Re: Opposition by ABCDEX Pty Ltd and Burkhard Geiger to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1817324 (International Registration number 1324805)

[2020] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by ABCDEX Pty Ltd and Burkhard Geiger to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1817324 (International Registration number 1324805) - LOV - (classes 5, 41 and 43) in the name of Reinhart Lange.

Hearings Officer:	Louise Tuohy
Representation:	Opponent: Burkhard Geiger, Managing Director of ABCDEX Pty Ltd. Holder: Ashurst Australia.
Decision:	2020 ATMO 122 Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – s 44 of the Trade Marks Act 1995, opposition not established – Trade Mark will be extended protection to Australia.

Background

1. Reinhart Lange (‘the Holder’) has applied for extension of protection to Australia of International Registration 1324805 (‘the IRDA’). Relevant details of the IRDA are set out below:

Trade Mark:      LOV

Australian Trade Mark No:    1817324

Filing Date:  25 October 2016

Priority Date:  26 April 2016[1]

Specification:  Class 5: Contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants for use in the area of the vagina, penis and anus; lubricants for personal use; vaginal moisturizers; preparations for external use, namely sprays, gels, liquids and creams for sexual health and / or enhancing sexual arousal; pharmaceutical preparations and substances, namely supplements for sexual health and / or enhancing sexual arousal

Class 41: Entertainment services; organization and conducting of cultural and sporting events; arranging and conducting of conferences; providing recreation facilities; party planning (entertainment); entertainment party planning; club services (entertainment or education); information on leisure activities and events (entertainment); music performances

Class 43: Providing of food and drink for guests in bars, cafes, cafeterias, restaurants and snack-bars; temporary accommodation

[1] Convention date based on German Trade Mark Application No. 20 2016 103 921.

1. The IRDA was examined as required by regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’).

2. Following examination, IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 21 December 2017.

3. On 15 January 2018 ABCDEC Pty Ltd and Burkhard Geiger (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA pursuant to reg. 17A.33 of the Regulations.

4. On 11 April 2018 the Opponent’s Statement of Grounds and Particulars (‘SGP’) was accepted.

5. On 1 May 2018 the Holder filed a Notice of Intention to Defend the IRDA.

6. The Opponent filed evidence in accordance with the Trade Marks Act 1995 (‘the Act’) and reg. 21.6 of the Regulations.

7. No evidence or submissions were filed by the Holder in this opposition.

8. As neither party requested a hearing, this matter was delegated to me for a decision on the written record on 11 June 2020.

Evidence

10.  Evidence in Support:

• Declaration of Burkhard Geiger, Managing Director of ABCDEX Pty Ltd, made on 6 August 2018, with Exhibits 1 to 10 (‘Geiger’).

The Opponents Evidence in Support

11.  The Declaration of Geiger claims the following:

• The Opponent has provided services under the LOV trade mark since 15 December 2013. Exhibit 1 of Geiger is a copy of an invitation promoting an event named ‘Christmas Drinks at Geiger’s’ to be held on 15 December 2013 and participants are asked to bring a gift for charity ‘in the name of LOV’.[2]

  [2] Geiger [1] Exhibit 1.

• The Opponent has provided food and drink services under the LOV trade mark at events since 2014. Exhibit 2 of Geiger is a copy of an invitation promoting an event ‘Christmas at the Geiger’s’ to be held on 7 December 2014 with BBQ & drinks provided and participants are asked to bring a gift for charity and the word ‘LOV’ appears after this request.[3]

  [3] Geiger [1] Exhibit 2.

• The services provided by the Opponent under the LOV trade mark since 2013 comprise help to residents, businesses, and organisations to organise and host events, parties, seminars and training sessions to combat social, racial and gender discrimination. These events are hosted at businesses, homes, parks or anywhere people can gather in peace. The events are free to attend with food and drinks provided and served. Donations in the form of gifts are encouraged and passed on to charities.[4] Examples of charities who have received donations include:

  oExhibits 6, 7, 8 and 9 in Geiger are photographs taken at the Wesley Mission, Brisbane, showing the handing over and receipt of donations.[5]

  oExhibit 10 in Geiger is a copy of a Thank You letter from the Children’s Hospital Foundation for the donation of Christmas gifts for the kids at the Lady Cilento Children’s Hospital, dated 5 January 2018.[6]

• The Opponent has obtained the following registrations:

  oExhibit 3 of Geiger is an extract of the Australian Securities & Investment Commission, Record of Registration for the Business Name LOV, dated 8 April 2016.[7]

  oExhibit 4 of Geiger is a copy of the Domain Name Registration issued by Netregistry Pty Ltd for <lov.org.au>, dated 8 April 2016.[8]

  oExhibit 5 of Geiger is a copy of the Certificate of Registration of Trade Mark No. 1763855 in class 36 for the word LOV, filed on 8 April 2016.[9]

  [4] Geiger [2].

  [5] Geiger [2] Exhibits 6, 7, 8 and 9.

  [6] Geiger [2] Exhibit 10.

  [7] Geiger [1] Exhibit 3.

  [8] Geiger [1] Exhibit 4.

  [9] Geiger [1] Exhibit 5.

