Re: Opposition by Capricorn Society Limited to registration of trade mark application number 1825148 (class 35, 36) Capmax in the name of Richa Koshal
[2020] ATMO 96
•29 May 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Capricorn Society Limited to registration of trade mark application number 1825148 (class 35, 36) - CAPMAX - in the name of Richa Koshal
Delegate: Katrina Brown Representation: Opponent: D.G. Stewart of Bennett + Co.
Applicant: K.J. McInnes of IP Solved (ANZ) Pty LtdDecision: 2020 ATMO 96
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 58, 60 – no ground established – trade mark to proceed to registration.Background
This decision relates to an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) by Capricorn Society Limited (‘the Opponent’) to the registration of the following trade mark:
Trade Mark No: 1825148
Trade Mark: CAPMAX (‘Trade Mark’)
Applicant: Richa Koshal (‘Applicant’)
Filing Date: 10 February 2017
Convention Priority Date: 31 January 2017 (‘Priority Date’)
Services:Class 35: Accounting services; accounting advisory services; account auditing; administrative accounting; accounting consultancy relating to taxation; tax preparation and consulting, services; tax filing services; tax return preparation; tax assessment preparation; tax declaration procedure services; bookkeeping/accounting; payroll preparation; payroll, assistance; payroll advisory services; administration of business payroll for others
Class 36: Brokerage services; mortgage broking; insurance broking; real estate broking; stocks and bonds brokerage services; securities brokerage services; pawn brokerage services; financial customs brokerage services; financial planning and management services; financial analysis; financial consultancy; trusteeship of superannuation funds
(‘Applicant’s Services’)
The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 22 June 2017.
The Opponent filed a Notice of Intention to Oppose on 22 August 2017 followed by a Statement of Grounds and Particulars (‘SGP’) on 22 September 2017.
The Applicant filed a Notice of Intention to Defend on 28 November 2017.
The Opponent filed and relies upon the following declarations:
·Declaration of Bradley Gannon (Company Secretary/General Counsel for the Opponent) made on 2 March 2018 with Annexures BRG-1 to BRG-21 (‘Gannon Declaration’); and
·Declaration of Shannen Bowen (Solicitor at Williams + Hughes) made on 28 February 2018 with Annexures SLB-1 to SLB-5 (‘Bowen Declaration’); and
·Declaration of Kristine Hodgson (Solicitor at Bennett + Co.) made on 5 March 2019 with Annexures KMH-1 to KMH-2 (‘Hodgson Declaration’).
The Applicant filed and relies upon the following declarations:
·Declaration of Brian Shortt (Associate at IP Solved Pty Ltd) made on 5 June 2018 with Annexures BNS-1 to BNS-2 (‘Shortt Declaration’); and
·Declaration of Lan Pham (Registered Trade Mark Attorney at IP Solved Pty Ltd) made on 24 April 2019 with Annexure LP-1 (‘Lan Declaration’).[1]
[1] The different naming convention (use of first name rather than last name) is to avoid confusion with Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd which is the focus of the s 58 discussion.
The matter came before me, a delegate of the Registrar of Trade Marks (‘Registrar’). The Opponent was represented by David Stewart of Bennett + Co. The Applicant was represented by Ken McInnes of IP Solved (ANZ) Pty Ltd.
Grounds of opposition and onus
The grounds of opposition in this matter are under ss 42(b), 44, 58 and 60 of the Act.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].
Section 44
Section 44 of the Act relevantly provides:
(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) the applicant’s trade mark 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 succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods.
In its written submissions, the Opponent refers to trade marks which were not specifically identified in the SGP as the basis for this ground of opposition. I will focus my discussion on the following trade marks (‘Opponent’s Trade Marks’) which the Opponent specifically nominated in the SGP as the basis for the s 44 ground of opposition:
13. TM No.
14. Trade Mark
15. Priority Date
16. Specification
17. 1210844
18. CAPmobile
19. 19 November 2007
20. Class 9, 35, 36, 38, 41, 42
21. 1339251
22. CAPezifinance
23. 4 January 2010
24. Class 36
25. 1530981
26. CAPEZIPARTS
27. 12 December 2012
28. Class 35
29. 1874215
30. CAPTV
31. 19 September 2017
32. Class 35, 38, 41
33. 1874843
34. CAPCHAT
35. 21 September 2017
36. Class 16, 35, 41
37. 1664888
38. CAPRICORN
39. 16 December 2014
40. Class 4, 12, 35, 37
Notably, the trade marks not specified in the SGP all contain the word ‘CAPRICORN’ and it is unlikely that my finding in relation to those trade marks would differ from my finding in relation to TM 1664888 CAPRICORN.
