Opposition by Macquarie University to registration of trade mark application number 2033144 (class 41) – Macquarie Institute – in the name of In2marketing.com.au Pty Ltd and Macquarie Institute of Technology Pty Ltd

[2021] ATMO 95

TRADE MARKS ACT 1995

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

Re:Opposition by Macquarie University to registration of trade mark application number 2033144 (class 41) – Macquarie Institute – in the name of In2marketing.com.au Pty Ltd and Macquarie Institute of Technology Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Gabriella Rubagotti of Counsel

Applicants: Dr Anthony Place of Patentable

Decision:

2021 ATMO 95

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44 and 60 – s 60 established – registration refused.

Background

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

Trade Mark No:	2033144
Trade Mark:	Macquarie Institute (‘Trade Mark’)
Applicants:	In2marketing.com.au Pty Ltd and Macquarie Institute of Technology Pty Ltd (‘Applicants’)
Filing Date:	28 August 2019

Specification:  Class 41: vocational education; education information; adult education; education services; vocational guidance (education or training advice); provision of education courses; educational institute services; provision of educational courses; occupational health and safety services (education and training services); conducting of educational courses; educational services; providing information, including online, about education, training, entertainment, sporting and cultural activities; vocational training services; conducting training seminars; arranging technical instruction courses; provision of training courses; organisation of training courses; personal development courses; provision of courses of instruction; arranging of courses of instruction; training; technical training; employment training; practical training (demonstration) (‘Applicants’ Services’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 20 February 2020.

2. The Opponent filed a Notice of Intention to Oppose on 20 April 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 May 2020.

3. The Applicants filed a Notice of Intention to Defend on 27 July 2020.

4. The Opponent filed the following declarations as evidence in this opposition:

• Declaration of Professor David Wilkinson (Opponent’s Deputy Vice-Chancellor for Engagement) made on 26 October 2020 with Exhibits DW-01 to DW-19 (‘Wilkinson Declaration’); and

• Declaration of Elizabeth Horbach (Opponent’s Chief Marketing Officer) made on 28 October 2020 with Exhibits EH-1 to EH-15 (‘Horbach Declaration’).

1. The Applicants filed the following declaration as evidence in this opposition:

• Declaration of Nathan Harding (Director of In2marketing.com.au Pty Ltd) made on 20 November 2020 with Exhibits NH-01 to NH-07 (‘Harding Declaration’).

1. The matter was heard by me, a delegate of the Registrar of Trade Marks. The Opponent was represented by Gabriella Rubagotti of Counsel, instructed by Shehana Wijesena and Katrina Dang of Bird & Bird LLP. The Applicants were represented by Dr. Anthony Place of Patentable.

Grounds of opposition, onus and relevant date

1. In the SGP the Opponent nominated grounds under ss 42(b), 43, 44 and 60 of the Act. The ground under s 43 was not pressed in the written submissions, nor was it pursued by the Opponent at the hearing. As such, I consider the ground under s 43 to be abandoned.

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

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

4. The date at which the rights of the parties are to be determined is 28 August 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In the SGP the Opponent nominated the following trade marks as the basis for this ground of opposition:

MACQUARIE UNIVERSITY

Reputation

1. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[3] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[4] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[5] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[6]

   [3] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

   [4] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

   [5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77] (Lockhart J).

   [6] [2019] FCA 923 [83] (O’Bryan J).

2. In this matter, I am satisfied that the evidence clearly establishes that, at the Relevant Date, there was recognition by the public generally of the trade mark MACQUARIE UNIVERSITY (‘Opponent’s Trade Mark’).[7]

   [7] Given my finding under s 60 in respect of the Opponent’s Trade Mark it is not necessary to consider whether the Opponent has a reputation in its other trade mark set out at [14].

3. The Horbach Declaration states that the Opponent has been providing educational services under the term ‘Macquarie University’ since 1967. As such the Opponent claims approximately 50 years of use in Australia before the Relevant Date.

4. The Opponent has provided revenue and enrolment figures from 2010 to 2019. The revenue and enrolment numbers are substantial, and both have steadily increased in each year throughout this period.

5. Similarly, marketing expenditure figures have also been provided for 2010 to 2019. These figures are also substantial. The Opponent has extensively promoted and marketed its education services under, or by reference to, the Opponent’s Trade Mark via the following mediums:

• Internet – the Opponent has maintained the website since 1996. The Opponent also uses paid Google Search advertising.

