Peet Limited v Feldbay Pty Ltd

[2012] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by Peet Limited to registration of trade mark application 1381344(36) - peEx THE PROPERTY EQUITY EXCHANGE - filed in the name of Feldbay Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: David Stewart of Counsel instructed by Wray & Associates.

Applicant: No appearance, written submissions.

Decision:

2012 ATMO 87

s52 opposition - s60 concurrent use of trade marks likely to deceive or confuse because of reputation and modes of use of Opponent’s trade mark. Registration refused but will be allowed if services are amended.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark (‘the Opposed Trade Mark’) details of which appear below:

Application No: 1381344

Priority Date:  2 September 2010

Owner:  Feldbay Pty Ltd

Services:Class 36: Insurance, financial affairs monetary affairs, realestate affairs [sic]

Trade Mark:  

1. In this decision, I will refer to the above as ‘the Application’, Feldbay Pty Ltd as ‘the Applicant’, the above services as ‘the Owner’s Services’ and the trade mark as ‘the Opposed Trade Mark’.

2. The Application was examined in compliance with section 31 of the Act and advertised for possible registration on 13 January 2011 in the Australian Official Journal of Trade Marks. On 18 May 2011, after seeking and receiving an extension of time in which to do so, Peet Limited, (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Opposed Trade Mark. The Notice is in broad terms and includes the ground under section 60 of the Act under which I will decide this matter. For the sake of completeness, I record that the other grounds included in the Notice have not been established and that in any appeal from these reasons the Court will consider the matter de novo and, accordingly, any ground may be argued.

3. The Opponent has served and filed evidence in support of its opposition; the Applicant has not served and filed evidence in answer.

4. The matter came before me to be heard as a delegate of the Registrar of Trade Marks in Perth on 30 August 2012.  Mr David Stewart of Counsel instructed by Wray & Associates of Perth represented the Opponent.  The Applicant did not appear but put in written submissions by Mr Kent R Davis, a Director of AQAPEX Australia Ltd who I surmise must have some relationship with the Owner.

Onus

1. 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] FCA 81; (2012) 94 IPR 551 per Dodds-Streeton J at [13].

The Evidence

1. The evidence in support of the opposition is a statutory declaration by Joanne Arthrell who is the Brand and State Marketing Manager of the Opponent.  Ms Arthrell states that the Opponent has acquired a significant reputation in the trade mark PEET (‘the Opponent’s Trade Mark’) through the use of that trade mark and associated trade marks from 1895 to the present day in relation to real estate and property affairs.  Ms Arthrell asserts that the Opponent’s customers, employees, shareholders and anyone who comes into contact with the Opponent refers to it by the shortened name ‘PEET’.

2. Ms Arthrell refers to a number of trade marks which are registered in the name of the Opponent in relation to real estate and related goods and services:

Trade Mark No	Trade Mark	Classes	Priority Date
652300	(Composite Series)	36	3 February 1995
1063663	PEET AND COMPANY	16, 35, 36, 37, 42	7 July 2005
1063700	PEET LIFESTYLE VILLAGES	35, 36, 41, 43	7 July 2005
1063747	PEET	16, 35, 36, 37, 42	7 July 2005
1116967	PEET ESTATES	16, 35, 36, 37, 42	2 June 2006
1116968	PEET LIVING	16, 35, 36, 37, 42	2 June 2006
1116969	PEET COMMERCIAL	16, 35, 36, 37, 42	2 June 2006
1116970	PEET RETIREMENT	16, 35, 36, 37, 42	2 June 2006
1116971	PEET FUNDS	16, 35, 36, 37, 42	2 June 2006
1116972	PEET SYNDICATES	16, 35, 36, 37, 42	2 June 2006
1116974	16, 35, 36, 37, 42	2 June 2006
1116975	16, 35, 36, 37, 42	2 June 2006
1116976	16, 35, 36, 37, 42	2 June 2006
1116977	16, 35, 36, 37, 42	2 June 2006
1116991	16, 35, 36, 37, 42	2 June 2006
1116992	16, 35, 36, 37, 42	2 June 2006
1161606	PEET SENIOR LIVING	16, 35, 36, 37, 42	16 February 2007
1161607	16, 35, 36, 37, 42	16 February 2007
1336103	35, 36, 37	10 December 2009

1. Ms Arthrell states:

   The Opponent is a leading national property group that has been operating successfully in Australia for more than 115 years and has the third largest landbank of any ASX listed property group.

