Opposition by Find Marketing Pty Ltd to application under section 92 of the Act by Find Financial Planners Pty Ltd to remove trade mark registration number 1770718 (36) Find & Device (Series) - in the name of Find...

[2019] ATMO 82

TRADE MARKS ACT 1995

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

Re: Opposition by Mastercard International Incorporated to extension of protection to Australia of International Registration Designating Australia 1275264 (Australian Trade Mark Application No. 1737265) (9, 36, 41) - CONOTOXIA with device - filed in the name of Cinkciarz PL.

DELEGATE:

M. Cooper

REPRESENTATION:

DECISION:

Opponent: Michael Hall SC instructed by Spruson Ferguson

Holder: Chris Burgess instructed by Thomson Geer

2019 ATMO 82

Opposition to extension of protection to IRDA – reg 17A.33 of the Trade Marks Regulations 1995 - grounds under sections 42(b), 44 and 60 of the Trade Marks Act 1995 pressed – no ground of opposition established – protection of IRDA to be extended to

  Australia.  

Background

1.     In these proceedings under the Trade Marks Regulations 1995 (“the Regulations”) Cinkciarz PL (“the Holder”) seeks extension to Australia of the protection afforded by its international registration of the trade mark detailed below.

IRDA No: 1737265

IR No.: 1275264

Filing Date: 5 March 2015

Convention Priority Date: 30 January 2015

Trade Mark:

(“the Trade Mark”)

Specification of Goods & Services: Class 9:

Computer software; computer game software; computer programmes [programs], recorded; computer programs, downloadable; computer applications downloadable via the internet; data processing programs; interactive multimedia computer programs; publications downloadable in electronic form from the internet; computer hardware and accessories; data media (magnetic and optical); apparatus for recording, transmission or reproduction of sound or images; sunglasses

Class 36:

Banking; exchanging money; bureau de change services; provision of information relating to rates of exchange; provision of foreign currency; trading in currencies; on-line real-time currency trading; financial information in the nature of rates of exchange; currency exchange rate quotations; forecasting of foreign exchange rates; computerised financial services relating to foreign currency dealings; preparation and quotation of exchange rate information; swaps of currency rates; provision of pricing information about foreign exchange rates; money exchange agency services; foreign monetary exchange advisory services; financial database services relating to foreign exchange; money exchange and transfer; provision of exchange rate lists; foreign exchange bureaux; cash, check (cheque) and money order services; electronic funds transfer by telecommunications; automated payment services; money transmission services; electronic payment services; real estate agency; debt collection agencies; financial analysis; online banking; financial information; banking; mortgage banking; credit bureaux; rent collection; financial consultancy; insurance consultation; financial management; financial evaluation (insurance, banking, real estate); financial consultancy; financial information; banking; finance services; mutual funds; stock exchange quotations; securities brokerage; guarantees; insurance information; financial information; financial information; fund investments; fund investments; electronic funds transfer; services related to credit and debit cards; debit and credit card services; issuance of credit and debit cards; insurance brokerage; securities brokerage; stock exchange quotations; tax assessments; securities brokerage; insurance brokerage; loans (financing); banking; insurance; exchanging money; financial management; real estate management; management of assets

Class 41:

Publication of texts (other than publicity texts); online publication of electronic, non- downloadable materials; publication of material which can be accessed from databases or from the internet; electronic game services and competitions provided by means of the internet; information relating to education, provided on-line from a computer database or the internet; educational services; education information; movie studios; photography; photographic reporting; provision of amusement arcades; providing online games; gambling; club services (entertainment or education); electronic desktop publishing; practical training demonstrations; arranging and conducting of workshops and training; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of colloquiums; organization of competitions education or entertainment; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable; publication of books; publication of texts (other than publicity texts).

(“the Goods and Services”)

2. On 5 March 2015, the Holder applied to extend protection of its International Registration to Australia. The Trade Mark was examined as mandated by r 17A.12 of the Regulations and

advertised as accepted for possible protection on 30 March 2017 in the Australian Official Journal of Trade Marks.

3.     On 30 May 2017, Mastercard International Incorporated (“the Opponent”) filed a Notice of Intention to Oppose the extension of protection to the IRDA. Regulation 17A.34 relevantly provides that protection of an IRDA may be opposed on any of the grounds on which a domestic trade mark application may be rejected (ss 39 to 44) and also on the grounds of opposition set out under sections 58 to 61 and 62A of the Trade Marks Act 1995 (“the Act”). On 30 June 2017 the Opponent filed its Statement of Grounds and Particulars (“SGP”) which specified grounds under sections 42, 44, and 60 of the Act.

4.     The Holder filed a Notice of Intention to Defend on 11 August 2017.

5.     On 12 July 2018 the Opponent requested a hearing. The matter was allocated to me as a delegate of the Registrar and was heard in Canberra on 11 February 2019. Michael Hall of counsel appeared for the Opponent and Chris Burgess of counsel appeared for the Holder.

6.     Evidence and submissions were filed as discussed below.

Evidence

7.     Evidence in Support was filed by the Opponent on 24 November 2015. It comprised a statutory declaration by Colm Dobbyn, Group Executive and General Counsel for the Opponent, dated 16 November 2017, with Annexures A – I (“the Dobbyn Declaration”).

