Opposition by United Workers Union to registration of trade mark application number 2040125 (Classes 16, 25, 35, 36, 41, 45) – VICTORIAN AMBULANCE UNION & device - in the name of Victorian Ambulance Union Incorporated.

[2022] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by United Workers Union to registration of trade mark application number 2040125 (Classes 16, 25, 35, 36, 41, 45) – VICTORIAN AMBULANCE UNION & device - in the name of Victorian Ambulance Union Incorporated.

Delegate:	Blake Knowles
Representation:	Opponent: Ben Gardiner of counsel, instructed by Hall Payne Lawyers. Applicant: Clare Cunliffe of counsel, instructed by Gordon Legal.
Decision:	2022 ATMO 3 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under sections 41, 42(b), 43, 44, and 62A– no ground established - trade mark to proceed to registration.

Background

1. This is a decision in the opposition by United Workers Union (‘Opponent’) to registration of trade mark number 2040125 (‘Application’). The Application was filed on 3 October 2019 (‘Relevant Date’) by Victorian Ambulance Union Incorporated (‘Applicant’) for the following trade mark and goods and services:

   
   (‘Trade Mark’)

   Class 16: Printed publications; Printed publications relating to financial services; Journals; Journals (publications); Booklets for use in conducting training workshops; Instruction manuals relating to training seminars; Printed training guides; Training guides in the form of printed matter; Training manuals in the form of printed matter; Printed advertising material

   Class 25: Clothing

   Class 35: Advertising; Preparation of advertising material; Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Promotion of goods and services through sponsorship of sports events; Sponsorship (promotion and marketing services); Advocacy (promoting, publicising or otherwise representing the interests or concerns of others)

   Class 36: Financial sponsorship of education, training, entertainment, sporting or cultural activities; Advisory services relating to finance; Provision of finance

   Class 41: Online publication of electronic books and journals; Publication of journals; Conducting training seminars; Consultancy services relating to training; Industrial relations training; Industrial training; Occupational health and safety services (education and training services); Organisation of training courses; Providing courses of training; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of information relating to training; Provision of training; Provision of training courses; Provision of training facilities; Training; Multimedia production, other than for advertising purposes; Production of audio and/or video recordings, other than advertising; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Arranging and conducting of workshops (training); Conducting workshops (training); Legal education services

   Class 45: Lobbying services relating to legislation and regulation; Providing information regarding political issues; Consultancy services relating to the application of legislation; Providing information relating to the application of legislation; Legal advocacy services; Legislative advocacy services; Legal enquiry services; Providing information, including online, about legal services; Provision of information relating to legal services

(‘Goods and Services’)

1. As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes and the Opponent filed notice of its intention to oppose registration of the Trade Mark on 1 May 2020 and a statement of grounds and particulars (‘SGP’) on 13 May 2020. The Applicant filed a notice of intention to defend the Application from opposition on 17 July 2020.

2. The parties had the opportunity to file evidence in accordance with reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 22 October 2020. The Applicant filed Evidence in Answer (‘EIA’) on 18 December 2020. The Opponent did not file Evidence in Reply.

3. Both parties requested to be heard and paid the relevant fee. I heard the opposition, as a delegate of the Registrar of Trade Marks, on 15 November 2021. The Opponent was represented by Mr Ben Gardiner of counsel, instructed by Mr Dale Blackmore of Hall Payne Lawyers. The Applicant was represented by Ms Clare Cunliffe of counsel, instructed by Mr James Naughton of Gordon Legal.

   Grounds and onus

4. The SGP nominated grounds of opposition under ss 41, 42(b), 43, 44, and 62A.

5. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   Evidence

6. The following evidence was filed under reg 5.14:

   EIS

   Declaration of Fiona Scalon, National Ambulance Coordinator of the Opponent, made on 22 October 2020 with Exhibits FS1 to FS19.

   EIA

   Declaration of Danny Hill, Secretary of the Applicant, made on 18 December 2020 with Annexures DH1 to DH19.

   Declaration of Olga Bartasek, Assistant Secretary of the Applicant, made on 18 December 2020.