Ground of Opposition, Relevant Date and Onus

12. In the SGP the Opponent nominates the ground of opposition under s 44 of the Act and is only opposing the services claimed in classes 41 and 43 of the IRDA.

13.  The rights of the parties are to be determined as at the date of the application[10] which is generally, but not always the filing date.[11] For the purpose of s 44 which speaks of the priority date, the relevant date is 26 April 2016 which, in this case, is not the same as the filing date of the application because the IRDA contains a convention date based on German Application No. 20 2016 103 921. Therefore, 26 April 2016 is the ‘Relevant date’ at which to assess the ground in the proceedings.[12]

[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

[11] See Sections 6, 12 and 72 of the Act.

[12] Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45].

14.  The Opponent bears the onus of establishing the ground of opposition.[13] The standard of proof is the ordinary civil standard of the balance of probabilities.[14]

[13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[14] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

15. Section 44 of the Act relatively provides:

44  Identical etc. trade marks

[…]  

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

[…]

16.  To establish the opposition the Opponent must establish that the IRDA is substantially identical with, or deceptively similar to another trade mark with an earlier priority date, in the name of a person other than the Holder, in respect of similar services.

17.  In the SGP the Opponent relies upon trade mark registration 1763855 held in the name of ABCDEX Pty Ltd, which has an earlier priority date than that of the IRDA. The details are set out below:

Trade Mark:  LOV

Australian Trade Mark No:    1763855

Owner:  ABCDEX Pty Ltd

Priority Date:  8 April 2016

Specification:  Class 36: Charitable collections; Charitable fund raising; Charitable fundraising; Charitable services, namely financial services; Organising of charitable collections

(‘Opponent’s trade mark’)

Substantially Identical

18.  In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison [15].

[15] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, [414].

19.  The Opponent’s trade mark and the IRDA are the plain word LOV and on a side by side comparison I am satisfied that the trade marks are identical.

Similar services

20. Section 14 of the Act relatively provides:

1. Definition of … similar services

   […]
     (2)  For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or
              (b)  if they are of the same description as that of the other services.

21.  In determining whether services are similar involves examining the ‘essential characteristics’[16] of the relevant services bearing in mind that it: ought not be given too restricted a construction; at least not so as to be limited to services substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.[17]

[16] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [337].

[17] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39, [28].

22.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[18] the following list of likely considerations in the assessment of whether services are similar is provided:

[18] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [339].

(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].

23.  In the SGP the Opponent particularises that it is opposing the IRDA on the ground that the services claimed in class 43 are the same or similar to the services covered by its registration in class 36 because the Opponent has been serving and/or selling food and/or drinks, to raise funds for worthy causes since 2013.

24.  In the Geiger Declaration, the Opponent’s objection to the Holder’s claims in class 41 are clearly described. Geiger claims the services provided by the Opponent under the Opponent’s trade mark are the same and similar to the following services claimed by the IRDA:[19]

Class 41: Organising charitable fundraising events being the provision of entertainment, sports and cultural services; entertainment services; organisation and conducting of cultural and sporting events; arranging and conducting of conferences; party planning (entertainment); entertainment party planning; club services [entertainment or education]; information on leisure activities and events (entertainment).

[19] Geiger [4].

25.  The Opponent’s trade mark specifies: Charitable collections; Charitable fund raising; Charitable fundraising; Charitable services, namely financial services; and Organising of charitable collection.

26.  In the International (Nice) Classification of Goods and Services, services are in principle classified according to the branch of activity being offered, consequently ‘charitable services’ are defined by the service which is being offered. Hence the item ‘charitable services, namely financial services’ indicates that the Opponent’s financial services are provided for charitable purposes.

27.  The services nominated by the Opponent as ‘charitable fundraising’ and ‘charitable collections’ are monetary services aimed at the community or general public and the public are the recipients of or donors to the charity.

28.  Turning to the services claimed by the Holder in class 41, these services are rendered by persons or institutions with the basic aim of the entertainment, amusement, education, or recreation of people. In class 43 the services are provided by persons or establishments whose aim is to prepare food and drink for consumption.

29.  Therefore, the financial and monetary services within the Opponent’s specification are quite distinct from the services within the Holder’s specification and any similarities are superficial and, in terms of MID Sydney Pty Ltd v Australian Tourism Co Ltd, incidental.[20] The services within the Opponent’s specification are not of the same description as those within the Holder’s specification.

[20] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051, [241].

30. The ground under section 44 has not been established.

31.  In support of this ground the Opponent has also nominated its registered trade marks 1827327, 1831396, 1847802, 1864022, 1900234, 1914661 and trade mark application 1827327 (all trade marks being the word LOV).[21] However, the priority dates of these trade marks are all after the priority date of the IRDA and therefore cannot be considered under the section 44 ground nominated in the SGP.

[21] Geiger [6].

Decision

32.  Regulation 17A.34N(1) of the Regulationsprovides the following:

17A.34N Decision on opposition

(1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

33.  The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Therefore, extension of protection to Australian trade mark application 1817324 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before this time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

Costs

34. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent in terms of Schedule 8 of the Regulations.

Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks

14 July 2020