Opposition by Clarendon Lawyers Pty Ltd to registration of trade mark applications 1967329 (35, 36, 41, 45) C (Figurative), 1967330 (35, 36, 41, 45) C CORNWALLS (Figurative), 1967331, (35, 36, 41, 45) C...

[2020] ATMO 192

TRADE MARKS ACT 1995

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

Re:Opposition by Clarendon Lawyers Pty Ltd to registration of trade mark applications 1967329 (35, 36, 41, 45) C (Figurative), 1967330 (35, 36, 41, 45) C CORNWALLS (Figurative), 1967331, (35, 36, 41, 45) C (Figurative), 1967332 (35, 36, 41, 45) C CORNWALLS (Figurative) – each in the name of Cornwalls Lawyers Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Buchanan Law Firm Applicant: Self-represented
Decision:	2020 ATMO 192 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – s 44 partially established for a subset of the marks– no grounds established for the remaining marks – remaining trade marks to proceed to registration

Background

1. This decision concerns an opposition brought by Clarendon Lawyers Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks which are the subject of the applications detailed below in the name of Cornwalls Lawyers Pty Ltd (‘Applicant’): 

Application Number:

1967329

Filing Date:

7 November 2018

Services:

Class 35:  Business management advisory services; business advisory and consultancy services; business strategy services; business development services; business management assistance; business advice services in the fields of technology, commercialisation, technology exploitation, succession planning and marketing services in this class; business administration services and support services; business information; compilation and provision of company information; accounting services included in this class; computerised file management services; document filing and business information management; business research; business appraisal services; tax advisory and consulting services; business project management services; accounting and tax advisory and consulting services; database services, being management of databases relating to legal services; commercial management consultancy; business organisation consultancy; company evaluations, business mergers and acquisitions; financial auditing; preparation of business reports; organisation of exhibitions for commercial or advertising purposes; public relations; writing of publicity texts
Class 36:  Asset calculations; intellectual property portfolio management
Class 41:  Legal education and training services; legal, business, commercial, compliance, regulatory, taxation and trade education and training services including but not limited to organising, conducting, convening and presenting conferences, seminars, workshops and symposia; printed and electronic publication of articles, texts, manuals, journals, books, podcasts, vidcasts and periodicals relating to law, legal compliance, business, commerce, trade, taxation and regulatory matters
Class 45:   Legal and advisory services included in this class; legal advice, consultancy, documentation, enquiry, information research, interpretation, investigation, dispute management, arbitration, mediation, litigation, research and support services; provision of legal information, research and services; dispute management services; dispute resolution services; assisting businesses with legal compliance and regulatory matters; advisory services relating to intellectual property and industrial property rights; establishment, maintenance and enforcement of intellectual property and industrial property rights; professional advisory services relating to the licensing and commercialisation of intellectual property and industrial property; information and advisory services relating to the aforesaid including such services provided online from a computer network and/or via the Internet and/or extranets; legal information, consultancy and advisory services, including such services provided online from a computer network and/or via the Internet and/or extranets

(‘Applicant’s Services’)

Trade Mark:

(‘C Mark’)

Application Number:

1967330

Filing Date:

7 November 2018

Goods and Services:

Applicant’s Services

Trade Mark:

(‘Cornwalls Mark’)

Application Number:

1967331

Filing Date:

7 November 2018

Goods and Services:

Applicant’s Services

Trade Mark:

(‘C Series Mark’)[1]

Application Number:

1967332

Filing Date:

7 November 2018

Goods and Services:

Applicant’s Services

Trade Mark:

(‘Cornwalls Series Mark’)[2]

[1] This mark is a series mark.  The full set of depictions of this mark are in Annexure A.

[2] This mark is a series mark.  The full set of depictions of this mark are in Annexure A.

