Opposition by The Grapevine BVBA to registration of trade mark application 1974814 (35) – THE INSIDERS COMMUNITY – in the name of Are Media Pty Ltd
[2021] ATMO 66
•15 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by The Grapevine BVBA to registration of trade mark application 1974814 (35) – THE INSIDERS COMMUNITY – in the name of Are Media Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: Andrew Sykes of Counsel, instructed by Griffith Hack
Applicant: Andrew Fox of Counsel, instructed by Media Legal
Decision: 2021 ATMO 66
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – trade marks deceptively similar – honest concurrent use considered – whether application should be ‘carved up’ in light of conflicting services considered – registration refused
Background
This decision concerns an opposition brought by The Grapevine BVBA (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark the subject of the application detailed below in the name of Are Media Pty Ltd (‘the Applicant’):
Application Number:
1974814
Filing Date:
11 December 2018
Specification:
The full specification appears in annexure (‘the Applicant’s Services’). The services provided below are of particular relevance to this decision.
Class 35: (including) administration of the business affairs of franchises; advertising services; opinion research, polling and analysis
Trade Mark:
THE INSIDERS COMMUNITY
(‘the Applicant’s Trade Mark’)
The application was originally made in the name of Bauer Media Pty Ltd. Part way through proceedings that company changed its name to Are Media Pty Ltd. ‘The Applicant’ is used to refer to the company throughout the decision regardless of which name was being used by the company at the time referred to.
Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
Following advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
The Opponent filed Evidence in Support of its opposition, being:
·Declaration made on 20 February 2020 by Bjorn Cassier, the founder and Managing Director of the Opponent, with Annexures 1 to 5 (‘the Cassier declaration’).
The Applicant filed Evidence in Answer, being:
·Declaration made on 29 July 2020 by Adrian Goss, the General Counsel and General Manager, Corporate of the Applicant, with Annexures AG-1 to AG-15 (‘the Goss declaration’); and
·Declaration made on 15 May 2020 by Macek Rubetzki, the principal of Media Legal, the representative of the Applicant, with Annexures MR-1 to MR-14 (‘the Rubetzki declaration’).
The Opponent did not file Evidence in Reply.
Once the time allowed for filing evidence had ended both parties requested an oral hearing. I heard the matter on 19 May 2021 as a delegate of the Registrar of Trade Marks. Andrew Sykes of Counsel, instructed by Griffith Hack, appeared for the Opponent. Andrew Fox of Counsel, instructed by Media Legal, appeared for the Applicant. Counsels’ oral submissions were supplemented by written submissions which were filed prior to the hearing.
The Opponent
According to the Cassier declaration:
The Opponent markets ‘The Insiders’ influencer platform, which is a leading global community platform, operational in more than 40 countries, including Australia.
The Insiders platform spreads word of mouth reviews and comments about a range of products. It is an online community platform whereby any person above 14 years of age with parental consent or 18 years of age or above without, can sign up, create a profile and take part in a range of campaigns to test and trial certain products and write reviews for the brand owner and other users of the platform.
Consumers can go to our Australian version of the website ( and become a member of the platform. We actively use the trade mark ‘The Insiders’ to publish and interact witch our Insiders community.
We provide marketing services to our clients, based on shopper influencers …
THE INSIDERS is the name of our community. Our members are called ‘Insiders’ and this is reflected in every medium through which we communicate:
Online: website, member dashboard, mailings
Offline: printed materials (guides, letters)
The Opponent is the owner of the Australian trade mark registrations detailed below (‘the Opponent’s Registrations’):
Trade Mark Number:
1533976 (IR 1142165)
Priority Date:
17 September 2012
Services:
Class 35: Advertising, business management; business administration; office functions
Trade Mark:
(‘the Opponent’s Trade Mark’)
Endorsement:
Colour Claimed: TURQUOISE (Pantone 3125C)
Trade Mark Number:
1670258 (IR 1142135)
Priority Date:
24 October 2014
Goods and services:
Class 16: Paper, cardboard; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; printing blocks
Class 35: Advertising; business management; business administration; office functions
Trade Mark:
(‘the Opponent’s Trade Mark’)
Endorsements:
Colour Claimed: TURQUOISE (Pantone 3125C)
Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The Applicant
According to the Goss declaration:
[The Applicant] is Australia’s leading multi-platform publisher, with investments spanning magazines, digital properties and live experiences. [The Applicant’s] portfolio includes some of Australia’s longest-running and most successful brands including some of the country’s longest published and most well-known magazines such as The Australian Women’s Weekly, Woman’s Day, Marie Claire, New Idea, Better Homes and Gardens, Who, Home Beautiful, TV Week, Gourmet Traveller, Australian House & Garden, That’s Life, Take 5, Family Circle, Belle and Wheels.