8.     Evidence in Answer was filed by the Holder on 22 February 2018 and comprised the statutory declarations of:

·     Marcin Pioro, the Holder’s President, dated 9 February 2018, with annexures MP-1 to MP-3 and MP-6 (“the Pioro Declaration”).

·     Tim Kava, senior broker with Tradition Asia, dated 20 February 2018 (“the Kava Declaration”).

·     Lien Mai, a lawyer employed by the Holder’s legal representatives, Thomson Geer, dated 21 February 2018, including annexures LM-1 and LM-2 (“the Mai Declaration”).

9.     The Opponent filed Evidence in Reply on 5 June 2018 comprising the statutory declaration of Amanda Caldwell, a lawyer with the Opponent’s legal representatives, Spruson Ferguson, dated 5 June 2018 with Annexures A to F (“the Caldwell Declaration”).

Preliminary issue: reg 21.19

10.   The Holder and Opponent both later filed further material through their legal representatives relating to various EUIPO decisions and documents concerning ongoing disputes between them regarding the Holder’s applications for similar trade marks in that jurisdiction. Specifically, as follows:

·     Declaration of Peter LeGuay, for the Holder, dated 25 June 2018, including annexures PLG-1 to PLG-2, which comprised 12 EUIPO decisions in the Holder’s favour relating to oppositions brought by the Opponent in that jurisdiction.

·     Declaration of Amanda Caldwell, for the Opponent, dated 30 August 2018, with Annexures A-C comprising the Opponent’s Notices of Appeal in respect of each of those decisions.

·     Declaration of Roseanne Mannion, for the Opponent, dated 24 January 2019, with Annexures RSM-1 to RSM-12 comprising the Board of Appeals decisions.

11.   Both parties claimed the material fell within the scope of r 21.19.

12.   The Opponent submitted that the documents were relevant on the basis that “the European Union has similar tests as to whether marks are deceptive similarity (sic) and the market conditions and relevant consumer is similar to Australia.” Furthermore, it was asserted that the trade marks involved included the same device as contained in the Trade Mark.

13.   After seeking the admission of the EUIPO decisions that initially favoured it, the Holder, while it did not oppose my having regard to the later decisions filed by the Opponent, submitted that they were immaterial because they concerned different trade marks, the proceedings having been remitted for reassessment, had not been finalised and none of them evidenced any finding that  was a barrier to accepting the Trade Mark. Moreover, they were irrelevant in circumstances where the Trade Mark has, in fact, been accepted for registration in several countries. In any event, the Holder had “determined to appeal” the decisions.

14.   The Opponent maintained the relevance of the later decisions.

15.    I note that the EUIPO proceedings are not finalised, as the latest decisions simply remit the matters and recommend that they be suspended until finalisation of other associated proceedings. In fact, the Board of Appeal, in assessing costs, stated that “there is no losing party” and made no

award of costs1. Nevertheless, the decisions are not entirely irrelevant to the grounds of  opposition and, in the absence of any objections to their admission, while the material may ultimately be of little or no weight, in the interests of ensuring that all relevant material is before the Registrar, I allowed the admission of the material under r 21.15(4).

The Opponent’s evidence

16.   In his declaration, Mr. Dobbyn outlined the Opponent’s history and described it as “a leading global payments solutions company that provides a broad variety of innovative services in support of its global members’ credit, deposit access, electronic cash, business-to-business and related payment programs”. He claimed it processes “as many as 32 million authorisations of financial transactions a day” and manages the “well-known, widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS” in over 210 countries and territories.

17.   He annexed a copy of the Opponent’s “numerous” trade mark applications and registrations in Australia which consist of or contain a device comprised of two interlocking circles (“the Interlocking Circles Device”). He outlined the history of the Interlocking Circles Device which he said was first adopted in 1969, is known around the world, and is now used on a broad range of services. Relying on several factors such as consistency and strict quality control, he claimed a “very high level of consumer awareness” in the Interlocking Circles Device trade mark2 and that “consumers are accustomed to use of the mark for an extensive and diversified range of goods and services.”

18.   He attached a copy of a witness statement he provided for opposition proceedings in the EU which detailed the Opponent’s use of its trade marks in that jurisdiction, particularly the so-called Interlocking Circles Device trade mark (Annexure H). I note in that document he made a distinction in use between the Opponent’s “Interlocking Circle device®” marks and the “MasterCard® and Interlocking Circles device®” marks. He made no such distinction in this declaration.

19.   

He also attached correspondence relating to opposition proceedings in Vietnam in relation to a “confusingly similar” mark which, he claimed, succeeded on the basis of the Opponent’s reputation.

1 For example, see page 41 of 464 in Annexure RSM1 to the Mannion declaration provided with the r 21.19 request.

2 Mr. Dobbyn referred interchangeably to the “Interlocking Circles Device trade mark” and the “Interlocking

Circles Device trade marks”. He did not identify to which of the Opponent’s marks he referred. Consequently I have assumed he is referring collectively to the Opponent’s trade marks listed at his Annexure B which include an “Interlocking Circles Device”.

