MySupply Store Pty Ltd v mySupply Pty Ltd
[2017] ATMO 26
•31 March 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by mySupply Store Pty Ltd to registration of trade mark application 1653775 (1,9,11,37) - mysupply - filed in the name of MYSUPPLY PTY LTD.
Delegate:
Cristy Condon
Representation:
Opponent Campbell P. Thompson of Counsel instructed by Michael Seifried of FB Rice
Applicant Simon Gapes of Gibert and Tobin written submissions
Decision:
2017 ATMO 26
Trade Marks Act 1995 (Cth) s 52 opposition proceeding – ss 44, 58, 60, 42 and 62A considered – no ground established – trade mark will proceed to registration; costs awarded against the Opponent.
Background
1. This is an opposition brought by mySupply Store Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark subject of the application below in the name of MYSUPPLY PTY LTD (‘Applicant’):
Trade Mark No.:
1653775
Priority Date:
28 October 2014 (the ‘Relevant date’)
Goods/Services:
Class 1: Chemicals for use as deterrents by virtue of their odour; Chemicals for use in industry; Chemicals used in industry; Chlorinated chemicals; Industrial chemicals
Class 9: Control apparatus for diluting (measuring) cleaning chemicals
Class 11: Disinfectant dispensers for washrooms; Hand drying apparatus for washrooms; Washroom installations
Class 37: Installation of kitchen equipment; Installation of machines; Installation of sanitary apparatus; Installation of washroom apparatus)(together the ‘Relevant Goods and Services’)
Trade Mark:
mysupply (‘Trade Mark’)
2. Following advertisement on 26 March 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 April 2015 and Statement of Grounds and Particulars (‘SGP’) on 5 May 2015. The SGP was assessed by this office as adequate. On 2 June 2015 the Applicant filed a Notice of Intention to Defend the application. The SGP raised grounds of opposition to the Trade Mark’s possible registration under ss 44, 58, 60, 42 and 62A.
Evidence
3. The following evidence has been filed in the opposition:
Evidence
Declaration
Deponent details
Opponent’s evidence in support
Joel Geoffrey Short dated 4 September
2015 (‘Short 1’)
Director and General Manager of mySupply Store since 29 April 2008
Applicant’s evidence in answer
Pharrah Underwood dated 30 December 2015 (‘Underwood’)
Director and Sales and Marketing Leader of the Applicant
Opponent’s evidence in reply
Joel Geoffrey Short dated 11 March 2016 (‘Short 2’)
As above
4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. The parties chose to avail themselves of this opportunity. The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 6 February 2017. Mr. Campbell P. Thompson of Counsel, instructed by Mr. Michael Seifried of FB Rice made written and oral submissions on behalf of the Opponent. The Applicant was not represented at the oral hearing however, Mr. Simon Gapes of Griffith Hack filed written submissions on its behalf.
5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, 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.
The Opponent
6. According to Short 1 the Opponent is a warehousing and distribution service that does not specialise in a particular product. Its website claims the Opponent is a “Product Specialist” with an extensive range of products on offer across many areas of business, including: catering and canteen services, general stationery, industrial and workshop, janitorial and facility management, medical and promotional products and gifts.[1]
[1] Opponent’s trade marks
7. The Opponent is the owner of Australian Trade Mark Registration No. 1478499 which has a priority date of 8 March 2012 for the plain word trade mark mySupply Store PTY LTD (the ‘Opponent’s word trade mark’) which covers the following services:
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); wholesaling of goods (by any means)
8. The Opponent is also the owner of registered trade mark 1643987 . This trade mark (the ‘Opponent’s composite trade mark’) has a priority date of 4 September 2014 and is registered for the following services:
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)
(together the ‘Opponent’s trade marks’).
