Opponent sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
29 June 2023
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