2. The C Mark, Cornwalls Mark, C Series Mark and Cornwalls Series Marks are collectively referred to in this decision as the ‘Trade Marks’.  Following the advertisement on 8 April 2019 in the Australian Official Journal of Trade Marks of the Trade Marks’ acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the Trade Marks on 5 June 2019.  The Opponent then filed a Statement of Grounds and Particulars, rectified by this office on 3 August 2019 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 23 August 2019.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 27 November 2019 by Anthony Peter Symons, the Managing Director of the Opponent, with Exhibits APS-1 to APS-47 (‘Symons 1’); and

   ·Declaration made on 26 November 2019 by Michael Simonetti, the Managing Director of ANDMINE Pty Ltd a digital advertising agency, with Exhibits MS-1 to MS-3 (‘Simonetti declaration’).

   4. The Applicant filed the following evidence in answer:

   ·Declaration made on 16 April 2020 by John Richard Hutchings, a Director of the Applicant, with Exhibits 1 to 49 (‘Hutchings declaration’)

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 4 May 2020 by Anthony Peter Symons, the Managing Director of the Opponent, with Exhibits APS-1 to APS-4 (‘Symons 2’),

   6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 29 May 2020 the Opponent requested an oral hearing.  The matter was set down for a hearing by video conference on 17 November 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 8 September 2020 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 3 November 2020 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 10 November 2020 (‘Applicant’s Submissions’).  At the hearing Ian Horak of Counsel represented the Applicant instructed by Len Hickey of Cornwalls Lawyers and Andrew Sykes of Counsel instructed by Scott Buchanan of Buchanan Law Firm represented the Opponent.

   7. 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, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs as well as the oral submissions made at the hearing.

   The Opponent

3. The Opponent is an Australian company that operates as a law firm trading under the name Clarendon Lawyers.  The Opponent was incorporated in 2013 but prior to that another company under an identical name operated the Clarendon Lawyers business from October 2007 to 2013.  

   9. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods or Services
1932147	(‘Device Mark’)	7 Jun 2018	Class 9: Computer software and publications in electronic form supplied online from databases and/or for facilities provided on the Internet; Audio and video recordings; digital storage devices Class 16: Printed publications, pamphlets, brochures, manuals, books; instructional and teaching materials all relating to the provision of legal services Class 35: Advertising; business research; provision of business advice and information; business investigations and enquiries; business administration; provision of company information; secretarial services; document reproduction; distribution of prospectuses; preparation of business reports; information, consultancy and advisory services relating to the above, including such services provided online from a computer network and/or via the Internet and/or extranets; business and organization consultancy; consultancy on business management troubleshooting; business merger services and advice relating to acquisitions and advice relating to business mergers; evaluation of business opportunities; business auditing services; business project management and management of business projects for others Class 41: Education and training services; publishing; arranging and conducting seminars, conferences, and workshops; library services; electronic publications of information, including online; information, consultancy and advisory services relating to the above Class 45: Legal services and legal advisory services including legal services and legal advisory services in the fields of commerce, business, tax, finance, mergers and acquisitions, government, corporate governance, corporations law, intellectual property; litigation services, litigation support services; intellectual property management; consultancy and information services provided in relation to the aforesaid services
1932148	(‘Clarendon Mark’)	7 Jun 2018	Opponent’s Goods and Services

10.     The relevant claims/statements in Symons 1 can be summarised as follows:

·     Clarendon Lawyers was incorporated and commenced trading in 2007 and operates as a corporate law firm with a physical office in Melbourne.  As at the priority date it had between 20 and 30 lawyers.

·     The Device Mark was created in 2007 by a third party engaged by Clarendon Lawyers and is used both by itself and with the words ‘clarendon lawyers’ to create the Clarendon Mark.  Both the Device Mark and Clarendon Mark are used for a wide variety of purposes including correspondence, firm documents and online.

·     Clarendon Lawyers is an active and well-known law firm with a significant clientele of Australian and international companies, private equity and venture capital funds and other business owners across a broad range of industries and sectors.  It has been the subject of significant media coverage and has significant level of revenue.

