Prosegur Australia Pty Ltd and Next Payments Pty Ltd v Armaguard Technology Solutions

[2023] ATMO 52

TRADEMARKSACT1995

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

Re:Opposition by Prosegur Australia Pty Ltd and Next Payments Pty Ltd to registration of trade mark application number 2098152 – atm² – trade mark application number 2098154 – ATM SQUARED – trade mark application number 2098156 – ATM TO THE POWER OF TWO – 2106116 – atm^x – trade mark application number 2106119 – atm^x by Armaguard (Classes 9, 36, 37 and 39) - in the name of Armaguard Technology Solutions IP Pty Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Sonia Stewart of Counsel instructed by Pearce IP.

Applicant: Lisa Egan of Mills Oakley.

Decision:

2023 ATMO 52

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41 and 44 considered – no grounds established – trade marks to proceed to registration.

Background

1. This decision concerns an opposition brought under section 52 of the Trade Marks Act 1995 (Cth)1 to the registration of five trade mark applications (‘Applications’) filed by Linfox Armaguard Pty Ltd 2 for the following trade marks:

Trade Mark No. Trade Mark (collectively ‘ Trade Marks’) Filing Date

¹ Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995

(Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

² The trade marks were initially filed in the name of Linfox Armaguard Pty Ltd and were subsequently assigned to Armaguard Technology Solutions IP Pty Ltd.

2098152	(‘152 Mark’)	24 June 2020
2098154	ATM squared (‘154 Mark’)
2098156	ATM to the power of two (‘156 Mark’)
2106116	(‘116 Mark’)	24 July 2020
2106119	(‘119 Mark’)

1. The Applications are made in relation to the following goods and services:

Class 9: Automated teller machines and parts and fittings therefor; automated cash handling machines and parts and fittings therefor

Class 36: Automated teller machine services; cash handling services; reconciliation of automatic teller machine deposits; currency processing; settlement and reporting services in relation to automatic teller machines

Class 37: Installation, monitoring, maintenance and servicing of automated teller machines and cash handling machines

Class 39: Cash replenishment of automated teller machines

(‘Applicant’s Goods and Services’)

1. The 152, 154 and 156 Marks were advertised for opposition on 25 November 2020, while the

   116 and 119 Marks were advertised for opposition on 25 December 2020.

1. On 22 January 2021, Prosegur Australia Pty Ltd, Next Payments Pty Ltd and Banktech Group Pty Ltd filed Notices of Intention to Oppose the Trade Marks. On 19 February 2021 Banktech Group Pty Ltd withdrew from the opposition proceedings. The Notices of Intention to Oppose were subsequently amended and the oppositions proceeded in the names of Prosegur Australia Pty Ltd and Next Payments Pty Ltd (‘collectively, ‘Opponents’).

1. The Opponents filed Statements of Grounds and Particulars on 19 February 2021.

1. Linfox Armaguard Pty Ltd (‘Linfox’) filed Notices of Intention to Defend on 20 May 2020.

1. The Opponents filed Evidence in Support of the oppositions on 25 August 2021. Linfox filed Evidence in Answer on the 18 November 2021. The Opponents then filed Evidence in Reply on 25 January 2022.

1. The Trade Marks were subsequently assigned to Armaguard Technology Solutions IP Pty Ltd (‘Applicant’) pursuant to a Deed of Assignment. The assignment was recorded on the Register of Trade Marks on the 19 October 2022.

1. On 23 February 2022 the Applicant requested to be heard. The matter was heard before me, a Delegate of the Registrar of Trade Marks, on 24 January 2023. The Opponent was represented by Sonia Stewart of Counsel instructed by Naomi Pearce of Pearce IP. The Applicant was represented by Lisa Egan accompanied by Joshua Firmin, both of Mills Oakley.

