Psychotherapy and Counselling Federation of Australia v Certified Practising Counsellors Australia Pty Ltd

[2024] ATMO 237

TRADE MARKS ACT 1995

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

Re:Opposition by Psychotherapy and Counselling Federation of Australia to registration of trade mark application number 2280810 (classes 41 & 42) – CERTIFIED PRACTICING COUNSELLORS AUSTRALIA & Device - in the name of Certified Practicing Counsellors Australia Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Catherine Bembrick of Counsel, instructed by Actuate IP

Applicant: Gilbert Tsang of Counsel, instructed by Sparke Helmore Lawyers

Decision:

2024 ATMO 237

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by Psychotherapy and Counselling Federation of Australia (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the following trade mark filed in the name of Certified Practicing Counsellors Australia Pty Ltd (‘Applicant’):

Number:                    2280810 (‘Application’)

Trade Mark:                    (‘Trade Mark’)

Filing Date:                 30 June 2022

Specification: Class 41: Education services; Educational assessment services; Information services relating to education; Educational research; Educational certification services, namely, providing training and educational examination; Association services being the provision of training and education to members of the association; Career information and advisory services (educational and training advice); Career advisory services (education or training advice); Career counselling (education or training advice); Arranging and conducting of conferences; Dissemination of educational material

Class 42: Certification (quality control); Evaluation of performance against bench-mark references; Advisory services relating to the preparation of quality standards; Information services relating to quality standards; Setting of quality standards; Association services being the quality control of goods or services provided by members of the association; Provision of information relating to scientific research; Certification services (testing, verification and authentication of the services of others for the purpose of certification); Testing, analysis and evaluation services relating to the application of industry standards; Testing, analysis and evaluation services relating to the application of commercial standards; Testing services for the certification of quality and standards; Benchmarking (technical testing); Commissioning (testing and inspection) services; Development of testing methods

(‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     The Trade Mark was examined as required by s 31 and advertised on 1 December 2022 as accepted for possible registration.  The Opponent filed a Notice of Intention to Oppose on 21 December 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 January 2023.  The Applicant filed a Notice of Intention to Defend on 27 March 2023.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support (‘EIS’) was filed on 28 June 2023. The Applicant’s evidence in answer (‘EIA’) was filed on 29 September 2023 and the Opponent filed evidence in reply (‘EIR’) on 11 December 2023.

4.     Once the evidence stage had concluded, the parties were given the opportunity to request a hearing.  Both parties requested an oral hearing.  I heard this matter via videoconference as a delegate of the Registrar of Trade Marks on 14 November 2024.  Catherine Bembrick of Counsel, instructed by Colin Cheung and Cameron Lang of Actuate IP, made oral submissions at the hearing on behalf of the Opponent.  Gilbert Tsang of Counsel instructed by Sparke Helmore Lawyers, appeared for the Applicant.  Both parties filed a written summary of their submissions prior to the hearing.  I make this decision based on the aforementioned materials and submissions of the parties.

Grounds, onus and relevant date

5.     In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A.  The Opponent did not press the grounds of opposition under ss 43 and 58.

6.     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] 

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is 30 June 2022, being both the filing date and priority date of the Application (‘Relevant Date’).[4]

[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (‘Southern Cross’) (1953) 91 CLR 592, 595 (Kitto J).

Evidence

8.     The following evidence was filed in the proceedings:

Declarant and Position	Date	Exhibits/Annexures
EIS
Johnanna de Wever, Chief Executive Officer of the Opponent (‘de Wever’)	28 June 2023	JW-1 to JW-20
EIA
Adam Cox, Director of the Applicant (‘Cox’)	29 September 2023	Confidential Exhibits 1 & 2, Annexures AC1 to AC8
EIR
Johanna de Wever (‘de Wever 2’)	11 December 2023	JW-21 to JW-22

EIS

9.     The Opponent is a registered Australian charity which was established in 1998 as a joint registration body of over 30 counselling and psychotherapy training and membership organisations.  The Opponent has now evolved into a ‘leading peak membership and registration body’ with about 6,800 counsellors, psychotherapists and trainee counsellors as members across Australia.  The Opponent is the only counselling organisation which is a qualifying member of Allied Health Professionals Australia and the National Alliance of Self-Regulating Health Professionals.  Further, the Opponent is one of two organisations advising the Department of Health on the establishment of National Standards for Counselling and Psychology funded by the Federal Government.