·     Clarendon Lawyers invests extensively in the advertising of the firm both in print advertisements, social and sponsorship events, stationery and use on the Internet such as the Opponent’s website, Linkedin and other social media.  Clarendon Lawyers has received significant recognition from the legal community including being the winner of Boutique Firm of the Year in the Australasian Law Awards in 2019 after having been a finalist in the previous 3 years and being a finalist in 2016 and 2017 for Australian Boutique Law Firm of the Year in the Lawyers Weekly Australian Law Awards.

·     The Declarant is aware of the Applicant and considers that, as a fellow corporate and commercial law firm, it competes with the Opponent in many of the areas of legal service the Opponent offers.  The Declarant had met with partners of the Applicant prior to the creation of the Trade Marks and notes that the Applicant would have been aware of the Opponent and its trade marks at the relevant date. 

·     On 21 September 2018 John Hutchings of the Applicant contacted the Declarant by e-mail, giving notice that the Applicant intended to adopt a new logo with ‘subtle similarities’.  The Declarant responded and expressed concern about the similarity between the Trade Marks and the Opponent’s Trade Marks however the Applicant proceeded with the application to register the Trade Marks.

1. The Simonetti declaration consists of a statement of the Declarant’s credentials as an expert in marketing and advertising and annexes an expert report examining the use of the Opponent’s Trade Marks and the effect of the adoption of the Trade Marks.  The conclusion of the report is that Clarendon Lawyers has distinctive and clear branding that has a consistent presence on the Opponent’s Website.  The adoption by a competitor firm of similar branding, such as branding with a simple ‘C’ as a logo, would result in confusion for current and potential clients.

2. The relevant claims/statements in Symons 2 can be summarised as follows:

   ·     The Applicant was, prior to the 2019 rebrand, known as Cornwall Stodart.

   ·     The material presented in the Hutchings declaration as to the distinctiveness of the Device Mark is irrelevant since it covers all classes of goods and services regardless of the status of the marks, and does not recognise the distinctive nature of the Device Mark that arises from use.

   The Applicant

3. The Applicant operates a corporate law firm that traces its lineage back to 1891.  It presently operates as a limited partnership. 

4. The relevant claims/statements in the Hutchings declaration can be summarised as follows:

   ·     The Applicant operates from premises in the Melbourne CBD but it has a significant national and international client base.  It currently has approximately 44 lawyers and significant annual revenue.

   ·     Prior to 2019 the Applicant traded under variants of the name Cornwall Stodart but was informally known as Cornwalls, including on its website and as part of its domain name <cornwalls.com.au> (and hence staff e-mail addresses), which has been used by the Applicant since 1999.

   ·     Commencing in 2018 and concluding in 2019 the Applicant engaged in a strategic rebrand of its business, which included rebranding the law firm as Cornwalls and engaging a third party to design a new logo to reflect the business, that new logo being reflected in each of the Trade Marks.  The new branding has been used by the Applicant from March 2019 onwards.

   ·     The Declarant is aware of the Opponent and notes that it is commonly referred to as ‘Clarendons’.  The Declarant considers that the Opponent almost always uses  its Device Mark in close proximity to the words ‘Clarendon Lawyers’.  The Declarant notes that the clientele of both law firms are sophisticated clients that take a very careful and considered approach to selecting legal services.

   ·     The Declarant considers the Device Mark to not be very distinctive at all and is not aware of any instances of marketplace confusion between the parties.

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   16.     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 7 November 2018 (‘relevant date’), being the filing and priority date of the applications in Australia.[5]

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

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and 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, see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 44

6. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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.

   18. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Marks (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Marks (‘the second requirement’); and

   ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

1. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Opponent’s relied upon mark.

2. In the interests of completeness, I note that I am not satisfied that any of the requirements under ss 44(3) and 44(4) are met. The Applicant commenced use of the Trade Marks as part of its rebrand in 2019, aware of the Opponent’s Trade Marks. There is no prior use of the Trade Marks, insufficient evidence to find honest concurrent use and there are no other circumstances that I am aware of or identified in the submissions that would render registration of the Trade Marks proper.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Marks.  The Trade Marks are sought to be registered for a selection of services that are best described as legal and business services, which are similar to the Opponent’s Goods and Services which also encompass legal and business services.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

4. I will now consider whether any of the Trade Marks are substantially identical to the Opponent’s 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.[6]

   [6] (1963) 109 CLR 407, 414.

