Re: Opposition by Prime Property Group SA Pty Ltd to registration of trade mark application number 1932172 (36) - People's Choice in the name of Australian Central Credit Union Limited And Re: Opposition by.. - [2021] ATMO 133

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Prime Property Group SA Pty Ltd to registration of trade mark application number 1932172 (36) – People’s Choice - in the name of Australian Central Credit Union Limited
And
Re:Opposition by Prime Property Group SA Pty Ltd to registration of trade mark application number 1932173 (36) – people’s choice and device - in the name of Australian Central Credit Union Limited

Delegate: Louise Tuohy

Representation: Opponent: Siobhan Ryan of Counsel instructed by LMA IP Patent and Trade Mark Attorneys
Applicant: Benjamin Gardiner of Counsel instructed by Thomson Geer Lawyers

Decision: 2021 ATMO 133
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58, 58A and 60 – sections 44 and 60 pressed – non established – trade marks to proceed to registration
Background

This is an opposition brought by Prime Property Group SA Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)(‘Act’) and relates to the registration of the following trade mark applications (‘Trade Marks’) in the name of Australian Central Credit Union Limited (‘Applicant’):
Application Number:             1932172
Trade Mark:  People’s Choice
Filing Date:  7 June 2018
Specification:  Class 36: Credit union services; Banking; Financial services; Investment; Insurance services; Loan services; Financial savings services; Deposit services; Credit card services; Investment advice; Brokerage; Financial management; Management of funds; Financing of home loans; Advisory services relating to loan services; Provision of home loans; Provision of loans (‘Applicant’s Services’)
And
Application Number:             1932173
Trade Mark:
Filing Date:  7 June 2018
Specification:  Applicant’s Services
The trade mark applications were examined as required by s 31 of the Act and were advertised as having been accepted for possible registration on 15 January 2020.
On 6 March 2020 the Opponent filed Notices of Intention to Oppose registration of the Trade Marks followed by its Statements of Grounds and Particulars (‘SGPs’) on 30 March 2020. On 4 May 2020 the Applicant filed Notices of Intention to Defend the opposition of the Trade Marks.
Once the time allowed for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 20 October 2021 by way of video conference. Siobhan Ryan of Counsel instructed by LMA IP Patent and Trade Mark Attorneys, appeared for the Opponent. Benjamin Gardiner of Counsel instructed by Thomson Geer Lawyers, appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions filed prior to the hearing.
Evidence
Evidence in Support
- Declaration by Richard Derek Nelson, Director of the Opponent, made on 4 November 2020 with Exhibits RDN 1 to RDN 9 (‘Nelson declaration’).
The Applicant did not file any evidence in these proceedings.
The Opponent has also sought to have a further declaration of Richard Derek Nelson with Exhibit RND-10, dated 18 March 2021 (‘Further Nelson declaration’) taken into consideration in the proceedings pursuant to reg 21.19 of the Trade Mark Regulations 1995 (Cth)(‘Regulations’).
The Opponent submits that the Further Nelson declaration related to matters arising after the evidence in support was filed and is corroborative of statements in the Nelson declaration for confusion. The Opponent submits that the evidence was not available at the time of filing the evidence in support because the evidence is documentation from a third party who was engaged by the Opponent to document telephone calls received by the Opponent indicating confusion with the Applicant between 9 November 2020 and 24 December 2020. The further evidence was intended to be exhibited in the evidence in reply, however the Applicant chose not to rely on evidence in answer and the evidence process ended.
The Applicant objected to the evidence, stating that there does not appear to be any compelling reason for this late evidence to be taken into account. Moreover, it is evidence that could have easily been collected in time to be filed with the Opponent’s evidence in support and is merely corroborative of statements in the Nelson declaration.
In this case, I am not satisfied that there are any compelling reasons that make it reasonable for this late evidence to be taken into account. I have reviewed the further evidence and it is not crucial to the determination of the matter before me. As such, I give it no weight.
Grounds, Onus and Relevant Date
In the SGP the Opponent nominated grounds of opposition under ss 44, 58, 58A and 60 of the Act. In its written submissions the Opponent only pressed the grounds under ss 44 and 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].
The date at which the rights of the parties are to be determined is 7 June 2018 (‘Relevant Date’) being both the filing and priority dates of the Trade Marks.
Section 44
Section 44 of the Act 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.
[…]
In the SGP the Opponent particularises the s 44 ground of opposition as follows:
Prime Property Group SA Ltd is the owner of the following trade mark:
Trade Mark:
Registration No:         1625803
Priority Date:              30 May 2014
