Percepta International Limited v Project Management Institute Inc

[2010] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Percepta International Limited to registration of trade mark application 1248599(9, 16) - OPM3 - filed in the name of Project Management Institute, Inc.

Delegate:	Alison Windsor
Representation:	Opponent: Not represented but provided written submissions Applicant:Sean McManis of Shelston IP
Decision:	2010 ATMO 113 S52 opposition – single ground under section 41 pursued – ground not established – application to proceed to registration – costs awarded against opponent.

Background

1. On 25 June 2008 Project Management Institute Inc (‘the applicant’ or ‘PMI’) filed an application for a trade mark which was given the number 1248599.  The trade mark applied for is the letter and number combination OPM3, and the goods and classes for which registration is sought are shown here: 

   ·    Class 9:  CD-ROM based computer programs and software used for determining the project management capabilities of individual businesses and government organisations; electronic publications including CD-ROMs and printed materials sold as a kit therewith; electronic or multimedia publications; publications sold in an electronic format and publications provided or distributed in a web-accessible database

   ·    Class 16:  Paper, cardboard and goods made from these materials, excluding Xuan paper; printed matter; instructional and teaching material including publications and printed matter in the field of professional development, vocational education and training, testing and examination, qualification assessment and competency assessment 

2. The application was examined as is required by section 31 of the Trade Marks Act 1995 (‘the Act’).  No substantive grounds for rejection were identified, and the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 21 May 2009.

3. On 19 August 2009 Percepta International Ltd (‘the opponent’) filed notice of opposition to registration of the application.  The opponent’s evidence in support of the opposition was served and filed on 19 November 2009.  The applicant served and filed evidence in answer on 19 February 2010, and on 19 May 2010 the opponent served and filed evidence in reply.  The applicant then asked to be heard.

4. I was delegated by the Registrar of Trade Marks to hear the matter in Sydney on 16 September 2010.  Sean McManis of Shelston IP appeared for the applicant.  The opponent elected not to appear, but provided written submissions a few days prior to the hearing.

   Grounds of opposition and onus

5. The notice of opposition nominated five grounds of opposition, but the opponent’s written submissions only pursued the ground of opposition based on section 41 of the Act. The opponent stated at the end of its submissions that “we reserve our rights regarding the remaining grounds of opposition being sections 42, 43, 62 and 62A”. However, with the issue of this decision the opposition process, as far as the Registrar is concerned, is complete. The opponent has only provided submissions in respect of section 41, and that is the only section which I will consider. For the sake of completeness I decide that the remaining grounds included in the notice of opposition have not been established.

6. In order to succeed in this opposition the onus is on the opponent to establish the ground of opposition it has pursued.  The standard of proof is that of the balance of probabilities.[1]  The date at which the ground of opposition is to be established is the priority date of the application.  The application has a priority date of 1 September 2005 by virtue of a divisional status going back to trade mark application number 1073387.

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Evidence

7. The declarations provided as evidence in this matter are as follows:

   Evidence in support

   ·    Joshua Frances Cavaleri, made 19 November 2009, with Exhibits JFC-1 to JFC-4

   Evidence in answer

   ·    Sean Francis McManis, made 18 February 2010, with Exhibits SFM-1 to SFM-7

   Evidence in reply

   ·    Emma Elizabeth Talbot, made 17 May 2010, with Exhibits  EET-1 to EET-3

8. Joshua Cavaleri is an employee of the legal firm representing the opponent in this matter.  His declaration refers to the results of a number of searches of the Internet which he appears to have undertaken in order to demonstrate that there is common use within the relevant trade of the phrases ‘organisational project management’, ‘project management maturity models’ and ‘maturity models’.[2]  He has provided abstracts from professional articles from the project management trade, as well as some complete articles.  The articles make reference to various acronyms used within the trade, only some of which are in general use.  There are a number of examples which are examples of proprietary use, including the trade mark subject of this opposition.

   [2] Both parties in this opposition are involved in providing advice and assistance to organisations in the field of project management.

