Quantum Group Holding Pty Ltd v Thomson - [2021] FedCFamC2G 339

Federal Circuit and Family Court of Australia
(DIVISION 2)
Quantum Group Holding Pty Ltd v Thomson [2021] FedCFamC2G 339

File number(s): SYG 2508 of 2018

Judgment of: JUDGE BAIRD

Date of judgment: 24 December 2021

Catchwords: INTELLECTUAL PROPERTY – TRADE MARKS – Appeal from decision of a Delegate of the Registrar of Trade Marks – where Delegate upheld respondent’s opposition to applicant’s trade mark registration under s 44(2) of the Trade Marks Act 1995 (Cth) – ss.44(2) and 58 grounds of opposition - whether mark substantially identical with, or deceptively similar to prior registered trade mark – where applicant’s mark a composite mark – prior word mark – whether similar services – whether the applicant is not the owner of the trade mark.

Legislation: Trade Marks Act 1995 (Cth), ss.10, 14, 44(2), 56, 58, 67, 197

Cases cited:
1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209; (2012) 201 FCR 488; (2012) 291 ALR 266

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; (2017) 124 IPR 264

Anchorage Capital Partners v ACPA Pty Ltd [2018] FCAFC 6; (2018) 259 FCR 514; (2018) 351 ALR 436; (2018) 128 IPR 255

Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187

Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393; (2019) 142 IPR 1

Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495

Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd [2020] FCCA 1718

Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437

Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115; [1937] ALR 404

MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236; (1998) 42 IPR 561

Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 8; (2017) 251 FCR 379

Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84; (1945) ALJR 203

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; (1999) 367 ALR 393; 45 IPR 411

Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407

Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; (2011) 92 IPR 165

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 28 ALJR 540, 595

Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388, (2015) 328 ALR 247; (2015) 116 IPR 207

Division: Division 2 General Federal Law

Number of paragraphs: 127

Date of last submission/s: 30 April 2019

Date of hearing: 30 April 2019

Place: Sydney

Counsel for the Applicant: H Bevan and G Tsang

Solicitor for the Applicant: Resolve Litigation Lawyers

Counsel for the Respondent: F St John

Solicitor for the Respondent: Legal Vision
ORDERS

SYG 2508 of 2018

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
QUANTUM GROUP HOLDINGS PTY LTD (ACN 059 141 632)

Applicant

AND:
ANDREW THOMSON

Respondent

order made by:

JUDGE BAIRD

DATE OF ORDER:

24 December 2021

THE COURT ORDERS THAT:
1.The parties are to bring in draft short minutes of order reflecting these reasons by 21 January 2022, or such other date as the Court advises administratively, after consultation with the parties.

Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
JUDGE BAIRD
INTRODUction

The applicant, Quantum Group Holdings Pty Ltd, appeals from a decision of a Delegate of the Registrar of Trade Marks given on 15 August 2018 (Decision), in respect of the respondent, Mr Andrew Thomson’s, opposition to Quantum Group’s Australian trade mark application 1633614 for the composite (word and device) mark “QUANTUM GROUP” (Quantum Mark) in respect of certain services in class 36 of the Register of Trade Marks, including “Financial services and investment services…”. The Delegate upheld Mr Thomson’s opposition on the ground under s 44(2) of the Trade Marks Act 1995 (Cth): Thomson v Quantum Group Holdings Pty Ltd [2018] ATMO 128.
The Quantum Mark
The Quantum Mark is as follows:
In the records of IP Australia, the image description of the device element in the Quantum Mark is ‘6 Chevron Form Shield, Segmented’. I will refer to the device element as the chevron device. The full specification of the services in respect of which the Quantum Mark is sought to be registered is set out in Annexure A to these reasons (Quantum Services).
Quantum Group applied for registration of the Quantum Mark on 10 July 2014. The date of filing of the application for the Quantum Mark is its priority date.
The Thomson Mark
Mr Thomson is the registered owner of Australian trade mark number 981823 for the word mark “QUANTUM” in respect of certain services in class 35 of the Register, including “Taxation services…” (Thomson Mark). The full specification of the services in respect of which the Thomson Mark is registered is set out in Annexure B to these reasons (Thomson Services).
The Thomson Mark is registered with effect from 10 December 2003.
Priority Date
As is apparent from the above, the Quantum Mark has a later priority date (10 July 2014) than that of the Thomson Mark (10 December 2003). For the purposes of determining this appeal, the date at which the rights of the parties are to be determined is the priority date of the Quantum Mark, 10 July 2014: see s 12 of the Act; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 28 ALJR 540, 595; see also in respect of s 58, Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 8; (2017) 251 FCR 379 at [18]-[22].
On 28 July 2016, the Quantum Mark was advertised in Australian Official Journal of Trade Marks as accepted for registration.
The Opposition proceeding
Mr Thomson filed a Notice of Intention to Oppose on 15 September 2016, and a Statement of Grounds and Particulars on 12 October 2016, later rectified (by deletion of improper material) on 24 November 2016. Mr Thomson raised grounds of opposition under each of ss 43, 44, 58A, 60 and 62A of the Act.
Neither party filed any evidence or submissions in respect of the opposition. The Delegate decided the opposition on the papers.
The Delegate’s Decision
On a notional consideration of the use of the Marks, and in the absence of any evidence which demonstrated a material difference in the characteristics of the services, the Delegate found that the Quantum Services covering various financial services, including financial management and investment, to be of a similar nature to, and share similar characteristics as the taxation services of the Thomson Services, such as to be provided by the same person or business: Decision at [12]‑[13]. The Delegate considered the Quantum Services, in their entirety, to be similar to the Thomson Services for the purposes of s 14(2) of the Act.
Turning to consideration whether the Quantum Mark is substantially identical to the Thomson Mark, the Delegate referred to case law including Pham Global. He found that the essential, and in the case of the Thomson Mark, only, element is the word “QUANTUM”. He considered that the word “GROUP” and the chevron device in the Quantum Mark are “somewhat discounted” because they are not “particularly distinctive” in respect of the [Quantum] services. He found the Quantum Mark and the Thomson Mark to be substantively (sic) identical. For completeness, in the event that his conclusion on substantive identity was incorrect, he also found the respective marks to be deceptively similar. He found that the requirements of s 44(2) of the Act were satisfied.
The Delegate concluded that Mr Thomson established his ground of opposition under s 44 of the Act, and refused to register the Quantum Mark. In the circumstances, the Delegate did not consider the other grounds raised.
ThIS APPEAl
Quantum Group commenced this proceeding on 5 September 2018, by filing a Notice of Appeal. Quantum Group appeals from the whole of the Delegate’s Decision, seeks to set aside the Delegate’s Decision, and says, inter alia, that the Delegate should have dismissed the opposition and permitted the Quantum Mark to proceed to grant.
As the Notice of Appeal was filed after 4:00pm on 5 September 2018, it was filed a day outside the 21 days prescribed by r 34.24 of the Federal Court Rules 2011 (Cth), applicable to proceedings commenced in this Court further to r 1.05(2) of the Federal Circuit Court Rules 2001 (Cth), now see r 1.06(2) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021. At the first case management hearing on 26 September 2018, I made orders pursuant to r 3.05 of the Federal Circuit Court Rules 2001 (Cth), extending the time for filing of the notice of appeal to 6 September 2018.
Grounds of Opposition in the Appeal
By Statement of Grounds of Opposition filed in the proceeding on 12 October 2018, Mr Thomson pressed grounds of opposition under each of ss 42(b), 44(2), 58, and 60 of the Act. At the hearing, Mr Thomson advanced only grounds of opposition under ss 44(2) and 58 of the Act.
In its Notice of Appeal, and in its Response to the Statement of Grounds of Opposition filed 26 October 2018, Quantum Group, relevantly, denies the Quantum Mark is substantially identical with, or deceptively similar to, the Thomson Mark in respect of similar services, denies Mr Thomson is the owner of the Quantum Mark, and by reliance on its Notice of Appeal, further or in the alternative, says the services in respect of which the Quantum Mark is sought to be registered (that is, the Quantum Services) are not similar to the Thomson Services.
Overview of evidence on the Appeal
Mr Thomson filed, and relies on his affidavit sworn 6 February 2019. Mr Thomson is an accountant, business advisor, an Australian registered tax agent, an ASIC corporate agent, and an ASIC approved SMSF (self managed super funds) auditor. Mr Thomson registered the business name “Quantum Accounting Services” in June 1993. He has worked in the field of taxation services and accounting services since July 1994. He obtained his initial tax agent registration on 1 August 1998, and operated as a sole trader from then until June 2006, when he incorporated Quantum Accounting Services Pty Limited (QAS). His evidence goes to use of the Thomson Mark, and by reason of his experience and use, similarities and overlap between some of the Thomson Services and some of the Quantum Services.
It does not appear to be in dispute that since its incorporation, QAS has used the Thomson Mark under licence from Mr Thomson. Mr Thomson claims use of the Thomson Mark, first as a sole trader, and then in the operation of QAS’ business since 1 August 1998. He evidences instances of use of the Thomson Mark in relation to taxation and accounting services, and in about April 2002 (at least) also in relation for lending and leasing (trading under the account name Quantum Lending & Leasing) and gross revenue in the tax year periods 2012 to 2018 inclusive. Mr Thomson was cross‑examined about his (and I infer) QAS’ use of the Thomson Mark.
Quantum Group did not file any affidavit evidence. Quantum Group relies on its claim to ownership of the Quantum Mark as at the priority date by reason of authorship, filing the application, and an intention to use: see s 27; Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437, at [49]-[55]; Pham Global, discussion at [18]-[22], [31]-[33].
At the hearing Quantum Group tendered certain pages from the Australian Government Tax Practitioners Board website (“tax agent services”, “terms explained”, and “what is a tax (financial) advice service?” pages), and three parts of the Australian Securities & Investments Commission (ASIC) Regulatory Guide for applicants applying for or varying an Australian Financial Services (AFS) licence: AFS Licensing Kit: Parts 1, 2 and 3.
Quantum Group also tendered printouts from the Trade Marks Register of IP Australia for registered trade marks “Aquantum”, “Q Quantumgroup” (fancy), “Quantum Valley Investment Fund” and “Quantum Valley Investments” registered for specific services variously in classes 35, 36 and 38 of the Register. Whilst under cross-examination Mr Thomson accepted that he did not object to the applications for those registrations, his evidence in re‑examination was that he actually was not aware of them. It is appropriate to state here that the extracts of the Register evidence is disregarded. As observed by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579 at [35], cited by Katzmann J in 1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209; (2012) 201 FCR 488; (2012) 291 ALR 266, at [41]-[42]: one has no idea of the circumstances were which led the Registrar to put the marks concerned on the Register; … comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration.
Hearing and determination
I heard the appeal on 30 April 2019. As I have said, Mr Thomson was cross‑examined, a number of documents were tendered, and I heard argument from counsel further to their written outlines.
Delay
Regrettably, this judgment has been delayed well beyond any indicative time that may have been assumed by the parties at hearing, when I understatedly informed counsel that they had given me “a little bit” to think about. The passage of time, however, has enabled me to undertake a review of the evidence with the benefit of transcript, including the Quantum Group tender bundle, and to consider afresh the authorities to which counsel referred me. It has enabled considered conclusions to be drawn.
Overview of conclusion
For the reasons developed below, I have concluded that the ground under s 44 of the Act is established in part, as I have concluded that only some of the services are similar services. The parties differed on the approach I should take should I reach this conclusion. I return to these considerations at the conclusion of my reasons below.
Relevant legal principles on appeal
Although styled an “appeal”, this proceeding arises as a hearing de novo under s 56 of the Act from the decision of the Delegate (as a delegate of the Registrar), involving the exercise of the original jurisdiction of the Court: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393; (2019) 142 IPR 1 per Greenwood J at [2]; in this Court, see e.g., Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd [2020] FCCA 1718.
The Court is to determine judicially whether the application should succeed on its merits, not whether the Registrar has lawfully discharged her duties: Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 126; [1937] ALR 404; (1937) 11 ALJR 146; Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187, Yates J at [22].
The Court approaches the matter “afresh and without undue concern as to the ratio decidendi of the registrar”. That said, and whilst there is no general presumption that the Registrar’s decision is correct, weight should be given to the Registrar’s opinion as “a skilled and experienced person”: see discussion in Apple at [23]-[25]. In Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; (1999) 367 ALR 393; 45 IPR 411, at [33], in the context of judicial consideration on appeal under s 35 of the Act whether a ground of rejection existed under s 44 of the Act in respect of a particular application, French J observed:
… weight can be given to the Registrar’s opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as “deceptive similarity” there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean that the Court is bound to accept the Registrar’s factual judgment. Rather it can be treated as a factor relevant to the Court’s own evaluation.
See also Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388, (2015) 328 ALR 247; (2015) 116 IPR 207, at [181].
On an appeal under s 56 of the Act from a decision of the Registrar under s 55 made on an opposition, the Court decides whether or not the accepted mark should proceed to registration having regard to the extent (if any) to which any ground of opposition raised in the proceeding has been established by the opponent (here, Mr Thomson), and, I observe, any responsive matters raised in any notice of contention by the trade mark applicant: see generally, s 55 and s 197 of the Act. On the appeal, the parties may adduce further evidence and examine and cross‑examine witnesses, and they did so in this case.
Onus and standard of proof
The onus of proof in an opposition rests upon the opponent: Food Channel at [32], [48]. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities: Phone Directories, at [133]. In cases of doubt, the benefit is afforded to the applicant for registration (compare the position under the Trade Marks Act 1955 (Cth)).
The onus of proof in this proceeding thus lies on Mr Thomson, as the opponent to registration of the Quantum Mark. Mr Thomson must establish one of the grounds of opposition under s 44(2) or s 58 of the Act, being the two grounds he has pressed.
Relevant statutory provisions - grounds of opposition
Section 44(2) of the Act is as follows:
…
(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.
[sub-ss 44(1), (3) and (4) are not relevant in this proceeding].
Section 10 – Definition of deceptively similar - provides:
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.
Section 14 – Definition of similar goods and similar services - provides in s 14(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.

Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
summary of requirements to be established under ss 44 and 58
It was common ground that to succeed on the ground of opposition under s 44(2), Mr Thomson must establish that:
(a)the priority date of the Thomson Mark is earlier than that of the Quantum Mark;
(b)the Quantum Mark is substantially identical with, or deceptively similar to the Thomson Mark; and
(c)the Thomson Services are similar services to the Quantum Services.
That is, in the language of the statutory provision, the later in time Quantum Mark in respect of the Quantum Services must be rejected if it is substantially identical with, or deceptively similar to, the earlier registered Thomson Mark registered in respect of similar services.
As the priority date of the Quantum Mark is later than that of the Thomson Mark, Mr Thomson has made out the first requirement of the s 44(2) ground.
It was also common ground that to succeed on the ground of opposition under s 58, Mr Thomson has to establish that:
(a)the Quantum Mark is identical or substantially identical to the Thomson Mark;
(b)the Thomson Mark has been used in respect of services as “the same kind of thing” as the Quantum Mark: re Hicks’ Trade Mark (1897) 22 VLR 636 at 640; and see discussion of the Full Court in Anchorage Capital Partners v ACPA Pty Ltd [2018] FCAFC 6; (2018) 259 FCR 514; (2018) 351 ALR 436; (2018) 128 IPR 255, at [61]-[64]: the question whether services are of the same kind must be addressed in a practical and common sense way, and by asking whether the relevant services are essentially the same; and
(c)he has the earlier claim to ownership based on [his and/or QAS’] prior use of the Thomson Mark before the priority date.
Thus, the ground of opposition under s 44(2) is concerned with the notional use of the respective trade marks – to what use can each of the trade marks be put within the scope of their respective specifications, whilst the ground of opposition under s 58 is concerned with the prior use in fact established by Mr Thomson.
Whilst counsel largely referred to the same authorities, the parties were apart on each of substantial identity, deceptive similarity, similar services (s 44(2)), and the extent of prior established use and whether it is in respect of the same kind of thing as the Quantum Services (s 58).
After summarising Mr Thomson’s evidence, I first consider the issues of substantial identity and deceptive similarity before turning to the issues of the relevant services under s 44(2) and s 58 respectively, having regard to the evidence and my findings.
The evidence on the appeal
Mr Thomson’s evidence
Mr Thomson claims that he, and since its inception, QAS, has provided all of the Thomson Services (that is, the services in respect of which the Thomson Mark has been registered). He says QAS has constantly and continually used the Thomson Mark throughout its business.
Mr Thomson annexes to his affidavit examples of use of the Thomson Mark on a business card, letterhead, invoices, print advertisements including Yellow Pages, and communications ranging from 1993 to 2019. In a majority of instances the Thomson Mark is depicted prominently, with the descriptor in considerably smaller font “Accounting Services”, in some instances with the further addition of the company name “Pty Ltd”. Mr Thomson, and then QAS’ services are advertised under the tag line “we care about your business” and as advertised comprise the following All Returns – Business & Personal, Business Setup, Shelf Companies, Super & Trust Funds, GST Help & Advice, Business Mentoring, Rental Properties, Negative Gearing, Capital Gains Help, Advanced Tax Advice, Wealth Creation, or in some instances, variations on the above, such as Shares – capital gains calculations, Advanced Tax Advice, and SMSF/ DIY super. I am satisfied that Mr Thomson, by himself, and by his licensee QAS since 1 June 2006, has used the Thomson Mark in respect of the Thomson Services.
I have referred to Mr Thomson’s experience above. He gives evidence of his experience and education, including maintaining and updating that experience and education by attending training, reading industry materials, attending seminars and conferences and participating in industry conferences, retaining is Tax Agent registration, and CPD requirements as a qualified SMSF auditor.
As Ms St John, counsel for Mr Thomson, submits, because Quantum Group elected not to put on any witnesses, Mr Thomson is the only witness available to the Court who can give evidence on the similarity between the Thomson Services and the Quantum Services, and in particular whether people engaged in the provision of the relevant services consider them as belonging to the same trade. With the caveat that I consider the regulatory environment in which certain of the respective services can be offered in Australia also to be relevant (the Tax Practitioners website pages, and parts of ASIC Regulatory Guide tendered by Quantum Group referred to above), I accept this submission.
As well as speaking from his experience, Mr Thomson annexes pages from Quantum Group’s website, which demonstrates that its principals comprise persons experienced in tax, investment markets and property, persons whose role is the development and marketing of financial products to both retail and wholesale investors, former bankers, CPA qualified accountants, members of the Institute of Chartered Accountants, former principals of major accounting firms, fellows of the Taxation Institute of Accountants in Australia, and a principal who heads the “Quantum Accounting Practice” servicing external clients on their accounting and taxation affairs.
I accept that the Quantum Group website demonstrates that providers of financial and investment services such as Quantum Group, also offer taxation services. I accept Mr Thomson’s evidence that taxation services are commonly offered by qualified and authorised accounting firms, banks, and/or registered tax agents, and his examples that the “big four” accounting firms (PriceWaterhouseCoopers, KPMG, Ernst & Young, and Deloitte) offer a full suite of financial and taxation services, and that smaller operations may offer taxation services and also broader financial services.
However, Mr Thomson does not attest to similarity of all the respective services. In his affidavit he states at [15]: “Some of the services in respect of which [Quantum Group] seeks to register its mark [Quantum Services] overlap with some of the services in respect of which the Thomson Mark is registered (Thomson Services)”. He attests that the Quantum services include some services that are Thomson Services, and some services that are “very similar” to the Thomson Services.
Further, and relevant to s 58 ground, in cross‑examination Mr Thomson properly conceded that the services he and QAS (for present purposes there is no need to distinguish between the two) provide are focused on the taxation and accounting implications that arise in respect of the subject matters of hotel management, insurance, financial products, or a real estate property management service, for example. He does not provide the actual service of buying, selling or leasing real estate, nor the managing of hotels, or a shopping centre. He does not provide advice on the range of investment opportunities available to people in terms of where they should provide their funds. The services he provides relate to working out or advising about liabilities, obligations or entitlements of his clients under a taxation law, representing entities and their dealings with the Commissioner of Taxation in relation to taxation rules.
In his affidavit Mr Thomson describes taxation services and accounting services broadly as follows:
[18]Taxation services includes advising clients about taxation and managing their taxation affairs. Specifically, providing taxation services involves becoming very familiar with a client’s financial position, such as their assets and investment portfolios.
[19]Accounting services includes financial reporting, bookkeeping services, summarising transactions and events, analysing financial information and reporting to individuals, entities, business managers, business owners and regulators (internal and external parties).
[20]Taxation services and accounting services can be provided to any person and/or entity subject to Australian tax legislation, including businesses, individuals, and SMSFs.
Mr Thomson lists what he understands each of taxation services and accounting services to commonly include for businesses, for individuals, and for SMSFs. He then states (at [28] and [29] of his affidavit):
[28]Thus, when a taxation services provider is first engaged by a client to provide taxation services, he or she will ask the client questions about their personal information and background, understand what sort of services they require, and ask them for copies of their financial documentation, such as tax returns and documents within the tax returns (such as insurance documents, superannuation fund documents, investment documentation and receipts).
[29]When an accounting service provider is first engaged by a client to provide accounting services, he or she will ask the client for all the information and documentation necessary to conduct a due diligence on their financial affairs, such as details of their assets and liabilities, current financial affairs, banking and credit card details, revenue, tax returns, and passwords and logins to their accounting software.
Turning to the Quantum Services, Mr Thomson attests as follows (at [30]‑[33] of his affidavit):
[30]The [Quantum Services] include “financial services”. That term is very broad. Financial services includes, for example, taxation and accounting services, lending, financial planning and insurance. Providing financial services almost always involves providing taxation services. Taxation services are an integral part of financial services. For example, financial services can involve managing or advising on the tax implications of business structures and management. Providing financial services also commonly involves providing accounting services, as does providing taxation services.