   EIS

7. Ms Scalon declares that the Opponent is an organisation registered under the Fair Work (Registered Organisations) Act 2009 (Cth) (‘FW(RO) Act’). Ms Scalon states that registration under the FW(RO) Act confers significant privileges on the registered organisation. However, a registered organisation is also subject to extensive regulation by the Registered Organisations Commission.

8. Ms Scalon opines that ‘The phrase Victorian ambulance union describes an organisation registered under the FW(RO) Act representing the interests of ambulance workers in the state of Victoria’ and ‘This phrase is descriptive of the Opponent. The Opponent was historically, and is presently, the union for Ambulance Workers in Victoria’. Ms Scalon declares that the Opponent has for several decades been the default bargaining representative for ambulance workers during negotiations with Ambulance Victoria and its predecessors.

9. Ms Scalon provides a history of the Opponent’s representation of ambulance industry workers in Victoria, under various names. From 1994 until 2004, the Opponent represented ambulance industry workers as the Australian Liquor, Hospitality and Miscellaneous Workers Union, which subsequently changed its name in 2004 to the Liquor, Hospitality, and Miscellaneous Union, and again in 2011 to ‘United Voice’, and finally in 2019, to United Workers’ Union (after amalgamation with the National Union of Workers). The Opponent has since 1994 recognised in its rules a section of members called the Ambulance Employees Association of Victoria (‘AEAV Section’). Ms Scalon details various services that it has performed on behalf of ambulance industry workers and benefits that its members are potentially entitled to.

10. Ms Scalon provides examples of the Opponent being referred to as the ‘Victorian Ambulance Union’ or the ‘Ambulance Union’, including in news articles from multiple sources, Hansard of Parliamentary debates, and extracts from the Opponent’s own Facebook page.

11. Ms Scalon declares that the Opponent is also the owner of the domain names and www. victorianambulanceunion.net. Ms Scalon refers to a domain name complaint under the Uniform Dispute Resolution Policy (‘uDRP Complaint’) filed by the Applicant seeking that these domains be transferred to it. A copy of the domain name complaint decision is attached, which indicates that the complaint was dismissed as the Applicant failed to establish that it had acquired the relevant trade mark rights upon which the complaint was based.

12. Ms Scalon declares that the Applicant is an incorporated association under Victorian law. It is not registered under the FW(RO) Act. Ms Scalon declares that Mr Danny Hill and Ms Olga Bartasek, respectively the Secretary and Assistant Secretary of the Applicant, are former office holders and staff of the Opponent. Ms Scalon opines that both Mr Hill and Ms Bartasek were fully aware of the history of the Opponent, its functions, and that the Opponent has been described as the ‘ambulance union’ in Victoria. Ms Scalon annexes examples of Mr Hill in his capacity as Secretary of the Opponent referring to the Opponent as the ‘ambulance union’ or Mr Hill being referred to as the ‘Ambulance Union Secretary’.

13. Ms Scalon annexes statements by Mr Hill which indicate that the Applicant was formed due to member dissatisfaction of the merging of the Opponent (as United Voice) with the National Union of Workers to form a super union, and that the Applicant’s members wanted to be part of an ambulance specific union. Ms Scalon declares that subsequent to its incorporation, the Applicant was appointed in mid- 2019 as a bargaining representative by a number of employees of Ambulance Victoria in relation to negotiations for a new enterprise agreement covering ambulance workers. Ms Scalon contrasts this appointment of the Applicant as an ‘agent’ for members it represents with the position of the Opponent as a ‘union’ (i.e. as an organisation registered under the FW(RO) Act), in which capacity it has the right to participate in bargaining for its members and is not required to be appointed.

14. Ms Scalon annexes to the declaration extracts of trade marks containing a Maltese cross device owned by various Australian ambulance services.

    EIA

15. Mr Hill declares that he is the Secretary of the Applicant, and a former Secretary and Assistant Secretary of the AEAV Section of the Opponent from 2013 to 2019.

16. Mr Hill declares that the Applicant was established as a new association of ambulance employees in Victoria to represent the interests of ambulance employees and those who work in associated fields. Mr Hill declares that the Applicant has used the name ‘Victorian Ambulance Union’ since June 2019.

