RAMS Financial Group Pty Limited v Real Asset Management Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by RAMS Financial Group Pty Limited to registration of trade mark numbers 2062766 and 2178920 (class 36) both for the trade mark RAM and device - in the name of Real Asset Management Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Robert Clark of counsel, instructed by Allens Patent & Trade Mark Attorneys

Applicant: Craig Smith of counsel instructed by Arcadia IP Pty Ltd

Decision:

2024 ATMO 110

Trade Marks Act 1995 (Cth) – opposition under section 52 –– ss 42(b), 44, 58, 59, 60, 62(b) and 62A pursued – ground of opposition established under s 60 – registration of each trade mark refused

Background

This is a decision in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth)[1] by RAMS Financial Group Pty Limited (‘Opponent’) to registration of the trade mark (‘Trade Mark’) in the name of Real Asset Management Pty Ltd (‘Applicant’), details of which appear below:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Trade mark number Specification Filing date (‘Relevant Date’)

2062766

(‘766 Trade Mark’)

Class 36: Financial services relating to management and selling of financial products; services relating to managed funds; services relating to real asset management including real estate, infrastructure and agricultural land; services relating to the management of financial assets; valuation of assets; services relating to wealth management including financial advisory services, financial research services, financial consultancy services, financial evaluation and management services, investment portfolio management evaluation services, investment portfolio monitoring services, investment portfolio performance analysis services, real estate investment research services, real estate investment consulting services, negotiating and executing real estate sales and purchases for others, property management services, investment and investment management services in real assets including in real estate, infrastructure and agricultural land, fund investment services, management of investment monies, management of unit trusts and global funds, services relating to private equity investments, portfolio tracking and analysis services, providing information about investments, providing financial information by electronic means, provision of investment and asset management services as well as managing investments for others; all of the above not being for services for the valuation of real estate

(‘766 Services’)

15 January 2020

2178920

(‘920 Trade Mark’)

Class 36: Financial services relating to management and selling of financial products not being for the provision of home loans; services relating to managed funds; fund investment services; management of investment monies; management of unit trusts and global funds; services relating to private equity investments; services relating to wealth management including financial advisory services, financial research services, financial consultancy services, financial evaluation and management services; all of the above not being for the provision of home loans

(‘920 Services’)

14 May 2021

(together ‘Applications’)