20.   He stated his belief that the Interlocking Circles Devices trade marks “have become well-known and are recognised by members of the public and the relevant industry as indicating exclusively the goods and services provided by the opponent” and that the use of the Trade Mark would result in deception and confusion.

The Holder’s evidence

21.   In his declaration, Mr. Pioro outlined his role as the Holder’s President. He said the Holder was founded in 2006, when he also created the Trade Mark, and he has overseen “all aspects of the sales, brand expansion, marketing, design and operation of the CONOTOXIA brand” and the Holder’s business. He asserted that the Holder has “grown into a successful international business providing various financial products and solutions to businesses and individuals.” He claimed it is well regarded as “one of Europe’s leaders in the online currency exchange market” and “has won many awards for excellence in currency forecasting accuracy”.

22.   He noted that the Holder had also registered the trade mark CONOTOXIA in Australia in 2015 (no. 1697591) in the same classes of Goods and Services as the Trade Mark. He maintained that this trade mark is “a highly distinctive, invented word which forms a major element of the [Trade Mark]”.

23.   He referred to various attachments demonstrating use of the Trade Mark in Australia and noted that the Holder does not provide credit card services or target the general consumer population “regarding the issuance and use of credit cards.” Rather, it operates an FX Trading Platform which targets a niche market of foreign exchange traders and investors. He annexed various examples of advertising material at, and sponsorship of, sports events which he claimed were “viewed by a large Australian audience.”

24.   He annexed a document listing the Trade Mark’s registration in over 61 countries.

25.   He further noted the Opponent’s evidence of its Brand Guidelines and its requirement that the word “MasterCard” must not be omitted when using the Interlocking Circles Device. He said that he is unaware of the Opponent’s use of the Interlocking Circles Device in Australia without the inclusion of the word “MasterCard”, or any use of that trade mark for foreign exchange services. Nor was he aware of any instances of confusion ever occurring between the Trade Mark, or the Trade Mark without the word “Conotoxia”, and the Opponent’s marks.

26.   In his declaration, Mr. Kava claimed to have over 31 years’ experience as a broker in the financial services industry. He stated his awareness of the Trade Mark filing and also of the Opponent’s

Interlocking Circle Device trade marks registered in respect of similar goods and services. He claimed that when he first saw the Trade Mark he “did not think of the MasterCard Circle device or MasterCard, nor was I confused into thinking that the [Trade] Mark was in any way associated with or related to MasterCard.” He maintained that the visual aspects of the Trade Mark “were highly distinctive and can be easily distinguished from the MasterCard Circle Device.”

27.   Ms. Lien Mai, in her declaration, outlined the results of her trade mark search “for all pending and registered trade marks in any class, comprising interlocking discs, stacked discs, interlocking circles or stacked circles (excluding the opponent’s trade marks)”. She identified and annexed a list of 158 pending and registered marks in classes 9, 36 and/or 41 that comprised two interlocking or stacked discs or circles.

Submissions

28.   The Opponent and Holder filed written submissions on 31 January 2019 and 4 February 2019 respectively. These are discussed further below.

Grounds and Onus

29.   The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.3 As noted above, the opposition grounds claimed in the SGP are those under sections 42(b), 44, and 60 of the Act. The relevant date at which the grounds under r 17A.34 must be considered is the priority date of the opposed application.4 In this case that date is 30 January 2015 (“the relevant date”).

Consideration and reasons

30. Section 44 of the Act relevantly provides:

44. Identical etc. trade marks

(1)     Subject to subsections (3) and (4), an application for the registration of a trade mark (Holder’s trade mark) in respect of goods (Holder’s goods) must be rejected if:

(a)  the Holder'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

3 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

4 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595], see also s 29(1) of the Act.

(b)     the priority date for the registration of the Holder's trade mark in respect of the Holder'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 (Holder’s trade mark) in respect of services (Holder’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 Holder's trade mark in respect of the Holder'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.

31. To establish the section 44 ground of opposition under subsections 44(1) or 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

·     is substantially identical with or deceptively similar to at least one of the Opponent’s marks as nominated in its SGP as also contained in Annexure B of the Dobbyn declaration (“the Opponent’s marks”) and

·     is in respect of similar goods or closely related services (s.44(1)(a)(i)) and/or similar services or closely related goods (s.44(2)(a)(i)), and

· has a priority date not earlier than that of the Opponent’s marks (s.44(1)(b) and s.44(2)(b)).

32.   In the SGP, the Opponent listed 36 of its trade marks and simply asserted, in relation to this opposition ground, that these marks are substantially identical with, or deceptively similar to, the Trade Mark and cover similar or closely related goods and/or services to those of the Trade Mark.

