Raymond Hoser v Stewart Gatt
[2019] ATMO 119
•2 August 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Raymond Hoser to registration of trade mark application number 1897631 (classes 41, 44) - STEWY THE SNAKE CATCHER with cartoon snake device - in the name of Stewart Gatt.
Delegate: | Nicholas Barbey |
Representation: | Opponent: Self-represented Applicant: Written submissions prepared by Andrew Petale of Y Intellectual Property |
Decision: | 2019 ATMO 119 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42(b), 44, 58A, 60 and 62A considered – none established – trade mark may proceed to registration. |
Background
This matter concerns an opposition brought by Raymond Hoser (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Stewart Gatt (‘the Applicant’):
Trade Mark:
(‘the Trade Mark’)
Application Number: 1897631
Filing Date: 28 December 2017
Services:Class 41: snake education; education services being in relation to snake awareness
Class 44: snake catcher services; reptile removal
(‘the Applicant’s Services’).
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 17 May 2018.
The Opponent filed a Notice of Intention to Oppose registration and a Statement of Grounds and Particulars on 17 May 2018.
On 22 May 2018, the Opponent was provided with written notice that its Statement of Grounds and Particulars was inadequate. The notice stated the ss 42 and 43 grounds were inadequately particularised and would be deleted if the Opponent did not amend or provide further information regarding same.
On 24 May 2018, the Opponent provided additional information to adequately particularise the s 42 ground and elected to delete s 43 as a ground of opposition. Accordingly, the rectified Statement of Grounds and Particulars (‘rectified SGP’) nominated grounds of opposition under ss 41, 42(b), 44, 58A, 60 and 62A.
The Applicant filed its Notice of Intention to Defend the Trade Mark on 6 July 2018.
The Opponent filed Evidence in Support (‘EIS’) and this was followed by the Applicant filing Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’).
In due course both parties were advised of their right to request a hearing or to make written submissions. The Opponent requested an oral hearing and filed written submissions in two parts (collectively ‘the Opponent’s Submissions’). The Applicant chose to file written submissions (‘the Applicant’s Submissions’) prepared by Andrew Petale of Y Intellectual Property.
As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 28 May 2019. The Opponent attended the hearing by telephone. The Applicant was not represented at the hearing and relied on its written submissions.
Grounds of opposition, onus and standard of proof
The rectified SGP nominated grounds of opposition under ss 41, 42(b), 44, 58A, 60 and 62A of the Act. The Opponent needs to establish at least one of these grounds to be successful in this opposition.
The Opponent bears the onus of establishing the ground of opposition.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 28 December 2017, being the filing date of the application[3] which here is the same as the ‘priority date’ stipulated in ss 44 and 60.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4].
Evidence
The parties filed the following declarations as evidence in this matter:
| EIS |
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| EIA |
|
| EIR |
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Preliminary matters
The evidence filed indicates the parties share an acrimonious history. This is reflected in the declarations which contain numerous aspersions, unsubstantiated claims and references to extraneous material. Having reviewed all the evidence filed, I attribute material of the aforesaid nature little to no weight unless it is relevant to the grounds of opposition and appropriately substantiated. To this end, the evidence summarised below is undertaken with a focus on the material relevant to determining the grounds of opposition nominated in the rectified SGP.
Additionally, the Applicant’s Submissions raised objections to the Opponent’s Submissions and EIR. It was contended that parts of the Opponent’s Submissions amount to an introduction of further evidence. Meanwhile, the Applicant believed specific parts of the EIR filed cannot be properly construed as such given they do not reply to issues raised in the EIA. Accordingly, the Applicant asserted the identified parts should be disregarded.
While the Applicant’s objections may have some merit, ultimately the parts in the Opponent’s Submissions and EIR which have been specifically objected to do not assist the Opponent’s case nor do they have any determinative bearing on the outcome of this matter. It follows that a dissection of same to determine admissibility is not necessary in the circumstances given my decision does not rely on any of the identified parts.
The Opponent’s evidence
Hoser 1 describes the Opponent as an Australian wildlife controller, scientist and educator. It states that the Opponent is a wildlife controller by profession and author of several publications regarding snakes and other reptiles.
