Project Management Institute Inc v Percepta International Ltd
[2010] ATMO 18
•26 February 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by Project Management Institute Inc to registration of trade mark applications no. 1209049 - 1209053 inclusive, 1233433 (classes 9 and 35, or 35 only) - E-P3MO, ENTERPRISE-P3MO, 3PMO, P3MO, PMO3, P3MO - filed in the name of Percepta International Ltd.
Delegate: | Terry Williams |
Representation: | Opponent: Sean McManis, solicitor, Shelston IP Applicant: Matt Duffy, solicitor, TressCox Lawyers |
Decision: | 2010 ATMO 18 S52 opposition. S59 not established but S44 and 60 established in re applications 1209051 and 1209053, registration refused. S 59, 44 and 60 not established for applications 1209049, 1209050, 1209052 and 1233433, which will be registered. No award of costs. |
Background
Percepta International Ltd (“the applicant”) has filed six trade mark applications with details as follows.
| Number | Trade mark | Priority date | Goods/services (see below) |
| 1209049 | 7.11.07 | Classes 9 & 35 | |
| 1209050 | ” | ” | |
| 1209051 | ” | Class 35 only | |
| 1209052 | ” | ” | |
| 1209053 | ” | ” | |
| 1233433 | 3.4.08 | ” |
Class 9 goods: Computer software, systems and programs including software; systems and programs to electronically record, store, search and retrieve data; business management systems and programs delivered electronically and by way of computer programs; systems and programs delivered electronically and by way of computer programs to deliver organisational structure for the management of business relationships and the management of projects including multi-disciplinary projects; analytical software, systems and programs providing business management functionalities including key functionalities such as work management, status reporting, project planning, business outcomes and performance monitoring, and self auditing functionalities; parts and accessories for the above described goods
Class 35 services: Business management services; business management services including project management services for multi- disciplinary clients across multiple industry sectors including information technology, telecommunications, transport, banking and insurance businesses and projects; business administration, including consulting in relation to projects, planning, change implementation and systems implementation
Registration of each of these trade marks has been opposed by Project Management Institute Inc (“the opponent”). The opponent is the owner of application 1248599 (“the opponent’s application”), which has a priority date of 1 September 2005[1], for the trade mark OPM3 rendered in ordinary upper case (“the opponent’s trade mark”). The opponent’s application is in respect of the following goods:
[1] It has this date by virtue of a claim to divisional status under s 45 of the Trade Marks Act 1995. Application 1248599 is a divisional of 1152629, which in turn was divided out of a now-lapsed application 1073387. Registration of the two surviving applications is opposed by the applicant in the present matter.
| 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 |
In other proceedings, which are yet to be decided, the applicant has opposed registration of the opponent’s trade mark. The opponent’s application thus remains pending and is therefore able to trigger certain of the provisions on which the opponent relies, and to which I will come in due course.
- The applicant is registered as the owner of trade mark 1111412, in respect of the same class 35 services as the presently-opposed applications. It consists of a trade mark rendered as follows:
The parties have filed and served copies of evidence in support and in answer to the opposition, and evidence in reply, under the provisions of Part 5 of the Trade Marks Regulations. I will discuss relevant elements of this material, below. Ultimately, s 55 of the Trade Marks Act 1995 (“the Act”) requires that the parties be given an opportunity to be heard before deciding the oppositions. This was done and the opponent requested a hearing on all six applications. I conducted that hearing under delegation from the Registrar. At that hearing, the applicant was represented by Matt Duffy, legal practitioner, TressCox Lawyers, while Sean McManis, legal practitioner, Shelston IP, appeared for the opponent.
The applicant elected to be heard in relation to application 1209052 only, and to attend the other hearings as an observer. In relation to all six applications, both parties followed my directions and exchanged written summaries of argument before the hearing, the exchange starting with the opponent’s summary. After taking submissions on the order in which to deal with the various applications, I heard 1209052 last of all. As I said at the hearing, it makes sense to hear the most contested matter last so the hearing can be informed by the trend of arguments raised in the other matters. However, there is a commonality of issues and it will thus be expedient to deal, in what follows, with those issues as they affect all six applications, rather than to replicate the order in which the applications were heard.
Grounds considered
Mr McManis pressed grounds under sections 59, 44 and 60, and I will deal with them in that order. For completeness, I say now that grounds not pressed were not established.
Section 59 – lack of intention to use
This ground of opposition is as follows,
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;in relation to the goods and/or services specified in the application.