   23.     The Trade Marks and the Opponent’s Trade Marks are set out below:

   Trade Marks

   Opponent’s Trade Marks

   24.     On a side by side comparison there are clear differences between the Trade Marks and the Clarendon Mark, namely the presence of the ‘clarendon lawyers’ wording.  The comparison between the Trade Marks and the Device Mark is a closer run thing but on balance I consider the different nature of the respective ‘C’ devices (the C Mark and C Series Mark containing more concentric circles and a smaller gap) is sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether any of the Trade Marks and Opponent’s Trade Marks are deceptively similar.

   25.     The principal authority for guidance 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].[7]

   [7] Ibid [13].

   26.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   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 judgment 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: Woolworths[8] at [49]; Australian Woollen Mills[9] at 658.

   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: Crazy Ron’s[10] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[11] at 594 – 595.

   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: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   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: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   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: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   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: Crazy Ron’s at [79]. 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: Crazy Ron’s at [100].[12]

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [12] [2012] FCA 1022, [38]-[46].

5. I find that the C Mark and the C Series Mark are both deceptively similar to the Device Mark.  Each of the marks is a device consisting of a series of partially concentric circles that together form the letter ‘c’.  Contrary to the Applicant’s Submissions I consider the devices used by both parties are distinctive and the element that makes them distinctive is the use of the multiple concentric circles to create the device, a factor shared between the respective marks.  While there are differences between the devices (the C Mark and the C Series Mark have more concentric circles and the way in which the circles terminate is different) given the visual, aural and conceptual similarities between the marks and the allowance to be made for imperfect recollection, I consider it highly likely that the use of the C Mark and the C Series Mark will result in a number of users being caused to wonder whether the services offered under these marks are the same as the services offered under the Device Mark.  

6. For clarity, and contrary to the Applicant’s Submissions, I note that such a finding does not provide the Opponent with a monopoly on the use of a device based on the letter ‘c’, rather the scope of the protection granted to the Opponent’s Device Mark extends to other ‘c’ marks that replicate the element that makes it distinctive, this being the use of multiple concentric circles to create the device.

7. I note the submissions made by the Applicant that suggest by reason of the nature of the services for which the Trade Marks are sought to be registered, they are likely to be purchased with great care and consideration, and hence users are unlikely to be confused. I accept that both the Applicant and Opponent operate specialist commercial law firms with sophisticated consumers, a matter that is relevant in my finding under s 60 below. However, both the Trade Marks and Opponent’s Trade Marks are registered or sought to be registered for a much broader range of services, including business advisory services which are provided to a much broader market then commercial and corporate law firm services. It is a well established principle that ‘the question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.’[13] It is the broad market for the services for which the Trade Marks are sought to be registered that I must have regard to and have considered for the purposes of reaching my conclusion in paragraph 27 above.

   [13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

8. I do not find the Cornwalls Mark and Cornwalls Series Mark to be deceptively similar to the Device Mark.  In particular I do not accept the Opponent’s Submissions that, merely because the word ‘Cornwalls’ is in plain text, I should discount the word for the purposes of comparison.  On the contrary the presence of the word ‘Cornwalls’ in the Cornwalls Mark and Cornwalls Series Mark creates significant visual, aural and conceptual differences between the marks.  Consumers viewing the Cornwalls Mark and Cornwalls Series Mark will naturally focus on the word ‘Cornwalls’ which is not replicated in the Device Mark and creates a clear aural and conceptual difference between the marks, one that is not overcome by the fact that the respective marks use similar ‘C’ devices.  I am not satisfied that the presence of similar ‘C’ devices creates a real tangible danger of deception or confusion when the Cornwalls Mark and Cornwalls Series Mark each contain the prominent and distinctive word ‘Cornwalls’.

