OrangeTee.com Pte Limited v OrangeTee Australia Pty Ltd

[2011] ATMO 21

TRADE MARKS ACT 1995

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

Re:Opposition by OrangeTee.com Pte Limited to registration of trade mark application 1219131 (35, 36, 37) - OrangeTee - filed in the name of OrangeTee Australia Pty Ltd.

Delegate:	T. E. Williams
Representation:	Opponent: Justine Beaumont of counsel, instructed by Miriam Stiel and Nadine Bairle of Allens Arthur Robinson Applicant: Dr Christopher Kendall of counsel, instructed by David Cox, solicitor, of Jackson McDonald lawyers
Decision:	2011 ATMO 21 S 52 opposition: S 58 established – substantially identical mark used in Australia – services same kind of thing - registration refused.

Background

1. OrangeTee Australia Pty Ltd (“the applicant”) applied on 14 January 2008 (“the priority date”) to register the trade mark shown below.  As filed, (“the original trade mark”) this was:

2. The services specified in the application are as follows:

   Class 35:

   Executors of estates, businesses, real property, securities and pension and other employee benefit plans

   
   Class 36:

   Agency services for the leasing of real estate property; agency services for the selling on commission of real property; commercial property investment services; domestic property finding services; leasing of freehold property; leasing of property; management of property; property leasing (real estate property only); provision of information relating to property (real estate); real property letting; real property management; rental of property

   
   Class 37:

   Advisory services relating to development of property; advisory services relating to property development; development of property; property development

3. The original trade mark was advertised for possible opposition to registration, provided for under s 52 of the Trade Marks Act 1995 (“the Act”). A Notice of Opposition was filed by Orange Tee Global Properties Pte Ltd, (“Global”), a Singaporean company. However, the right or interest on which Global relied in opposing has now passed to another Singaporean company, OrangeTee.com Pte Limited (“the opponent”). The opposition therefore proceeds now in the name of the opponent, as provided under s 53 of the Act.

4. On 18 Feb 2009, after Global had opposed registration, the applicant requested amendment of the trade mark, under s 65 of the Act to:

   This amendment was allowed and I will refer to the amended version as “the current trade mark” but, for simplicity, I will refer to either or both versions as “the trade mark” or “the applicant’s trade mark” in situations where it is not necessary to distinguish between them.

5. The parties have filed evidence, including further evidence from the opponent[1], to support their respective positions, and served a copy of this as required by the regulations.  In the run-up to the hearing the parties exchanged written submissions as I had directed, starting with the opponent.  What follows is my decision of the opposition, made after hearing the parties.  At that hearing, the applicant was represented by Dr Christopher Kendall of counsel, instructed by David Cox, solicitor, of Jackson McDonald lawyers.  Dr Kendall made his submissions by telephone.  The opponent was represented by Justine Beaumont of counsel, instructed by Miriam Stiel and Nadine Bairle of Allens Arthur Robinson, all present at the hearing.

   [1] I granted permission for the opponent to rely on this and have allowed the applicant time to review its position and respond as necessary.

   Ownership

6. Having heard the submissions of both parties, I am satisfied that the opponent has established a ground of opposition in terms of s 58:  that the applicant is not the owner of the trade mark.  I will now explain why I have found this ground of opposition is established.

7. The evidence shows that the applicant had used the trade mark from about August 2007, or from no earlier than June 2007 if I fully accept Dr Kendall’s view of the evidence.  Strictly speaking, the trade mark shown to have been in use in newspaper advertisements in August 2007 and though to at least early 2008 is neither the original trade mark nor the current trade mark, but a variant:  the original trade mark rendered without the words AGENCY FOR THE AGENT and PATH TO SUCCESS.  That variant was also used at about the same time on a large advertising hoarding at the Gloucester Park trotting track in Perth.  I will have more to say about those variations in the course of what follows but, put shortly, I do not see that such variations of peripheral wording make any significant difference in terms of ownership.

8. If the opponent is to succeed in establishing this ground of opposition, in view of the date of first user by the applicant, it must show that, before June 2007 at the earliest, there had been use, by the opponent or some third party, of the same trade mark, or one substantially identical to it, in Australia, in respect of the same kind of services[2] as those specified in the application.

