Provent Holdings Limited

[2007] ATMO 28

TRADE MARKS ACT 1995

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

Re:Application numbers 1013832(28)(34)(41)(43)(45),1012834(41)(45), 1013835(41)(43), 1013836(41)(45) and 1013838(41)(45), 1013839(28)(21)(43)(45) 1013840(28)(43)(41) to register trade marks by Provent Holdings Limited

Delegate:	Debrett Lyons
Representation:	Applicant :  Michelle Edwards of Chysiliou Law.
Decision:	2007 ATMO 28 Section 44 : Applications part allowed. Amendments offered up at Hearing permitted applications to proceed for different sets of services.

Background

1. On 2 August 2004, Provent Holdings Limited (“the applicant”) of Tortola, in the British Virgin Islands made seven applications to register trade marks, details of which follow:

Application No.	Trade Mark	Classes of Goods/Services
1013832	Class: 28 Games and playthings; sporting goods; backgammon games; bats and balls for games; billiard balls; billiard cue tips; bingo cards; board games; chess games; counters (discs) for games; darts; dice; cups for dice; dominoes; draughtboards; marble games; apparatus for electronic games other than those adapted for use with television receivers only; mah-jong; playing balls; playing cards; ring games; roulette wheels; roulette chips; poker chips; parts and accessories for all the foregoing goods Class: 34 Tobacco; cigarettes; cigars; smokers' articles, not of precious metal Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 43 Services for providing food, drinks and temporary accommodation including such services provided by clubs, country clubs, night clubs, social clubs; hospitality services, namely providing food, drink and accommodation; cocktail lounge services; bar services; restaurant services including such services incorporating licensed bar facilities Class: 45 Social escort agency services; social escorting; escorting in society (chaperoning)
1013834	MANSION MODELS	Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 45 Social escort agency services; social escorting; escorting in society (chaperoning)
1013835	MANSION VILLAS	Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 43 Services for providing food, drinks and temporary accommodation including such services provided by clubs, country clubs, night clubs, social clubs; hospitality services, namely providing food, drink and accommodation; cocktail lounge services; bar services; restaurant services including such services incorporating licensed bar facilities
1013836	MANSION ESCORTS	Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 45 Social escort agency services; social escorting; escorting in society (chaperoning)
1013838	MANSION COMPANIONS	Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 45 Social escort agency services; social escorting; escorting in society (chaperoning)
1013839	MANSION CLUB	Class: 28 Games and playthings; sporting goods; backgammon games; bats and balls for games; billiard balls; billiard cue tips; bingo cards; board games; chess games; counters (discs) for games; darts; dice; cups for dice; dominoes; draughtboards; marble games; apparatus for electronic games other than those adapted for use with television receivers only; mah-jong; playing balls; playing cards; ring games; roulette wheels; roulette chips; poker chips; parts and accessories for all the foregoing goods Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 43 Services for providing food, drinks and temporary accommodation including such services provided by clubs, country clubs, night clubs, social clubs; hospitality services, namely providing food, drink and accommodation; cocktail lounge services; bar services; restaurant services including such services incorporating licensed bar facilities Class: 45 Social escort agency services; social escorting; escorting in society (chaperoning)
1013840	MANSION CASINO	Class: 28 Games and playthings; sporting goods; backgammon games; bats and balls for games; billiard balls; billiard cue tips; bingo cards; board games; chess games; counters (discs) for games; darts; dice; cups for dice; dominoes; draughtboards; marble games; apparatus for electronic games other than those adapted for use with television receivers only; mah-jong; playing balls; playing cards; ring games; roulette wheels; roulette chips; poker chips; parts and accessories for all the foregoing goods Class: 41 Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system Class: 43 Services for providing food, drinks and temporary accommodation including such services provided by clubs, country clubs, night clubs, social clubs; hospitality services, namely providing food, drink and accommodation; cocktail lounge services; bar services; restaurant services including such services incorporating licensed bar facilities

(“the applications”)

1. On examination, objection was raised against each of the applications under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis of prior trade mark registration 766178 in the name of Mansion Group Holdings Pty Ltd. Full details of that registration  are set out below:

Regn No	Mark	Class	Services	Priority Date
766178	MANSION	41	Conducting and providing facilities for conferences, seminars, conventions and receptions; educational training, entertainment, and leisure facilities and activities associated with hotel accommodation and serviced apartments	29 June 1998
42	Providing of food and drink and temporary hotel accommodation and serviced apartment accommodation; hygienic and beauty care services

(“the registration”)

1. The section 44 objection was limited to classes 41 and 43 of the applications. There is no objection to classes 28, 34 or 45.

2. The examiner invited the applicant to provide evidence of use of the trade marks the subject of the Applications (“the trade marks”) in order to attempt to overcome the objection.  It is understood, however, that the trade marks have not been used in Australia.

