Re: Opposition by Zipmoney Payments Pty Ltd to registration of trade mark application number 1811600 (classes 9 and 36) - No Interest Ever! (Word) in the name of Certegy Ezi-Pay Pty Ltd

[2020] ATMO 156

TRADE MARKS ACT 1995

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

Re:Opposition by Zipmoney Payments Pty Ltd to registration of trade mark application number 1811600 (classes 9 and 36) – NO INTEREST EVER! (Word) - in the name of Certegy Ezi-Pay Pty Ltd.

Delegate:	Kate Doherty
Representation:	Opponent:  Written submissions, Omond Trade Mark Attorneys   Applicant: J Hennessy Senior Counsel, i/b Ashurst
Decision:	2020 ATMO 156 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 41 and 62(a); s 41 established; trade mark will not proceed to registration.

Background

1.    This is an opposition decision following an online hearing on 6 August 2020. I heard the matter as Delegate of the Registrar of Trade Marks for the following trade mark pursuant to the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:               1811600

Trade Mark:   NO INTEREST EVER! (‘Trade Mark’)

Filing date:   24 November 2016

Applicant:  Certegy Ezi-Pay Pty Ltd

Specification of Goods (at time of filing):  Classes 9 and 36 (Applicant’s goods and services’)

Class 9: computer software including computer software for use in the financial services industry; magnetic data carriers; cards, all being magnetic or encoded; smart cards; data processing equipment and apparatus

Class 36: financial, loan and insurance services; providing payment option programs including those to customers of retailers; credit services; credit card, charge card, cash card, payment card and debit card services; payment services including payment option programs for customers of retailers

2. The Trade Mark was advertised accepted on 4 October 2018. A Notice of Intention to Oppose was filed on 15 November 2018 by Zipmoney Payments Pty Ltd (‘The Opponent’). On 21 January 2019, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) was deemed adequate on 3 January 2019, and nominates the grounds of opposition ss 41, 58 and 62(a). The s 58 ground of opposition was abandoned in the written submissions.

Evidence

3.    Summary of evidence received from the parties:

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
T Mermelshtayn	Opponent	EIS	24 April 2019	1-10	Mermelshtayn Declaration
A Cade	Applicant	EIA	29 July 2019	1-8	Cade Declaration
T Graham	Applicant	EIA	Annexure 7 to Cade Declaration	1-16	Graham Declaration

The declarations annex evidence which includes copies of: web search results, confidential sales figures, brochures, in store displays, signage, screenshots of websites and social media, as well as copies of video and radio advertisements.

4.     Written submissions were received from both parties.  Only the Applicant attended the hearing electronically.

Onus and Standard of Proof

5.    The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.0F0F0F[1]  The Opponent bears the onus of proof in an Opposition Hearing.1F1F1F[2] 

6. For the purpose of s 41 the relevant date is 24 November 2016.

Grounds of Opposition

Section 41 – Trade mark not distinguishing of applicant’s goods or services

[1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

1. Section 41 of the Act provides:

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:       For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)the time of production of goods or of the rendering of services.

   Note 2: For goods of a person and services of a person see section 6.

   Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the by the predecessor in title (see subsection 7(3) and section 8).

2. Evidence of use is available and the legislative provisions related to use will be applicable. 9F9F9F[3]  To determine an inherent capability to distinguish I am required to look at the mark itself and then examine the proposed application to the Applicant’s goods and services.10F10F10F[4] 

   Inherent Capacity to Distinguish

   [3] s 41(3) and (4).

   [4] Cantarella Bros v Modena Trading [2014] HCA 48.

3. The s 41 test for the inherent adaptation of a trade mark to distinguish the designated goods from those of other traders was set out by Justice Kitto in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd:11F11F12F[5]

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   [5] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72 [555].

4. In Clark Equipment Co v Registrar of Trade Marks, Kitto J also said:13F13F13F[6]

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

   [6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 513–14; [1964] HCA 55; [1965] ALR 344 at 345–6, per Kitto J.

5. The Opponent filed the Mermelshtayn Declaration which asserts:

   ·A dictionary definition of ‘interest’ and a need for others to use the descriptive term.

   ·Examples of use by others of the term ‘No Interest Ever’.[7]

   ·Google search results for the term ‘No Interest Ever!’. 

   [7] Mermelshtayn Declaration, Annexures Four and Five.