[The Applicant] also operates under a number of digital-only brands, including Now to love, Homes to Love, Food to Love, BeautyHeaven, BeautyCrew, Syrup, WhichCar and allrecipes.com, and [the Applicant’s] traditional print brands also have significant digital presences across websites and social media.
[The Applicant] also has an in-house research department which supports the business’s activities and initiatives by providing comprehensive research services across the business. The research department also offers its services to external clients, including [the Applicant’s] advertising clients.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. All grounds were pressed at the hearing. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 11 December 2018, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Section 44
Relevant provisions of s 44, and s 10, 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)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.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)…
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.
In the SGP the Opponent nominated the Opponent’s Registrations in respect of s 44. To successfully oppose the application pursuant to s 44 the Opponent must, as a starting point, establish that at least one of the Opponent’s Registrations:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’); and
· is registered in respect of at least some services which are similar to the Applicant’s Services, or goods which are closely to the Applicant’s Services (‘the second requirement’).
Having established the first and second requirements, the Opponent must establish that the Opponent’s Trade Mark is substantially identical with, or deceptively similar to, the Applicant’s Trade Mark (‘the third requirement’).
The first requirement
The Opponent’s Registrations each have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement in respect of both registrations.
The second requirement
The Opponent’s registrations both cover the following services in Class 35:
Advertising; business management; business administration; office functions
Because of the broad scope of that specification, those services are the same as, or are similar to, the vast majority of the Applicant’s Services in the same class. Some examples are (‘the Example Services’):
Administration of the business affairs of franchises; advertising analysis; internet advertising; advertising … ; business administration services; compilation of mailing lists
As will be seen, it is unnecessary to carry out an item by item comparison of all of the goods and services covered by the Opponent’s registrations with the Applicant’s Services; it is sufficient to find that the second requirement is satisfied in respect of the vast majority of the Applicant’s Services.
The third requirement
The third requirement requires considerations of substantial identity and deceptive similarity. Of relevance to both of those considerations is the distinctiveness of the word elements of the trade marks under comparison. It is the Opponent’s submission that COMMUNITY ‘is a descriptive term used for its ordinary meaning as understood and used by other traders’. The Applicant asserts something similar in respect of INSIDERS which it submits ‘is descriptive of the users of the Opponent’s platform, in that those users have “inside knowledge” of the products or services they are reviewing through the platform’.
INSIDER is a term which can be applied to a person who is part of an ingroup. Such persons might, for example, be privy to information which is not available to the outgroup. Users of the Opponent’s influencers platform might reasonably be described as INSIDERS. However, when used as a badge of trade origin in respect of, the vast majority, if not all, of the services and goods the term is at best allusive. For this reason, I am of the view that THE INSIDERS has a high level of distinctiveness in respect of, at least, the Example Services.
COMMUNITY is, on the other hand, less distinctive. It suggests services which are provided by, or for, a community. The Opponent submitted that COMMUNITY ‘adds nothing by way of distinctiveness of trade origin in the eyes of a consumer of online advertising services offered via online communities’. The Applicant’s view is that COMMUNITY ‘performs a distinctive function in relation to the relevant services—it does not describe any characteristic of the claimed services’. My view is that COMMUNITY falls somewhere between those two extremes, but much nearer to the non-distinctive end of the continuum. When placed after THE INSIDERS, COMMUNITY is subsumed into the whole, with THE INSIDERS remaining as the principal identifier of trade origin. In addition, the term COMMUNITY to some extent reinforces the meaning of INSIDERS, in the sense that it refers to a group of people with common knowledge or a common interest.
Substantially identical?
The Opponent submitted that the Applicant’s Trade Mark is substantially identical with the Opponent’s Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
In considering whether marks are substantially identical they should, I think, 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] [1963] HCA 66, [12].
