Quality Assurance Services v QAS Systems Ltd

[2001] ATMO 111

TRADE MARKS ACT 1995

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

Re:Opposition by Quality Assurance Services to registration of trade mark application 771152(9) - QAS - filed in the name of QAS Systems Ltd.

Background

On 24 August 1998, (‘the priority date’) QAS Systems Ltd (‘the applicant’), of London, England, filed application to register the trade mark appearing below in respect of ‘computer software’ in Class 9 of the International (Nice) Classification of Goods and Services.

The application was examined and subsequently advertised as accepted for registration in the Australian Official Journal of Trade Marks on 17 December 1998.

On 4 February 1999, within the time allowed to do so, Quality Assurance Services, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The grounds under the Trade Marks Act 1995 (‘the Act’) stated in the Notice are:

(a)     The opposed trade mark contains or consists of a sign which under the regulations made for the purposes of section 18 is not to be used as a trade mark (Section 39(1));

(b)     The opposed trade mark contains or consists of a sign which is prescribed for the purposes of Section 39(2) or so nearly resembles a sign which is not to be used as a trade mark (or which is prescribed under section 39(2)) as to be likely to be taken for it and the Registrar in the exercise of his discretion ought to have rejected the opposed trade mark (Section 39(2));

(c)     The opposed trade mark is not capable of distinguishing the Applicants goods from those of other persons (Section 41);

(d)     The opposed trade mark contains or consist of scandalous matter or its use would be contrary to law (Section 42);

(e)     Use of the opposed trade mark is likely to deceive or because of some connotation that the opposed trade contained in the opposed trade mark has (Section 43);

(f)The opposed trade mark is substantially identical with or deceptively similar to:

(i)another person’s prior registered trade mark for similar goods or closely related services; or

(ii)another person’s prior pending application for similar goods or closely related services with an earlier priority date (Section 44)

(g)The applicant is not the owner of the opposed trade mark (Section 58);

(h)The applicant did not at the date of the application have the necessary intention to use or authorise the use of, or to assign the opposed trade mark (Section 59);

(i)Use of the opposed trade mark would be likely to deceive or cause confusion because the opposed trade mark is substantially identical with or deceptively similar to a trade mark which, prior to the priority date of the opposed trade mark had acquired a reputation in Australia (Section 60);

(j)The opposed trade mark contains or consist of a sign that gives a false geographical indication proscribed by Section 61;

(k)The application for the opposed trade mark or document filed in support of the application was amended contrary to the Act (Section 62(a));

(l)The Registrar accepted the application for registration of the opposed trade mark on the basis of evidence or representations that were false in material particulars (Section 62(b)).

Evidence

The opponent and applicant have, respectively, filed evidence in support of the opposition and evidence in answer as provided for in the Trade Mark Regulations.  The evidence in support of the opposition consists of a statutory declaration by Hanna Margareeta Myllyoja who is in-house counsel employed by Quality Assurance Services Pty Limited.  (Although the opponent identifies itself in the Notice as Quality Assurance Services, it is obvious in the evidence that it is Quality Assurance Services Pty Limited).  The evidence in answer comprises two statutory declarations: one by Simon Bruce Oliver Worth, who is Managing Director of QAS Systems Limited of London; the other declaration is by Jonathon Marc Hulford-Funnell who is Managing Director of QAS Systems Pty Limited of Sydney.  The Sydney company is a wholly owned subsidiary of the London company.

Neither party has requested to be heard in the matter which has, accordingly, come to me to decide as a delegate of the Registrar of Trade Marks.

The Opponent

The evidence shows that the opponent is a wholly owned subsidiary of Standards Australia International Limited (‘Standards’).  Standards is the largest provider of third party certification services in Australia.  The certification standards established by Standards, are designed to show that particular products or processes to which they are applied comply with those standards, which may be recognised internationally or Australia-wide.