17. Mr Hill states that the primary purpose of the Applicant is “To protect and promote the interests of its members concerning their employment”.  Mr Hill explains that the Applicant was at the time of his declaration the largest ambulance specific union in Australia and has been highly successful attracting members of the Opponent, with approximately 4,900 members drawn from a pool of 6,000-7,000 people working in operational and non-operational roles in the ambulance industry in Victoria.

18. Mr Hill denies the Opponent’s characterisation that the Applicant is not a union, referring to the Applicant’s purpose and membership base. Mr Hill also states that the Applicant is registered under the Associations Incorporation Reform Act 2012 (Vic) and falls within the definition of a trade union under the terms of the Trade Unions Act 1958 (Vic). Mr Hill states that the Applicant is also an ‘industrial association’ within the meaning of that term under section 12 of the Fair Work Act 2009 (Cth). Mr Hill states that the Fair Work Act 2009 (Cth) does not use the term ‘union’. Mr Hill opines “it is not correct that only organisations registered under the FWRO Act may bear the description of “union”. Organisations which are not registered as unions operate as unions under the FWRO Act and are regularly treated as such, even in the context of undertaking litigation on behalf of employees”. Mr Hill refers to a Federal Court decision where the Retail and Fast Food Workers Union, which similarly to the Applicant was also registered under the Associations Incorporation Reform Act 2012 (Vic) and considered an Industrial Association under the Fair Work Act 2009 (Cth), was referred to by Logan J as a ‘trade union’.[4]

19. Mr Hill declares that the Applicant is the owner of the registered business name ‘Victorian Ambulance Union’, and is also the owner of the trade mark number 2040148 (shown below) for goods and services which are the same as those of the Application:

    (‘Applicant’s Logo Mark’)

20. Mr Hill annexes various examples of use of the Trade Mark and the word mark ‘Victorian Ambulance Union’ since June 2019, including on the Applicant’s website, on Facebook, in interviews and media articles, and on merchandise. As at 18 December 2020, the Applicant had approximately 4,500 followers on Facebook.  Mr Hill states that the Applicant has also been invited to participate in formal working and consultation groups by the Victorian Government and has been regularly referred to in the Victorian State Parliament (with examples of such references in Hansard annexed to the declaration).

21. Mr Hill opines that the Opponent in the past did not use the term ‘Victorian Ambulance Union’ or any similar name to describe itself, and that its registration of domain names containing this term was done after creation of the Applicant when many of the Opponent’s members chose to become, or enquired how they might become, members of the Applicant.

22. Mr Hill refers to domain name complaint proceedings brought by the Applicant against the Opponent under .au Dispute Resolution Policy (‘auDRP Complaint’) in relation to numerous .au domain names containing ‘victorianambulanceunion’ as the identifier that were registered by the Opponent. Mr Hill states that the Applicant was successful in those proceedings and annexes a copy of the panel’s decision finding that the Opponent had registered the domains in bad faith. Mr Hill also refers to the uDRP Complaint which the Opponent successfully defended, noting that a minority of the panel in that dispute also concluded that the relevant domains under consideration were registered in bad faith.   

23. Ms Bartasek declares that she is the Assistant Secretary of the Applicant, and a former Assistant Secretary of the Opponent. Ms Bartasek mostly provides information and opinion that is consistent with that provided by Mr Hill, including that the Applicant is functioning as a union, that the Opponent has sought to disrupt the activities of the Applicant, and that the Applicant has used the Trade Mark in various ways (including on physical merchandise and online).

    Discussion

    Section 41

24. Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Applicant’s Goods and Services from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Goods and Services, there will be no grounds for rejecting it under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Goods and Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that that it did not in fact distinguish the Goods and Services based on the extent of its use at the Relevant Date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that after considering the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark and/or intended use at the Relevant Date, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Goods and Services (s 41(4)).