10.     In consideration for an annual membership fee, the Opponent provides various services to its members including:

·     Membership services such as access to information, networking opportunities, inclusion in the Opponent’s directory and policy advocacy at State and Federal Government levels;

·     Employment and funded rebate services: employment opportunities with major employers such as Relationships Australia, Cancer Council, CatholicCare and Malvern Private Hospital; eligibility to rebated government funded services such as NDIS, Workcover and Worksafe etc and eligibility for various private health insurance funds;

·     Registration and accreditation services: members who meet specified educational requirements and professional criteria, which de Wever claims are the highest in Australia, are given access to the Opponent’s titles and digital badges shown below for ‘Certified Practising Counsellor’, ‘Certified Practising Psychotherapist’, ‘Registered Clinical Counsellor’ or ‘Registered Clinical Psychotherapist’ (‘Opponent’s Accreditation/s’);

·     Ethics and Grievance services: members are subject to ethics guidelines and the Opponent provides ethics and grievance services; and

·     Training and education: access to educational materials, industry updates and continuing professional development and training resources.

11.     Upon receiving the Opponent’s Accreditation, members are given a Welcome Pack and are permitted to use the Opponent’s Accreditation title and badge to promote their services.  A copy of the Welcome Pack for a Certified Practising Counseller and sample email sent on accreditation is provided.  According to de Wever, the Opponent’s Accreditations are highly valued by members, the public and employers.

12.     De Wever attests that in 2018, the Opponent started discussing the Opponent’s Accreditations with members and the sector before publicly launching the accreditations in August 2021.  The launch of the Opponent’s Accreditations were announced to 1165 members by email and supported by a redesign of the Opponent’s website, social media content, presentations to the sector and advertising on Facebook.

13.     At the time of adopting the Opponent’s Accreditation for CERTIFIED PRACTISING COUNSELLOR and  (‘Opponent’s Marks’), de Wever declares that the term ‘Certified Practising Counsellor’ was not used in Australia.  The usual terms used in the industry were simply Counsellor or Registered Counsellor for those on the Australian Register of Counsellors. 

14.     The Opponent’s Marks are used on its website at (‘Opponent’s Website’), its social media accounts, policy advocacy documents and submissions, presentations to universities, correspondence, and print and radio media.  Examples of such use are provided including details of traffic to the Opponent’s Website and approximate annual searches conducted on the site for a counsellor using the ‘Find a Therapist’ tool. 

15.     Since the launch of the Opponent’s Accreditations, the Opponent has sent out over 2,000 Welcome Packs and registered over 3,000 individuals as Certified Practising Counsellors.  At the time of de Wever, there were almost 2,000 individuals registered as Certified Practising Counsellors, being about 42% of the Opponent’s practicing members.  Each of these individuals is provided with digital copies of the Opponent’s Marks to use in promoting their services on their own websites, social media accounts and in third party directories.  Examples of such use are annexed to de Wever. 

16.     More than 50 courses are accredited to meet the Opponent’s educational requirements to be registered as a Certified Practising Counsellor.  De Wever declares that hundreds of applications are received annually for certification as a Certified Practising Counsellor.

17.     The Opponent has registered each of its digital badges for the Opponent’s Accreditations as trade marks in Australia including:

Number	Trade Mark	Type	Priority Date	Services
1959121 (‘Opponent’s Registration’)	(‘Opponent’s Logo’)	Collective	2 October 2018	Class 44:  Health counselling; Lifestyle counselling (psychological); Psychological counselling Class 45:  Lifestyle counselling (spiritual); Marriage guidance counselling; Spiritual or religious counselling (‘Opponent’s Services’)

18.     De Wever provides the Opponent’s financial revenue for financial years (‘FY’) 2013 to 2022.  Around 65-75% of the Opponent’s annual revenue is from membership fees, of which about 46% are from members accredited as Certified Practising Cousellors.  The remainder of the revenue is generated from professional development, registration and accreditation, branches and colleges, bequests and donations, and government funding.

19.     According to de Wever, the Opponent has a reputation in the Opponent’s Marks throughout Australia and de Wever attests that use of a substantially identical or deceptively similar mark by another entity would be likely to cause confusion among members of the industry, including professional organisations, practitioners, universities, students, employers and members of the public.  In support of this claim, a number of letters from persons of standing in the industry are provided on a confidential basis.

