Opposition by Schoolies Week Pty Ltd to registration of trade mark application number 1972975 (class 43) – SCHOOLIES TRIBE - in the name of Youth Travel Pty Ltd

[2021] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Schoolies Week Pty Ltd to registration of trade mark application number 1972975 (class 43) – SCHOOLIES TRIBE - in the name of Youth Travel Pty Ltd

Delegate:	Jock McDonagh
Representation:	Opponent: Ben Gardiner of Counsel, instructed by King & Wood Malleson Applicant: Stuart Green and Lauren Eade of Davies Collison Cave
Decision:	2021 ATMO 61 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44 and 60 pressed – s 44 established - application refused.

Background

1. This matter is an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Youth Travel Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:	SCHOOLIES TRIBE (‘the Trade Mark’)
Trade mark application:	1972975
Filing Date:	10 December 2018 (‘Priority Date’)
Specification:	Class 43: Accommodation finding services for travellers; Arranging holiday accommodation (‘the Applicant’s Services’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 May 2019. Schoolies Week Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose on 18 June 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 18 July 2019. The SGP was assessed as inadequate and a rectified SGP was accepted on 9 September 2019.

2. Thereafter the Opponent and Applicant filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter by audio visual link in Canberra on 21 April 2021 as a delegate of the Registrar of Trade Marks. Ben Gardiner of Counsel, instructed by King & Wood Malleson, represented the Opponent. Stuart Green and Lauren Eade of Davies Collison Cave represented the Applicant.

   Grounds of Opposition

4. The SGP nominated grounds of opposition under ss 42, 43, 44, 58A, 60 and 62A the Act. At the hearing the Opponent pressed the grounds under ss 42, 44 and 60. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663, [26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

5. The time at which the grounds of opposition must be established is 10 December 2018, the priority date.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   Evidence

6. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Matthew Lloyd (‘Lloyd 1’)	Chief Executive Officer of the Opponent	20.12.19	ML-1 to ML-16
Evidence in Answer
Jay Weerasekara (‘Weerasekara’)	Director of Marketing of the Applicant	9.04.20	JW-1 to JW-11
Evidence in Reply
Matthew Lloyd (‘Lloyd 2’)	Chief Executive Officer of the Opponent	11.06.20

1. The Applicant has also sought to have a further declaration of Jay Weerasekara together with Exhibit JW-12 and JW-13 dated 19 March 2021 (Further Weerasekara Declaration) taken into consideration in the proceedings pursuant to r 21.19 of the Regulations.

2. The Applicant cited Fed Square Pty Ltd v Federation IP Pty Ltd[3] where the delegate stated at [52] that evidence filed after the applicable deadlines in opposition hearings may be considered under r 21.19 where ‘there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.’

   [3] [2015] ATMO 42.

3. The Opponent objected to the evidence, stating that parties should not assume an entitlement to the application of r 21.19 and there ‘must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence’ citing the delegate in Council of the City of Shellharbour v Bright Events Pty Ltd.[4]

   [4] [2018] ATMO 48, at [17]

4. In this case, there does not appear to be any compelling reason for this late evidence to be taken into account. At its highest, it shows further descriptive use of the word SCHOOLIES in relation to ‘activities or events’ which are not the same as, or similar to, the services for which registration is sought. Nor are they the same as those for which the Opponent’s Trade Marks are registered or is asserted to have developed a reputation.

5. The requested further evidence is not crucial to the determination of the matter before me. As such, I have not exercised my discretion to allow the new evidence into these proceedings. The decision will be determined with regard to the evidence properly filed during these proceedings.

6. In Lloyd 1 the evidence advises that for nearly three decades the Opponent, and a subsidiary company ‘GTM’, and their predecessors have operated a central booking service for students who have recently graduated from high school and wish to celebrate their graduation by taking a holiday in popular tourist locations.

7. These holidays have come to be known as ‘schoolies’ and/or ‘schoolies’ week’. Weerasekara, at [6], advises that the Macquarie Dictionary states that this definition[5] first appeared in the Dictionary in 1997.

   [5] ‘Chiefly NSW and Qld a holidaying school student who has just completed their final year exams: *he is confident schoolies will be safe, but has asked parents to discuss schoolies week with their children –ABC ONLINE, 2003. Compare Perth Region leaver.’