Evidence

1. The following evidence was filed:

Evidence in Support

Declaration of Andrew Peter Nathan, Commercial Director of Prosegur Australia Pty Ltd, made on 25 August 2021 (‘Nathan Declaration’) with Annexures APN-1 to APN-12.

Declaration of Katrina May Crooks, Executive Lawyer at Pearce IP, the legal representative for the Opponents, made on 25 August 2021 (‘Crooks Declaration’) with Annexures KMC-1 to KMC-09.

Evidence in Answer

Declaration of Alison Huitfeldt, General Counsel of Linfox, made on 15 November 2021 with Exhibits AH-01 to AH-02.

Declaration of Lisa Maree Egan, Partner at Mills Oakley, the legal representative for the Linfox, made on 15 November 2021 (‘Egan Declaration’) with Exhibit LME-01.

Evidence in Reply

Declaration of Katrina May Crooks made on 25 January 2022 (‘Second Crooks Declaration’) with Annexures KMC-10 to KMC-15.

Opponents

1. The Prosegur Group is a private security company founded in Spain in 1976, which focuses on transport and cash management services. In Australia, the company Escort and Armoured Transport Company Limited (‘Escort’) was founded in 1946. Escort has provided automatic teller machines and financial services to financial institutions in Australia since the 1980s. In December 2013 the Prosegur Group acquired Escort, which by this point was known as Chubb Security Services Pty Ltd (‘Chubb’). Chubb’s company name was then changed to Prosegur Australia Pty Ltd (‘Prosegur’).

1. According to the Nathan Declaration, Prosegur now owns over 900 ATMs and provides services to over 5000 ATMs across Australia. Prosegur’s services include cash logistics, ATM cash forecasting, deployment and maintenance for ATMs, ATM replenishment, and customer support services. Many of these services are provided to banks, hospitals, casinos, and retailers including Westpac Banking Corporation, Bendigo and Adelaide Bank, Woolworths, Star Entertainment Group and Transport for NSW.

1. Mr Nathan explains that an ATM is a machine that automatically dispenses cash and performs other banking services when the user inserts a bank card and accesses the user’s bank account

by using a personal identification number. Exhibited to the Nathan Declaration are screenshots from the website explaining the etymology and meaning of the acronym ‘ATM’.

1. Annexed to the Nathan Declaration are two articles entitled ‘1969 Australia’s first ATM’ from the Australian Food Timeline website and ‘Do you remember our first ATM’ from the Brisbane Times dated 17 September 2007. Both articles outline the history of automatic teller machines in Australia.

1. Mr Nathan declares that in the early 2000s a series of banking reforms led to a large increase in the number of ATMs in Australia with a growth from 13,139 ATMS in September 2001 to 21,266 ATMs in March 2003. These statistics were obtained from a copy of which is exhibited to the Nathan Declaration.

1. Mr Nathan opines that the acronym ‘ATM’ had become widely used globally by the mid 1990s. For example, in 1997 the association ‘ATM Industry Association’ (‘ATMIA’) was founded. ATMIA is the leading non-profit trade association that represents the entire global ATM industry. Furthermore, while ATMs were originally provided by banks at their branch locations, they are now readily available in a wide range of locations throughout Australia, such as shopping centres, convenience stores, airports and casinos.

1. Mr Nathan declares that many manufacturers produce independent unbranded ATMs. Two examples provided in the Nathan Declaration are Diebold Nixdorf and Hyosung TNS, two companies based in the United States. Annexed to the Nathan Declaration are screenshots from the companies’ websites that show use of the acronym ‘ATM’ in a generic fashion to refer to automatic teller machines. The Crooks Declaration also includes various screenshots and search results of third party companies using the acronym ‘ATM’ to describe automatic teller machines.