The Applicant
9. According to its website the Applicant is “A proudly family owned product and service provider of cleaning chemicals and accessories, washroom products, hand hygiene and odour control solutions”.[2]
[2] Applicant’s trade marks
10. At the examination stage the examiner raised the Opponent’s trade marks as barriers to the acceptance of the Trade Mark with respect to certain services in class 35 that the Applicant sought to register the Trade Mark for. These services were removed and transferred to divisional trade mark application number 1668150 ‘mysupply’ and the Trade Mark was accepted for possible registration. I also note that on 17 November 2014 the Applicant filed trade mark application number 1657678 which claims the following goods and services:
Class 1: Chemicals for use as deterrents by virtue of their odour; Chemicals for use in industry; Chemicals used in industry; Chlorinated chemicals; Industrial chemicals
Class 9: Control apparatus for diluting (measuring) cleaning chemicals
Class 11: Disinfectant dispensers for washrooms; Hand drying apparatus for washrooms; Washroom installations
Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Wholesaling of goods (by any means)
Class 37: Installation of kitchen equipment; Installation of machines; Installation of sanitary apparatus; Installation of washroom apparatusGrounds of Opposition, Onus and Standard of Proof
11. In its written and oral submissions the Opponent has pressed all of the grounds for opposition nominated in the SGP. To successfully oppose the application the Opponent needs to establish at least one of those grounds. As will become apparent, the Opponent has not established a ground of opposition.
12. The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is 28 October 2014, being the priority date of the application.[5]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Evidence and Discussion
13. The Opponent was first established in Australia on 29 April 2008 and since this time has used the Opponent’s trade marks continuously in relation to all of its retail and wholesale distribution services.[6]
[6] Short 1 [11] to [13]; Short 1 Annexure JGS – 4 which contains a partially redacted copy of an ASIC extract of incorporation of mySupply Store Pty Ltd.
14. Short 1[7] describes the distribution activities of the Opponent as follows:
[7] Short 1 [20]-[26].
mySupply Store currently distributes and sells products in the following ways.
(a)through national account managers who are employees of mySupply Store and who manage various client business accounts within Australia;
(b)by selling wholesale to certain distributors who then on-sell products to retail consumers;
(c)online via our website (described above);
(d)through a multinational manufacturer partnership (which operates via the EGO Pharmaceuticals (EGO) website) by which EGO sales staff and representatives market their brand and direct the sales back through mySupply Store. EGO's website ( also has a medical professional portal through which industry professionals are able to log on to and make purchases, which portal then redirects to the website. Attached and marked Exhibit "JGS-10" is an extract from the website showing use of the mySupply store logo.
(e)business to business - by which I mean that we supply businesses (via our national account managers) that have a direct need to use our products for internal consumption (rather than requiring them for wholesale or retail on-sale). Some examples of the types of businesses that mySupply Store supplies to include:
• aged care homes and facilities;
• hospitals;
• food outlets;
• schools;
• aviation services;
• medical practices,
as well as the other businesses referred to in paragraph 27 below.
mySupply Store also provides advice to consumers in relation to the products that it supplies.
mySupply Store also installs dispensers of various types for the products that mySupply Store distributes and sells.
Some of mySupply Store's supplier partners are listed on the mySupply Store website and include Ego Pharmaceuticals, McPhersons Engineering Supplies and Mediflex Industries. A list of some other entities is attached and marked Exhibit "JGS-11".
mySupply Store employs sales representatives who manage various markets, such as those found in subparagraphs 27(a) to 27(j) below.
mySupply Store currently supplies and distributes products throughout Australia. to do this we ship our goods via TNT Express Australia nationally as well as via a number of contracted drivers.
mySupply Store's clients buy products in various ways, including:
·online through our website
·by telephone and email;
·by facsimile;
·through direct contact sales representatives;
·via a company procurement portal (such as the EGO portal described above in paragraph 20)
·and by an automated scheduled forward ordering system that can be arranged and set up with individual clients
15. The Opponent uses the Opponent’s trade marks in a variety of ways including on its website, on invoices, flyers, business cards and at conferences[8]. The goods that the Opponent distributes are many and varied and the Opponent claims include the goods that the Applicant has specified in the Trade Mark. Short 1 states:
In my view, and for reasons set out above, there are also very significant similarities between the services covered by MySupply's Application and the goods and services covered by mySupply Store's Trade Mark. This is because mySupply Store supplies all of the goods which are covered by the goods in classes 1, 9 and 11 of MySupply's Application, which fact is known to MySupply.[9]
[8] Short 1 Annexure JGS-14.