20.     De Wever declares that since November 2021, the Applicant has provided membership, registration and accreditation services throughout Australia under the mark CERTIFIED PRACTISING COUNSELLORS AUSTRALIA.  The Applicant’s levels of registration and accreditation are Partner, Student and Certified Practising Counsellor (Level 1 to 4).  The Applicant’s digital badges for accreditation at these different levels are shown below:

21.     De Wever explains that the Applicant has lower educational and professional requirements than the Opponent to be accredited as a Certified Practising Counsellor as shown in extracts from the Applicant’s website at The Opponent’s lawyers sent the Applicant a letter of demand on 1 June 2022 and the Applicant responded on 20 June 2022 refusing to comply with the Opponent’s demands.  This correspondence and subsequent correspondence between the parties’ respective lawyers is annexed.

EIA

23. Cox declares that the Applicant launched its business on 4 November 2021 as a professional organisation providing representation and advocacy services for its members and clients across Australia. The Applicant provides membership for a fee to students, graduates and professionals to become Certified Practising Counsellors Australia members. It has 6 tiers of membership each with a corresponding badge as shown above at [20]. The Applicant has around 2600 members who are subject to the Applicant’s Code of Ethics, complaint procedure and ongoing professional development policy. It is apparent from the evidence of the parties that they operate very similar and competing businesses.

24.     According to Cox, the Trade Mark was created by an employee in October 2021 and Cox chose the Trade Mark from one of three designs.  Cox declares that at the time the Trade Mark was created and adopted, he had no knowledge of the Opponent or the Opponent’s Marks.

25.     The Applicant uses the Trade Mark to ‘represent the interests of both the public and the Applicant’s Members to create a unified voice for the counselling profession and to aide counsellors to reach their true potential through:

·    existing as an intermediary body for Australian counsellors and their clients;

·    setting, monitoring and improving upon current professional standards within the Australian counselling practice;

·    assessing and authenticating counsellor qualifications;

·    facilitating effective intermediation with relation to counsellor and client concerns; and

·    promoting the growth and development of Australian counsellors.

26.     Cox attests that the Applicant has a relationship with a number of colleges who associate the Trade Mark with the Applicant and its accreditation regime.

27.     Copies of the Applicant’s Code of Ethics, Complaints Procedure, website traffic statistics, articles posted to its website, screenshots of its Facebook account and website as well as examples of promotion by its members are provided.

28.     Cox attests that he is not aware of any instances of confusion with the Opponent’s Logo and considers that the marks are unlikely to be confused given the differences in the respective marks, services and target members.

EIR

29.     De Wever 2 declares it is ‘highly implausible’ that the Applicant had no knowledge of the Opponent given that the Opponent has been a ‘key stakeholder’ in the industry since 1998, is one of two leading membership and registration bodies for counsellors and psychotherapists in Australia with approximately 40% market share of counsellor and psychotherapist registrations in Australia and has been publishing its peer-reviewed international journal Psychotherapy Counselling Journal since 2012.  Moreover, the Applicant’s Code of Ethics, which Cox declares have been provided to its members since before the Relevant Date, acknowledges that it was ‘informed by aspects’ of the Opponent’s Code of Ethics.

30.     The remainder of de Wever 2 addresses the Applicant’s arguments about the target members and likelihood of confusion.

Decision

Section 44

31.     Section 44 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 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.

32.     In the SGP, the Opponent relies on the Opponent’s Registration for the Opponent’s Mark.  Accordingly, to succeed on this ground of opposition, the Opponent’s Registration must satisfy the following requirements:

i.it is in the name of a person other than the Applicant (‘First Requirement’);
 

ii.it has a priority date which is earlier than the priority date of the Trade Mark (‘Second Requirement’);  

iii.the Opponent’s Mark is substantially identical with, or deceptively similar to, the Trade Mark (‘Third Requirement’); and 

iv.it is in respect of services which are either similar and/or closely related to the Applicant’s Goods and Services (‘Fourth Requirement’). 

33.     The Opponent’s Registration satisfies the First and Second Requirements in that it is in the name of a person other than the Applicant and has an earlier priority date.

34.     The Opponent does not contend that the Opponent’s Logo is substantially identical with the Trade Mark.  For completeness, I note that on a side by side comparison of the two marks, it is clear that the different devices in the marks result in a total impression of dissimilarity.  I am satisfied that the two marks are not substantially identical.

