Opposition by Suzannestaz Management Pty Ltd to registration of trade mark application number 2030992 (Classes 39 and 43) – Accessible Accommodation with device - in the name of September 7 Pty Ltd.

[2021] ATMO 135

TRADE MARKS ACT 1995

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

Re:Opposition by Suzannestaz Management Pty Ltd to registration of trade mark application number 2030992 (Classes 39 and 43) – Accessible Accommodation with device - in the name of September 7 Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Health Law Solutions Pty Ltd. Applicant: Self-represented.
Decision:	2021 ATMO 135 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition considered under sections 43, 44, and 60 – no grounds established - trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Suzannestaz Management Pty Ltd (‘Opponent’) to registration of trade mark number 2030992 (‘Application’) filed by September 7 Pty Ltd (‘Applicant’) on 21 August 2019 (‘Relevant Date’). The application is in respect of the following trade mark and services:

   (‘Trade Mark’)

   Class 39: Information services relating to travel; provision of information relating to travel; provision of travel information; travel advisory services.

   Class 43: Accommodation finding services for travellers

   (‘Applicant’s Services’)

2. As required by the Trade Marks Act 1995 (Cth)0F[1] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes on 22 January 2020. The Opponent filed notice of its intention to oppose registration of the Trade Mark on 10 February 2020, and a statement of grounds and particulars (‘SGP’) on 18 February 2020. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 10 July 2020.

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

3. The parties filed evidence in accordance with the timetable set out in reg 5.14, as detailed below. The parties then had an opportunity to request an oral hearing or file written submissions. Neither side elected to be heard or file submissions. On 17 September 2021, the Applicant paid the relevant fee to have a decision made based on the materials filed. I make my decision based on the particulars set out in the SGP and the evidence of the parties.

   Grounds and onus

4. The SGP nominated grounds of opposition under ss 43, 44, and 60.

5. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.1F[2] The rights of the parties are assessed as at the Relevant Date.2F[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

6. The following evidence was filed under reg 5.14:

   Evidence in Support (‘EIS’)

   Declaration of Christopher Setter, Director of Health Law Solutions Pty Ltd, made on 4 May 2021, with thirteen annexures.

   Evidence in Answer (‘EIA’)

   Declaration of Grant Williams, Director of the Applicant, made on 16 June 2021, with three annexures.

   Evidence in Reply (‘EIR’)

   Declaration of Christopher Setter, made on 4 July 2021.

7. Mr Setter outlines in the EIS that the Opponent is the owner of registered trade mark number 1982169, which has a priority date of 17 January 2019, for the following trade mark:

   (‘Opponent’s Mark’)

8. The Opponent’s Mark covers a range of services in Classes 35, 36, 39, and 43 (‘Opponent’s Services’). It is not necessary to set out the Opponent’s Services in detail, other than to note that all of the Applicant’s Services in Classes 39 and 43 are essentially the same as a number of claims in the Opponent’s Services that fall in the same classes.

9. Mr Setter declares that the Opponent’s Mark was first used in December 2018. I also note the use of the following logo (comprising a stylised person in a wheelchair) as a separate mark on social media (including Facebook, Instagram, and LinkedIn) prior to the Relevant Date:

   (‘S-Logo’)

10. Mr Setter declares that both the Opponent and the Applicant operate in the short-term accommodation market for those with mobility limitations. Mr Setter declares that the Opponent has acquired a strong reputation in this market and provides various website and social media metrics in support of this claim.

11. Mr Setter opines that the market for short-term disability specific accommodation in Australia is very limited, despite significant need, and that confusion between the Opponent’s Mark and Applicant’s Mark is likely in the context of internet searches for such services.

12. Mr Williams in the EIA declares that the Applicant has used the Trade Mark since 5 December 2017 and provides extracts of the Applicant’s Facebook page in support of this claim, including a post on 8 December 2018 that announces that the Applicant had achieved 1,000 Instagram followers. Mr Williams goes on to provide other information about the design of the Applicant’s website, website and social media metrics, and the number of properties listed by the Applicant’s business.

13. Mr Setter in the EIR denies some of the statements made in the EIA. However, as the statements and their rebuttals have no bearing on the outcome of the opposition, it is not necessary to elaborate any further.