25. The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks (‘Clark Equipment’):

    His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

26. In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’), the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume, or trade in the goods or services, and then, (ii) having determined the ordinary signification, the likelihood of the sign being desired for use by others.[6]

27. The Opponent in submissions referred to various cases where combinations of descriptive words and a device element were not considered sufficiently inherently adapted to distinguish.[7] The Applicant also refers to various cases where combination marks have been deemed prima facie registrable,[8] and submits that it is not permissible to dissect a trade mark into its component parts.[9]

28. The authorities referred to by the parties provide useful examples, but the Trade Mark must be assessed on its own merits.  I am particularly mindful that the test in Clark Equipment requires me to consider whether another trader would wish to use the same mark, or some mark nearly resembling it (including some mark that would infringe the trade mark under consideration if registration were granted). The court in Cantarella also referred to the requirement to examine a trade mark from ‘the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business’.[10] The potential impairment of the rights of honest traders must be assessed in the context of relatively broad tests for infringement of a registered trade mark, which take into account the effect of trade marks on ordinary consumers relying on imperfect recollection, with particular weight given to the essential features of the trade marks under consideration.

29. The Trade Mark is a combination of both word and device elements. However, the words plainly describe a union for workers in the ambulance industry and it follows that they are also descriptive of trade origin in relation to goods and services that would ordinarily be provided by such a trade union. The device element consists of a Maltese cross. My research indicates that the Maltese cross is commonly used in relation to ambulance services, and that nearly every State and Territory ambulance service incorporates a version of this device. As such, I consider that a Maltese cross has very little inherent distinctiveness in relation to ambulance services per se, although it is slightly more distinctive (though not sufficiently inherently adapted to distinguish in its own right) in relation to services provided to or on behalf of ambulance industry workers. Overall, I am satisfied that the combination of word and device elements in the Trade Mark which each individually have a low level of distinctiveness is not sufficient to create a whole that is sufficiently inherently adapted to distinguish to be prima facie registrable. I consider that the ordinary signification of the Trade Mark, when considered as a whole, is a trade union providing goods and services for and on behalf of ambulance industry workers, and that other traders are likely to wish to use the Trade Mark, or some mark nearly resembling it, in relation to the Goods and Services.

1. However, the Trade Mark does have a reasonable level of inherent adaptation to distinguish, arising from the combination of two otherwise non-distinctive elements into a stylised and visually striking whole. As such, I must therefore consider the matters set out in s 41(4) to determine the registrability of the Trade Mark.

2. Registrability must be assessed at the Relevant Date, which is approximately four months after the first use of the Trade Mark by the Applicant. As such, the evidence of the extent of use of the Trade Mark at this time is necessarily limited. If the matter were to be decided having regard to the matters set out in s 41(3), which permits me only to consider the extent of use of the Trade Mark as at the Relevant Date, I would be satisfied it is appropriate to refuse registration. However, s 41(4) requires that I consider various factors including the extent to which the Trade Mark is inherently adapted to distinguish, the extent of use or intended use of the Trade Mark at the Relevant Date, and any other relevant circumstances. In considering s 41(4), I am permitted to consider evidence of use of the Trade Mark after the Relevant Date, insofar as it informs the likelihood that the Trade Mark was capable of distinguishing (having regard to its intended use and other relevant circumstances) at the Relevant Date.[11]

3. It is important to consider the relevant factors in the proper context, having regard to the target market for the Goods and Services. The Trade Mark is not used or intended to be used in relation to a normal business. The purpose of the Applicant is not to generate profit for its owners, but to represent the interests of members of a particular group. It is members of that group who are the target market and in the context of which the capacity to distinguish of the Trade Mark must be considered. As such, metrics which might normally be persuasive in determining whether a trade mark does or will distinguish the Goods and Services, such as revenue and promotional expenditure, are not necessarily the best or only objective measures on which to judge the extent of use or intended use of the Trade Mark in this case. Other metrics which demonstrate exposure or likely exposure of the Trade Mark to members of the target market, and uptake or likely uptake of the Applicant’s Goods and Services, may also give a realistic indication of whether the Trade Mark did or would distinguish the Goods and Services at the Relevant Date.  