Trade mark 1874215 CAPTV and TM 1874843 CAPCHAT both have later priority dates than the Trade Mark and therefore do not meet the requirements of s 44(2)(b). Consequently, the s 44 ground of opposition cannot be established in relation to these two trade marks.
The s 44 ground of opposition also cannot be established in relation to TM 1530981 CAPEZIPARTS as it is not registered for services similar to those claimed by the Trade Mark. Trade Mark 1530981 CAPEZIPARTS is registered for the following services:
Class 35: Retailing and wholesaling services; provision of services which allow buyers of goods or services to request and receive, including via e-mail, quotations from multiple competitive sources and sellers of goods or services, including automobile parts and fittings provided via a website; on-line trading services to facilitate the sale of goods and services by others via a computer network; providing commercial information and on-line directory information services for sellers, producers and organizations; providing a searchable online database of products and services, producers and sellers, being the provision of business information provided by an online database; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; providing information about the goods and services of others via the global computer network; advertising and advertisement services
These services are either retailing and wholesaling services, or ancillary services each of which is qualified as being in relation to the purchase or sale of goods and services. The Trade Mark claims various accountancy, tax and payroll services in class 35 and a variety of financial services in class 36. The nature, inherent characteristics, purpose, industry and trade channels of the services are so very different that they do not fall within the ambit of similar services as defined by s 14 of the Act.
The remainder of the Opponent’s Trade Marks namely, TM 1210844 CAPMobile, TM 1339251 CAPezifinance (‘collectively CAP Trade Marks’) and TM 1664888 CAPRICORN (‘CAPRICORN Trade Mark’), each have an earlier priority date than the Trade Mark, are held in a name other than that of the Applicant and are registered for services in class 36 which are plainly similar to those claimed by the Trade Mark.
Therefore, the remaining issue is in respect of substantial identity or deceptive similarity. The Opponent submits that the CAP Trade Marks and the CAPRICORN Trade Mark are substantially identical with, or at least deceptively similar to, the Trade Mark.
Substantially Identical
The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[4]
[4] [1963] HCA 66 [12] (Windeyer J) (‘Shell’).
I will begin with the side by side comparison of the Trade Mark and the CAPRICORN Trade Mark. I acknowledge that both trade marks begin with the letters ‘CAP’. The remainder of each of the trade marks, namely ‘MAX’ and ‘RICORN’ are visually and aurally very dissimilar. Furthermore ‘CAPRICORN’ is a word with a known meaning. It is this word, in its entirety, that is the essential feature of the CAPRICORN Trade Mark. The same cannot be said for the Trade Mark. In my opinion, a total impression of resemblance does not emerge from a side by side comparison. The CAPRICORN Trade Mark and the Trade Mark are not substantially identical.
From the above comparison it is evident that the mere fact that the trade marks all begin with the letters ‘CAP’ does not necessarily lead to a finding of substantial identity. When carrying out a side by side comparison it is important to be cognisant of the essential elements or dominant cognitive cues in each of the trade marks.[5] In doing so it is crucial not to too readily characterise elements as being the essential or distinguishing feature.[6] In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) it was observed that:
it is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services.[7]
[5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [52] (‘Pham Global’).
[6] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 [100].
[7] Pham Global (n 5) [52].
In this matter, the Applicant’s Services and the services for which the CAP Trade Marks are registered, can be broadly categorised as financial and accountancy services. The Applicant submits that ‘CAP’ is descriptive in relation to such services. From my own knowledge, I am aware that ‘CAP’ has several meanings relevant to the services including an upper limit or the highest level to which something can go. For example, an ‘interest rate cap’ limits the amount by which an interest rate can be increased. I am also aware that ‘cap’ is used as a shortened form of ‘capital’ and ‘capitalisation’ such as in ‘cap rate’ and ‘big cap’. In my opinion, ordinary consumers of financial and accountancy services are likely to understand ‘CAP’ as having descriptive relevance in relation to the services. The fact that many traders have sought to register trade marks containing ‘CAP’ in relation to such services[8] is indicative of that likely understanding. I also consider that an ordinary consumer would appreciate that it is a word likely to be in common use in the financial industry. Once it is accepted that ‘CAP’ is not particularly distinctive in relation to the services, the significance of its shared presence in the Trade Mark and the CAP Trade Marks is less than it otherwise would be.
