Prosper Australia Inc v Peet & Company Ltd

[2008] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Prosper Australia Inc. to registration of trade mark application 1063698(16, 38) - PROSPER - filed in the name of Peet & Company Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Bryan Kavanagh, public officer Prosper Australia Inc Applicant: David Stewart special counsel Freehills
Decision:	2008 ATMO 91 s. 52 Opposition: grounds under ss 43 and 60 not made out. Overall opposition not established. Costs awarded against opponent.

Background

1. Peet & Company Ltd (“the applicant”) filed an application to register a trade mark, current details of which appear below:

   Application number:              1063698
   Filing date:  7 July 2005

   Specifications:  Class: 16 Printed matter, printed publications, printed reports, magazines and newsletters

   Class: 38 Online services including publications

   Trade mark:  PROSPER 

2. The trade mark was accepted for possible registration and advertised for opposition purposes.   Prosper Australia Inc. (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.  The parties served and filed evidence in accordance with the Trade Mark Regulations 1995 after which the matter was set down before me, a delegate of the Registrar of Trade Marks, for a hearing on 29 July 2008, in Canberra. 

3. The applicant appeared by video link and was represented by David Stewart, special counsel of Freehills. The opponent appeared by telephone link and was represented by its honorary public officer Bryan Kavanagh.

   Grounds of Opposition

4. The Notice of Opposition relied on two of grounds of opposition, under sections 43 and 60 of the Act.

   Onus

5. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities (Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521).

   Discussion

   Section 60

6. Section 60 of the Act (as it stood at the date the opposed trade mark applications were filed[1]) is reproduced below:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

   Note 2:  For priority date see section 12.

   [1] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80

7. It is for the opponent to point to a trade mark, whether registered or in common law

   use, which:

   • is either substantially identical with, or deceptively similar to, the trade mark of the application

   • before the priority date, had acquired a reputation in Australia; such that

   • use of the applicant’s trade mark would lead to deception or confusion.

8. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   “[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.”

9. Justice Kenny continues at 129 with the words:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

10. The opponent’s evidence is very weak. It consists of the opponent’s letterhead, a printout of a Melbourne University Centre for Public Policy web-page displaying a  device stating “Prosper Australia This Land is Your Land” in the heading, a brochure for a conference displaying the device mentioned and the contact details for the opponent, a media release and a web-page for the opponent’s web-site and displaying the device mentioned earlier. The opponent’s evidence in reply also mentions spending $611, 491.75 since 1 April 2000 in “educating people to the benefits of greater public capture of community generated annual land values.

11. The evidence filed in this matter is insufficient for me to infer the requisite reputation  in the opponent’s trade mark for the purposes of this ground.

12. Given this background, I cannot agree with the opponent that its trade mark has any relevant measure of reputation in Australia as at the application dates for either of these applications. If the trade mark that the opponent has put forward for me to consider cannot be shown to have ‘acquired a reputation in Australia’ then the necessary trigger for section 60 has not been met as set out in sub-section 60(a) and the ground of opposition is not established.

    Section 43

13. Section 43 of the Act provides:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

14. Here the opponent relies not on some connotation inherent in the opposed trade mark but on the alleged similarity of its own trade marks to the opposed trade mark.  However, in Big Country Developments Pty Ltd v TGI Friday's Inc, [2000] FCA 720, 48 IPR 513, the Full Bench of the Federal Court observed at page at 521:

    The case on deception and confusion sought to be made by Big Country and Friday's Australia in the present proceedings is one that falls outside the reasons specified in [section 43].  It does not depend upon some connotation in the registered mark, but upon its similarity to a name used by Big Country and others.  So the alleged deception or confusion is not for a reason covered by s 43.

15. The opponent cannot on this basis establish its ground under section 43 of the Act.

    Decision

16. Section 55 of the Act provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, 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.

    Note:  For limitations see section 6.

17. I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.

18. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

    Costs

19. Both parties requested costs in the matter. As the applicant has been the successful party and there is nothing before me to suggest that I should not apply the general rule, I award costs against the opponent in accord with the Official scale as set out in Schedule 8 of the Regulations to the Act.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    31 October 2008