The Opponent has been operating a registered business in the wildlife space since the early 1980s and they are also the owner of the following Australian trade mark registration (‘Hoser Registration’):
Trade Mark:
Owner: Raymond Hoser
Registration Number: 1436529
Priority Date: 13 July 2011
Services:Class 41: education, training, courses, entertainment, involving, but not limited to, animals of all kinds including metazoan; the foregoing including all forms of entertainment, sporting and cultural activities including using relevant and available technologies and media, such as, but not limited to, online or part-page; educational and entertainment activities in relation to wildlife, controller, catcher, demonstrator, displayers, zoos, and education type permits; parties, events, displays, shows, incursion and mall shows; providing entertainment and educational information; teaching including hands on, verbal and including the provision of educational information
Class 44: pest control; pest control consulting; removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entities in accordance with state and federal wildlife laws, as well as provision of information on such reptile related matters, including general zoological and reptile-related consultancy work
Hoser 1 canvasses the Opponent’s use of the term ‘snake catcher’ and describes the Opponent as the ‘go to’ person for snake catcher related news. Hoser 1 also speculates on the history of prior use of the Trade Mark under s 44(4) of the Act as the Opponent erroneously believes the Trade Mark was accepted under this provision.
Hoser 2 replies to various claims made in the Gatt Declaration, many of which are immaterial to the present matter. It provides further evidence regarding the Opponent’s reputation in various monikers incorporating the word ‘snake’ including ‘snakeman’, ‘snakebusters’ and ‘snake catcher’.
Hoser 3 discusses a pending Federal Circuit Court proceeding instituted by the Opponent against a third party together with a settlement deed executed between the Opponent and that third party. Further discussion of this material is not required. The Applicant is not a party to either matter and the information before me in relation to those matters is not relevant to my decision. Similar considerations are applicable to the content of Hoser 5 which concerns a legal dispute between the Opponent and another third party.
Hoser 4 contains instances of alleged consumer confusion between the Opponent and the Applicant. Four telephone recordings were exhibited – three between the Opponent and unidentified third parties. The remainder being a conversation between the Applicant and an unidentified third party. The recordings do not provide significant insight to the present matter as three of the recordings do not make any reference to the term ‘snake catcher’. The final recording, which does reference the term ‘snake catcher’, is insufficiently particularised[4] to carry any significant probative value.
[4] See discussion at [62] of this decision.
The Applicant’s evidence
According to the Gatt Declaration, the Applicant has been operating a snake catching business since 2009 and provides snake catching services in and around Melbourne. The Applicant commenced using the Trade Mark in 2016 and the Applicant’s Services are mainly promoted via social media platforms.
The Gatt Declaration disputes numerous claims made within Hoser 1. The majority of claims disputed by the Applicant do not have any direct relevance to the issues at hand. For present purposes, it is sufficient to state that the parties are in strong disagreement over a range of issues and are mutually critical of each other. Annexures SG-9 and SG-10 of the Gatt Declaration contain the results of a Google search for the term ‘snake catcher’ as well as screenshots from websites showing third parties using the term in a descriptive manner and as part of trade marks for snake catcher related services.
Discussion
Section 44
The rectified SGP nominated s 44 as the Opponent’s ‘main ground of opposition’. At the hearing, the Opponent clarified that their submissions would be mainly in relation to the s 44 ground of opposition. As such, I will consider this ground first.
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with or deceptively similar to the Trade Mark; and
it is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services.
The rectified SGP identified the Hoser Registration as supporting this ground of opposition.
The Hoser Registration has a priority date of 13 July 2011 which is earlier than the Trade Mark’s priority date of 28 December 2017. The Hoser Registration contains claims in classes 41 and 44 for services similar to the Applicant’s Services. For example, the Hoser Registration contains a broad class 41 claim for ‘education, training, courses, entertainment, involving, but not limited to, animals of all kinds…’ which would include the Applicant’s class 41 services such as ‘snake education’. Likewise, the Hoser Registration’s broad class 44 claim for ‘removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entities in accordance with state and federal wildlife laws …’ would be similar to the Applicant’s claim in class 44 for ‘reptile removal’. It follows that requirements (i) and (iii) have been satisfied.
Accordingly, this ground of opposition turns on whether the Trade Mark is substantially identical with, or deceptively similar to, the Hoser Registration. The test for ‘substantial identity’ was set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[5]
[5] [1963] HCA 66, [12] (‘Shell’).