33.   In its written submissions and at the hearing the Opponent stated it only wished to rely on the “first 30” of its trade marks in Annexure B to the Dobbyn declaration (also the first 30 of its trade marks listed in its SGP). It noted that each of these had a priority date earlier than that of the Trade Mark and contended that the Goods and Services were the same as, or of the same description as, those in a selection of its registered marks, specifically trade mark numbers 872842, 1119773, 564928, 888319, 1045895, 1548498 and 14579215. It did not press any submission that the Trade Mark was substantially identical to the Opponent’s marks however it maintained that the Trade Mark was deceptively similar to them. It contended that the Interlocking Circles Device, present in each of its marks and incorporated in the Trade Mark, is a distinctive and memorable feature and the Trade Mark’s additional features “do not materially alter the memorable effect and impression of the Interlocking Circles Device”. This was claimed to give rise to a likelihood of confusion such that a consumer would be “caused to wonder” whether the Holder’s Goods and Services “emanate from the Opponent.”

34.   The submission also noted it had resolved a significant number of oppositions in respect of other trade marks which sought to incorporate “interlocking circles, interlocking discs, stack circles and stacked discs”.

35.   It was further asserted that there was no evidence of prior honest concurrent use of the Trade Mark and that an inference should be drawn that the Trade Mark “was indeed adopted” for the purpose of associating the Holder with the Opponent in the purchaser’s mind.

36.   In its submissions, the Holder noted that only 28 of the 30 nominated Opponent’s marks were registered in Australia. It also noted the Opponent’s acknowledgement that it did not allege any substantial identity between the Trade Mark and these marks.

37.   The Holder accepted that the goods and/or services for the Opponent’s marks as identified in its written submissions (paragraph 33 above) were relevantly the same or of the same description as its Goods and Services. It maintained however that the Opponent had not demonstrated this was the case for any other of its nominated trade marks.

38.   Noting that the Trade Mark had been registered in 61 other countries, the Holder submitted that the Trade Mark looks, sounds and is conceptually different to the Opponent’s marks and

5 Paragraph 20 of the Opponent’s submissions, although this list was claimed not to be exclusive.

contended that the Opponent had not demonstrated the necessary deceptive similarity between the Trade Mark and the Opponent’s marks. This was said to be for six reasons.

39.   Firstly, the incorporation of the invented and highly distinctive word “Conotoxia” in the Trade Mark will be used to describe the mark when persons seek out the Goods and Services. The Opponent’s marks contain no word or no word element “remotely similar” to “Conotoxia”.

40.   Secondly, the   , the “Euro Dollar Device”, in the Trade Mark is conceptually different to Opponent’s marks and conveys the concept of coins, none of which are featured in the Opponent’s marks.6

41.   Thirdly, the Euro Dollar Device looks different to the Interlocking Circles Device which displays an interlocking region between the two circles, that is not demonstrated in the Trade Mark. For example:

42.   It was also observed that none of the Opponent’s marks displayed the thick circular boundary of the Euro coin/circle or the thick area of white at the overlap point between the Euro and Dollar signs.

43.   Fourthly, noting the 158 Australian pending and registered trade marks in classes 9, 36 and 41 as annexed to the Mai declaration that also comprise interlocking or overlapping discs, the circle device in the Opponent’s marks was said to be “relatively non-distinctive”, being “elementary geographical shapes” that did not demonstrate a high level of similarity to the Trade Mark. While

6 The Opponent drew my attention to an exhibit referred to in paragraph (p) of Annexure H to the Dobbyn declaration relating to the EUIPO proceedings, which purports to exhibit a still shot of a commercial broadcast in Hungary in 2003 showing two coins representing a variation of the Interlocking Circles Device®. There was no claim or evidence demonstrating this variation or its use in Australia, therefore I consider nothing turns on it for the purposes of this opposition.

noting the “somewhat distinctive” “teeth” in the some of the Opponent’s marks (e.g. 872842) these did not assist the Opponent because they do not appear in the Trade Mark.

44.   Fifthly, and notwithstanding the above analysis, the Holder submitted that the Opponent focussed on the alleged similarity in the circles without addressing what is the necessary consideration in respect of composite marks. That is, the impression retained from the respective marks as a  whole. In this context the Holder submitted that the effect of the Trade Mark is “to present the highly distinctive and unusual word ‘conotoxia’ in association with the concept of coins or currency”, a concept not conveyed by the Opponent’s marks. The Holder contended that the respective wholes are too dissimilar visually, aurally and conceptually for any likelihood of deception or confusion to arise.

45.   Sixthly, there is no evidence of any confusion despite the Holder having “engaged in extensive international trade, and also having registered the [Trade Mark] in 61 countries.”

46.   The Holder also rejected the Opponent’s apparent application of the principles that relate to “wholly contained” marks, submitting that the Trade Mark does not wholly contain any of the Opponent’s marks.

47.   It further submitted that the Opponent’s evidence regarding its successful opposition to other  trade marks, where the then-Applicant withdrew or did not defend the application, were irrelevant because the reasons for such actions were unknown and they had no connection to the Trade Mark.

48. If the Holder’s submissions in this regard were not accepted, the Holder sought the exercise of discretion to permit registration under s 44(3)(b) claiming that there had been no consumer confusion, it had honestly adopted the Trade Mark and that parties are trading in different corners of the market.