Applicant

1. Linfox is owned by Linfox Pty Ltd, a company that provides supply chain and logistics services to the Asia Pacific region. In 2019, Linfox acquired a fleet of ATMs from a third party company, Cuscal. At the time this fleet operated under the trade mark, ‘rediATM’. In 2020, Linfox

rebranded its fleet of ATMs. Approximately 1600 ATMs previous associated with ‘rediATM’ were rebranded to ‘atm^x’ and ‘atm^x by Armaguard’. Ms Huitfeldt declares that these rebranded ATMs represent 7% of all ATMs in Australia.

1. Exhibited in the Huitfeldt Declaration are examples of use of the trade marks ‘atm^x’ and ‘atm^x by Armaguard’ on ATMs, the Applicant’s website ‘ Linfox’s social media accounts, third party websites and physical media such as billboards, advertising on trains and print media. Linfox is also the registrant of the domain name type="1">

2. Exhibited to the Egan declaration are search results from searches undertaken on the Google search engine for ‘atmx’, ‘atm2’, ‘atm to the power of 2’ and ‘atm squared’. Ms Egan notes that a significant number of the search results relate to Linfox.

Grounds, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 41 and 44.

1. The Opponents bears the onus of establishing one or more of the grounds of opposition.3 The required standard of proof is on the balance of probabilities.4 The date at which the rights of the parties will be determined is the priority date of the Trade Marks, being 24 June 2020 for the 152, 154 and 156 Marks, and 24 July 2020 for the 116 and 119 Marks.

Discussion and Reasons

Section 41

1. Section 41 provides:

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

³ Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

⁴ Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Note:      For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)     the time of production of goods or of the rendering of services. Note 2:              For goods of a person and services of a person see section 6.

Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:     For applicant and predecessor in title see section 6.

Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

1. The Applicant submits that the Opponents are not entitled to make submissions in relation to section 41(4) because that subsection was not referred to in the SGP. While the SGP does only refer to section 41(3), in my view section 41 cannot be truncated in such a way. Section 41(1)

requires an application for the registration of a trade mark to be rejected if the trade mark is not capable of distinguishing the relevant goods or services from the goods or services of other persons. Section 41(2) provides the criteria for this assessment: only if a trade mark falls within s 41(3) or 41(4) will a trade mark fail to be capable of distinguishing the applicant’s goods or services. If neither s 41(3) or s 41(4) apply, then the trade mark is capable of distinguishing. It would not be permissible to only consider s 41(3) and not s 41(4). To do so would leave the inquiry required by s 41(2) incomplete. Accordingly, I have considered the submissions made by the Opponent in relation to s 41(4).

1. Whether the Trade Marks are capable of distinguishing the Applicant’s Goods and Services requires consideration of the extent to which the Trade Marks are inherently adapted to distinguish those goods and services from the goods or services of other traders. The test for assessing this was outlined in Clark Equipment Co v Registrar of Trade Marks5:

[t]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.6

1. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited7 indicated that the test for distinctiveness is a two-step process. First, it is necessary to establish the ordinary signification, or ordinary meaning, of the trade mark in Australia to those concerned with the relevant goods or services.8 Then once the ordinary signification is established,

⁵ (1964) 111 CLR 511 (Kitto J).

⁶ Ibid 514.

⁷ [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).

⁸ Ibid [71].

consideration turns to whether other traders may legitimately desire to use the word in respect of their goods or services.9

1. The meaning of the acronym ‘ATM’ is not in dispute. Both parties agree that ‘ATM’ is a well- known acronym for ‘automated teller machine’ or ‘automatic teller machine’. This is also established in the Nathan, Crooks and Huitfeldt Declarations. The issue lies with impact of the other elements present in the Trade Marks.

1. The Opponents contend that the ordinary signification of the Trade Marks is ‘ATM’, and that the additional elements in the Trade Marks do not change the ordinary meaning of ‘ATM’. In the Nathan Declaration, Mr Nathan opined:

the addition of terms such as ‘X’ or ‘2’ or ‘squared’ or ‘to the power of two’ does not change the basic meaning of the acronym, which needs to be available for the use for many providers of ATM services including Prosegur and the Second Opponent.