[9] Short 1 [46]; Short 1 Annexure JGS- 17.
16. The Opponent’s sales and advertising figures are claimed as confidential so I will not discuss them here suffice to say that the Opponent’s sales are moderate and I have taken into account the average small cost per unit that would be applied to many of the different products that the Opponent distributes.
17. According to Short 1 the Applicant’s similar business became known to the Opponent on or about 5 July 2014 and instances of customers confusing the unrelated businesses have been included in its evidence in support[10]. On 21 October 2014 the Opponent wrote to the Applicant and claimed that the Applicant had engaged in misleading and deceptive conduct and passing off. The Applicant denied any such conduct and claimed that the Trade Mark and the Opponent’s trade marks were not deceptively similar. It is clear from reading the details in the ongoing letters between the parties that the Applicant had been told by letter from the Opponent that the Opponent had used its marks since 2008 and that the Applicant was using the Trade Mark in respect of similar services as the Opponent.[11]
[10] Short 1Annexures JGS – 25 JGS – 26, JGS – 27, JGS – 28, JGS – 29.
[11] Short 1 Annexures JGS – 21, JGS – 22, JGS – 23, JGS – 24.
18. Short 2 claims that the Applicant does not use the Trade Mark by applying it to the Relevant Goods and Services, rather the Applicant operates a business distributing the goods of others.[12]
[12] Short [37]-[44].
19. Underwood states with respect to the Applicant that “Mysupply was incorporated on 17 July 2003. The company name was initially City Pack Pty Ltd”. I digress for a moment from the Applicant’s evidence and I note that Short 2 Annexure JGS – 1 contains a copy of a Notification of Resolution to change the Applicant’s company name from City Pack Pty Ltd to MySupply Pty Ltd and is dated 20 January 2012 and helps to clarify the statements in Underwood.
20. Underwood Annexure 9 contains a redacted copy of an invoice dated 2 February 2012 which bears the Trade Mark and confirms that the Applicant’s use of the Trade Mark commenced on or around 2 February 2012. The Trade Mark was chosen because Ms Underwood was “a fan of Apple products and the marketing strategies Apple uses” and wanted a family of marks akin to Apple’s ‘i’ prefix. The ‘my’ element fulfilled this requirement and the ‘supply’ element aptly described the service it was providing[13]. Underwood also deposes that around this time she conducted Google® searches for ‘my supply’ and did not find similar trade marks in use in the same market[14]. In respect of the box device which appears in trade mark 1657678 Underwood claims her husband, a graphic designer, designed it[15].
[13] Underwood [15].
[14] ibid [16].
[15] ibid [20] see also Annexure 6.
21. On 28 October 2014 the Applicant lodged its application for the Trade Mark, however, the Applicant’s website did not go live until on or around 8 December 2015. Underwood also states “…the mysupply trade mark and other branding used by Mysupply were adopted after lengthy consideration and on the understanding that the trade mark was available for use, and without knowledge of the Mysupply Store Pty Ltd business. There was no intention to pass off our goods and services as those of Mysupply Store Pty Ltd”. [16]
[16] [35].
22. In response to Short 1 Underwood claims that the Applicant “…provides MYSUPPLY-branded chemicals. Further…Mysupply intends to commence provision of further MYSUPPLY-branded cleaning goods and apparatus in future”[17]. I note that the Opponent disagrees that the examples of the products shown in Underwood Annexure 2 demonstrate that the Applicant is using the Trade Mark in relation to cleaning goods. The Opponent claims the use of the words ‘MY SUPPLY’ indicate product contact information and are not trade mark use.[18]
Reasons
[17] [34] see also Annexure 2.
