Penta Hotel Holdings Ltd v Tomas Floden [Sec=Unclassified]

[2009] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Penta Hotel Holdings Ltd to protection of International Registrations Designating Australia 1189553 (classes 28 and 41) (International Registration 927779) - PENTAGO - in the name of Tomas Floden.

Delegate:	Terry Williams
Representation:	Opponent:  Peter Hallett, Watermark, patent attorneys Holder: No Australian representation, no appearance
Decision:	2009 ATMO 76 S52 opposition (IRDA).  S 44 not established, protection to be extended.

Background

1. Thomas Floden (“the holder”) has requested protection in Australia for the following international registration designating Australia (“the IRDA”).  The international registration number is 927779 and the IRDA has been given the Australian application number 1189553.  It has a priority date of 14 Feb 2007. 

2. The IRDA has been advertised as having been accepted for protection in respect of goods and services as follows:

   Class 28:  Games and playthings

   Class 41:  Education; providing of training; entertainment; sporting and cultural activities.

3. Protection of the trade mark in Australia is opposed by Penta Hotel Holdings Ltd (“the opponent”).

   Madrid Protocol – Opposition framework

4. Section 189A of the Trade Marks Act 1995 (“the Act”) empowers the more detailed workings of the regulations giving effect to Australia’s obligations under the Madrid Protocol.  Regulation 17A of the Trade Mark Regulations 1995 is the most obvious consequence of these. Reg 17A.29 provides for opposition to the extension of protection in Australia to a trade mark that is the subject of the IRDA. Regulation 17A.31 makes provision for the importation of the grounds of opposition set out in the Act. These include sections 39 and 41 to 44 (by regs 17A.31(1) and 17A.28(1)), and sections 58 to 61 (by reg 17A.31(3)). A ground analogous to s 62 is imported by reg 17A.31(4).

5. Further realignment of the terminology of the Act comes from reg 17A.28(2) and 17A.31(3):

   Where the relevant section refers to an “application” an IRDA is to be understood; and
   Where an “applicant” is referred to, the holder of the IRDA is to be understood.

6. Finally, regulation 17A.34(1) provides:

   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

7. Within that broad framework, familiar parts of the Trade Mark Regulations are imported by reg 17A.33, which provides:

   (1) The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.
   (2) Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.
   (3) Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply unless, within 3 months after the notice of opposition is filed, the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

   Evidence and hearing

8. The opponent filed evidence in support of its opposition.  However, as the holder has not notified the Registrar of Trade Marks of an address for service in Australia, that evidence has not been served upon it.  The opponent requested a hearing and I was assigned to hear and decide the matter, under delegation from the registrar.  At the hearing, the opponent was represented by Peter Hallett, a trade mark attorney of the attorney firm of Watermark, patent attorneys.

   Grounds considered

9. The opponent pursued only the s 44 ground of opposition.  Section 44(1) provides, in respect of relevant (class 28) goods:

   Identical etc. trade marks

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10. (For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. )
   Note 2:  For similar goods see subsection 14(1). (Similar goods are either the same goods, or goods of the same description)
   Note 3:  For priority date see section 12.

10. Section 44(2) is analogous but provides a ground of opposition to protection in respect of services if the opponent is able to point to an earlier registration or application in respect of "similar services or closely related goods”.  A relevant footnote to s 44(2) refers to s 14(2), which provides that “similar services” are either the same services or services of the same description.

11. The opponent is the owner of protected international trade mark (PITM)[1] 1185697, for the word PENTA.  This registration has a priority date of 24 July 2006 and the relevant services are as follows:

    Class 35:  Advertising; business management; business administration; advertising and marketing services; promotion services; loyalty scheme services (consumer loyalty programs); compilation, systematization and update of data in computer databases
    Class 41:  Entertainment, services regarding recreational activities and amusement; arranging, organization, equipping and conducting of exhibitions (cultural), conferences, congresses, seminars, symposiums and workshops (education); providing facilities and equipment for exhibitions, conferences, congresses, seminars, symposiums and workshops; provision of hospitality services (entertainment)
    

    [1] A PITM is equivalent to a registered trade mark for s 44 purposes, in view of the terms of reg 17A.28(c) and (d).

    Class 43:  Hotel services; provision of temporary accommodation; hotel, motel and resort hotel accommodation services; providing of food and drink; restaurant, bar and catering services; provision of facilities for meetings, conferences, exhibitions, congresses, seminars, symposiums and workshops; reservation services for hotel accommodation and other accommodation; food and beverage preparation services.

12. Mr Hallett began his submissions by noting the line of authority on deceptive similarity.  French J, in Registrar of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50, adapted earlier case law[2] to the terms of the current legislation.  Ultimately, protection of the holder’s trade mark must proceed unless I am satisfied, on the balance of probabilities, that s 44 has been triggered.  In his written submissions, Mr Hallett put the matter as follows:

    •     The opponent’s mark PENTA is fully contained within the Holder’s mark PENTAGO.
    • It is well established that the first part of a mark is the most important for the purposes of comparison (see for example “Tripcastroid” case, 42 RPC 264 at page 279, per Sargant LJ).
    •     The impression left in the mind by both marks is the idea “PENTA”.
    •     The word PENTA is not descriptive or laudatory in the relevant context.  Whilst the prefix PENTA is derived from the Greek word meaning “five”, the opponent’s mark does not convey any meaningful information whatsoever as to the nature of the opponent’s services, and the holder’s mark does not convey any meaningful information as to the nature or the holder’s goods/services.   The mark PENTA is distinctive in the context of the relevant goods and services, and this increases the likelihood of confusion between PENTA and PENTAGO.  
    •     The distinctiveness of the opponent’s mark is highlighted by the fact that apart from the opponent’s marks and the holder’s mark, there is only one other mark on the Australian Trade Marks Register in class 41 comprising or having the prefix PENTA, being PENTAGON MANAGEMENT covering occupational health and safety services.
    