Both Applications contain the endorsement that the ‘Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied’.
Both Applications were examined and advertised as accepted for possible registration on 10 January 2022.
On 9 March 2022, the Opponent filed Notices of Intention to Oppose. On 11 April 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’) covering both Applications. The Applicant filed Notices of Intention to Defend on 25 May 2022.
The Opponent filed Evidence in Support (‘EIS’) on 5 September 2022. The Applicant filed Evidence in Answer (‘EIA’) on 23 February 2023. No Evidence in Reply (‘EIR’) was filed.
The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard the opposition in my capacity as a delegate of the Registrar of Trade Marks on 8 May 2024. Providing submissions for the Applicant was Craig Smith of counsel instructed by Virginia Beniac-Brooks of Arcadia IP Pty Ltd. The Opponent’s submissions were made by Robert Clark of counsel instructed by Miriam Stiel, Lena Balakrishnan and Max Jones of Allens Patent & Trade Mark Attorneys (‘Allens’). Observing the hearing were Scott Wehl, Stewart Chandler and Jennifer Xu, officers of the Applicant, and Emily Moore and Hannelore Tooker, officers of Westpac Banking Corporation (‘Westpac’), the parent company of the Opponent. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing.
Evidence
The following evidence was filed:
EIS
Declaration of Danielle Kean, marketing lead of the Opponent made on 5 September 2022, with Exhibits DK-1 and Confidential Exhibit DK-2 (‘Kean’).
Declaration of Emma Gorrie, employee of Allens made on 5 September 2022, with Exhibit EG-1.
EIA
Declaration of Scott Gregory Wehl, founder and group CEO of the Applicant made on 23 February 2023 with Annexures SGW-1 to SGW-22 (‘Wehl’).
Preliminary Matter
On 28 July 2022, this office advised that it intended to revoke the acceptance of the Applications (‘Revocation Notices’). The 766 Mark was filed as a divisional of now lapsed trade mark number 1862280 filed on 28 July 2017 and the 920 Mark was filed as a divisional of now lapsed trade mark number 1908975 filed on 22 February 2018. The Applications were accepted under s 44(3)(a) (honest concurrent use) based on evidence of use before the filing dates of the Applications rather than before the priority dates (based on the divisional claims). In the Revocation Notices it was suggested by this office that the Applicant may consider deleting the divisional claims which would allow the acceptance of the Applications under s44(3)(a) to proceed, and revocation would no longer be required. The Applicant responded by requesting deletion of the divisional claims on 23 August 2022 which was actioned by this office on 22 September 2022. Therefore, the acceptance of the Applications was not revoked.[2]
[2] This series of correspondence between the Applicant and this office concerning revocation of acceptance will be referred to as the ‘Revocation Correspondence’.
The Opponent was not notified of either the intention to revoke acceptance of the Applications or the deletion of the divisional claims and therefore the new priority dates of the Applications.
At the hearing, the Opponent raised the lack of notification of the intention to revoke and the deletion of the divisional claims. The Opponent submitted that following receipt of the Applicant’s written submissions, the Opponent undertook investigations and became aware of the intention to revoke and the deletion of the divisional claims on 7 May 2024, the day before the hearing. As a consequence, the Opponent had insufficient time to consider the consequences, if any, of the intention to revoke and the deletion of the divisional claims and whether any additional grounds of opposition under s 62(b) and possibly s 62(a) would be appropriate. The Opponent therefore sought an opportunity to make further submissions.
It was apparent from the Opponent’s written submissions dated 24 April 2024, that the Opponent did not appear to be aware of the deletion of the divisional claims for each Application as its submissions referred to the relevant priority dates as though they were based upon the divisional claims.
The Applicant was also aware that the Opponent may have an incorrect understanding of the priority dates as the Applicant’s written submissions filed 1 May 2024 made note of the Opponent’s submissions citing incorrect priority dates for the Applications.
Given the above, I was satisfied that it was appropriate to allow the parties to file further submissions and therefore I directed that the Opponent provide further submissions within two weeks of the date of the hearing and the Applicant provide further submissions within two weeks of receiving the Opponent’s further submissions. This direction was confirmed in writing to the parties on the day of the hearing. The parties filed their written submissions as directed.
The Opponent’s submissions sought leave to amend the SGP pursuant to reg 5.12(1)(c) to raise a new ground of opposition under s 62(a) of the Act. Below is the proposed new ground and its particulars in the proposed amended SGP:
The Opponent’s request was supported by a declaration of Ms Miriam Stiel, a partner at Allens dated 22 May 2024, who had the care and conduct of these oppositions. Ms Stiel set out the factual circumstances relevant to raising a new ground of opposition. These facts and circumstances were generally as I have detailed above with some additional information namely:
·     other than the Opponent’s submissions, paragraph 6 of Kean and paragraphs 4 and 21 of Wehl also referred to the also referred to the dates as priority dates based on divisional claims.
·     Ms Stiel claims to have become aware for the first time that the priority dates for the Applications had changed after reading the Applicant’s written submissions, which prompted her request from this office copies of the Revocation Correspondence. The copies of the Revocation Correspondence were received by Allens on 7 May 2024 at 5:46pm and 5:52pm. Ms Stiel’s declaration provides evidence of the Revocation Correspondence.
·     Ms Stiel claims that after causing a review of Allens’ file on 17 May 2024, for the purpose of preparing her declaration, she became aware that a former lawyer of Allens (‘Former Employee’) who was previously assisting her in relation to the opposition matters, had sent her an email on 4 October 2022 in which she informed Ms Stiel that the divisional status of the Applications had been deleted on 14 September 2022. Ms Stiel claims she did not recall receiving or reading that email. Ms Stiel does not provide a copy of that email so that its contents can be considered nor any evidence as to whether the email was read by Ms Stiel back in October or remained as an unread email. Ms Stiel also does not state when the Former Employee ceased to assist her in relation to the oppositions.
Ms Stiel’s declaration concludes by claiming that:
·the Opponent was not notified of the Examiner's intention to revoke acceptance of the Applications;
·the Opponent was not given any opportunity to be heard in relation to the Applicant's request to delete the divisional claims for the Applications;
·it was not until 1 May 2024 that she became aware that the priority dates of the Applications had changed; and
·it was not until 7 May 2024, when she reviewed the documents in the Revocation Correspondence, that she became aware of the circumstances in which the Applications were amended.
Regulation 5.12 provides:
Amendment of statement of grounds and particulars
(1)An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a)correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b)amend a ground of opposition; or
(c)add a new ground of opposition; or
(d)to amend the facts and circumstances forming the basis for the grounds.