For ease of comparison, the trade marks are juxtaposed below.
THE INSIDERS COMMUNITY
In respect of the comparison of the trade marks the Opponent submitted:
Firstly, the minor difference in text stylisation should be ignored. The stylisation in [the Opponent’s Trade Mark] is not so distinctive as to be seen as an ‘essential feature’ in the mark. It is mere window dressing and the fact remains that ‘THE INSIDERS’ is phonically [sic] identical in both marks. Marks that are phonically identical will generally be substantially identical.
Secondly, ‘COMMUNITY’ is a descriptive term used for its ordinary meaning as understood and used by other traders. It adds nothing by way of distinctiveness of trade origin in the eyes of a consumer of online advertising services offered via online communities. It is therefore not an ‘essential feature’ or dominant cognitive cue. Hence the only distinctive feature or dominant cognitive cue is the THE INSIDERS which is identical to both marks. And where the only dominant cognitive cues in the two marks are identical they have been held to be substantially identical.
I am not persuaded by the Opponent’s submissions. On a side-by-side comparison, the respective trade marks have sufficient visual and phonetic differences that they are not substantially identical. These differences include the stylisation and device elements of the Opponent’s Trade Mark and the additional word present in the Applicant’s Trade Mark.
Deceptively Similar?
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]
[5] [1963] HCA 66, [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[6]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[7]
Third, allowance must be made for imperfect recollection.[8]
Fourth, the effect of the spoken description must be considered.[9]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[11] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[12]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[13]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[14] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[15] [16]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].
[15] Ibid [100].
[16] [2012] FCA 1022, [37]–[46].
As discussed above, THE INSIDERS, is distinctive with respect to, at least, the Example Services. THE INSIDERS is the primary way in which the Opponent’s Trade Mark will be recalled. Further, THE INSIDERS represents the principal and memorable concept of the Opponent’s Trade Mark. The addition of COMMUNITY to THE INSIDERS, as it appears in the Applicant’s Trade Mark, does not significantly detract from THE INSIDERS as the badge of trade origin. The Applicant’s Trade Mark so nearly resembles the Opponent’s Trade Mark that its use in respect of, at least, the Example Services is likely to deceive or cause confusion. All the requirements of s 44(2) are, therefore, satisfied. That, however, is not the end of the matter as the Applicant is seeking to rely on the provisions of s 44(3). Section 44(3)(a) concerns ‘honest concurrent use’, while s 44(3)(b) concerns ‘other circumstances’.
Honest Concurrent Use
Section 44(3)(a) is a discretionary provision which allows the Registrar to accept the application notwithstanding that the requirements of s 44(2) have been satisfied. The onus is on the Applicant to establish that there has been honest concurrent use of the Applicant’s Trade Mark and the Opponent’s Trade Mark, and that should honest concurrent use be established that it is appropriate for the Registrar to accept the application on the basis. There are six well-established criteria in relation to assessing whether an application should be accepted on the basis of honest concurrent use, they are:
·the honesty of the concurrent use;
·the extent of the use in duration, area and volume;
·the degree of confusion likely to ensue;
·whether any instances of confusion have in fact occurred;
·the relative inconvenience which would be caused to the respective parties; and
·any conditions or limitations.[17]
Honesty of adoption
[17] Re John Fitton & Co Ltd’s Application [1949] RPC 110.
Of the factors listed above, the honesty of the concurrent use is paramount, ‘for if it is not honest it is as nothing’.[18] ‘It is commercial honesty, which differs not from common honesty, that is the criterion … .’[19] Whether the adoption of a trade mark was ‘commercially honest’ was considered by Dodds-Streeton J in Tivo Vivo v Vivo International Corporation Pty Ltd, wherein her Honour stated:
Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:
(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are ‘invented’ or are not such as to be obviously attractive to other traders;
(b) the subsequent conduct of the applicant;
(c) the likelihood of confusion;
(d) the applicant’s knowledge of the opponent’s mark; and
(e) whether the adoption of the mark, and the continued use of it, was surreptitious.
[18] Re Granada Trade Mark [1979] RPC 303, 313.
[19] Re Parkington and Co Ltd’s Application (1946) 63 RPC 171, 182.
