Opposition by Acorn Capital Ltd to registration of trade mark application number 1823572 (9) - ACORNS - in the name of Acorns Grow Incorporated

[2021] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by Acorn Capital Ltd to registration of trade mark application number 1823572 (9) - ACORNS - in the name of Acorns Grow Incorporated

Delegate:

Katrina Brown

Representation:

Opponent: Jeremy Herz of Herbert Smith Freehills

Applicant: Campbell Thompson of Counsel instructed by Sarah Poole of Marquette IP

Decision:

2021 ATMO 21

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Acorn Capital Ltd (‘Opponent’) to registration of the following trade mark:

Trade Mark No: 1823572

Trade Mark:  ACORNS (‘Trade Mark’)

Applicant:  Acorns Grow Incorporated (‘Applicant’)

Filing Date:  9 February 2015

Goods:Class 9: Downloadable software application for the purpose of individual consumers to track the profitability of their financial portfolios and process investments in small dollar value increments, excluding mutual funds, the foregoing for use with mobile and web-enabled devices (Applicant’s Goods’)     

1. The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 15 February 2018.

2. The Opponent filed a Notice of Intention to Oppose on 13 April 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 10 May 2018.

3. The Applicant filed a Notice of Intention to Defend on 14 June 2018.

4. The Opponent filed the following declaration as evidence in support:

• Declaration of Matthew Sheehan (Investment Director of the Opponent) made on 21 September 2018 with Exhibits MS-1 to MS-26 (‘Sheehan Declaration’).

1. The Applicant filed the following declarations as evidence in answer:

• Declaration of Joel Tashjian (General Counsel of the Applicant) made on 20 June 2019 with Exhibits MF-1 to MF-9; and

• Declaration of Sarah Poole (Marquette IP) made on 22 June 2019 with Exhibits SP-1 to SP-14.

1. The Opponent filed the following declaration as evidence in reply:

• Declaration of Jeremy Herz (Herbert Smith Freehills) made on 27 August 2019 with Exhibits JH-1 to JH-12.

1. Once the time allowed for filing evidence had expired a hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks. The Applicant was represented by Campbell Thompson of Counsel, instructed by Sarah Poole of Marquette IP. The Opponent was represented by Jeremy Herz of Herbert Smith Freehills. Casey Hogan of Herbert Smith Freehills observed the hearing.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all of the Applicant’s Goods, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

4. The date at which the rights of the parties are to be determined is 9 February 2015, being both the filing and priority date of the Trade Mark.  

Section 44

1. Section 44 of the Act relevantly provides:

   (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. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services. 

3. The Opponent relies on the following registrations (‘Opponent’s Trade Marks’) as the basis for the ground of opposition:

Trade Mark No.	Trade Mark	Specification
1368514	ACORN CAPITAL (‘Opponent’s Word Mark’)	Class 36:  Financial services including financial evaluation and financing; investment services including investment management and research; capital investment including provision of investment funds and capital to others; information, advisory and consultancy services provided in relation to the aforesaid (‘Opponent’s Services’)
1368516	Opponent’s Services
1368517	Opponent’s Services

1. Each of the Opponent’s Trade Marks are held in a name other than that of the Applicant, and each has a priority date of 24 June 2010, which is earlier than that of the Trade Mark. Consequently, the remaining issues for determination with respect to this ground of opposition are:

2. Whether the Trade Mark is substantially identical with, or deceptively similar to, any of the Opponent’s Trade Marks; and

3. Whether the Applicant’s Goods are ‘closely related’ to the Opponent’s Services.

4. In determining these remaining issues, I note that they are matters that should not necessarily be considered in isolation. As articulated by French J in Registrar of Trade Marks v Woolworths (‘Woolworths’), the correct approach is to make one practical judgment.[3]

   [3] [1999] FCA 1020 [40].

5. In respect of substantial identity, the Opponent’s submissions focus primarily on the Opponent’s Word Mark.

6. Trade marks do not need to be identical to be considered substantially identical. This is acknowledged in the well-established test for substantially identical trade marks set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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.[4]

   [4] [1963] HCA 66 [12] (Windeyer J).

7. As the test for substantial identity involves a side-by-side comparison, I have reproduced the Opponent’s Word Mark and the Trade Mark below:

   ACORN CAPITAL   ACORNS

8. In respect of the similarities and differences between the trade marks, I note that the Trade Mark consists of the plural ‘Acorns’, rather than the singular which is in the Opponent’s Word Mark. Additionally, the Opponent’s Word Mark contains the word ‘Capital’.

