Phd Creative Pty Ltd

[2010] ATMO 55

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1294047(35) - THE STATION - in the name of Phd Creative Pty Ltd.

Delegate:

Claudia Murray

Representation:

Applicant: Robert Burrell of Trademark Central, Trade Mark Attorneys, Brisbane

Decision:

2010 ATMO 55

Section 33 – section 44(2) established – application rejected.

Background

1.     Phd Creative Pty Ltd (‘the applicant’) filed trade mark application number 1294047 on 9 April 2009, for the plain word trade mark:

THE STATION

2.     The application was filed in class 35 of the International (Nice) Classification of Goods and Services, in respect of the following services:

Marketing; advertising; promotional services; business management; business administration; office functions; retailing of goods (by any means); wholesaling of goods (by any means); providing information, including online, about advertising, business management and administration and office functions; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means).

3. A ground for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) was raised during examination against some of the services included in the application. A prior registration was cited, trade mark number 1161687, owned by FM Motels Pty Ltd. Other relevant details of that registration are as follows:

Trade Mark	Filing Date	Class/Services
16 Feb 07	Class: 35 Advertising; business management; business administration; office functions Class: 41 Education; providing of training; entertainment; sporting and cultural activities Class: 43 Services for providing food and drink; services associated with providing temporary accommodation including, but not limited to, hotel accommodation services

4.     The examiner’s first report invited the applicant to delete the conflicting services of ‘Marketing; advertising; promotional services; business management; business administration; office functions; providing information, including online, about advertising, business management and administration and office functions’ from its application. Alternatively, overcoming the ground of rejection via the provision of evidence of prior use, honest concurrent use and/or other circumstances was suggested. The applicant did not take up these suggestions in its response and a second report was issued maintaining that the ground of rejection still existed.

Hearing

5.     The applicant then requested to be heard upon the matter. The hearing was held in Canberra before me, as delegate of the Registrar, on 30 November 2009. Dr Robert Burrell of Trademark Central, Registered Trade Mark Attorneys, Brisbane, represented the applicant in person.

Ground of rejection

Section 44 - Identical etc. trade marks

6.     Subsection 44(2), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date, and covers services that are similar to the applicant’s services. The definition of ‘deceptively similar’ in section 10 is that ‘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’. Section 14 defines ‘similar services’ as services which are ‘the same’, or ‘of the same description’. Many of the respective services covered by the applicant’s trade mark and the cited trade mark are clearly ‘similar’ for the purposes of section 14, being in some cases identical.

7.     Subsections 44(3) and (4) provide the following important exceptions to subsections 44(1) and (2):

(3)      If the Registrar in either case is satisfied:

(a)      that there has been honest concurrent use of the 2 trade marks; or

(b)      that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:    For limitations see section 6.

(4)      If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)      beginning before the priority date for the registration of the other trade mark in respect of:

(i)           the similar goods or closely related services; or

(ii)          the similar services or closely related goods; and

(b)      ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Submissions

8.     Dr Burrell explained at the hearing that his client was a marketing and retail communications firm specializing in brand design, brand promotion, brand rejuvenation, and the management of stock and other supplies. The applicant had been trading for five years, and in that time had managed to build a client base that included many household names. It was, however, in the process of re-branding a significant portion of its own business under the trade mark THE STATION. Having conducted extensive market research that suggested this mark would provide a memorable and effective means to promote its business, the applicant now considered it vital to secure trade mark registration covering the full scope of its business.

9. Dr Burrell argued that, in maintaining the ground of rejection under section 44, the examiner had fallen into error in concluding the applicant’s trade mark was either substantially identical or deceptively similar to the cited trade mark. Specifically, Dr Burrell submitted that the examiner:

(1) afforded insufficient weight to the stylization of the cited mark;

(2) paid too little attention to the overall visual and aural dissimilarity of the words in question;

(3) did not give due regarded to the rather different ideas communicated by the two marks; and

(4) did not pay proper account to all of the surrounding circumstances.

Discussion

10.   The trade marks to be compared here are:

and     THE STATION

11.   I do not necessarily agree with Dr Burrell that, applying the accepted test for substantial identity, which involves a side-by-side visual comparison of the relevant trade marks[1], the applicant’s trade mark is not substantially identical to the cited trade mark. However, it is not necessary to decide that point. It is sufficient to say that I cannot agree with his further contention that, even when applied to the same services in class 35, there are sufficient differences between the trade marks to render them visually and aurally dissimilar. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641, at page 658, said of deceptive similarity:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

[1] Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414-5.