[8] For example: 598561 CAPGUARD; 829545 Inter Cap; 874835 eCAPS; 920185 & 920146 CAPLINK; 1056932 & 1094768 Trail Cap; 1165772 capaccounting; 1200320 CAPCorporate; 1540039 CAPTAP; 1738747 & 1738748 HCAP; 1747957 CAPTROVE; 1833154 CapBridge; 1986782 LendCap.
Each of the trade marks contains word elements in addition to ‘CAP’. Although the additional words in each of the trade marks are laudatory or make some reference to a quality or characteristic of the services, the words are visually, aurally and conceptually dissimilar. The additional word elements in the CAP Trade Marks, namely ‘EZIFINANCE’ and ‘MOBILE’, bear no resemblance in look, sound or meaning to ‘MAX’, the additional word element in the Trade Mark.
For the reasons above, it is my opinion that the Trade Mark and the CAP Trade Marks are not substantially identical.
Deceptively similar
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
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.
In Shell, Windeyer J provided the following insights on deceptive similarity:
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 [trade mark].[9]
[9] Shell (n 4) [13] (Windeyer J).
As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the CAP Trade Marks and the CAPRICORN Trade Mark. I must consider the look, sound and idea conveyed by the trade marks, allowing for imperfect recollection.
In a nutshell, the Opponent submits that the Trade Mark is deceptively similar to the CAP Trade Marks and the CAPRICORN Trade Mark because:
· ‘CAP’ is the essential and distinguishing element of each of the trade marks; and
· The Opponent has a family of trade marks with the prefix ‘CAP’ conjoined with variable suffixes; and
· Due to the Opponent’s systemic use of the prefix ‘CAP’ an ordinary consumer would perceive the combination of the prefix ‘CAP’ with the laudatory suffix ‘MAX’ to be a brand extension by the Opponent.
Comparison of CAP Trade Marks and Trade Mark
The CAP Trade Marks and the Trade Mark are comprised of the prefix ‘CAP’ conjoined with additional words that are laudatory and or describe a quality or characteristic of the services to varying degrees. As the shared element is at the beginning of the trade marks, the Opponent, relying on London Lubricants (1920) Ltd’s Application (‘London Lubricants’), reminds me of the tendency for the termination of words to be slurred in the English language resulting in the first syllable of a word being the most important for the purpose of comparison.[10] In the current matter, the general principle set out in London Lubricants is tempered by the fact that the first syllable ‘CAP’ is of limited distinctiveness in relation to the services and is common to the trade. In this respect I note the following observation in CA Henschke & Co v Rosemount Estates Pty Ltd:
particular attention ought to be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing the marks; save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[11]
I also note that in REA Group Ltd v Real Estate 1 Ltd, Bloomberg J acknowledged that ‘Courts have shown some reluctance to find deceptive similarity by reference to the impact of a common prefix’.[12]
[10] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264.
[11] [1999] FCA 1561 [35] (Finn J).
[12] [2013] FCA 559 [246].
Furthermore, in Tivo Inc v Vivo International Corporation Pty Ltd Dodds-Streeton J stated that:
The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[13]
Other than acknowledging London Lubricants, neither party has put forward submissions or evidence in relation to which parts of the trade marks are likely to be slurred, emphasised or misheard. However, it does seem somewhat difficult to me to slur a syllable ending in ‘X’.
[13] [2012] FCA 252 [163].
Essentially what I have before me is a comparison of trade marks that share a prefix which is of limited distinctiveness, and the additional words in each of the trade marks are also of limited distinctiveness, some more so than others. As such, I do not think any of the individual elements are particularly striking or likely to be the basis of a consumer’s general impression or recollection of the trade marks. Rather, it is likely to be a recollection, imperfect or otherwise, of the combination of the words that form the trade marks. I also reiterate that the additional words in the Trade Mark and the CAP Trade Marks are dissimilar in look, sound and meaning. There is no apparent logical nexus or close association between ‘MAX’ and ‘EZIFINANCE’ or ‘MOBILE’.