1. The Opponents also characterise the additional elements as superlative, noting that ‘^x’, ‘squared’, ‘to the power of two’ and ‘²’ also possess ordinary mathematical or algebraic meaning. The Opponents submit that these additional elements are akin to a hashtag, domain name, plus symbol, or descriptive prefix, such as ‘e’ in the context of ‘e-commerce’. Further, annexed to the Second Crooks Declaration are various examples of trade marks incorporating the number ‘2’ or the letter ‘X’, including ‘PlayStation 2’, ‘Samsung Galaxy 2’, ‘iPad Air2’, ‘Xbox Series X, ‘Tesla Model X’ and ‘iPhone X’. The Opponents assert that these additional elements are not capable of transforming a term which is devoid of any capacity to distinguish, into one that does distinguish the relevant goods and services.

1. Conversely, the Applicant submits that there is no evidence that supports the Opponents’ assertation and that the additional elements of the Trade Marks cannot be reduced to mere superlatives. The Applicant emphasises that it is not seeking to register ‘ATM’ as a trade mark, and that the Opponents’ submissions give little attention to the trade marks as a whole.

⁹ Ibid.

1. The 152, 154 and 156 Marks are each comprised of the acronym ‘ATM’ together with element representing mathematical concept of ‘squared’: ATM², ATM SQUARED and ATM TO THE POWER OF TWO. ‘Squared’ is a verb that means to multiply a number or quantity by itself.10 The superscript ‘^2’ and the phrase ‘TO THE POWER OF TWO’ also denote this concept. Similarly, the 116 Mark is comprised of the acronym ‘ATM’ and the superscript ‘^x’. I note the superscript ‘^x’ is often utilized to represent an unknown value in mathematics and algebra.

1. While I accept that other traders would need to use the acronym ‘ATM’ and that mathematical and algebraic symbols are utilised in connection with financial services in a number of ways, it is the total combination of the elements of a trade mark that is considered and assessed, not the constituent parts.11 In my view, the combination of ATM with the superscripts ‘²’ or ‘^x’, the word ‘SQUARED’ , or the phrase ‘TO THE POWER OF TWO’ creates an impression distinct from the ordinary acronym ‘ATM’. While not determinative, the Opponents’ evidence does not demonstrate that it is common in the trade for ‘ATM’ to be paired with these terms. Nor do the Opponents’ submissions persuade me that other traders would honestly desire to use this combination of elements in relation to their own services. I am satisfied that the combination of these elements does not have any ordinary signification in relation the Applicant’s Goods and Services. I note that the Second Crooks Declaration includes reference to a kiosk developed by a third party called ‘ATMx’. However, this use of ‘ATMx’ is not for descriptive purposes, nor does it indicate that other traders would desire to use it in relation to their own goods or services.

1. Turning to the 119 Mark, in addition to ‘ATM^X’ the 119 Mark includes the words ‘BY ARMAGUARD’. ARMAGUARD appears to be a portmanteau of the words ‘armour’ and ‘guard’. No evidence has been submitted that indicates ‘ARMAGUARD’ is anything other than an invented term. As such, the 119 Mark also has no ordinary signification in relation to the Applicant’s Goods and Services.

¹⁰ Macquarie Dictionary (online at 20 April 2023) ‘square’ (def 18).

¹¹ Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012[ FCA 81, [61] (Dodds-Streeton J); Diamond T Motor Car Co’s Application (1921) 38 RPC, 373, 380 (Lawrence J).

1. For these reasons I am satisfied that the Trade Marks are sufficiently capable of distinguishing the Applicant’s Goods and Services from those of other traders.

1. The section 41 ground of opposition is not established.

Section 44

1. Section 44 relevantly provides:

(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.

(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.

1. To succeed under this ground of opposition the Opponents must establish that the Trade Marks are substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that

are similar to the Applicant’s Goods or Services, or goods and services that are closely related to the Applicant’s Goods or Services.

