MyMoney Pty LTd v Curly Girl Numbers Pty Ltd

[2023] ATMO 161

TRADE MARKS ACT 1995

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

Re:Opposition by MyMoney Pty Ltd to registration of trade mark application number 2148122 (classes 35 & 41) – Where Did My Money Go? - in the name of Curly Girl Numbers Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: My Knowledge Mark Pty Ltd

Applicant: Mark My Words Trademark Services Pty Ltd

Decision:

2023 ATMO 161

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43, 44 & 60 – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by MyMoney Pty Ltd (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Curly Girl Numbers Pty Ltd (‘Applicant’):

Number:             2148122 (‘Application’)

Trade Mark:       Where Did My Money Go? (‘Trade Mark’)

Filing Date:        19 January 2021 (‘Relevant Date’)

Specification:    Class 35:  Advisory services relating to business management; Advisory services relating to business organisation; Advisory services relating to business planning; Business administration advisory services; Business advisory services; Business advisory services relating to the management of businesses; Business management advisory services; Administration of business affairs; Administration relating to business planning; Business accounts management; Business administration; Business consultancy; Business consultancy to individuals

Class 41:  Mentoring (education and training); Mentoring (training); Advisory services relating to training; Computer training advisory services; Adult training; Business training consultancy services; Business training services; Providing courses of training; Training consultancy

(‘Services’)

[1] 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.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 12 July 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 26 July 2021. The Applicant filed a Notice of Intention to Defend on 4 October 2021.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’) was filed on 2 December 2021. The Applicant filed its evidence in answer (‘EIA’) on 28 February 2022 and the Opponent filed evidence in reply (‘EIR’) on 26 April 2022.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to a request a hearing.  Both parties requested a hearing by written submissions.  The Opponent filed its written submissions on 22 August 2023 (‘Opponent’s Written Submissions’) and the Applicant’s written submissions were filed on 30 August 2023.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks based on the aforementioned materials.

Grounds, Onus and Relevant Date

5.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 43, 44, 60 and 62A.  In the Opponent’s Written Submissions, the Opponent stated that the s 62A ground of opposition was not pressed and I treat this ground as abandoned, although it would be available in any appeal of this decision.

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

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

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

7.     The date at which the rights of the parties are to be determined is the Relevant Date.

Opponent’s Evidence

8.     The Opponent filed the following evidence:

EIS

·Declaration of Graham Chee, Managing Director of the Opponent, made on 22 November 2021 with Exhibits 1 to 19 (‘Chee 1’);

·Declaration of Karen Stephens, Business and Practice Development Manager of various financial services companies, made on 10 November 2021 with Exhibit 1;

·Declaration of Sarah Diamond, client of the Opponent, made on 10 November 2021 with Exhibits 1 and 2;

• Declaration of Jack Diamond, client of the Opponent, made on 24 November 2021 with Exhibits 1 and 2;
• Declaration of Richard Waddington, Managing Director of Loan Hub Australia Pty Ltd, made on 25 November 2021 with Exhibits 1 and 2.

EIR

·Further Declaration of Graham Chee made on 26 April 2022 with Exhibit GC1 to GC6 (‘Chee 2’).

9.     The Opponent is the intellectual property holding company for a corporate group which was founded in November 1999 with the incorporation of Global Mutual Funds Pty Ltd (‘Global Mutual Funds’). 