Standards is owner of an Australian trade mark registration, details of which are:

Reg Number:   591338
Priority Date:  30 November 1992
Class:              17

Goods:Insulating gloves, reflective foil laminate for insulation, fittings in this class for use with polyethylene pipes, underground marking tape, unplasticised PVC pipes & fittings, mineral wool thermal insulation, synthetic fibre hose, thermosetting laminated sheet, mechanical jointing fittings in this class for use with polybutylene pipes, fire hose-delivery lay flat, cellulosic fibre thermal insulation

Trade Mark:   

The opponent is licensed to use the trade mark and to provide third party certification services.

Ms Myllyoja says that the opponent has issued various types of certificate, which display "the QAS acronym", to approximately 11,000 of its certified clients in Australia and internationally.  The opponent issues in excess of 5,000 certificates in respect of its training programs each year.

Ms Myllyoja declares that the opponent advertises and promotes itself through newsletters, brochures, fact sheets, newspaper and magazine advertisements – examples of these advertisements or promotions are not exhibited to the declaration.  Ms Myllyoja also refers to the opponent’s Internet site.  The trade marks that the opponent uses on its Internet site appear below:

 

The certification trade mark that the opponent uses in relation to its certifications appears below:

The opponent, Ms Myllyoja avers, provides third party certification services in respect of quality management systems of advertising, business management, business administration and office systems; insurance, financial affairs, monetary affairs and real estate; building construction, repair and an installation services; software, computing and telecommunication services; transport packaging and storage of goods and travel arrangement services; and, material treatment services.

The Applicant

The applicant has been a computer software producer in London, England, since 1991.  The software is designed to manage, sort and retrieve data and is principally used for ‘address management’, which is the preparation and management of client profiles.  Using master files produced and updated by local postal administrations, the software permits the user to correctly reconstruct addresses that are incomplete, incorrect or misspelt.

The software sold by the applicant in relation to the trade mark is approved by Australia Post, and the applicant is a licensed reseller of postal address data, used in conjunction with its computer software by the postal authorities in Australia, the USA, the United Kingdom, the Netherlands, Germany and France.

Mr Hulford-Funnell, who is Managing Director of the applicant’s Australian subsidiary, says that the opposed trade mark has been used in Australia since 1998 and his company now has over 140 licensed users of its products in Australia.  A considerable amount of money and effort has been expended promoting the opposed trade mark in Australia.  This includes the production of brochures, advertising, trade stands at exhibitions and a large direct-mail campaign extending over a year to call-centre managers, Chief Executive Officers, IT managers and so on.

The applicant has also advertised its goods bearing the trade mark in trade magazines.  Examples of the brochures and advertisements are appended to Mr Hulford-Funnell’s declaration.

Conclusions

It appears from the evidence that the trade marks that the opponent uses in relation to its goods and services are those that I have reproduced, above, from its Internet site.  No examples of the opponent’s trade marks are exhibited to the declaration; and, Ms Myllyoja, in her declaration, does not refer to the opponent as using the trade mark QAS but says that opponent has used the acronym QAS for the past ten years.  As Ms Myllyoja also refers to the opponent in her declaration as being ‘QAS’, it is not clear from the evidence if those initials refer to the opponent, the acronym for the opponent, or a trade mark used by the opponent.  The opponent’s evidence does not, therefore, support a conclusion that it has used the initials QAS, solus, as a trade mark, but that the opponent has used the trade marks which I have reproduced, above, from its Internet site.  I will therefore use those trade marks as the basis for my consideration as the evidence does not show that the opponent has used any other sign as a trade mark.

Reasons

There is no evidence served and filed by the opponent that addresses sections 39(1), 39(2), 42, 43, 44, 59, 61, 62(a), or 62(b) of the Act. Section 55 of the Act provides:

55  Decision

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.

I therefore dismiss the opposition in relation to the grounds under 39(1), 39(2), 42, 43, 44, 59, 61, 62(a), or 62(b) of the Act. The grounds that remain for me to consider are those under sections 41, 58 and 60 of the Act.

Section 41

Section 41 provides for the assessment of the inherent fitness of a trade mark for registration in terms of its capacity to distinguish the goods or services of the applicant from those of other traders. Subsection 41(3) of the Act describes the initial step in the assessment:

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

In Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR 511, at 315, Kitto J observed of the expression ‘adapted to distinguish’:

In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use."

Kitto J continued, at page 514, that:

… the question whether a mark is adapted to distinguish [ should be] 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.

