Opposition by TTT Moneycorp Limited to extension of protection of International Registration Designating Australia 1265797 (36, 38, 41) (Australian trade mark application 1723825) - MONECOR - held in the name of...

[2017] ATMO 132

TRADE MARKS ACT 1995

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

Re:Opposition by TTT Moneycorp Limited to extension of protection of International Registration Designating Australia 1265797 (36, 38, 41) (Australian trade mark application 1723825) - MONECOR - held in the name of Monecor (London) Limited.

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions prepared by Belinda Breakspear of McCullough Robertson Lawyers

Applicant: No appearance nor submissions

Decision:

2017 ATMO 132

Opposition to extension of protection under Reg 17A.33 – Grounds pursued under sections 44, 58 and 60 – section 60 established – extension of protection to Australia refused.

Background

1. On 23 January 2015, Monecor (London) Limited (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1227675. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade mark:       

MONECOR

Trade mark application:

1723825

International Registration:

1265797

Filing Date:

23 January 2015  (‘priority date’)

Specification:

Class 36: Financial services; financial services provided over multiple user network systems allowing access to financial markets and wagering services over the Internet, other global networks or via telephony (including mobile telephones); provision of financial information; information services relating to finance, provided on-line from a computer database or the Internet; financial economic analysis; financial management; financial exchange services; financial trading services; financial spread trading services; financial services relating to buying and trading of commodities; exchange services relating to the trading of commodities; securities and commodities trading services; organisation of trading markets for financial services; derivatives trading services; financial database services relating to foreign exchange; provision of financial information relating to the stock exchange; securities trading and investing services for others via the internet; trading in equities; currency trading and exchange services; on-line real-time currency trading; provision of pricing information about indices; preparation and quotation of stock exchange prices and indices; agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures

Class 38: Providing access to multiple user network systems allowing access to financial betting and wagering services over the Internet, other global networks or via telephony including mobile telephones; providing access to multiple user network systems allowing access to financial trading services over the Internet, other global networks or via telephony including mobile telephones; broadcasting services relating to financial services; broadcasting services relating to financial spread trading services; broadcasting services relating to financial betting and wagering of financial instruments, stocks, shares, futures and options; providing access to databases; providing access to computer networks; worldwide computer network access services; provision of access to an electronic on-line network for information retrieval; electronic communication services for preparing financial information; transmission of stock market information with the help of telecommunication media; telecommunications services to obtain information from data banks

Class 41: Electronic spread betting services relating to financial instruments, stocks, shares, futures and options; advisory services in relation to the aforesaid; providing on-line electronic publications; educational courses relating to finance; training services relating to finance; education information services; providing of training

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 22 October 2015. 

2. TTT Moneycorp Limited (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 22 January 2016. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and evidence as provided by the Regulations.

3. I heard the matter by way of written submissions in Canberra on 21 July 2017 as a delegate of the Registrar of Trade Marks. The Opponent relied on written submissions prepared by Belinda Breakspear of McCullough Robertson Lawyers. Duncan Cotterill Lawyers, representing the Holder, had previously advised that the Holder would not be filing submissions nor attending the hearing.

   Evidence

4. The following evidence was filed in the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Matthew David Cook	Head of Legal Department of the Opponent	3.06.16 ‘First Cook Declaration’	Exhibit 1 Annex A,
Evidence in Answer
Katharine Mary Carson Stove	Solicitor employed by Applicant’s lawyers	29.09.16 ‘Russell’	KS-1
Evidence in Reply
Matthew David Cook	Head of Legal Department of the Opponent	2.12.16 ‘Second Cook Declaration’	Exhibits 1 to 6

1. The First Cook Declaration provides the following details of the relevant trade mark registration the Opponent holds in Australia:

Number	Trade Mark	Priority Date	Goods and Services
776186	MONEYCORP	21.10.98	Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks Class 36: Issuing of travellers' cheques, commodity brokerage services; banking services and foreign currency services

1. The First Cook Declaration also provides the following matters relating to the Opponent’s business and its reputation. The Opponent has claimed confidentiality over its financial details so I will not give specific money terms:

   ·The Opponent is a foreign exchange specialist with over 35 years experience in foreign currency exchange and has offices in the United States of America, Spain, Romania, Ireland and France [12];

   ·The Opponent incorporated in the United Kingdom in 1962 as Town Tickets and Tours Limited, changing its name to TTT Moneycorp Limited in 1993 [15];

   ·The Opponent has traded under its MONEYCORP trade mark (‘the Opponent’s Mark’) since 1993 [16];

   ·The Opponent incorporated and Australian Subsidiary, TTT Moneycorp Pty Ltd ACN 116 612 858 in 2005 [17];

