NAS Communications Pty Ltd v 1300 Directory Pty Ltd

[2006] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by NAS Communications Pty Limited to registration of trade mark application 1059661(35, 38) - CLICKCALL - filed in the name of 1300 Directory Pty Limited.

Delegate:	Don Nancarrow
Decision:	s. 52 Opposition – ss. 41, 58, 59 and 60 grounds not established, opposition dismissed.

Background

1. Trade mark application 1059661 for the word “ClickCall” was filed on 10 June 2005 in the name of 1300 Directory Pty Limited (“the applicant”)  in respect of two classes of services in the International Classification of Goods and Services (“NICE Classification”) as set out in the table below.

Class	Services
35	Advertising 1300-1800 phone numbers (local call and free call numbers); phonewords and phoneword webaddresses on paper media and online; land line, mobile or VoIp telephony
38	Land line, mobile, VoIp telephony

1. After acceptance, two separate opponents filed opposition actions concerning this application. For this particular action the opponent has filed a Statutory Declaration to support the grounds nominated in the Notice of Opposition under ss. 41, 58, 59 and 60 of the Trade Marks Act 1995 (“the Act”). The declaration is from the Managing Director of NAS Communications Pty Limited (“the opponent”), Ms. Doreen Annette Acworth, and includes exhibits “DAA-1” to “DAA-5”. Following this evidence in support, the applicant filed a Statutory Declaration as its evidence in answer in the matter. The opponent claimed not to have received a copy of this material. As the applicant did not gain documentation from its own representative concerning proof of service on the opponent (and had, in fact, endeavoured to serve the material on the opponent’s address rather than via the address for service) the applicant was informed that its evidence would need to be served again if it wished to rely on it when the matter came to be decided (as per Regulation 5 of the Trade MarksRegulations 1995). After some dialogue with the Trade Marks Office the applicant chose not to serve the material and, as a consequence, I could not take the material into consideration for this decision.

2. Both parties were then offered the opportunity to be heard. The opponent chose to have the matter decided on the material held in this Office. The applicant provided no response to this request. No written submissions in support of their respective positions were provided by either party.

3. The matter has now been referred to me, as the Registrar’s delegate, for a decision on the written record.

   Submissions, the Law and Comments

   (a)Section 41

4. This ground of opposition looks at the registrability of the trade mark itself and the threshold question of “is this trade mark capable of distinguishing the applicant’s goods or services from those of other traders in the market-place?” This ground of opposition is not directly supported in any of the opponent’s evidence. Whilst it is clear that the mark “ClickCall” has some meaning in relation to the applicant’s services, it is not a requirement that a trade mark be entirely unsuggestive of the goods or services for which an applicant seeks registration. There is no new material before me here and my assessment is in agreement with the initial examination made for this trade mark – that it is capable of distinguishing the applicant’s services from the similar services of other traders in the marketplace.

5. I find that this ground is not made out.

   (b) Section 58

6. This ground of opposition places an onus on the opponent to direct me to a trade mark that is either identical with, or at least substantially identical with, the opposed trade mark and that has been used commercially in Australia on the “same kind of thing” from a date earlier than either the date of the application or the date of first use of the mark by the applicant. (Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 31 IPR 375 (FC), Hicks’s Trade Mark (1897) 22 VLR 636, Settef S.p.A. v Riv-Oland  Marble Co (Vic) Pty Ltd 10 IPR 402)

7. As discussed above, the trade mark application, numbered 1059661, has a priority date of 10 June 2005. The services specified fall in two classes of the NICE Classification as set out in the table above. The mark here is “ClickCall”.

8. The opponent’s evidence directs me to a trade mark that it alleged was in conflict with the application, for the word CLICKCALLING, which it claims has been used for telecommunication services from as early as 2002. Apparently, the opponent’s service enables a website user to receive a telephone call from the website owner by means of the user “clicking” onto the owner’s website (exhibit “DAA-1”).