Mr McManis pressed the argument, developed in his written submissions, that the evidence opens up an inference adverse to the applicant. He pointed to material in the evidence in support that arguably shows that the applicant itself, a New Zealand company, does not trade in Australia. He noted that, in the evidence in answer to the opposition, the Myers declaration cites Caravel Group (Sydney) Pty Ltd (“Caravel”) as the exclusive licensee of the applied-for trade marks and of registered trade mark 1111412. From the same source I note that, in New Zealand, the applicant has registered a series of two trade marks under registration number 773722. The New Zealand registration covers trade marks that appear to be substantially identical to those shown in presently-opposed (Australian) applications 1209052 and 1233433. Those New Zealand trade marks are allegedly used by a New Zealand company called Caravel New Zealand.
I have set out, at paragraph 4 above, the trade mark that the applicant has already registered in Australia. If the evidence of the applicant shows any use of a trade mark in Australia at all, which is questionable, then the relevant trade mark that Caravel most arguably uses here is what I will call the “the P3MO trade mark”. The P3MO trade mark is rendered variously, either as P3MO or with those letters and numeral rendered much as in trade marks 1209049 and 1209050.
Mr McManis noted that Mr Myers is a director of both Caravel and the applicant. He pointed, however, to a lack of any cogent evidence to support the claims about either the existence of the licence or the alleged use, in Australia, by Caravel. This, he said, was fatal. Had the matter been an application under s 92 for the removal of a registered trade mark, perhaps I could have agreed with him. Here, however, the opponent bears the onus of establishing a ground, or at least of setting the scene for an inference to be drawn adversely to the applicant. I think the assertions of use, and the bare bones of an asserted authorized use arrangement add to, rather than detract from, the opponent’s problems.
Mr Myers’s declaration was not actually prepared as evidence in answer to the present oppositions. It has been “recycled”, having been prepared in support of the applicant’s opposition to registration of the opponent’s trade mark. Mr Myers, on a careful reading, directs himself primarily to the Australian trade mark that is the subject of registration 1111412, and to the similar trade marks that are used in New Zealand. He has very little specific to say about the presently-opposed trade marks, though he brings into evidence a brochure that, if it has been used in trade in Australia, which, as mentioned, is itself questionable, would show use of the P3MO trade mark, to which I have referred in paragraph 9. There are, beyond this, some generalized assertions about Caravel, and its alleged use of “the Trade Marks”, a term defined to include all of the presently-opposed trade marks as well as registered trade mark 1111412. These assertions are not at all specific. Even so, I read Mr Myers as asserting to matters that are not inconsistent with Caravel intending to use the trade marks the subjects of applications 1209049, 1209050, 1209052 and 1233433, which I will accept might be considered as minor variations of the P3MO trade mark. I accordingly see nothing in the evidence that would positively assist the opponent in establishing its s 59 ground with respect to applications 1209049, 1209050, 1209052 and 1233433.
As to applications 1209051 and 1209053, it is obvious that these are the two applications which have a core element significantly unlike those of the remaining applications. It follows, I think, that the generalizations and assertions of Mr Myers are at their least satisfactory in respect of applications 1209051 and 1209053. Of those trade marks, Mr Myers says nothing at all specific. The applicant is fortunate that there is no case for it to answer. The totality of the opponent’s evidence, with which I will now deal, simply does not open the applicant to any adverse inference under this heading.
Mr McManis took me to the relevant material in the evidence in support. He referred to a handful of printouts from a number of internet searches conducted by Ms Morris, an employee of the opponent’s patent attorneys. Those searches might at most confirm that the applicant, a New Zealand company, does not itself trade in Australia. This is hardly surprising. Beyond that, Ms Morris has conducted other internet searches and is apparently satisfied that none of the 380 hits on “percepta” together with “project management” shows any linkage at all to the applicant, anywhere. However, with all due respect to the Google search engine, I doubt that a search of this nature, without the support of other material, could undermine the prima facie assumption that an applicant owns the trade marks that it has applied to register, and that these are used or intended for use in Australia.