It is for the Applicant to positively establish that it adopted its trade mark honestly. It is not for the Opponent to establish dishonesty. The Applicant relevantly submitted:
[T]he adoption and use of the Opposed Mark have been honest. As explained in Goss at [39], the Applicant was aware of the Opponent’s pending application for the 2012 Registration in April 2014 when it adopted the Opposed Mark. However, the Applicant did not consider that the 2012 Registration was a barrier to registration for the reasons set out in Goss at [39]–[42].
As far as it concerns honest adoption of the Applicant’s Trade Mark the Goss declaration, at [39]–[42], refers to statements purported to have been made by Macek Rubetzki, the declarant of the Rubetzki declaration filed in this matter. As a preamble to those statements, at [38], Mr Goss declared:
Mr Rubetzki’s firm has had responsibility for the conduct of trade mark matters on behalf of [the Applicant] since January 2015, including the current opposition. However, Mr Rubetzki was, between February 2006 and December 2014, employed as in-house Corporate and Trade Marks Counsel at [the Applicant]. Accordingly, he has direct knowledge of the history of the adoption and use of [the Applicant’s Trade Mark] …
Mr Goss went on to make statements, at the paragraphs referred to, which begin with ‘Mr Rubetzki has told me …’, ‘Mr Rubetzki has indicated …’, and ‘In addition, Mr Rubetzki has indicated …’. The statements asserted, by Mr Goss, to have been made by Mr Rubetzki do not, however, appear anywhere in the Rubetzki declaration. Indeed, the Rubetzki declaration makes no reference to the circumstances surrounding the adoption of the Applicant’s Trade Mark. This somewhat puzzling, and unexplained, state of affairs means that the only evidence before me regarding the honesty of adoption of the Applicant’s Trade Mark is, therefore, a series of uncorroborated statements. This falls short of the standard of evidence necessary for this pivotal aspect of honest concurrent use. For this reason, I am not satisfied that the Applicant has discharged the burden upon it to establish that the Applicant’s Trade Mark was adopted honestly. It is unnecessary that the other factors surrounding honest concurrent use be considered. The provisions of s 44(3)(a) do not assist the Applicant.
Other circumstances
Section 44(3)(b) is a discretionary provision which allows the Registrar to accept the application notwithstanding that the requirements of s 44(2) have been satisfied. The onus is on the Applicant to establish that, because of ‘other circumstances’, it is proper to accept the application. The Applicant submitted:
The relevant circumstances supporting the exercise of the discretion pursuant to s 44(3)(b) resonate with the matters set out at [69] above, which include:[20]
(a)the Applicant’s extensive period of use of the Opposed Mark for 7 years without any instances of confusion; and
(b)the Opponent’s lack of evidence of use of [the Opponent’s Trade Mark] in relation to the goods and services for which those marks are registered.
[20] Paragraph 69 of the Applicant’s written submissions contained its concluding submissions with respect to honest concurrent use.
The circumstance referred to under (a), above, is essentially that for which the Applicant sought to rely for s 44(3)(a). Section 44(3)(b) is not a provision which ought to allow acceptance on the basis of use where honest concurrent use was not established due to doubt as to the honesty of adoption of the trade mark. The circumstance referred to under (b), above, seems to be an attempt by the Applicant to use s 44(3)(b) as something akin to an application for removal for non-use, in that the Applicant appears to be asking the Registrar to disregard goods and services for which the Opponent has current registrations on the basis of alleged non-use. To do this would not be an appropriate exercise of the discretion under s 44(3)(b). There is nothing before me which satisfies me that it is proper to accept the application on the basis of ‘other circumstances’.
The Fate of the Application
The s 44 ground of opposition is established in respect of the vast majority of the Applicant’s Services, but not all of them. Decision makers have taken different approaches in these circumstances. In the 2014 case, Apple Inc v Registrar of Trade Marks, Yates J stated:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole.[21]
[21] [2014] FCA 1304, [232] (‘App Store’).
Yates J did not follow this approach shortly afterwards in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks wherein his Honour allowed an application to proceed but only if the specification was amended to delete a certain class.[22] In Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:
I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[23]
[22] [2015] FCA 756.
[23] [2014] FCA 373, [231].