(2)The Registrar may grant the request on terms that the Registrar considers appropriate.
(3)However, the Registrar may grant a request to:
(a)amend a ground of opposition; or
(b)add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4)If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant
As stated above, I must be satisfied that the amendment to the SGP to add the s 62(a) ground relates to information of which the Opponent could not reasonably have been aware at the time of filing the SGP. Even if I am so satisfied, Regulation 5.12 is framed in discretionary terms. The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment.[3] In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.
[3] K-Tec, Inc v Healthy Foods, LLC [2016] ATMO 4 (Hearing Officer Richards).
As a general proposition, there is a responsibility on the Opponent to be fully prepared and aware of the grounds by which it seeks to oppose the registration of a trade mark.[4] Accordingly, in circumstances where an opponent requests an amendment to an SGP, it bears the onus of not only demonstrating that it acted promptly in making the amendment request, but that the explanation for the delay was reasonable.
[4] Annco, Inc v Nike Innovate CV [2020] ATMO 17, [15] (Hearing Officer Irgang).
The Opponent submits that no notice or opportunity to comment in respect of the Revocation Notices was provided to the Opponent, despite the Oppositions being on foot at that time. I do not agree that this office was obliged to either give the Opponent notice of the Revocation Notices or to provide an opportunity to comment. I do believe however that this office should have informed the Opponent of the deletion of divisional status for the Applications given that the opposition to the Applications were into the evidence stages and the Opponent had filed its EIS. The Registrar has the power under s 202(e) to notify any person of any matter that, in her opinion, should be brought to the person’s notice.
The Opponent submits that even if Ms Stiel could (or should) have been aware of the change of priority dates at an earlier point in time, this is not the relevant issue as it was not possible for the Opponent to have raised the new ground of opposition when it filed the SGP, because the ground of opposition relates to events which occurred after the SGP was filed. This is true. At the time of filing the SGP on 11 April 2022. it was impossible for the Opponent to know that the divisional claims would be deleted. In fact, this office itself had not made the decision to send the Revocation Notices to the Applicant until 3 months after the SGP was due.
The Notices of Intention to Oppose, the SGP and the Notices of Intention to Defend had already been filed before the date of the Revocation Notices. Further, the EIS was filed on 5 September 2022, which was after the Applicant’s request to delete the divisional status of the Applications but before this office actioned the deletion of the divisional claims. Therefore, at the time of filing the SGP, there was nothing to alert the Opponent that it should be aware of the Revocation Correspondence.
In consideration of the above reasons, the requirements of reg 5.12(3) are therefore satisfied. However, even though I am satisfied, there is still a discretion as to whether it is appropriate to amend the SGP to add in the s 62(a) ground.
When the Opponent became aware of the information forming the basis of the requested amendment to the SGP is a relevant consideration in determining whether it is appropriate to allow an amendment to the SGP. In this case the following statements in Wehl show there were inconsistencies as to the priority dates of the Applications:
·at [22] and [37] ‘…being on or around the previously claimed[5] priority dates for the Opposed Applications’.
·at [21] ‘prior to 28 July 2017 and 22 February 2018, being the respective priority dates for the Opposed Applications’.
·at [4] ‘Trade Mark Application No. 2062766 filed on 28 July 2017 … and Australian Trade Mark Application No. 2178920 filed on 22 February 2018’.
[5] My emphasis.
I consider that the inconsistencies in Wehl referring both to the ‘previously claimed priority dates’ and ‘the respective priority dates’ should have alerted the Opponent that there was an issue with the priority dates and perhaps that further investigation was required. A simple check of the Trade Mark Register would have revealed the priority dates of the Applications as per the snip below:[6]
2062766 2078920
[6] Snipped on 5 May 2024.
The Applicant submits that the discretion should not be exercised in the Opponent’s favour as the proposed amendment is based on information that has been a matter of public record, having been on the Register since 14 September 2022. Moreover, the Opponent’s lawyers were aware of that information from at least October 2022, being the date of the email sent to Ms Stiel by the Former Employee.
Ms Stiel claims in her declaration that upon reading the Applicant’s written submissions, she became aware for the first time that the priority dates for the Opposed Marks had changed. Given that Ms Stiel had received an email from the Former Employee and there is no indication that this email was not read by Ms Stiel before a review of Allens’ file in May 2024, I find it difficult to accept Ms Stiel’s claim that she was aware of the change in priority dates for the first time. I do however appreciate that Ms Stiel may have forgotten receiving or reading the email as we all tend to forget sometimes but Ms Stiel was not the only person who knew about the deletion of the divisional status, as the email was authored by the Former Employee who was assisting Ms Stiel in relation to the oppositions.
While I am not entirely satisfied that Ms Stiel has provided full disclosure, Ms Stiel has provided an explanation for the delay, so I must form a view on whether the delay was reasonable in the circumstances. I find that, on the basis of the inconsistencies in Wehl and the email from the Former Employee on 4 October 2022 which was on Allens’ file, I cannot be satisfied that the Opponent acted promptly in the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment.
Even if I was satisfied that the Opponent acted promptly in the timing of the amendment request and the reasonableness of the explanation offered for the delay, that would not be the end of the matter. I must also enquire as to any prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment.
I am not satisfied as to the nature and importance of the requested amendment nor that the ground proposed to be added is sufficiently particularised. First and foremost, the acceptance of the Applications was never revoked so the procedures under s 38(2) did not apply. The Revocation Notices were notices indicating an intention to revoke and not notices that the Applications had been revoked. Secondly, deleting the divisional claims were not amendments which had the effect of extending the Applicant’s rights. In fact, the Applicant’s rights were limited when the divisional claims were deleted, as this gave the Applications a later date from which the Applications, if registered, would take effect.
The Opponent submits that the procedure adopted by the office to allow the Applicant to delete the divisional claims was unusual however, this procedure was not unusual. Pursuant to 38(1)(b), the decision to revoke must be reasonable. The Registrar must have regard to all the circumstances when deciding whether it is reasonable to revoke acceptance. IP Australia’s Trade Marks Office Manual of Practice and Procedure[7] gives an example of when the Registrar may consider that it is not reasonable to revoke acceptance being if the applicant agrees to amend the application so that certain conditions and limitations are placed upon the trade mark. The Registrar is not limited in what he or she may consider.
[7] Part 38.1.1.