[31]The [Quantum Services] include “investment services”. I understand “investment services” to be a very broad term referring to services relating to any type of investment. Providing investment services almost always involves providing taxation services. Taxation services are an integral part of investment services. For example, investment services can involve managing or advising on the tax implications of how investments are structured, and how to structure them to minimise tax. Providing investment services also commonly involves providing accounting services, as does providing taxation services.
[32]The [Quantum Services] include advisory, consultancy and information services in relation to financial and investment services. (When I use the term “advice” or “advisory services” below, I intend to encompass advisory, consultancy and information services.) That is also very broad. Responsible advice in relation to financial services and investment services always involves taxation advice.
[33]The following [Quantum Services] overlap with the Thomson Services:
(a)“Financial Management” and advice on that topic: This is very broad. Financial management involves dealing with and analysing financial or monetary transactions. This would almost always involve considering the tax implications of the transactions. For example, financial management for individuals includes helping people to structure their assets and liabilities for tax effectiveness. Providing financial management services also commonly involves providing accounting services, as does providing taxation services. Both businesses and individuals seek advice about the best way to structure their financial affairs in order to minimise tax: for example, whether they should buy an asset or incur a liability through a related business, or a superannuation fund, or a trust.
(b)“Investment portfolio management services”, “asset management”, “fund management” and “property investment services”, and advice on those topics: I understand “investment portfolio services” to mean services involved in managing the whole portfolio of investments of an entity such as a business or a person. I understand the term “asset management” to be a broad term meaning managing any sort of asset. I understand “funds management” to mean managing the funds of another person or entity, usually in order to produce a return. I understand “property investment services” to mean services concerning property investments. All of these services include accounting.
Further, all of these types of advice necessarily involve providing taxation advice. A provider of these services, in advising a client about them, would necessarily consider and advise the client about the taxation implications – for example, the implications for GST and income tax. Part of giving advice on these topics is giving advice about appropriate structuring to minimise tax – for example, whether an investment should be made through a related business, or a superannuation fund, or a trust, and when it should be made. In my experience, clients who seeks advice on these topics always ask what the tax implications of their investment or potential investment are. Specifically for asset management, advising on that topic involves giving advice about, for example, deprecation, whether an asset if still tax‑effective, replacement value, written down value, and potential write‑offs. Specifically for property investment services we establish the most tax effective way to own and acquire the property, bearing in mind the ongoing tax obligations of the property.
(c)Advice in relation to “money lending services”, “mortgage services”, and “lease purchase financing and hire purchase financing”: Advice on these topics necessarily involves advice about their tax implications. Taxation advice includes advice about how loans should be best structured. For example, businesses seek advice when they are considering whether to get equipment under a lease arrangement or under a hire purchase arrangement, and that advice includes advice about the tax effectiveness of the available options. Another example is that individuals considering buying properties seek advice about negative gearing.
(d)“Superannuation services”: These services includes accounting services as set out in paragraph 26 [being: preparing financial reports including profit and loss statements and balance sheets; recording asset valuations; preparing reports for annual independent audits for self‑managed super funds; assistance with administration of superannuation funds; assistance with contributions and roll over of superannuation funds; assistance with pensions; and assistance with appointment or removal of trustees].
(e)Advice in relation to superannuation services: Advice on this topic necessarily involves advice about tax implications. This is an extremely complex and highly regulated area of law. For example, advice about superannuation services would necessarily involve advice about the tax deductibility of contributions and the tax implications of withdrawals.
It is apparent that in respect of each of the above services, Mr Thomson’s proposition is that in relation to lending, financial planning, insurance, and investment services, there are going to be taxation implications.
It is also evidenced from cross‑examination that Mr Thomson’s provision of his services with respect to asset portfolio management is confined to the taxation implications arising from a client’s investment portfolio management, and the accounting for them, so too with respect to asset management, and funds management.
Mr Thomson states from his experience and knowledge of the industry, that taxation is a significant factor in administering any financial activity. He attests it is now common to offer a wide array of financial services in addition to taxation services. This affects the way people look for taxation services, as they commonly find providers of these services online.
The regulatory regimes
I have referred above to the Tax Practitioners board website pages, and the AISC regulatory Guide.
Quantum Group submits that as a matter of practice, the provision of “financial services” and “taxation services” are governed by separate Commonwealth legislative and regulatory regimes, with the consequence that they are “fundamentally different” services, provided by “different persons”. In short, this is because to provide taxation services (noting provision of taxation services is governed by the Tax Agent Services Act 2009 (Cth)) a person must be registered with the Tax Practitioners Board (and need not be licensed by ASIC), whilst to provide financial services (within the definition in the Corporations Act 2001 (Cth), Chapter 7, s761A) a person must be licensed by ASIC to hold an Australian financial services licence (ASFL) (and need not be registered with the Tax Practitioners Board).
There is, however, no prohibition on the same person wishing to provide both kinds of services being both registered with the Tax Practitioners Board, and licensed by ASIC to hold an ASFL, noting that depending upon the range and type of financial services and products the applicant for licence seeks to be licensed to provide, the evaluation criteria differ.
The legislative provisions and regulatory regimes relied upon by Quantum Group were those in force at the time of the hearing. In brief, the regimes then in force are summarised in the following paragraphs.
Financial services
The provision of financial services is governed by Chapter 7 of the Corporations Act. Relevantly:
(a)any person carrying on a financial services business in Australia must hold an AFSL covering the provision of the financial services in accordance with the Corporations Act (unless exempted): s 911A(1);
(b)a “financial service” relevantly includes providing “financial product advice”, which in substance comprises the making of recommendations, or a statement of opinion or a report of one, intended to influence a person’s making a decision in relation to a particular “financial product” or class of “financial products”: s 766(1)(a), 766B; and
(c)a “financial product” is defined with a level of complexity, first in a general definition, and then by specific inclusions, and by overriding exclusions even if they are within the general definition, or inclusions. In general terms, a financial product is a facility through, or through the acquisition of which, a person (a) makes a financial investment. (b) manages financial risk; (c) manages non-cash payments, and subject to whether it is only incidental as provided by s 763E: s 763A(1).
(d)Quantum Group draws attention to the specific inclusion in the definition of financial product of a contract of insurance (not being a life policy, or another excluded contract of insurance): s 764A(1)(d).
As I have noted above, in order to obtain an AFSL, a person must apply to ASIC. The evaluation criteria differs depending on the range and type of financial service, and products for which the person seeks to be licensed.
Taxation services
The provision of tax agent services is governed by the Tax Agent Services Act 2009:
(a)a “tax agent service” is defined as any service that relates to ascertaining liabilities, obligations or entitlements of an entity that arise or could arise under a “taxation law”, or advising an entity about them, or representing an entity in their dealings with the Commissioner of Taxation, and that is provided in circumstances where the entity can reasonably be expected to rely on the service for either or both the purposes to satisfy liabilities or obligation, or to claim entitlements, that arise or could arise under a taxation law: s 90-5;
(b)a “tax (financial) advice service” is a subset of a “tax agent services” which is (broadly) tax agent services provided by a financial services licensee in the course of giving advice of a kind usually given by a financial services licensee (but excluding the service of representing an entity in their dealings with the Commissioner): s 90-15; and
(c)in order to provide tax agent services for a fee, or tax (financial) advise a person must be registered as a tax agent: s 50‑5;
(d)to be registered as a tax agent a person may apply to the Tax Practitioners Board: s 20‑20. To be eligible for registration, a person must satisfy the Board of several matters including that they: (a) are a fit and proper person; and (b) meet and maintain prescribed requirements including relating to qualifications, experience, continuing education, and indemnity insurance: s 20‑5.
(e)None of those criteria involve holding an AFSL.
The trade mark classification of goods and services