Consideration

49. All the marks relied on by the Opponent in this regard have an earlier priority date than the Trade Mark. Therefore the requirements in s 44(1)(b) and 44(2)(b) are satisfied. As noted above, the Holder accepted that the Goods and Services in the Opponent’s identified marks above (paragraph

33) were similar/closely related goods and/or services. Just prior to the hearing the Opponent provided another list to which it added the goods and/or services in its Australian registered trade

marks 235052, 338199, 343310, 537025, 537026, 564927, 762720 and 884859 and 10863007.

While the Opponent claimed this was not an exclusive list, it did not claim or provide any evidence in respect of any other of its marks.

50.   Having considered all those identified marks, I am satisfied that in respect of them,  (“the relevant Opponent’s marks”), s 44(1)(a)(i) and 44(2)(a)(i) are satisfied.

51.   As noted above, the Opponent in its submissions relied only on deceptive similarity of the marks. For the sake of completeness, I have considered whether they are substantially identical by reference to the table below.

TRADE MARK	RELEVANT    OPPONENT’S MARKS	TM no.
235052
338199
343310
537025
537026

7 I have excluded trade mark numbers 1804318 which post-dates the priority date and 754612 which has been removed from the Register.

564927

564928

762720

(The third trade mark in the series of trade marks is  depicted in the colours RED and YELLOW as shown in the representation attached to the application form. The fourth trade mark in the series of trade marks is depicted in the colours DARK    BLUE    and   LIGHT

BLUE as shown in the representation attached to the application form. The fifth trade mark in the series of trade marks is depicted in the colours LIGHT   BLUE   and   RED  as

shown in the representation attached to the application form.

872842

884859

888319

The trade mark registration is limited to the colours RED (Pantone 485C) and YELLOW (Pantone 137C) as shown in the representation of the trade mark attached to the application form.

1045895

1086300

1119773

1457921

1548498

Registration of this trade mark is limited to the colours RED and YELLOW as shown in the representation of the trade mark attached to the application form.

52.   Having conducted a side by side comparison, I am not satisfied that a total impression of resemblance emerges between the Trade Mark and any of the relevant Opponent’s marks such that they might be regarded as being substantially identical.8

Deceptive similarity

53. Section 10 of the Act defines deceptive similarity as follows:

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.

54.   A determination of ‘deceptive similarity’ requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the respective marks by potential consumers of the goods and/or services9. This is to be assessed by reference to the standards of ordinary people “who should not be credited with high perception or habitual caution” and in the context of the business and the way in which the particular class/es of goods are sold or services provided.10 A possibility of confusion is not sufficient; there must be a real tangible danger of

8 Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd. [1963] HCA 66 at [13].

9 Ibid.

10 Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641 at 658.

confusion.11 A likelihood of confusion will exists if there “is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.”12 The use to be considered is notional use13.

55.   In this context, I note, for example, that the Trade Mark’s class 36 services include “services related to credit and debit cards; debit and credit card services, issuance of debit and credit cards; cash, cheque and money order services, banking”. Therefore, the notional use of the Trade Mark is quite broad and not necessarily restricted, as the Holder claimed, to a niche market. Instead I consider it would likely extend generally to Australian consumers of banking and financial goods and services, a group also embraced by the relevant Opponent’s marks. It follows that the Holder will be potentially selling its products/delivering it services bearing the Trade Mark, in part at least, to the same types of Australian consumers as the Opponent.

56.   In estimating the effect or impression produced on the mind of these potential consumers, I note the comment in Clarke v Sharp in relation to the appropriate comparison in the circumstances:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.14

57.   In this context, I make the following observations in respect of the points of resemblance and dissimilarity between the Trade Mark and the relevant Opponent’s marks:

·     The Trade Mark is aurally dissimilar to all the relevant Opponent’s marks.

·     The Trade Mark is visually dissimilar to all the relevant Opponent’s marks, the only common element being the use of two circles or discs, the depiction of which is significantly different in the Trade Mark. Specifically, the Euro Dollar device is not reflected in the Opponent’s marks.  The contrasting backgrounds of the Trade Mark’s two circles, the dark rim on the Euro inner circle and white rim on its outer and the manner of its overlay on the $ sign, is visually dissimilar to the Opponent’s interlocking circles which, on most of its marks, intersect. Unlike many of the Opponent’s marks, there are no words superimposed on the Trade Mark circles, there are no “teeth” or other highlighting at the point of intersection between the two circles. While the simple

11 Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020.

12 Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [50(ii)].

13 Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362; [1973] HCA 43; 1

ALR 443 at [450].

14 Clark v Sharp (1898) 15 RPC 141 at [146].

overlaid circles in the Opponent’s registered mark 888319 do resemble the manner of the presentation of the Trade Mark circles, that is the left circle overlaps (rather than intersects) the circle on the right-hand side, the absence of any wording or symbols in or beside that mark means it bears very little, if any, resemblance to the Trade Mark.

58.   I have also had regard to the Opponent’s submissions (paragraph 31) that the Interlocking Circles Device is “wholly contained” in the Trade Mark and that it retains its identity as a distinctive and memorable feature that functions to identify trade origin. In this regard, I note the comments of Whitford J in Frigiking15 that, where a distinctive mark or a highly distinctive part of a mark was used with additions in another trade mark, consumers might think that the new mark indicated the same source of origin as the old mark. Whitford J concluded that the word “King” incorporated in the mark “Frigiking” was not a highly distinctive word, and unless it bore a secondary meaning of special distinctiveness, people would not be likely to believe that there was a connection between the marks FRIGIKING and THERMO-KING.

