Overdrive Holdings Pty Ltd v Gloria Hackmann
[2012] ATMO 89
•12 October 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Overdrive Holdings Pty Ltd to registration of trade mark application 1399634(41) - IXSELL - filed in the name of Gloria Hackmann.
Delegate: Iain Thompson Representation: Opponent: Rohan Wallace of Rohan Wallace Patent and Trademark Services
Applicant: Did not appear or file written submissionsDecision: 2012 ATMO 89
s52 opposition: substantially identical trade marks, section 58 established, registration refusedBackground
Gloria Hackmann, (‘the Applicant’) of South Morang in Victoria filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below:
Application No: 1399634
Priority Date: 14 December 2010Services:Training; computer training; business training; employment training
Trade Mark: IXSELL
If necessary in this decision I will refer to the above as ‘the Application’, the services as ‘the Applicant’s Services’ and the trade mark IXSELL as ‘the Opposed Trade Mark’.
The Application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 28 April 2011 in The Australian Official Journal of Trade Marks.
On 27 July 2011, Overdrive Holdings Pty Ltd (‘the Opponent’) of Northbridge, Western Australia, served and filed Notice of Opposition (‘the Notice’) to the registration of the Opposed Trade Mark. The Notice includes most of the grounds of opposition including that under section 58 which was subsequently argued by the Opponent. For the sake of completeness, I record that the other grounds listed on the Notice have not been established and that in an appeal from this decision any ground may be argued before the Court which will consider the matter de novo.[1]
[1] See Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 at [24] per Kenny J
The Opponent has served and filed its evidence in support of the opposition; the Applicant has not served and filed evidence in answer.
The matter duly came before me to be heard as a delegate of the Registrar of Trade Marks in Perth on 30 August 2012. Mr Rohan Wallace of Rohan Wallace Patent and Trademark Services made submissions of behalf of the Opponent. The Applicant did not appear or file written submissions.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities. See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Evidence
The evidence in support of the opposition comprises a statutory declaration by Ms Anna Zammit who a Director and the Secretary of the Opponent. Ms Zammit states that the Opponent has been trading under the "Xsell" brand for about 10 years and offers services in business coaching, training and sales recruitment under the Xsell trade mark. Ms Zammit continues:
The Xsell trade mark is used in relation to the services offered by [the Opponent], namely: training, coaching, sales recruitment (the services). More specifically the use included: Telesales Training, Influencing Training, Time Management Training, Networking Training, Lead Generation and Business Consulting, leadership, team dynamics, Myers Briggs Profiling, Sales Profiling, Strategic Planning, and Sales Planning.
The trade mark Xsell is used on letters, reports, invoices, training templates, training folders, faxes, with compliments slips, emails, training power points, presentation power points, coaching documents, contracts and internal documents, in relation to provision of the services. The trade mark is used on Website at the address Letter Head, Business Cards, Training Folders, Promotional Biros, Marketing Consultants and Marketing Plans. Training Inserts, Training Templates, Office Signage, Envelopes, Evaluation Profiles, News Letters, Invitations to Networking Events, Company Brochures, Staff Profiles, Promotional material in relation to advertising and promotion of the services.
The website is branded with Xsell and offers the services of My Company throughout Australia. The website was established in 2004. Archived versions are available from 2006 and show use of the trade mark in relation to the services. Attached hereto as Exhibit AZ6 is a printout of the homepage website from 2006 retrieved from `The Wayback Machine" of the URL ` Attached hereto as Exhibit AZ7 is a printout of the homepage website from 2007 retrieved from 'The Wayback Machine" of the URL ` Attached hereto as Exhibit AZ8 is a printout of the homepage website from 2009 retrieved from "The Wayback Machine" of the URL ` Attached hereto as Exhibit AZ9 is a printout of the homepage current website of the URL ‘ At present the website ranks number 1 in an organic web search for "XSELL" on the GoogleTM search engine.
My Company's main focus is in Western Australia. However soon after commencing business, the services were to be provided throughout Australia under the Xsell brand. The reputation of My Company in the Xsell brand has been established nationally through the building of networks and referral bases. My Company has built its networks through attending conferences, networking events and has worked to build a reputation of providing relevant training and increasing sales nationally. My Company has provided services under the Xsell brand in Melbourne, Sydney, Hobart, Cairns, Adelaide, Rockhampton, Mackay, and Darwin to a variety of national and different state based companies.