Comparison of CAPRICORN Trade Mark and Trade Mark
As I have stated in relation to substantial identity, I do not consider ‘CAP’ to be the essential element of the CAPRICORN Trade Mark. In my opinion, the impression a person of ordinary memory and intelligence would have of the CAPRICORN Trade Mark is that of the word ‘CAPRICORN’ and its associated meaning, primarily that of a constellation, the tenth astrological sign in the zodiac or the Tropic of Capricorn.
The Trade Mark conveys a different impression to that of the CAPRICORN Trade Mark. A person of ordinary intelligence and memory is likely to discern the impression of the Trade Mark from the meaning of ‘CAP’ and ‘MAX’. At its simplest, the impression conveyed is that of the largest cap. Bearing in mind the relevant meanings of ‘CAP’ set out in the discussion of substantial identity, it may also convey the impression of the largest amount of capital, the largest possible capitalisation or the absolute upper limit. Either way, it is a very different impression to that of a constellation, astrological sign or a circle of latitude.
Surrounding circumstances
In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the services are offered and the character of the probable acquirer of the services.[14] The services in this matter are broadly speaking financial and accountancy services. The relevant class of consumers is broad and would include those with less sophisticated needs such as a day-to-day bank account through to those with more sophisticated needs such as the management of an investment portfolio. I also note that the services are the type which generally require a consumer to interact with the service provider before engaging its services most commonly through the completion and submission of forms. Regardless of the degree of sophistication, ‘money makes the world go round’ and consequently financial services are engaged with a relatively high degree of care and attention.
[14] Registrar of Trade Marks v Woolworths [1999] FCA 1020 [50].
Much of the Opponent’s submissions in respect of deceptive similarity were in relation to its family of trade marks which it describes as being a series of trade marks in which ‘CAP functions as a house brand, with suffix elements “bonding” with that house brand to form sub-brands’. There seems to me to be some sleight-of-hand in this description. Exhibit BRG-6 to the Gannon Declaration contains what the Opponent refers to as an ‘exhaustive list of its CAP Marks’. There are 34 trade marks listed which begin with ‘CAP’ however the essential feature of 29 of those is ‘CAPRICORN’. Only five of the listed trade marks consist of ‘CAP’ conjoined with other words, and only three of those have priority dates earlier than that of the Trade Mark.
The Opponent submits that ‘where there is a family of trade marks united by a common and distinctive element, there will usually be an expectation that any mark which incorporates that element will form part of the same family’. Whilst this may be accurate, it does not assist the Opponent. It confirms that the family of trade marks put forward by the Opponent are not a family, at least not a single family. The common and distinctive element of 29 of the trade marks is the word ‘CAPRICORN’ and I accept that those trade marks may form a family (‘CAPRICORN Family’). However, given the differences I have already detailed in respect of the CAPRICORN Trade Mark and the Trade Mark, the existence of the CAPRICORN family does little to advance the Opponent’s position.
The CAP Trade Marks do not contain the same distinctive element and therefore are not part of the CAPRICORN Family. However, the CAP Trade Marks and CAP EZIPARTS are united by the prefix ‘CAP’ conjoined with additional words and on that basis could form a family. Whilst there is a common element, it is of limited distinctiveness. That aside, the Opponent draws my attention to the following observation of the delegate in McDonalds Corporation v Bellamy:
In the ‘family’ of trade mark cases, the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element, would deceive or cause confusion.[15]
[15] [2004] ATMO 26 [28].
The above observation of the delegate was considered in Scotch Whisky Association v De Witt.[16] In that matter, Sundberg J was not persuaded by the family of trade marks argument as there were a number of prior registered trade marks belonging to different parties that incorporated the relevant element. In reaching this conclusion, Sundberg J was guided by the following remarks in Beck Koller & Co:
When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.
...
If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.
...
On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, ... the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.[17]
[16] [2007] FCA 1649. This is discussed in the context of s 60, however at the time there was a requirement under s 60 for the trade marks to be substantially identical or deceptively similar.
[17] (1947) 64 RPC 76, 83.