    [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91CLR 592 at 594-5

    •     The only difference between the two marks is that the holder’s mark has the suffix GO.  The word GO in the holder’s mark is not particularly distinctive and adds little to the “idea” of the mark PENTA.  

13. At the hearing, Mr Hallett expanded on this, noting that the relevant goods and services would ordinarily be inexpensive, and that at least the goods specified in the IRDA would be likely to be the subject of impulse purchases, without a great deal of consideration of the details of the trade marks in question.  He also stressed that, particularly in a context where the holder’s and the opponent’s trade marks were being used on identical services, the main impression left on the consumer would be of the idea “penta”.  He stressed, both in his oral and written submissions, that in assessing the impression created by the mark, it is important to consider the “idea”  of the mark , being “the idea which the mark will naturally suggest to the mind of one who sees it”: Jafferjee v Scarlett (1937) 57 CLR 115, at 121, per Latham CJ (with whom McTiernan J agreed), quoted with approval by the Full Federal Court in Crazy Ron’s Communications v Mobileworld Communications Pty Ltd [2004] FCAFC 196. Finally, he noted that, when applied to goods, I should make due allowance for the possibility that the holder’s goods might be displayed with last two letters of the trade mark PENTAGO obscured.

14. He went on to make submissions about the relationship between the services specified in the opponent’s registration and the goods and services set out in the IRDA.  However, this is a case where I do not need to consider the latter issue particularly deeply.  In Registrar of Trade Marks v Woolworths, (1999) FCA 1020, French J said (Italics added):

    The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

    "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

    This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is "likely" to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of "closely related" goods and services.

    40 In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

15. I am satisfied that this is a case where the question of deceptive similarity can be decided primarily by the limited degree of resemblance between PENTA and PENTAGO.  The use of the holder’s trade mark on any of the services covered by the IRDA will not result in deception or confusion, leaving aside the question of whether those services are the same or of the same description as the services set out in the opponent’s registration.  A similar conclusion applies in respect of the goods set out in the IRDA, assuming that I was to accept the proposition that the class 28 goods are closely related to the entertainment services (or any other of the services) in the opponent’s registration. 

16. The word PENTAGO, in such contexts, is an unusual construction, clearly a made-up or coined word with no apparent meaning.  Mr Hallett’s case is essentially that, “The only difference between the two marks is that the holder’s mark has the suffix GO.  The word GO in the holder’s mark is not particularly distinctive and adds little to the “idea” of the mark PENTA.”  However, there is no requirement that the element of difference between the competing marks be “particularly distinctive”.  Rather, the onus in on the opponent to satisfy me that there is a reasonable likelihood of deception or confusion arising.  I cannot accept that, as part of the trade mark PENTAGO, when used in relation to either the goods or the services specified in the IRDA, the element PENTA emerges with sufficient force as to give rise to the necessary likelihood.  I accept Mr Hallett’s proposition that PENTA is, of itself, a prefix derived from Greek.  However, it loses its force within the coined word PENTAGO.  The question comes down, ultimately, to one of first impression, based on the fact that the syllable “GO” makes a quite obvious difference to the visual bulk of the more familiar element PENTA.  Visually, therefore, the concluding syllable cannot be discounted to the extent that Mr Hallett argues is appropriate.  I note his argument that the end syllable of the PENTAGO trade mark might be obscured when the goods are displayed.  However, that possibility is not particularly weighty when the goods are, typically, available for self-service selection by the consumer.

17. Verbally, the holder’s trade mark might well be pronounced “PENTA-GO”, rather than as “PEN-TAYGO”.  Even so, while the opponent’s case could not be described as fanciful, Mr Hallett has not convinced me that there is sufficient likelihood of either verbal, any more than visual, confusion between the trade marks.

18. Mr Hallett argued that the IRDA was liable to be refused more readily as the holder has not served any evidence or taken any part in the opposition.  In not electing to appear or respond, “in any way to the opposition proceedings the applicant renders its application more susceptible to refusal, since it is not appropriate that the Registrar act as an advocate on [the applicant's] behalf”:  Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596 at 598. He noted that this proposition was recently quoted by Hearing Officer Thompson in Sportsgirl Pty Limited v Filip Sali [2007] ATMO 71. However, I think the comments of Chief Assistant Registrar Farquhar in Camelot Design should be applied cautiously under the current Act.  The onus now is on an opponent to establish, to at least some extent, a ground of opposition.  If that is done, perhaps the registrar will thereafter be less inclined to consider allowing an applicant or holder who has ignored proceedings an opportunity to amend its application.  But until that point is reached, an applicant or holder who ignores proceedings does not thereby reduce the evidentiary onus that is on an opponent.  Such an applicant or holder has, otherwise, done nothing more than forfeit its opportunity to bring in evidence that might have mitigated an adverse finding.  I note that Mr Thompson himself said something similar, both in Sportsgirl and in Glaxo Wellcome Australia Ltd v Bukwang Pharm Co. Ltd, 2008 ATMO 12.

19. That being said, the opponent has not established a ground of opposition.

    Conclusion

20. My decision is to extend protection in Australia in respect of all of the goods and services listed in this IRDA, Australian application number 1189553, one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until either a court so orders or the appeal has been discontinued.  If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with regulation 17A.34(2).

21. The holder’s costs that might perhaps be recoverable on a strict application of the scale are insignificant.  Given that the holder has taken no apparent part in the opposition process thus far, I therefore make no award.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    30 September 2009