Platinum Logistics Pty Ltd v Platinum Freight Management Pty Ltd

[2016] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by Platinum Logistics Pty. Ltd. to registration of trade mark application number 1606084 (Classes 36 and 39) – PLATINUM LOGISTICS- in the name of Platinum Freight Management Pty. Ltd.

Delegate:	Cristy Condon
Representation:	Applicant: Self represented Opponent: Self represented
Decision:	2016 ATMO 18
Section 52 of the Trade Marks Act 1995 – opposition to registration – grounds of opposition pursuant to sections 44, 58 and 60 – no ground established – Trade Mark to proceed to registration

Background

1. This matter concerns an opposition to registration under section 52 of the Trade Marks Act 1995 (‘the Act’) for the following trade mark:

   Trade Mark No: 1606084

   Trade Mark:

   PLATINUM LOGISTICS
   (“the Trade Mark”)

   Applicant: Platinum Freight Management Pty. Ltd.(“the Applicant”)

   Specification of Services:

   Class 36: Customs brokerage
   Class 39: Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing

   Filing/Priority date: 14 February 2014

   Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

2. The Trade Mark was examined and accepted under the provisions of subsection 44(3)(b) of the Act and/or Regulation 4.15A(3)(b) of the Trade Mark Regulations 1995. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 10 July 2014.

3. A Notice of Intention to Oppose was filed by Platinum Logistics Pty. Ltd. (‘the Opponent’) on 9 September 2014. This was followed by its filing of the Statement of Grounds and Particulars which nominated grounds of opposition under section 44, section 58, and section 60.  The Applicant filed a Notice of Intention to Defend on 28 October 2014.

4. On 4 March 2015 the Opponent amended its address for service and from this time it has been self-represented. It has not filed any evidence in this matter. Likewise, the Applicant is self-represented and it has not filed any evidence within the timeframes. In a letter from IP Australia dated 12 November 2015 the Applicant was refused an extension of time to file its Evidence in Answer.

5. On 19 May 2015 the Applicant requested a hearing in respect of the section 52 opposition. It was allocated to me to be decided on the written record in my capacity as a delegate of the Registrar of Trade Marks.

6. The written record comprises:

   Statement of Grounds and Particulars

   Notice of Intention to Defend

   Applicant’s written submissions

7. The Opponent has not filed any written submissions; it has remained silent in this matter since filing its Statement of Grounds and Particulars.

8. The rights of the parties are to be determined as at date of application which is generally, but not always, the filing date.[1] The Opponent bears the onus of establishing a ground of opposition,[2] and should one ground be established there is no requirement that I discuss any other ground of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 at [133]; see also: Pfizer Products Inc v Karam [2006] FCA 1663.

Reasons

1. As the Opponent carries the evidentiary burden, in the absence of any evidence I am not satisfied that the grounds of opposition pursuant to section 58 and section 60 have been established.

The Ground

1. By contrast, the Statement of Grounds and Particulars contains sufficient information to fully identify the details of the ground of opposition under section 44.  Thus, evidence in support of the opposition is not required in order to found this ground.

Section 44

1. The Act relevantly provides:

44  Identical etc. trade marks

(1)…

(2)      Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or      closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related             goods 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 services is not earlier than the priority date for the registration of           the other trade mark in respect of the similar services or closely related goods.

(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.

(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.

1. With respect to this ground the Opponent must first establish that the trade mark application or registration that it relies upon has an earlier priority date.  Secondly, it must establish that this trade mark contains similar services, or closely related goods[4]. Thirdly, it must establish that this trade mark is substantially identical with, or deceptively similar to, the application for a trade mark.

   [4] Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J.

2. In pursuit of this ground the Opponent has nominated three registered trade marks.  The Opponent also relied upon trade mark registration 1020815 which cannot be considered under this ground of opposition because its status on the Australian Register of Trade Marks is “removed- not renewed”.  That said, the details of the remaining trade marks upon which the Opponent relies are as follows:

   Trade Mark No.: 902114

   Trae Mark:   

   Filing/priority date: 4 February 2002

   Owner: Australian Postal Corporation

   Goods & Services:

   Class 16: Packing; postal packaging products; paper and cardboard containers; adhesive labels; stationery; envelopes including pre-paid envelopes; satchels

   Class 39: Postal services; mail delivery services; courier services; transportation and delivery of goods; transportation services relating to the transportation of mail

   Trade Mark No.: 910464

   Trade Mark:   

   Filing/priority date: 23 April 2002

   Owner: Australian Postal Corporation

   Goods & Services:

   Class 16: Paper, cardboard and goods made from these materials, not included in other classes, including packing and postal packaging products; printed matter; photographs; stationery including envelopes, pre-paid envelopes and adhesive labels; adhesives for stationery or household purposes; office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes)

   Class 39: Transport; packaging and storage of goods; postal services and mail services in this class; delivery services including delivery of mail, correspondence and parcels; courier services; rental and leasing of trucks and vans and monitoring of rental and leasing agreements; provision of information in relation to the aforesaid services

   Trade Mark No. : 1311472

   Trade Mark: 

   Filing/priority date: 4 February 2002

   Owner: Australian Postal Corporation

   Goods & Services:

   Class 39: Transport services being rail transportation of people and goods; storage services and land transport services involved in rail transportation of people and goods; travel booking services

   Class 43: Providing food and drink on trains; restaurant services on trains; lounge facilities on trains; accommodation on trains

   Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

3. As regards the priority date, the trade marks upon which the Opponent relies have an earlier priority date than the Trade Mark.

