Opposition by Ponani Pty Ltd to registration of trade mark application number 2225649 (class 37) - PATEL BUILDING GROUP (composite) - in the name of Patel Building Group Pty Ltd

[2024] ATMO 185

TRADE MARKS ACT 1995

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

Re:Opposition by Ponani Pty Ltd to registration of trade mark application number 2225649 (class 37) - PATEL BUILDING GROUP (composite) - in the name of Patel Building Group Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: YIP Legal Pty Ltd

Decision:

2024 ATMO 185

Trade Marks Act 1995 (Cth) – application under section 52 – grounds of opposition under ss 42(b), 44, 58A and 60 – deceptively similar trade mark in relation to some similar services – s 44(4) applicable – no grounds of opposition established – trade mark may proceed to registration.

Background

1. On 9 November 2021 (‘Relevant Date’) Patel Building Group Pty Ltd (‘Applicant’) filed trade mark application 2225649 under the Trade Marks Act 1995 (Cth),[1] details of which are reproduced below:

   Priority date: 9 November 2021

   Trade mark:

   (‘Trade Mark’)

   Specification: Class 37: Advisory services relating to the construction of buildings; Beneath ground construction work; Building (construction) supervision; Building and construction services; Building construction consultancy; Building construction supervision; Building project management (building construction supervision); Construction; Construction consultation; Construction engineering (construction consultancy or supervision); Construction services relating to landscaping; Hire of construction apparatus; Hire of construction equipment; Housing construction; Installation of utilities in construction sites; Provision of information in relation to building construction; Building demolition; Demolition services; Wrecking of buildings (demolition); Advisory services relating to property development building and construction services; Building and construction of real estate subdivisions and developments; Development of land (construction); Development of property (building and construction services); Housing development (building and construction services); Real estate development (building and construction services); Property development (building and construction services) (‘Applicant’s Services’)

   Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth).

2. The Trade Mark was examined under s 33 and acceptance was advertised on 16 November 2022. On 16 January 2023, Ponani Pty Ltd (‘Opponent’) filed its Notice of Intention to Oppose. On 16 February 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 30 March 2023, the Applicant filed its Notice of Intention to Defend.

3. The Opponent filed no Evidence in Support. On 18 July 2023, the Applicant filed Evidence in Answer (‘EIA’). The Opponent filed no Evidence in Reply.

4. On 30 November 2023, the Applicant requested to be heard by written submissions. Whilst the parties were afforded the opportunity to make submissions, neither party filed any. I am to decide this matter as a delegate of the Registrar of Trade Marks.

Evidence

1. The EIA consists of a declaration of Sachin Patel, director of the Applicant, dated 12 November 2022, (‘Patel’) with Annexures SP-1 to SP-8.

2. Patel declares that in February 2018 Mr Patel engaged a graphic designer to design a logo for the Applicant to create the following trade mark:

.

1. On 29 October 2018, Mr Patel registered the Applicant with the Australian Securities and Investments Commission.

2. A screen capture of the Applicant’s website ( (‘Applicant’s Website’), dated 5 March 2019, shows use of the following trade mark in relation to ‘custom homes’, ‘knock down’ and rebuild and ‘luxury homes’:

1. Patel declares that in February 2021, the above trade mark was replaced by the following trade mark:[2]

[2] Patel, [11].

1. Annexure SP-2 to Patel shows screen captures of the Applicant’s Website dated 5 March 2019, 5 May 2019, 17 March 2020, 23 February 2021 and 2 March 2022. Further examples of the Applicant’s Website declared to be captured on 29 September 2022 are provided at Annexures SP-4 and SP-5 to Patel.

2. Various invoices issued by the Applicant showing the Trade Mark in relation to the construction of either units or houses are at Confidential Annexure SP-6 dated in 2019, 2020 or 2021.

3. Annexure SP-7 to Patel consists of screen captures are of posts dated from January 2021, on the Facebook page which shows the Trade Mark. Annexure SP-8 to Patel consists of screen captures of various customer reviews which refer to the ‘Patel Building Group’, though do not display the Trade Mark.

Grounds and Onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58A and 60. The Opponent has the onus of demonstrating one or more of the grounds of opposition, on the balance of probabilities.[3] The assessment of the rights of the parties is as at the Relevant Date.[4]

Discussion

[3] 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).

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

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   …

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

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   …

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

2. By its SGP, for its s 44 ground of opposition the Opponent relies on trade mark application numbers 2167386 and 2218272 (‘Opponent’s Trade Marks’), details of which I extract below:

   Trade mark number: 2167386

   Owner: Ponani Pty Ltd

   Status: Lapsed: Not accepted

   Trade mark: PATEL HOMES

   Priority date: 30 March 2021

   Specification: Class 37: Building construction; Building maintenance; Building services; Construction of buildings; House building; Construction

   ---

   Trade mark number: 2218272

   Owner: Ponani Pty Ltd

   Status: Accepted

   Trade mark: (‘2218272’)

   Priority date: 13 October 2021

   Specification: Class 37: building construction; construction; construction of buildings; building services; building maintenance; house building (‘Opponent’s Services’)

3. I note that trade mark application 2167386 has lapsed. Therefore, it poses no longer poses a barrier to acceptance.

4. 2218272 has a priority date which is before the Relevant Date. 2218272 is also in the name of a person other than the Applicant.

5. When I consider the nature, use and trade channels of ‘hire of construction apparatus; hire of construction equipment’ and the Opponent’s Services, these are not the same as or of the same description as the Opponent’s Services. Accordingly, the s 44 ground of opposition fails with respect to the Applicant’s ‘hire of construction apparatus; hire of construction equipment’. I now consider the remaining Applicant’s Services (‘Remaining Applicant’s Services’).