9. I reach the same conclusion when comparing the Cornwalls Mark and Cornwalls Series Mark with the Clarendon Mark.  While there are similarities between the devices used in each of the marks, the presence of the additional words ‘Cornwalls’ and ‘Clarendon Lawyers’ respectively creates such a clear distinction that consumers viewing the Cornwalls Mark are unlikely to think of the Opponent and vice versa.   

10. I find that the Opponent has established the ground of opposition under s 44 in respect of the C Mark and C Series Mark but failed to establish the ground of opposition under s 44 for the Cornwalls and Cornwalls Series Marks. The remainder of the decision will only consider whether grounds of opposition have been established for the Cornwalls and Cornwalls Series Marks.

    Section 60

11. Section 60 of the Act is reproduced below:

    Section 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.

12. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[14]

    [14] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

13. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[15]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[16]

    [15] [2000] FCA 1335, [81].

    [16] (1992) 33 FCR 302, 343.

14. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[17]

    [17] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

15. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[18] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[19]

    [18] (2000) 50 IPR 1.

    [19] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

16. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[20]

    [20] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

17. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    a. Each of the Existing Trade Marks have been in continuous use for a period commencing before their filing date and have acquired a substantial reputation in Australia as trade marks belonging to the Opponent.

    b. The Opponent’s use and resultant reputation in the Existing Trade Marks extends to the following goods and services:

    i. Professional legal advisory services including legal services relating to corporations law, mergers and acquisitions, equity capital markets, business law, taxation law, government, corporate governance, corporations law, intellectual property, property law and commercial and corporate litigation.

    ii. Business administration services including company secretarial services, preparation of company disclosure statements including prospectus documents, and business merger services and advice relating to acquisitions and advice relating to business mergers.

    iii. Education and training services including arranging and conducting seminars and publication of legal information.

    iv. Printed subject matter relating to the matters referred to above.

    c. The Opponent’s use and resultant reputation in the Existing Trade Marks precedes the priority date for the Opposed Trade Marks.

18. I am satisfied on the evidence before me that the Opponent’s Trade Marks had, before the relevant date, acquired a reputation in Australia for professional legal services, sufficient for the requirements under s 60(a) of the Act. I reach this conclusion noting the length of time the Opponent and its predecessors in title have used the Opponent’s Trade Marks and the significant marketing and esteem in which the Opponent and its trade marks are held, especially in respect of sophisticated commercial transactions. However, noting that the vast majority of evidence of use of the Opponent’s Trade Marks concerned the Clarendon Mark I find, on the evidence before me, that the Opponent has a significantly stronger reputation in the Clarendon Mark than the Device Mark, which by itself barely satisfies the threshold for s 60(a).

19. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Marks would be likely to deceive or cause confusion. Discussions and decisions on the subject of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[21]

    [21] (1937) 58 CLR 641, 658.

1. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[22]

   [22] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

2. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[23]

   [23] [2012] ATMO 124, [40].

3. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[24] 

   [24] [2016] FCA 729, [142].

4. I am not satisfied that because of the reputation of either of the Opponent’s Trade Marks, the use of the Cornwalls or Cornwalls Series Marks would be likely to deceive or cause confusion.  I refer to my conclusions in paragraph 30 and 31 above where I find that the Opponent’s Trade Marks are not deceptively similar to the Cornwalls and Cornwalls Series Marks due to the presence of the ‘Cornwalls’ element which creates a visual, aural and conceptual distinction rendering consumer confusion unlikely.  I also note that the market for the professional legal services that the Opponent has a reputation in is a sophisticated one, where clients are likely to take some care in selecting their legal advisor.  A final relevant factor is that the reputation of the Device Mark, being the mark that is closer in similarity to the Cornwalls and Cornwalls Series Mark, is particularly limited, with the majority of the reputation held by the Opponent being in the Clarendon Mark, which is clearly distinct from the Cornwalls or Cornwalls Series Marks.  

5. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Section 42

6. Section 42 of the Act is reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

7. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[25]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[26]

   [25] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [26] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

8. The Opponent has particularised the ground of opposition in the SGP as set out below, however in the hearing indicated that it did not press the claim ((c) in the particulars) that the use of the Trade Marks would infringe the Opponent’s copyright and as such I have not considered that aspect in my decision: 

   a. The Applicant’s use and application for registration of the Opposed Trade Marks amounts to conduct in breach of the Australian Consumer Law (ACL) (i.e. Schedule 2 of the Competition and Consumer Act 2010) including:

   i. Misleading or deceptive conduct, contrary to section 18 of the ACL.

   ii. False or misleading representations about goods or services, contrary to section 29 of the ACL, including specifically subsections 29(g) and 29(h).

   b. The Applicant’s use of the Opposed Trade Marks amounts to a passing off at common law.

   c. The Opposed Trade Marks infringe the Opponent’s copyright in the Existing Trade Marks, in breach of section 36 of the Copyright Act 1968.

9. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[27] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Cornwalls and Cornwalls Series Marks would be contrary to s 18 of the ACL.

   [27] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

10. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[28], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[29] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[30]

    [28] [2014] ATMO 65, [50].

    [29] [2003] FCA 104, [107].

    [30] [1989] FCA 506, [40] (citations omitted).

11. For these reasons I am not satisfied that use of the Cornwalls and Cornwalls Series Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

12. Section 62A of the Act 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.

13. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

14. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[31]:

    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.[32]

    [31] [2004] EWCA Civ 1028; [2005] FSR 10.

    [32] [2012] FCA 81, [147].

15. 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.[33]

    [33] Ibid [165]-[166].

16. The Opponent has particularised this ground of opposition in the SGP as follows:

    a. The Applicant had full knowledge of the Opponent’s rights in the Existing Trade Marks before it commenced use of and filed for the registration of the Opposed Trade Marks.

    b. The Applicant had full knowledge that the Opponent did not consent to the Applicant’s use of the Opposed Trade Marks prior to the Applicant’s commencement of its use of the Opposed Trade Marks.

17. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[34]  It is clear from the evidence that the Applicant was aware of the Opponent and the similarities between the Cornwalls and Cornwalls Series Marks and the Opponent’s Trade Marks prior to the application to register them.  The Applicant wrote to the Opponent noting the ‘subtle similarities’  (impliedly) seeking the Opponent’s permission to continue to use its new branding.  When the Opponent did not provide the permission sought the Applicant applied to register the Cornwalls and Cornwalls Series Marks.

    [34] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

18. I do not find that the Applicant’s decision to apply to register the Cornwalls and Cornwalls Series Marks to be an application in bad faith. I am satisfied that the development of the Cornwalls and Cornwalls Series Marks (including the common C device) was done independently of the Applicant, as part of a rebranding. I also accept the Applicant’s Submissions that, in creating the branding and applying to register the Cornwalls and Cornwalls Series Marks, there was no intention to create an association with the Opponent: both parties are successful organisations with their own independent reputation. The Applicant, in its correspondence with the Opponent, took the view that while there were similarities between the devices the inclusion of the names of the respective firms set the logos apart. Notwithstanding the Opponent taking a different position, the Applicant was entitled to seek to register the Cornwalls and Cornwalls Series Marks and have the issue resolved by the Registrar. The decision of the Applicant to apply to register the Cornwalls and Cornwalls Series Marks (which I have found not to be deceptively similar) is not conduct that is unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

    60. With respect to trade mark application nos. 1967329 and 1967331 I have found the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register these trade marks. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of these applications should be in accordance with the Court’s orders or directions.

19. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP with respect to trade mark application nos. 1967330 and 1967332.  Trade mark application nos. 1967330 and 1967332 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of these applications should be in accordance with the Court’s order or direction.

    Costs

20. Both parties have sought an award of costs in their favour.  As both parties have achieved partial success I make no order as to costs.  

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    15 December 2020 

    Annexure A

    Trade Mark No. 1967731
    

    Trade Mark No. 1967732