National Australia Bank Limited

[2020] ATMO 41

TRADE MARKS ACT 1995

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

ReTrade mark application number 1911174 (9, 35, 36, 41, 42, 44, 45) – thebridge NAB (figurative) – in the name of National Australia Bank Limited

Delegate:                 Robert Wilson

Representation:       Applicant: King & Wood Mallesons

Decision:                   2020 ATMO 41

Trade Marks Act 1995 (Cth) – ex parte decision on written record – whether ground for rejection of application under s 44 – Woolworths Metro followed – application accepted

Background

1. On 5 March 2018 National Australia Bank Limited (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

1911174

Goods and Services:

Classes: 9, 35, 36, 41, 42, 44, 45

(see annexure for full specification)

Trade Mark:

(‘the Trade Mark’)

1. Any references to sections, below, are references to sections of the Trade Marks Act 1995 (Cth) unless otherwise indicated.

2. The application was examined as required by s 31 and on 23 April 2018 the examiner issued an adverse report. In the report, the examiner indicated her view that there was a ground for rejecting the application under s 44. The examiner cited the trade marks including those listed below. The examiner cited a fourth trade mark the status of which is now ‘Lapsed : Not accepted’. That application need not be considered here.

Trade mark number	Trade Mark	Priority Date	Classes
403310	THE BRIDGE	7 February 1984	16
403311	THE BRIDGE	7 February 1984	41, 42
1565163	THE BRIDGE	3 July 2013	43, 45

1. On 21 May 2020, the Applicant responded to the report but failed to persuade the examiner to its contrary view regarding the ground for rejection. Further adverse reports were issued which drew further responses from the Applicant. Following a fifth adverse report the Applicant requested to be heard by way of written submissions.

2. It has fallen to me, as a delegate of the Registrar of Trade Marks to decide the matter in accordance with s 33.

   Section 44

   Section 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.

   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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar services or closely related goods; or

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

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

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. For a valid s 44 ground for rejection to exist the following a cited trade mark:

   ·     must be registered by a person other than the Applicant (‘the first requirement’); and

   ·     have a priority date which is earlier than the Relevant Date (‘the second requirement’);

   ·     be in respect of at least some goods/services which are similar/closely related to the goods/services claimed by the Applicant (‘the third requirement’); and

   ·     be substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the fourth requirement’).

4. The first three requirements are satisfied in respect of all of the cited trade marks.

   The fourth requirement

   Substantially identical

5. I will firstly consider whether the Trade Mark is substantially identical to the cited trade marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  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.[1]

   [1] [1963] HCA 66, [12].

6. The Trade Mark contains a highly distinctive device which consists of a red star and the letters ‘nab’ within a black box (‘the NAB device’). The NAB device does not appear in any of the cited trade marks. The absence of that device is sufficient to mean that on a side by side comparison with the cited trade marks the trade marks are not substantially identical.

   Deceptively Similar?

7. Guidance for determining whether trade marks are deceptively similar is generally found in 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].[2]

   [2] [1963] HCA 66, [13].

8. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[3]

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[4]

   Third, allowance must be made for imperfect recollection.[5]

   Fourth, the effect of the spoken description must be considered.[6]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[7]

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[8] …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[9]

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[10]

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[11] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[12] [13]

   [3] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [4] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

   [5] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

   [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

   [12] Ibid [100].

   [13] [2012] FCA 1022, [37]–[46].

9. In its responses to the examiner the Applicant referred to Registrar of Trade Marks v Woolworths [1999] FCA 1020 (French, Branson and Tamberlin JJ) (‘Woolworths Metro’). This was a decision of the Full Court of the Federal Court. The decision concerned a comparison of the trade marks shown below.

