Propti Pty Ltd v Sage Realty Sydney Pty Ltd

[2024] ATMO 246

TRADE MARKS ACT 1995

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

Re:Opposition by Propti Pty Ltd to registration of trade mark application 2301553 (36) – Propti Connect – in the name of Sage Realty Sydney Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Drayton Sher Lawyers Pty. Ltd.

Applicant: YIP Legal Pty Ltd

Decision:

2024 ATMO 246

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 58 and 60 considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Propti Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Sage Realty Sydney Pty Ltd (‘Applicant’): 

Application Number:	2301553
Filing Date[1]:	26 September 2022
Services:	Class 36: Agency services for the leasing of real estate property; Appraisal of real estate; Brokerage of real estate; Commercial real estate agency services; Consultation services relating to real estate; Leasing of real estate; Property leasing (real estate property only); Provision of information in relation to real estate; Provision of information relating to property (real estate); Real estate affairs; Real estate advisory services; Real estate agencies; Real estate agency services; Real estate agents services; Real estate appraisal; Real estate brokerage; Real estate leasing; Real estate management; Real estate services relating to property development; Real estate services relating to real estate development; Rental of real estate; Stock and station agencies (real estate services); Real estate lease renewal services; Real estate lease surrender services; Provision of information relating to real estate (‘Applicant’s Services’)
Trade Mark:	Propti Connect	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 24 May 2023. The SGP raised grounds of opposition under ss 58 and 60. The Applicant filed a Notice of Intention to Defend on 1 August 2023.

Evidence

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Jacob Isman, director of the Opponent (‘Isman declaration’)	7 November 2023	A to W
Evidence in answer
Prajwal Bhattarai, director of the Applicant (‘Bhattarai declaration’)	15 January 2024	PB-1 to PB-10
Evidence in reply
None filed

5. On 18 April 2024 the Opponent requested a hearing by written submissions.  The matter was set down for a hearing by written submissions on 30 October 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 23 September 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 16 October 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 24 October 2024 (‘Applicant’s Submissions’). 

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is an Australian company that arranges property reports for various clients such as property owners and property vendors.  

3. The relevant claims/statements in the Isman declaration can be summarised as follows:

   ·     The Opponent’s business was started in 2021.  The declarant commenced e-mailing real estate agents using the name ‘Propti’ (‘Propti Mark’) in April 2021 and the Opponent was incorporated on 17 May 2021.  Following that date the Opponent has set up a Facebook page with over 100 posts between May 2021 and September 2022. 

   ·     The Opponent also obtained t-shirts bearing the Propti Mark in June 2022. In the same month the Opponent also joined certain third party websites where it further advertised its services.   

   ·     The Opponent has sent e-mails to a number of contacts and entered into a number of referral agreements.  Between incorporation and September 2022 the Opponent ‘performed work on 74 appointments’, and had traded successfully for that time.  

   9. The annexures to the Isman declaration display various marketing material that use of the Propti Mark as well as e-mails and certain third-party articles that refer to the Opponent and the Propti Mark.  The Opponent provides evidence of trading activity which is what one would expect of a newly established small business.

   The Applicant

4. The Applicant is an Australian company that provides real estate services.  

5. The relevant claims/statements in the Bhattarai declaration can be summarised as follows:

   ·     The Applicant was incorporated in 2017 and decided to rebrand as Propti Connect in May 2022.  The Applicant chose this name unaware of the Opponent.  It conducted ASIC searches to confirm that there was no use of the name and applied to register Propti Connect as a business name on 1 June 2022.

   ·     The Applicant commenced using the Trade Mark in August 2022 and continues to use it actively for its real estate services. 

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 58 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   13.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J), see also s 29(1).

   Discussion

   Section 58 – Applicant not owner of trade mark

   14. Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   15.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

   [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

   [6] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

   [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

   16. The ground based on s 58 was particularised in the SGP as follows:

   1. Propti Pty Ltd is a company that arranges property reports of different kinds for various types of clients. These include: property owners, property vendors and purchasers, brokers, solicitors, conveyancers, accountants, real estate agents, buyers agents, bankruptcy trustees, private lenders and banks.