4. The Applicant was created and launched around June 2019 to provide an ambulance specific trade union to ambulance industry workers in Victoria. The Applicant’s natural intention would be to represent as many members of that particular group as possible. As such, the intended use of the Trade Mark was extensive in the context of the small target market. The Applicant was also able to immediately reach out to and promote the Trade Mark to many members of the target market, given the position of Mr Hill and Ms Bartasek in the union movement. Mr Hill and Ms Bartasek also considered, and were in a position to know, that there was a level of dissatisfaction amongst ambulance workers with the status quo, and this dissatisfaction would make ambulance workers more receptive to a new ambulance industry specific union.    

5. The evidence indicates that the extensive intended use of the Trade Mark at the Relevant Date by the Applicant was a realistic goal, and it ultimately transpired that the Applicant was very successful in building a new trade union in a short period of time. Mr Hill’s uncontradicted evidence is that the relevant market for the services of a trade union for ambulance industry workers in Victoria was approximately 6,000-7,000 people. I accept this evidence as being accurate given Mr Hill’s experience and senior roles with both the Opponent and the Applicant. As of 18 December 2020 (approximately 14 months after the Relevant Date), the Applicant had acquired approximately 4,900 members. This membership figure constitutes between 70%-80% of the relevant market. The membership figure is also consistent with the number of followers of the Applicant’s Facebook page which bears the Trade Mark prominently, and who are therefore exposed to the Trade Mark on a regular basis. While the Applicant has been somewhat economical with providing examples of use of the Trade Mark, I accept that the Facebook page extracts are representative of consistent use of the Trade Mark and its exposure to the target market.

6. I also give weight to the fact that there are unlikely to be many other traders who wish to provide the services of a trade union to ambulance industry workers in Victoria. The evidence of both parties indicates that for decades, the Opponent was the only union to provide such services in Victoria, and those services were provided under a larger union not limited to ambulance industry workers. The influence and bargaining ability of a trade union relies heavily on the proportion of workers in a particular field that the union represents. This is a natural barrier to the formation of multiple competing trade unions, particularly those representing very specific groups of workers. As such, while it is possible that other trade unions may at some stage be formed to compete with the Applicant to represent ambulance industry workers, the number of players in that field is always likely to be small.   

7. I have also considered that the Applicant’s Logo Mark was deemed prima facie registrable, and that the registered mark is contained within the present mark. I do not consider that this is particularly persuasive factor in deciding the registrability of the present Trade Mark, but it does have some relevance.

8. Section 41(4) requires that I be satisfied that the Trade Mark does not or will not distinguish the Goods and Services, having regard to the relevant considerations set out therein. On balance, considering (i) the Trade Mark has a reasonable level of inherent adaptation to distinguish, (ii) the extent of the intended use of the Trade Mark at the Relevant Date (which realistically encompassed all relevant ambulance industry workers in Victoria), and (iii) other relevant circumstances (such as the small number of likely competing market participants), I am not satisfied that the Trade Mark was not capable of distinguishing at the Relevant Date. In reaching this finding, I have considered the significant level of actual use of the Trade Mark that occurred shortly after the Relevant Date, which reflects positively on the scope of intended use at the Relevant Date and is therefore relevant to determining capacity to distinguish of the Trade Mark under s 41(4).  

9. For the reasons given above, the s 41 ground is not established.

   Section 42(b)

10. The Opponent in the SGP alleges the Applicant’s use of the Trade Mark would be misleading or deceptive as it carries the representation that the user of the Trade Mark is a union or an ambulance service, which is not the case. Further, the Opponent also contends that use of the Trade Mark would indicate that the Applicant is the Opponent or is associated with the Opponent in some way. The Opponent therefore contends that use of the Trade Mark would constitute a breach of s 18 of the Australian Consumer Law (‘ACL’), which prohibits in trade or commerce conduct that is misleading or deceptive or that is likely to mislead or deceive.

11. Turning first to the contention that the Trade Mark conveys that the user is a ‘union’, the parties both accept, and I agree, that the Trade Mark conveys that the Goods and Services are being provided by a trade union. The Opponent submits that the Applicant cannot be a ‘trade union’ as it is incorporated, and that it cannot also be a ‘union’ as this incorrectly implies it is registered under the FW(RO) Act.  

12. The Opponent acknowledges that neither the Fair Work Act 2009 (Cth) or the FW(RO) Act define the terms ‘union’ or ‘trade union’, and that historically, industrial legislation has not used or developed to any significant extent the term ‘union’ simpliciter. However, the Opponent relies on other authorities to support its view on how the terms ‘trade union’ and ‘union’ may properly be used and would be perceived.