For convenience, the Trade Mark and Hoser Registration are set out below:
| Trade Mark | Hoser Registration |
A side-by-side comparison reveals significant differences between the trade marks. These differences include the presence of the elements ‘STEWY’ and a solitary fanciful snake cartoon in the Trade Mark. Conversely, the Hoser Registration contains a photograph of an adult male clutching multiple snakes. These differences are sufficient for me to conclude the trade marks are not substantially identical.
I must now consider whether the respective trade marks are deceptively similar. The term ‘deceptively similar’ is defined in s 10 of the Act:
Definition of deceptively similar
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.
The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
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 [mark].[6]
[6] Ibid [13].
The Opponent contends that the term ‘SNAKE CATCHER’ forms the main element of the respective trade marks. They submitted that the additional ‘snake material’ present in each trade mark is ‘superfluous’ and consumers would naturally expect such material alongside the term ‘SNAKE CATCHER’. As such, the Opponent states the trade marks in question should be treated as ‘word marks only’.
To support this general contention that composite trade marks should be treated as word marks only, reliance was placed on the Federal Court decision of Organic Marketing Australia Pty Limited v Woolworths Limited (‘Organic Marketing’)[7] and the Full Federal Court decision of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd (‘Lift Shop’).[8] For the reasons that follow, I am not convinced either of these decisions constitute authority which supports the Opponent’s argument.
[7] [2011] FCA 279 (‘Organic Marketing’).
[8] [2014] FCAFC 75 (‘Lift Shop’).
Organic Marketing considered whether an application for interlocutory relief should be granted in respect of an alleged trade mark infringement. The trade mark registration in question was Australian trade mark number 956076.[9] In determining that there was a serious question to be tried, Katzmann J acknowledged there was merit in the applicant’s argument that the words ‘honest to goodness’ are an essential feature of the registered trade mark.[10] However, this decision did not conclusively determine the issue of deceptive similarity given it was provisional in nature[11] and its focus was on whether injunctive relief should be granted.
[9] See Annexure 1.
[10] Organic Marketing (n 7), [52] – however, the application for interlocutory relief was ultimately refused as the balance of convenience did not favour the granting of an injunction.
[11] Ibid [35].
Meanwhile, Lift Shop concerned a trade mark infringement action wherein the Full Court determined that the words ‘Lift Shop’ were not used as a trade mark[12] and therefore did not infringe a composite trade mark containing those words.[13] While the Full Court declined to interfere with the primary judge’s observations on deceptive similarity,[14] I note the primary judge’s comments on this issue were obiter dicta.[15] It follows that neither decision cited constitutes persuasive authority for what the Opponent purports – namely, composite trade marks should be treated as ‘word marks only’.
[12] Lift Shop (n 8), [45] – [46].
[13] See Australian trade mark registration number 1198409 reproduced in Annexure 2.
[14] Lift Shop (n 8), [64].
[15] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2013] FCA 900, [46].
Contrary to the Opponent’s Submissions, I consider the term ‘SNAKE CATCHER’ is descriptive in the context of the services claimed by each of the trade marks. The term ‘SNAKE CATCHER’ is readily understood as referring to a person who catches snakes and this is reflected in the evidence contained in Annexure SG-10 of the Gatt Declaration. It follows that the term ‘SNAKE CATCHER’ is descriptive of the reptile removal services claimed in class 44. At the hearing, the Opponent conceded as much in relation to the class 44 services. However, the Opponent asserted that the term was distinctive in relation to the class 41 services because these services do not involve snake catching. I am not persuaded by this reasoning. The ordinary signification of the term indicates that the educational services are provided by a snake catcher or a snake catcher is the subject matter of those educational services. As such, the term retains a descriptive meaning in the context of the Class 41 services.
Bearing in mind the descriptiveness of the term ‘SNAKE CATCHER’, this common term should be attributed less weight when considering whether the respective trade marks are deceptively similar.[16] This is not to suggest that ‘SNAKE CATCHER’ should be completely discounted. The comparison undertaken for the purpose of determining deceptive similarity remains between the general effect of the trade marks as wholes.[17]
[16] Cooper Engineering Pty Limited v Sigmund Pumps Limited [1952] HCA 15.
[17] Clark v Sharp (1898) 15 RPC 141, 146.
In the present comparison, when the Trade Mark is considered against the Hoser Registration, an overall impression of dissimilarity emerges. The word ‘STEWY’ is an integral part of the Trade Mark particularly given its positioning at the beginning of the mark. The placement of ‘THE SNAKE CATCHER’ as a trailing element reinforces its descriptive significance – it conveys to a consumer that the snake catcher services are provided by an individual named ‘STEWY’.