   2. The full list of the types of reports Propti Pty Ltd arranges are as follows:

   Valuation Survey Pre-settlement Construction
   First & Second Mortgages Depreciation Schedule Strata Report Handover Inspection
   Family Law Boundary Surveys Building / Pest Inspection Stage Inspection
   Stamp Duty & Capital Gains Subdivision and Strata Pool Inspection & Certification Dilapidation Report
   Litigation Detailed Cost Report (budget estimates and tendering)
   Acquisitions & Resumption Initial Cost Report (pre-funding for construction loans)
   Rental Determinations Progress Drawdown Report
   Development Feasibility Council Report
   Unit Entitlement Building insurance replacement
   Asset Valuation
   Insurance Valuation
   Business Valuation

   3. During early 2021 the director of Propti Pty Ltd, Jacob Isman, came up with the idea of setting up a business where, if people were looking for any type of property report, instead of having to find different experts to complete these reports they could have a central hub which could arrange all reports for them. This is the idea behind Propti Pty Ltd.

   4. Mr Isman decided to proceed with this idea and thought of the name “Propti” for the business as it is a play on the word “property” and it is a name that is easy to remember.

   5. Mr Isman began preparing to start the business in April 2021. The business required a list of experts and inspectors who it could instruct to prepare the reports requested by clients. To this end, during April 2021 Mr Isman began to contact the experts and inform them about the business so that he could set up relationships with them and brief them once clients placed orders.

   6. Mr Isman sent a series of emails to estate agents and experts informing them about the business and seeing whether they could refer any experts to us for us to brief or whether they would be available to assist with reports.

   Each of these emails contained the business name Propti. The first of these emails was sent on 20 April 2021 to Dion Markovics, an estate agent at Raine & Horne in Double Bay.

   7. The above shows that Propti Pty Ltd was using the name Propti to advertise and sell its services from at least 20 April 2021.

   8. A central part of the business would be its website which people could access and order reports from. On 20 April 2021 Propti Pty Ltd purchased the domain name: .

   9. On 17 May 2021 Propti Pty Ltd was registered.

   10. Propti Pty Ltd’s first order from a client happened on 23 June 2021 when a client ordered a strata report from us for a property at 4/12 Hurlstone Ave, Hurlstone Park, NSW, 2193.

   11. For the above reasons, the applicant is not the owner of the trade mark as Propti Pty Ltd used the mark Propti first pursuant to s58 of the Act.

   17.     The first factor relies on a determination that the Trade Mark is substantially identical to the Propti Mark for which the Opponent claims ownership.

7. The Trade Mark and the Propti Mark are set out below:

   PROPTI CONNECT                  PROPTI

8. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[8]

   20.     The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[9] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[10] The court stated in Pham Global:

   There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

   … The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[11]

   21.     The Opponent has the obligation to establish this ground (and indeed any ground) of opposition and the Opponent has not chosen to address this point in its submissions, other than making the bare point in paragraph 36 of the Opponent’s Submissions that ‘the marks are beyond deceptively similar, but are rather all but the same’.

   22.     I do not accept the Opponent’s submissions.  In comparing the marks side-by-side I note that the Trade Mark contains the additional element ‘connect’.  This creates a mark that is visually and aurally distinct from the Propti Mark and there is even a conceptual difference, noting that either the Propti Mark has no meaning or would be seen as a reference to ‘property’ while the addition of the term ‘connect’ changes the meaning of the mark to an entity providing a connection in respect of the ‘propti/property’. 

   23.     The Applicant’s Services are best characterised as real estate services. Whilst real estate services do involve connecting buyers and sellers (or lessors and renters) of properties I do not consider the term ‘connect’ to be so descriptive of the Applicant’s Services (compared to terms such as Radiology or Clinical Imaging for radiology services[12])  such that the sole essential element of the Trade Mark is the word ‘propti’.  The term ‘connect’ is not unique to the real estate industry and has a broad range of uses across the spectrum of businesses in Australia; it is at best allusive to, rather than descriptive of, the Applicant’s Services.  The addition of the term ‘connect’ creates a two-word mark that has a different meaning to the Propti Mark.  I am satisfied, when making a side-by-side comparison, cognisant of the essential elements of each mark, that the Trade Mark and the Propti Mark are not substantially identical.  

   24. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 60

   [8] [1963] HCA 66, [12].