9. Given that the priority date for the application is 10 June 2005, the opponent needs to demonstrate some form of commercial use in Australia before that time. I note that exhibit “DAA-2” provides information concerning development of the opponent’s products, by means of the agenda of a meeting of 8 March 2005. This document, however, appears to summarise internal plans rather than show an actual “offer to trade” to a prospective purchaser or user. The exhibit “DAA-3” is also relied on to show use of the opponent’s trade mark. The opponent claims that these documents were produced in April 2005 but none are actually dated. In addition, these documents appear to be for “OpenComms Technology Group”. The present opponent is credited on these documents with the words “Powered by NasComms” in quite small print, but it is open to some conjecture that such material could show any use to provide goods or services in the name of the present opponent. I also note that the contact details – presumably for any prospective customer – lists an email address for “opencomms.com.au”. In terms of s. 58, actual commercial use by a third party prior to 10 June 2005 may be used by the opponent to establish that the applicant is not the owner of the mark, but in the present circumstances the evidence does not establish this conclusion.

10. A further claim in the Acworth declaration is that the opponent has already committed a great deal financially in its trade mark. The amount, in dollar terms, is provided but without the times of such expenditure. The only specific claim made (a trade show in August 2005) is subsequent to the applicant’s priority date of 10 June 2005.

11. I also note that the opponent makes an allegation that the applicant may be involved in “cyber squatting” or “phone directory squatting” but such challenges are of little value with regard to the grounds nominated here. They would appear to be an issue either for another forum or, possibly, for consideration under s. 42.

12. From the foregoing, I find that the opponent has not established use of the CLICKCALLING trade mark prior to the date of application.

13. Another factor for the opponent to succeed under the s. 58 ground lies in a finding that the two competing trade marks are, at least, substantially identical. This is clearly set out in Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 at 391 where Justice Gummow comments:

    When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. 

14. The accepted test for such identity is found in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414.

    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.

15. In the present case the competing marks are “ClickCall” and “CLICKCALLING”. Certainly there is some commonality in meaning of the respective marks. It would be expected that a person with no knowledge of the goods or services involved for each party would assume that these trade marks had some sort of connotation or meaning in relation to the goods. Some common theme or idea would be assumed. However, such mutual theme or idea is not, alone, sufficient to find that the trade marks are substantially identical. The visual and aural comparison of these trade marks leads me to the conclusion that they will be readily differentiated when observed together – they will simply be seen as two different trade marks – and that they are, therefore, not substantially identical. The words themselves also identify different parts of speech in the English language. “ClickCall” serves to describe the action of a user and so operates as a verb, whereas “CLICKCALLING” identifies the process or service being offered and so operates as a noun. Certainly, I would have no difficulty finding that these trade marks are deceptively similar (issues relevant to s. 44 and s. 60 of the Act where different tests and the notion of imperfect recollection are involved) but not that the marks are substantially identical.

16. Thus, for the two reasons outlined above, I find that the opposition ground taken under s. 58 has not been established.

    (c) Section 59

17. To succeed under this ground the opponent must establish that the applicant does not intend to use or to authorise use of the trade mark as at the date of filing the Notice of Opposition. The only evidence led by the opponent on this issue questions whether or not the applicant is a bona fide commercial user of the trade mark. Such an allegation falls far short of establishing that the applicant has no intention to use the trade mark.

18. I find that this ground has not been made out.

    (d) Section 60

19. The law relevant to this ground allows:

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

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

    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For priority date see section 12.

20. Pertinent to this ground of opposition is the existence of a pre-existing trade mark that is either substantially identical with, or deceptively similar to, the present mark. The pre-existing mark must have a sufficient reputation (as at the date of application of the opposed mark) that use of the opposed mark would cause deception or confusion. As I have already indicated, the opponent’s “CLICKCALLING” trade mark is, I believe, deceptively similar. The reason for this is that in order to test whether or not two trade marks are deceptively similar, the respective marks are not to be compared side by side. The test concerns the impression based on recollection of one trade mark in the face of the other. (Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414) Such factors as an “imperfect recollection” of one of the trade marks when confronted with the other could readily set up a confusion here. However, the opponent has not established in its evidence any clear use of the mark prior to 10 June 2005 – the present application date. Of course, much more than a single use would be required here to establish a sufficient reputation.

21. I find that the s. 60 ground has not been established.

    Decision

22. From the foregoing, I have found that the opponent has not established any of the grounds of opposition nominated in the Notice of Opposition. Thus, I dismiss this opposition.

23. I give no direction for the progress of this application at the present time because I note that a second opposition action is still yet to be decided.

    Don Nancarrow
    Hearing Officer
    Trade Marks Hearings
    7 December 2006