Opposition by Julie Martin to registration of trade mark application number 1812625 (Class 39) – THREE CAPES LODGE WALK with device in the name of Three Capes Lodge Walk Pty Ltd.

[2022] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Julie Martin to registration of trade mark application number 1812625 (Class 39) – THREE CAPES LODGE WALK with device in the name of Three Capes Lodge Walk Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Mark My Words Trademark Services Pty Ltd.    Applicant: Pizzeys Patent and Trade Mark Attorneys Pty Ltd.
Decision:	2022 ATMO 18 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 59, and 60 pressed – s 44 established – registration refused.

Background

1. This is a decision on the opposition by Julie Martin (‘Opponent’) to the registration of trade mark application number 1812625 (‘Application’) filed by Three Capes Lodge Walk Pty Ltd (‘Applicant’) on 30 November 2016 (‘Relevant Date’), for the trade mark and services below:

   Trade Mark Number:    1812625

   Trade Mark:               

   (‘Trade Mark’)

   Services: Class 39: Arranging and conducting tours and excursions including walks and treks; reservations and bookings for tours and excursions including walks and treks; transporting of and the escorting of others; travel arrangement; porterage; passenger transport

   (‘Services’)

   Priority Date:              30 November 2016

2. The Application was examined, accepted for possible registration, and advertised for opposition on 3 December 2019. The Opponent filed notice of her intention to oppose the Application on 15 January 2020 and a statement of grounds and particulars (‘SGP’) on 12 February 2020. The Applicant filed a notice of its intention to defend the Application from opposition on 22 April 2020.

3. The Opponent filed a request to amend the SGP late in proceedings. The amendment was to the particulars set out under ss 58 and 59. The Applicant did not object to the amendment, and the SGP was subsequently amended on 24 December 2021.

4. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 23 July 2020. The Applicant filed Evidence in Answer (‘EIA’) on 23 October 2020. The Opponent filed Evidence in Reply (‘EIR’) on 23 December 2020.

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).

5. In addition to materials filed during the formal evidence stages, the Opponent requested that the Registrar exercise power under s 202 to require the Applicant produce additional documents. The Registrar issued such a direction and the Applicant subsequently complied.   

6. The parties were given the opportunity to request an oral hearing or to file written submissions. Neither party requested a hearing or chose to file written submissions. The Applicant requested that the matter be decided on the evidence filed and paid the relevant fee. As such, I have decided the matter based on the particulars set out in the SGP and the evidence of the parties.

   Grounds and onus

7. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 59, and 60.

8. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

   Evidence

9. The following evidence was filed:

   EIS

   Declaration of Julie Martin, Opponent, made on 22 July 2020, with Annexures JM1 to JM18.

   Declaration of Catherine Macneil, attorney acting on behalf of Opponent, made on 22 July 2020, with Annexures CM1 to CM5.

   EIA

   Declaration of Heath Garratt, General Manager of Tasmania Walking Company Pty Ltd (‘TWC’), made on 22 October 2020, with Exhibits HG-1 to HG-21.

   EIR

   Declaration of Julie Martin, made on 22 December 2020, with Annexures JM19 to JM21.

10. The evidence filed, in terms of relevance to the grounds of opposition pursued, can be divided into two different categories.

11. The first category is mostly relevant to the grounds of opposition under ss 42(b), 44, and 60, as the evidence relates to the Opponent’s prior use and registration of its own trade marks, and the subsequent adoption and use of the Trade Mark by the Applicant or TWC. Another important aspect of this evidence is the meaning of the term ‘Three Capes’ which forms part of the trade marks of both parties.

12. The second category is mostly relevant to the grounds of opposition under ss 58 and 59. This evidence relates to whether the use of the Trade Mark and similar marks is by the Applicant or an entity associated with the Applicant. If it is the latter, the Opponent argues that the Applicant is not the proprietor of the Trade Mark, nor did the Applicant have a genuine intention at the Relevant Date to use the Trade Mark. Included in this evidence are the documents provided by the Applicant in response to the Notice to Produce.

13. As the Opponent only needs to establish a single ground of opposition, for the purposes of this decision, I have only summarised relevant aspects of the first category of evidence. The second category of evidence is not summarised, as for the reasons given below, it was not necessary to consider the grounds of opposition relevant to that evidence.   

    EIS & EIR

14. Ms Martin declares that she is a director of Virtual Reality Entertainment Systems Pty Ltd (‘VRES’), and that VRES has operated a tour, accommodation, and hospitality business located at White Beach, Tasmania, called Three Capes Eco Lodge since 2010.

15. Ms Martin declares that the Opponent’s property is located on the picturesque Tasman Peninsula, which lies approximately sixty kilometres east of Hobart. Ms Martin explains that the area has a population of around 2,400 and is serviced by a single township, Nubeena.

16. Ms Martin declares that the Tasman Peninsula is home to the Tasmanian Government owned and operated walking track called the Three Capes Track, which opened in December 2015. The Tasmanian Government owns a registered trade mark (no. 1737954) for Three Capes Track, which covers a range of travel, transportation, and tourism related services in classes 39, 41, and 43. Ms Martin annexes screenshots from the website which indicate the ‘three capes’ referred to are Cape Raoul, Cape Pillar, and Cape Hauy.