With regard to the public interest, given the above, I do not believe the public interest is served in considering a new ground that has no technical basis and lacks substance. I am of the same opinion regarding the prejudice to the parties.
Taking into consideration all the relevant factors, I am not satisfied that it is appropriate to amend the SGP to add the s 62(a) ground. I have therefore decided this matter based on the particulars set out in the original SGP, the evidence, and the written and oral submissions of the parties.
Grounds and Onus
The SGP nominates grounds of opposition under ss 42, 44, 58, 59, 60, 62(b) and 62A.
The Opponent carries the burden of establishing one or more of the grounds of opposition[8] on the balance of probabilities.[9] The rights of the parties are assessed as at the Relevant Date.[10]
[8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
[9] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Summary of EIS
The Applicant does not dispute that the Opponent has a reputation in the trade mark RAMS and trade marks including the word RAMS (together ‘RAMS Trade Marks’)[11] for home loans and mortgage services. Accordingly, I have briefly outlined the Opponent’s general activities and provided more information about the activities that the Opponent claims demonstrate a reputation in its RAMS Trade Marks for other types of financial services.
[11] Examples of these RAMS Trade Marks can be seen at Annexure A of this decision being details of some of the Opponent’s Australian registered trade marks.
Kean outlines the history of the Opponent’s financial and investment services business founded in 1991 under the name Registered Australian Mortgage Securities, which was abbreviated to RAMS (‘Word Mark’). Kean states that the Opponent has used the RAMS name in connection with financial and investment services, mortgage and loan services, insurance services, and related advisory and consultancy services and claims that the Opponent has grown over 30 years to have a national network of over 60 home loan centres with its net loan book value as at August 2022 exceeding $35 billion.
Kean claims that in 1995, the RAMS HOME LOANS brand was launched to the retail market and the RAMS name inspired the RAMS mascot, ‘Raymond A Ram’ (which is a ram namely a male sheep). Raymond A Ram continues until today to be the face of the Opponent’s RAMS brand.
Kean states that RAMS’ services have been offered under or by reference to the RAMS Trade Marks since the RAMS business was first established, the Opponent securing its first trade mark registration in 1995 for:

Kean claims that the Opponent’s home loan products have been available to customers via the Opponent’s website at (‘Opponent’s Website’), call centers since 1995 (of which the phone number 13 RAMS is commonly used in advertising as ‘Call 13 RAMS, that's 137267’), mobile home loan managers between 1995 and 2002, and home loan centres since 2002, which in 2003 were rolled out as a proprietary franchise network across Australia (‘Franchise’).
Kean claims that all the Opponent’s home loan centres have featured the RAMS name in prominent signage and provides the following photographic examples:
Kean states that the RAMS brand and distribution business was purchased by Westpac Banking Corporation (‘Westpac’) in January 2008 which led to an expansion of the Opponent’s product offering in 2011 to include two RAMS branded deposit products issued by Westpac:
·RAMS Action, a transaction account that also comes with a mortgage offset; and
·RAMS Saver Interest earning account.
and exhibits marketing collateral dated in 2009 and 2012 regarding these expanded offerings where I note use of the trade marks RAMS, and images of Raymond A Ram.
Kean claims that in or around 2016, the Opponent launched the RAMS ACCOUNT HUB available on the RAMS Mobile App (for iOS devices) allowing customers to manage their accounts online. Kean exhibits a printout from the Opponent’s Website referring to the RAMS ACCOUNT HUB dated 28 February 2017. I note use of the trade marks RAMS, MyRAMS, and images of Raymond A Ram.
Kean provides further information regarding the Franchise and the Opponent’s licensing of the use of the RAMS Trade Marks to its franchisees. Kean exhibits copies of franchisee disclosure documents from 2003, 2017 and 2018.
Kean exhibits a table of the number of franchised businesses in the network, as well as the number of the franchisee’s staff from 31 December 2008 to 31 December 2018. At the lowest in 2009 there were 47 franchised businesses and at the highest in 2016 there were 85. I note that generally there was steady growth of staff numbers over time.
Kean provides the following confidential figures and documents:
·total annual revenue from financial years 2008 to 2018 from the provision of services under the RAMS Trade Marks. I note that these figures increase greatly year on year and are nothing short of impressive.
·the total number of RAMS customers for each financial year from 2008 to 2018 broken down into
ototal customer count (cumulative total of all customers year-on-year)
oactive customers (active customers for that financial year)
oactive deposit customers (active customers of RAMS deposit products for that financial year)
oactive loan customers (active customers or RAMS home loan products for that financial year)
I note that all of these figures increase year on year showing substantial growth in all categories.
·annual advertising and marketing expenditure for the promotion of services under the RAMS Trade Marks by the Opponent from financial years 2011 to 2018 which includes spend for national media campaigns, local area campaigns by franchisees (to which franchisees also contribute), production or creation of marketing collateral, marketing to existing customers and public relations. These figures are claimed to cover a mix of media channels, including TV (Metro & Regional, free to air and subscription), paid searches, digital display, Facebook®, cinema, radio and partnerships. Again, the figures year on year are impressive.
·a document recording the Opponent’s brand awareness from 2017 to 2019, which averages at 60% awareness or 3 out of 5 people.
Kean provides details of advertising and promotion grouped into the categories traditional media such as newsletters, the Opponent’s Website, print media and television, industry awards including Best Non Bank Financial Institution in 2006, Best Savings Account Regular Deposits Bank and Best Online Saver Account both in 2013, Facebook® and YouTube®, marketing campaigns, the 13RAMS phone number, local area marketing via its franchisees direct to end consumers including radio and merchandise. Kean also exhibits dated examples where I note the consistent use of the trade marks RAMS and , and images of Raymond A Ram on almost all advertising and promotional materials.
Gorrie exhibits a selection of newspaper articles from the major Australian newspapers dating from 1994 to 2016 relating to the Opponent where I note reference to the purchase by Westpac and the Opponent’s offering of savings and transactions accounts since 2012.
Summary of EIA
Wehl provides a brief history of the Applicant which is a provider of asset and wealth management services to high net worth individuals and families,[12] specialising in real estate, credit and private equity markets. Wehl declares that in 2011 he founded a company specialising in real estate, credit and private equity in Hong Kong under the name CRCP Limited. The company was renamed on 30 January 2013 to Real Asset Management Limited. Wehl claims the business was expanded to Australia by incorporating the Applicant.
[12] Defined in Wehl [9] as ‘with more than $US1 million in liquid financial (or net investable) assets’.
Wehl states that the Applicant’s Services were initially provided under the trade mark (‘Chinese Logo’) but in July 2017 the Applicant developed the Trade Mark, which was to be used alongside the Chinese Logo. The letters RAM were an abbreviation of the name of the Applicant and the words ‘REAL ASSETS REAL RETURNS’ summarised the objectives of the Applicant and its approach to investing. Wehl claims that intention when the Applicant’s name was coined was to use and promote the business by reference to the acronym ‘RAM’, claiming it was common for other financial service businesses to use acronyms. Wehl provides some examples of major financial service businesses which have used acronyms before 2013.
Wehl claims awareness of the Opponent in 2013 as being a provider of home loan services targeted to a very different customer base to the Applicant but not awareness that the Opponent was a provider of asset management or investment services. On this basis, Wehl claims there was no realistic possibility of confusion amongst customers and potential customers of the Applicant, and that of the Opponent’s business. Wehl asserts there have been no instances of confusion between the Applicant’s Services offered under or by reference to the Trade Mark and the letters RAM and the Opponent’s services offered under any of its various RAMS and RAMS derivative marks.
Wehl states a number of propositions in the asset management and investment services industry including that it is common to shorten the words ‘asset management’ to the letters ‘AM’, the Australian Securities Exchange commonly uses acronyms or individual codes to identify each tradeable instrument listed on the Exchange and it is not uncommon for fund managers to use relatively close or identical acronyms and that consumers of their products are used to distinguishing between the two groups.
Wehl states that the Opponent’s business differs from the Applicant’s as the Opponent offers home loan services. Wehl annexes archived screenshots of the Opponent’s Website as at 18 August 2017 and 13 March 2018. I note that the Opponent’s Website states that the Opponent provides ‘home loan and deposit products, and can assist with home and contents insurance.’