9. The importance of these similarities and differences must be assessed with regard to the essential feature/s of each of the trade marks. An essential feature is a feature that strikes the eye.[5] The Trade Mark consists solely of the word ‘Acorns’ and as such I consider it to be the essential feature. The Opponent asserts that the essential feature of the Opponent’s Word Mark is the word ‘Acorn’, as the word ‘Capital’ is a mere descriptive element in the context of the Opponent’s Services. In my opinion, ordinary consumers of the Opponent’s Services, namely financial and investment services, are likely to understand the word ‘Capital’ as having descriptive significance. It also seems likely that an ordinary consumer would appreciate that ‘Capital’ is a word that is in common use in the financial industry.  In this respect I note the following observation of the Full Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd:

   it is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services.[6]

Neither party has suggested that the word ‘Acorn’ has any descriptive relevance in relation to the Opponent’s Services; it seemingly has no significance (other than trade mark significance), in relation to the Opponent’s Services. In agreement with the Opponent, it is my opinion that the word ‘Acorn’ strikes the eye and is the essential feature of the Opponent’s Word Mark.

[5] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 162; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [51].

[6] [2017] FCAFC 83 [52].

1. I now turn to the relative importance of the similarities and differences having regard to the essential feature of each of the trade marks. As already stated, the additional word in the Opponent’s Word Mark is descriptive of the Opponent’s Services and it does not alter the meaning of the essential element.

2. The Opponent asserts that the additional ‘s’ in the Trade Mark is of little to no significance as it simply changes the singular ‘Acorn’ to the plural ‘Acorns’. I agree that where the difference is simply the singular form of the word vs the plural of that same word, that difference, is likely to be of limited significance. However, the Applicant asserts that this is not the case in the matter at hand. It is the Applicant’s view that the fact that ‘Acorn’ is singular in the Trade Mark suggests that it is of some particular importance, which is not conveyed by the plural ‘Acorns’. In this respect the Applicant draws my attention to the following observations of Charlesworth J in Samuel Smith & Sons Pty Ltd v Pernod Ricard Winemakers Pty Ltd:

   …does not refer to “a signature” as an abstract concept nor to “any old signature”, but to THE signature. The definite article THE affects the idea conveyed by the mark’s more distinctive component in two ways. First, it causes the word SIGNATURE to convey its ordinary meaning as a noun. Second, it assists in creating some subtle impression that the signature referred to is a signature of some particular importance…[7]

   [7] [2016] FCA 1515 [106].

1. I do not find these observations to be of any assistance in the current matter. They are specifically in relation to the word ‘the’, which is not in the Trade Mark or the Opponent’s Word Mark. Furthermore, the effect of the word ‘the’ is not analogous to that of a word in its singular form. ‘The Acorn’ indicates a particular acorn, whereas ‘Acorn’ indicates that there is one acorn, a single acorn. The former creates a subtle impression that the acorn being referred to is of some particular importance, the latter does not create any impression, subtle or otherwise, about the importance of the acorn.  In the current matter, the difference is of very limited importance as it is simply the singular form of the word vs the plural form of that same word; one nut, or multiple nuts, from an oak tree.

2. Having considered the relative importance of the similarities and differences having regard to the essential elements, I am satisfied that the trade marks are substantially identical. I now turn to consideration of whether the Applicant’s Goods are closely related to the Opponent’s Services.  

3. As a starting point it is convenient to note that it is assumed that the trade marks will be used in a normal and fair manner in respect of all of the goods or services for which they are registered, or for which registration is being sought.[8] At the heart of the matter, is whether a downloadable software application for individual consumers to track the profitability of their financial portfolios and process investments in small dollar value increments is closely related to the provision of financial and investment services.

   [8] Re Smith Hayden & Co Ltd (1946) 63 RPC 97, 101.

4. The words ‘closely related’ are not defined in the Act. In Woolworths French J made the following observations:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…[9]

In Woolworths French J went on to state that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’.[10]

[9] [1999] FCA 1020 [37].

[10] [1999] FCA 1020 [38].