[18] Short 2 [7].
Section 44
23. As a preliminary matter I mention now that the focus here in opposition proceedings is not to review the examiner’s decision and arguments, but rather to consider afresh the grounds for rejection that have been raised.
24. Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(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.
(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.
(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.
(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.
To successfully oppose the application pursuant to section 44 of the Act the Opponent must ensure that the Opponent’s trade mark/s:
· has a priority date which is earlier than the relevant date
· is substantially identical with or deceptively similar to the Trade Mark; and
· is in respect of services which are similar to the Relevant Services and closely related to the Relevant Goods.
In pursuit of this ground the Opponent relies on the Opponent’s trade marks. Both of the Opponent’s trade marks have a priority date that is earlier than the Relevant Date. The first requirement of section 44 is satisfied.
In regard to the second requirement under section 44, the concept of ‘substantial identity’ was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd where Windeyer J said:
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.[19]
[19] [1963] HCA 66, [12].
I will consider first the whether the Trade Mark ‘mysupply’ is substantially identical to the Opponent’s word trade mark 1478499 ‘mySupply Store Pty Ltd’. On a side by side comparison there are clear differences between the respective trade marks. The Trade Mark is wholly contained in the Opponent’s word trade mark but the Opponent’s word trade mark also includes the word ‘STORE’ and the acronyms ‘PTY’ and ‘LTD’. The additional elements in the Opponent’s word trade mark are sufficient for me to conclude that the respective trade marks are not substantially identical.
The Opponent’s composite trade mark 1643987 includes the words ‘My SUPPLY’ but it also includes the word ‘STORE’ and a device that comprises an outline of a house which is joined by a line to an open box graphic. The combination of these additional elements is sufficient for me to conclude that this trade mark is also not substantially identical to the Trade Mark. I move then to consider whether the Trade Mark and the Opponent’s trade marks are deceptively similar.
Deceptive similarity is defined in section 10 of the Act as follows:
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.
The relevant authority for assistance 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].[20]
[20] Ibid [13].
I am to estimate the effect of the respective trade marks on the minds of potential customers or in other words, the assessment is to take place in the context of the marketplace for the goods and services. This contextual comparison was discussed in Re Application by the Pianotist Co Ltd[21] at 380, where Parker J said:
[21] 23 R.P.C. 774
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.
The words ‘my supply’ are clearly a dominant and memorable feature in both of the Opponent’s trade marks and they are the only element in the Trade Mark. The presence of which creates a strong visual and aural similarity between the marks. I am satisfied that the Opponent’s trade marks would leave the same impression on a potential purchaser as the Trade Mark. Each trade mark would be imperfectly recollected as ‘my supply’. Accordingly, I am satisfied that the Opponent’s trade marks are deceptively similar to the Trade Mark.
Having decided that the Trade Mark is deceptively similar to both of the Opponent’s trade marks what remains to be determined, then, is whether the Applicant’s goods in classes 1, 9 and 11 are closely related[22] to the Opponent’s services in class 35 and pursuant to section 14(2) of the Act whether the Applicant’s services in class 37 are the same or of the same description as the Opponent’s services in class 35.
[22] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 , French J (with whom Tamberlin J agreed) (at [37]).
The expression ‘of the same description’ is a phrase used to describe the relationship between goods or services such that they would be seen by purchasers as having the same trade origin if provided under the same trade mark.[23] Considerations for determining whether this is the case include the nature of the good or service and its respective purpose, the trade channels through which they are provided, whether they are normally provided by the same traders in the same places to the same class of customer, and whether those engaged in their provision are regarded as belonging to the same trade.[24] No single consideration is conclusive in itself.[25] Additionally, in respect of section 44 I am to consider all of the circumstances in which the trade marks might notionally be used, and not only those in which they have been used.[26]
[23] Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246 (FC).