8. Further details contained in the evidence will be provided in discussion regarding the relevant ground of opposition.

   Discussion

9. The Opponent nominated the following trade mark registrations in its Statement of Grounds and Particulars in support of its ground of opposition under s 44 and their reputation as underpinning the s 60 ground:

Trade Mark:

 584171           SCHOOLIES

Filing Date:

11 August 1992

Specifications:

Class 35: Advertising services
Endorsements: The provisions of sub-section 24(2) applied

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade Mark:

584172            SCHOOLIES

Filing Date:

11 August 1992

Specifications:

Class 39: Transport and travel services in this class
Endorsements: The provisions of sub-section 24(2) applied

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade Mark:

584173             SCHOOLIES

Filing Date:

11 August 1992

Specifications:

Class 41: Entertainment and sporting services in this class none of which are designed for use in or on schools
Endorsements: The provisions of sub-section 24(2) applied

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade Mark:

584174             SCHOOLIES

Filing Date:

11 August 1992

Specifications:

Class 42: Hotel reservations
Endorsements: The provisions of sub-section 24(2) applied

The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Trade Mark:

1306880              BOOK SCHOOLIES             

Filing Date:

29 June 2009

Specifications:

Class 43: Accommodation finding services for tourists; accommodation finding services for travellers; accommodation reservation services; agency services for booking temporary accommodation; agency services for the reservation of accommodation; appraisal of hotel accommodation; arranging of temporary accommodation; booking of temporary accommodation; consultancy and advisory services relating to the provision of temporary accommodation; holiday information (accommodation); holiday planning (accommodation); information services relating to the provision of temporary accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of information relating to the availability of accommodation; provision of information relating to the booking of accommodation; rating holiday accommodation; reservation of temporary accommodation

Trade Mark:

1680229              SCHOOLIES CENTRAL

Filing Date:

11 March 2015

Specifications:

Class 35: Retail services, not including retail of clothing, headgear and footwear

Trade Mark:

1680230              SCHOOLIES CENTRAL

Filing Date:

11 March 2015

Specifications:

Class 43: Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation

Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

Section 44

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

   Section 44 - Identical etc. trade marks

   (1) …

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

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

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

   Note 1:       For deceptively similar see section 10.

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

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:          For limitations see section 6.

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

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

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

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

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

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

   Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:       For predecessor in title see section 6.

   Note 3:       For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

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

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

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

3. The trade marks particularised above at [16] all have priority dates earlier than the Trade Mark. I find the first requirement satisfied.

4. Section 14 of the Act provides:

   (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

5. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[6] the Full Court set out the principles to be applied in determining the scope of the phrase “services of the same description” from [333]. The Court said:

   The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:

   There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the Assistant Comptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.

   [6] [2017] FCAFC 56.

6. In this case, the services for which the Applicant seeks registration are at least similar (if not identical) to the services for which the Opponent has cited registered trade marks. The Applicant seeks registration of the Trade Mark in respect of ‘Accommodation finding services for travellers; Arranging holiday accommodation”. The Opponent has cited trade marks registered in respect of, amongst other things:

   ·     ‘accommodation finding services for travellers’ and ‘arranging of temporary accommodation’ 1306880, BOOK SCHOOLIES);

   ·     ‘arrangement of accommodation for holiday makers’, ‘arranging holiday accommodation’ and ‘accommodation finding services for tourists and travellers’ (1680230, SCHOOLIES CENTRAL); and

   ·     ‘hotel reservations’ (584174, SCHOOLIES).

7. Each of these, at least, are similar to the Applicant’s Services. The Applicant did not dispute the similarity of the respective services. I find the third requirement satisfied.

8. For the purposes of this decision, I shall confine my comparison to the Trade Mark and the Opponent’s registration 584174 SCHOOLIES in Class 42. Whether these marks are substantially identical was not a matter of controversy between the parties and, bearing in mind the well-known test,[7] I find the marks are not substantially identical.

   [7] See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 414-415 (Windeyer J) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 392 (Greenwood, Jagot and Beach JJ).

9. The primary matter for discussion under s 44 is whether the marks are deceptively similar. I have cited the definition of s 10 of the Act above. The general principles are well established.[8] The task is to be approached by comparing each mark in its entirety,[9] with consideration given to any visual and aural similarities as well as the idea of the marks in question.[10] Importantly, allowance is to be made for the imperfect recollection of consumers in determining whether the resulting impressions amount to a tangible likelihood of deception or confusion,[11] as well as regard had for the surrounding circumstances,[12] including the manner in which the trade marks could, in principle, be used.

   [8] See Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, 188-9 (Jacobson J).

   [9] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9, 36; Clark v Sharp (1898) 15 RPC 141, 146.

   [10] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354, 375-6 (Perram J), summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 17-9 (Moore, Sackville and Emmett JJ).

   [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 18 (Moore, Sackville and Emmett JJ), referring to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 (Dixon, Evatt and McTiernan JJ).

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

10. Important to the present matter is a consideration of the marks in their entirety, the process for which is described in Clark v Sharp:

    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 the results of such matters, but by judging the general effect of the respective wholes.[13]

    [13] (1898) 15 RPC 141, 146.

1. In this case, taking into account the use of the essential feature of the Opponent’s word mark SCHOOLIES, the contextual descriptiveness of the word TRIBE in the sense of a group of ‘schoolies’,[14] and the possibility of imperfect recollection, I am satisfied that there is a likelihood that a number of persons would be caused to wonder whether services promoted or sold under the Opponent’s SCHOOLIES Mark and the Trade Mark would have the same source.