For administrative convenience, goods and services in respect of which a trade mark may be registered under the Act are divided into classes of the Trade Mark Register maintained under the Act: see s 19(2), s 27(5); the class headings are set out in Schedule 1 to the Trade Marks Regulations 1995. Goods and/or services specified in a trade mark application must as far as practicable be specified in terms appearing in terms appearing in any listing of goods and services published by the Register and made available for inspection: see Regulation 4.4(6). The classification system is that established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 1957, to which Australia is a member country. Currently, the 11^th version of the Nice Classification of Goods and Services is available. This is the classification system also used by the International Bureau of World Intellectual Property Organisation (WIPO).
Relevantly, the Nice classification is not limited or governed by, nor does it adopt, terms, definitions or prescribed criteria under the Corporations Act 2001 or the Tax Agent Services Act 2009. I return to this aspect of the parties’ cases when considering the services of each of the trade marks’ specifications below.
Substantial identity
The question of substantial identity is relevant to grounds of opposition under both ss 44(2) and 58 of the Act.
The relevant test for determining substantial identity was discussed by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 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. “The identification of an essential feature depends” it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”. Whether there is substantial identity is a question of fact. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are substantially identical”.
In Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, Gummow J noted at 513 that the phrase “substantially identical” (under s 62 of the 1955 Act) “requires a total impression of similarity to emerge from a comparison between the two marks”.
As the Delegate observed, the concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the decisions of the Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; (2017) 124 IPR 264, and Pham Global. I do not apprehend those decisions as changing the test of substantial identity. In Pham Global the Court stated at [51]-[52]:
[52]… There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell Company …at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.
[53]… The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues (sic) are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side‑by‑side comparison is to be carried out cognisant of the essential elements of the mark.
Mr Thomson submits that the marks are substantially identical. The word QUANTUM is the only essential feature or dominant cue in the Thomson Mark. He submits that the Quantum Mark, similarly, has only one dominant cognitive cue - the word QUANTUM, and neither the word component GROUP nor the chevron device is an essential element or a dominant cognitive cue.
As to the word component GROUP, Mr Thomson submits that it is descriptive; as Mr Thomson opined in his affidavit, used in the industry to mean more than one individual or corporation. Counsel submits the word component is akin to the word PARTNERS considered in Anchorage Capital where the Full Court at [130] found that “the word ‘PARTNERS’ makes a relatively unimportant contribution to the overall impression conveyed in a side by side comparison…” of “ANCHORAGE CAPITAL” and “ANCHORAGE CAPITAL PARTNERS”.
As to the chevron device, counsel for Mr Thomson submits that it does not substantially affect the identity of the mark, and is no more distinctive than the five gold stars considered in Accor at [206]- [213]. Counsel submits that the chevron device is simple, nondescript, and is comprised of plain lines.
In Accor the Court found at [206], [209] that the composite mark prominently presents the trade mark words HARBOUR LIGHTS engaging with the arrangement of features (of five gold stars, and the tag line ‘A New Star Shines’), where the tag line was presented in “very diminished text” (also described as “de minimus” and “barely noticeable”), under the “emphatic capitalised text” HARBOUR LIGHTS, and where the five stars “seem in some fashion, to herald HARBOUR LIGHTS to the eyes of the viewer”. The Court considered the five gold stars qualities conventionally or often anecdotally described as “five star”, and doubted that the five gold stars qualified as a device (at [207], [213]).
Mr Thomson also sought to distinguish the chevron device from the device (man sitting atop a globe) considered in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1; (2004) 61 IPR 212.
Quantum Group accepts that the words QUANTUM appear in both marks however, this is the only respect in which the marks are the same. In order to find the marks are substantially identical, one would have to ignore, or completely discount, both the chevron shield device and the word “GROUP”, and to discount the different visual, aural and conceptual effects conveyed by the Quantum Mark. Quantum Group submits this is not tenable under trade mark law.
Quantum Group submits that the trade marks look, sound, and are conceptually different. The addition of the word GROUP alters the ordinary meaning of the word QUANTUM as an amount (which it says is the descriptive meaning of the word when used in the Thomson Mark), so that instead it means “a collective” or similar, whilst the additional chevron device as a shield conveys the idea of security or protection. The device is large, prominent, and centred above the words. The device element has value as an image which can convey the trade mark applicant’s identity in a universal visual language, and works (as do device elements such as Microsoft’s four square device, or Chanel’s interlocking CC) as signifiers of the source of origin.
Consideration
The marks must each be considered as a whole, compared side by side, similarities and differences noted, and the total impression that emerges articulated. The essential feature of the Thomson Mark is the word QUANTUM. That same word is a significant element in the Quantum Mark, however, I consider the chevron device is also a prominent and significant distinguishing element, which strikes the eye, and gives pause. I do not consider that it is functions descriptively. I do not consider that it is an obvious or even ready conclusion to comprehend it as a shield promoting the idea of protection (a description at least of the benefits of insurance, and also advisory services).
The chevron device may be indexed (as IP Australia has done) as a 6 chevrons, form shield, segmented. At hearing, it also struck me as alluding to the prow of a boat. It is not obviously descriptive, or de minimus. The device’s visual features, simple, strongly contrasting lines (light/dark), its abstract appearance, its location and its size and prominence above the phrase “QUANTUM GROUP” all contribute to the device being an essential feature of the Quantum Mark, considered as a whole.
I consider that the device is a dominant cognitive cue in the Quantum Mark, and together with the word element QUANTUM, the two comprise the essential features, and dominant cognitive cues, of that mark. The word element GROUP plays a lesser role in the mark, as a word I consider has a descriptive, non‑distinctive component, although I do not discount it entirely when the mark is viewed as a whole.
The total impression that thus is conveyed in a side by side comparison, having regard to the essential feature of the Thomson Mark – the word QUANTUM, and its presence in the Quantum Mark, is one of dissimilarity, an overall dissimilarity between the marks to which the prominent cognitive cue of the chevron device contributes, an essential feature present in the Quantum Mark, and markedly absent in the Thomson Mark. I conclude that there is not a total impression of resemblance between the marks; to the contrary a total impression of dissimilarity emerges on a side by side comparison. I find that the Quantum Mark is not substantially identical with the Thomson Mark.
It follows from the above that I do not accept Mr Thomson’s submission that the device element and the word GROUP in the Quantum Mark are analogous to the five gold stars and the tagline or slogan considered in Accor. Those elements were of a markedly different character – highly descriptive of quality, and de minimus in appearance and meaning (see discussion of the subject trade mark in Accor above).
Deceptive Similarity under s 44(2) of the Act
The question of deceptive similarity is relevant to s 44(2) ground of opposition. The provision is set out at [32] above, and the definition of “deceptively similar” in s 10, at [33] above.
The relevant test for determining deceptive similarity was stated by Windeyer J in Shell Company, at 415:
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 [that is, their mark].
The legal principles of deceptive similarity are well settled. They have been collected and set out recently by the Full Court in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 at [25] to [33], including the above passage from Shell Company. Whilst Combe post-dates the submissions made in the present case, the Court there referred to authorities on which both parties before me rely. With the benefit of the Court’s discussion in Combe, the following principles may be identified (citations omitted):
[25]The determination for the Court to make is one of estimation and evaluation:
It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs: Australian Woollen Mills at 659.
[26]The approach required is also encapsulated by Windeyer J in Shell Company… at 415 (see preceding paragraph above).
[27]The distinction between consideration of whether one mark is deceptively similar to another, rather than substantially identical, lies in the point of emphasis on the impression or recollection which is carried away and retained of the registered mark. In this context, allowance must be made for the human frailty of imperfect recollection.
[28]The respective marks should not be compared side by side because purchasers in the market may not ordinarily have the opportunity of comparing them in that way. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected: Australian Woollen Mills at 658; Jafferjee v Scarlett at 121‑2; Shell Company at 415.
[29]Each of the marks must be judged as a whole: Cooper Engineering at 538; Re Johnson and Johnson v Kalnin at 220‑221. To which authorities I add, see Food Channel, at [92].
In Cooper Engineering, the High Court stated (at 538):
The proper approach to the answer to this question is well settled. It was summed up by Lord Parker (then Parker J.) in Re Pianotist Co Ltd’s Appn at 777, “You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.” To the same effect see Australian Woollen Mills, at p 658 [where the trade marks under comparison each comprised a device with words] …
[30]In considering whether the sound of one word resembles too nearly the sound of another, little assistance is to be obtained from a “meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution”: Aristoc Ltd v Rysta Ltd at 84 (Lord Simonds); Reckitt & Colman (Australia) Ltd v Boden at 98; Crazy Ron's at [77].
…
[32]The test is whether the result of the impugned trade mark’s use will be that “a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”: Southern Cross at 595, 608; applied to s 44 of the Act in Woolworths at [50(ii)] (French J, Tamberlin J agreeing).
[33]It is not necessary to establish that confusion is more probable than not, so long as there is a finite, non-trivial danger of confusion: Woolworths at [43] (French J, Tamberlin J agreeing). As Kitto J explained in Southern Cross at 595, “[i]t is enough if the ordinary person entertains a reasonable doubt”. It is also not necessary to establish that such confusion persists up to the point of sale or that actual purchasers will ultimately be deceived: Southern Cross at 596.
In Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said of the notional consumer of the relevant goods – and it may be interpolated, of relevant services of the specification:
… The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold, give, it may be said, the setting, and the habits and observation of men (sic) considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
The parties submissions
Mr Thomson submits that the marks are deceptively similar on the same basis as he submits that they are substantially identical. In addition, he submits that in the context of a deceptive similarity comparison, the word “GROUP” might exacerbate confusion by causing consumers of the relevant services to wonder whether services provided under the Thomson Mark and services provide under the Quantum Mark might be provided by the same group of individuals, or the same group of companies.
Mr Thomson relies on the decision of the Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, at [75]. On the question of infringement, the Court there upheld the primary judge’s conclusion of deceptive similarity. Notwithstanding the inclusion of the word “RADLER”, the word “BAREFOOT” in Lion Nathan’s mark remains prominent, and there was an obvious and clear link between that word, and an imperfect recollection of Gallo’s registered mark “BAREFOOT”, likely to deceive and cause confusion.
Quantum Group submits the test is whether there is a real risk that as a result of Quantum Group’s use of the Quantum Mark, a number of persons will be caused to wonder whether it might not be the case that the two services come from the same source: relying on Southern Cross at 595 (see Combe, above). There must be a real and tangible danger of confusion. A mere possibility is not enough: Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84; (1945) ALJR 203 at 94-95.
Quantum Group says the marks are not deceptively similar. It submits whether considered visually, or aurally, the overall impression created by each of the trade marks is significantly different: They look, sound, and are conceptually different.
In its written submissions, reiterated at hearing, Quantum Group says the Quantum Mark incorporates as a prominent and distinctive feature the chevron device, whilst there is “simply nothing contained in the [Thomson Mark] that creates anything remotely similar to the visual impact of the chevron device”. It says the Quantum Mark sounds different to the Thomson Mark. Conceptually, it submits, the chevron device conveys the idea of security and protection (as a shield) that is lacking in the Thomson Mark, whilst the word GROUP alters the ordinary meaning of the word QUANTUM to mean ‘a collective’.
Quantum Group submits that the overall impression created by the Quantum Mark is that of “a collective and/or security or protection”, and that created by the Thomson Mark of “amount”. Somewhat inconsistently, Quantum Group also argues that the word QUANTUM “is to some extent descriptive of [its] services, … because in the context of financial and investment services, insurance services and real estate services the word QUANTUM can fairly be understood as describing the amount or size of money to be obtained (or retained) by the consumer of those services”. Therefore, Quantum Group says its presence in the Quantum Mark should be given less significance.
As to the consumers of the kind of services in respect of which Quantum Group seeks registration of the Quantum Mark, it submits that in large part they are sophisticated and make purchasing decisions with care. It argues these consumers would carefully investigate the credentials of the service provider, further militating against any likelihood of confusion.