9. Sean McManis is a solicitor and principal of Shelston IP who are the applicant’s legal representatives.  The McManis declaration acts largely as a vehicle to bring into evidence copies of a number of declarations which were filed in respect of the applicant’s earlier opposition to a number of the opponent’s applications to register trade marks.  That matter was decided earlier this year by another delegate of the Registrar.[3]  These declarations form the major part of the applicant’s evidence, and consist of the following:

   ·    William G Scarborough, made 12 November 2008 with Exhibits WGS-1 to WGS-6

   ·    Patrick Weaver, made 12 November 2008 with Exhibit PW-1

   ·    Ignacio Inchausti, made 12 November 2008

   ·    Lindsay Whitehead, made 13 November 2008

   ·    Alden Lee made 18 November 2008

   [3] See Project Management Institute Inc v Percepta International Ltd 2010 ATMO 18

10. William Scarborough declared that the applicant was founded in 1969 and at the time of the declaration had more then 280,000 members in 175 countries.  At the start of November 2007, there were 4966 members in Australia.  The applicant has more than 250 Chapters in 65 countries worldwide.  The Chapters are corporate entities that have entered into an agreement with the applicant to support its members in their respective geographical locations.  The first Australian chapter was established in 1996, and by 2003 there were chapters in the 6 major capital cities in Australia.

11. Mr Scarborough said that the applicant began developing its OPM3 product in about 1999, and it was launched in 2003.  He stated that it has been traded internationally, including in Australia, since December 2003.  He said that it is a product that has been developed to assist organisations in understanding their project management competencies, assess their performance and plan their development, and it provides organisations with high quality professional assistance. 

12. Mr Scarborough’s claims about the applicant’s reputation in its field and general public knowledge of the OPM3 product and trade mark are supported by information in the other declarations exhibited to the McManis declaration, and also by exhibits SFM-6 and SFM-7 to his declaration.  Exhibit SFM-6 shows the first 30 results of a Google® search for the term OPM3.  This search appears to show that the term is generally appearing as a proprietary term owned by the applicant.  Exhibit SFM-7 is a copy of a Wikipedia article about OPM3, which also identifies it as the applicant’s proprietary product.

13. The Talbot declaration which forms the evidence in reply provides copies of the examination reports for two of the applicant’s trade mark applications, number 1142633 for the trade mark ORGANIZATIONAL PROJECT MANAGEMENT MATURITY MODEL (OPM3), and number 1152629 for the trade mark OPM3.  The applicant withdrew both of these applications after they had been examined and a section 44 ground for rejection raised.

    Discussion

14. Section 41 provides that an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons. In deciding this matter, the Registrar must first determine the amount of adaptation to distinguish inherent in the trade mark. If the trade mark has sufficient inherent adaptation to distinguish, it is capable of distinguishing the applicant’s goods or services, and no further questioning of its nature is required.

15. Inherent adaptation to distinguish was recently discussed by Justice Kenny in Sports Warehouse Inc v Fry Consulting Pty Ltd, 2010 FCA 664.  From paragraph 75, she said the following, which I have paraphrased to fit the trade mark under opposition:

    The trade mark application for [OPM3] must be rejected if the trade mark is not capable of distinguishing the designated services of [PMI] from the services of other persons: s 41(2). In deciding whether the trade mark is capable of distinguishing the designated services, the Court must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated services from the services of others: s 41(3). This is the question raised by s 41(3). Whether or not the mark is inherently adapted to distinguish the designated services is to be considered objectively as at the lodgement date [1 September 2005].

    In considering the question raised by s 41(3), one must first identify what is meant by saying that a trade mark is or is not inherently adapted to distinguish an applicant's goods or services from those of other traders. In Clark Equipment at 513-14,[4] Kitto J explained the criterion of "inherently adapted to distinguish", by reference to the observations of Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (W & G Du Cros) at 634-5, in the following way:

    "Th[e] ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In [W & G Du Cros] Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question ... and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem ... His Lordship said: "The applicant's chance of success in this respect [i.e. in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. ... " The interests of strangers and of the public are thus bound up with the whole question ... but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

    …

    In answering the question posed by s 41(3), the Court is thus required to consider whether other traders are likely, in the ordinary course of their businesses and without improper motive, to want to use the same mark, or some mark closely resembling it, upon or in connection with their own [goods].

    [4] Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511

16. The opponent has submitted that the applicant’s trade mark, which consists of three letters and a number, is not adapted to distinguish the applicant’s goods because it is a well known acronym or abbreviation used on or in relation to the goods and/or services concerned.  It submitted that the trade mark is clearly an abbreviation of ORGANIZATIONAL PROJECT MANAGEMENT MATURITY MODEL and that this term or the acronym stemming from the term is one which other traders are likely to want to use in respect of similar services.[5] 

    [5] The opponent’s submissions consistently refer to services, rather than to goods.  I consider that this is most likely an inadvertent error, and it is not fatal to the arguments presented. 