35.     Section 10 provides that ‘…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’.

36.     The principal authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in TheShell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[5](‘Shell’) where his Honour said:

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 [trade mark].[6]

[5] [1963] HCA 66; (1963) 109 CLR 407, 414.

[6] Ibid [13].

37.     The relevant principles of deceptive similarity were conveniently stated by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd,[7] which may be summarised as follows:

[7] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[8]

[8] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[9]

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

(c)the marks should not be compared side by side;[10]

(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[11]

(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[12]

(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[13]

(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[14]

(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [15]

(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[16]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[17]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[18] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[19]

[10] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[11] Ibid.

[12] Ibid.

[13] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[14] Shell, (n 5), 415.

[15] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[16] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[17] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross (n 4), 594-595 (Kitto J).

[18] Australian Woollen Mills (n 10).

[19] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 10), 657.

38.     The Opponent argues that the Trade Mark is deceptively similar to the Opponent’s Logo because:

·     both marks contain the same essential element ‘CERTIFIED PRACTISING COUNSELLOR’ which are not commonly used words and will be recalled by consumers as the most distinctive part of the marks.  The only additional word element of the Trade Mark is ‘Australia’ which is descriptive;

·     the parties’ respective marks are similarly structured as two column marks with the words appearing in the same formation on top of each other with the device in the left hand column;

·     the marks are aurally highly similar and convey the same idea.

39.     In support of these contentions, the Opponent referred me to a number of decisions involving composite or fancy word marks.  In particular, the Opponent noted the decision in Anakin Pty Ltd v Chatswood BBQ King Pty Ltd[20]where CHATSWOOD BBQ KING Logo was found to be deceptively similar to(despite both marks containing device elements), on the basis that the words were a prominent feature and CHATSWOOD was a geographical signifier.  In addition, the Opponent noted the recent decision of The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd[21] which found that use of THE PRACTICE BUSINESS ADVISERS & TAX PRACTITIONERS in word and the following logo (shown on the left) infringed the respondent’s THE PRACTICE logo (shown on the right) below:         

[20] [2008] FCA 1467 (Branson J).

[21] [2024] FCA 1299 (O’Callaghan J).

          

40.     The Applicant notes that the term ‘counsellor’ is not a legally regulated term and can be used by any person for its ordinary signification namely ‘someone who counsels; an adviser or ‘anyone delivering a counselling service’.  The words ‘certified’ and ‘practising’ are also common English words with a well-understood meaning.  Hence, the Applicant argues the term ‘certified practising counsellor’ has no inherent adaptation to distinguish and there are a number of composite marks containing this term on the Register across a wide variety of industries.   The Applicant argues, the presence of a common element is not conclusive to a finding of deceptive similarity[22] and moreover, the determination of the inquiry ‘must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[23]  In particular, the Applicant refers to the following comments of Burchett J in finding that the marks EUROVOGUE & Device and VOGUE are not deceptively similar:

At the same time, it should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.[24]

[22] See by way of example Podravka Prehrambena Industrija d.d v Droga Kolinska Zivilska Industrija d.d [2008] ATMO 74, [44] (Hearing Officer I. Thompson); Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[23] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[24] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864, (1998) 41 IPR 505, 511-512.

41.     The Applicant contends that the Trade Mark is not deceptively similar to the Opponent’s Marks because the essential element and distinctive feature of the Trade Mark is the brain device whereas in the Opponent’s Logo, the essential element is the acronym CPC which is not found in the Trade Mark.  Also, the style and layout of the Trade Mark is different in that it has no border or contrasting background and the words of the Trade Mark are presented in a much bolder solid font than the words in the Opponent’s Logo.  Given the descriptive nature of the only shared element CERTIFIED PRACTISING COUNSELLOR, the Applicant submits that consumers and industry professionals would not attribute any trade mark significance to these words.

42.     I agree with the Applicant that the words CERTIFIED PRACTISING COUNSELOR are apt to describe an accredited working counsellor and are non-distinctive in the context of the Opponent’s Services and the Applicant’s Services provided to counsellors or in the field of counselling.  Therefore, the presence of this common element ought to be given less weight in considering whether the respective marks are deceptively similar.  I do not agree with the Opponent that the present circumstances are similar to those in the cases on which the Opponent relies.  Here the common element has no inherent adaptation to distinguish whereas for example, the term BBQ KING whilst not particularly distinctive is not directly descriptive of restaurant services.