In the current matter, there are a number of prior trade marks registered to different proprietors in relation to the relevant services that consist of the prefix ‘CAP’ conjoined with additional ordinary words having some relevance to the services[18]. The current situation is more analogous to the circumstances in Scotch Whisky Association v De Witt rather than McDonalds Corporation v Bellamy where the applicant owned all of the trade marks incorporating the common element. As such, the ‘family of trade marks’ line of argument does not bolster the Opponent’s position.
[18] See n 8.
The Opponent also refers to its reputation in the trade marks. As a general principle, the reputation that an owner has in a particular trade mark is not a relevant consideration in determining deceptive similarity. In Singtel Optus Pty Limited v Optum Inc Davies J observed:
the fact that the mark, or an important element of it, is “notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services” will be a relevant consideration in assessing the nature of a consumer’s imperfect recollection of a mark.
…
In both Henschke and Crazy Ron’s it was held that RTM v Woolworths is not authority for any wider proposition in relation to the relevant of reputation on a question of deceptive similarity, as any wider proposition would be inconsistent with established authority.[19]
It will become apparent from my discussion of s 60 below, that the evidence does not establish that ‘CAP’ is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use.
Conclusion as to deceptive similarity
[19] [2018] FCA 575 [140].
Having compared the look, sound and ideas conveyed by the trade marks and considered the surrounding circumstances, I am not satisfied that there is a real and tangible danger of deception or confusion.
With respect to the CAP Trade Marks and the Trade Mark, I do not think that consumers of financial services will assume that the shared feature of these trade marks indicates a common trade origin. This is due to the particular circumstances before me including that the shared element is of limited distinctiveness, the additional words in each of the trade marks are dissimilar in look, sound and meaning and do not share any close nexus or association with one another, there are a clutch of trade marks registered to different proprietors in respect of financial services consisting of ‘CAP’ and additional words with varying degrees of relevance to the services and the services are the kind which consumers are likely to engage with a degree of care and attention.
With respect to the CAPRICORN Trade Mark, the idea conveyed by ‘CAPRICORN’ and ‘CAPMAX’ are so completely different that I do not think that a person of ordinary intelligence would be likely to be confused or deceived, even allowing for imperfect recollection. In the words of Neville J in Application by Thomas A. Smith to Register a Trade Mark:
I do not think so far as the meaning of the words is concerned, a reference to one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.[20]
[20] (1913) 30 RPC 363, 366.
The s 44 ground of opposition has not been established.
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that ‘ownership’ is based on first use of the trade mark in Australia or, if the trade mark has not been used, the combined effect of authorship of the trade mark, the intention to use the trade mark and applying for registration of the trade mark.[21]
[21] Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601, 627. Confirmed in Pham Global (n 5) [19].
This ground of opposition is particularised in the SGP as follows:
The Applicant is not the proper owner, and was never intended to be the proper owner of the Trade Mark. The proper owner of the Trade Mark should be Capmax Accountants Pty Ltd, a company created in 2019 for the purpose of being the corporate vehicle of the business purported to be trading under the Trade Mark. Filing the trade mark in the name of the Applicant is fatal to the Application…The Applicant should not be characterised as a licensor and Capmax Accountants Pty Ltd should not be characterised as an authorised user…The Application is substantially identical to each or all of the Cap Marks…
At this point it is convenient to acknowledge that the evidence establishes the following:
·The Applicant had not used the trade mark in Australia prior to filing the application for registration.
·Capmax Accountants Pty Ltd was incorporated on 24 January 2019 – Annexure KMH-2 to the Hodgson Declaration.
·The Applicant is the sole shareholder, director and secretary of Capmax Accountants Pty Ltd - Annexure KMH-2 to the Hodgson Declaration.
·In an email dated 19 February 2019, the Applicant’s Representative stated that ‘an authorised user, namely Capmax Accountants Pty Ltd commenced active trading in Australia under the CAPMAX trade mark since 24 January 2019’ – Annexure KMH-1 to the Hodgson Declaration.
·There is a written licence agreement between the Applicant and Capmax Accountants Pty Ltd dated 17 April 2019. This agreement states that the Applicant and Capmax Accountants Pty Ltd have, since 24 January 2019, had an unwritten licence agreement in regards to the use of the Trade Mark in Australia – Annexure LP-1 to the Lan Declaration.