17. This argument is largely based on the first examination report which issued in respect of trade mark application 1142633 and which is exhibited to the Talbot declaration.  The examiner, in considering the particular trade mark, raised grounds for rejecting the application in the following terms:

    Your trade mark consists of the words ORGANIZATIONAL PROJECT MANAGEMENT MATURITY MODEL (OPM3).  This is a term (including the abbreviation OPM3 in brackets), used in the project management industry to indicate a project management model that is long term (maturity) and has a wider application than a single project (organizational).

    This indicates that your computer programs and software, publications, printed matter and instructional and teaching materials relate to organizational project management models.

    Other traders should be able to use ORGANIZATIONAL PROJECT MANAGEMENT MATURITY MODEL (OPM3) in connection with goods or services similar to yours.

18. I do not agree completely with the wording of the examiner’s report.  I agree that the words ORGANIZATIONAL PROJECT MANAGEMENT MATURITY MODEL are descriptive words, and that they are descriptive of the subject matter of the goods the applicant is producing.  However, it takes quite another inductive step to turn the initialization of the descriptive words - OPMMM - into OPM3.  I am not satisfied that a person seeing the letter/number combination without the words would automatically see an obvious connection with the descriptive words.  I also consider that it is equally likely that a person considering the combination of words and letter/number group shown previously would see it as a descriptive term accompanied by the applicant’s trade mark. 

19. The opponent also submitted that

    trade marks containing the phrase ‘Project Management Maturity Model’ or ‘Organisational Project Management’ or the letters O, P and M in any order without some form of stylization or ‘get up’ will lack inherent adaptation to distinguish if the mark is being used to represent project management services.  PMI’s mark represents words that are merely descriptive of the nature of the services provided and, as demonstrated in the evidence provided above, other traders are likely to want to use the phrase or acronym when offering their services.

20. Again, I do not completely agree with these submissions.  Firstly, the applicant’s trade mark does not include any words at all – it consists only of three letters and a number and it is dubious that these will obviously always bring to mind any words.  Secondly, it is obvious from the opponent’s own evidence that there are a number of ways that this particular field of project management assistance can be described, and they do not need to involve initialisations of the words quoted above.  Thirdly, changing the order of the letters is likely to completely change the perceived meaning of any words which may be assumed to be behind the initials, assuming that the letters do bring words to mind.  I am at a loss to see why the letter combinations MOP, POM, PMO or OMP, with or without numbers, will lack inherent adaptation to distinguish an applicant’s goods or services in this particular field.  I am not convinced that the opponent’s reading of the situation involving these words and initials stands up to scrutiny.

21. In its submissions the applicant pointed me to the decision of Foster J in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299, arguing that the decision was directly on par with the situation in this opposition. I consider there are certainly some similarities between the cases, but I am of the opinion that this trade mark is much less obviously an acronym than was the case with the trade mark BSS, described as an acronym for “balanced salt solution”. It therefore does not face quite the same number of hurdles in reaching a successful conclusion.

22. I am satisfied that the letter/number combination OPM3 had at its priority date sufficient inherent adaptation to distinguish to meet the requirements of subsection 41(2). I note that the examiner of application 1152629, one of the parents of the opposed application, as well as of the opposed application itself was of the same mind, as he did not raise any ground for rejection under the provisions of section 41 against either application at initial examination.[6]

    [6] I note that lapsed application 1073387, which is the ‘grandparent’ of the opposed application and provides it with its priority date, was also for the same trade mark. As with the opposed application and its parent application, no section 41 ground for rejection was raised at initial examination.

    Decision

23. The opponent has not established the single ground of opposition it pursued, thus failing in its opposition.  Trade mark application 1248599 for the trade mark OPM3 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then, registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the application be dealt with as the Court sees fit.

    Costs

24. The applicant sought its costs in the event of its success.  I see no reason to deviate from the usual practice of costs following the event.  I award costs against the opponent according to the official scale.

    Alison Windsor
    Hearing Officer
    Trade Marks Hearings
    23 November 2010