17. Ms Martin declares that the Tasman Peninsula is only accessible by a single road across a portion of land called the Eaglehawk Neck. Ms Martin explains that after crossing the Eaglehawk Neck into the peninsula, a traveller will come to a junction featuring a signpost featuring the names of various locations and businesses:

18. Ms Martin declares that she is only aware of 10 commercial accommodation operators on the island. Of those providers, only two (the business operated by VRES and the Applicant’s business) use the term THREE CAPES within their branding.

19. Ms Martin declares that VRES first used the trade mark THREE CAPES ECO LODGE (‘Opponent’s First Mark’) in 2010 in relation to accommodation and hospitality services. Ms Martin declares that from around 2012, VRES commenced using the trade mark THREE CAPES (‘Opponent’s Second Mark’) in relation to accommodation services, guided tours, and hospitality services. Ms Martin annexes various examples of use of the Opponent’s First Mark and Opponent’s Second Mark.

20. Ms Martin declares that she is the owner of the Australian trade mark registrations for the Opponent’s First Mark (trade mark number 1499774) and Opponent’s Second Mark (trade mark number 1649385). The registration for the Opponent’s First Mark has a priority date of 2 July 2012, and covers the following services:

    Class 39: Provision of information relating to tourism; sightseeing (tourism)

    Class 41: Cultural activities; providing information, including online, about education, training, entertainment, sporting and cultural activities

    Class 43: Agency services for booking temporary accommodation; arranging of temporary accommodation; booking of temporary accommodation; charitable services, namely providing temporary accommodation; consultancy and advisory services relating to the provision of temporary accommodation; country club services (provision of food, drink and temporary accommodation); holiday camp services (temporary accommodation); information services relating to the provision of temporary accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; providing temporary accommodation; provision of temporary accommodation; rental of temporary accommodation; reservation of temporary accommodation; respite care (provision of temporary accommodation); temporary accommodation; temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a frequent flyer scheme; temporary accommodation reservations; tourist agency services (provision of temporary accommodation)

    (‘Opponent’s Services’)

    EIA

21. Mr Garratt declares that in addition to being General Manager of TWC, he is also authorised to give evidence on behalf of the Applicant.   

22. Mr Garratt declares that development of the Three Capes Tracks proposal by the Tasmania Parks & Wildlife Service started in 2006, and a project update was subsequently issued in 2009. In December 2015, the Three Capes Track in the Tasman National Park was opened. Mr Garratt annexes a copy of the 2009 Project Update. That document states:

    The Three Capes Track is a proposed new iconic overnight walk for Tasmania. It will follow the southern coast of the Tasman Peninsula for a total of 68 kilometres. This document provides a summary of the project, incorporating changes and refinements to the proposal since it was presented in the 2007 Feasibility Study.

    …

    The concept developed in the feasibility study was for a 5 night/6 day, hut-based, one way bushwalk encompassing three capes in the Tasman National Park: Cape Hauy, Cape Pillar, and Cape Raoul. Since the feasibility study, the walk route has been refined. The proposal is now that the walk will begin at White Beach and finish at Fortescue Bay, with a boat trip to Pirates Bay.

23. Mr Garratt declares that in 2009 a predecessor entity of TWC filed a submission regarding the Three Capes Track project. TWC subsequently made several submissions to the Tasmanian Government in 2013 and 2014 relating to the operation of a guided walking experience.

24. Mr Garratt declares that the Applicant was incorporated on 11 June 2015, and that on 11 May 2016, it entered into a contract with the Tasmanian government for the operation of the Three Capes Lodge Walk. Mr Garratt annexes part of that agreement to his declaration, which indicates that the ‘Licensed Activities’ as defined in the contract include the operation of a commercial guided bushwalking tour.

25. Mr Garratt declares that the Trade Mark was designed in June-July 2016, and the Applicant agreed to licence TWC to use the Trade Mark in February 2017. Mr Garratt annexes a press release of 22 November 2016 indicating that TWC would commence providing tours from late 2017. However, the Trade Mark is not used in this press release. The evidence also does not show any other examples of use of the Trade Mark in the course of trade prior to the Relevant Date.  Further, the revenue figures provided by Mr Garratt are also after the Relevant Date.

    Discussion

    Section 44

26. To establish grounds of opposition under s 44(2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark of the Application, and must be filed or registered in respect of either: (i) services that are similar to the services of the Application or (ii) goods that are closely related to the services of the Application.

27. The Opponent relies on its registrations for the Opponent’s First Mark and the Opponent’s Second Mark. I will first consider the s 44 ground based on the registration for the Opponent’s First Mark. If the ground is made out based on the Opponent’s First Mark, there will be no need to consider the Opponent’s Second Mark.

28. The registration for the Opponent’s First Mark has a priority date of 2 July 2012, which is earlier than the priority date of the Application (30 November 2016). As such, I must now determine whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s First Mark.