   The Opponent is a listed residential land developer that manages a fund portfolio and a large number of syndicates which cater for a range of investors.

   The Opponent acquires, manages, develops, markets and sells land estates and provides associated services under the “PEET” brand. Property acquisitions are made using investors’ equity (syndicates and joint venture projects) or the Opponent’s own equity (owned projects).

   The Opponent guides the development of land through all stages of zoning, relevant approvals, subdivision, development, marketing and sales. Its core activities include:

   a)        The development of high quality residential land estates, with 70 owned, syndicated and joint venture estates across four States. This includes residential housing development, with projects in medium-density housing and low-rise apartments, over 55s communities and commercial development;

   b)        Land syndication — the Opponent is one of the largest and most successful residential land syndicators in Australia; and

   c)        Funds management — the Opponent’s Funds Management division invests in industrial, retail and commercial properties around Australia, providing investors with income producing investment opportunities.

2. Ms Arthrell provides a detailed history of the Opponent and its predecessors (or antecedents) in business which stems from a real estate agency trading as ‘Peet & Bastow’ in Melbourne in the early 1890s, that firm’s expansion to Perth in 1892, and the move of James Peet from Melbourne to Perth in 1895 to set up a real estate business called ‘Peet & Co Ltd’ in an office in William Street, Perth.  Ms Arthrell states:

   James Peet marketed land subdivisions around Perth including Jolimont Estate in Subiaco and City View in South Perth (both in 1896). Exhibited to my Statutory Declaration and marked as “JA-4” is a copy of a poster advertising Jolimont Estate with the “PEET” brand prominently displayed at the bottom of the poster.

   James Peet also marketed a subdivision of the southern end of Garden Island which was later compulsorily acquired by the Government in 1915 as a future Naval Base. Exhibited to my Statutory Declaration and marked as “JA-5” are copies of three posters advertising land for sale at Garden Island. The name “PEET” is prominently displayed on two of these posters as the agents or auctioneers for these properties.

3. I understand that where Ms Arthrell refers to James Peet after 1905, above, she in fact intends to refer to ‘Peet & Co Ltd’ (and vice versa for references prior to 1905).  In this regard Ms Arthrell continues:

   James Peet incorporated Peet & Co. Ltd (the Opponent) in 1905 as an Australian Public Company, limited by shares. The Opponent has traded as a company continuously since then. Peet & Co Ltd subsequently changed its name to Peet Limited. Exhibited to my Statutory Declaration and marked as “JA-6” is a copy of an Australian Securities and Investments Commission (ASIC) National Names Index for the Opponent dated 6 July 2011 which shows that the previous company name was Peet & Company Limited.

   Between 1903 and 1921 the Opponent marketed a series of real estate subdivisions. The earliest of these was for Roleystone Estate in 1903. Exhibited to my Statutory Declaration and marked as “JA-7” is a copy of two posters used to market the Roleystone Estate subdivision. Both posters have the “PEET” brand prominently displayed. The Roleystone district still has several road names which are connected to the Peet family which include Urch Road, Hall Road, Raeburn Road and Holden Road.

4. Ms Arthrell details the growth of the Opponent and its operations through to the 1990s and continues:

   From the mid-1980s until the early 1990s the Opponent developed the company into the largest franchised suburban real estate group in Western Australia.

   In 1993 the Opponent moved into specialised services including land syndication, project management and marketing of land estates.

   Since this time the Opponent has developed some of Perth’s best-known estates including St Michel, St Clair, St Paul’s, Village Green, Bramley Waters, Eaton Garden Estate, Atwell Waters, Darling Vista, Alkimos, The Sanctuary (Woodvale), and Drummond Cove.

   In 1996, Anthony Lennon Jr. joined the Board of Directors, and helped the Opponent to expand operations into Victoria in 1997. This expansion included the purchase of St Johns Wood Estate in Berwick and the development of Panorama Estate.