13. The Opponent refers to a decision by the Queensland Industrial Relations Commission in Gilbert v Metro North Hospital Health Service & Ors, where O’Connor VP accepted that “the term ‘trade union’ does not mean an entity with some distinct corporate personality from that of its individual members”.[12]   The Opponent submits that this “authority makes clear that the term “trade union” refers to an organisation “formed by workers to further the interests of the workers in their employment” and does not include an entity with some distinct corporate personality from that of its individual members. Accordingly, it is clear that the Applicant, which was not formed by workers and does have a distinct corporate personality from that of its individual members, is not a trade union.”

14. The Opponent also argues that “The word “union” is generally understood to be a reference to an organisation which is registered under the Fair Work (Registered Organisations) Act 2009 (Cth) or counterpart state industrial legislation. The Applicant is not a registered organisation under that legislation and is therefore not properly regarded as a union.”

15. The Opponent acknowledges that organisations registered under industrial law can be identified as ‘unions’ despite having obtained separate legal personality. However, the Opponent also contends that these registered organisations are afforded a series of rights and are subject to obligations that members of the public would expect of a union. The Opponent argues “although the Applicant can and does perform many of the same functions as a union, it does not have these rights, it is not a registered organisation, and therefore is not a union.”.

16. It is important to note that the Opponent does not contend that use of the term ‘union’ is contrary to law on the basis it would breach some specific statutory provision or common law rule which mandates how or when the term ‘union’ may or may not be used. The Opponent’s case is based only on the contention that use of the term ‘union’ would constitute a misrepresentation under s 18 of the ACL. In the circumstances, I consider that such a misrepresentation could only arise if (i) use of the term ‘union’ is clearly prohibited or regulated by some relevant law, (ii) there is evidence of a general understanding in the relevant market that the term ‘union’ indicates a class of entities to which the Applicant does not belong, or (iii) it were clear that the Applicant intended to use the Trade Mark in a manner that would be inconsistent with the commonly understood functions or purpose of a trade union.

17. I am not satisfied based on the evidence that there is any general prohibition arising from statute or case law as to when an organisation or entity may perform the services of a trade union or describe itself as a union. While the characterisation of a particular organisation or entity as a trade union or union may have some relevance in the application of particular legislation, it would not always follow that use inconsistent with such legislation would necessarily be a misrepresentation sufficient to breach s 18 of the ACL. Further, the fact that the Applicant is not registered under the FW(RO) Act, while perhaps meaning the Applicant is not afforded particular rights or subject to particular obligations under that particular legislation, does not in itself render the Applicant’s use of the word ‘union’ as misleading or deceptive.

18. I am also not satisfied that the term ‘union’ refers to a class of entities to which the Applicant does not belong. I consider, in the absence of evidence to the contrary, that consumers are likely to perceive the use of the term ‘union’ in the term ‘Victorian Ambulance Union’ as referring to an organisation representing the interests of workers in the ambulance industry. The nature of the particular union as either an incorporated or unincorporated association, or its registration status under the FW(RO) Act, are not factors that I consider consumers would necessarily turn their mind to. Given the Applicant acts to represent the interests of ambulance industry workers, I am not satisfied that there would be any misrepresentation or deception arising from the presence of the word ‘Union’ in the Trade Mark.

19. Further, I am not satisfied that the Applicant intends to use the Trade Mark in a way that is inconsistent with the functions of a trade union. The evidence indicates the contrary is true.

20. Turning to the second contention, namely, that the Trade Mark conveys that the Applicant is an ambulance service, I am not satisfied this is the case. The presence of the word ‘Union’ and the fact that the Application does not cover ambulance or any other primary healthcare services are sufficient reasons to conclude that there is unlikely to be any realistic possibility of confusion in the relevant market (which consists of workers in the ambulance industry, including highly educated paramedics and support staff).  Further, it is unlikely that the public would contact the Applicant to obtain ambulance services, given that the vast majority of people who require an ambulance are educated from a young age to call 000 and would have no need to search for contact details of any particular ambulance service.