10.   The Opponent is the registered owner of the following Australian trade marks:

Number	Trade Mark (collectively ‘Opponent’s Marks’)	Filing Date	Specification (collectively ‘Opponent’s Goods and Services’)
819051	MyMoney (’51 Mark’)	29 Dec 1999	Class 35:  Business management, business management consulting, strategic consulting, small business management advice, business planning services, strategic management, operational management, business administration; all services to be available online via the internet Class 36:  Financial management and advisory services in relation to equity trusts, shares, securities, salary packaging, and superannuation funds including superannuation fund establishment and administration; financial management consulting, investment management, financial information, financial strategy, portfolio and investment management services; financial information, financial management, financial analysis and financial advisory services, all provided via the internet
1390083	(’83 Mark’)	5 Nov 2010	Class 9:  Computer cards (smart); computer game programs; computer games software; computer programs for financial management; computer programs for financial reporting; computer software Class 35:  Commercial information services provided by access to a computer database; compilation of information into computer databases; computer assisted business information; computer data processing; computerised business information retrieval; computerised business information services; computerised business records keeping; computerised business research; computerised compilation of customer indexes; computerised compilation of order lists; computerised data processing; computerised data verification; computerised database management; computerised file management; computerized file management; online advertising on a computer network; online promotion on a computer network; systemization of information into computer databases; administration of business affairs; administration of businesses; administration relating to business appraisal; advisory services relating to business acquisitions; advisory services relating to business management; advisory services relating to business organisation; advisory services relating to business planning; advisory services relating to business risk management; arranging business introductions; arranging business shows; arranging exhibitions for business purposes; association services being the provision of business support or advice; benchmarking (evaluation of business organisation practices); business accounts management; business acquisition searches; business acquisitions; business acquisitions consulting services; business administration; business administration advisory services; business administration consultancy; business advertising services relating to franchising; business advice; business advisory services; business analysis services; business assistance; business consultation; business information; business inquiries; business management; business negotiations; business planning; business research; compilation of business data; compilation of business directories; data base services for business; information services relating to businesses; management consultations relating to business; operation of businesses (for others); preparation of statistics (business); provision of business data; provision of business information Class 36:  Computerised banking services; computerised financial services; computerised transfer of funds
1565755	Mymoney (’55 Mark’)	4 July 2013	Class 16:  Educational materials (other than apparatus) for use in teaching; Printed matter for educational purposes Class 41:  Adult education; Adult education services; Advisory services relating to education; Business educational services; Educational instruction; Educational research; Educational seminars; Educational services; Management of education services; Provision of educational courses; Provision of educational examinations; Provision of educational information

11.   The Opponent claims that the Opponent’s Marks have been used in Australia since 1999 by its predecessor Global Mutual Funds and by the Opponent since 2005. 

12.   The Opponent’s Goods and Services offered under the Opponent’s Marks have been promoted in commercial documentation issued to clients, corporate sponsorships and partnerships, advertising in publications directed to large potential clients requiring financial related services, on its website and social media accounts.  The Opponent’s MyMoney mark was also marketed with a third party’s financially related software. 

13.   Chee 1 annexes third party media coverage of the Opponent’s Goods and Services offered under the Opponent’s Marks, its own media releases, advertisements, articles published in retail magazines and promotional materials provided to clients and prospective customers.

14.   The Opponent is also part of a corporate alliance program whereby the Opponent promotes its services to about 90,000 members and subscription-based programs. A copy of the program is annexed to Chee 1.

15.   In July 2018, the Opponent launched its MyMoney.Tools app (‘Opponent’s App’).  The announcement of the Opponent’s App was covered on moneymanagement.com.au.

16.   In 2014, Antill[4] rated the Opponent in the Top 100 Coolest Companies, Highly Commendable in the Micro Business Category.  Antill has also listed the Opponent in its SMART 100 companies in 2014, 2107 and 2018.  In 2019, the Opponent was a finalist in the Australian Fintech Awards for Personal Finance Innovator of the Year. Collectively, recognition of the Opponent by Anthill and the Fintech awards is referred to as the ‘Opponent’s Awards’.  Further information about these awards is included in the EIR.

[4] One of Australia’s largest online communities for entrepreneurs, business builders and innovators.

17.   Ms Stephens, Ms Diamond, Mr Diamond and Mr Waddington all attest to their knowledge of the Opponent and its products and declare that they associate the MyMoney trade mark with the Opponent.

18.   Chee 2 annexes a copy of the prosecution file on the Trade Mark.  I note that the Examiner considered the Opponent’s registration 819051 and made an annotation that this mark is sufficiently different from the Trade Mark.

19.   The remainder of the EIR consists of evidence of use of the Opponent’s Marks on Facebook since 23 February 2019, a search for ‘MY MONEY’ on Facebook and details of other applications to register trade marks in Australia that the Opponent claims it opposed.

Applicant’s Evidence

20.   The EIA consists of:

·Declaration of Roslyn Van Welie, director of the Applicant, made on 24 February 2022 with Annexures RVW1-RVW6; and

·Declaration of Catherine Macneil, attorney employed by Mark My Words Trademark Services Pty Ltd, made on 28 February 2022 with Annexures CM1 and CM2.

21.   The Applicant was incorporated in August 2017 under the name Shaped Business Services Pty Ltd. Its core brand is SHAPED BUSINESS SERVICES used in relation to Business Activity Statement agent and bookkeeping services targeted at small to medium businesses.

22.   The Trade Mark is used as a sub-brand for more specialised advisory, education and training services targeted at customers interested in budgeting and cashflow management.