   [14] See Lloyd 1 at ML-16, extract of Urban Dictionary definition: ’A group of friends … sharing amazing experiences …’.

2. The Applicant cited Sports Break Travel Pty Limited v P & O Holidays Limited [2000] FCA 924 as authority for the proposition that SCHOOLIES is not distinctive and should not be considered in comparing the marks. I note that this case involved the Opponent’s predecessor suing a respondent for infringement of registration 584172 SCHOOLIES in Class 39.

3. However, in that case Burchett J had found that the Respondent’s use of SCHOOLIES did not amount to trade mark use. While His Honour found SCHOOLIES descriptive for the purposes of Class 39, the finding was related to an issue under s 41 of the Act. The Class 39 registration was not cited in these proceedings and I am considering an opposition under s 44 of the Act.

4. While I acknowledged that there are descriptive meanings of the word SCHOOLIES, reliance on these meanings does not assist the Applicant. The marks must be compared in their entirety.[15] Although descriptive or non-distinctive parts of a trade mark might be discounted to some extent or given less weight (at least in circumstances where there are other more distinctive elements present), this does not mean they are ignored. In The BBQ Store Pty Ltd v B B Q Factory Pty Ltd,[16] the applicant sought to discount entirely the descriptive words THE BBQ STORE from the respective marks under comparison, leaving only the device elements of the marks. Hearing Officer Richards explained that this was not permissible at [23]:

   The words within are indeed to be ‘discounted to a large extent’ but I am not able to treat them as if they are not present in the marks. Such an approach to trade mark comparison, while doctrinally pure, is fundamentally flawed. All words present in a trade mark are undoubtedly there for the relevant consumer to behold, and as such I must weigh their likely impression.

   [15] In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 377 ALR 116 at [79].

   [16] [2019] ATMO 132.

5. Despite accepting that the words used in the opponent’s mark THE BBQ STORE (which were the words appropriated in the applicant’s mark) were ‘very descriptive of the Goods’ and which leave ‘precious little in the way of material that is inherently adapted to distinguish the Trade Mark from other traders of the Goods’, Hearing Officer Richards considered that ‘through the lens of imperfect recollection [the words used in the Opponent’s mark] are visually, aurally and conceptually indistinguishable from the Trade Mark’ and, as a result, ‘there is so much resemblance between these marks that there is a real tangible risk of confusion for the purposes of s 44(1)’.[17]

   [17] Ibid at [26].

6. Similarly, in Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd,[18] Hearing Officer Kirov considered that the word mark ATOMA SUSHI TRAIN and a device mark shown bearing the same words were both deceptively similar to the registered mark SUSHI TRAIN, despite the shared element being descriptive.

   [18] [2016] ATMO 76.

7. Hearing Officer Kirov rejected the applicant’s contention that the words SUSHI TRAIN ‘were not essential, distinguishing, memorable features’ of the opponent’s mark[19]. In fact, he noted, the ‘Opponent’s Word Mark consists solely of the words “sushi train” and the combination of these words, (and/or, arguably, the word ‘train’ alone), must accordingly be the mark’s “essential, distinguishing, memorable, feature.”’[20] Further, he said that the applicant’s submission that the words SUSHI TRAIN were not distinctive was ‘not relevant given the Opponent’s Word Mark was a registered mark’.[21]

   [19] Ibid at [69].

   [20] Ibid.

   [21] Ibid at [70].

8. Then, applying an orthodox analysis of deceptive similarity (i.e. without consideration of the opponent’s long use of its mark), and relying on the fact that the opponent’s mark was wholly contained within the applicant’s mark, Hearing Officer Kirov concluded that both of the applicant’s marks were deceptively similar to the registered word mark SUSHI TRAIN.

9. In this case, the whole of the Opponent’s mark SCHOOLIES is appropriated by, and is the main element of, the Trade Mark.

10. The conclusion that the Trade Mark is deceptively similar to the Opponent’s SCHOOLIES trade mark registration follows from a conventional application of the prescribed test. I find that the second requirement has been satisfied. Therefore, I am satisfied that s 44(2) has been established.

11. Sections 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise have been rejected under s 44(2), due to honest concurrent use, prior use or other circumstances. The Applicant did not rely on the provisions, and for completeness I do not see any basis for the application of these sub-clauses.

12. Having found in favour of the Opponent in terms of s 44 there is no need for me to discuss the other grounds set out in the SGP although this ground or any others in the Act may be relied on in the event of an appeal from this decision.

    Decision

13. Section 55(1) of the Act applicable to this matter provides:

    Unless the proceedings are discontinued or dismissed, 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.

14. I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act. I accordingly refuse to register trade mark application number 1972975.

    Costs

15. The Opponent has sought an award for costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent is the successful party, I award costs against the Applicant at the official scale set out in Schedule 8 to the Regulations.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    2 July 2021