Class 35: Advertising; administration relating to the real estate industry; office functions relating to the real estate industry; real estate, property and strata property advertising and promotions; publication and dissemination of publicity materials; marketing research and advisory services, public relation services; planning of marketing strategies; compiling real estate sales listings; organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; advertising and promotions in relation to real property; real estate auctioneering
Class 36: Real estate affairs; real estate, property and strata property research, valuation, appraisal, advisory, consultancy, selection, acquisition, sales, leasing, rental, management and administration services; domestic and commercial property finding services; property management; property portfolio management; time-share property management; provision of information relating to property (real estate); real estate services and real estate agents' services; real estate services relating to property development; agency services for the selling on commission of real property
Class 37: Cleaning of property; property maintenance; advisory services for cleaning; advisory services for maintenance
Class 45: Conveyancing
The applied for trade mark People’s Choice is substantially identical or deceptively similar to the Opponent’s registered mark with earlier priority dates, for similar services.
The Opponent is aware of significant customer confusion between the respective marks who assume a connection or association between the Applicant and Opponent.
To satisfy the s 44 ground the Opponent must establish that the Trade Marks are substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar services and/or goods which are closely related to, the Applicant’s services.
From the information set out in the SGP, verified on the Register of Trade Marks, the Opponent’s trade mark 1625803 (‘Opponent’s trade mark’) is a registration by a person other than the Applicant and has a priority date earlier than the Relevant Date.
Substantially identical and/or deceptively similar
I will now consider whether the trade marks are substantially identical or deceptively similar. Whether the trade marks are substantially identical is not a matter of controversy between the parties. However, I will briefly note that the test for substantial identity requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.2F[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. In this case all the trade marks share the word term PEOPLES CHOICE, noting that the apostrophe in the Trade Marks is before the letter S and after the letter S in the Opponent’s trade mark. However, the Opponent’s trade mark contains two castle devices, one overlayed on the other, and trade mark 1932173 contains the word term inside a balloon quotation, with trade mark 1932172 being for the word term solus. Accordingly on a side-by-side comparison the respective trade marks do not have a total overall impression of resemblance.
[3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Kitto J).
Therefore, the remaining questions under s 44(1) of the Act are whether the Trade Marks are deceptively similar to the Opponent’s trade mark, and whether some or all of the services are the same or of the same description as any or all of the services in which Opponent’s trade mark is registered.
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
10 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 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.6F3F[4]
[4] (1979) 96 RPC 410, 423.
The state of the law regarding confusion was neatly summarised by the delegate of the Registrar of Trade Marks in Kicking Horse Coffee Co Ltd:
In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F4F[5]
[5] [2018] ATMO 193, [46] (Delegate Brown) (Citations omitted).
When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’8F5F[6] and all the surrounding circumstances are relevant to the consideration:
You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F6F[7]
[6] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Cowdroy, Middleton, Jagot JJ); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).
[7] Pianotist Co.’s Application (1906) 23 RPC 774, 777.
The approach requires an appreciation that trade marks will be imperfectly recalled, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F7F[8]
[8] (1937) 58 CLR 641, 658.
Turning to the comparison of the trade marks, I have already noted that the trade marks share the essential feature of the word term PEOPLES CHOICE. When considered within the framework of imperfect recollection the Trade Marks are aurally and conceptually the same as the Opponent’s trade mark. I also consider that the additional device element in trade mark 1932173 is not sufficient to prevent it from being deceptively similar to the Opponent’s trade mark.
I must now consider whether any of the Applicant’s Services are similar to the Opponent’s Services.
Section 14(2) of the Act provides:
(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.
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd8F[9] the Full Court set out the principles to be applied in determining the scope of the phrase ‘services of the same description’ and described them in the following terms:
[9] [2017] FCAFC 56, [339] (Greenwood, Besanko and Katzmann JJ).