1. The Opponent asserts that the Applicant’s Goods and the Opponent’s Services are closely related as the services are performed by means of the goods. In its view, the wording of the Applicant’s specification clearly indicates that the object of the software is to deliver financial and investment services, including services related to investment portfolios. Furthermore, the Opponent asserts that it is now commonplace for downloadable software applications to be supplied as part of the provision of financial and investment services. The Sheehan Declaration provides examples that support this assertion including:

• the ‘CommSec Mobile’ app which allows customers of the Commonwealth Bank of Australia to ‘trade and manage investments on the go’;

• the ‘NAB Mobile Banking’ app which allows customers of National Australia Bank to access and manage their bank accounts from a mobile device;

• the ‘ANZ’ mobile app which allows customers of ANZ to ‘trade on the go’ and ‘open a share investment account…and track share investments, super and banking in one place’;

• the ‘Spaceship Voyager’ mobile app which allows customers of Spaceship to ‘invest their weekly savings with [Spaceship’s] portfolios in [their] pocket’;

• the ‘Clover.com.au’ mobile app which allows customers of Clover.com.au to access automated investing and portfolio management; and

• the ‘QuietGrowth’ mobile app which allows customers of QuietGrowth to access its ‘low fee automated, online investment management service’.

1. The Applicant concedes that financial providers offer software to their customers including mobile applications which allow those providers to deliver financial and investment services to their customers electronically. However, the Applicant asserts that this is not the nature of the Applicant’s Goods as its specification explicitly states that the purpose is for individual consumers to track the profitability of their financial portfolios. That is, the software is not for the purpose of a financial institution delivering services electronically, rather it is for an individual consumer to track their financial portfolios without requiring the services provided by a financial institution. In my opinion, the Applicant’s specification is not that tightly circumscribed. The Applicant’s specification is capable of being interpreted as downloadable software for the purpose of an individual, who is a consumer, to track the profitability of their financial portfolios which are held with a financial institution; the very thing that a consumer might consider themselves doing when using the CommSec Mobile application.

2. The Applicant also contends that, as ‘financial services’ and ‘investment services’ are all-encompassing descriptions, it is not appropriate to conclude that they are closely related to the Applicant’s Goods. In this respect the Applicant relies on the reasoning of Yates J in Qantas Airways Limited v Edwards[11]. In that matter, the relevant question was whether ‘advertising, marketing and merchandising services’ were closely related to ‘clothing, footwear and headwear’. In finding that they were not closely related, Yates J made the following observation:

   …where the “services” of the prior registration are broadly defined and potentially all-encompassing because of the use in the specification of expressions such as “advertising, marketing and merchandising services”—the very services relied on here. So expressed, these services are not directed to the activity of advertising, marketing or merchandising in any particular line of trade or commerce or in respect of any particular goods or services. Literally, the services of “advertising, marketing and merchandising”, individually or collectively, can be provided in respect of any goods or services whatsoever.[12]

In my opinion, financial services are not all-encompassing in the same way as advertising, marketing, or merchandising services. Financial services are in respect of capital, be that money or some other form of asset. Furthermore, the Applicant has been specific about the nature and purpose of its software goods. This is not a situation where I am considering an all-encompassing claim for ‘software applications’ which could literally be provided in respect of any goods or services. Rather, I am considering a specific claim for a software application with a financial purpose vs financial services.

[11] [2016] FCA 729.

[12] Qantas Airways Limited v Edwards [2016] FCA 729 [124].

1. It also strikes me that due to modern technology and the prevalence of portable electronic devices, the methods used to engage services and the services themselves are increasingly converging. That reality creates a situation where there will be instances where the line is blurred for the ordinary person as to where the goods end and the services begin. In my opinion, the evidence in this matter leads to a conclusion that this is one of those instances.

2. The Opponent has also put forward a handful of documented examples of alleged instances of actual confusion. The brevity of these examples, in terms of both the number and specificity of the nature of the alleged confusion, is such that they are not highly probative. However, they do tend to lend further support to my conclusion that an ordinary consumer would view the line between the goods and services as being blurred.  

3. Considering the high degree of resemblance between the trade marks, which of themselves also have a high degree of distinctiveness, and the closeness of the relationship between the goods and services, I consider that there is a real likelihood that a number of persons will wonder or be left in doubt about whether the goods and services come from the same source. As such, I am satisfied that s 44(2) has been established.

4. Section 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise have been rejected under s 44(2), due to honest concurrent use, prior use or other circumstances. At the hearing, the Applicant stated that they are not relying on the provisions of s 44(3) or 44(4) and for completeness I do not see any basis for the application of these sub-clauses.

5. The Opponent has established the ground of opposition under s 44 of the Act in relation to the Opponent’s Word Mark. There is no need for me to turn my mind to the remainder of the Opponent’s Trade Marks as my determination in respect of those trade marks will not alter the outcome of this matter.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has established the ground of opposition under s 44 of the Act. Accordingly, I refuse to register trade mark number 1823572.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

18 March 2021