Wehl states that wholesale clients or sophisticated/professional investors are understood to be more sophisticated with respect to investing generally.
Wehl refers to the different licenses held by the Applicant and the Opponent, the regulatory requirements governing these licenses, the parties’ statutory obligations and the way prospective clients deal with the Applicant. Wehl provides a table comparing how the Applicant’s Services and those of the Opponent are typically provided, subject to a regulatory regime/limitation and type of customer typically accessing those services.
Wehl concludes that the Applicant’s Services and those provided by the Opponent differ for the following reasons:
·the Applicant’s investment products are only for wholesale clients or sophisticated/professional investors and not retail clients.
·the Opponent provides residential home loan products. In contrast, the Applicant does not offer residential home loans, transaction accounts, or savings accounts.
·the Applicant and Opponent operate in completely different parts of the financial services industry.
·the financial and investment services industry is subject to strict regulatory requirements whereby consumers must be provided with a substantial level of detail/disclosure before a relevant service can be provided and as such would minimise the risk of confusion between providers in the industry.
·the Applicant offers investment products starting at a minimum investment amount of $500,000.00. In contrast, the Opponent’s savings accounts cap out at that amount.
·the Opponent’s evidence does not show that it offers any investment products.
Wehl states that if I determine that any ground of opposition is established in reference to specific services, the Applicant is prepared to narrow the Applicant’s specific service by adding a limitation that the specific service is for wholesale investors as defined in the Corporations Act 2001 (Cth) or alternatively, if necessary, to delete that specific service entirely.
Discussion and Reasons
Section 60
Section 60 provides:
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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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: For priority date see section 12
To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP provides that the Opponent, or its predecessors, has used the RAMS trade mark, and a family of marks containing the RAMS mark, in respect of financial and investment services since at least 1995. As a result of this use, the Opponent has acquired a reputation in the word RAMS in respect of financial and investment services. Because of the Opponent's reputation in the RAMS trade mark in Australia for financial and investment services at the Priority Date, use of the Trade Mark is likely to deceive or cause confusion.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’)[13] as referring to ‘the recognition of the [trade mark] by the public generally’.
[13] [2000] FCA 1335, [81] (‘McCormick’).
Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[14]
[14] Ibid [86].
The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[15] Here the nature of the parties’ services can be characterized as financial services. Therefore, the relevant market is likely to include many if not all Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[16]
[15] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart J).
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[17]
[17] [2019] FCA 923, [83] (O’Bryan J) (‘Rodney Jane’).
The Opponent submits that the Opponent’s reputation in the RAMS Trade Marks is significant and longstanding in respect of financial services in particular lending and banking, and home loan products.
While the Opponent bases the s 60 ground on the RAMS Trade Marks, notably, each is considered a separate trade mark for the purposes of s 60.[18]
[18] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas Airways’); Rodney Jane (n 17), [89].
I am satisfied that the Opponent’s evidence shows significant use of at least the Word Mark, and (‘RAMS Marks’), and I am satisfied that these RAMS Marks had acquired a reputation in Australia amongst a significant number of consumers in respect of more than just home loan and mortgage services but for other financial services at the Relevant Dates. The Opponent has not only shown quantitative dimensions such as quantum of sales, advertising and promotion of financial services to which the marks are applied but also qualitative dimensions. The fact that the Opponent has won industry awards for its home loan, mortgage and banking services and the awareness of the Opponent’s brand from 2017 to 2019 has averaged at 60% shows the esteem in which the RAMS Marks are held by the public.
Therefore, pursuant to s 60(b), consideration must now be given to whether, because of this reputation in the RAMS Marks, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[19]
[19] [1979] RPC 410, 423 (citation omitted).
The likelihood of deception or confusion must be real and tangible.[20] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Services appearing in relation to the Trade Mark were being provided by the same person as the owner of the RAMS Marks.[21] To this end, it has been observed that ‘the threshold for confusion is not high’[22] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[23]
[20] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
[21] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
[22] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[23] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark. The relevant comparison is between the reputation of the prior mark derived from actual use of that mark, and a notional normal and fair use of the mark sought to be registered in respect of each of the goods or services covered by the specification. As stated by Stewart J in Monster Energy Company v Mixi Inc:
The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark. The relevant comparison is between the reputation of the prior mark derived from actual use of that mark, (2020) 156 IPR 378 at 384 and a notional normal and fair use of the mark sought to be registered in respect of each of the goods or services covered by the specification. See Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661; 99 IPR 1; [2012] FCAFC 159 at [113]–[114] per Nicholas J, Dowsett J agreeing.
The use to which the opposed mark has actually been put is of limited relevance. That is because it is the notional normal and fair use of that mark in respect of each of the goods or services covered by the specification that is relevant, and the mark, as in this case, might only have been used in relation to a very limited number of those goods or services. However, evidence as to the way in which the mark has actually been used may be regarded, in the absence of any reason to suppose otherwise, as illustrative of what would be normal and fair: Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) at [21].[24]
[24] [2020] FCA 1398, [118- - [119].