59.   Given the stark visual and aural differences between the Trade Mark and the relevant Opponent’s marks observed above, I am not satisfied that the Interlocking Circles Device is wholly contained in the Trade Mark. Even if I am wrong on this, Annexure 2 to the Mai Declaration indicates that the use of overlapping or intersecting circles or discs in trade marks for similar goods and/or services is relatively commonplace.16 On this basis I am not satisfied that the so-called Interlocking Circles Device in the relevant Opponent’s marks is highly distinctive.

60.   In addition, I note the comments of the Comptroller-General in the case of Harrods Ltd’s Application:

Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or  will be used.17

61.   While there is no evidence before me as to how many of the trade marks identified in the Mai Declaration as comprising two interlocking or stacked discs or circles in classes 9, 36 and/or 41,

15 Frigiking Trade Mark [1973] RPC 739.

16 For example, trade mark nos. 910668, 1116645, 1739880, 1753400, 1525299 and several trade marks owned by IOOF all demonstrate interlocking circles or discs for similar goods and services.

17 (1935) 52 RPC 65 [70].

are in use, given the high volume of marks identified and the currency of their registration, I consider it reasonable to assume a number are in use. On this basis I also consider it reasonable to infer that the use of intersecting or overlapping circles (or stacked discs) is a relatively “common characteristic” that is “well recognised in marks in use in the particular trade”, that is, in the banking and financial services industry. In such a context, where interconnecting or overlapping discs or circles are used in several trade marks associated with the provision of banking and financial goods and services, I consider it is also reasonable to assume that consumers have an awareness of the brands they prefer/require and are accustomed to differentiating their product choices in this regard. It follows that I am not satisfied that consumers, even with an imperfect recollection of the relevant Opponent’s marks, are likely to make a connection between them and the Trade Mark, especially given the striking visual, and aural differences noted above. Adopting the language of Burchett J in Conde Nast Publications v Virginia Taylor18, “the real point” is that even the most “cursory sight” of the Trade Mark, and the most imperfect recollection of it afterwards, could hardly “denude it” of the word “Conotoxia”, the highly stylised circles it contains and the symbols “involved in it”.

62.   Overall, I do not consider that the Trade Mark “so nearly” resembles any of the relevant Opponent’s marks in any material way such that it would be “likely to deceive or cause confusion” among “persons of ordinary intelligence and memory”, even allowing for imperfect recollection.

63.   For the above reasons, I am not satisfied that the Trade Mark is deceptively similar to the relevant Opponent’s marks.

64. It follows that the Opponent has failed to establish this ground of opposition under s 44.

Section 60

65. Section 60 provides as follows:

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.

18 [1998] FCA 864.

Note:        For priority date see section 12.

66.   The Opponent must first establish that the trade marks on which it relies had a reputation in Australia at the Trade Mark’s priority date and, secondly, that because of that reputation, the Holder’s use of the Trade Mark would be likely to deceive or cause confusion. That is, the Opponent’s evidence must establish a causal link between its reputation in its trade mark/s and the likelihood that use of the Trade Mark will cause deception or confusion.

67.   The Opponent claimed in the SGP as follows:

The Opponent has used trade marks consisting of or including an Interlocking Circles Device continuously since 1969.

The Opponent operates globally including in Australia. Its Interlocking Circles Device trade marks have been and continue to be extensively used around the world, including in Australia, in connection with a broad range of goods and services including (but not limited to) goods and services in the financial, banking, business, marketing and advisory fields.

As a result of the Opponent’s continuous and extensive use in Australia and around the world of its Interlocking Circles Device, the Opponent has acquired a reputation in trade marks consisting of or containing an Interlocking Circles Device such that use of the Holder’s trade mark is likely to deceive or cause confusion.

68.   In its submissions the Opponent referred to its prior marks as a “family” of marks incorporating or consisting of the interlocking circles. It relied in this regard on the “Interlocking Circles Device, [in] each of the trade marks set out in Annexure B of the Dobbyn declaration”, and their use in Australia “since the late 1970s”. Noting the significant number of MasterCards issued in Australia as well as multiple services, global revenues and significant advertising expenditure, the Opponent contended that the Opponent’s Interlocking Circles Device was well-known in Australia and internationally. It claimed the Interlocking Circles Device “is the feature with  which the opponent’s reputation is associated” and the feature consumers rely on when making “decisions about the origin of the goods/services.” It rejected the Holder’s claims concerning the different markets for their respective goods and/or services, contending that the Holder’s own evidence demonstrated that it provides currency cards for travellers, thereby extending its consumer base to ordinary consumers. Consequently, the Opponent submitted that there is a real tangible danger that some people on seeing the Trade Mark will wonder or be left in doubt about whether it represents a sub-brand of the same trade source “signified by the Opponent’s Interlocking Circles Device Marks.”

