Re: Opposition by Wild Environmental Consultants Pty Ltd to registration of trade mark application 1993747 (35, 42, 44) - wildPLAN - in the name of Wildplan Pty Ltd

[2021] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Wild Environmental Consultants Pty Ltd to registration of trade mark application 1993747 (35, 42, 44) – wildPLAN – in the name of Wildplan Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Self-represented
Decision:	2021 ATMO 46 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 43, 44 and 58A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Wild Environmental Consultants Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Wildplan Pty Ltd (‘Applicant’): 

Application Number:	1993747
Filing Date:	19 March 2019
Services:	Class 35: public relations; consultancy relating to public relations; consultancy regarding public relations communications strategies; marketing; marketing consultancy; preparation of marketing plans Class 42: town planning; town planning advisory services; town planning consultancy services; urban planning; project management (design); conducting technical project studies; advisory services relating to planning applications; Advisory services relating to the planning of premises; Local planning authority services; Urban design; Preparation of technical reports Class 45: consultancy services relating to social planning (‘Applicant’s Services’)
Trade Mark:	wildPLAN	(‘Trade Mark’)

2. Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively, unless otherwise indicated.

3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 17 October 2019 (‘SGP’). The SGP raised grounds of opposition under ss 43, 44 and 58A of the Act. The Applicant filed a Notice of Intention to Defend on 8 January 2020.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 4 April 2020 by Ellie Kilpatrick, Administrative Assistant at the Opponent, with Exhibits 1 to 5 (‘Kilpatrick 1’).

   5. The Applicant filed the following evidence in answer:

   ·Declaration made on 15 July 2020 by Dominic Randle Hammersley, Director and Principal Planner of the Applicant, with Exhibits 1 to 36 (‘Hammersley declaration’).

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 16 September 2020 by Ellie Kilpatrick with Exhibits 2A to 2G (‘Kilpatrick 2’).

   7. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record. 

   8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. The Opponent is an Australian company, established in January 2016, that offers environmental consulting services and has traded under its present name since October 2016.  

   10.     The Opponent, in its evidence refers to the existence of the trade mark listed below (‘Opponent’s Trade Mark’).  The services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Services’. I note that the owner of the Opponent’s Trade Mark is Milford Baker Pty Ltd and not the Opponent, and the Opponent provides no evidence of any connection between the Opponent and Milford Baker. I note that this is not necessarily determinative since the s 44 ground of opposition does not require the Opponent to be the registered owner of the trade mark particularised under the ground.

Number	Trade Mark	Priority Date	Goods or Services
1880161	WILD ENVIRONMENTAL	13 Oct 2017	Class 42: Scientific and technological services; industrial analysis; research services; agricultural research services; analysis of air, soil or water samples; biological research; carbon offsetting scientific advice, consultancy, information, and reporting; civil engineering design services; conducting surveys, including scientific surveys; construction industry environmental and consultancy services; design engineering; design and development of environmental study testing programs; ecological research; ecological surveys; engineering consultancy; engineering feasibility studies; engineering project management services; engineering project studies; engineering research services; environmental conservation and protection services; environmental pollution and pollution control services; environment design services; environmental conservation services; environmental hazard assessment; environmental study and surveying services; environmental monitoring services; environmental research services; environmental sustainability services; environmental testing; exploration services; feasibility studies; geological research; geological surveys; geotechnical services; inspection in relation to environmental factors; map design; mapping services; mining industry environmental study and consultancy services; oceanographic testing and research services; pollution emissions testing; preparation of reports for others in relation to environmental services; preparation of statistic for scientific research; project management; project management in relation to environmental investigations; provision of services to others in relation to environmental studies; rental of scientific or technical apparatus; scientific laboratory services; scientific research services; scientific testing services; setting of standards, including environmental standards or engineering standards; social science consultancy services; surveying; testing of air samples; sustainability assessment services for buildings and developments; technical reports for others, including technical studies and engineering reports; testing of soil samples; testing of water samples; testing of water, air, soil and other natural materials for environmental status and impact; town planning; urban planning and design; toxicity analysis; advice, consultancy, information or reporting services on any of the foregoing, including provided electronically

11. Given my finding below that the s58A ground of opposition can be determined without the benefit of evidence, it is not necessary to summarise the parties’ evidence filed in this matter to any great degree.