   [2] See, respectively, Carnival Cruise Lines v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391 and Colorado Group Ltd v Strandbags Group (2007) 74 IPR 246 at [14] –[18]

9. Both the submissions of Ms Beaumont and of Dr Kendall concentrated, accordingly, on the extent of the differences between the applicant’s trade mark and that used by the opponent and/or Global.  They then went on to argue as to whether any usage that had been made of a substantially identical trade mark had been a use in Singapore rather than in Australia.  I will deal with those matters in that order.

   Substantial Identity

10. I am not convinced by Dr Kendall’s reliance on the differences between the trade mark used by the opponent (being the word OrangeTee with, above it and in smaller writing, the words PROPERTY SEARCH MADE EASY in proportions much as per the trade mark shown in paragraph 1) and either the original trade mark or the current trade mark.  The scope of the amendment that the applicant sought is telling and the applicant is in a poor position to make fine points of distinction between its trade mark and that of the opponent.  Equally significantly, as I set out in paragraph 7, the applicant’s track record shows that it was using yet another variant of the original trade mark in August 2007 and onwards.    

11. In any case, the test for substantial identity is as per Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[3].  In considering whether marks are substantially identical they are to 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 that comparison.

    [3] (1963) 109 CLR 407 at 414-415

12. In Carnival Cruise Lines Inc v Sitmar Cruises Limited[4] Gummow J provided some practical guidance about how this should be applied (my emphasis added):

    The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.  There is, as Mr Shanahan points out in his work, p. 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s. 33) or prior public recognition built up by user (Para. 28 (a)).

    In the present case there would, in my view, be no material distinction to be drawn between "Fun Ship" and "Funship" or between the addition of the definite article or the use of the plural.  However, "Fun Ship" is for this purpose a substantially different trade mark to "Sitmar's Funship" and "Fairstar The Funship".

    [4] [1994] FCA 936; 120 ALR 495 (at 513); 31 IPR 375 (at 391).

13. This approach was considered and applied in Karu Pty Ltd v Jose[5].  In that case, Drummond J found that the differences between the trade marks, differences that are significantly greater than in the matter now before me, precluded a prior claim to ownership in respect of clothing.  The respondent's trade mark, the subject of opposed application 423248, is as below right, while the applicant's label mark is below left:

    [5] [1994] FCA 1350; AIPC 91-101; 30 IPR 407.

14. In PB Foods Ltd v Malanda Dairy Foods[6] however, use of the trade mark CHILL defeated an application to register the trade mark CHOC CHILL.  Carr J specifically endorsed the delegate’s reasoning and conclusion in the decision under appeal, which had put the matter as follows:

    When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison.  P B Foods' mark is not simply CHOC CHILL.  PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature.  In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product.  When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a "total impression of similarity" and the proprietorship claim is supported.

    [6] [1999] FCA 1602.

15. In the current matter, the applicant’s variations of its usage by the addition or subtraction of items that, in their context, are simply commercial puffery or descriptive matter should be given little weight in the comparison of trade marks, consistent with the approach in PB Foods v Malanda.  The applicant’s actions in varying peripheral matter when using the trade mark, which I have described above, shows that the words that were deleted or varied were just that:  peripheral.  The substance of the trade mark that the applicant has at all times intended to use, has used in fact, and applies (now, and in original form) to register is the invented word OrangeTee.  Thus, in terms of the usual authorities, I find that the trade mark used by the opponent was substantially identical to the original trade mark and is substantially identical to the current trade mark. 

    Trade Mark Use in Australia

16. Ms Beaumont relied on matters arising from the declarations of Messrs Tock and Dick and that of Ms Lyons, in the opponent’s evidence.  Mr Tock is the Managing Director of the opponent.  Mr Dick is the Group Chief Financial Officer for PDG Corporation Pty Ltd (“PDG”) and Ms Lyons is the company secretary of Far East Consortium (Australia) Pty Ltd (“FEC”).

17. Ms Beaumont argued these declarations show use of the trade mark in the provision of services to Australian companies, PDG and FEC.  Ms Beaumont argued that they demonstrate:

    (i) Provision of services to an Australian developer, PDG, in relation to the marketing and sale of properties in Melbourne from 2004 to 2008. Exhibit SL-1 to the Dick declaration evidences very substantial sales commissions paid by PDG to the opponent from as early as 21 January 2005.

