MYOB Technology Pty Ltd v John Miller

[2011] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by MYOB Technology Pty Ltd to registration of trade mark application 1222304(9, 42) - MYOC - filed in the name of John Miller.

Delegate:	Jock McDonagh
Representation:	Opponent: Ian Drew of Davies Collison Cave Patent & Trade Mark Attorneys Applicant: Written submission only
Decision:	2011 ATMO 05 Section 52 opposition sections 42(b), 44 and 60 pressed –s44 established – costs awarded against applicant

Background

1. John Miller (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

Application No:	1222304
Priority Date:	1 February 2008
Goods: Services:	Class 9: Carbon measurement software Class 42: Carbon measurement software services
Trade Mark	MYOC

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 4 September 2008.

2. On 3 December 2008, MYOB Technology Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Marks Act 1995 (‘the Act’), opposing the registration of the trade mark. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act.

3. The opponent duly served and filed evidence in support of the opposition. The applicant opted not to serve any evidence in the proceedings, but the applicant did send submissions to the opponent and this office. 

4. The matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne on 22 October 2010. The opponent was represented by Ian Drew of Davies Collison Cave Patent & Trade Mark Attorneys. The applicant was not represented at the hearing.

5. Mr Drew advised that the opponent would only be pressing sections 42(b), 44 and 60 grounds of opposition. For the sake of completeness, I find that the remaining grounds of opposition have not been established.

   Onus and Standard of Proof

6. The opponent bears the onus of proof of establishing grounds of opposition and there is no special standard of proof above the ordinary civil standard; that is, on the balance of probabilities.

7. It is only necessary for one ground of opposition to be established for the opponent to succeed in the proceedings.

   Evidence

8. Evidence in support of the opposition in the form of a statutory declaration by Robert Reside, the General Manager Risk and Compliance for the MYOB Group (as such, directly responsible for management of trade marks and other intellectual property registered or controlled by the opponent), of Burwood East, Victoria, shows that the opponent has used and registered a number of trade marks based around its well-known MYOB trade mark in Australia.  The opponent’s use of the MYOB and MIND YOUR OWN BUSINESS trade marks started in 1991 in relation to financial and accounting software.  The opponent is a leading provider of business accounts software in Australia.

9. The acronym MYOB is an initialisation of the words Mind Your Own Business.  The words MIND YOUR OWN BUSINESS are also a registered trade mark of the opponent and occur alongside their acronym on the opponent’s advertising and promotional materials.

10. Brief details of some of the opponent’s relevant registrations are:

TM No.	Priority date	Trade Mark	Class: goods, services
931872	24.10.2002	MIND YOUR OWN BUSINESS	Class 9: Computer software and software packages for business and business management, accounting, electronic payment, office administration, processing of sales and purchases, calculation of GST, manuals sold therewith as a unit
784312	2 .02.1999	MYOB	Class 9: Computer hardware, computer software including software packages directed to accounting; instructional and other manuals sold therewith as a unit Class 16: Printed publications and printed matter; instructional and other manuals and publications relating to computers and computer software Class 35: Retail and wholesale of computer hardware, computer software and manuals for use therewith Class 41: Educational and training services relating to computers and computer software Class 42: Computer hardware and computer software development and consultancy services; computer hardware and computer software support services
865577	9.02.2001	MYOB	Class 35: Business administration, business management, business assistance; business services; business advisory, consultancy and provision of business information relating to the aforesaid services; the aforesaid services being provided on-line, electronically or by other means Class 36: Financial services, including purchase payment and bill payment services, electronic purchase payment and electronic bill payment services; electronic banking services; electronic accounts payable services; funds, money and currency transfer services; financial advisory, consultancy and provision of financial information relating to the aforesaid services; the aforesaid services being provided electronically or by other means Class 42: Computer services relating to the provision of access to computer databases, the Internet and other facitilies including providing a portal site on the Internet providing links to other sites; providing access to databases and Internet sites for the retrieval and downloading of information relating to financial affairs; computer research, advisory, consultancy and information services relating to the aforesaid services

Discussion

1. Mr Drew made submissions addressing the similarities of the applicant’s mark to those of opponent’s registrations 784312 and 865577 (shown above) under section 44 of the Act and also submissions relating to the reputation of the opponent and sections 42 and 60 of the Act.