The Trade Mark and the Hoser Registration both contain device elements. The Trade Mark contains a fanciful cartoon depiction of a solitary snake which, by virtue of its relatively large size and central placement, forms an essential element of the Trade Mark. In contrast, the Hoser Registration contains a photograph of an adult male clutching multiple snakes. This is a vivid and somewhat confronting image given the sheer number of snakes grasped by the individual. This photograph undeniably forms a significant element of the Hoser Registration given its prominent size and orientation within the mark as a whole. As such, the distinctive device elements represent a memorable feature of each trade mark and cannot simply be ignored. To this end, the comments of the Full Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited[18] are apt:
[A]lthough everything depends on the particular circumstances, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[19]
[18] [2004] FCAFC 196.
[19] Ibid [100].
In my view, ordinary consumers with an imperfect recollection of the Trade Mark are likely to take away the impression of ‘STEWY’ with a cartoon snake device. When confronted with the Hoser Registration, it is unlikely they would be caused to wonder based on the commonality of the descriptive term of ‘SNAKE CATCHER’. Consumers are likely to differentiate the trade marks based on the additional material present within each mark. In this regard, the observations of Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd,[20] albeit in relation to trade practices, are pertinent:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
[20] [1978] HCA 11, [22].
In light of the above, I am satisfied that there is no real and tangible danger of confusion occurring between the respective trade marks. The descriptive term ‘SNAKE CATCHER’ forms a common element of each trade mark, however, this is where the commonality ends. The trade marks convey significantly different overall impressions when considered in their entirety for the services claimed. Any potential risk of confusion, which in my view would be remote, is an inherent risk for traders utilising descriptive terms within trade marks. This is because any such confusion is only likely to ensue based on the presence of the common descriptive term – a term which neither party is entitled to monopolise given the respective trade marks under consideration.
Accordingly, the s 44 ground of opposition has not been established.
Section 58A
Section 58A of the Act relevantly provides:
Opponent's earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
The application for the Trade Mark was not accepted on the basis of s 44(4) of the Act or a similar provision of the regulations made for the purposes of Part 17A of the Act. As such, s 58A of the Act is not enlivened in the present circumstances.
Consequently, the s 58A ground of opposition has not been established.
Section 60
This ground of opposition was particularised in the rectified SGP as follows:
Registered TM Number: 1436529, Snake Catcher, is for material including the same goods and services. And the common law trademarks for the same that predate both and run continuously as far back as 2005 (in exact form) and prior, predating this application. The recognition of these registered and common-law trademarks and their reputation is Australia-wide and complete within the relevant industry. All relevant trademarks and application are for education/ entertainment with wildlife type things. The applicant has only called himself "the snake catcher" (unlawfully) as a trademark continuously for less than 2 yrs.
Section 60 of the Act relevantly 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.
To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 28 December 2017. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[21] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... [22]
[21] [2000] FCA 1335, [81].
[22] [1992] FCA 159, [118] (‘ConAgra’).
The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[23] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[24]
[23] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 22).
[24] ConAgra (n 22) [77].
The totality of the Opponent’s evidence does not, as a matter of fact, establish the degree of reputation that may be reasonably attributed to the Hoser Registration in Australia prior to 28 December 2017. Hoser 1 states the term ‘SNAKE CATCHER’ has been used as a trade mark since the late 1960s and the Hoser Registration has been used throughout Australia ‘in its exact form since 2005’. As such, the Opponent proclaims they are known as the ‘snake catcher’ on a national basis. However, this is a bare and unsupported statement. Cogent evidence to substantiate the alleged nature and extent of use of the Hoser Registration or any common law trade mark has not been provided.
The Opponent’s evidence reveals intermittent use of the Hoser Registration as well as the term ‘SNAKE CATCHER’ by itself. The latter generally appears in a descriptive manner. The majority of evidence attesting to reputation either refers to the Opponent as the ‘snakeman’ or in his personal capacity as a reptile expert. Similarly, details pertaining to the Opponent’s advertising activities, promotional expenditure and annual revenue derived from use of the Hoser Registration in Australia, or any other common law trade mark, have not been disclosed. It is therefore difficult to assess what degree of recognition, if any, the Hoser Registration or any other common law trade mark, had amongst Australian consumers as at 28 December 2017.