   During the year ended 30 June 2001, the Opponent established a permanent office in Melbourne. Completed settlements of sales of land in projects under management in this year in Western Australia and Victoria totalled in excess of $REDACTED. In 2002, this increased to $REDACTED.

   The Opponent expanded the company into Queensland in 2002 by purchasing and marketing Warner Lakes and also expanded its operations into residential and commercial development. The Opponent opened an office in Queensland in 2003.

   In 2003, the Opponent arranged the syndication of its first land acquisition in Queensland in the Shire of Pine Rivers. Completed settlements of sales of land in projects under management in this year in Western Australia and Victoria totalled approximately $REDACTED.

   By 2004, the Opponent was in control of 13 Estates in Victoria with in excess of 10,500 Potential Lots.

   On 5 August 2004, the Opponent was listed on the Australia Securities Exchange (ASX). Exhibited to my Statutory Declaration and marked as “JA-11” is a copy of a company extract of the Opponent on the ASX which shows the official listing date of the Opponent on 5 August 2004 in the Real Estate Industry Group. The company extract describes the Opponent’s principal activities as “The development of broadacre residential land via syndicated, owned or joint venture projects.”

   The Opponent purchased its first estate in New South Wales, Pickett’s Valley, near Avoca Beach on the Central Coast in 2004.

   The Opponent changed its name from Peet & Co. Ltd to Peet Limited on 7 July 2006 to reflect the Opponent’s 21st century outlook, whilst reinforcing and maintaining the long-established equity and reputation in the “PEET” brand.

5. Ms Arthrell states that, at the time of making her declaration, the Opponent had approximately 158 employees, had 70 owned, syndicated and joint venture land developments in Australia, had 34,200 owned syndicated and joint venture lots in Australia, had 24 syndicates and 16,500 syndicated lots and operated in Western Australia, Victoria, New South Wales and Queensland.

6. Ms Arthrell provides details of annual consolidated revenue attributable to members of the Opponent from the year 2000 to 2010, inclusive, and states:

   The Opponent is the largest listed specialist land developer in Australia and has the third largest landbank of ASX listing companies behind Lend Lease (105,000 lots) and Stockland (65,000 lots). As of 30 June 2011, the Opponent had 50,600 lots with an estimated on-completion value of $9.1 billion.

7. Ms Arthrell also provides details of the Opponent’s advertising and promotional activities under its trade mark PEET.  These are considerable and confidentiality is claimed by the Opponent for some of the details.  The advertising covers print media, radio advertisements, television advertisements, billboard advertising and online advertising.  The Opponent’s national print advertising has appeared in the Australian, the Australian Financial Review and the Business Review Weekly.  The print advertising as occurred also at a State level in, for example in Western Australia in The West Australian, The Sunday Times, Business News, Wanneroo Weekender, Wanneroo Times, Joondalup Wanneroo Times, North Coast Times, Sound Telegraph, Mandurah Coastal Times, Mandurah Mail, Community Newspaper Group Limited, Canning Examiner, Canning Times, Weekend Courier — Rockingham, Melville Times and Comment News.

8. Similar or equivalent advertising has been undertaken by the Opponent in print media in Victoria, Queensland and New South Wales although in the latter State the print advertising is markedly less extensive.

9. The Opponent has also advertised on television in prime advertising position during popular sporting fixtures and programmes such as Master-Chef with the PEET trade mark both displayed and spoken.

10. The Opponent has also advertised extensively on radio and provides a summary of its advertising and samples of radio scripts.  Significantly, phrases such as “Peet’s land packages” occur in these scripts.

11. The Opponent also advertises extensively on-line through its own and third party websites.

12. Additionally, the Opponent advertises its trade mark on billboard signage at its developments and advertised on billboards at the AFL fixtures at the Melbourne Cricket Ground and Paterson’s Stadium in Perth during the 2010 season.

13. The Opponent also sponsors a range of not-for-profit community based organisations and activities.  Ms Arkrell states that these are those with a focus on:

    a)        Environmental sustainability;

    b)        Family and community-based activities;

    c)        Educational opportunities;

    d)        Youth development programs;

    e)        Sports; and

    f)         The arts.