   ·The Opponent conducts over 1800 currency trades for Australian consumers, each year: Second Cook Declaration [12] and Exhibit 4;

   ·In 2014, The Opponent earned significant sums in the millions of Australian dollars in gross revenue for the provision of the its services in Australia: Second Cook Declaration [12] and Exhibit 4;

   ·In 2015, The Opponent earned significant sums in the millions of Australian dollars in gross revenue for the provision of the its services in Australia: Second Cook Declaration [12] and Exhibit 4;

   ·The Opponent conducted several million trades internationally in 2016, resulting in the transfer of many billions of Australian dollar equivalents in funds transferred around the world: Second Cook Declaration [14]; and

   ·The Opponent has offices in the United States of America, Spain, Romania, Ireland and France.

2. The Opponents submissions also claimed that the evidence supported the findings that:

   ·the Opponent is a leader in the relevant market, dealing in over 90 currencies around the world;

   ·that it has expended a substantial sum of money and over 17 years promoting the Opponent’s Mark both in Australia and internationally; and

   ·the Opponent’s Mark has been used in Australia since around 1998 (well prior to 23 January 2015); and has acquired a significant reputation from that long period of use (17 years of use from 1998 to 2015).

3. The Opponent’s submissions did not reference the precise location of the information within the evidence; however, the quality of the reproduction of the evidence does not allow me to discount the submissions entirely.

4. The Stove declaration states that the First Cook Declaration does not provide any use of the Opponent’s mark in Australia in the past three years and that the Holder is commencing a removal action against the Opponent’s Mark.

   Grounds of Opposition

5. Regulations 17A.28 and 17A.34 extend grounds for rejection of and opposition under the Act to IRDAs. The Opponent nominated the following grounds of opposition under the Act in the Statement:

   ·Section 42(b): Trade Mark is contrary to law

   ·Section 58: Applicant not the owner of the Trade Mark

   ·Section 60: Trade Mark is similar to a trade mark which has acquired a reputation in Australia

   ·Section 62A: Application made in bad faith.

6. To succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds on the ‘balance of probabilities’[1] based on the evidence before me.[2] As will become apparent, I have only found it necessary to address the Opponent’s s 60 ground in this decision and this is discussed below.  Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [2] Cantarella Bros Pty Ltd  v Espresso Enterprises Pty Ltd [2014] ATMO 68, Hearing Officer Kirov at [34].

7. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[3]

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

   Discussion

   Section 60

8. Section 60 of the Act is reproduced below:

   Section 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.

9. To establish a ground of opposition under section 60 an opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the IRDA would be likely to deceive or cause confusion.

10. It is not necessary to show under section 60 that the respective marks are substantially identical or deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

11. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[4] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [4] (2000) 51 IPR 102

12. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

13. The Stove declaration, as mentioned above, suggested that removal proceedings had been initiated by the Holder. The fact remains that the Opponent’s Mark was registered as at the priority date, as at the hearing date and is still registered as at the date of this decision.

14. For all intents and purposes the Opponent’s trade mark and the IRDA are essentially the same. The only visual differences between the marks are the lack of a ‘Y’ after the prefix MONE that the Opponent’s Mark has the letter ‘P’ at the end of the word. I consider that the prefix on both marks would be pronounced the same. Indeed, I consider that both are likely to be pronounced the same, or similarly, in their entirety. I do note that in Australia there seems to be a national solecism whereby the contraction of ‘corporation’ in a business name or trade mark tends to be pronounced ‘core’ as if it were the word ‘corps’. I consider that a substantial portion of the relevant market would not notice the difference between the IRDA and the Opponent’s Mark.

15. On the evidence before me, I am satisfied that the Opponent has established the requisite reputation in the relevant market through its substantial trading, turnover and revenue in Australia and worldwide. As a result of that reputation, I am satisfied that there is a real, tangible risk that persons seeking the Holder’s services, who are aware of the Opponent’s Mark will regard goods emanating from the Holder and sold or provided under or by reference to the IRDA as being services sourced from, or otherwise having the licence, sponsorship or approval of, the Opponent. At the very least, such persons would be caused to wonder, or be left in doubt, as to whether such goods come from the same source.

16. I am satisfied that the Opponent has established this ground of opposition. 

    Decision

17. I have found the Opponent has established the ground of opposition under s 60 of the Act.  As the Delegate of the Registrar I accordingly refuse to register the IRDA.

    Costs

18. The Opponent has sought its costs. 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 Holder in accordance with the amounts in Schedule 8 of the Regulations.

    Jock McDonagh

    Hearing Officer

    Trade Marks and Designs Opposition and Hearings

    31 October 2017