6. Point of sale financial products are highly popular.  The Applicant submitted that the use of an exclamation mark is distinguishing, as well as the improper grammatical form and syntax of the term. [8]   I do not accept those submissions, those submissions do not reflect the use in spoken word or memorability of the term.  There is no evidence before me to establish how the term is recalled by the relevant consumers and I find that the term is purely descriptive of the goods and services for which the Applicant seeks registration.

   [8] Applicant Submissions, 4.5(o).

7. The High Court stated in Cantarella Bros Pty Limited v Modena Trading Pty Limited:15F[9]

   After stating that "[w]ealthy traders are habitually eager to enclose part of the great common of the English language" (which echoed their Lordships in the Solio Case), Cozens-Hardy MR explained why no monopoly could be granted under s 9(5) for laudatory epithets used as adjectives. Words such as "good" or "best" are incapable of developing a secondary meaning as indicating only an applicant's goods. Accordingly "Perfection" was not registrable as a trade mark for soap as it was a word which should be open to use by both other traders and members of the public.

   [9] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [36].

8. The ordinary signification of the Trade Mark is a laudatory phrase and when applied to the goods and services. There is an implication of a desirable feature, namely, a financial convenience. The Applicant’s goods and services are financial add on products and services associated with a wide range of other goods and services. I am satisfied the Trade Mark is a word that other traders would desire to use without improper motive to describe their own similar goods. For s 41, evidence is not required to persuade me that this is a term others would wish to use, but the Opponent’s evidence in this matter does establish that to a high standard because there are examples of other traders using the Trade Mark at various times.[10]  I find the Trade Mark is purely laudatory does not have any inherent capacity to distinguish.  

   [10]Mermelshtayn, Annexures Three and Five.

9. I am satisfied that a ground for rejection applies, this is not fatal to the application. Pursuant to s 41(3), I may consider the Applicant’s evidence of use prior to the filing date.

   The Applicant’s Evidence

10. In summary the Applicant makes the following claims:

    ·     Established in 1989 as a cheque guarantee company named Transax Australia Plc.

    ·     Acquired by Equifax Pty Ltd in 2001 and re-named Certegy Ezi-Pay.

    ·     In 2002 the Applicant launched a payment scheme under the trade mark NO INTEREST EVER![11]

    ·     The Applicant claims use on materials including online, social media, bill boards, flyers, in store displays, stationary, correspondence, radio advertisements and television commercials.

    ·     The Applicant also asserts that the Trade Mark is displayed prominently on a website which resolves at the domain Other Marks

    17.   The Applicant is the owner of the following marks (‘Applicant’s Other Marks’):

    [11] Mermelshtayn, Exhibit 10.

Trade Mark Number	Status	Trade Mark
903826	Registered	CERTEGY EZI-PAY
922271	Registered
1811602	Lapsed-not accepted
893544	Registered	CERTEGY
1296893	Registered
1259607	Lapsed-not accepted

Use of a tagline and use of a trade mark

1. Correspondence filed by the Applicant includes a letter to Peter Gray dated 27 September 2016 this letter consistently refers to the Applicant’s entity as ‘Certegy’, the first paragraph categorises the Trade Mark as a ‘phrase’ as well as a ‘tagline’ several times.[12]  While it is possible for a tagline to be registered as a trade mark it is difficult.  There must be independent and standalone use of the tagline as a trade mark pursuant to s 7.

   Evidence of Use pursuant to s 41(3)

   [12] Cade Declaration, [6].

2. To overcome the s 41(3) ground of opposition evidence that the Trade Mark has been used before the priority date in respect of all of the Applicant’s goods and services must be before me. The evidence must show the Trade Mark had, through use, acquired distinctiveness as at the filing date of the application. The Applicant will not overcome the s 41(3) ground of opposition if there has been insufficient use of the Trade Mark in respect of the Applicant’s goods or services or, a subset of the Applicant’s goods or services. Many of the advertisements before me use ‘No Interest Ever’ as a product name or description, the term is linked to many goods and services. In the evidence before me the Trade Mark appears almost exclusively with the Applicant’s Other Marks.[13]

   [13] Exhibit Movie 7; see [18].

3. Material has been filed ostensibly to show the extent of use, however from the very first example it is clear the term ‘no interest ever’ is used in colloquial speech exactly that way in a record of an internet chat room.[14] Some of these records are from 2011 some five years before the mark appeared on the Register. The records on the Whirlpool forum consistently refer to the actual product as ‘Certegy Ezi-Pay’, ‘Ezi-Pay’, ‘Ezi’ and ‘Certegy’ there is no use of the Trade Mark shown pursuant to the Act.[15]  The internet chat rooms to not show use of a Trade Mark, on or in relation to the Applicant’s goods and services, in the course of trade before the filing date.