In the present case, the Trade Marks claim services in class 36 and the Opponent’s trade mark is registered for services in classes 35, 36, 36 and 45.
The Opponent alleges that the Applicant’s Services are similar to the Opponent’s Services for the following reasons:
(a)   A number of items available for selection on the IP Australia picklist of goods and services for real estate related services are accompanied by the word ‘financial’ in brackets, and a pick list item for financial evaluation services is specified as including for real estate. The pick list items are as follows, although I note that none of these specific items are claimed in either the Applicant’s Services or the Opponent’s Services:
·Real estate assessment (financial)
·Real property evaluation (financial)
·Financial evaluation (insurance, banking, real estate)
(b)   Financial management and real estate assessment services in the Applicant’s Services are similar to real estate, property and strata property research, valuation, appraisal, advisory, consultancy, selection, acquisition, sales, leasing, rental, management, and administration services in the Opponent’s Services, as both may relate to assessment and management services in the real estate industry. (I note however that the Applicant’s Services do not specifically include a claim for ‘real estate assessment services’, so I assume that the Opponent is inferring that such a claim falls under the broad claim for ‘financial services’).
(c)   Investment advice in the Applicant’s Services is similar to property management, property portfolio management, and provision of information relating to property (real estate) in the Opponent’s Services, as advice relating to investment can be in the form of property investment and management.
(d)   The claim for financial management in the Applicant’s Services is encompassed by the Opponent’s Services for property management, as property management includes the management of funds and finances in relation to a property, including collecting, holding, and distributing lease payments.
(e)   A trader in real estate may at times in the course of business provide services in relation to investment, investment advice, insurance services, financial management, brokerage, and management of funds for real estate or property.
(f)    Financial services in the Applicant’s Services are similar to Conveyancing in the Opponent’s Services as conveyancing may include the provision of financial services in relation to the transfer of property, including the placement of money in a trust account, calculation of financial figures in relation to rates and taxes, liaising with financial institutions regarding payment and arranging for financial settlement.
(g)   Financial services in the Applicant’s Services are similar to advertising services in the Opponent’s Services. No support is given for this argument other than to refer to an earlier decision of the Registrar (Austexx Pty Ltd v D.F.O Pty (2011) ATMO 93) where a broad claim in class 35 for business administration, assistance, management, and advertising services was deemed to be similar to a broad claim for various financial services in Class 36.
The Opponent’s case is based on the premise that services relating to the management, sale, and transfer of property have an intrinsic financial aspect (which is the transfer of consideration for the purchase or lease of property), or that assessment or investment advice in relation to real estate will encompass the financial risks and benefits of the proposed transaction. However, the fact that a real estate service may involve some form of financial transaction, or that a real estate agent may occasionally offer financial advice, does not alter the fact that the nature and trade channels of the respective services are fundamentally different. Real estate investment often requires the input of professionals trained in a myriad of different fields, including financial advisors, mortgage brokers, real estate agents, property managers, lawyers, insurance brokers, builders, property inspectors etc. Each of these professionals has significantly different training, experience, regulatory oversight, and sources of revenue notwithstanding that each may be involved in a property transaction or provide advice on property investment. The engagement of professionals in property transactions is also often by way of referral, for example a mortgage broker may recommend a conveyancer and a lawyer may recommend a pest inspector. The ordinary consumer expects to engage different businesses for different aspects of property investment or property transactions.
Further, there are key differences even in areas of peripheral overlap such as assessment of property value where a provider of real estate services and a provider of financial services may both carry out similar functions. For instance, a real estate agent may provide a property valuation for the purposes of obtaining a new client, or, in the course of acting as a buyers agent. Conversely, a bank when undertaking a property valuation is simply undertaking its own due diligence. It is not providing a service to a third party for a fee, or a service to the person who is seeking the loan. Moreover, the advice given by a real estate agent on whether to purchase a property is likely to have a different emphasis and underpinning rationale when compared to the advice given by a financial advisor.