Bearing the above in mind, the evidence does not satisfy me that the Hoser Registration, or any other common law trade mark, had acquired a reputation in Australia as at 28 December 2017 amongst a significant or substantial number of Australian consumers pursuant to s 60. As the first limb of s 60 has not been satisfied, consideration of the second limb is not required.
Accordingly, the s 60 ground of opposition has not been established.
Section 42
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[25] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 28 December 2017. However, ‘prospective conduct after registration’ may be considered.[26]
[25] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[26] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
This ground of opposition was particularised in the rectified SGP as follows:
The use of the trademark as applied for would be misleading and deceptive conduct under s18 of the Australian Consumer Law (“ACL”) and liable for claim under the tort of passing off and in breach of 42(b) of the Trademarks Act. Registered TM Number: 1436529, Snake Catcher is for material including the same goods and services. And the common law trademarks for the same that predate both and run continuously as far back as 2005 in exact form and prior. The recognition of these registered and common-law trademarks and their reputation is Australia-wide. The applicant assets making a Federal Court action remedy unviable for me.
Accordingly, the rectified SGP identifies s 18 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 and the tort of passing off as underpinning this opposition ground.
Schedule 2 of the ACL relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
It has been established that conduct will be characterised as misleading or deceptive, or likely to mislead or deceive, if it has the tendency to lead into error.[27] The evidence in Exhibit RH3 of Hoser 4 allegedly demonstrates an instance of actual confusion between the respective trade marks. It is declared that this recording shows misleading and deceptive conduct by the Applicant. Exhibit RH3 contains a covert recording of a conversation between the Opponent and a caller from a local council. Hoser 4 states ‘it is legal to tape record phone calls in Victoria under the listening devices act if a person is a party to the call and it is to protect their lawful interests’.[28] The Opponent’s statement appears to be based on its interpretation of ss 6 and 11 of the Surveillance Devices Act 1999 (Vic). I do not intend to assess the underlying merits of the Opponent’s statement. Relevantly, for present purposes this evidence has limited probative value. This is because: 1) the date of recording is unknown, 2) the caller’s identity is unknown, 3) the caller is not seeking services relevant to the trade marks in question and 4) the Opponent monopolises the conversation to such an extent that the actual nature of any confusion is not readily apparent.
[27] Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54, [39] (French CJ, Crennan, Bell and Keane JJ).
[28] Hoser 4, [19].
In any event, one instance of alleged confusion is by no means conclusive[29] and whether conduct is misleading or deceptive is ultimately an objective test.[30] Objectively, the Opponent’s evidence fails to establish that the Hoser Registration, or any common law trade mark, possessed a requisite reputation to satisfy the s 60 ground of opposition. It can be deduced from this that, despite the single instance of alleged confusion, use of the Trade Mark is unlikely to mislead or deceive consumers and run afoul of s 18 of the ACL. It follows that I am not satisfied that use of the Trade Mark would contravene s 18 of the ACL.
[29] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 199 (Gibbs CJ).
[30] Ibid.
The common law tort of passing off is also particularised as supporting the s 42(b) ground of opposition. To establish a cause of action in passing off, the Opponent is first required to demonstrate the existence of a reputation in the relevant mark.[31] For the reasons already canvassed in relation to s 60, I am not satisfied that the Hoser Registration, or any common law trade mark, possessed such a reputation as at 28 December 2017.
[31] Reckitt and Colman Products Ltd v Borden Inc. [1990] UKHL 12; (1990) RPC 341 at 406 (Lord Oliver) cited with approval in ConAgra (n 22), [12] (Gummow J).
Moreover, given my finding in relation to s 18 of the ACL, the observations of Hill J addressing the relationship between s 52 of the repealed Trade Practices Act 1974 (Cth)[32] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[33]
[32] Section 52 of the repealed Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[33] [1989] FCA 506, [40].
Therefore, I am not satisfied that use of the Trade Mark would amount to passing off at common law.
In light of the above, I am not satisfied that use of the Trade Mark would be contrary to law and therefore the s 42(b) ground of opposition has not been established.
Section 62A
Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
To establish this ground of opposition, the Opponent must demonstrate that the act of making the application was in bad faith. The concept of bad faith was considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) and Dodds-Streeton J provided the following insight:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards …[34]
[34] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] – [167].