The present case is unlike two recent ones where s 59 has been successfully invoked, and which Mr McManis noted. In Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 the decision turned on the trade mark owner’s own evidence, which was used to highlight confusion about which of two corporate entities was to use the trade mark. In the present matter, in contrast, there is no scope for such debate or for any consequent misapprehension. Again, in Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1467, rectification of the register was ordered because, ultimately, the person identified on the register was not the true owner of the trade mark. This had arisen in conjunction with irregularities in terms of the payment of stamp duty and with regard to duties under the Corporations Act. Branson J declined to exercise her discretion and thereby allow the challenged registration to stand. Here, in contrast, there is no need to consider such matters. The opponent’s evidence does not impugn any aspect of the dealings or relationship of the applicant and Caravel. Accordingly, the ground has not been established in respect of any of the six presently-opposed applications.
Section 44 – deceptive similarity
Context of the comparison
Exhibits to the Myers declaration portray PMO as an acronym for what Caravel sees as a somewhat outdated concept, the “Project Management Office”. Mr Myers explains that the work of a business organization can usefully be seen in terms of its projects, programmes and portfolios. He goes on to declare that “the number 3 in a circle is intended to highlight the three p’s of projects, programmes and portfolios”.
The opponent, for its part, is a large association whose members are project managers[2]. The opponent uses the trade mark OPM3 in respect of a suite of project management software, and the opponent accredits individuals as certified OPM3 consultants. In the opponent’s context, OPM stands for “organizational project management”, and the number 3 is perhaps suggestive of the three M’s of its“management maturity model”. The applicant’s view is that by adding “stylized features” to its own trade marks, it has avoided the potential for confusion that was, it accepts, inherent in having competing trade marks that simply re-order the components P, M, O and 3.
[2] I note here, from the evidence in reply, that Caravel is a member of the opponent, and its website claims that, beyond this, Caravel has been active on the committee of the opponent.
Section 44 considered
The relevant provisions[3] are as follows:
[3] Mr Duffy did not argue that s 44(3) or (4) were applicable. Such arguments would have been difficult, on the evidence before me.
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.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
It will be convenient, firstly, to deal with matters falling under paragraph (a) in both subsections (1) and (2). It is common ground between the parties that the opponent’s application specifies similar goods to those listed in application 1209049 and 1209050. However, Mr Duffy argued, in his written submissions, that the class 35 services covered by the six opposed applications were not closely related to the goods covered by the opponent’s application. I do not think this can be sustained.
Mr McManis tellingly noted that the opponent provides both business management services and project management tools as the two ends of a suite of support for project managers and similar professionals. Mr Duffy relied on the practical difference between the applicant’s goods and services. As he also pointed out, the applicant will not use the trade mark the subject of application 1209052 in respect of any goods, and no blurring of the distinction between goods and services would be introduced by any actions of the applicant.
Nonetheless, I am satisfied that the services specified in class 35 are closely related to the class 9 goods specified in the opponent’s application. The latter goods are specialised professional software which appears to be inextricably linked to the services which the software is designed to enhance and facilitate. The little that can be gleaned from the evidence of the applicant, about what it or Caravel actually does, cannot change the interrelationship between the relevant services and such class 9 goods in general.
Mr McManis did not seek to argue that any of the competing trade marks were substantially identical. Potentially, however, the ground of opposition under s 44 can be established if I am satisfied that the applicant’s trade marks, used for services or for goods as the case may be, are deceptively similar to the opponent’s trade mark OPM3. It was to this aspect that he turned his attention.
Mr McManis dealt with the presently-opposed trade marks by noting that none of them conveyed different ideas. This, he said, was because the core feature of each of the applicant’s trade marks comprised a combination of the letters, P, M, O and the numeral 3. This is also a refrain common to certain parts of the opponent’s evidence, to which I will come in due course. Of applications 1209049 and 1209050 he argued that the prefix E is non-distinctive, being commonly recognised as an abbreviation for “electronic”, that the word ENTERPRISE is similarly non-distinctive when used in relation to business products and services.
Mr McManis seized on a “fatal concession” of Mr Myers:
[The applicant] concedes that the mere change in the order of the letters P, M, O and the number 3 may cause confusion to those people seeking project management goods and services.
He therefore argued that the prospects of imperfect recollection must be recognised, and their likelihood considered, in the light of this concession by the applicant.