Overall, despite some peripheral overlaps in some aspects of the Applicant’s Services and the Opponent’s Services, I am not satisfied that they have a fundamentally similar nature and purpose, or that consumers would expect that financial related services and real estate related services generally would originate from the same trade source.
With regards to the similarity of the Applicant’s Services with advertising services, I see no obvious similarity in nature, purpose, or trade channels. The decision relied on by the Opponent in support of this argument appeared to be based more on similarity of financial services with various business services in class 35, rather than advertising services.
For the reasons given above, I am not satisfied that the Applicant’s Services are of the same description as the Opponent’s Services.
As the Opponent has not established that the Applicant’s Services and the Opponent’s Services are similar, the ground of opposition under s 44 is not established.
Section 60
Section 60 of the Act provides:
60 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.
In the SGP the Opponent particularises the s 60 ground of opposition as follows:
The Opponent had, before the priority date of the present application being 7 June 2018, acquired a reputation in Australia of the PEOPLE’S CHOICE trade mark and registration no. 1625803 in relation to broad real estate, property management, and business services. They are also the owner of Australian Trade Mark No. 1625803 with a priority date of 30 May 2014. The Opponent claims use since at least 10 May 2010 and continuous use since that time.
Use of a similar mark PEOPLE’S CHOICE by the Applicant for the goods specified in the application would be likely to deceive or cause confusion in the marketplace, including by falsely suggesting that the Applicant’s services are associated or affiliated with the Opponents.
There has already been significant confusion by consumers known to the Opponent, to the extent that it has damaged their goodwill and negatively impacted their business.
To satisfy s 60 of the Act the Opponent must establish a reputation exists in another trade mark in Australia before the Relevant Date. The Opponent must then establish that because of the reputation use of the Trade Marks in the Australian marketplace would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[10] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[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…13F10F[11]
[10] [2000] FCA 1335, [81].
[11] [1992] FCA 159, [118].
Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves. 14F11F[12]
[12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Blue BV v Cordon Blue International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient …15F12F[13]
[13] [2000] FCA 1587.
In the present case the relevant market for broad real estate services, property management, and business services outlined in the SGP is virtually the entire Australian population from 18 years onwards.
The Nelson declaration claims the Opponent’s PEOPLES CHOICE trade mark was first used in May 2010.
The Nelson declaration claims the Opponent’s website was established in 2012. Exhibit RND-2 provides screenshots from the internet achieving service Wayback Machine which are dated 31 October 2013, 23 December 2014, 27 February 2015, 4 July 2016, 18 February 2017 and 31 March 2018. The archived pages show use of the Opponent’s PEOPLE’S CHOICE trade mark in relation to property management services.
Exhibit RND-6 provides copies of tax invoices from Winkless Web Design for the following services: website hosting services for the Opponent’s website for the periods 24 December 2013 to 23 December 2014 and 24 December 2014 to 23 December 2016; Search Engine Optimisation word and Adwords setup for the Opponent’s website dated 7 March 2014; and Domain Name Renewal fees for two years dated 14 October 2016.
Exhibit RND-3 provides a copy of a post from the Stell Racing Facebook account showing use of the Opponent’s trade mark on a car racing suit dated 15 November 2014.
The Nelson declaration provides sales and approximate advertising figures associated the Opponent’s PEOPLE’S CHOICE trade mark for the years 2017 to 2018.
In assessing the evidence, I find that the Opponent’s PEOPLE CHOICE trade mark has only been used in relation to property management services. I would describe the sales revenue and advertising expenditure as modest and note that the figures have only been provided for the financial years 2017 and 2018. Promotion of the Opponent’s trade mark is limited to the Opponent’s website, Google Adwords and sponsorship of car racing events and there is no corroborating evidence of consumer awareness of the Opponent’s PEOPLES CHOICE trade mark.
Based on this information, I find that the evidence before me does not demonstrate the ‘recognition’ and ‘esteem’ required to show a significant or substantial reputation in the Opponent’s PEOPLES CHOICE trade mark to the relevant Australian public. In the absence of the necessary reputation for the purposes of s 60(a) of the Act, it is not necessary for me to consider whether confusion or deception might arise under s 60(b) of the Act.
The Opponent has not established the ground of opposition under s 60.
Decision
Section 55 of the Act provides:
55 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. Accordingly, I decide that Trade Mark numbers 1932172 and 1932173 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
Both parties sought an award of costs. 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 under s 221 of the Act in line with Schedule 8 of the Regulations.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
5 November 2021

Re: Opposition by Prime Property Group SA Pty Ltd to registration of trade mark application number 1932172 (36) - People's Choice in the name of Australian Central Credit Union Limited And Re: Opposition by..

[2021] ATMO 133

5 November 2021

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Costs

Standing

Procedural Fairness

Statutory Construction

Delegate:	Louise Tuohy
Representation:	Opponent: Siobhan Ryan of Counsel instructed by LMA IP Patent and Trade Mark Attorneys Applicant: Benjamin Gardiner of Counsel instructed by Thomson Geer Lawyers
Decision:	2021 ATMO 133 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58, 58A and 60 – sections 44 and 60 pressed – non established – trade marks to proceed to registration