14. Sponsored activities include National Tree Day, National Recycling Week, Community Tree Planting Program, a Water Saving Garden Competion, Sustainable Homes, free outdoor cinemas in the parks, competition for best Christmas decorated homes, amateur or junior sports clubs and so forth.

15. Ms Arthrell states that the Opponent has also produced a range of merchandise to promote its activities.  These include:

    a)Polo shirts with the ‘PEET’ brand prominently displayed on the top left corner;

    b)        Hats with ‘PEET’ written on them in large white block letters;

    c)        Lollies with ‘PEET’ written on them;

    d)Stubby holders with ‘PEET’ and written on them;

    e)        Thermos® flasks with ‘PEET’ and written on them;

    f)Umbrellas with the ‘PEET’ brand written in large white block letters;

    g)        Waterbottles with ‘PEET’ and written on them;

    h)        Keyrings with ‘PEET’ and engraved on them;

    i)         Balloons with ‘PEET’ written on them in large navy block letters;

    j)Rainjackets with the ‘PEET’ brand prominently displayed on the top left corner;

    k)Notepads with the ‘PEET’ brand written on the bottom right hand corner;

    I)         Pens with ‘PEET’ and written on them

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. In order to found the ground under section 60 the Opponent must establish the Opponent’s Trade Mark has a reputation and because of that reputation the use of the Opposed Trade Mark by the Applicant in relation to the Owner’s Services would be likely to deceive or cause confusion.

3. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, (‘McCormick’) Kenny J said, at [81]-[82]:

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

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

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

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

4. Her Honour went on to quote from my decision in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (‘Hugo Boss’) at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the `esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

5. Kenny J continued at [86] of McCormick:

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. When considered only from the point of view of revenue from sales and expenditure on advertising in relation to the Opponent’s Trade Mark, there is no doubt that the trade mark has a considerable reputation in relation to real estate sales and property development amongst the relevant Australian public.  When the wider aspects of what is involved in ‘reputation’ which I discussed in Hugo Boss are considered, this reputation is, in my consideration, enhanced by the Opponent’s advertising at such events as AFL fixtures and its sponsorships of various worthy community initiatives under the trade mark PEET.

2. Mr Davis, in his submissions on behalf of the Applicant, states:

   For your information, although represented in the same class, peEx is specifically involved in the market trade of residential derivative products. They will be quoted on the ASX. Conversely, PEET is a listed property developer (of physical property). That is all I can contribute. Ultimately, it is up to IP Australia to determine whether or not our trade mark infringes upon the PEET Ltd trade mark based on the assessment criteria used by IP Australia. The filed opposition to our trade mark begs the question as to the validity of the hypothetical opposition to the ‘SHELL’ trade mark using the trade mark ‘SHULL’. Both trademarks have 5 letters, four of which are the same yet the representations are completely different. I regard the comparison of PEET and PEEX to be sufficiently discernible to not be mistakingly 9sic0 construed as being the same trade mark. That in my view is the primary issue that must be determined by IP Australia and/or its appointed mediator.

   I clearly believe that PEEX does not infringe against [the] PEET trade mark but that is only my opinion.

3. 31.  When considering whether use of the Opposed Trade Mark is likely to deceive or cause confusion, I am to consider the notional use of the Opposed Trade Mark to the extent of the Owner’s Services on the one hand and the services in respect of which the Opponent’s Trade Mark has its reputation on the other hand.  Thus while the Owner uses or proposes to use the Opposed Trade Mark on or in relation to the ‘market trade of residential derivative products’, those are not the only services I am to consider here.  The Owner’s Services are ‘Insurance, financial affairs, monetary affairs, real estate affairs’.  French J stated in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411, (‘Woolworths’) at [88] (albeit in relation to section 44 of the Act):

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

4. Similar factors apply under section 60 of the Act and may be stated as follows: considering the reputation of the Opponent’s Trade Mark which has arisen in relation to the particular services of the Opponent, is the delegate satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses its mark normally and fairly in respect of all of the Owner’s Services covered by the proposed registration?