[24] As set out in Jellinek’s Application (1946) 63 RPC 59 and enlarged upon in John Crowther and Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd(‘Southern Cross’) (1954) 91 CLR 592.
[25] Southern Cross, above n. 24.
[26] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411, at [50] wherein French J cited also Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353.
I turn first to the Relevant Services. I am satisfied that it is commonplace in the commercial catering industry that large kitchen and catering equipment (for example industrial or commercial ovens, refrigerators, coffee machines, rotisseries, mixers, dishwashers) is generally distributed by the same trade channel that delivers, installs and repairs the equipment. I note that the Applicant does not seem to be offering this installation service (or for that matter - whether it is manufacturing most of the goods [if any] claimed in the Trade Mark) but as I have said above, I am to consider all circumstances which the Trade Mark might be used, not only where the Trade Mark has been used.
Lockhart J in Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co[27] said:
[27] (1983) 77 FLR 139; [1983] FCA 143 at 150.
... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.
However, I am not satisfied on the balance of probabilities that the class 37 services claimed by the Trade Mark are similar to the Opponent’s class 35 services. The Opponent is not distributing large scale commercial kitchen and catering products which would require installation. It is distributing products such as chopping boards, colour coded tongs and colour coded brushes.[28] Accordingly, I am satisfied that the Opponent’s class 35 services are not the same, or of the same description, as the class 37 services claimed in respect of the Trade Mark.
[28] I note that these products are being offered for sale on the Opponent’s website under the heading “Kitchen Equipment”.
I turn now to consider whether the Trade Mark’s classes 1, 9 and 11 goods are closely related to the Opponent’s class 35 services.
I have before me evidence from the Opponent that shows what it is distributing. That said, this is a situation where both parties are offering a warehouse distribution service – a class 35 service (I note that the Applicant is not claiming this service in its application for the Trade Mark). There is no evidence or precedent, nor has the Opponent identified any, that suggest that the operation of a warehousing and distribution services is a service closely related to the goods on which it is distributing. I therefore find that the claimed goods are not closely related to the Opponent’s class 35 services. I would just add that the Opponent’s concerns appear to more squarely lie with the Applicant’s offering of distribution services, which, given the Relevant Goods and Services, are not at issue in the present opposition.
The section 44 ground has not been established.
Section 58
Section 58 provides:
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
The owner of a trade mark is the person[29] who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
[29] ‘Person’ includes a body of persons, whether incorporated or not: see s 6 of the Act.
· that the Trade Mark is identical, or substantially identical, to the trade marks relied upon by the Opponent;[30]
[30] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
· that the Applicant’s Goods are closely related to the services for which the trade marks relied upon by the Opponent was used and the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade marks relied upon by the Opponent was used;[31] and
[31] Re Hicks’ Trade Mark (1897) 22 VLR 636.
· that a person other than the Applicant used the trade mark relied upon by the Opponent before the Applicant used the Trade Mark or before it applied to register it, whichever is the earlier.[32]
[32] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
As noted above in my discussion of the section 44 ground of opposition, the Trade Mark and the Opponent’s trade marks are not identical or substantially identical. And I also note that the Applicant’s Goods and Services are not closely related/same kind of thing as the Opponent’s trade marks.
Accordingly, the first requirement has not been met and the section 58 ground is not established.
Section 60
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.
Therefore, it is for me to determine whether the Opponent has established that before 28 October 2014 the Opponent’s word trade mark or the Opponent’s composite trade mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market and whether because of that reputation, the use by the Applicant of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Company Inc v McCormick[33] at [81] Kenny J said:
[33] [2000] FCA 1335.
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
Neither Short 1 or Short 2 provide sufficient evidence to support the Opponent’s claim that it had acquired a reputation in either of the Opponent’s trade marks before the relevant date. The evidence falls far short of establishing the requisite reputation needed to establish the s 60 ground. The section 60 ground is not established.