1. In the SGP the Opponents identified 14 trade marks as the basis for this ground of opposition. Those trade marks are set out in Annexure A. Of the 14 trade mark registrations, trade mark registration numbers 1357000 and 1448358 are no longer registered and are not relevant to this ground of opposition. For the purposes of discussion, I have reproduced a number of the trade mark registrations below:

Trade Marks	Priority Date	Owner	Goods and Services
970274 ATMPay	12 Sep 2003	The Banktech Group Pty Ltd	Class 9: Computer hardware and computer software Class 36: Financial services
1370684 ecoATM	07 May 2010	ECOATM INC.	Class 9: Reverse vending machines that automate electronic device recycling by identifying, testing, valuing, and accepting used electronic devices and remunerating the value to the consumer
1421777 atm2go	22 Apr 2011	ATM2GO Franchising Pty Ltd	Class 36: Card accessed banking services; cash disbursement services; cash dispenser services; cash dispensing services; monetary transaction services; services offered by automated bank machines
1710482	3 August 2015	Proffertjes Yum Pty Ltd	Class 36: Provision of automated teller machines
1909785 Mr ATM	1 March 2018	Mc Klaren Holdings Pty Ltd	Class 9: Automated teller machines (ATM) Class 43: Take away food services

1922617	26 April 2018	ATM World Pty Ltd	Class 36: Rental of automated teller machines
1922618	26 April 2018	ATM World Pty Ltd	Class 36: Rental of automated teller machines

(Collectively, ‘Earlier Trade Marks’)

1. Each of the Earlier Trade Marks has a priority date that is earlier than the priority dates of the Trade Marks and is in the name of an entity other than the Applicant.

Comparison of Trade Marks

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell v Esso’) Windeyer J explained the test for determining substantial identity:

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.12

1. I am not persuaded that any of the Trade Marks are substantially identical to the Earlier Trade Marks. While the Trade Marks and the Earlier Trade Marks all include the element ‘ATM’, the Earlier Trade Marks each incorporate other elements that serve to both visually and aurally differentiate the Earlier Trade Marks from the Trade Marks. The impression of these additional elements is even more pronounced than might otherwise have been given the descriptive nature

¹² [1963] HCA 66; (1963) 109 CLR 407, [12].

of the common element, ‘ATM’.13 As such, I am satisfied that a total impression of similarity does not emerge from the comparison.

1. Section 10 of the Act defines ‘deceptively similar’ as:

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.

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell v Esso:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].14

1. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.15 Accordingly, an allowance is made for imperfect recollection of the trade marks.16 The impression comes from the trade marks in their entirety,17 and is informed by the look, sound and ideas conveyed by the trade marks.18

¹³ See: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

¹⁴ [1963] HCA 66, [13].

¹⁵ Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

¹⁶ Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

¹⁷ Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

¹⁸ Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

1. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.19 This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.20

1. The Opponents submit that because each Trade Mark contains ‘ATM’ as the dominant or prominent feature, they are at least deceptively similar to one or more of the Earlier Trade Marks. The Opponents assert that the additional elements are not sufficient to differentiate the Trade Marks from the Earlier Trade Marks.

1. The Applicant submits that the only similarity between the Trade Marks and the Earlier Trade Marks is the acronym ‘ATM’, noting that each of the Earlier Trade Marks contains either additional words, such as ‘PAY”, ‘ECO’ or ‘MY’, or a combination of additional words and graphic device elements. In particular, the Applicant emphasises that none of the Earlier Trade Marks contain the elements ‘²’, ‘SQUARED’ ‘TO THE POWER OF TWO’, ‘^X’ or ‘by ARMAGUARD’.