Given how this ground of opposition has been particularised in the SGP, it comes as no surprise that the Opponent’s submissions place great emphasis on Pham Global. In that matter, Mr. Pham, the sole director of Insight Radiology Pty Ltd (‘IR’), applied for a trade mark in his own name. The Full Bench of the Federal Court held that:
Mr Pham, did not own the IR composite mark at the time of his application. He was not then the author of the mark, as IR was the author. He did not intend to use or authorise IR to use the mark. He intended only that IR use the mark. The consequence is the…ground of opposition under s 58 was established.[22]
[22] Pham Global (n 5) [43].
There are similarities between Pham Global and the current matter. Both involve an applicant, who is the sole director of a company, filing a trade mark application in their own name. Both matters also involve a licence or an intention to license. In Pham Global, Mr. Pham alleged that at the time of filing the trade mark application he intended to license the trade mark to IR. In the current matter, there is a licence agreement between the Applicant and Capmax Accountants Pty Ltd.
However, there are also points of distinction. In Pham Global, the company IR, had been incorporated some 7 years prior to the trade mark application being filed. In the current matter, Capmax Accountants Pty Ltd did not exist at the time the trade mark application was made; it was not incorporated until approximately 2 years after the filing date. This is a crucial distinction because ownership must be satisfied at the time the trade mark application is filed.[23] It is difficult to say that the Applicant, at the time of making the trade mark application, was acting for and on behalf of a company as opposed to in their own right, when the company did not exist. This is particularly difficult in the absence of evidence demonstrating that at the filing date the Applicant had an intention, or had taken any steps, to create such a company. Furthermore, unlike in Pham Global, there is no evidence before me to suggest that the Applicant is not the author of the Trade Mark.
[23] Ibid [41].
With respect to the intention to use, the Opponent asks me to draw negative inferences from the Applicant’s silence in respect of whether they had an intention to authorise use or licence the Trade Mark when they filed the trade mark application and also from the Applicant’s behavior in entering into a written licence agreement. The Opponent is extremely critical of the licence agreement going so far as to label it a ‘sham’ transaction designed to sure up the relationship between the Applicant and Capmax Accountants Pty Ltd, as that of owner and authorised user (respectively). I have no intention of making any comments in relation to sham transactions. Any inferences I was to draw from the Applicant’s conduct would be far from conclusive. The evidence before me is insufficient to establish that the Applicant did not have the requisite intention at the time of filing the trade mark application.
Considering all of the above, I am not satisfied that the Applicant was not the ‘proper’ owner of the Trade Mark at the time of filing the trade mark application. As such, the s 58 ground of opposition has not been established.
Section 60
Section 60 of the Act provides:
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 a reputation in another trade mark in Australia before 31 January 2017. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent’s Trade Marks are relied on as the basis for this ground of opposition. Notably, each is considered a separate trade mark for the purpose of s 60.[24]
[24] Qantas Airways Limited v Edwards [2016] FCA 729 [160].
Reputation
For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[25] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[26] number of people or potential consumers. The evaluation of what amounts to significant or substantial depends on the nature of the services that are the subject of the trade mark application.
[25] McCormick & Company Inc v McCormick [2000] FCA 1335 [81].
[26] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170.
Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[27] 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.[28]
[27] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[28] [2019] FCA 923 [83] (O’Bryan J).
Turning to the reputation demonstrated in the evidence, the Gannon Declaration states that the Opponent was established in 1974 and that it has used ‘CAPRICORN’ as a trade mark since its inception. Exhibit BRG-8 shows photographs from promotional events and trade shows, some of which show use of ‘CAPRICORN’ as a trade mark. The earliest is dated 1977, approximately 40 years before the Priority Date. Additionally, Exhibits BRG-12 to BRG-14 consist of photographs showing use of ‘CAPRICORN’ with a device on signage at the Opponent’s place of business. These photographs are declared to be from 1985, 1995, 2001, 2006, 2010 and 2014.
The Gannon Declaration contains revenue figures from 1993 to 2017 and annual marketing and advertising expenditure from 2001 to 2017. The relevance of these figures depends on whether they can be linked to sales and other relevant transactions that have occurred by reference to, or in relation to, the Opponent’s Trade Marks. As is often the case, the Gannon Declaration is silent in this respect. Furthermore, the Gannon Declaration does not indicate whether these figures relate only to revenue and promotional expenditure in Australia. This oversight is of some importance as the evidence shows that the Opponent also operates in New Zealand.