   Sections 44, 14 and 10 of the Act

3. Section 44 of the Act relevantly provides:

   44  Identical etc. trade marks

   (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 serices) 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 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 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 services see subsection 14(2).

   Note 3:For priority date see section 12.

4. “Similar services” are defined by section 14 of the Act which states:

   14  Definition of similar goods and similar services

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

5. The definition of “deceptively similar” in section 10 of the Act is :

   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.

   Submissions and Reasoning

6. The applicant’s attorney first referred to the presumption of registrability contained in section 33 of the Act and in particular to the words of Mr. Justice French in Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 where his Honour stated that section 33 imposes “an obligation to accept the application unless satisfied that the application has not been made in accordance with the Act or that there are grounds for rejecting it”. The delegate agrees that this is the correct approach and so turns to the section 44 submissions.

7. The test for substantial identity of competing trade marks was set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 414.

   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. The applicant submits that there are apparent differences between the trade mark of the registration and the trade marks applied for and that the trade marks are not substantially identical to the mark of the registration.  The delegate agrees with that submission and so turns to the question of deceptive similarity.

9. The test for deceptively similar trade marks was also considered by Windeyer J. in Shell, above.  At 415 his Honour stated :

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions.

10. Read together, sections 10 and 44 provide for a ground for rejection where there is an earlier registered mark and the respective trade marks are deceptively similar and where the respective services are of the same description. I note that Justice French commented, in dealing with a comparison of trade marks under s. 44, in Registrar of TradeMarks v Woolworths Limited, 45 IPR 411 at 428:

    (i)To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not enough.

    (ii)A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

11. Under section 44, the question of deceptive similarity of respective trade marks cannot therefore be determined without taking account of the services at issue and whether they are of the same description. This is in contrast to the applicant’s submission that the question of deceptive similarity can be determined in the abstract which I do not accept.

12. The examiner maintained that the class 41 services of the registration were of the same description as the class 41 services of the applications. The examiner also maintained that the class 42 services of the registration were of the same description as the class 43 services of the applications.

13. Class 43 is nominated by application nos 1013832, 1013835 and 1013840 only, and applicant’s attorney requested that this statement of services be deleted from those applications.  The delegate notes that request and on the basis of that proposed amendment the examiner’s objections based on class 42 of the conflicting registration fall away.

14. Additionally, the applicant’s attorney requested that the class 41 statement of services for each of the applications be amended to read :

    Education, training services, entertainment services, sporting and cultural activities, casino facilities; gambling services; gaming; gaming machine entertainment services; gaming services for entertainment purposes; bingo hall services; club services relating to entertainment and education; providing club recreation, sporting and dining facilities; club (cabaret services); betting on horses; night clubs; night club services; cruise ship entertainment services; entertainment services relating to amusement machines; entertainer services; provision of entertainment facilities; providing on-line electronic publications (not downloadable); publication of electronic books and journals on-line; operating of lotteries; organization of sports competitions; electronic games services provided by means of the Internet; Internet games (non-downloadable); provision of games by means of a computer based system; excluding any of the foregoing that are conducted as part of hotel accommodation and serviced apartments.

15. To reiterate, the class 41 statement of services of the registration is:

    Conducting and providing facilities for conferences, seminars, conventions and receptions; educational training, entertainment, and leisure facilities and activities associated with hotel accommodation and serviced apartments.

16. The applicant submits that the use of the semi-colon in that specification makes it clear that the services, conducting and providing facilities for conferences, seminars, conventions and receptions, are not associated with hotel accommodation and serviced apartments. 

17. The applicant submits that it has offered up the qualifying words to its own class 41 statement of services, excluding any of the foregoing that are conducted as part of hotel accommodation and serviced apartments, to make it clear that the applicant has no interest in services associated with hotel accommodation or serviced apartments.

18. Were I to accept both the offered amendment and the applicant’s submissions in this regard, I would still be faced with the question, for example, of whether the applicant’s services described as,  education, training services, entertainment services, providing club recreation, sporting and dining facilities; club (cabaret services); night clubs; night club services excluding any of the foregoing that are conducted as part of hotel accommodation and serviced apartments,  are not still services of the same description as the registrant’s services described as,  educational training, entertainment, and leisure facilities and activities associated with hotel accommodation and serviced apartments. 

1. I am not satisfied that the qualification offered up by the applicant creates the level of distinction required to render the applicant’s services of a different description to those services for which the registrant has protection.

2. In the alternative, the applicant’s attorney asked whether the section 44 objection might be waived were the class 41 statement of services of the applications reduced to read :

   Gambling and gaming services inclusive of betting on horses, operating of lotteries, electronic games services provided by means of the Internet.