23.   Ms Van Welie first thought of the Trade Mark in around January 2020 because it alludes to the common challenges of budgeting and cashflow management.  The Applicant claims it was unaware of the Opponent’s Marks at the time of adopting the Trade Mark and has not encountered any instances of consumer confusion.

24.   The Applicant has continuously used the Trade Mark since January 2021 including on its website, social media accounts and promotional competitions.  Examples of use are annexed.

25.   The MacNeil Declaration annexes the results of a search of the Australian Trade Marks Register for marks containing ‘MY’ and ‘MONEY’ in classes 35 and 41.

Discussion

Section 44

26.   Section 44 relevantly provides:

44  Identical etc. trade marks

…

(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.

27.   To successfully oppose the application pursuant to s 44, the Opponent must establish that the trade mark(s) upon which it relies, being a trade mark registered 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 services and/or closely related goods to the Applicant’s Services (‘the third requirement’).

28.   In support of this ground of opposition, the Opponent relies on its registrations for the Opponent’s Marks, each of which has a priority date earlier than the Relevant Date. The first requirement is satisfied.

29.   With respect to the second requirement, the Opponent’s Written Submissions specify that the Opponent does not claim that the Trade Mark is substantially identical to the Opponent’s Marks but alleges that the marks are deceptively similar.  For completeness, I do not consider any of the Opponent’s Marks to be substantially identical to the Trade Mark.  The test for ‘substantial identity’ was articulated by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’):

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

[5] [1963] HCA 66, [12].

30.     The trade marks to be compared are set out below:

Opponent’s Marks			Trade Mark
51 Mark	83 Mark	55 Mark
MyMoney	mymoney	Where Did My Money Go?

31.   There are obvious differences between the Trade Mark and each of the Opponent’s Marks.  The additional/different words in the Trade Mark and absence of a device element as compared to the 83 Mark, result in a total impression of dissimilarity.  The Trade Mark is not substantially identical to any of the Opponent’s Marks

32.   Turning to the question of deceptive similarity, s 10 provides that ‘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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who said:

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 [mark].[6]

[6] Ibid [13].

33.   For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[7] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[8] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer, allowing for an imperfect recollection of the trade marks.[9]  The impression comes from the trade marks as a whole, and involves a consideration of the look, sound and ideas conveyed by the trade marks.  All of the surrounding circumstances must be considered including the visual and aural similarities, the nature of the goods and of potential customers.[10]

[7] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74]-[75] (Moore, Sackville and Emmett JJ).

[10] Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774, 777 (Parker J) cited in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

34.   The Opponent argues that the essential element of each of the Opponent’s Marks and the Trade Mark is ‘my money’ and that the commonality of these words results in the Opponent’ Marks and Trade Mark conveying the same impression and idea. 

35.   In the Opponent’s submission, the differences between the Trade Mark and Opponent’s Marks do not change the overall impression of the Trade Mark as ‘my money’.  The Opponent refers to the decision in Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd[11] where WACKO was found to be “sufficiently prominent” in DOGS GO WACKO FOR SCHMACKOS that the mark WHACKOS was found to be deceptively similar to that registered phrase.  The Opponent contends that the words ‘My Money’ in the Trade Mark are similarly prominent.  However, the reasoning which led to this conclusion is not applicable to the present circumstances.  In particular, ‘my money’ is not “playful, amusing and interesting” and the phrase ‘Where Did My Money Go?’ would not be divided into two in the same way as DOGS GO WACKO FOR SCHMACKOS so as to emphasise the common element ‘my money’. 

[11] [2006] FCA 767, [36] (Moore J).

36.   Moreover, I do not regard the other examples relied on by the Opponent of BONZA BRATS v BONZA[12] and MY MELODY v MY MELODY DREAMS[13] to be persuasive.  A number of factors differentiate the present comparison including the common words do not appear at the beginning of the Trade Mark and the additional words in the Trade Mark do not qualify ‘My Money’.

[12] Re Application by Coles Myer Ltd (1993) 26 IPR 577 (Hearing Officer I. Thompson).

[13] Re Application by Eau de Cologne & Parfumerie-Fabrik Glockengasse No 4711 Gegenuber Der Pferdespost Von Ferd Mulhens (1990) 17 IPR 540 (Hearing Officer I. Thompson).

37.    The Applicant contends that the Trade Mark is visually and aurally different to the Opponent’s Marks and gives rise to a different connotation, construction and interpretation to the Opponent’s Marks.  The Applicant argues that the first element ‘Where’ in the Trade Mark alters the sound and appearance and is a memorable element as compared to the words ‘my money’ which are common to the trade and in registered marks for the same or similar services to the Services.  Moreover, the Applicant submits that the respective services of the parties are chosen with care which further reduces any likelihood of confusion.