At the hearing of 1209052, both advocates addressed me on the likelihood of confusion arising, not among skilled project managers but among those whose business it is to assess, for instance, quotations and proposals for the undertaking of such project management. Mr McManis noted that the potential for confusion is enhanced by the fact that persons certified by the opponent typically refer to themselves as “PMI-certified OPM3 Consultants”. He referred to part of the opponent’s evidence in support. There, Patrick Weaver, Ignacio Inchausti, Lindsay Whitehead and Alden Lee all appear to have expertise in relevant project management or consultancy fields. All of them express, in similar but not identical terms, an opinion that (to quote Mr Weaver):
Apart from [the opponent], I am not aware of any business operating in the field of project management that offers project management software or services in Australia under a trade mark comprised of a combination of three letters and the numeral 3. Consequently, I think there is potential for confusion should a third party offer, under a trade mark that incorporates a combination of the letters P,M,O and the numeral 3, similar or related products and services to those offered by [the opponent] under the OPM3 mark, or similar to services provided by consultants that use OPM3 as a key business performance assessment tool. …
The persons responsible for selection of project management consultants … are typical senior managers, who are not themselves professional project managers and so they have limited knowledge of project management products and terminology. Hence they could easily be confused by businesses offering project management products with similar names.
I appreciate the caution that these declarants have urged upon me. It appears that, among senior managers as among any other group, confusion and mistakes are possible. However, it seems to me that the opponent cannot have it both ways: either the opponent’s members offer their services to a group of sophisticated business people, who in turn make careful business decisions that affect the future of large to very large organizations, or those same consultants are employed willy-nilly by readily-confused managers who are perhaps being portrayed as not to be trusted with a simple shopping list.
Having looked at the matter as carefully as I can, I have to say that there is no clear answer here. Human fallibility cannot be precluded, even among managers of large businesses who seek to engage professional project managers. Even so, it seems from the evidence that the trade in business management services is unlike the circumstances that might apply in a busy supermarket. I am not satisfied that in this part of the commercial world the chance of confusion or mistake, vis a vis the goods of the opponent, is quite as high as the opponent would have me believe. I have reached my decision, which I will set out below, on the facts of the matter before me but I am confident that it can be reconciled with a number of administrative decisions to which Mr McManis referred.
3PMO, PMO3 and s 44
Mr McManis argued that the opponent’s trade mark OPM3 is closest to the applicant’s trade marks 1209051 and 1209053, which would normally be rendered, aurally or in simple textual use, as 3PMO and PMO3 respectively. He noted and relied on the following part of Mr Duffy’s summary:
If the letters ‘o’, ‘p’, ‘m’ and the numeral ‘3’ were merely written in plain text in a different order, they may cause some confusion. For example, compare ‘OPM3’ and ‘3OPM’. Similarly, compare ‘PM03’ and ‘3PMO’. We submit that any confusion would arise from the similarity of the word element in these examples. However, the word element in each of the Applicant’s Mark and the Opponent’s Marks is not the same and the significant stylisation in the Applicant’s Mark removes any possibility that the Applicant’s Marks and the Opponent’s Marks would deceive or confuse a member of the project management profession or any consumer of the Applicant’s services and the Opponent’s products.
I agree with Mr McManis that the “stylization” on which Mr Duffy relied is not significant. The numeral involved, particularly where it appears at the end of the applicant’s trade marks, should be given only the weight that would ordinarily be given to numerals that appear to designate a version or series. While the cognoscenti of the profession might well understand that such is not the case in the present matter, for reasons which I have set out above at paragraph 15 and 16, it would appear otherwise to those who are not familiar with the histories and products of the two protagonists. Beyond this, any so-called stylization applied to that numeral is very unlikely to be articulated. Aurally, therefore, the applicant’s trade mark 1209053 will be heard as PMO3, and 1209051 as 3PMO. Similarly, the artifice of rendering the numeral as it might appear on a snooker ball will not affect the substance of the way the trade mark will be recalled. The applicant’s own evidence supports such a conclusion: the stylization applied to the numeral appears to vary a little depending on how and where the trade mark is being used. It is registered in one way, but (apparently) used by Caravel in another. This says to me, very strongly, that how the numeral is rendered matters very little indeed and is barely more significant than the font used to render the letters, to which Mr Duffy’s submissions also referred.
Mr McManis also reiterated the concession of Mr Myers, to wit:
[The applicant] concedes that the mere change in the order of the letters P, M, O and the number 3 may cause confusion to those people seeking project management goods and services.
I have to assume that Mr Myers made this statement carefully. It also resonates with similar statements made by some of the opponent’s declarants, of whom I have already quoted Mr Weaver. However, as Mr Duffy’s written submissions point out, the opinions of the opponent’s declarants are not specific. They might well relate to some, but not all, combinations of the letters and numeral in question. Alone, such statements are not particularly persuasive and without the support of Mr Myers they might also have sounded somewhat hollow or rehearsed.