3. The question now resolves to whether those services are of the same description as entertainment, and leisure facilities and activities associated with hotel accommodation and serviced apartments, as described in the registration.

4. At the more general level, I am asked to determine whether betting and gaming services are of the same description as entertainment and leisure facilities and activities associated with hotel accommodation and serviced apartments.

5. In weighing these questions, I am mindful that the examiner did not regard entertainment and leisure facilities and activities associated with hotel accommodation and serviced apartments as services which were closely related to any of the applicant’s class 28 goods.

6. I return, then, to the question of deceptive similarity, recalling what Mr. Justice French had to say in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, at 425:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

7. In this instance, the registration is for the word mark, MANSION.  For convenience, the trade marks under application are set out below:

Application No.	Trade Mark
1013832
1013834	MANSION MODELS
1013835	MANSION VILLAS
1013836	MANSION ESCORTS
1013838	MANSION COMPANIONS
1013839	MANSION CLUB
1013840	MANSION CASINO

1. The applicant’s attorneys led me through a number of cases said to support her proposition that there was ample precedent to show that the trade marks would not be confused with the trade mark of the registration because of the added, distinguishing matter in each of the trade marks.  I would like to refer in particular to two of the cases she cited.  They are Mid Sydney Pty Ltd –v- Australian Tourism Company and Others [1998] 42 IPR 561 and SAP Australia Pty Ltd v Sapient Australia Pty Ltd 45 IPR 169.

2. In the one case, the registered mark was a composite mark featuring the words THE CHIFLEY TOWER.   In the other, the words, SAPIENT COLLEGE were registered.  The uses complained of were, respectively, the words CHIFLEY and SAPIENT.  In both cases, the marks were held not to be deceptively similar. In the former case, the Court said,:

   “Chifley” is familiar not only as the name of a former Prime Minister but, as the evidence shows, also from its use in a number of geographic and other contexts.  The ordinary person whose reaction is in question need not be credited with an encyclopedic knowledge of everything to which the name “Chifley” has been applied, but should be credited with a general knowledge that there are several such applications”.

3. In the Sapient case, Mr. Justice Wilcox accepted that the parties were using the marks in respect of the same services, or services of the same description. His Honour said :

   Counsel for the applicants submit that the word “Sapient” is the most significant and memorable part of their trade mark and the name of the college is likely to be contracted in ordinary speech to “Sapient”.  I accept those submissions. … Nonetheless, the relevant comparison must be made between the marks themselves, not between one mark and a contraction or corruption of the other. The task for the court is to determine whether the use by Sapient Australia of the word “Sapient”, standing alone or with an additional word such as “corporation” or “Australia”, is deceptively similar to SAPIENT COLLEGE.  I think it is not … I reach this conclusion because of the contextual significance of the word “COLLEGE”.

4. The distinctions in this case are clear.  The mark of the registration is the single word and the trade marks under application all include the registered trade mark plus some other matter.  There is simply no question of contraction of the registered trade mark or of contextual understanding of it.  On the contrary, the trade marks under application must be viewed in the context of the registered mark.  In each application, the trade mark uses as its principal element the word MANSION.  That word has a dictionary meaning but one which only alludes to the registrant’s services.  To revert once more to the words of Mr. Justice French in Registrar of TradeMarks v Woolworths Limited, 45 IPR 411, the applicant’s trade marks are likely to cause confusion if the result of their use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

5. Balancing both the similarity of the respective class 41 services (taking account of both the qualified statement of services and the alternative, reduced statement of services) and the similarity of the respective trade marks,  I decide that the following trade marks are deceptively similar to the registration :

Application No.	Trade Mark
1013832
1013839	MANSION CLUB
1013840	MANSION CASINO

1. I find that the following trade marks are not deceptively to the registration provided that the class  41 statement of services is reduced to read :

   Gambling and gaming services inclusive of betting on horses, operating of lotteries, electronic games services provided by means of the Internet.

Application No.	Trade Mark
1013834	MANSION MODELS
1013835	MANSION VILLAS
1013836	MANSION ESCORTS
1013838	MANSION COMPANIONS

Decision

1. For the above reasons my decision is that:

   oThe class 43 statement of services be deleted from all the applications;

   • The class 41 statement of services for application nos 1013834, 1013835, 1013836 and 1013838 be amended to Gambling and gaming services inclusive of betting on horses, operating of lotteries, electronic games services provided by means of the Internet.

   oThe class 41 statement of services be deleted from application nos 1013832, 1013839 and 1013840. 

   oThe applications otherwise proceed to registration.

   Appeal

2. Subject to the applicant notifying the Registrar of an appeal against my decision within one month of the date of this decision, the applications may proceed to registration if amended as outlined above.  If such appeal is notified and not withdrawn, the applications should be dealt with as the Court directs.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings

30 May 2007