Section 42(b)
Section 42 of the Act relevantly provides:
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.
The Opponent particularises this ground as follows:
The Opponent has used its Trade Mark in Australia continuously from on or about April 2008 in relation to distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); wholesaling of goods (by any means).
In the light of the Opponent’s reputation in the Opponent’s Trade Mark, use of the Opposed Trade Mark in relation to services similar to the services, and services closely related to the goods, in relation to which the Opposed Trade Mark is sought to be registered, would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth) and, or alternatively, constitute the common law tort of passing off.
The use of the Opposed Mark would therefore be contrary to law within the meaning of section 42.
The full text of the Australian Consumer Law is set out in Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’) which relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
These provisions apply the higher standard of use which misleads or deceives, as opposed to use which may confuse or deceive. It generally follows that if an Opponent cannot meet the lower threshold under s 60 of the Act, it will be unable to establish the higher threshold required under Australian Consumer Law (‘ACL’). In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Parkdale’)[34], Gibbs CJ said with respect to s 52 of the now repealed Trade Practices Act 1974 (the predecessor to the CCA):
In McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
[34] [1982] HCA 44; 1A IPR 684.
I note also the delegate in Qantas Airways Limited v Luke Edwards[35] commented with regard to the tort of passing off:
As for passing off, this has been described as “an action concerned with misrepresentation by which the goodwill of the plaintiff’s business is deflected to the use of the defendant with consequent damage (or a likelihood thereof) to that business.” [Shanahan’s Australian Law of Trade Marks and Passing Off, Lawbook Co., 4th ed, 2008 at [95.1005].
There are several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false representations or, indeed, passing off ) than is the case with trade marks likely to deceive or cause confusion under s 60…[the delegate then cites Parkdale, as quoted above].
[35] [2014] ATMO 40. The decision of the delegate was appealed but the delegate’s decision was upheld and the appeal was dismissed see Qantas Airways Limited v Edwards [2016] FCA 729.
55. There have been instances of the Opponent’s customers actually confusing the unrelated businesses. This is an objective test. That some customers have formed an erroneous conclusion does not of itself establish section 18 of the ACL.[36] I have also found the Opponent does not have the requisite reputation to satisfy section 60 thus on the balance of probabilities I infer from that, notwithstanding these instances of actual confusion, there remains little likelihood of confusion.
[36] Apotex Pty Ltd v Les Laboratiores Servier (No 2) (2008) ATPR 42-235, 49,206.
Accordingly, the ground under section 42(b) is not established.
Section 62A
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2) (‘Fry’) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[37]
[37] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[38]
[38] Ibid [165]-[166].
The authorities above clearly state that the test for bad faith comprises both subjective and objective elements. It follows that bad faith is a serious allegation requiring clear and persuasive evidence but the standard of proof as I have already mentioned is that of the balance of probabilities.[39]
[39] Fry [145].
The Opponent has particularised this ground as follows:
The Opponent has used its Trade Mark in Australia continuously from April 2008 in relation to the distribution of good (not being transport services) (agent, wholesale, representative services, by any means); wholesaling of goods (by any means).
By reason of the Opponent’s reputation in the Opponent’s Trade Mark, the owner of the Opposed Trade Mark should, or should reasonably aware that the Opponent enjoyed such a reputation and that it owned the Opponent’s Trade Mark in Australia. The owner of the Opposed Trade Mark sought to take advantage of the Opponent’s reputation by filing, in bad faith (within the meaning of section 62A), an application that is substantially identical with or deceptively similar to the Opponent’s Trade Mark and in relation to services similar to the services, and goods closely related to the services, in relation to which the Opponent’s Trade Mark is registered.
The owner of the Opposed Trade Mark is, in any event aware of the Opposed Trade Marks from Correspondence sent on behalf of the Opponent to the owners of the Opposed Trade Mark.