    (ii) Provision of services to FEC in relation to the promotion and sale of properties in Melbourne, including a 120-apartment development, between 2005 and 2006.  The fax at SL-2 in the Lyons declaration from the opponent to Mr De Zilwa in Australia dated 4 August 2005 is described as relating to payment for “Advertising & Promoting Cost” and clearly bears the opponent’s OrangeTee trade mark[7].  

    (iii) Similarly, the invoice at SL-3 addressed to a property development company in Melbourne bears the opponent’s OrangeTee trade mark.

    [7] OrangeTee, used with the words PROPERTY SEARCH MADE EASY, as previously described

18. Ms Beaumont also argued that the Tock declaration instanced use, in much the same ways as the above, of the opponent’s OrangeTee trade mark:

    (i) in Melbourne from as early as 2003;

    (ii) in Brisbane from August 2005; and

    (iii) further examples of use in Melbourne pursuant to a marketing agreement dated 7 May 2007 under which the opponent agreed to introduce purchasers to the Australian company, Tribeca East Melbourne Pty Ltd, and assist it with marketing.

19. Dr Kendall was dismissive of each of these as effective bases for a ground of opposition under s 58.  Any trade mark usage shown in those declarations was, in his view, a usage outside Australia.  He noted that Mr Dick, for instance, refers to having a business relationship with the applicant by way of “the promotion and sale of PDG’s properties located in Australia to Asian-based purchasers”.  Similar criticisms applied, he said, to the other instances.

20. Both sides sought to rely on Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495. In that case, on appeal from the decision of a delegate of the Registrar, Gummow J relevantly observed at 510:

    It is appropriate now to consider more closely the nature of the arrangements pursuant to which bookings were made from Australia for Carnival cruises.  Both Coulter Tours and Cruise World were appointed by Carnival as a general sales agent “on a non-exclusive basis”.  These firms were obliged to accept reservations from travel agents and to pass them on to Carnival on an “on request” basis. Final payment was to be received by Carnival in Miami 30 days before the departure date of the cruise in question.  The gross commission of 20% received from Carnival by Coulter Tours or Cruise World was the only remuneration paid by Carnival; commissions to the local travel agents who dealt with the general sales agent were to be paid by the general sales agent out of that 20% commission.  The local agent would contact the general agent seeking a particular booking for clients.  The general agent would then forward the request to Carnival. The result would then be communicated by the general agent to the local agent, giving particulars of payment requirements and stating to the local agent that the reservation had been accepted.  Carnival billed the general agent which in turn billed the local agent.  The effect of the procedures was that the general agent brought about a contract made by it on behalf of its principal, Carnival, with the local agent on behalf of the passengers.  The evidence indicates that in many cases, in the interval between the initial inquiry and the conclusion of the contract, there might be a number of communications on such matters as the location of available cabins.

    Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (ie the cruise itself) crucial integers in that course of trade took place in Australia.  The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings.  In relation to that course of trade, the marks fun ship and fun ships were used so as to indicate the connection between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival cruises from those operated by other traders…

21. Both Dr Kendall and Ms Beaumont argued that this approach supported their own respective positions.  It should be recalled that Carnival v Sitmar was an appeal from the delegate’s decision to the effect that the rendering of the service (the provision of the sea voyage) outside Australian waters did not constitute a trade in this country.  In the case with which Gummow J was dealing, he had before him evidence showing that, while the service itself occurred outside Australian waters, “crucial integers” of the trade took place in Australia. 

22. The delegate, first of all, noted that the matter had arisen in only one relevant decision at the Trade Marks Office, Estate Agents Co-operative Ltd v National Association of Realtors (1988) AIPC ¶90-470. In that case, the Chief Assistant Registrar said, in relation to convention services:

    Even if details of these arrangements had been available to me, it seems to me that, unless the services themselves were provided in Australia, no use of the mark in the required sense could be shown.

23. Accordingly, the Registrar’s delegate in Carnival vSitmar concluded that:

    So also, it seems to me that even if the advertisements are produced or circulated in Australia if they are to be relied on as use for the purposes of the Act they must relate to services to be performed in Australia. It follows that the use made of its mark by the opponent was not use in the sense required to establish proprietorship in the mark in Australia.