The Applicant’s Services is an extremely long claim which contains a wide variety of services. It is the case that some of the Applicant’s Services are not similar to the Opponent’s services. The Opponent provided its assessment of those services which it considered to be conflicting. The Applicant did not provide such an assessment beyond the following criticism of the Opponent’s assessment:
[T]here are inconsistencies in the Opponent’s categorisation of the specified services … which means its characterisation should be disregarded. …
That said the Applicant acknowledges that there is a sufficient overlap between the services specified … to enliven s 44(2).
The Opponent submitted in this regard:
It must be emphasised the establishing the ground [sic] in relation to some goods will suffice to defeat the entire application. This is not a divisional application and an opposition is made out in such circumstances.[24] And although discretion to ‘carve out’ parts of the application exists under s 55 it is not the Registrar’s duty to do so unless satisfied by the Applicant there is some reason to do so. That is the Applicant’s burden, and its evidence does not support any exercise of discretion in its favour, especially when the evidence actually demonstrates that there is a clear common overlap in core advertising services.
[24] The Applicant referenced Yates J’s comments in App Store, discussed above.
The Applicant referred to the above submissions of the Opponent when rounding out its submissions on ‘other circumstances’, submitting that, ‘There is no basis or need for the Registrar to ‘carve out’ parts of the application, as suggested [in the Opponent’s submissions]’.
Given that the vast majority of the extensive specification which is the Applicant’s Services conflicts with the services of the Opponent’s Registrations, and taking into account the circumstances and views of the parties, I see no reason to attempt to ‘carve up’ the application in this case.
Decision
Section 55 relevantly provides:
55Decision
(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.
I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As a Delegate of the Registrar of Trade Marks, I accordingly refuse to register the Trade Mark.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
15 July 2021Annexure
The Applicant’s Services
Administration of the business affairs of franchises; advertising analysis; advertising and sales information services; advertising effectiveness analysis and research; advertising research; advertising services, including advertising in publications, television advertising, internet advertising and advertising services provided via a database or otherwise; classified advertising; display advertising; banner advertising; advertising via augmented reality software, enhanced reality software and via all kinds of mobile devices; advertising via telephony; advertising, marketing and retailing services to assist people in the selection of products, services and gifts; advertising, promotion and marketing (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); advertising; advisory services for business management; analysing, surveying, researching and providing information concerning patterns of purchasing and consumption of consumer goods and services by means of computers, computer networks and/or the internet; analysis of business and consumer statistical data; analysis of consumer behaviour; arranging and conducting launches for products, services and promotional events; arranging and conducting of business and trade shows; arranging and managing business services, including those provided online; arranging and managing subscriptions to magazines, newsletters and other publications (including online) and to on-line services and on-line information; arranging business introductions; arranging business shows; arranging exhibitions and shows for business, advertising, commercial or trade purposes; arranging price quotations; arranging the provision of discounts, complimentary goods and complimentary services, including by third parties; arranging, organising and conducting competitions, contests and tournaments for advertising, business, publicity, trade and promotional purposes; auction services; auctioneering services; audience and market response surveying, monitoring and analysis; barter services; booking, preparing, placing and disseminating advertising; brand creation, promotion and advertising services; brokerage of name and address based lists; business administration services; business advice; business and commercial management assistance; business and commercial research, appraisals, assistance, analysis and advice; business and event management services; business assistance; business club membership services; business consultation; business data and commercial information analysis services; business development services; business feasibility studies; business information services; business investigations; business management, consultancy and advisory services in this class; business management, consultancy, information and advisory services in this class including but not limited to business and commercial management consultancy and advising and business and commercial organisation consultancy and advising; business negotiation, planning, project management, promotion, management, research, appraisal and analysis; business organisation and management of discount services; business research, appraisals and analysis; business services of a club, including a magazine or on-line club; business services, including business development services; business services provided online; business, advertising and sales information services; call centre services (telephone answering); call centre services being the provision of business information; career planning; charitable services, namely organising and conducting volunteer programmes and community service projects; charitable services, namely the recruitment, organisation and deployment of volunteers; cinematographic film advertising; classified advertising; collection and compilation of information relating to advertising, market research, marketing and business; collection of data and commercial information; collection, compilation and updating of mailing lists; commercial