Section 58
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
In order to found a ground of opposition under section 58, the opponent must establish that:
· the respective trade marks of the Applicant and Opponent are either identical or substantially identical [2],
· the respective services of both parties are the ‘same kind of thing’ [3]
· the Opponent has the earlier claim to ownership based on authorship[4] and use of its trade mark prior to both the filing of the Application and any actual use of the Opposed Trade Mark by the Applicant[5].
[2] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375
[3] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75
[4] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 at 399
[5] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413
In 2004 the Opponent authored its trade mark and used its trade mark from around that time, prior to the filing of the Application by the Applicant.
The respective services of the parties are:
Training; computer training; business training; employment training
And
Telesales Training, Influencing Training, Time Management Training, Networking Training, Lead Generation and Business Consulting, leadership, team dynamics, Myers Briggs Profiling, Sales Profiling, Strategic Planning, and Sales Planning
In Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; (2007) 74 IPR 246; [2008] AIPC 92-272 Kenny, Gyles & Allsop JJ said of the expression ‘the same kind of thing’ (albeit in relation to goods):
Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper[6] where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
[6] (1886) 35 Ch D 160
The services which the Opponent provides are implicitly included within the encompassing word ‘training’ which commences the specification of the Applicant’s Services. In addition, I consider the ‘business training; (and) employment training’ within the Applicant’s Services to be the same kind of thing as those services in respect of which the Opponent has used its trade mark.
The question which remains is whether the trade marks of the parties, XSELL and IXSELL, are substantially identical.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [12] Windeyer J said of ‘substantial identity’:
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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.
The subsequent comments of Windeyer J concerning a visual comparison of the trade marks have been clarified by Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; (2003) 132 FCR 326; (2003) 204 ALR 90; (2003) 59 IPR 318; [2003] AIPC 91-919 at [57]:
The respondent, relying on Shell, submitted that the comparison may only be visual and that aural similarity, while relevant in considering deceptive similarity, is not relevant in determining whether two marks are substantially identical. I find nothing in s 44 of the Act that draws this distinction. ‘Identical’ is relevantly defined as ‘corresponding exactly in nature, appearance, manner, etc’ (Macquarie Dictionary, revised third edition). While Windeyer J in Shell compared the visual and not the aural features, that was in the context of the marks there under consideration and does not assist Enterprises in precluding consideration of the aural characteristics. The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ (Ex parte O'Sullivan; re Craig (1944) 44 SR (NSW) 291 at 298). It is not limited to appearance. In considering the total impression, both the visual and aural aspects are relevant. Further I note that s 7(2) of the Act specifically provides that aural representation is a use of the mark.
Mr Wallace, for the Opponent, submitted that:
The only difference is that the opposed mark has the letter “I” at the beginning, with the remainder of the mark being the whole of the Opponent’s mark. The addition of this singular first person personal pronoun does not disguise the duplication of the essential feature of the marks, namely XSELL. […] Because the total impression that emerges is virtually the same, the minimal difference is not sufficient, in our submission, to result in a conclusion other that the marks are substantially identical because the main substance of the marks, namely XSELL, is the same.
In considering both the trade marks under consideration, the impression which is formed is that of the word ‘excel’. Both of the trade marks refer to the word ‘excel’ in the same manner and use the identical ‘pun’ on the word ‘sell’. The alphabetical letter ‘I’ is, in my consideration not prominent on either a visual or aural consideration of the Trade Mark and the impression gained from the trade marks is almost entirely of the identical play on the word ‘excel’ and its similarity to the feature XSELL.
In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 the Full Bench of the High Court said at [69]:
The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark ". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
By analogy with the above, the addition of the letter I to the Opponent’s trade mark XSELL is not one which constitutes an alteration or addition which substantially affects the identity of the trade mark XSELL. The word XSELL is the phonetic equivalent of the word ‘excel’ which is the distinguishing feature by which both parties’ services offered will be identified and requested.
The Opponent has established its opposition under section 58 of the Act.
Decision
Subsection 55(1) provides:
55Decision
(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.
I refuse to register application 1399634.
Costs
Having been successful, the Opponent is entitled to its costs which I award at the official scale against the Applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
12 October 2012
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