12.   I believe that ordinary people, faced with the trade mark THE STATION, and having previously encountered and formed an impression of the trade mark STATION HOTEL GROUP (cross-stitching of the word STATION notwithstanding), both used in relation to identical business management (etc) services, would be very likely to confuse the two marks. Dr Burrell suggested that the ideas of the two trade marks were dissimilar, and that this factor, together with the stylization present in the cited trade mark and the additional words HOTEL GROUP present within it, combined to create a ‘total impression of dissimilarity’. I disagree. The Full Federal Court, in Sports Cafe Ltd v Registrar of Trade Marks[2], decided the following word and device trade marks were not deceptively similar, in the context of similar services:

[2] [1998] 1614 FCA (18 December 1998), (1998) 42 IPR 552.

13.   The court stated, at page 5:

The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

14.   Having made this statement, the Federal Court went on to find, in the context of similar services, that the device trade mark THE CIRCUIT SPORTS CAFE depicted above was deceptively similar to the words THE SPORTS CAFE, alone. In very similar conditions to those present in this case, Justices Wilcox, Heerey and Lindgren found a similarity of look, sound and meaning between the trade marks that led unambiguously to a finding of deceptive similarity.

15.   In an earlier similar case, involving a comparison of the trade marks POLO and POLO CLUB, Justice Burchett noted the following:

On the mundane level which is appropriate here, someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version.[3]

[3] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, 230 (Burchett J).

16.   Later in the course of his decision, His Honour stated:

It is plain that the word “Polo” must be an essential feature of the applicants’ mark, since it is the whole of the mark … “Polo” is also quite a distinctive word, and the taking of it is bound to cause confusion which the mere addition of the word “Club” will not dissolve. Bearing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice. At the same time, some persons may be quite aware that one mark contains the added word, and the other does not, but may yet think of “Polo Club” bed linen as a particular style of “Polo” bed linen.[4]

[4] Polo Textiles, ibid, 232.

17. The analogous question here is whether someone who knew of the cited trade mark STATION HOTEL GROUP, upon seeing the applicant’s services advertised under THE STATION trade mark, would be likely to think they were being provided by a particular member of the STATION HOTEL GROUP. I believe the answer to that question is in the affirmative. I find the trade marks to be deceptively similar, and that accordingly a ground of rejection under section 44 exists.

18. I discussed with Dr Burrell at the hearing the possibility that, while the options of honest concurrent use or prior use may not be available to the applicant as it had only recently begun using its trade mark, it might still be possible to overcome the section 44 ground of rejection by way of the exception offered under subsection 44(3)(b), of ‘other circumstances’. Material which may have assisted the applicant in this regard could have been a ‘letter of consent’ provided by the owner of the cited trade mark, or possibly declaratory evidence from the applicant demonstrating that the manner in which the trade mark was presently being used (and the extent of that use) had obviated any likelihood of deception or confusion of the public. I also suggested that the applicant may still consider a restriction of its statement of services to cover only the retailing, wholesaling and distribution of goods other than food and drink.

19.   I allowed some time after the hearing and prior to making this decision for the applicant to consider and respond to these options. However, I have received no further correspondence from the applicant and the final date I set for its response has now passed.

Decision

20. Section 33 of the Act provides:

33  Application accepted or rejected

(1)      The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)      the application has not been made in accordance with this Act; or

(b)      there are grounds under this Act for rejecting it.

Note:    For this Act see section 6.

(2)      The Registrar may accept the application subject to conditions or limitations.

Note:    For limitations see section 6.

(3)      If the Registrar is satisfied that:

(a)      the application has not been made in accordance with this Act; or

(b)      there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:    For this Act see section 6.

(4)      The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:    For applicant see section 6.

21. The applicant has had an opportunity to be heard on this matter and, at the end of the process, I am satisfied that there is a ground under section 44 of the Act for rejecting its application. Therefore, in accordance with subsection 33(3), I now reject application number 1294047.

Claudia Murray

Hearing Officer

Trade Marks Hearings

30 June 2010