Panthera Property Group Pty Ltd v PF Australia Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Panthera Property Group Pty Ltd to registration of trade mark application number 2071573 (class 36) – PANTHERA GROUP – in the name of PF Australia Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Hitch Advisory Pty Ltd

Applicant: Ian Tannahill of Ahearn Fox

Decision:

2022 ATMO 167

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 43, 59, and 60 considered – none established – trade mark to proceed to registration

Background

This is a decision on the opposition by Panthera Property Group Pty Ltd (‘Opponent’) to registration of the trade mark below:
Trade Mark Number:             2071573 (‘Application’)
Trade Mark:  PANTHERA GROUP
Applicant: PF Australia Pty Ltd (‘Applicant’)
Priority Date:  26 February 2020 (‘Relevant Date’)
Specification:  Class 36: Financial services; financial consultancy and advisory services; financial loan services and re-financing services, including financing of loans; finance broking services; debt appraisal services; debt collection agency services; debt recovery agency services; debt collection and recovery services; organisation of debt collections; debt consolidation, restructuring and management services; debt elimination programs; insurance services, credit rating agency services, including the provision of credit rating services; advisory and consultancy services in relation to the aforesaid services; provision of information in relation to the aforesaid services, including via a website or via online tools, including financial calculators (‘Services”)
As required by the Trade Marks Act 1995 (Cth),[1] the Application was examined, accepted for registration and subsequently advertised for opposition on 27 July 2020. The Opponent filed a Notice of Intention to Oppose on 9 September 2020 and a Statement of Grounds and Particulars (‘SGP’) on 9 October 2020. On 16 February 2021, the Applicant filed a Notice of Intention to Defend the opposition.
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The parties then filed their evidence in accordance with the timetable set out in reg 5.14. The Opponent filed evidence in support of the opposition (‘EIS’) on 18 May 2021, the Applicant filed evidence in answer on 20 August 2021 (‘EIA’) and the Opponent’s evidence in reply (‘EIR’) was lodged on 22 October 2021.
Following the conclusion of the evidence stages, both parties requested to be heard by videoconference and prior to the hearing, the Applicant filed a written summary of its submissions to be made at the hearing. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 19 September 2022. The Opponent did not file written submissions nor appear at the hearing. At the hearing, the Applicant was represented by Ian Tannahill of Ahearn Fox who relied on his written submissions and did not make any additional oral arguments. I make my decision based on the particulars in the SGP, the evidence filed by the parties, and written submissions of the Applicant.
Grounds and Onus
The SGP nominates grounds of opposition under ss 42(b), 43, 59, and 60.
The Opponent bears the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] 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).
Evidence
The following evidence was filed:
EIS
· Declaration of Chakyl Camal, Director and CEO of the Opponent, made on 18 May 2021 with Annexures CC-1 to CC-15 (‘Camal Declaration’).
EIA
· Declaration of David Pearce, CFO of the Applicant, made on 20 August 2021 with Exhibits DP-1 to DP-12 (‘Pearce Declaration’).
EIR
·Declaration of Chakyl Camal, made on 20 October 2021.
Opponent’s Evidence
In the Camal Declaration, Mr Camal attests to his position as Director and CEO of both the Opponent and a related company, Panthera Group Pty Ltd. Mr Camal refers to these companies throughout his declaration as ‘we’ and therefore, I will collectively refer to the companies as the Opponent.
Panthera Group Pty Ltd filed Australian trade mark application numbers 2082097 for the words ‘Panthera Property Group’ and 2082162 for the words ‘Panthera Group’ (together ‘Opponent’s Marks’) on 16 April 2020 in classes 35, 36, 37, 43 and 45.[4]
[4] Both of these applications lapsed in June 2022 for failure to respond to the Examiner’s first adverse report on each application.
The Opponent attests that it adopted and commenced use of the Opponent’s Marks in early 2016. The Opponent’s Marks have been continuously used since that time.
In September 2016, the Opponent acquired the domain name (‘Opponent’s Website’) and the Opponent’s Marks are used on this website, in all email signatures of staff, on staff uniforms and signage at its offices.
The Camal Declaration alleges that the Opponent is well established in the property sector as it owns and operates a number of commercial shopping centres. News articles about the Opponent’s activities in the property sector are annexed.
The Opponent contends that it is also well-known for its charitable foundation which sponsors the A-League soccer team, Sydney FC.
Mr Camal attests to a lack of use of the Trade Mark by the Applicant and alleges that this is the reason that they are not aware of any confusion between the Trade Mark and the Opponent’s Marks.
Applicant’s Evidence
Mr Pearce attests that the Applicant is a holding company in the PF group of companies (‘PF Group’). The company structure of the PF Group is shown in Exhibit DP-2 to the Pearce Declaration.
The PF Group includes the ARL group of companies which is a debt collection business and the UFG group of companies which provides financial services including loans and financial advice. ARL Collect Pty Ltd (‘ARL’) was acquired by PF Group Holdings Pty Ltd in 2018.
The Applicant owns a group of companies including Panthera Finance Pty Ltd which Mr Pearce alleges is one of Australia’s largest debt buyer and debt collection companies. The Applicant claims use of the trade mark PANTHERA FINANCE since 2010 throughout Australia in relation to these services. Website extracts obtained from the Wayback Machine from 2012 to 2020 are exhibited to the Pearce Declaration. Mr Pearce has provided an estimate of the value of debts collected in the financial years FY19/20 and FY20/21. He claims that Panthera Finance has 2.4 million individual accounts with a face value of $5 billion in debts.
United Loan Solutions Pty Ltd (‘ULS’) is also part of the PF Group. This company lends money and provides financial advice to people with a poor credit rating. Mr Pearce declares that many clients of Panthera Finance apparently go on to become clients of ULS and that it is common for companies in the PF Group to share clients or refer clients between companies in the PF Group.
The Applicant holds many of the trade marks used by companies in the PF Group. A list of these trade marks is provided in Exhibit DP-4 to the Pearce Declaration and includes registration 1843228 for the words ‘Panthera Finance’ in class 36. The Trade Mark was filed in the name of the Applicant but it was intended that it be used by other PF Group companies including ULS, Panther Finance, ARL and Credibot Pty Ltd.
In May 2020, the Applicant received a cease and desist letter from attorneys on behalf of the Opponent which required the Applicant to withdraw the Application and not use the Trade Mark (‘Opponent’s Letter’). Following receipt of this letter, the Applicant decided to use the mark PANTHERA FINANCE GROUP until the Application is registered. The services being offered under PANTHERA FINANCE GROUP are promoted on the website at pantherafinancegroup.com.au.
Discussion
Section 60
Section 60 provides:
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.