Quantum Group submits that the Thomson Mark is neither a made-up mark, nor a word wholly without any direct application to the services in question. It denies the Thomson Mark has built up any level of reputation since its priority date. Thus, it says, Quantum Group’s use of its trade mark would not create any confusion or be in anyway deceptive.
Consideration
As the definition in s 10 of the Act provides, a trade mark is deceptively similar to another if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion (see above at [33]), viewed having regard to the approach summarised from the authorities at [82]‑[84] above. It is necessary to commence the enquiry having regard to the prior registered mark – the Thomson Mark, and take the impression of the notional consumer, based on recollection, of that mark, for the purposes of making the comparison with, in the present case, the Quantum Mark: see Combe, at [66].
It must be borne in mind that deceptive similarity for the purposes of s 44(2) is to be considered having regard to the extent of the monopoly sought – that is, the notional use to which the trade mark could be put, having regard to the full extent of the services in respect of which the application is sought. Further, whether or not the prior registered mark has been used, or whether any reputation has accrued to use, is not a relevant consideration, that it has priority on the Register suffices - use is assumed in respect of the full ambit of the monopoly granted. Thus, in the present case, Quantum Group’s submission as to any lack of large established reputation must be rejected.
To the extent that there is evidence of how consumers behave in the market for the relevant services, it may be relevant: see Australian Woollen Mills, cited above at [86]. The only evidence before me, however, was evidence from Mr Thomson. It does not follow from that evidence, nor from the regulatory regimes for tax agent services or financial services, nor indeed from the specification of services of the Quantum Mark (as argued by Quantum Group), that notional consumers of the Quantum Services, are only, or even primarily, sophisticated, or that purchasing decisions would only be made after great consideration.
Whilst Quantum Group argues these consumers would carefully investigate the credentials of the service provider, the Quantum Services specification is not so limited. It may be that the ordinary consumer assumes that a supplier of a service within the Quantum Services specification must be licensed or registered, or experienced, or that they are reputable. There is no evidence that the market for the Quantum Services is a specialised market limited to a few consumers with a particular specialist interest or qualification, or that the potential consumer is other than a member of the general public. They are likely to be the ordinary people described by Dixon and McTiernan JJ in Australian Woollen Mills.
It may be accepted that as neither the Quantum Services nor the Thomson Services are fast moving consumer goods, the purchasing decisions of notional consumers of Quantum Services may involve an element of care, as indeed may those of Thomson Services.
As I have said, the comparison is not side by side.
I consider that the Thomson Mark being simply the word QUANTUM, comprising simply two syllables, whilst not being an entirely made-up word, but also not being a word that is directly descriptive, is likely to be recollected as a whole, with a greater recollection on the first syllable, the syllable which is commonly given greater emphasis in Australian spoken English. I consider it not unreasonable that an allusion to quantity or amount may form part of the impression or recollection, visually, aurally, and conceptually, which is carried away and retained of the Thomson Mark. As an allusion, those who perceive the mark would need to pause and consider what it means having regard to the services in respect of which it is registered.
With the impression of the Thomson Mark in mind, a notional consumer of the Quantum Services exposed to the Quantum Mark will perceive in the Quantum Mark the very word comprising the Thomson Mark. The word component – QUANTUM GROUP - is readily comprehensible, they are not entirely made-up words. As the first word of two in the mark, QUANTUM is dominant, visually it is presented in large, clear capital letters, aurally, it will be heard first, and with the combinations of consonants and vowels in each syllable, roundly articulated and so heard.
As the second word of two, GROUP plays a lesser, descriptive role. Considered in the setting of an offer to supply Quantum Services, it informs the person seeing or hearing the mark that the supplier is a group of companies, or individuals, or that the services are a group of services, or possibly a collective of entities, individuals, or services. I consider the word GROUP reinforces the allusion to quantity or amount conveyed by QUANTUM – more than one. It does not act to make QUANTUM in the mark less evocative of the Thomson Mark. I observe here, I do not find any allusion or meaning of money to be obtained or retained as contended for by Quantum Group.
The third element of the Quantum Mark, the chevron device, does not alter the overall resemblance, visually, aurally, or conceptually. Its visual contribution is decorative, abstract. The word components remain clear. Aurally, its contribution is minimal. As to the idea conveyed, even if it can be imagined as providing protection or a shield, that idea is complementary to the allusion to quantity or amount and of being a group conveyed by the word components. That allusion remains the same as recollected of the Thomson Mark.
Taking the impression of the Thomson Mark which is retained, and considering the Quantum Mark as a whole, the essential feature common to both is the word QUANTUM. I consider that the word QUANTUM in the Quantum Mark would leave a considerable impression on the mind of a consumer of ordinary intelligence of the Quantum Services. I do not consider that the chevron device, and the word GROUP are sufficient to displace that impression. If there is an allusion to amount, it remains the same. If there arises an idea of protection or security, that idea does not displace the idea present in the word QUANTUM simpliciter. The additional components of the Quantum Mark, considering the mark as a whole, are not distinctive enough to remove the real, tangible likelihood of deception or confusion.
I consider that if each of the trade marks is used in a normal way as a trade mark for the services of their respective specifications, bearing in mind that consumers may enquire as to the credentials of the service providers, and that purchasing decisions may involve some care, and prudence, the Quantum Mark is deceptively similar to the Thomson Mark. The result of the Quantum Mark’s use will be that a number of people will be caused to wonder whether the services have the same source. I consider that there is a real, non-trivial danger of confusion, it is not a mere possibility.
I find that the Quantum Mark is deceptively similar to the Thomson Mark.
the respective services
Section 58 ground
As I have concluded that the Quantum Mark is not identical or substantially identical with the Thomson Mark, it follows that Mr Thomson cannot succeed on the ground of opposition under s 58 of the Act. The question of whether the Thomson Mark has been used in respect of services as “the same kind of thing” as the Quantum Mark (see above at [37]) does not arise for consideration.
Section 44(2) ground - Similar services
As I have concluded that the Quantum Mark is deceptively similar to the Thomson Mark, the question of similar services arises in order to decide whether Mr Thomson establishes the s 44(2) ground of opposition. I set out the definition of similar services contained in s 14 at [34] above. Services are similar if they are the same, or services of the same description.
The relevant question in assessing whether services are of the same description may be characterised as ‘whether consumers might see the [services] as having the same trade origin’: E & J Gallo at [72]-[74]. In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236; (1998) 42 IPR 561 at 243 to 244, the Full Court identified relevant factors to consider include the nature, purpose, and characteristics of the respective services. These include considering:
(a)whether the services are commonly offered by the same providers;
(b)the trade channels through which they are provided;
(c)whether they are provided to the same class or classes of customers; and
(d)whether those engaged in their provision consider them as belonging to the same trade.
Mr Thomson submits that the authorities say that goods of the same description ought not to be given too restrictive a construction. It is not limited to goods “substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other”: MID Sydney, at 244. He refers to the focus of the Full Court in E&J Gallo on the nature of the products and the channels through which the goods were produced and traded, and the Court’s conclusion that beer and wine were goods of the same description. The same approach applies to services.
Quantum Group submits that emphasis should be on the nature, purpose, and characteristics of the services in question, rather than the same providers, trade channels and customers. It submits that the notion of substitutability becomes significant. It submits consumers would not consider the services in question to be interchangeable, relying on Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; (2011) 92 IPR 165 at [34]. In Solarhart, Perram J relied on a more than trivial degree of substitutability as a factor to find that photovoltaic systems are goods of the same description as solar hot water heating systems, but considered that the reasoning did not support a broader notion for heating or supplying water, pitched at that level of generality. Quantum also relies on the first instance decision in New South Wales Dairy Corp v Murray Goulburn Co-Op Co Ltd (1989) 86 ALR 549; 14 IPR 385, where Gummow J found flavoured milk and lunch sized packaged cheese, despite both being sources of dairy and calcium, were not goods of the same description because there was no evidence that they were substituted.