1. All of the trade marks are comprised of the acronym ‘ATM’ with additional elements. ‘ATM’ is completely descriptive within the context of the relevant goods and services. As Stephen J noted in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two

¹⁹ Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

²⁰ Ibid.

traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.21

1. However, the presence of a common descriptive element in the trade mark does not mean that element should be ignored for the purposes of the comparison. In Broadhead’s Application22, Lord Evershed MR stated:

[W[here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that (nor did the Assistant Comptroller, as I read his decision, make it so appear) that you must treat the words as though the common part was not there at all.23

1. For the reasons that follow, I do not consider the Trade Marks to be deceptively similar to any of the Earlier Trade Marks. Although the ‘ATM’ element is shared between the trade marks, when considered in their entirety the Trade Marks both look and sound different from the Earlier Trade Marks. Each of the Earlier Trade Marks contain elements, such as the words ‘Pay’, ‘My’, ‘Eco’, ‘World’, and ‘Money’, that are points of visual and aural distinction. Beyond the reference to ATMs there is also no consistency in the ideas conveyed by the respective trade marks in their entirety.

1. The arguable exception is trade mark registrations 1421777, ‘atm2go’, and 1710482, ‘ATM2U’, which both contain the acronym ATM and the number ‘2’. However, in my view both trade marks would likely be construed and pronounced by consumers as ‘atm to go’ and ‘atm to you’ rather than ‘atm 2’ or ‘atm squared’.

1. Lastly, as identified by the Applicant, none of the Earlier Trade Marks share any of the Trade Marks’ elements other than ‘ATM’. While I am conscious that consumers may not recall specific details of the respective trade marks, I am satisfied considering the impression of the trade

²¹ [1978] HCA 11, [22].

²² (1950) 10 RPC 209.

²³ Ibid 215.

marks as wholes, that it is unlikely that consumers would confuse ATM², ATM^X, ATM SQUARED, ATM TO THE POWER OF TWO or ATM^X BY ARMAGUARD with any of the Earlier Trade Marks.

Accordingly, I am satisfied that the Trade Marks are not deceptively similar to any of the Earlier Trade Marks.

1. For completeness, I note the other trade mark registrations referred to in the SGP and Opponents’ submissions. Noting my conclusions in relation to the Earlier Trade Marks, I would arrive at the same conclusion for any of those other trade marks that specify similar goods or services to the Trade Mark given that in addition to the letters ‘ATM’ they incorporate elements that further differentiate them from the Trade Marks.

1. The section 44 ground of opposition is not established.

Decision

1. Section 55(1) relevantly provides:

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 Opponents have not established any of the nominated grounds of opposition. Accordingly, trade marks 2098152, 2098154, 2098156, 2106116 and 2106119 may proceed to registration one month from the date of this decision.

1. Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Marks not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponents were not successful in the opposition, I award costs against the Opponents under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations in respect of trade mark number 2098152. In respect of trade mark application numbers 2098154, 2098156, 2106116 and 2106119, I award reduced costs in the same manner as Hume Industries (Malayasia) Berhard v James Hardie & Coy Pty Ltd24.

Timothy Brown Hearing Officer

Delegate of the Registrar of Trade Marks 24 April 2023

Annexure A

²⁴ [2001] ATMO 78.

Trade Mark	Priority Date	Owner	Goods and Services
970274 ATMPay	12 Sep 2003	The Banktech Group Pty Ltd	Class 9: Computer hardware and computer software Class 36: Financial services
1357000	20 Apr 2010	My ATM Holdings Limited	Class 9: Automated teller machines (ATM) and related software; automatic payment machines; automatic vending machines Class 35: Business management; business consultancy Class 36: Financial services including services via automated teller machines (ATMs) Class 37: Installation, repair and maintenance of automated teller machines (ATMs)
1370684 ecoATM	07 May 2010	ECOATM INC.	Class 9: Reverse vending machines that automate electronic device recycling by identifying, testing, valuing, and accepting used electronic devices and remunerating the value to the consumer
1421777 atm2go	22 Apr 2011	ATM2GO Franchising Pty Ltd	Class 36: Card accessed banking services; cash disbursement services; cash dispenser services; cash dispensing services; monetary transaction services; services offered by automated bank machines
1448358 Ezeatm	14 Sep 2011	Ezeatm Services Pty Ltd	Class 9: Machines for bank transactions; machines for cash dispensing; automated cash machines; automatic teller machines Class 36: Cash card services; cash dispensing services; banking services in relation to the electronic transfer of funds; electronic funds transfer; rental of automatic teller machines