21. Turning to the third contention, namely, that use of the Trade Mark would indicate that the Applicant is the Opponent or is associated with the Opponent in some way, I am also not satisfied this is the case. This contention may carry more force if the Opponent had some claim to exclusivity over use of the term ‘Victorian Ambulance Union’ or ‘Ambulance Union’ in respect of goods and services provided by a trade union.  However, the Opponent does not appear to have ever used either ‘Victorian Ambulance Union’ or ‘Ambulance Union’ as a trade mark to distinguish its goods and services from those of others. To the extent that the Opponent refers to itself or has been referred to by others using these terms, this is merely convenient descriptive usage. The fact that another trader may now also refer to itself or be referred to using the terms ‘Victorian Ambulance Union’ or ‘Ambulance Union’ is a consequence of the descriptive nature of those words and is not misleading or deceptive. Similarly, the fact that some confusion may arise from the previous involvement of Mr Hill and Ms Bartasek with the Opponent has little relevance to whether use of the Trade Mark itself is misleading or deceptive.

22. For the reasons given above, the s 42(b) ground is not established.

    Section 62A

23. To establish the s 62A ground, the Opponent must establish that the Application was made in bad faith.

24. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[13] In Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J in considering the tests for bad faith quoted the UK decision in Harrison’s Trade Mark Application:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    …

    …The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[14]

    Justice Dodds-Streeton went on to say:

    
    … mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[15]

25. I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

26. The Opponent’s case under s 62A as outlined in the SGP rests on a number of contentions, namely that (i) the Applicant should have known it was not a union, (ii), that the Opponent was the union which has historically represented ambulance workers in Victoria, (iii) that use of the Trade Mark would lead people to believe that the user was associated with the Opponent, and (iv) that the Opponent was the owner of various domain names containing the identifier ‘victorianambulanceunion’.

27. With regards to the first contention, the evidence of the Applicant’s purpose and activities clearly indicates that it intended to operate as a trade union and has in fact done so since before the Relevant Date. Further, having regard to objective considerations discussed under the s 42(b) ground, I am not satisfied that the Opponent ought to have known that it should not use the term ‘union’ given there is no law that prohibits it from doing so and given it intended to perform the services of a trade union on behalf of its members.

28. With regards to the second, third, and fourth contentions, I also refer to my reasons given in relation to the s 42(b) ground. I consider that these contentions would only have some merit under s 62A if the Opponent had some claim to exclusivity over the term ‘Victorian Ambulance Union’ in respect of goods and services provided by a trade union.  As I do not consider this is the case, I am not satisfied that the adoption of a Trade Mark containing a highly descriptive phrase which appears to have only ever been used descriptively by or in relation to the Opponent constitutes an act of bad faith on behalf of the Applicant.

29. For the reasons given above, the s 62A ground is not established.

    Section 43

30. 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.

31. 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 from similarities between the Trade Mark and another trade mark.[16]

32. The Opponent in the SGP bases this ground on the contention that the Trade Mark connotes that the Applicant is either a union or an ambulance service, when neither of these facts are true.

33. I have already addressed these arguments in the context of s 42(b). For the same reasons, I am not satisfied that the Trade Mark is likely to deceive or cause confusion.

34. For the reasons given above, the s 43 ground is not established.

    Section 44

35. To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, 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, and must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.

1. The Opponent relies on numerous trade marks registered to third parties, each of which has a priority date earlier than that of the Application. For the sake of brevity, I have annexed those trade marks in Annexure A (‘Section 44 Marks’). The Opponent alleges that the Trade Mark is deceptively similar to each of the Section 44 Marks, although at the hearing, the Opponent focused its submissions specifically on trade mark numbers 1652514 and 1937426.

2. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[17] 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.[18] 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.[19]

   -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.[20] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[21]

   -Consumers may retain an imperfect recollection of a mark or its essential features.[22]

   -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.[23]

   -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 or stupid.[24]

   -It must be considered how the goods or services are ordinarily sold or provided.[25]

3. For ease of reference, the Trade Mark and the Section 44 Marks are reproduced below:

Trade Mark Section 44 Marks

1. The Trade Mark and each of the Section 44 Marks share a common feature, namely, a Maltese cross device. Some of the Section 44 Marks also contain the word ‘Ambulance’. However, visually and aurally, each of the Section 44 Marks contains other material or stylisation that renders them clearly dissimilar from the Trade Mark.