There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[25]
[25] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways (n 18), [142].
In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the RAMS Marks, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the services of the parties. Each of these is a variable.
The Opponent submits that:
·     in circumstances where the Opponent has used the Word Mark in combination with other elements to create a family of RAMS Trade Marks, there is a real likelihood that the Trade Mark will be perceived as a sub brand, brand extension, or part of the family of RAMS Trade Marks.
·     the Trade Mark is at least deceptively similar to one or more of the RAMS Trade Marks, leading to a heightened likelihood of deception or confusion.
·     the Opponent and the Applicant operate within the same financial services industry and provide a range of the same services to customers in Australia. The Applicant itself describes the industry as the ‘financial services market’[26] and its asset management and investment services as a subset of the catch all phrase ‘financial services’.[27]
·     although the scope of the 766 Mark excludes services that are ‘for the provision of home loans’, the Opponent’s services and reputation are not limited to the provision of home loans. Even if the reputation is so limited, that does not mean that confusion will not arise, given the potential for brand extension.
·     the Registrar must consider the risk of confusion arising from the notional use of the Trade Mark in respect of all the applied for services so the nature of the Applicant's business activities, the regulatory regimes applicable to those activities, and the specific types of customers to whom the Applicant provides those services are all irrelevant. The reputation in the Word Mark in particular is not tied to any get up, colour scheme or visual appearance.
·     the Applicant’s reliance on the alleged absence of confusion to date proves nothing.
[26] Wehl [15] and [21].
[27] Ibid [23] and [34] Table 1 and Table 2.
The Applicant submits that:
·     the development of the Opponent’s reputation has been by reference to the Opponent’s stylised marks, its get up including a particular colour scheme and its Raymond the Ram mascot.
·     the overall promotion of the RAMS brand reinforces the conceptual and visual differences between the Opponent’s brand and the Trade Mark, including as to colour scheme and styling.
·     aurally consumers would view the RAM element of the Trade Mark as an acronym of the Applicant.
·     there are significant differences in the nature of the services that each party provides.
·     a higher level of attention would be expected from consumers of financial services.
·     there has been more than 10 years of co-existence in the marketplace, including with the Chinese Logo and there is no evidence of confusion.
In my opinion, the RAMS Marks are inherently distinctive and their reputation is strong in respect of financial services. With respect to the services to which the Trade Mark will be used, the Applicant’s Services are financial services, placing them squarely in the market in which the RAMS Marks have a reputation. Excluding services for the valuation of real estate from the 766 Mark and provision of home loans from the 920 Mark does not make the 766 and 920 Services any less financial. Each of these factors tend toward a finding that deception, or at least confusion, is likely. What is left to consider is the degree of similarity between the trade marks and whether in these contexts it is likely to result in deception or confusion.
It is convenient to confine the following discussion to the degree of similarity between the Word Mark and the Trade Mark as the Word Mark is most similar to the Trade Mark. In my opinion, a likelihood of deception or confusion from the use of the Trade Mark by reason of the similarity with the Word Mark arises for the following reasons:
·the marks share a very similar prominent and distinctive feature namely RAMS or RAM. RAM of course is the singular of RAMS. Aurally and visually the words RAM and RAMS are virtually identical. Therefore, there is aural and visual similarity and a commonality of idea.
·RAMS is a distinctive word in respect of services in Class 36.
·the word RAM appears in the Trade Mark in large script in comparison to the other words and the device elements of the Trade Mark, thereby visually enhancing the presence of the word RAM as a significant and essential feature of the Trade Mark.
·the other textual element of the Trade Mark are the words REAL ASSETS REAL RESULTS which appear in diminutive lettering and have a descriptive element meaning they are less likely to be recalled.
I am not persuaded by any of the Applicant’s submissions other than that a higher level of attention would be expected from consumers of financial services. Financial services are engaged with a relatively high degree of care and attention. This view is supported by the Court in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited.[28] This does not mean that when marks are visually, aurally and conceptually similar, that these consumers who may pay care and attention will not be confused.
[28] [2019] FCA 1553.
I agree with the Opponent that the reputation in the Word Mark is not tied to any get up, colour scheme or visual appearance. The comparison is between the reputation of the Word Mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of each of the services covered by the Trade Mark.
I also agree with the Opponent that the Applicant’s reliance on the alleged absence of confusion to date proves nothing. The fact is that evidence of actual confusion is not required[29] as the question is whether use is likely to confuse.
[29] Berlei Hestia Industries Ltd v Bali Co Inc [1973] 129 CLR 353, 355 per Barwick CJ.
I disagree with the Applicant that aurally consumers would view the RAM element of the Trade Mark as an acronym of the Applicant. Firstly, there is no cogent evidence from the Applicant to support this view and secondly, where an English word is ordinary, has a well known meaning and can be spoken, it will naturally be spoken. I am satisfied that there will be no ambiguity in consumers’ minds as to how the word RAM in the Trade Mark will be perceived and pronounced. I am therefore satisfied that the Trade Mark as a whole will convey a very similar impression to the Word Mark.
I also disagree with the Applicant that there are significant differences in the nature of the services that each party provides. There are not. The nature of the services as claimed by the Applicant in the Applications are types of financial services. Even if they are not the same, they are similar. Further, the 766 and 920 Services are not limited to any particular type of customer, for example, high net worth individuals and families.
I am satisfied that there is a high level of similarity between the Trade Mark and the Word Mark and as such, I believe there is a real and tangible risk of consumers of the 766 and 920 Services, knowing of the Word Mark, being induced, left in doubt or caused to wonder whether the services offered under the Trade Mark have the same origin or are connected in some way to the Opponent or will be perceived as a sub brand, brand extension, or part of the family of RAMS Trade Marks. This is especially so as the Opponent has already expanded its services offerings from home loan and mortgage services to other financial services such as banking services. In reaching this conclusion I have taken into account the nature of the services.
In conclusion, I am satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers and therefore the s 60 ground of opposition has been established.
Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds be considered.
Decision
Section 55 relevantly provides:
Decision
(1)Unless subsection (3) applies to the proceedings, 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 have found the Opponent has established the ground of opposition it raised pursuant to s 60. I accordingly refuse to register trade mark numbers 2062766 and 2178920.
If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.
Costs
Both parties have sought an award of costs. Costs usually follow the event. Accordingly, with respect to the opposition to trade mark 2062766, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2178920, I award reduced costs against the Applicant under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[30]
[30] [2001] ATMO 78 (Hearing Officer Williams).
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
19 June 2024
Annexure A