The Opponent promotes its services on (‘the Opponent’s Website’). Exhibit BRG-17 consists of an analysis of the traffic for this website from 26 October 2014 to 28 February 2018. During that time period the website had approximately 700,000 users and over 8 million views. Although this includes statistics for 13 months after the Priority Date, the Opponent has included a graph which assists in quantifying visits and views of the Opponent’s Website at the Priority Date. Exhibit BRG-9 consists of screenshots of the Opponent’s Website. However, the screenshots are undated and the Gannon Declaration does not indicate that these screenshots reflect the content of the Opponent’s Website before the Priority Date.
Similarly, the member guides which the Opponent uses to promote its CAPCHAT services are undated, as are the majority of the examples in Exhibit BRG-15. Additionally, Exhibit BRG-15 contains examples which are clearly directed at New Zealand customers and the Gannon Declaration states that services offered under the trade mark CAPEZIPARTS is only available to New Zealand members. The Opponent has not provided any means to quantify the reputation that may have spilled over from New Zealand into Australia.
On balance, I am satisfied that at the Priority Date, the CAPRICORN Trade Mark enjoyed the reputation contemplated by s 60 in respect of automotive activities, risk services and investment services. I am not satisfied that the evidence demonstrates that any of the other trade marks nominated by the Opponent enjoyed the type of reputation contemplated by s 60 at the Priority Date.
I now need to determine whether in light of the reputation of the CAPRICORN Trade Mark, use of the Trade Mark for the Applicant’s Services would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘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 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.[29]
[29] [1979] RPC 410, 423.
Importantly, there must be a real and tangible danger of deception or confusion.[30]
[30] Registrar of Trade Marks v Woolworths Ltd (n 14) [43].
Unlike s 44, s 60 does not require the trade marks to be substantially identical or deceptively similar. However, the likelihood of deception or confusion naturally increases the more closely the trade marks resemble each other.[31] As observed in relation to the s 44 ground of opposition, in my opinion there is very little resemblance between the CAPRICORN Trade Mark and the Trade Mark. The strength of the reputation in the CAPRICORN Trade Mark is not such that it eclipses the very clear differences between the trade marks. I am not satisfied that deception or confusion is likely to occur.
[31] Qantas Airways Limited v Edwards (n 24) [142].
The s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[32] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:
It is not enough for a party opposition registration to show that s 18 of the ACL [Australian Consumer Law] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[33]
[32] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].
[33] [2017] FCAFC 174 [411].
The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010.
In the written submissions the Opponent also asserts that the Applicant’s use of the Trade Mark would constitute trade mark infringement. As this assertion was not particularised in the SGP, and there has been no application to amend the SGP, I will not consider this any further.
Australian Consumer Law
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.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
(a) make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
CAPRICORN Trade Mark
100. The relevant provisions of the ACL require that I be satisfied that there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s Services or as to it having some connection with the Opponent. This is a stricter requirement than s 60 which only requires conduct that would be likely to deceive or cause confusion.
101. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion with the CAPRICORN Trade Mark. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.
Remainder of the Opponent’s Trade Marks
102. With the exception of the CAPRICORN Trade Mark, I have found that a reputation, sufficient to enliven s 60 of the Act, has not been demonstrated in respect of the Opponent’s Trade Marks. It follows that it is unlikely that use of the Trade Mark will amount to misleading or deceptive conduct or false or misleading representations under the ACL because ‘for the public to be misled or deceived…there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured’.[34] Similarly, without sufficient reputation having been demonstrated the use of the Trade Mark would not falsely represent to a consumer that the Applicant’s Services have the sponsorship or approval of the Opponent.
[34] Dairy Vale Metro Co-op Ltd v Brownes Dairy Ltd [1981] FCA 63 [42] (Toohey J).
103. The s 42(b) ground of opposition has not been established.
Decision
104. Section 55 of the Act relevantly provides:
(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.
105. The Opponent has not established a ground of opposition.
106. Accordingly, trade mark number 1825148 may proceed to registration one month from the date of this decision.
107. If the Registrar is 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 that the disposition of the application should otherwise be in accordance with the Court’s order of direction.
Costs
108. Both parties have requested that costs be awarded. As the Applicant has been successful, I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 May 2020
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