1517485	1 Oct 2012	DC Payments Pty Ltd	Class 9: Computer software including software for electronic payment systems, electronic banking and money dispensing machines; money validation and counting machines and software for these; apparatus for controlling the operation of machines; accounting machines; automatic payment machines; calculating machines; electrical apparatus for controlling machines Class 36: Monetary and financial services, namely the provision of such services via electronic data terminals and automated payment machines; installation operation, maintenance and servicing of, and reporting on, electronic payment systems; installation, operation, maintenance and servicing of, and reporting on, automated payment systems; money exchange services provided via electronic data terminals and automated payment machines; credit, debit and charge cards and related credit, debit and charge card services provided via electronic data terminals and automated payment machines; computerised cash dispensing banking services relating to the servicing and maintenance of, and reporting on, cash dispensing terminals Class 37: Installation, repair and maintenance of automatic teller machines, money dispensing machines, apparatus for controlling the operation of machines, accounting machines, automatic payment machines, calculating machines, electrical apparatus for controlling machines and equipment associated with such machines
1520163	16 October 2012	Coles Group Limited	Class 7: Automated vending machines; computerised vending machines

Class 9: Automated banking machines, and related software; automated payment machines; automated cash machines; automated teller machines; computerised banking machines; computerised payment machines; computerised cash machines; computerised teller machines; machines for banking transactions; machines for cash dispensing Class 36: Automated banking machines, and related software; automated payment machines; automated cash machines; automated teller machines; computerised banking machines; computerised payment machines; computerised cash machines; computerised teller machines; machines for banking
1529306	3 December 2012	DSM CONNECT PTY LIMITED ONECASH LIMITED	Class 9: Electronic funds transfer (EFTPOS) machines; Automated teller machines (ATM) Class 36: Card operated financial services
1584021	3 October 2013	IF Business Solutions Pty Ltd	Class 9: Automated teller machines (ATM)
1701494	18 June 2015	FastCash ATM Services Pty Ltd	Class 9: Automated teller machines (ATM); Multifunction cards (encoded) for financial services; Multifunction cards (magnetic) for financial services; Cards encoded to access computer software; Computer software; Magnetic cards being computer software; Electronic banking installations; Automatic money processing apparatus for the delivery of money; Automatic money processing apparatus for the storage of money; Money handling apparatus; Money transfer

terminals; Automatic payment machines; Automated cash machines; Automatic cash dispensers; Cash dispensers; Cash dispensing apparatus; Cash dispensing machines; Machines for cash dispensing; Accounting machines; Electrical accounting machines; Electronic accounting machines Class 36: Card operated financial services; Computerised financial services; Financial services; Provision of information relating to financial services; Electronic banking; Electronic money transfer services; Cash card services; Cash dispenser services; Cash dispensing services Class 37: Installation of computerised information systems; Installation of electrical apparatus; Installation of electronic apparatus
1710482	3 August 2015	Proffertjes Yum Pty Ltd	Class 36: Provision of automated teller machines
1909785 Mr ATM	1 March 2018	Mc Klaren Holdings Pty Ltd	Class 9: Automated teller machines (ATM) Class 43: Take away food services
1922617	26 April 2018	ATM World Pty Ltd	Class 36: Rental of automated teller machines
1922618	26 April 2018	ATM World Pty	Class 36: Rental of automated teller

Ltd machines