38.   In my view, the Trade Mark is visually and aurally distinct from the Opponent’s Marks.  Further, the construction of the Trade Mark as a question creates a different idea and impression to the Opponent’s Marks.  The 51 Mark and 55 Mark convey the idea of money which a consumer has in their possession whereas the Trade Mark conveys the idea of money which is lost or missing.  The idea of the 83 Mark is arguably more similar but the differences in sight and sound are such that some vague similarity in the idea of the marks is not sufficient to support a finding of deceptive similarity.  Even accounting for the imperfect recollection of consumers, the Trade Mark and Opponent’s Marks are unlikely to be confused.

39.   I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Marks and therefore, the s 44 ground is unsuccessful.

Section 60

40.   Section 60 provides:

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

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

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

42.   In McCormick & Co Inc v McCormick,[14]  Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and based on the definition provided, she concluded that it was ‘the recognition of the [trade mark] by the public generally’.[15]   Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[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 …[16]

[14] [2000] FCA 1335.

[15] Ibid, [81].

[16] [1992] FCA 159, [118].

43.   The reputation must be established as a matter of fact by the Opponent[17]  and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[18] although this is tempered by the nature of the relevant market.  In the context of the Services, a significant proportion of the Australian adult population and business community would be potential consumers.

[17] Ibid [77].

[18] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

44.   In its SGP, the Opponent particularised this ground as follows:

The Opponent owns the trade mark MyMoney in Australia and has used its MyMoney trade mark in Australia since December 1999 in respect to the Opponent’s services and respect of goods and services listed in ground 3 listed herein. 

As a consequence of the Opponent’s use of its MyMoney trade mark and the promotion and advertising of the Opponent’s trade mark, the Opponent has acquired a substantial reputation in its MyMoney trade mark in Australia in relation to the Opponent’s good and services. 

The opposed trade mark is substantially identical with the Opponent’s MyMoney trade marks and the opposed trade mark application has been applied for the same, similar and/or overlapping services as the Opponent’s good and services.

45.   The Applicant argues that based on the above statements in the SGP, the Opponent’s case under s 60 is confined to the 51 Mark even though it has referred to the 55 Mark and 83 Mark in the Opponent’s Written Submissions.  I agree that the SGP makes no claim to a reputation in the mark FIND MY MONEY & Device and it is arguable whether the 55 Mark is covered by the particulars.  However, for the reasons discussed below, it is immaterial whether the ’83 and ’55 Marks can be relied upon by the Opponent.

46.   In support of its contention that the Opponent has a reputation in its mark MyMoney, the Opponent relies on its use of the term ‘MyMoney’ since 1999 and various promotion of its business on its own and third party social media accounts, in publications and the Opponent’s Awards.

47.   The Applicant disputes that the Opponent’s evidence establishes that it had a reputation in the mark MyMoney and points to a number of issues with the Opponent’s evidence including some of the exhibits being undated and inconsistencies between the exhibits and the contents of the declarations.  By way of example, the Product Disclosure Statement (‘PDS’) exhibited to Chee 1 and the Financial Services Guides exhibited to the Sarah Diamon Declaration and Waddington Declaration were issued by the Opponent’s predecessor in title Global Mutual Funds long after the assignment of the 51 Mark to the Opponent.  In the absence of any explanation or licence, the Applicant notes that such use is not use of the mark MyMoney by the Opponent. In fact, the PDS specifically refers to My Money being a registered trade mark of Global Mutual Funds which apart from being incorrect in 2007 would be contrary to any licence by the Opponent for Global Funds to use the Trade Mark by indicating it is a licensee (assuming that the Opponent licences each user on the same terms as those illustrated at Exhibit GC5 of Chee 1). 

48.   Further, the Applicant contends that the evidence demonstrates use of MyMoney for a more restricted range of services being commission rebate services and not advice on financial products.

49.   I agree with the Applicant that the Opponent’s evidence has some deficiencies.  The EIS focusses on the promotion and marketing of the Opponent’s Marks but lacks detail about business and services offered.  In particular, no information is provided about the revenue generated by the Opponent’s Services offered under the MyMoney mark or number of customers so as to provide an indication of the size of the business and extent of use.  Much of the evidence relates to the Opponent’s commission rebate services.  According to the media publications at Exhibits 7 and 8, the maximum fee that the Opponent receives for obtaining a rebate for a customer paying commission to a managed fund is $240 annually.  The example given in Exhibit 10 similarly provides the Opponent with $240 in fees. Exhibit GC4 to Chee 2 refers to average refunds of $125 per customer.  The information available in the evidence indicates that the Opponent’s revenue from this aspect of its business is likely very modest.