Number

Mark

Filing Date

1044275

RAMS FAST TRACK

2 March 2005

1140193

RAMS

10 October 2006

1212743

RAMS HOME LINES

29 November 2007

1214757

RAMS FINANCIAL GROUP

12 December 2007

1297035

RAMS HOME HUNTER KIT

1 May 2009

1301243

RAMS DEPOSIT PROTECT BOND

27 May 2009

1408739

myRAMS

14 February 2011

1456043

26 October 2011

1456045

26 October 2011

1456230

RAMS ACTION

27 October 2011

1562821

RAMS TALK

14 June 2013

1562877

RAMSTALK

14 June 2013

1648812

RAMS COST SAVER

24 September 2014

1735164

RAMS HOME HUNTER SERIES

17 November 2015

1756753

RAMS ACCOUNT HUB

4 March 2016

1779656

28 June 2016

1843009

8 May 2017

1959990

WALK LIKE A RAM

4 October 2018

Number	Mark	Filing Date
1044275	RAMS FAST TRACK	2 March 2005
1140193	RAMS	10 October 2006
1212743	RAMS HOME LINES	29 November 2007
1214757	RAMS FINANCIAL GROUP	12 December 2007
1297035	RAMS HOME HUNTER KIT	1 May 2009
1301243	RAMS DEPOSIT PROTECT BOND	27 May 2009
1408739	myRAMS	14 February 2011
1456043	26 October 2011
1456045	26 October 2011
1456230	RAMS ACTION	27 October 2011
1562821	RAMS TALK	14 June 2013
1562877	RAMSTALK	14 June 2013
1648812	RAMS COST SAVER	24 September 2014
1735164	RAMS HOME HUNTER SERIES	17 November 2015
1756753	RAMS ACCOUNT HUB	4 March 2016
1779656	28 June 2016
1843009	8 May 2017
1959990	WALK LIKE A RAM	4 October 2018

[2024] ATMO 110

19 June 2024