24. Gummow J, in dealing de novo with that matter when on appeal, was likely to have simply been explaining where the delegate had erred, rather than defining, once and for all, the boundaries of what can and cannot constitute use either within Australia or elsewhere.

25. Dr Kendall argued strongly, however, that Carnival vSitmar did not extend to situations where, pursuant to an arrangement entered into with an Australian property developer, Australian properties are sold to those in, relevantly, Singapore, due to activities that took place in Singapore. 

26. Dr Kendall is correct to point out that there was use, in Singapore, of the opponent’s OrangeTee trade mark.  That is where potential buyers were encouraged to buy a property located in Australia.  He emphasized also the evidence which shows that the opponent had neither the necessary licence nor, apparently, the experience to sell real estate in Australia.  Such circumstances, however, do not preclude trade mark use in Australia.  The business arrangements between the opponent and the property developers are not clearly shown by the evidence but there does not seem to be any dispute that the developers, in Australia, entered into an arrangement with the opponent, under the opponent’s trade mark, to provide real estate services in relation to Australian property developments.  In return, the developers paid commission to the opponent.  It would not be a fair reading of Gummow J’s decision to say that the making of such an arrangement cannot constitute a use of the opponent’s trade mark in Australia, irrespective of where the opponent might, in compliance with that arrangement, have sought to interest buyers in the developer’s real estate. 

27. Dr Kendall relied on the line of decisions based on WD & HO Wills (Australia) Ltd v Rothmans Ltd[8].  There, the High Court found that the sending of orders for goods to a supplier in the United States, accompanied by cheques in payment, and subsequent postage of the goods to Australia by parcel post to the person ordering was not sufficient to establish prior use in Australia and that the whole trading in the goods took place in the USA.  He submitted that the evidence of invoices and money transfers in the present mater is, likewise, not evidence of use of a trade mark in Australia and that all of the trading in the service occurred in Singapore.  Dr Kendall’s argument, however, does not recognize that there is more to the matter than this.  The opponent used its trade mark in Australia, in seeking payment from Australian property developers, in compliance with arrangements it had already made with those developers.  This has brought that trade mark into use in Australia in relation to the service of the promoting of real estate for sale, albeit the buyers of that real estate were located in Singapore.

    [8] (1956) 94 CLR 182

28. Wills v Rothmans and Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd[9] were both considered recently in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15, of which Dr Kendall made reference to para 52:

    An overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption. As affirmed by Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co, "whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark". During the trading period, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale.

    [9] [1967] HCA 51; 116 CLR 254

1. However, to use the language of Gallo, while it is true that the consumption of the services occurred in Singapore, the trade by which that consumption was made possible happened in Australia, and is constituted in the dealings between the opponent and the property developers.

   Services

2. Finally, Ms Beaumont argued that the services for which the opponent’s trade mark has been used were “the same kind of thing” as the services specified in the application.  Dr Kendall pointed out that there was a significant mismatch between the services on which the opponent might have used its trade mark and “many of the services that are claimed in the application”, such that “part of the opposition pursuant to s 58 must fail”.  I will deal with that proposition briefly below.  Let me say, for the moment, that the applicant is not the owner of the trade mark with respect to the advertising and promotion of real estate.  To that extent, a ground of opposition has been established.

   Conclusion

3. Section 55(1) provides as follows:

   (1)  Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:       For limitations see section 6.

4. While it is quite clear that the opponent has not established its ground of opposition under s 58 with respect to, in particular, the services specified in class 35, there is more to the matter than this.  It is apparent from the evidence that the applicant intended to provide under the trade mark only those services relating to real property usually provided by a real estate agent in Australia.  Thus, in terms of s 55, the “extent” to which the s 58 ground has been established in respect of the services that are of direct interest to the applicant is very significant, and will be determinative.  The appropriate course in terms of section 55 is to refuse to register the application, now, as it stands, in respect of all services applied for.  I do so accordingly.

5. Costs will follow the cause and I award them against the applicant to the extent set out in the scale in the regulations.

   T.E. Williams
   Hearing Officer
   Trade Marks Hearings
   10 March 2011