To succeed on this ground of opposition, the Opponent must establish a reputation in a trade mark in Australia at the Relevant Date such that use of the Trade Mark is likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[5]Stated another way, the reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers.[6]
[5] [2000] FCA 1335, [81].
[6] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[7]
[7] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[8]
[8] [2019] FCA 923, [83] (O’Bryan J).
The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark. 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.
In its SGP, the Opponent relies on its alleged use of the Opponent’s Marks since 2016 including on the Opponent’s Website. Under other grounds in the SGP, the Opponent claims to have a longstanding reputation in the financial services and property and funds management market and industry in Australia. Mr Camal also attests that the financial services claimed by the Applicant are identical to those offered by the Opponent and refers to the Opponent being “well established in the property sector” and owning/operating commercial shopping centres. However, as the Applicant points out, the Opponent has not clearly specified the services for which the Opponent’s Marks have been used anywhere in its evidence and its claim to a reputation in financial services is not supported by documentary evidence. Some of the Annexures to the Camal Declaration refer to the Opponent as:
·Annexure CC-12 (undated): “a property, experience and technology management and investment group” and “a vertically integrated business with core skills in retail property; development, technology, user experience and funds management”.
·Annexure CC-13 (dated 15 October 2020): “The Panthera Property Group – a private retail property owner which, with a focus on omni-channel retailing, data support for retailers and the connection to the local community, has revived centres in Maitland, Raymond Terrace and Goulburn – is now closing on its biggest purchase yet, of Warrawong Plaza in Wollongong, at a yield of about 8 per cent”.
·Annexure CC-14 (dated 26 August 2020): “Panthera Group are gearing up to unveil the next stage in its extensive refurbishment to Terrace Central. TerryWhite Chemmart and Terrace Central Surgery are the next retailers set to open inside the Raymond Terrace shopping centre, following the launch of Panthera's own food court in July, in addition to an al fresco and children's play space. … Panthera announced its intention to expand food and retail offerings after purchasing the Raymond Terrace shopping centre for $33.5 million in June 2017, the same year it also bought Maitland Riverside Plaza”.
With the exception of the mention of ‘funds management’ in Annexure CC-12, there is no indication that the Opponent operates in the financial sector but instead it appears to be involved in commercial property particularly, shopping centres. Even with respect to these services, the Opponent’s evidence lacks the necessary detail about the size of its business, service offerings under the Opponent’s Marks and revenue generated. No details of advertising expenditure are provided. The only reference to any promotion of the Opponent’s Marks is sponsorship by the Opponent’s foundation of Sydney FC but there is no further information about the history or value of this sponsorship nor illustrations showing use of the Opponent’s Marks other than a reference to the Opponent on the Football Network website.[9]
[9] Camal Declaration, Annexure CC-15.
In the absence of any details about the Opponent’s nature and extent of its use of the Opponent’s Marks, it is not possible to conclude that the Opponent had a reputation in the Opponent’s Marks at the Relevant Date. Accordingly, the s 60 ground of opposition is unsuccessful.
Section 42(b)
Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law.
The Opponent alleges in its SGP that use of the Trade Mark will breach ss 18, 21 and 34 of the Australia Consumer Law[10] (‘ACL’).
[10] Competition and Consumer Act 2010 (Cth), sch 2.
The claim that use of the Trade Mark would constitute misleading or deceptive conduct under the ACL relies on the Opponent establishing a reputation in the Opponent’s Marks. If there is no reputation, there can be no mistaken belief or assumption on the part of the consumer caused by use of the Trade Mark, and therefore such use cannot be misleading or deceptive. I have already found that the Opponent has failed to establish a reputation under s 60 and in the absence of evidence of a sufficient reputation in the Opponent’s Marks, I am not satisfied that use of the Trade Mark will constitute misleading or deceptive conduct in breach of s 18 of the ACL.