29. The test for whether two marks are substantially identical requires that they be compared:

    side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

30. I am not satisfied that the Trade Mark is substantially identical to the Opponent’s First Mark. Each trade mark contains four words commencing with THREE CAPES. Further, each trade mark in the last two words contains the word LODGE. However, the presence of the different words ECO and WALK, and the fact that the word LODGE does not appear in the same position in each mark, creates a noticeable point of differentiation, as does the device element in the Trade Mark. As such, I consider that a total impression of resemblance does not emerge from the comparison.

31. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:

    -There must be a real, tangible danger of confusion, not just a mere possibility.[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]

    -It must be considered how the goods or services are ordinarily sold or provided.[13]

    [5] Trade Marks Act 1995 (Cth) s 10.

    [6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [13] Ibid.

32. In assessing deceptive similarity, I am mindful that the words ‘Three Capes’, at the Relevant Date, had some degree of descriptiveness. The name had been adopted by the Tasmanian Government in relation to a walking track located on Tasman Peninsula that encompassed a route between three Capes - Raoul, Pillar, and Hauy. That track opened in 2015, just before the Relevant Date, although I assume there was likely some promotion of the track prior to its opening. However, I am also mindful that the evidence does not demonstrate that the area in question was commonly known as ‘Three Capes’ or that at the Relevant Date businesses in the area other than the Opponent would use the term ‘Three Capes’ to describe the location of their business or business activities. The Trade Mark also contains no direct reference to the Three Capes Track. Further, I also note that the term ‘Three Capes Track’ was registered as a trade mark (under the provisions of s 41(4) by the Tasmanian Government in November 2015 in relation to various services in classes 39, 41, and 43. This indicates that a year prior to the Relevant Date the term ‘Three Capes’ was seen as having a reasonable degree of distinctiveness. Taking into account the circumstances and extent of use of ‘Three Capes’ at the Relevant Date, I consider that while the words ‘Three Capes’ have some degree of descriptiveness in both the Trade Mark and the Opponent’s First Mark, they should not be disregarded and the words must be given due weight as a memorable and essential feature of both trade marks.  

33. Reviewing the trade marks as a whole, each trade mark contains four words, the first two of which are identical. Further, each trade mark contains the word LODGE in its last two words. This is a strong point of similarity between the two marks.  I acknowledge that the remaining words, ECO and WALK, while somewhat descriptive, serve to create some visual, aural, and conceptual difference. Further, the Trade Mark also contains a device element, which is a stylised rendition of three hills or capes. However, when considering imperfect recollection, I consider it more likely than not that the presence of THREE CAPES and LODGE in the respective marks would cause a significant number of persons to wonder whether the Services provided by the Opponent are those of the Applicant, or vice versa. While not all consumers would be confused, and repeat clients of the respective businesses would be more likely to differentiate the two trade marks, there is sufficient risk of confusion among first time customers looking to obtain the Services. On balance, I am satisfied that the Trade Mark is deceptively similar to the Opponent’s First Mark.

34. As I have found that the Trade Mark is deceptively similar to the Opponent’s First Mark, I must consider whether the Services are similar to the Opponent’s Services. The test for determining whether services are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the services, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [14]

    [14] Re Jellinek’s Application (1946) 63 RPC 59, 70.

35. The Services can be summarised as arranging and reserving travel, transportation, and conducting tours.  The Opponent’s Services in Class 39 are provision of information relating to tourism, and sightseeing (tourism). The term ‘sightseeing (tourism)’ is broad enough to encompass arrangement and reservation services in relation to sightseeing tours, the conduct of those tours, and transportation offered as part of the tour. As such, there is a direct similarity in nature, purpose, and trade channels when comparing the Services with the Opponent’s Services. Further, each of the Services would likely involve provision of information as an ancillary part of each service, thereby giving rise to similarity between the Services and the claim in the Opponent’s Services for ‘provision of information relating to tourism’. I am satisfied that all of the Services are either the same or of the same description as the Opponent’s Services.

1. I am also satisfied that the Trade Mark should not be registered under the provisions of s 44(4) or 44(3). The Applicant’s first use of the Trade Mark appears to have taken place after the Relevant Date. As such, this use is of little weight when considering whether to register the Trade Mark on the basis of honest concurrent use or other relevant circumstances under s 44(3) and is of no weight in establishing prior and continuous use under s 44(4).

2. For the reasons given above, I am satisfied that the ground of opposition has been established under s 44 based on the Opponent’s First Mark.

3. Given that a ground of opposition has been established in relation to all of the Services, there is no need to consider the remaining grounds of opposition.

   Decision and costs

4. The Opponent has established a ground of opposition under s 44. As such, I have decided to refuse registration of the Trade Mark for all the Services. Noting the appeal period, the refusal will be recorded one month from the date of this decision unless the Registrar is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

5. The Opponent in the SGP requested an award of costs. Costs generally follow the event.  As there is no reason to depart from the general rule, I award costs against the Applicant.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   8 February 2022