Thus, while I might have otherwise hesitated to reach such a view, I think the opinions of the opponent’s declarants, when supported by that of Mr Myers, go to the existence of circumstances that would allow me to conclude that there is a reasonable potential for the opponent’s trade mark to be confused with the applicant’s trade marks as set out in applications 1209051 and 1209053. As regards those two applications, the ground of opposition is established.
Remaining applications and s 44
For applications 1209049, 1209050, 1209052 and 1233433 (“the remaining applications”), in terms of s 44, a different conclusion is appropriate despite the apparent trend of the evidence. The appropriate conclusion is that the remaining trade marks are not deceptively similar to the opponent’s trade mark. To illustrate this, I will note the administrative decisions to which Mr McManis referred[4]. The matters on which he relied for their specifics, rather than for any statements of general principle, are as follows;
[4] Strictly, the reference to the last two decisions comes at first instance from Mr Duffy’s written submissions. The remainder were added by Mr McManis for contrast.
| Applicant’s trade mark | Deceptively similar? | Competing trade mark and citation |
| AEI and | yes | Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435 |
| yes | NAGS Mitchell International, Inc v National Auto Glass Supplies (Australia) Pty Ltd | |
| yes | UPS United Parcel Services of America, Inc v UTS Europe BV [2003] ATMO 33 | |
| yes | 3M 3M Company v David Guthries & Polytech 5000 Pty Ltd | |
| MYOFB | yes | MYOB MYOB Technology Pty Ltd v Slick Solutions Pty Ltd |
| no | ATP Tour ATP Tour, Inc v Australian Tennis Professional Coaches Association Ltd | |
| no | PGA Australia Ltd v LPGA |
Mr Duffy noted that, in the last two decisions shown in the table, the respective delegates took views that are summarized, in the foremost of the two, as follows:
It is apparent to me that if a trader coins an acronym from words which are essential to, or common within, a trade, it might be expected that others might use similar words as the source of acronyms for themselves and their goods or services. … Such acronyms gain a measure of inherent distinctiveness because their origins are not immediately manifest. Where it is shown that acronyms have such a source, some allowance in any comparison must be made for the non-distinctive nature of the acronyms' progenitors. Under such circumstances, closer similarities than normal between such acronyms, apart from those which amount to an identity, might be expected and, to a degree, tolerated in the absence of any demonstrated `bad faith'. Rationale for such an approach lies in the wider trade context where the public has a vast array of acronyms before it, whether used as trade marks or otherwise, and is used to distinguishing between these acronyms on small differences within the contexts in which they occur.
Mr McManis, however, pointed to evidence that leans against such a treatment in the present matter. Mr Weaver et al have all declared that they are not aware of other acronymic uses of the letters O, P and M and the numeral 3. This, as Mr McManis pointed out, would negate the approach set out in the passage I have just quoted. Once that is so, I think the normal approach, as seen in matters such as the other five to which he referred, will prevail. However, despite Mr McManis’s arguments to the contrary, that approach would require a greater level of resemblance than is present in the remaining applications.
I believe that, of the remaining applications, there is sufficient about the way the numeral 3 is interposed within the ordering of the letters, which are themselves differently ordered to the way they present in the opponent’s trade mark, preventing the opponent establishing its ground. This is not so much a question of stylization as of a principle that, in 3M Company v David Guthries & Polytech 5000 Pty Ltd Hearing Officer Thompson identified as follows:
…as the Court has noted[5], most people will have remembered the opponent’s trade mark by forming a general impression of it. As a matter of logic, the same process is used when looking for the opponent’s trade mark on the shelves of shops or wholesalers – the search is one of looking for a trade mark which gives the impression of matching the memory, which itself is a general impression, rather than looking for a detailed match. In other words, the search is, in essence, one of looking for a trade mark which meets the general pattern of that in the retained memory which is not necessarily precise.
[5] He was referring, in general, to Jafferjee v Scarlett (1937) 57 CLR 115, Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65, Aristoc Ltd v Rysta Ltd (1944) 1B IPR 467. The same synthesis comes equally well from Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641, to which both advocates referred me in the present matter.