69.   The Holder observed that the Opponent appeared to rely on the 37 of its trade marks in Annexure B to the Dobbyn declaration. Accepting that the word “MasterCard” would have been known by

nearly every adult Australian, the Holder noted that at the priority date, the Interlocking Circles Device had never been used in Australia without the word “MasterCard” appearing on it. The Holder observed that the relocation of the word “MasterCard” to underneath the interlocking circles did not occur until 2016, after the priority date. It submitted that the only trade mark in which the Opponent enjoyed a reputation in Australia at the priority date is “The MasterCard Device Trade Mark” as displayed in its submissions below:

70.   While the Holder did not nominate any Australian Trade Mark registration numbers, of those marks at Annexure B of the Dobbyn declaration that precede the priority date, the “MasterCard Device Trade Mark”, appears to reflect the Opponent’s registered mark 87284219.

71.   In this context the Holder submitted that the word MasterCard, displayed in or across the interlocking circles, is the distinctive element of the relevant Opponent’s marks and “where the strength of the reputation lies” in Australia. On the basis that they lack distinctiveness, it rejected the Opponent’s submission that the interlocking circles are an “essential” trade mark feature, claiming that they are not distinctive, being evident in many Australian trade mark registrations, and in any event, the Opponent had not demonstrated any reputation in the circles or discs. The Holder maintained that the circles did not enjoy any reputation in Australia independent of the word MasterCard. Conversely, the highly distinctive and unusual word element “Conotoxia” in the Trade Mark bears no resemblance to “MasterCard”. Therefore, while the Holder acknowledged the Opponent’s reputation in the “MasterCard Device Trade Mark”, it maintained that it is “so dissimilar” to the Trade Mark that no likelihood of deception or confusion arises.

72.   In relation to the Services, the Holder acknowledged that “some” bear a relevant nexus but this was not of itself sufficient to establish a likelihood of confusion. It contended that these are not fast-moving consumer goods, and, as noted above, maintained that theirs is a “niche” market with sophisticated consumers who make investment decisions with care, militating against any likelihood of confusion. Furthermore, if there was to be any confusion, it would have been

19 While registered marks 537025, 537026 and 756907 also appear to be the same as 872842 an examination of the register reveals that the lighter coloured circle in each is populated by dots.

apparent by now and its absence demonstrated that when the Trade Mark is viewed as whole it “clearly presents a different brand altogether”.

73. The Opponent did not dispute the Holder’s claims in respect of the relevant mark for consideration under s 60 at the priority date, commenting that it also relied on the reputation of the Opponent’s use of Cirrus and Maestro on the Interlocking Circles Device in the relevant period. The Holder responded that the evidence did not support any reputation in relation to Cirrus and Maestro marks at the priority date and these were bare assertions that should not be given weight.

Reputation

74.   As referred to by the Holder and the Opponent, the comments of Kenny J in McCormick & Co Inc v McCormick in relation to s 60 and the measurement of reputation are relevant:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.20

75.   

Various printouts from the Opponent’s MasterCard websites, the Opponent’s annual financial results from 2005 to 2016 and its Australian marketing and advertising expenditure from 2002 to 2013 were annexed to the Dobbyn Declaration. They demonstrated significant advertising and promotional expenditure in Australia and very high revenue. This material did not however establish that the sales, promotions or expenditure were made by reference to any particular trade mark or marks. Other than the assertions in the Dobbyn Declaration, which as noted previously (see footnote 2) were somewhat opaque in terms of which of the Opponent’s marks he was referencing, the evidence did not establish that the Opponent’s reputation lay in its Interlocking Circles Device. In contrast, I note the extensive evidence of the Opponent’s use of its “Interlocking Circles device®” marks (as opposed to its “MasterCard® and Interlocking Circles device®” marks) in European countries, as annexed to the Dobbyn witness statement, which was apparently prepared for the EUIPO litigation (Annexure H). The statement also indicated that consumer survey evidence was supplied in support of the Opponent’s claims regarding the use, in particular, of the Interlocking Circles Device marks, in that jurisdiction. No similar evidence was provided in relation to the use of the Opponent’s marks in Australia. I infer it was not available.

20 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].

76.   In any event, the Opponent did not contest the Holder’s submission that at the relevant date, the relevant trade mark, for the purposes of the assessment of any likelihood of deception or confusion based on its reputation, was the MasterCard Device Trade Mark identified by the Holder and discussed above.21

77.   Therefore, although the evidence does not support the Opponent’s claims of its reputation in the Interlocking Circles Device in Australia at the relevant date, I am satisfied that it does support the Opponent’s reputation in the Mastercard Device Trade Mark set out above. That is, the word Mastercard superimposed on two interlocking circles.

78. Accordingly, I am satisfied that, at the relevant date, the Opponent had established, among a significant number of Australian consumers, the relevant reputation in the “MasterCard Device Trade Mark” for the purposes of s 60(a).

Likelihood of deception or confusion

79.   It is also necessary for an opponent to establish a causal link between its reputation in its trade mark/s and the likelihood that use of the applied for trade mark will cause deception or confusion. Therefore, the Opponent is required to establish that, because of its reputation in its MasterCard Device Trade Mark, notional use of the Trade Mark on the Goods and Services would be likely to deceive or cause confusion among relevant Australian consumers.