    Discussion

    Sections 44 and 60

14. To establish grounds of opposition under s 44, the Opponent must rely on a pending or registered trade mark that has a priority date earlier than the Trade Mark, 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. Further, the earlier mark must be filed or registered in respect of either services that are similar to the Applicant’s Services or goods that are closely related to the Applicant’s Services.

15. To establish a ground of opposition under s 60, an Opponent must establish a reputation in another trade mark existing in Australia before the Relevant Date. The Opponent must then prove that because of the reputation in this other mark, use of the Trade Mark is likely to deceive or cause confusion. It is not necessary for the Opponent to establish that the trade mark relied on as the basis for this ground and the Trade Mark are deceptively similar. However, the greater the similarities in the respective trade marks, the more likely the existence of a reputation in the trade mark relied on by an Opponent is to give rise to a likelihood of confusion.

16. The Opponent’s case under both ss 44 and 60 is particularised in the SGP as being reliant on the Opponent’s Mark. The Opponent alleges that confusion is likely to occur due to the similarities between the Trade Mark and the Opponent’s Mark, particularly given the use of similar colours and logo elements (being a person sitting in a wheel chair). The Opponent considers that the likelihood of confusion is higher amongst those having imperfect recollection and/or those who may have a vision or cognitive impairment. For ease of reference, I set out the respective trade marks in comparison below:

Trade Mark Opponent’s Mark

1. Turning to s 44, I must first assess whether the Trade Mark is substantially identical to the Opponent’s Mark. 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.”3F[4]

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

2. I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Mark. The respective trade marks each contain different word elements and device elements, and the total impression that emerges on a side by side comparison is one of clear dissimilarity.

3. 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 that it is likely to deceive or cause confusion.4F[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.5F[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.6F[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.7F[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.8F[9]

   -Consumers may retain an imperfect recollection of a mark or its essential features.9F[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.10F[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.11F[12]

   -It must be considered how the goods or services are ordinarily sold or provided.12F[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.

4. The Trade Mark and the Opponent’s Mark each contain a number of essential features. I consider that the most memorable features of each mark are the primary word elements, respectively being ‘Accessible Accommodation’ and ‘Suzanne Stays’. These elements are entirely dissimilar visually, aurally, and conceptually. Other prominent essential features in the respective marks are the device of a person in a wheelchair inside a house in the Trade Mark, and the S-Logo in the Opponent’s Mark. While these elements have some conceptual similarity, visually they are very different. Further, as the services of both parties encompass accommodation for people with disabilities, the concept embodied by the logo elements of each mark is descriptive. Further, I do not consider that the use of a similar and unremarkable shade of purple in both marks increases the likelihood of confusion (particularly as neither trade mark is actually restricted to a particular colour). Finally, the Opponent’s Mark also contains several other elements which further differentiate the two marks, including a palm tree device and the words ‘Your Travel Enabler’.

5. Considering the respective trade marks as a whole and giving due consideration to the possibility of imperfect recollection amongst the target market for the Applicant’s Services, I find that the Trade Mark is not deceptively similar to the Opponent’s Mark.  

6. As such, the ground under s 44 is not established.

7. Turning to s 60, even if the evidence were sufficient to establish that a significant reputation existed in the Opponent’s Mark at the Relevant Date, the dissimilarity between the Trade Mark and the Opponent’s Mark is so significant that it would render the possibility of confusion as being extremely remote. As such, it is not necessary to consider the issue of reputation in detail.

8. Given the differences between the Trade Mark and the Opponent’s Mark, the ground under s 60 is not established.

   Section 43

9. To establish this ground, the Opponent must show that there is a connotation within the Trade Mark itself and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

10. Section 43 of the Act is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising as a result of similarities between the Trade Mark and another trade mark.13F[14]

    [14] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).

11. There is no evidence before me to establish that the Trade Mark contains any connotation that is likely to deceive or cause confusion.

12. As such, the s 43 ground of opposition is not established.

    Decision and Costs

13. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. The Trade Mark may proceed to registration not less than one month from the date of this decision.

14. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

15. The Applicant in the notice of intention to defend requested an award of costs. As costs generally follow the event, I award costs against the Opponent in accordance with Schedule 8 of the Regulations.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks

    9 November 2021