The SGP alleges that the application has been filed in bad faith because:
The applicant knew at all materially relevant times that they were trying to steal and dilute the registered trademark already owned and used by the opponent already operating in their business space. He had been told in writing not to and then improperly filed this pending trademark application. Correctly IP Australia had refused to register the trademark and it was later in error that the examiner let the application proceed (refer to the "Lift Shop" case and other relevant case law on logo trademarks as words). The application and statements by him have been dishonest, mischievous and an abuse of process and must be stopped.
The Opponent’s evidence is devoid of any material to corroborate its assertion that the Applicant was attempting to ‘steal and dilute’ the Hoser Registration by applying to register the Trade Mark.
Exhibit RH56 to Hoser 2 contains a cease and desist letter sent by the Opponent to the Applicant on 1 November 2016. The content of this correspondence revolves around the use of ‘stewy snakeman’ and not the Trade Mark. As such, the existence of this letter does not lend credence to the notion that the application was made in bad faith. Rather, it suggests that the inverse may be true. That is, the correspondence demonstrates the Trade Mark was seemingly modified before the present application was made in order to avoid potentially infringing the Opponent’s ‘snakeman’ trade mark.[35]
[35] See Australian trade mark registration number 1175589.
Given the apparent history between the parties, I accept the Opponent’s submission that the Applicant would have been aware of the Hoser Registration as at 28 December 2017. However, as observed by Dodds-Streeton J in the abovementioned case, equating mere awareness of the Hoser Registration to bad faith is unduly absolute. It follows that the Applicant’s mere knowledge of the Hoser Registration does not provide a sufficient basis to conclude that the application was made in bad faith. This is particularly so given the only point of contention relates to a descriptive term and the alleged similarity between the Trade Mark and Hoser Registration is tenuous at best.
Accordingly, the ground of opposition under s 62A has not been established.
Section 41
This ground of opposition was relevantly particularised in the rectified SGP as follows:
In the event that all the grounds below fail, this ground is then relied upon to dismiss the pending trademark application. Evidence in support of this will come from material tendered as and if needed. The dominant and all important words in the trademark application are "the snake catcher" and this is in effect what the trademark is for and to be used as. The rest of the "logo" is in effect irrelevant. It merely reinforces the critically important words "snake catcher".
Section 41 of the Act relevantly provides:
Trade mark not distinguishing applicant's goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Section 41 of the Act contemplates a trade mark’s capacity to distinguish the applicant’s goods and/or services from those of other traders. The inherent adaptation of a trade mark is to be assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[36]
[36] Clark Equipment Co. v Registrar of Trade Marks [1964] HCA 55, [5].
In determining a trade mark’s inherent capacity to distinguish the claimed goods and/or services, the trade mark should not be dissected into its constituent parts.[37] Rather the trade mark must be considered in its entirety and it does not matter whether each element is separately registrable.[38] Therefore, even a trade mark comprised of multiple descriptive elements potentially has the capacity to distinguish.
[37] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61].
[38] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380.
The Opponent’s contention is that the term ‘SNAKE CATCHER’ is the dominant element of the Trade Mark and descriptive of the Applicant’s Services. The consequence of this, so the argument goes, is that the Trade Mark lacks any inherent adaptation to distinguish the Applicant’s Services because the additional elements are inconsequential. I am not convinced by this submission.
Whilst the term ‘SNAKE CATCHER’, in isolation, would not be prima facie capable of distinguishing the Applicant’s Services - it is obvious that the Trade Mark is comprised of additional word and image elements. The mere presence of a descriptive term within the Trade Mark is by no means fatal to its overall capacity to distinguish the Applicant’s Services. This is because the Trade Mark must be considered as a whole.
The Trade Mark is a composite mark containing multiple word and image elements. Evidence tendered by the Opponent does not demonstrate, nor has any explanation been proffered, as to why other traders would honestly need to use the specific combination of the words ‘STEWY THE SNAKE CATCHER’ with a fanciful cartoon snake device. In my view, it is highly unlikely that other traders would legitimately desire to use this specific combination, or some mark nearly resembling it, in connection with similar services.
Accordingly, I am satisfied that the Trade Mark is inherently capable of distinguishing the Applicant’s Services from the services or goods of other traders. As such, the s 41 ground of opposition has not been established.
Decision
Section 55 of the Act 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.
The Opponent has not established a ground of opposition. It follows that trade mark application number 1897631 may proceed to registration one month from the date of this decision.
If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 August 2019
Annexure 1
Annexure 2
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