4. For brevity, I note that there is an obvious overlap between the services claimed by the Trade Mark and the services protected by the registered trade marks.

5. At this time, it is pertinent to mention that pursuant to regulation 21.15(4) of the Trade Mark Regulations 1995 I am informing myself on a matter I reasonably believe to be appropriate - the Applicant’s existing trade mark registrations. Whilst this information did not come before me by means of evidence, the Australian Register of Trade Marks is publicly available and therefore its contents are before both parties to the opposition.  I note that the Applicant already has rights in trade marks with the word “PLATINUM” and another descriptive word in respect of the same and similar services (see Australian Trade Mark numbers 863217, 1423457, 1423483, 1431610, 1504380, 1655981 and 1671963). The Applicant also, and most importantly, has already secured a trade mark registration for the plain word “PLATINUM” for the same and similar services as the Trade Mark (see Australian trade mark number 1423457).

6. In Unilever PLC[5] hearing officer Terry Williams discussed evidence of the state of the Register and referred to Ocean Spray Cranberries Inc. v Registrar of Trade Marks[6] (‘Cranberry Classic’) commenting that :

   Firstly, consistency in public administration is desirable. Secondly, there is a difference between the role of the court and that of the Trade Marks Office in such matters. It is the responsibility of an administrator to take reasonable steps to understand, consider and assess the pattern of his/her own agency in dealing with past matters, where these are directly relevant. It is only if the decision-maker is satisfied that a current matter can be distinguished from past decisions, for whatever reason, that an established pattern can be varied in good conscience.

   [5] [2001] ATMO 39

   [6] (2000) 47 IPR 579

7. Nonetheless it remains to be established whether or not the trade marks upon which the Opponent relies are substantially identical, or deceptively similar to, the Trade Mark. And secondly (if they are at least deceptively similar), should the subsection 44(3)(b) endorsement remain?

8. The Opponent states in the Statement of Grounds and Particulars that the trade marks upon which it relies are substantially identical with, or deceptively similar to, the Trade Mark.

9. Substantial identity was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (Shell)[7] by Windeyer J:

   In considering whether marks are substantially identical they should, I think be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

   [7] (1961) 109 CLR 407 (at 414-415).

10. In the current matter, the Trade Mark comprises the words “PLATINUM LOGISTICS”.  The trade marks upon which the Opponent relies, conversely, contain the words “PLATINUM POST”, “EXPRESS POST PLATINUM” and “PLATINUM SERVICES” in addition to other elements.

11. In a side-by-side comparison, I am not satisfied that the Trade Mark is substantially identical to any of the trade marks upon which the Opponent relies.  The common element in each of the trade marks is the word “PLATINUM” and I decide that this is not sufficient to find a total impression of resemblance between the trade marks.  The trade marks all contain other descriptive words and/or figurative elements and the get up in each is quite different.

12. As regards deceptive similarity, it is defined in section 10 of the Act:

    10 Definition of deceptively similar

    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

13. The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[8]. Dixon and McTiernan JJ stated:

    [T]he marks ought not … 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 usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

    [8] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

14. The trade marks upon which the Opponent relies all contain the word PLATINUM.  Trade marks 902114  and 910464 also include the Australia Post Logo or a stylized bird device.  Trade Mark 1311472 includes a diamond or postage stamp style device with a wreath inside.  These are distinctive and distinguishing elements. “PLATINUM” may appear in all of the respective trade marks however, the biggest hurdle for the Opponent (in regard to discharging its onus under this ground of opposition) is that the Trade Mark and the trade marks upon which the Opponent relies do not share a common memorable element. The word “PLATINUM” is the only element in common to the trade marks and is, at best, strongly allusive to the character or quality of the services because it is used by many different traders as an indication of the quality of the services on offer.  I am satisfied that in use, it is likely to be perceived by the consumer as such and is not likely to deceive or confuse because of its presence in the trade marks of the parties.

15. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[9] the Court said:

    But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

    [9] [1952] HCA 15; (1952) 86 CLR 536:

16. I am satisfied that all that these trade marks have in common is the idea and that idea is (as I have already stated) that they offer for sale a superior and/or quality service.

17. None of the trade marks upon which the Opponent relies are deceptively similar to the Trade Mark.  I find that the ground of opposition under section 44 has not been established.

Decision

1. Subsection 55(1) of the Act 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.

1. The Opponent has not established a ground of opposition.

2. Accordingly, I decide that trade mark 1606084 should proceed to registration one month from the date of this decision and that the subsection 44(3)(b) endorsement should be removed from the Trade Mark. If the Registrar has been served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

Cristy Condon
Hearing Officer
Trade Marks Hearings
23 March 2016