METRO

The case was an appeal from the decision of Wilcox J in Woolworths Ltd v Registrar of Trade Marks [1998] FCA 1268. Judicial notice was taken of the immense reputation held by ‘WOOLWORTHS’ as a stand-alone trade mark. French J found:

[Wilcox J’s] reference to the familiarity of the name ‘Woolworths’ in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name ‘Woolworths’ cannot be assessed without a recognition of its notorious familiarity to consumers.[14]

[14] [1999] FCA 1020, [61].

1. The Applicant has asserted that the NAB device is as well-known as ‘WOOLWORTHS’ and that the Registrar is at liberty to take notice of this fact. I concur.

2. Wilcox J found at first instance:

   I cannot accept that viewers of the mark would overlook or forget that it refers to ‘Woolworths metro’, not merely ‘metro’. The word that is unique to this mark, as against each of the cited marks, constitutes a major feature of it. Applying the Australian Woollen Mills test, the impression or recollection of the subject mark a viewer would carry away and retain is quite different from that which he or she would retain in respect of any of the cited marks. To put the matter in terms of s 10 of the current Act, Woolworths' mark does not so nearly resemble any of the cited marks as to be likely to deceive or cause confusion.[15]

   [15] [1998] FCA 1268.

3. I am of the opinion that the present comparison is on all fours with Woolworths Metro and there is nothing before me which obviously distinguishes that case from the present. The Trade Mark does not so nearly resemble the cited trade marks that it is likely to deceive or cause confusion. Were there to be some modicum of doubt in my mind that this is so, I take comfort from the presumption of registrability afforded to the Applicant. I heed, too, the words of French J where he stated, also in Woolworths Metro:

   The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition. This will have an impact upon the way in which the Registrar approaches the question whether a mark proposed for registration is deceptively similar to others.[16]

   [16] [1999] FCA 1020, [34].

   Decision

4. I am not satisfied that there exists a ground for rejecting the application to register the Trade Mark. Accordingly, I accept the application for registration.

   Robert Wilson
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   19 March 2020

   ANNEXURE

   Class 9: Computers; computer software; computer programs; computer hardware; computer peripherals; databases; downloadable publications; software applications; CD ROMS; downloadable webcasts; training manuals in electronic format; training aids (apparatus for teaching people); computer programs relating to the training of personnel

   Class 35: Personnel management; recruitment; outplacement services; personnel management consultancy services; vocational guidance (employment advice and information); resume preparation and compilation; career counselling; employment agency services; career transition advice and support services; career planning services; provision of business advice to small business start-ups; job candidate matching and introduction services; business intermediary services relating to the matching of investors with entrepreneurs and small business start-ups needing funding; recruitment agency services; life coaching being career advice; job interview practice services; development of social media profile content for job candidates; advice on development and use of social media profiles for job candidates; personal branding advice relating to careers; business organisation and management of discount services

   Class 36: Financial advice; superannuation advice; taxation advice; financial consultancy; banking services; financial credit services; administration of financial affairs; discount card services (financial services); financial grant services; financial management; financial sponsorship; financial information services; personal financial planning services; providing financial information via a website; providing information, including online, about financial affairs; provision and funding of scholarships and monetary awards

   Class 41: Training and education services; provision of training via an online course; career counselling (education or training advice); career information and advisory services; lifestyle counselling and consultancy (training); life coaching being training and education advice; vocational guidance (education or training advice); vocational re-training; arranging and conducting of conferences and seminars, including educational and career counselling seminars; organisation of promotions (sporting, recreational and cultural events); entertainment; recreation, sporting and cultural activities; health club services (health and fitness training); health education; publication and dissemination of magazines, manuals, multimedia material, news and educational resources; electronic publication of information on a wide range of topics; including all of the foregoing provided online

   Class 42: Online provision of web-based software; online provision of web-based applications (non-downloadable); provision of online non-downloadable software (application service provider); internet portal services (designing or hosting); hosting of software and databases; development of online social media profiles for others; software as a service; platform as a service; computer programming

   Class 44: Advisory services relating to health; health care; health centres; health counselling

   Class 45: Personal and social services rendered by others to meet the needs of individuals