   [14] Mermelshtayn Declaration, Annexure Two pp.1.

   [15] Ibid pp 6-8; s 7.

4. There is a sole example of use of the Trade Mark without the presence of the Applicant’s Other Marks.[16]  A copy of a badge shows the words: ‘Ask  me about our Payment Plan’ around the perimeter, as well as ‘No Interest Ever!’ in the centre.  I am not persuaded this is use as a Trade Mark, this is an invitation to speak to the person wearing the badge who is likely to discuss or give further material containing ‘Certegy’ because there is no other collateral without the Applicant’s Other Marks.

   [16] Cade Declaration, pp 62, see ‘(f)’.

5. Similar stickers from five years earlier in 2002 contain the Certegy Mark, presumably these are used in the same way but there is no information before me in relation to how or by whom the items are utilised.[17]  The use shown in the evidence does not overcome the threshold for ‘limping use’ or distinguish this application from the facts in Phillips Electronics v Remmington.[18]

   [17] Ibid. at (g).

   [18] Philips Electronics NV v Remington Consumer Products (1997) 40 IPR 279.

   Internet Search Results as Use

6. The extensive search results for the term ‘no interest ever!’ have limited probative value, there is no evidence before me as to whether the relevant consumers would recognise the term as including an exclamation mark, or truncate the search term in this way to perform a search.[19]  No information about the functionality of terms including punctuation for a Google® search has been supplied.

   [19] Mermelshtayn Declaration, Annexure 10.

7. Further evidence purports to show the ubiquitous association for internet searches between the term ‘No Interest Ever’ and ‘Certegy Ezi-Pay’.  Unfortunately for the Applicant while this does evidence a near dominance of results showing use of the Trade Mark, this evidence does not show use of the Trade Mark without the terms ‘Certegy’, ‘Certegy Ezi-Pay’ or ‘Ezi Pay’. 

8. The letter to Peter Gray dated 27 September 2016 annexes Google® results for ‘no interest ever’.  This is unlikely to be the way the reasonable consumer encounters the product. The product is an add on at point of sale for a wide variety of goods and services.  This is evidenced by the instore promotional collateral and posters.  Domination of Google® search results of a specific term for an add-on product does little to prove any customer awareness.

9. The evidence of use is impressive spanning many years including the relevant time, on a wide variety of collateral, with high expenditure reported.  There is an issue in that the goods and services are delivered as an add-on product at point of sale, often with a customer service representative recommending the product.  There is a larger problem with the evidence in the sense that the Trade Mark is not used at any time except in the presence of either the word ‘Certegy’, the Applicant’s Other Marks  or on a website which resolves at a Certegy domain.  

10. Use of a domain name is not use of a Trade Mark, but this shows that it is not possible to access the Trade Mark without the presence of the Certegy Marks.  The invoices before me show the Certegy EziPay mark.[20]  It is not possible for me to assume that there is any recognition of the Trade Mark in the absence of the Certegy trade marks or branding.

    [20] Graham Declaration, [10].

11. A copy of a Leading Edge Jewelers advertisement does not contain the Applicant’s Other Marks and does contain the Trade Mark.[21] The trade mark is in orange text and not prominent, this document is undated, there is no information about where this was displayed. I am not persuaded that this document as well as the promotional badge described above reach the required threshold for use pursuant to s 41(3).

    [21] Graham Declaration, Page 221.

12. Subsection 41(3) allows for a trade mark to be registered where it is not inherently sufficiently adapted to distinguish, but where evidence of use prior to the filing date shows the capacity to distinguish the designated goods and services.  The use must be use as a trade mark pursuant to s 7, that is, use capable of distinguishing the Applicant’s goods or services and use as a badge of origin.  The evidence before me does not meet those requirements. 

13. The Applicant’s evidence has not established that the plain word Trade Mark, NO INTEREST EVER!, was capable of distinguishing the Applicant’s goods and services at the filing date. Therefore, I find the ground of opposition pursuant to section 41 has been established.

    Decision

14. The Opponent has established a ground of opposition.  Pursuant to section 55(1), Trade Mark number 1811600 will not proceed to registration. 

15. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.

    Costs

16. Costs ordinarily follow the event for an Opposition Hearing.  No submissions have been received to displace the proposition.

17. Noting the Opponent did not attend the hearing, I direct costs against the Applicant pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Kate Doherty
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    24 September 2020