6. The Applicant’s Remaining Services, being various construction and development services, are either the same as or are notionally included in the services of the Opponent’s Trade Marks. I would also consider that the Applicant’s Remaining Services would be provided by the same traders. The services are directed at the same consumers and they have a similar nature and purpose. I am satisfied that the Opponent’s Services are of the same description as the Applicant’s Remaining Services.

7. I now compare the trade marks. The trade marks have differences, including a device element in the Trade Mark, which is not present in 2218272, as well as various word differences. A total impression of dissimilarity emerges on a side by side comparison of the trade marks.[5] Accordingly, the Trade Mark is not substantially identical with 2218272.

   [5] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [12] (Windeyer J).

8. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I must compare the respective trade marks as wholes,[6] with regard to essential or distinguishing features,[7] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[8] Also of importance is the effect and meaning of the trade marks,[9] especially their effect or impression produced on the mind of ordinary consumers.[10] Ultimately, what is required is a real tangible danger of confusion.[11] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[12]

   [6] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [7] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [8] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [9] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [10] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [12] Woolworths ibid [50](ii); Southern Cross ibid 594-595 (Kitto J). See also, Australian Woollen Mills (n 10) 658.

9. The Trade Mark and 2218272 each contain as their main identifying element, the word ‘Patel’. The additional word ‘Homes’ in 2218272, additional visual matter in each trade mark and the respective taglines in each of the trade marks do not disturb the main identifying element and trade source indicator in the word ‘Patel’. The respective tag lines ‘building aussie dreams’ in 2218272 and ‘We Build Your Dream’ in the Trade Mark, add to the conceptual and visual similarity as both refer to building of dreams. Consumers of the Applicant’s Remaining Services are likely to have cause to wonder whether the services emanate from the same trade source.

10. I find that the Trade Mark is deceptively similar to 2218272 in relation to the Applicant’s Remaining Services.

Section 44(4) – prior use of the Trade Mark

1. The Applicant relies on s 44(4) as an answer to the existence of 2218272. In order for s 44(4) to be of assistance to the Opponent, they must demonstrate their continuous use of the Trade Mark in relation to the Applicant’s Services from before the priority date of 2218272, being 9 November 2021, until the Relevant Date.

2. In this regard, the EIA demonstrates that the Applicant used the Trade Mark in Australia on 23 February 2021 by the screen captures at SP-2 to Patel. On one screen capture of the Applicant’s Website, dated 23 February 2021, the services offered by the Applicant are listed as, ‘custom homes’, ‘luxury homes’, ‘commercial’, ‘Knock Down and Rebuild’, ‘Multi Unit Development’ and ‘Demolition’. Confidential Annexure SP-6 shows various invoices which contain the Trade Mark in the header, for construction of units or houses, for example dated 11 January 2021, 26 January 2021, 13 April 2021, 5 May 2021, 21 July 2021 and 6 August 2021. Therefore, I am also satisfied that the use of the Trade Mark by the Applicant has been continuous from 23 February 2021 until the Relevant Date in relation to the Applicant’s Remaining Services. Accordingly, s 44(4) is applicable and I must not refuse registration of the Trade Mark because of 2218272 in respect of the Remaining Applicant’s Services.

3. Accordingly, the ground of opposition under s 44 is not established. I now consider the other grounds of opposition.

Section 58A

1. The Opponent also relies upon s 58A, which provides

   58A  Opponent’s earlier use of similar trade mark

   (1)  This section applies to a trade mark (section   44 trade mark ) the application for registration of which has been accepted because of:

   (a)  subsection 44(4); or

   (b)  a similar provision of the regulations made for the purposes of Part 17A.

   Note:  Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first - mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)  The registration of the section   44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)  first used the similar trade mark in respect of:

   (i)  similar goods or closely related services; or

(ii)  similar services or closely related goods;

before the owner of the section  44 trade mark or the predecessor in title in relation to the section  44 trade mark first used the section  44 trade mark; and

(b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:  For predecessor in title see section 6.

1. I note that the application was accepted under the provisions of s 44(4) and the Opponent’s Trade Marks were particularised in the SGP as being the similar trade mark mentioned in s 58A(2) of the Act. The SGP states that the Opponent’s Trade Marks have been continuously used since 2016 in respect of Class 37 building and construction services. However, no evidence of the use of any trade made by the Opponent has been provided in these proceedings.

2. Accordingly, I cannot be satisfied that the ground of opposition under s 58A is established.

Section 60

1. The Opponent relies upon s 60, which provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned                trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

2. By its SGP the Opponent asserts that there is a reputation in the Opponent’s Trade Marks. A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[13] It is the Opponent who must establish that a reputation exists as a matter of fact.[14]

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

   [14] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).

3. Nothing beyond bare assertions of the existence of a reputation in the SGP has been provided by the Opponent. The absence of any evidence means I cannot make a finding that that there is a reputation for any of the Opponent’s Trade Marks. Since no reputation in another trade mark has been established, it is not possible to consider the test in s 60(b).

4. Accordingly, I am not satisfied that the ground of opposition under s 60 has been established.

Section 42(b)

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[15]

   [15] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). The Opponent also asserts that use of the Trade Mark would amount to the common law tort of passing off. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.

3. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for the Applicant’s Goods is likely to cause deception or confusion with the Opponent’s Trade Marks because no reputation in another trade mark is shown by the evidence. It follows that on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. As I have found that s 18 of the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off.

4. The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) has not been established.

Decision and costs

1. Section 55 relevantly provides:

   55  Decision

   (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.

   Note:          For limitations see section 6.

2. The Opponent has not established any ground of opposition. Accordingly, trade mark 2225649 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

3. The Applicant has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Opponent under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

27 September 2024