12.     The Opponent gives evidence that it commenced trading as Wild Environmental Consultants in October 2016 and has continued to use the Opponent’s Trade Mark for similar services as the Applicant’s Services since then.  The Opponent holds the domain name <wildenvironmental.com> and has spent over $30,000 on advertising since 2016.

The Applicant

13.     Much of the Hammersley declaration consists of submissions to the effect that the Trade Mark and the Opponent’s Trade mark are not deceptively similar.  I have had regard to those submissions but it is not necessary to summarise them here as they are submissions not evidence.  Noting my comment above that it is unnecessary to summarise the evidence in any great detail in this particular matter, the relevant evidence supplied by the Applicant is that the Trade Mark was created by design company 99designs on or after 6 December 2018.  The Applicant gives evidence that it does not provide the same services under the Trade Mark as the Opponent does under the Opponent’s Trade Mark, noting that the Applicant provides urban planning and consultancy services while the Opponent provides environmental impact statements and management plans.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 43, 44 and 58A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   15.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is the filing date 19 March 2019 (‘relevant date’), which is also the priority date for the purposes of s 44.[3]

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

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

2. The relevant provisions of the Act are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 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.

3. To establish the s 44 ground what is required is a mark that has an earlier priority date than the Trade Mark (‘the first requirement’).  That earlier mark must be deceptively similar or substantially identical to the Trade Mark (‘the second requirement’) and claim similar or closely related goods and services (‘the third requirement’).

4. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which it may do so notwithstanding that it is not owned by the Opponent (it is owned by a third party). The particulars also refer to the use of the term ‘wild environmental’ by the Opponent, however s 44 is only concerned by the presence of a mark filed under the Act and not marks solely used in the market.

5. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is registered for similar services as the Trade Mark (both the Applicant’s Services and Opponent’s Services contain services relating to consulting, urban planning and consultancy services relating to social planning).  The first and third requirements are satisfied.  

   Substantially identical and/or deceptively similar

6. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] (1963) 109 CLR 407, 414.

   21.     The Trade Mark and the Opponent’s Trade Mark are set out below:

   wildPLAN             WILD ENVIRONMENTAL

   22.     On a side by side comparison there are clear differences in the respective marks being the presence of the word ‘plan’ in the Trade Mark and the word ‘environmental’ in the Opponent’s Trade Mark which means that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark.

   23.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid, 416.

   24.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [10] [2012] FCA 1022, [37]-[46].

7. In the present case, while there is an obvious similarity between the marks, they share the same first word ‘wild’, on balance I am satisfied that the differences between the marks are such that, when considering the purchases of the respective services (who are usually sophisticated commercial or government agencies) there is not a real tangible danger of deception or confusion.  The respective marks are visually and aurally different and in particular I note that the Trade Mark consists of one word (being a compound of two words) while the Opponent’s Trade Mark is two separate words.  While there are conceptual similarities arising from the shared use of wild (which may be taken to have a number of meanings relevant to the services offered or may simply be taken as being used for its common laudatory meaning) I am not persuaded that merely because of the shared use of wild, consumers aware of the Opponent’s Trade Mark and its use for environmental consultancy services, will see the Trade Mark, applied to the Applicant’s Services, and be caused to consider whether the services come from the same source. 

1. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58A

   27. Section 58A is reproduced below:

   Section 58A – Opponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)    similar goods or closely related services; or

   (ii)   similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:  For predecessor in title see section 6.

   28. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4). In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to the Opponent's Trade Mark, the provisions of s 44(4) are not available to be applied in this opposition proceeding. As such this ground of opposition is not available to the Opponent.

   Section 43

   29. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   30. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [11]

   [11] [2006] FCA 1663; (2006) 70 IPR 599, [53].

   31.     In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [12]

   [12] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

2. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

   The wordmark wildPLAN and Wild Environmental is likely to deceive and cause confusion as we operate across the same geographic region.  The wildPLAN website makes reference to Environmental Impact Statements, which is in direct competition with the services that we offer.  The clientele of each business is similar, being property developers, mining, agriculture and government.  In April 2019, one of our previous employees attended a Rotary meeting.  A fellow Rotary member asked Andrew if we were affiliated with wildPlan with genuine confusion. 

3. As outlined in the authorities above, the considerations set out in the SGP are not the appropriate considerations as the requisite confusion or deception within the Trade Mark itself rather than as a result of the confusion between the Trade Mark and some other mark.

4. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under s 43 has not been established.

   Decision and Costs

5. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1993747 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 that 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 Court’s order or direction.

6. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   1 June 2021