50.   There is little information in the Opponent’s evidence about use of the MyMoney mark for services other than commission rebate services.  Exhibit GC12 to Chee 1 is an undated Financial Planning Wealth Management Program marketing guide which Chee 1 claims was distributed to 1000 potential clients.  It is not clear when such distribution occurred nor is any additional information provided about the Opponent’s financial planning business. Mr Chee describes Exhibit GC14 as the Opponent’s Group Services Guide which “was distributed to over 3000 clients of its accounting and financial practice”.  Again, no details about when this distribution occurred or about the nature and size of this practice are included in the EIS.  In July 2018, the Opponent launched its “MyMoney.Tools financial fitness app” which appears to be a financial tracker software application but the evidence does not detail the number of downloads or users of this app.

51.   The Declarations of Ms Stephens, Ms Diamond, Mr Diamond and Mr Waddington are not persuasive in establishing that the Opponent has a reputation in the relevant market. 

52.   I am not satisfied that the EIS establishes that the Opponent’s mark MyMoney was recognized by the public generally nor that there is a likelihood of confusion from use of the Trade Mark.

53.   The s 60 ground of opposition has not been established.     

Section 42(b)

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

55.   The Opponent bears the onus of establishing that use of the Trade Mark would (rather than could) be contrary to law.[19] 

[19] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

56. In the SGP, the Opponent relies on its use and reputation in the mark MyMoney and claims that use of the Trade Mark would be misleading and deceptive and/or contravene ss 18 and 19 of the Australian Consumer Law (‘ACL’), Schedule 2 Competition and Consumer Act 2010 (Cth) in that use of the Trade Mark would amount to a false representation, and further would amount to passing off.

57. From the Opponent’s Written Submissions, it appears that the reference to s 19 ACL is a typographical error as the written submissions refer to s 29 ACL. Also, s 19 ACL relates to “Information Providers” and has no relevance to the present matter. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[20]

[20]Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

58. Where an opponent is unsuccessful in establishing its s 60 ground, it will almost invariably be unable to establish the relevant sections of the ACL had been breached in circumstances where the opponent relies on a reputation of the very same trade mark(s). Unlike s 60 Act, ss 18 and 29 ACL are not concerned with behaviour that “would be likely to deceive or cause confusion” but rather require a likelihood that relevant consumers be misled or deceived as to the true origin of the Applicant’s Services or their connection to the Opponent. Under the ACL, mere confusion or simply being caused to wonder is not sufficient as is the case with s 60. Having been unsuccessful under s 60, it follows that on the stricter test of the ACL,[21] I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.

[21] Weili Mu v Guotai Huang [2021] ATMO 113,[35]-[36] (Hearing Officer N. Smith).

59. As I have found that the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off.[22] 

[22] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

60.   Accordingly, the s 42(b) ground is unsuccessful.

Section 43

61.   This section requires the Opponent to demonstrate that there is a connotation in the Trade Mark (or a part of it) and that because of the connotation, use of the Trade Mark would be likely to deceive or cause confusion.

62.   The ‘connotation’ must be inherent in the trade mark itself. The connotation must arise from the Trade Mark[23] and not from any comparison with another trade mark.[24] As Spender J noted in Winton Shire Council v Lomas:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[25]

[23] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

[24] Ibid; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmman J).

[25] [2002] FCA 288, [19].

63.   In support of this ground of opposition, the Opponent relies upon its registrations for the Opponent’s Marks and claimed reputation in MyMoney.  The Opponent alleges that due to the distinctiveness of these marks, registration of the marks for some time and use of MyMoney, consumers will be deceived or confused into thinking that services offered under the Trade Mark are associated or affiliated with the Opponent.

64.   The existence of the Opponent’s Marks is not relevant to this ground of opposition.  The Opponent must identify a clear secondary meaning that emanates from the Trade Mark itself which meaning would result in use of the Trade Mark being likely to deceive or confuse consumers.  The Opponent has not identified any such intrinsic connotation and accordingly, the s 43 ground of opposition has not been established.

Decision and Costs

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application 2148122 may proceed to registration not less than 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 registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

2. The Applicant 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 Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger
Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 October 2023