43.     Justice Stephen observed (albeit in relation to trade practices) in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

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 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.[25]

[25] [1978] HCA 11; 140 CLR 216, 229.

44. In my view, the only similarity between the Trade Mark and the Opponent’s Logo are the descriptive words CERTIFIED PRACTISING COUNSELLOR and there are numerous differences. I do not agree that the two marks have a similar structure. The Applicant has a distinctive device to the left of the words CERTIFIED PRACTISING COUNSELLORS AUSTRALIA whereas the Opponent’s Logo has the acronym CPC. These elements are different and there is nothing unique in placing a device or acronym to the left of the textual elements in a composite mark. Nor do I consider it to be significant that the word elements in both marks are ‘stacked’ on top of each other. Again, there is nothing unique in this arrangement and there are good marketing reasons for containing the space taken by a trade mark. The absence of a border or contrasting background in the Trade Mark are not significant differences alone but taken collectively with the difference of the device as compared to an acronym renders the respective marks not deceptively similar. Further, whilst the marks convey similar ideas, I do not regard the meaning as the same with the Trade Mark suggesting an organisation as compared to the Opponent’s Logo which suggests an individual. Any confusion that might occur between the Trade Mark and Opponent’s Logo stems from the use of the descriptive term CERTIFIED PRACTISING COUNSELLOR in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the Act.

45.  I find that the s 44 ground is unsuccessful.

Section 60

46.     To succeed on a ground of opposition under s 60, an opponent must establish a reputation in a trade mark(s) existed in Australia at the Relevant Date and as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion.

47.     In McCormick & Co Inc v McCormick, Kenny J considered the meaning of the word ‘reputation’ in s 60 and on the basis of the dictionary definition concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[26]      Stated another way, the reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers.[27]What constitutes a significant or substantial number of persons in the relevant market ‘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 …15F12F[28]

[26] [2000] FCA 1335, [81].

[27] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[28] [2000] FCA 1587, [91] (Heerey J).

48.     The existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[29]  The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.[30]    In practice, it is commonplace to infer reputation from a high volume of sales,[31] together with substantial advertising expenditures and other promotions.[32]

[29] ConAgra Inc. v McCain Foods (Aust) Pty Ltd[1992] FCA 159, [75] (Lockhart J).

[30] Ibid [118] (Lockhart J).

[31] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

[32] Ibid.

49.     In its SGP, the Opponent claims that due to its standing in the industry and use of the Opponent’s Marks, it has developed a ‘strong reputation’ in the Opponent’s Marks for the Opponent’s Services such that use of the Trade Mark is likely to deceive or cause confusion. 

50.     The Opponent commenced use of its marks in August 2021 announcing the launch of its accreditation program by way of about 1,200 emails to members.  Since then, the Opponent has registered about 3,000 individuals as Certified Practising Counsellors and generates reasonable revenue from those membership fees.  The Opponent’s Marks also receive exposure through accrediting 50 courses that meet the educational requirements of a Certified Practising Counsellor, as well as by promoting the Opponent’s Marks on its website and social media, in presentations, policy advocacy and submissions and media.  The Opponent’s Members also use the Opponent’s Marks.

51.     In my view, the Opponent’s evidence does not establish a reputation in the Opponent’s Marks at the Relevant Date.  The Opponent’s Marks were first used a relatively short time before the Relevant Date with the announcement of the Opponent’s accreditation program by email sent to a relatively small number of people and only promoted on the Opponent’s website from October 2021.  In terms of the promotion on social media, there is a single use of the Opponent’s Logo on its Facebook account before the Relevant Date which received very little consumer engagement from followers.  The words Certified Practising Counsellor were used in a single policy submission before the Relevant Date and there was no use of the Opponent’s Logo in this document.  There is also evidence of one presentation to students before the Relevant Date featuring the Opponent’s Logo on one slide of the presentation.  The use of the Opponent’s Marks by members show that it is often used in conjunction or close proximity to the Opponent’s abbreviated name PACFA or the PACFA logo.  On my assessment of the evidence, I am not satisfied that a reputation existed in the Opponent’s Marks at the Relevant Date amongst a significant proportion of Australian consumers.

52.     Accordingly, the s 60 ground of opposition is not established.

Section 42(b)

53.     Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark would be contrary to law.