2. The Trade Mark features a simple Maltese Cross that is bisected by the letters VAU which extend to the form the words ‘Victorian Ambulance Union’. The Maltese cross in this context is not an independent element of the mark but closely linked to the words. The composite of the words and device, and the manner in which the Trade Mark as a whole is stylised, means that any conceptual similarity that exists by the presence of a Maltese cross device or the word Ambulance in the Trade Mark is unlikely to lead to confusion with any of the Section 44 Trade Marks, particularly given that the words ‘Victorian’ and ‘Union’ also do not appear in any of the latter.

3. I have also taken into account that the relevant market for the goods and services is likely to be educated and discerning, and therefore, less prone to confusion based on the presence of common elements that are often used in relation to ambulance related goods and services.

4. As the Opponent has not established that the Trade Mark is deceptively similar to a trade mark with an earlier priority date, the s 44 ground is not established.  

   Decision and costs

5. The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision.  If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

6. The Applicant applied for an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Opponent.

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks

   10 January 2022

   Annexure A – Section 44 Marks

TM No.	Trade Mark	Class
494905	41
494910	16
494912	25
564224	36
618536	12, 16, 41
894993	5, 9, 10, 12, 14, 16, 24, 25, 39, 41, 42
997289	5, 10, 12, 16, 39, 41, 42, 44
1032107	12, 16, 36, 39, 41, 44
1033694	12, 16, 36, 39, 41, 44
1216898	21, 24, 25, 26
1216902	21, 24, 25, 26
1652514	9, 10, 12, 14, 16, 18, 24, 25, 26, 36, 38, 39, 41, 44
1652515	9, 10, 12, 14, 16, 18, 24, 25, 26, 36, 38, 39, 41, 44
1663440	5, 10, 12, 16, 39, 41, 42, 44
1937426	14, 16, 18, 21, 24, 25, 26, 35, 38, 41

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

[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).

[4] Retail and Fast Food Workers Union Incorporated v Tantex [2020] FCA 1258.

[5] [1964] HCA 55, [5] (Kitto J).

[6] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

[7] Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553 (Markovic J) upheld on appeal in Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31 (Middleton, Burley, and Thawley JJ), Blount Inc v The Registrar of Trade Marks [1998] FCA 440 (Branson J), Mangrovite Belting Limited v J.C. Ludowici & Son Limited [1938] HCA 67 (Latham CJ, Rich, Dixon, and McTiernan JJ), The Chef Trade Mark [1979] RPC 143, Segator Pty Limited v FKS Australia Pty Limited [2020] ATMO 190, Richard Jean Yared [2021] ATMO 26, World Expeditions Travel Group Pty Ltd v Australian Wilderness Adventures Pty Ltd [2017] ATMO 141, Angel Gowns Australia Incorporated v Angel Gowns for Australian Angel Babies Inc [2017] ATMO 130, Ferngrove Pharmaceuticals Australia Pty Ltd [2016] ATMO 74, Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39, Bioengineering AG [2014] ATMO 14, The Babcock & Wilcox Company [1998] ATMO 25, Lidl Stiftung & Co. KG [2019] ATMO 156, and Aldi Foods Pty Ltd [2019] ATMO 174.

Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 (Katzmann J).

[9] Diamond T Motor Company [1921] 2 Ch 583.

[10] Cantarella, [44] (French CJ, Hayne, Crennan and Kiefel JJ).

[11] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [32]-[33] (Finn J).

[12] [2021] QIRC 255, [104] (O’Connor VP)

[13] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).

[14] Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147], Harrison’s Trade Mark Application [2005] FSR 10 [24]-[26] (Sir William Aldous).

[15] Ibid, [166].

[16] 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).

[17] Trade Marks Act 1995 (Cth) s 10.

[18] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[19] 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).

[20] 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).

[21] 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).

[22] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[23] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[24] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[25] Ibid.