I have already decided under section 60 that the Opponent’s requisite reputation did not exist at the relevant date so for the reasons set out below I am satisfied that the Applicant only became aware of the Opponent sometime between January 2012 and when the Opponent’s first cease and desist letter was sent to the Applicant.
Counsel for the Opponent aptly argued that that the credibility of the Applicant’s evidence that Ms Underwood was not aware of the Opponent’s trade marks until the receipt of the cease and desist letter from the Opponent’s attorney on 21 October 2014[40] should be called into question. However, on 3 November 2014, the Applicant’s solicitors sent a letter stating that: “Our client changed its company name to My Supply Pty Ltd in January 2012 and began trading under the name ‘mysupply’ almost simultaneously. Our client was only made aware of the existence of ‘mySupplystore’ on one occasion between January 2012 and receipt of your letter” (Short 2 JGS – 5). As such I accept the Opponent’s submissions that the Applicant had been aware of the Opponent’s trade marks prior to any contact between the parties.
[40] Underwood [27].
However, the mere fact that the Applicant was aware of the Opponent’s distribution business and its trade marks is not of itself conduct that gives rise to a finding that the trade mark application was made in bad faith pursuant to s62A of the Act.[41] In interpreting s 62A of the Act, courts have required more, such as a situation where an applicant previously recognised the trade mark as the property of another or that the Applicant has otherwise sought to use the Trade Mark in a manner that directly referenced the Opponent as in DC Comics v Cheqout Pty Ltd[42] or in an otherwise unscrupulous manner.
[41] Next Group Plc v Nexcorp Australia Pty Ltd [2016] ATMO 34, [77].
[42] [2013] FCA 478.
I have no evidence before me that the Applicant ever previously recognised the Trade Mark as the property of another; as there was no course of dealing between the Applicant and the Opponent as in Bombala Council v Peter Wilkshire[43].
[43] [2009] ATMO 33, [35].
I am not satisfied that the ambiguity in Ms Underwood’s evidence as to the date she became aware of the Opponent is a sufficient basis to find that the Applicant has filed the Trade Mark application in bad faith.
I note that the Opponent was also attempting to infer bad faith on the basis that the Applicant was taking steps to copy the manner in which the Opponent used the Opponent’s trade marks in particular the Opponent’s composite mark. However, the respective parties appear to be in the business of warehousing and distributing products. In such a setting I am satisfied that the use of a box device to denote the trade origin of this service would hardly be uncommon in that industry. Moreover, the devices in the Applicant’s trade mark 1657678 and the Opponent’s composite trade mark are otherwise different. They are used in different colours (although I note that neither trade mark is limited to colour) and each box[44] is rendered in a different angle. Given the dissimilarities between the device marks I am not satisfied that the Applicant has otherwise sought to use the Trade Mark in a manner that directly referenced the Opponent.
[44] [8] and [10] of this decision for the trade mark representations.
In Broo Ltd v Independent Brewery Pty Ltd[45] the delegate found that ‘the similarities between the trade marks are so numerous and precise in their detail that it cannot be mere coincidence’. I am not satisfied that this is the case here.
[45] [2016] ATMO 61 [48].
The Applicant had already been trading under the Trade Mark for more than two and a half years before filing its application for the Trade Mark. I am therefore satisfied that this decision was one that arose from the Applicant seeking to exercise register the trade mark that it was using in trade and commerce. This conduct is not of a character that a reasonable person would deem to be unscrupulous, underhand or unconscientious.
The Opponent’s conduct in filing the application for the Trade Mark did not fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons[46].
[46] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].
The Opponent has not established the ground of opposition under section 62A.
Decision
The Opponent has not established a ground for opposition. As the delegate of the Registrar of Trade Marks I accordingly decide that the trade mark 1653775 should proceed to registration 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 the appeal has been decided or discontinued.
Costs
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. As the Opponent has not established a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Cristy Condon
Hearing Officer
Trade Marks Hearings
31 March 2017
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