54. The Opponent alleges in its SGP that because of the reputation in the Opponent’s Marks, use of the Trade Mark will constitute misleading and deceptive conduct under s 18 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) (ACL), false or misleading representations under s 29 of the ACL, and the common law tort of passing off.

55.     The test for conduct contravening the ACL is stricter than the test under s 60,[33]  which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL, I am likewise not satisfied that use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL.

[33] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

56. Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[34]

[34] [1989] FCA 506, [40] (Hill J).

57. As s 18 of the ACL is the equivalent of s 52 of the TPA,[35] the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.

[35] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

58. The ground of opposition under s 42(b) of the Act is not established.

Section 62A

59.     Pursuant to s 62A, the registration of a trade mark may be opposed on the ground that the application was made in bad faith. 

60. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, but rather ‘it is a wider notion, potentially applicable to diverse species of conduct.’[36]

[36] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).

61.     In DC Comics v Cheqout Pty Ltd, Bennett J explained:

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[37]

[37] [2013] FCA 478, [62].

62.     Justice Bennett also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[38]

[38] Ibid [66].

63.     Mere awareness of, or prior dealings with, the Opponent do not on their own indicate that the application for the Trade Mark was made in bad faith.  The question is whether, in all the circumstances, the Applicant’s knowledge was such that the decision to apply for the Trade Mark at the Relevant Date would be regarded as in bad faith by persons adopting proper standards.[39]  

[39] Fry Consulting (n 36) [167].

64.     In its SGP, the Opponent particularised this ground as follows:

As set out in the particulars of Section 3 of this Statement of Grounds and Particulars, the Opponent has, and had at the Application Priority Date, generated valuable goodwill and reputation in the Opponent’s Marks in relation to the Opponent’s Services. As a result the Applicant was aware, or ought to have been aware, of the Opponent’s Marks and the Opponent’s reputation in those marks well before the filing of the Application. The Applicant was also aware, or ought to have been aware, that use of the Applicant’s Mark in relation to the Applicant’s Services would contravene upon the rights that the Opponent has in the Opponent’s Marks. The Applicant’s act of filing the Application was done in order to exploit or otherwise unduly benefit from the already established success and reputation that the Opponent has in the Opponent's Marks in Australia.

65.     The Opponent argued that Mr Cox’s sworn statement that he had no knowledge of the Opponent, the Opponent’s Services or the Opponent’s Logo is incorrect.  Rather the Opponent says the Applicant knew of the Opponent’s Marks, took steps to create a deceptively similar mark (adopting the most similar mark to the Opponent’s Logo of three variations created) and after receiving a letter of demand then applied to register that similar mark.  It is the Opponent’s submission that it is not possible that the Applicant would seek to establish a similar business without being aware of a leading industry membership and registration body such as the Opponent especially when even a cursory Google search would have disclosed the Opponent’s existence.  Furthermore, the Applicant’s own Code of Ethics and Practice which Cox attests has been provided to members and others under the Trade Mark since at least 2021, expressly states:

‘This Code was partly based on the PACFA Code of Ethics 2017 and the APA Code of Ethics 2017.  CPCA graciously acknowledges PACFA and APA for this document’.

66.     The Applicant concedes that it knew of the Opponent before filing the Application particularly because the Applicant had received the Opponent’s letter of demand but argues this is insufficient and the Opponent has not met its onus of establishing bad faith.  In the Applicant’s submission, the filing of the Application was ‘an act of common commercial sense.’  Further, the fact that the Applicant offers accreditation services involving the use of digital badges by members is not significant given its badges are markedly different from those of the Opponent.

67.     Whilst I do not accept Mr Cox’s statement that he was unaware of the Opponent, I do not think that the Applicant has acted in bad faith.  It is common business practice to consider the business operations of competitors and in most circumstances, there is nothing preventing a later market entrant from being inspired by or adopting the ideas of its competitors.  Whilst it is no doubt frustrating for the Opponent that the Applicant decided to offer a competing accreditation service in the same field and possibly looked to the Opponent for inspiration, the Applicant’s conduct in operating a similar and competing business under a different trade mark is not unscrupulous or underhanded.

68.     The s 62A ground of opposition is not successful.

Decision

69.     The Opponent has not established any of the nominated grounds of opposition and I direct that the Trade Mark may proceed to registration under application 2280810 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 a court so orders.

70. Both parties sought an aware of costs. I see no reason to depart from the usual rule that costs follow the event and award costs against the Opponent under s 221 in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

2 December 2024