Mr Thomson’s evidence on the services of the respective trade marks is set out above. His evidence is that taxation services, or accounting services. or both, are integral to and included in the broad terms of financial services, and investment services. He identifies that financial management and advising, property investment services, investment portfolio management services, and fund management advice necessarily involve providing taxation advice: see [52] above, and specifically Mr Thomson’s paragraphs [33(a), (b), and (c)]. Quantum submits in relation to this evidence that the provision of taxation advice in relation to financial services is not analogous to the provision of those services.
I accept that financial services and tax agent services are governed by different regulatory regimes, and I do not disregard those regimes. That different registrations or licensing is required at the regulatory level, however, may not be of much relevance to the average consumer of either services, the more relevant matter will be that the provider is in fact registered or licensed: the observations of Perram J in Solarhart at [33] resonates: “I accept that the mechanism involved in both sets of devices is profoundly different at a technical level, but I do not think that is probably of much relevance to the average consumer who understands neither calorific transportation nor the photoelectric effect.”
I accept Mr Thomson’s submission that there is nothing to determine that the term financial services in the specification of the Quantum Services for the purposes of the Act is coextensive and limited to the definition of financial services under Corporations Act 2001 (Cth). I consider that financial services and investment services are very broad terms, and not limited to meanings under the Corporations Act. Trade mark classifications are not to be confined narrowly. As I have noted above, in the context of the regulatory regimes, service providers can provide services governed by both regulatory regimes.
I do not accept however, that because there may be a taxation implication to almost every financial or investment decision, or real estate dealing, or property investment, that there is not some distinction between the provision of taxation services or accounting services, and investing, or dealing in an asset. Whilst taxation liability will obviously be a factor in determining whether an investment is a worthwhile venture, the provision of investment opportunities is a separate service. Specifically, the offering of specific financial and investment products does not appear to me to be a service of the same description as the taxation advice about the financial product or investment.
I have considered both the extent of Mr Thomson’s evidence of the overlap and the integral nature of the provision of the Thomson Services, in the provision of certain of the Quantum Services, and the import of his cross‑examination as to what he, himself did, which I have set out above in my consideration of his evidence.
There is also uncontradicted evidence before me that the same firms provide both financial services, investment services, financial management and advising services, and investment portfolio management services, on the one hand, and accounting and taxation services on the other, including by the big four firms, and by Quantum Group itself. I consider that these examples evidence that those services at least, may be offered by the same providers, although not necessarily by the same individual, and that the trade channels through which they are provided are common. Having regard to these same providers and same channels, I consider that the classes of consumers to whom the services are provided are sufficiently the same, or overlapping such a degree that, having regard to the above mentioned evidence, the services are services of the same description.
For the foregoing reasons, I am persuaded that the following services within the Quantum Services are services of the same description as the Thomson Services:
Financial services and investment services, including financial management, funds management, asset management, and investment portfolio management services; advisory, consultancy and information services in relation to the aforementioned services.
Having regard to the specification of the Quantum Services, in the light of the limitations of the evidence before me (including as to the providers of such services, and whether they consider themselves in the same trade), I am not persuaded that the following are services of the same description as the Thomson Services:
money lending services, mortgage services, mortgage broking services, lease purchase financing and hire purchase financing, equity raising and funds raising services, property investment services, financing of property development; insurance services, including business insurance, property insurance, life insurance, disability insurance, superannuation services and insurance brokerage services; real estate services, including buying, selling and leasing real estate; real estate services relating to property development; real estate management including the management of resorts, hotels, motels, retail premises, shopping centres, entertainment premises, industrial premises, office premises, residential premises and/or development sites; advisory, consultancy and information services in relation to the aforementioned services.
Conclusion
Subject to the below, it follows from the consideration and my conclusions that Mr Thomson has established, in respect of at least some services, that the ground of opposition to the Quantum Mark under s 44 of the Act is made out, and the Quantum Mark in its accepted form should be refused registration.
Amendment of the specification
Mr Thomson submits that if the Court is satisfied that there is some overlap between the specified services (but not of all services), the correct approach for the Court is not to “tease out” from the Quantum Services any classes of services that might be registrable. Rather, if the Court found that either the Quantum Mark was substantially identical with, or deceptively similar to, the Thomson Mark, the Court should reject the whole of the application for the Quantum Mark: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187, Yates J at [232], [238].
Quantum Group submits that this proposition is wrong. It says Apple was a case decided under s 41 of the Act, and distinguishable. Quantum Group says that an opponent’s success “on one or two services” does not result in the rejection of the whole of the application. The Court has a wide power under the Act to permit an amendment to a specification (subject to its not enlarging the monopoly sought): see ss 55, 65(7), and 197 of the Act. It submits it is common practice for the Registrar to allow an applicant to amend an application to restrict the goods/services claimed and to allow the balance of the application to proceed to registration. It refers to the approach of the Full Court of the Federal Court of Australia in Lomas v WintonShire Council [2002] FCAFC 413; (2003) AIPC 91-839 at [46]-[47]; the decision at first instance in Phone Directories Co Australia v Telstra Corp Ltd [2014] FCA 373; (2014) 106 IPR 281 at [231] (not disturbed on appeal); and the decisions in Frucor Beverages Limited v The Coca‑Cola Company [2018] FCA 993; (2018) 132 IPR 318, and Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756; (2015) 114 IPR 81.
Each of Telstra Corp (Phone Directories at first instance), and Frucor, was a decision concerning a s 41 opposition proceeding. Buchanan Turf was also a case under s 41 of the Act, but at acceptance. In Telstra Corp, Murphy J considered that the Court has power under s 65(7) of the Act to amend, however no party asked him to do so. In Frucor, Yates J proceeded on the basis that the powers conferred by s 197 should be exercised conformably with s 65; the amendment sought would offend s 65(2), which the appellant accepted and no amendment was made. In Buchanan Turf, Yates J affirmed the decision of the delegate, and ordered the application not proceed to acceptance unless the specification was amended by deleting reference to the class 31 goods.
In Lomas, the Full Court considered an opposition based on s 58, where the primary judge had made orders for the amendment of the specification of goods. The Court concluded that the opposition should fail, and no amendment to the specification is justified.
The power to amend was also considered by the Full Court in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, an opposition under s 41 of the Act. Whilst the Court accepted it had power to amend under s 197 of the Act, their Honours declined to do so, as had the primary judge. No error was demonstrated. As to problems with drafting suitable amendments in that context see Greenwood J at [58]-[76], Katzmann J at [156]-[157], and Rangiah J at [258]-[268].
In the present case as I have found that some only of the services are services of the same description, and whilst I consider that in its present form the Quantum Mark should be refused registration, I am of the preliminary view that it would be appropriate to amend the specification of the Quantum Mark, and if so amended order the amended application proceed to registration. Whilst significant time has passed, counsel had indicated that they wished to be heard should I reach the conclusions that I have.