2. Mr Drew also directed my attention to the decision of Hearing Officer Thompson in MYOB Technology Pty Ltd v Slick Solutions Pty Ltd [2006] ATMO 47 (19 June 2006), in which he held that MYOFP was deceptively similar to MYOB under section 44 of the Act.

3. Section 44 of the Act provides:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

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

   (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.

   (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.

4. I think that, here, it is clear that the goods and services of the opponent are similar to the goods and services of the applicant.  In simple terms, both parties’ marks relate to computer software and computer software services. The applicant’s specialized carbon measurement software would be relevant to carbon trading, which is a form of business accounting for which the opponent’s products are likely to be used.

5. The registrations on which the opponent relies all have priority dates that are earlier than that of the opposed application.  The questions that remain, therefore, are whether the trade marks of the parties are either substantially identical or deceptively similar.

6. The trade mark of the applicant, when compared side-by-side is not substantially identical to any of the corresponding trade marks relied on by the applicant.

7. Deceptive similarity is defined within section 10 of the Act:

   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.

8. The expression ‘deceptively similar’ was discussed in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50, French J, with Tamberlin J agreeing, made the following propositions:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   (iii) 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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:

   "the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

9. There is another factor which I should, when considering the likelihood of confusion between the trade marks of the parties, take into account in appropriate cases. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, Dixon and McTiernan JJ stated:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.’

10. This approach was adopted by Branson J in NEC Corporation v Punch Video (S) Pte Limited [2005] FCA 1126 where the evidence established that the applicant had exactly copied the font in the NEC portion of the trade mark NECVOC from the trade mark of the opponent.

11. Concerning the comparison of the trade marks, Dixon and McTiernan JJ in Australian Woollen Mills Ltd, above, at page 658 say:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

12. And Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, said:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

13. I am thus to consider all of the surrounding circumstances in deciding whether the trade marks of the parties are deceptively similar to each other. 

14. I think that it is likely that the letters in the applicant’s trade mark MYOC are an initialisation of the words Mind Your Own Carbon since carbon is the specific item measured by the applicant’s software. Even if this was not the intention of the applicant, it is likely that purchasers will perceive that this is the case.

15. There are no other registered trade marks on the Australian register (apart from those here under discussion) that are susceptible to the MIND YOUR OWN […] construction. 

16. The applicant in his submissions cited MYOGEN and MYOP as trade marks co-existing on the Register. The MYOGEN trade mark is registered in the name of Myogen Inc, for goods and services associated with pharmaceuticals for the treatment of heart disease.  It is clearly neither an acronym nor an initialisation.

17. The trade mark MYOP is registered in the name of Jonathan Sceats Eyewear Ltd for Educational and training services relating to eyewear and optometry. Again it would seem to be clearly neither an acronym nor an initialisation. It seems to be either a play on the word ‘myopic’ or a contraction of ‘my optometrist/optician’ or similar.

18. The signs MYOB and MYOC are likely to be pronounced as an initialisation rather than as words.  This reinforces the similarities between them.  Further, the construction MYOB (or MIND YOUR OWN BUSINESS) is, in relation to the goods and services of the opponent, memorable and distinctive.  It is likely to be retained and remembered by the public and recalled when seeing the opposed trade marks.  There is no suggestion in the evidence (nor is it within my experience) that the construction MIND YOUR OWN […] is in any way common to the trade of the parties or normally used by other traders in relation to their goods or services.  On this basis, it is likely that purchasers will perceive the trade marks of the parties as being related and having a common source in trade.

19. I am thus satisfied that the trade mark of the applicant is deceptively similar to those of the opponent.

20. Having found in favour of the opponent in terms of section 44 there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal of this decision.

    Decision

21. Section 55 of the Act provides:

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or
    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:  For limitations see section 6.

22. I refuse to register application 1222304.

    Costs

23. The opponent is entitled to its costs, and I award costs against the applicant at the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    20 January 2011