5. 33.  Further, it is not necessary that the services of the parties be the same or similar services – it is only necessary to determine whether the concurrent use of the Opposed Trade Mark in relation to (any of) the Owner’s Services would deceive or cause confusion because of the reputation of the Opponent’s Trade Mark in relation to the services that the Opponent is known to perform or provide.  Here, of course, there is a commonality of services in relation to at least the ‘real estate services’ for which the Owner seeks registration.

6. The process of deciding the likelihood of deception or confusion under section 60 is moderated by consideration akin to those stated in Woolworths [1999] FCAFC 1020; by French J at [50]:[1]

   [1] Reference to ‘deceptively similar trade marks’ has been redacted from the quotation.

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply […] under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

7. Section 7 of the Act relevantly provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

   (2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

8. Mr Stewart submitted that the Opposed Trade Mark is most likely to be pronounced PEEX (as if it were spelt ‘peaks) and that if the Opposed Trade Mark were to be used in advertisements on television or radio, people listening to broadcasts were likely to be confused because of the Opposed Trade Mark’s strong aural similarity to both the trade mark PEET and its possessive form ‘Peet’s’, which is frequently used in the Opponent’s television and radio advertisements.  While I had some reservations about accepting this argument, because the Opposed Trade Mark is rendered ‘peEx’ on the Application, I note that Mr Davis in his written submissions refers to the Opposed Trade Mark as being PEEX.

9. There is also, in my experience, some informality in referring to the names of companies so that, for example, LJ Hooker becomes ‘Hookers’ or as Mr Stewart observed at the hearing, Wray & Associates becomes ‘Wrays’.

10. The words ‘Peet’s’ and ‘Peex’ are virtually indistinguishable aurally and the Opponent’s evidence establishes that it makes aural use of its trade mark in radio advertising. It has also used the word ‘Peet’ in its possessive form. It is, of course, not a requirement to found a ground under section 60 that the Opponent establishes that the trade marks under consideration are substantially identical or deceptively similar, but here the trade marks, when used in this manner, share an aural identity: see 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 per Bennett J at [58]:[2]

    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.

    [2] See also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; [2010] AIPC 92-381; (2010) 86 IPR 224; (2010) 84 ALJR 352.

11. I thus conclude that if the Owner uses its trade mark to the extent of the registration it seeks, confusion between the Opposed Trade Mark and the trade mark PEET is likely.

12. While the concepts ‘deceive’ and ‘cause confusion’ are often considered as one, the word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’  In Pioneer Hi-Bred  Corn  Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

13. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

    In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

14. And Lord Denning observed in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265 at page 274:

    Secondly, “to deceive” is one thing. To “cause confusion” is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

15. It may be true that the confusion in the minds of the public would not eventuate in mistaken purchase; however, as noted by the Court in Nettlefold, Advertising Pty Ltd v Nettlefold Signs Pty Ltd [I998] FCA 1704 (1997) 38 IPR 495 per Heerey J at 501:

    A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack’s Application (1940) 58 RPC 9 at 103-104.

16. The Opponent has established the opposition under section 60 of the Act.

Decision

1. 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.

2. I refuse to register application 1381344.

3. However, I note Mr Davis’s submission that the services that the Owner performs or intends to perform under the proposed trade mark are ‘the market trade of residential derivative products’.  It is unlikely, in my estimation, that these would be advertised on television or radio in the same way as are real estate sales and property development services, that those services are somewhat removed from real estate and land development services, and that consequently there would be no real likelihood of aural confusion or deception in relation to those limited services.  And, although the Opponent manages real estate investment funds, these are not shown in the evidence to be advertised or promoted on radio or television.

4. The Applicant has not argued that it requires a broader specification other than one which will reflect the services that it actually performs or intends to perform.  The specification of services is also broad enough in my consideration to accommodate an appropriate amendment without extending the scope of the Application.

5. Thus, while registration of the Application as it now stands is refused, if the Applicant makes application to amend its specification of services to ‘the market trade of residential derivative products’ within two weeks of the date of this decision, the Application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal by either party before the elapse of that month, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application be in accordance with the Court’s order or direction.

Costs

1. Having been successful in this matter the Opponent is entitled to its costs which I award against the Applicant at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

12 October 2013