MVR Retailers Pty Ltd v Chahal Mandeep

[2023] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by MVR RETAILERS PTY LTD to registration of trade mark application 1959152 (37) – MOBILE EXPERT CELL PHONE & TABLET REPAIRS (Figurative) – in the name of Chahal Mandeep

Delegate:

Nicholas Smith

Representation:

Opponent: Legalvision ILP Pty Ltd

Applicant: Sudesh Rani

Decision:

2023 ATMO 92

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 established – registration refused

Background

1. This decision concerns an opposition brought by MVR RETAILERS PTY LTD (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Chahal Mandeep (‘Applicant’): 

Application Number:

1959152

Filing Date[1]:

2 October 2018

Services:

Class 37: Mobile Phone Repair, Tablet Repair and computer repair, mobile phone, tablet and computer glass repair

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed on 28 August 2020 by a Statement of Grounds and Particulars (later amended) (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58, 58A and 60.  The Applicant filed a Notice of Intention to Defend on 22 December 2020. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 23 March 2021 by Varun Ashok, the Director and Secretary of the Opponent, with Annexures A to W (‘Ashok declaration’).

   5.  Following the filing of the evidence in support, as is customary, this office sent a notice to the Applicant with a deadline to file evidence in answer.  This notice stated that if the Applicant wished to rely on evidence filed in the course of the examination (the Applicant having filed evidence in the course of examination) it must be filed as part of the evidence in answer.  The Applicant chose to file no evidence in answer and as such chose not to rely on the material it filed as part of the examination process.  

   6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 30 July 2021 the Opponent requested a hearing by written submissions and paid the appropriate fee.  Following a delay due to the necessity of considering and granting the Opponent’s request to amend its SGP, and in line with usual practice, a notice was sent to the parties on 14 December 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 21 December 2022 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. Given my finding that the Opponent has established the ground of opposition under s 44 it is not necessary to summarise the Opponent’s evidence in any great detail.  The Opponent is an Australian company established on 22 November 2017.  The Ashok declaration states that the trade mark set out below, as well as the word mark MOBILE EXPERTS has been used by the Opponent as well as other companies that Mr Ashok has been associated with since 2013 in connection with mobile phone accessories, retail services and mobile phone and computer repair and maintenance.  It also states that as a result of this use a significant reputation has arisen in the Trade Mark and the MOBILE EXPERTS word mark.  

4. The Opponent is the owner of the trade mark application listed below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is applied for are collectively referred to as the ‘Opponent’s Services’.  The Opponent’s Trade Mark is a divisional application of an earlier Trade Mark application (1947963) which has now lapsed.

Number	Trade Mark	Priority Date	Goods or Services
2235558	13 Aug 2018	Class 35: Retail services; Retailing of goods (by any means) Class 35: Repair of mobile telephone apparatus; Mobile telephone repair; Mobile telephone maintenance; Glass repairs; Tablet computer repairs; maintenance and repair of computer hardware; Maintenance and repair of computers; repair of water damaged phones; repairs of all accessories

The Applicant

10.     The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As I have noted, the Opponent has successfully established the ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   12.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 44.[4]

   Discussion

   Section 44

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

2. The 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.

3. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that the trade mark upon which it relies, being a trade mark or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Services (‘the third requirement’).

4. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  In the present case, as the Applicant has provided no evidence in this proceeding, there is no evidence before me of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper and hence it is not necessary to consider these provisions.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark[5].  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is sought to be registered for services in class 37 relating to mobile, computer and glass repair services, which are identical to the Applicant’s Services.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

   [5] The SGP as amended also particularises the parent application for the Opponent’s Trade Mark, namely TM Application No. 1947963, but this mark has now lapsed and hence is not necessary for me to consider.

6. I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Mark.  The Trade Mark and the Opponent’s Trade Mark are set out below:

7. In the present case it is not necessary to consider whether the marks are substantially identical as they are clearly deceptively similar.  The principal authority for guidance in determining whether trade marks are deceptively similar also comes from 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].[6]

   [6] Ibid [13].

8. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   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 judgment 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: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

   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: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

   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: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   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: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   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: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per 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: Crazy Ron’s at [79]. 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: Crazy Ron’s at [100].[11]

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [11] [2012] FCA 1022, [37]-[46].

9. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[12]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[13]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[14], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[15]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[16]

   [12] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [13] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [14] TM Act, s68

   [15] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [16] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

10. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[17]

    [17] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

11. In the present case the essential features of both marks are the words ‘mobile expert(s)’.  The addition of the mobile device element to the Trade Mark, the descriptive phrase ‘cell phone and tablet repairs’ and the differences in colour and stylization do not change the overall idea or impression given by the marks.   Ultimately the impression given by both the Trade Mark and the Opponent’s Trade Mark in the context of the Applicant’s Services is of ‘Mobile Experts’ and as such the marks are visually, aurally and conceptually similar.  For this reason, consumers would be likely, at least, to be caused to wonder whether the trade source of the Opponent’s Services and the trade source of the Applicant’s Services are one and the same.  The trade marks are deceptively similar.  The Opponent has established this ground of opposition. 

    Decision and Costs

    23.     I have found the Opponent has established the ground of opposition it raised pursuant to s 44.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   13 July 2023