80.   In this context I note that the Registrar’s delegate, comparing composite marks, said in Carlton and United Breweries Limited v Melbourne Bros [1999] ATMO 111 (29 October 1999):

It is, of course, well-established in case law that, generally, in considering the possibility of confusion between trade marks, where a non-distinctive element or one which occurs in other marks in the same market is reproduced in marks owned by different proprietors, then purchasers tend to pay more attention to the other features contained in the marks so as to ensure they select the product of their choice - Harrods Ltd's Appn (1935) 52 RPC 65 and Coopers Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536.

81.   This reinforces my view that the Australian consumer is more likely to focus on the word “MasterCard” than the background circles when considering or purchasing the Goods and/or Services, even accepting the nexus between them and the goods/services offered under the MasterCard Device Trade Mark. In addition, the only evidence in relation to potential confusion has been provided by the Kava declaration, in support of the Holder, who maintained an absence of any likelihood of deception or confusion.

21 Although the Opponent also claimed a relevant reputation in its Interlocking Circles device on its Cirrus and Maestro trade marks, there is little by way of evidence of any Australian reputation in these marks. Accordingly, I give them little weight and have not given them further consideration in this regard.

82.   Furthermore, as Yates J said in Qantas v Edwards (Qantas), noting that the standard of deception or confusion under s.60 “is the same as under s.44(1) of the Act”, that “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.” 22

83.   Given my conclusions regarding deceptive similarity above, that is, that there are striking visual and aural differences between the Trade Mark and the relevant Opponent’s marks (which include the MasterCard Device Trade Mark), I am not satisfied there is a real risk that consumers concerned in purchasing the Goods and Services will be deceived or confused as to their source, that is, whether they are provided by the Opponent or are otherwise authorised or sponsored by it.23

84.   It follows that I am not satisfied there is a likelihood that, because of the reputation of the Opponent’s marks, use of the Trade Mark would be likely to deceive or cause confusion among relevant Australian consumers.

85. Therefore, the s 60 ground has not been established.

Section 42

86. Section 42 of the Act provides:

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.

87. In relation to s 42(b), referring to the same matters as relied on in its s 60 ground, the Opponent submitted that use of the Trade Mark would be likely to be contrary to s 18 and/or s 29 of the Australian Consumer Law (“ACL”) and that use of the Trade Mark would “mislead and deceive consumers into thinking the IRDA holder is the Opponent, or that its business is the business of the Opponent or a business that is related to, or associated with, approved by, or sponsored by or affiliated with the Opponent.” It was also submitted that use of the Trade Mark would constitute passing off as use would amount to a misrepresentation that the Holder’s goods and services are associated with or emanate from the Opponent. It further contended that use of the Trade Mark would constitute trade mark infringement under the Act because of its deceptive similarity to the Opponent’s marks.

22 Qantas Airways Limited v Edwards [2016] FCA 729 [142 and 143].

23 Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 [107].

88. With regard to s 42(b), the Holder noted the higher threshold and submitted that there was no evidence supporting these grounds.

Consideration

89.     The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.24

90. Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)) and s 29 of the ACL concern consideration as to whether the relevant consumers would be misled or deceived as to the true origin of the Holder’s goods and services or that they had some connection with the Opponent. The Court noted in Puxu that “conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”25

91. I note my findings above under the s 60 ground that use of the Trade Mark would not cause a person to be confused or to wonder as to the source of the goods or services. It follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.

92. Furthermore, specifically in relation to s 29, I note that there is no evidence before me that the Holder has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.

93. For the above reasons, I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Holder would be regarded as having engaged in misleading or deceptive conduct, or as having falsely represented its goods or services, as required by ss 18 or 29 of the ACL.

94. In relation to passing off, the Opponent made similar claims to those it made in respect of ss 18 and 29 of the ACL.

95.   The relationship between passing off and (then) s 52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:

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

24 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].

25 Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 [198].

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.26

96. That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to passing off. While I accept that the Opponent has a significant reputation, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Opponent. Therefore, the Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constitutes passing off.

97. In relation to the Opponent’s claim of trade mark infringement under s 120 of the Act, this is a decision which is outside the Registrar’s jurisdiction.27

98. Accordingly, the s 42(b) ground of opposition has not been established.

Decision

99. Reg. 17A.34N of the Regulations provides:

(1)   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)   to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)  The Registrar must notify the International Bureau of the Registrar's decision.

100.  I have found that the Opponent has not established any of its grounds of opposition. I therefore direct that protection of the IRDA be extended to Australia one month from the date of this decision in respect of all of the goods and services listed.

101.  If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If there is no appeal the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).

26 Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.

27 Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd (2011) 91 IPR 416; [2011] ATMO 17 at [37] – [38].

Costs

102. The Holder sought an award of costs. As the successful party, it is appropriate that costs be awarded against the Opponent at the scale set out in Schedule 8 to the Regulations.

Mary-Ann Cooper Hearing Officer Oppositions and Hearings 30 May 2019