information agency services for businesses; compilation of advertisements, including for use on the internet; compilation of business data and commercial information; compilation of directories for publishing on the internet; compilation of information into computer databases; compilation of mailing lists; compilation of statistics; computerised database management in the nature of information storage, retrieval and searching; conducting consumer surveys; conducting exhibitions for advertising, business, commercial or trade purposes; conducting surveys for business purposes; consultancy, assistance, support, advisory, research, consultation and information services (including online, interactive, digital and datacasting services) in relation to advertising, selling, customer and consumer behaviour, business, the economy, advertising, business services and the sale of goods and the provision of services; consumer advisory and assistance services being the provision to consumers and businesses of advice and information relating to the supply of goods and the provision of services; consumer market information services; consumer research services; data analysis services; data management; data processing; database management; database services for the collection and systematisation of information relating to demographic, socio-economic, behavioural and financial data for target marketing; database management; demographic and statistical market research surveys; demonstration of goods, including for advertising purposes; digital marketing; direct marketing; discount retail, wholesale, or sales promotion services; display services for merchandise; dissemination of advertising, marketing, publicity and business information and advertising material, including on the internet and via global computer networks; dissemination of business, market, opinion and advertising research and analysis, and business, market, opinion and advertising information including via global computer networks and the internet; dissemination of information in relation to advertising, publicity, business and commerce; dissemination of information in relation to services in this class; distribution of samples; e-commerce services namely online sale, merchandising and distribution services; electronic billboard advertising; electronic commerce services including financial transaction services; evaluation of business opportunities; event management services in relation to the organisation of exhibitions or trade fairs for commercial, promotional or advertising purposes; facilitating and assisting retailing, wholesaling, selling, advertising, promotion, publicity, marketing and trading services (including the foregoing provided on-line and through publications, electronic publications, catalogues, newsletters, direct mail and mail order or via augmented reality software, enhanced reality software or via all kinds of mobile devices or otherwise); franchising services, including group purchasing and group advertising; home shopping services; incentive promotion programs; information and advice to advertisers; information services (including on-line information services) in relation to advertising, selling, customer and consumer behaviour, business, the economy, the sale of goods and the provision of advertising and business services; interactive advertising and promotion services; interactive advertising, promotion and marketing of services including via interactive digital television, datacasting and global computer networks, in stores, on-line, on the internet, via telephony or though publications, electronic publications, catalogues, newsletters, direct mail and mail order or via augmented reality software, enhanced reality software and via all kinds of mobile devices or otherwise; interactive advertising, promotion, wholesaling, retailing, selling and marketing of goods including via interactive digital television, datacasting and global computer networks, in stores, on-line, on the internet, via telephony or though publications, electronic publications, catalogues, newsletters, direct mail and mail order or via augmented reality software, enhanced reality software and via all kinds of mobile devices or otherwise); interactive advertising, promotion and marketing of services including via interactive digital television, datacasting and global computer networks, in stores, on-line, on the internet, via telephony or though publications, electronic publications, catalogues, newsletters, direct mail and mail order or via augmented reality software, enhanced reality software and via all kinds of mobile devices or otherwise); layout services for advertising purposes; logistics services (business management and organisation of facilities and resources); loyalty marketing; maintenance of customer, business partner, wholesaler and retailer databases; management assistance services; management of business projects for others; management of telephone call centres for others; market research and analysis services; market research concerning lifestyle analysis of households; market research; market surveying services being the sampling, testing and appraisal of goods and services, including consumer goods and services; market surveying services including sampling, testing and appraisal services; marketing campaigns; marketing launches; marketing research, statistical computing, econometric modelling, and advisory services, including the compilation and provision of business information and the compilation and provision of reports, analyses and databases (some being licensed databases), all associated with the analysis of demographic, geographic, economic and lifestyle data; marketing research; marketing services; marketing studies; marketing; merchandising services including providing prizes, awards and bonuses to customers, business partners, wholesalers and retailers; negotiation of contracts for others; office functions; on-line advertising, promotion and data processing on computer networks including the internet; on-line and internet advertising and promotion services; operation and administration of loyalty marketing and other sales and promotional incentive and loyalty schemes; operation of businesses; opinion polling and survey services; opinion