Section 21 ACL provides that parties must not engage in conduct that is unconscionable in trade or commerce in connection with the supply of goods or services. To be unconscionable, conduct must be more than simply unfair.
The Applicant claims use of the mark PANTHERA FINANCE for financial services since 2010 and has held a registration for this mark since 9 May 2017. Examples of the Applicant’s use of PANTHERA FINANCE on its website at since 2012 in connection with debt recovery services have been provided.
Given the Applicant’s use of PANTHERA FINANCE for financial services since before the adoption of the Opponent’s Marks for retail property ownership and management services, I do not consider that the adoption of the mark PANTHERA GROUP for financial services can be regarded as unconscionable.
Section 34 of the ACL prohibits conduct which is misleading as to the nature, characteristics, suitability for their purpose or quantity of any services. The Opponent alleges that the Trade Mark is misleading as to the nature or characteristics of the services of the Applicant. I do not see how use of the Trade Mark would contravene this section.
I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law. The s 42(b) ground of opposition is unsuccessful.
Section 43
Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
A ‘connotation’, in the context of section 43, is a secondary meaning implied by the trade mark.[11]
[11] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).
In support of this ground, in the SGP, the Opponent claims that use of the Trade Mark is likely to deceive and cause confusion as a result of the Opponent’s reputation in the financial services and property and funds management industries.
The ‘connotation’ must be inherent in the trade mark itself. The connotation must arise from the Trade Mark and not from any comparison with another trade mark.[12] As Spender J noted in Winton Shire Council v Lomas:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[13]
[12] Ibid; Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J).
[13] [2002] FCA 288, [19].
Even if the Opponent had been successful in establishing a reputation in the Opponent’s Marks, this is not relevant to the s 43 ground of opposition.
I am not satisfied that the Trade Mark has an inherent connotation which is likely to cause confusion or deception. The s 43 ground is unsuccessful.
Section 59
Section 59 provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.
It is well established that applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[14] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[15] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[16]
[14] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J) (‘Suyen’).
[15] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).
[16] Suyen (n 14) [190].
In the SGP, the Opponent claims that “the Applicant has not used the words ‘Panthera Group’ in trade or commerce at any point prior to or following the filing of its Application”. In support of this ground, the Opponent has undertaken various enquiries into the activities of the Applicant which are detailed in its evidence and which did not disclose any use of the Trade Mark.
Mr Pearce has responded to the Opponent’s evidence by explaining that due to the threats contained in the Opponent’s Letter, the Applicant decided to delay using the Trade Mark and instead use PANTHERA FINANCE GROUP temporarily until the Application is registered. I am satisfied with this explanation. It is reasonable for the Applicant to defer its use of the Trade Mark in the face of the Opponent’s Letter and instead use PANTHERA FINANCE GROUP in the meantime given that the Applicant had already used PANTHERA FINANCE for some years prior to the Relevant Date.
I am satisfied that the Applicant had at the Relevant Date an intention to use the Trade Mark. Accordingly, the s 59 ground of opposition is not established.
Decision
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.

The Opponent has not established a ground of opposition. Accordingly, trade mark application number 2071573 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
The Applicant has requested an award of costs and hence I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.
Tracey Berger

Hearing Officer
Delegate of the Registrar of Trade Marks
26 September 2022

[2022] ATMO 167

26 September 2022

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Costs