The opposed trade mark is the letters QAS with a little ‘get-up’ around them – the ‘get-up’ consists of some double outlining of the letters and a flourish.  The get-up adds very little in the way of inherent adaptation to the trade mark: in Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998), Branson J said of the trade mark OREGON, represented in an oval device:

I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient to take the applicant's trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case.

The opposed trade mark is, I believe – as far as the ‘get-up’ is concerned – very much in the same category as OREGON and the inherent adaptation added by the get-up is so slight that it is convenient to consider only the inherent adaptation of the letters QAS. 

I would assess the alphabetical letters QAS as having some inherent adaptation to distinguish which is sufficient that the trade mark is capable of distinguishing the designated goods.  ‘Letters’ trade marks lack inherent adaptation, to varying degrees, because of the time-worn practice of traders of putting groups of letters on goods to designate a trader’s name and, in more modern times, to designate model numbers.  The assessment of the inherent adaptation of the letters QAS as a trade mark is, therefore, against this background.  The need of traders to use a trade mark comprised of three letters is not as high as is the need to use two or one letters as a trade mark.

Further, the opponent has not in its evidence shown that the letters QAS in the opposed trade mark have a particular signification which is needed by other traders in the computer software field.

Any need that other traders have to use the letters QAS, in the manner described by Kitto J in Michigan, above, is therefore not an immediate or foreshadowed one.

I therefore find that the opponent has not established its ground of opposition under section 41.

Section 58

Section 58 of the Act provides:

58  Applicant not owner of trade mark

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

Note: For applicant see section 6.

In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375 at 391, Gummow J, referring to The Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601, said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice.  The phrase “substantially identical” as it appears in s 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

I have mentioned, under the heading Opponent, that the evidence does not show that the opponent has used the letters QAS, per se, as a trade mark.  The evidence suggests that the opponent uses the trade marks that are reproduced, above, from the opponent’s Internet site.  On an objective, side by side comparison, neither of these trade marks is substantially identical to the opposed trade mark.  Neither is it clear from the evidence that either of these trade marks was used before the priority date of the opposed application.

The opponent has not, therefore, established its opposition under section 58 of the Act.

Section 60

Section 60 of the Act provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

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

(a)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.

To succeed under this ground, the opponent must establish that its trade mark:

·     is either substantially identical or deceptively similar to the opposed trade mark

·     had a reputation in Australia before 24 August 1998; and that

·     that because of that reputation the use of the opposed trade mark would be likely to deceive or cause confusion.

The opponent’s evidence lacks clarity and it is not obvious that it has used the letters QAS, per se, as a trade mark.  Ms Myllyoja says that, “The approximate annual marketing expenditure for the promotion of QAS activities and the QAS acronym in Australia and internationally are set out in Confidential Annexure HM1.”  And, “QAS is advertised and promoted throughout Australia and internationally in forms including the following ..”  There is then a list of various media.  However, there is no express statement in the evidence that the letters QAS, per se, are used by the opponent as a trade mark and there are no exhibits to the evidence which would allow an assessment of how the opponent uses its trade mark.  Therefore, while the figures are substantial, it is not possible to make an assessment as to which of the opponent’s trade marks they apply.  Similar considerations apply to the numbers of clients and numbers of certificates mentioned in the opponent’s evidence as they are detailed with reference to ‘the acronym QAS’ and no physical examples of this use are exhibited.

As noted under the heading Section 58, above, it appears that the use of the opponent’s trade mark is in the forms that I have reproduced from the opponent’s Internet site.  It is not obvious from the evidence whether the opponent had, by the priority date, established a reputation in relation to either of these trade marks or both. 

On the evidence, the applicant has not established the reputation of a trade mark on which to found this ground of opposition and the opposition must fail on this ground.

Decision

The opponent has not established any of the grounds in the Notice. In terms of section 55 of the Act, above, I therefore decide that the trade mark may be registered if there be no appeal against this decision in the requisite period, and, if the applicant pay the appropriate fees.

Costs

Neither party has made an application for costs and so I make no determination as to costs.

Ian Thompson
Hearing Officer

12 November 2001