Approaching the matter in those terms, the differences between the opponent’s trade mark and those of the remaining applications, in look, sound, structure and (because of this) graphic impact are significant. Mr McManis has not satisfied me that there is any reasonable likelihood that any of the remaining trade marks will be mistaken for the opponent’s trade mark. Nor, and in contrast to the decision in MYOB, do I accept that the introduction of the numeral 3 between the letters P and M would leave any reasonable person, in the context of business management services, open to either confusion, or to an assumption that those trade marks are variants of the opponent’s, arising from the same source. The ground of opposition under s 44 has not been established for the remaining applications.
Section 60 – reputation, deception and confusion
The amended form of this provision applies in view of the filing date of the opposed applications. It reads:
Trade 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.
The evidence about the substance and extent of the opponent’s reputation comes from the declaration of Mr Scarborough, the opponent’s vice president and corporate counsel. Very briefly, the opponent is an association, whose members are project managers and similar professionals or organisations. It has operated for 40 years and now has 280,000 members in 175 countries. In Australia, however, the opponent had, at November 2007, less than 5000 members.
In his written submissions, and in his oral submissions in relation to 1209052, Mr Duffy sought to cast doubt on the extent of the opponent’s reputation in Australia. I understand his point, and it is clear that the applicant’s members in this country make up only a very small part of the membership of the international body. It may perhaps be that the opponent’s members in Australia are a set of obscure practitioners, well apart from the mainstream of project managers, who perhaps belong to some other organization and are generally unaware of the opponent, its members and its trade marks. However, this seems unlikely. The evidence in reply shows that Caravel makes mention of its own membership of the opponent. It presumably does this for a reason that resonates with the thrust of Mr Scarborough’s evidence: “the opponent is the world’s leading membership association” in the profession in question. It has Chapters, or what might be called local branches, in all States except Tasmania, and in the ACT. I think that, on the whole, Mr Scarborough’s evidence is more persuasive than Mr Duffy’s scenario. By far the more likely version of events, therefore, is that the opponent and its OPM3 trade mark have a significant reputation within the relevant field in Australia.
Mr McManis pressed the argument that, given the opponent’s reputation, the logical reaction of those who encounter any of the applicant’s trade marks would be to expect them to denote a connection with the opponent, or indeed to simply mistake them for the opponent’s trade mark, OPM3. This was particularly likely, he argued, in a field where there are no other trading indicia incorporating the letters and numeral in question. I agree with him to a degree. Thus, in a case of trade marks that consist of a sign which is made-up or invented, and that thus lack inherent meaning, I accept that minor differences from a well-known trade mark may be either overlooked or ignored.
It will be convenient, at this point, to deal firstly and briefly with applications 1209051 and 1209053. I will not repeat what I have said under s 44 but I am satisfied that the weight and substance of the opponent’s reputation makes deception or confusion at least as likely for s 60 purposes as it was, for different reasons, in terms of s 44. I conclude that the opponent has established its ground under s 60 with respect to those applications.
Turning then to 1209049, 1209050, 1209052 and 1233433, and despite the extent of the opponent’s reputation, Mr McManis has not satisfied me that deception or confusion could be said to be reasonably likely. The differences in look, sound, structure on which Mr Duffy relied are not what I referred to as “minor” in paragraph 42 above. The remaining trade marks will have a different graphic impact which will serve to alert the unwary to the fact that those trade marks are different to that of the opponent, and that this difference is likely to be significant.
Accordingly, I find that, in relation to applications 1209049, 1209050, 1209052 and 1233433, the ground under s 60 is not established.
Conclusion
I have found that the grounds of opposition under s 44 and 60 have been established with respect to applications 1209051 and 1209053, which I refuse to register. Otherwise, the opponent has not established any ground of opposition and trade mark applications 1209049, 1209050, 1209052 and 1233433 may proceed to registration 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 registration shall not occur until either the court makes orders to such an effect or the appeal has been discontinued. The parties should note that, if any part of this decision is appealed, registration of the surviving applications may be further delayed by the possibility of a cross-appeal.
Costs
Ultimately, the applicant has failed in two matters and succeeded in four, while appearing in person in relation to only one, on which it was successful. Mr Duffy noted that the applicant had, by appearing in relation to just one matter, reduced the complexity of the hearing. On the other hand, the applicant’s decision to appear in person in respect of only one of the six oppositions may suggest that it sees only one application as a priority, which might somewhat depreciate the extent of its success. Rather than try and resolve these interesting but rather opaque issues I will simply make no award.
Terry Williams
Hearing Officer
Trade Marks Hearings
26 February 2009
0
6
0