• Social media platforms - the Opponent has operated a Facebook page under the name Macquarie University since March 2008, an Instagram account since May 2013, A Twitter account since April 2009, a LinkedIn account since 2017, and operated a YouTube page since October 2007. The Opponent’s Trade Mark is also promoted via paid advertising on Facebook.

• Signage - on major roads, sides of buses and trains, and at train and metro stations throughout Sydney.

• Print media – campaigns in national newspapers such as The Australian and the Sydney Morning Herald, and in regional newspapers such as the North Shore Times and the Parramatta Advertiser. Additionally, campaigns are run in the University Admissions Centre (UAC) guide and the Opponent produces pamphlets and brochures such as the Macquarie University Undergraduate Domestic Course Guide which is distributed to high schools, career expos and recruitment events.

1. In respect of the esteem component, the evidence demonstrates that the Opponent has ranked in the top 300 universities by QS Top Universities World University Rankings in each year from 2013 to 2019. The Opponent has been involved in high profile initiatives such as research collaborations with industry leaders including Johnson & Johnson in 2014, Optus in 2016 and Cochlear in 2017. Additionally, notable academics from Macquarie University have contributed to significant developments and initiatives including: David Skellern and Neil Weste who helped develop Wi-Fi; Frank Duarte and Jim Piper who pioneered laser design; and the linguistics department which developed the Macquarie Dictionary.

2. The above is merely a snapshot of the material contained within the Wilkinson Declaration and the Horbach Declaration that goes toward the qualitative and quantitative dimensions of the reputation in the Opponent’s Trade Mark. The evidence demonstrates a substantial reputation in the Opponent’s Trade Mark in respect of vocational and tertiary education services.

3. I now need to determine whether, in light of the reputation in the Opponent’s Trade Mark, use of the Trade Mark would be likely to deceive or cause confusion.

Likely to deceive or cause confusion

1. The concepts of ‘deceive’ and ‘confuse’ are explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[8]

   [8] [1979] RPC 410, 423 (citation omitted).

2. In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[9] Importantly confusion can be established ‘even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[10] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[11]

   [9] [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).

   [10] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

   [11] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.

3. Section 60 of the Act does not require that the goods or services upon which the Opponent’s Trade Mark are used be of a specified standard of similarity with the Applicants’ Services, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[12]

   [12] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 [39] (emphasis in original).

4. In the current matter the Applicants’ Services are the same, or of a similar description, to the education services for which the Opponent’s Trade Mark has a reputation. In respect of the similarity of the trade marks, I note that the Trade Mark and the Opponent’s Trade Mark both consist of the word ‘Macquarie’ followed by a bland descriptor of an education provider, namely ‘University’ and ‘Institute’. Given that both the services and the trade marks are similar, the risk of confusion is inevitably much higher than what it might have been if either the services, or the trade marks, were dissimilar.  

5. The Applicants rightly submit that all the surrounding circumstances are relevant to the consideration of confusion.[13] The Applicants have drawn my attention to several signs containing the word ‘Macquarie’, some of which are registered or pending trade marks, and others are seemingly purported to be common law trade marks. I do not find the existence of these signs persuasive. There are numerous reasons why trade marks may co-exist, and I consider it an unwarranted distraction from the task at hand to investigate the particular circumstances of co-existence.[14]

   [13] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50] (French J).

   [14] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 [35] (Wilcox J).

6. Additionally, the Applicants submit that users, of both the Applicants’ Services and the education services provided by the Opponent, are of above average intelligence and would be aware that there is a clear distinction in the Australian education sector between a university and an institute, and that they are used to distinguishing between educational institutions with similar names. I accept that this may well be true of sophisticated or experienced users of tertiary education services. However, the users of the relevant services are far broader and more wide ranging. Additionally, the Applicants’ submission overlooks the evolution of education services offered by universities which, in addition to the traditional degree programs, now include a variety of non-degree programs including English language and vocational education courses. This is supported by the Horbach Declaration which states that the Opponent has been providing short courses and professional development seminars since 1994.

7. Considering all of the above, and the strength of the reputation in the Opponent’s Trade Mark, I am satisfied that there is a real and tangible danger that consumers would, at the very least, be caused to wonder as to the existence of some sort of connection between the services offered under the Opponent’s Trade Mark and those offered under the Trade Mark.

8. The s 60 ground of opposition has been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has established the ground of opposition under s 60 of the Act. Accordingly, I refuse to register trade mark number 2033144.

Costs

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

Katrina Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

2 September 2021