   [9] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

   [10] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ) (‘Pham Global’).

   [11] Ibid [51]-[52].

   [12] See Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, (Greenwood, Jagot and Beach JJ).

9. Section 60 is reproduced below:

   Section 60 - 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.

10. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

11. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[13]

    [13] [2023] FCA 487, [20]-[21] (Kennett J)

12. In McCormick & Co Inc v McCormick, [14] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[15]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[16]

    [14] [2000] FCA 1335.

    [15] Ibid, [81].

    [16] (1992) 33 FCR 302, 343.

1. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[17]

   [17] (1999) 47 IPR 423, 436.

2. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[18] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[19]

   [18] [2000] FCA 1587.

   [19] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed, the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

3. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The trade mark/s have been used before the priority date of the trade mark being opposed

   1. Propti Pty Ltd is a company that arranges property reports of different kinds for various types of clients. These include: property owners, property vendors and purchasers, brokers, solicitors, conveyancers, accountants, real estate agents, buyers agents, bankruptcy trustees, private lenders and banks.

   2. The full list of the types of reports Propti Pty Ltd arranges are as follows:

   Valuation Survey Pre-settlement Construction
   First & Second Mortgages Depreciation Schedule Strata Report Handover Inspection
   Family Law Boundary Surveys Building / Pest Inspection Stage Inspection
   Stamp Duty & Capital Gains Subdivision and Strata Pool Inspection & Certification Dilapidation Report
   Litigation Detailed Cost Report (budget estimates and tendering
   Acquisitions & Resumption Initial Cost Report (pre-funding for construction loans)
   Rental Determinations Progress Drawdown Report
   Development Feasibility Council Report
   Unit Entitlement Building insurance replacement
   Asset Valuation
   Insurance Valuation
   Business Valuation

   3. During early 2021 the director of Propti Pty Ltd, Jacob Isman, came up with the idea of setting up a business where, if people were looking for any type of property report, instead of having to find different experts to complete these reports they could have a central hub which could arrange all reports for them. This is the idea behind Propti Pty Ltd.

   4. Mr Isman decided to proceed with this idea and thought of the name “Propti” for the business as it is a play on the word “property” and it is a name that is easy to remember.

   5. Mr Isman began preparing to start the business in April 2021. The business required a list of experts and inspectors who it could instruct to prepare the reports requested by clients. To this end, during April 2021 Mr Isman began to contact the experts and inform them about the business so that he could set up relationships with them and brief them once clients placed orders.

   6. Mr Isman sent a series of emails to estate agents and experts informing them about the business and seeing whether they could refer any experts to us for us to brief or whether they would be available to assist with reports.

   Each of these emails contained the business name Propti. The first of these emails was sent on 20 April 2021 to Dion Markovics, an estate agent at Raine & Horne in Double Bay.

   7. The above shows that Propti Pty Ltd was using the name Propti to advertise and sell its services from at least 20 April 2021.

   8. A central part of the business would be its website which people could access and order reports from. On 20 April 2021 Propti Pty Ltd purchased the domain name: .

   9. On 17 May 2021 Propti Pty Ltd was registered.

   10. Propti Pty Ltd’s first order from a client happened on 23 June 2021 when a client ordered a strata report from us for a property at 4/12 Hurlstone Ave, Hurlstone Park, NSW, 2193.

   11. The above grounds also show that Propti Pty Ltd’s use of Propti had acquired a reputation in Australia before the priority date of the applicant’s trade mark and that, in light of that reputation, use of the applicant’s trade mark will be likely to deceive or cause confusion pursuant to s60 of the Act.

4. The Opponent had operated a small business for approximately 16 months prior to the relevant date. The Opponent’s evidence of turnover (i.e. ‘performed work on 74 appointments’) and level of marketing is reflective of that fact. Noting the market for the Opponent’s services is a broad one (particularised as ‘property owners, property vendors and purchasers, brokers, solicitors, conveyancers, accountants, real estate agents, buyers agents, bankruptcy trustees, private lenders and banks’) the evidence before me is in no way sufficient to establish that, at the relevant date, the Opponent’s Propti Mark had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market. As the Opponent has not satisfied the requirements under s 60(a) I do not need to consider whether the use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Decision and Costs

5. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2301553 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

6. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   17 December 2024