research, polling and analysis; opinion testing; organisation of business and marketing focus panels and groups; organisation of business promotional campaigns; organisation of exhibitions, trade expositions, trade fairs and trade shows for business, commercial or advertising purposes; organisation of focus panels and groups; organisation of market opinion panels and groups; organisation, operation and supervision of business privileges club services; organisation, operation and supervision of corporate gift programs; organisation, operation and supervision of loyalty and incentive programs and schemes providing benefits; organisation, operation and supervision of privileges programs; organisation, operation and supervision of programs providing access to discounts, special offers and privileges; organisation, operation and supervision of promotional programs providing benefits to customers, business partners, wholesalers and retailers; organisation, operation and supervision of reward and incentive promotion programs; organisation, operation, supervision and administration of loyalty marketing, incentive, customer loyalty and other sales and promotional reward, incentive and loyalty schemes; organising and conducting competitions, prize draws, contests and tournaments for advertising, business, marketing, promotional, business or commercial purposes; organising of prize draws for promotional purposes; organising of trade competitions and promotions; organising programs offering discounts, vouchers or free products/services; outdoor advertising; placing of advertisements; planning of marketing strategies; planning services for advertising; preparation of business reports, business statistics and commercial reports; preparation of corporate literature and publicity material; preparation of invoices; preparation of publicity documents and materials; preparing, placing and disseminating advertising and advertisements; price analysis services; price comparison services; procurement services, (including the foregoing provided on- line, through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); product and brand endorsements; product and brand launch services; product and brand marketing; product and service promotion; product branding; product launch services; product marketing; product sampling; production of advertising material; production of radio, television, cinema, outdoor, on-line and internet advertisements and commercials; production of sound and video recordings for advertising, marketing or publicity purposes; programs offering discounts, vouchers or free products/services; promotion and sale of naming and product supply rights; promotion of live entertainment and ticket sales; promotion of websites; promotional and advertising services in this class including sales promotion services; promotional management for personalities and celebrities; promotional marketing; promotional services; promotional studies; providing brand news and information; providing comparison shopping information; providing consumer and business information in relation to comparing data about goods and services; providing consumer and business information in relation to locating, describing, rating, pricing and purchasing goods and services; providing consumer product information; providing demographic, socioeconomic and financial information for target marketing purposes and for marketing analysis; providing news and information about the promotion, advertising and sale of products; providing price comparison information; providing price quotations in respect of goods and services; provision of business services to customers, business partners, wholesalers and retailers; provision of pricing information and price comparison services relating to the sale of goods and the supply of services; provision, manipulation and retrieval of quantitative data relating to stored marketing information, including market survey data, consumer research data and socio-demographic data; public relations; publication of directories and catalogues; publication services in this class; publicity services; ratings analysis and surveys; relocation services for businesses; rental of advertising space (including on-line advertising space); research services relating to business, advertising and marketing; retailing services being home shopping services; retailing, wholesaling, selling, advertising, promotion, marketing and trading services (including the foregoing provided in stores, on-line, on the internet, via telephony or through publications, electronic publications, catalogues, newsletters, direct mail and mail order or via augmented reality software, enhanced reality software and via all kinds of mobile devices or otherwise); sales incentive schemes; sales promotion including through frequent buyer incentive programs and customer loyalty programs; sampling, testing and appraisal services in this class; services to assist people in the selection of gifts; sponsorship; statistical research and information; systematisation of information into computer databases; target marketing services; targeted marketing; telephone advertising; telephone marketing; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), and information about a variety of services, enabling customers to conveniently view and purchase the goods or order the services; trade promotions, including such promotions conducted through prize draws and sweepstakes; typing agency services; writing advertising copy; writing of business reports and studies; consultancy, advisory, consultation and information services (including online, interactive, digital and datacasting services) in relation to the foregoing; the foregoing services provided on-line, on the internet, via computer, via telephony and in person or by any other means including via publications and via all forms of electronic transmission, including broadcast, narrowcast, multi-point, point-to point, free-to-air, pay and subscription television, satellite, data casting and digital means, and via all forms of hardcopy publishing, on-line communication, electronic transmission, broadcast, narrowcast, multi-point, point-to-point, satellite, free-to-air, pay and subscription television, data casting and digital means, by email and social media
2
11
0