In these circumstances I propose to order that the parties bring in draft orders reflecting my reasons. Those orders should include that the proceeding stand over to a date to be fixed for any further argument, and for my determination on costs.
I will so order.

I certify that the preceding one hundred and twenty-seven (127) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird.
Associate:
Dated: 24 December 2021
Annexure A
Class 36: Financial services and investment services, including financial management, funds management, asset management, money lending services, mortgage services, mortgage broking services, lease purchase financing and hire purchase financing, equity raising and funds raising services, property investment services, financing of property development, and investment portfolio management services; insurance services, including business insurance, property insurance, life insurance, disability insurance, superannuation services and insurance brokerage services; real estate services, including buying, selling and leasing real estate; real estate services relating to property development; real estate management including the management of resorts, hotels, motels, retail premises, shopping centres, entertainment premises, industrial premises, office premises, residential premises and/or development sites; advisory, consultancy and information services in relation to the aforementioned services.
Annexure B
Class 35: Taxation services, including the provision of taxation related advice, accounting advice, accounting services, auditing services, bookkeeping services, accounting and taxation consultancy, business management consultancy, tax analysis, accounting analysis, tax information, accounting information, business organisation, business analysis and assessment services, business appraisals; all these services being provided in relation taxation and accounting matters.

File number(s):	SYG 2508 of 2018
Judgment of:	JUDGE BAIRD
Date of judgment:	24 December 2021
Catchwords:	INTELLECTUAL PROPERTY – TRADE MARKS – Appeal from decision of a Delegate of the Registrar of Trade Marks – where Delegate upheld respondent’s opposition to applicant’s trade mark registration under s 44(2) of the Trade Marks Act 1995 (Cth) – ss.44(2) and 58 grounds of opposition - whether mark substantially identical with, or deceptively similar to prior registered trade mark – where applicant’s mark a composite mark – prior word mark – whether similar services – whether the applicant is not the owner of the trade mark.
Legislation:	Trade Marks Act 1995 (Cth), ss.10, 14, 44(2), 56, 58, 67, 197
Cases cited:	1-800-Flowers.Com Inc v Registrar of Trade Marks [2012] FCA 209; (2012) 201 FCR 488; (2012) 291 ALR 266 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; (2017) 124 IPR 264 Anchorage Capital Partners v ACPA Pty Ltd [2018] FCAFC 6; (2018) 259 FCR 514; (2018) 351 ALR 436; (2018) 128 IPR 255 Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 322 ALR 1; (2014) 109 IPR 187 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393; (2019) 142 IPR 1 Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495 Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd [2020] FCCA 1718 Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8 E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 269 ALR 17; (2010) 86 IPR 437 Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115; [1937] ALR 404 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236; (1998) 42 IPR 561 Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177; (2000) 47 IPR 579 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 8; (2017) 251 FCR 379 Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84; (1945) ALJR 203 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365; (1999) 367 ALR 393; 45 IPR 411 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; (2011) 92 IPR 165 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 28 ALJR 540, 595 Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388, (2015) 328 ALR 247; (2015) 116 IPR 207
Division:	Division 2 General Federal Law
Number of paragraphs:	127
Date of last submission/s:	30 April 2019
Date of hearing:	30 April 2019
Place:	Sydney
Counsel for the Applicant:	H Bevan and G Tsang
Solicitor for the Applicant:	Resolve Litigation Lawyers
Counsel for the Respondent:	F St John
Solicitor for the Respondent:	Legal Vision

SYG 2508 of 2018
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:	QUANTUM GROUP HOLDINGS PTY LTD (ACN 059 141 632) Applicant
AND:	ANDREW THOMSON Respondent

order made by:	JUDGE BAIRD
DATE OF ORDER:	24 December 2021