Re: Trade mark application number 2010443 (classes 35 and 41) – composite trade mark WEST SWIM – ESSENTIAL SKILLS FOR LIFE with stylised fish device, in the name of Western Australian Swimming Association Inc.

[2019] ATMO 181

TRADE MARKS ACT 1995

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

Re: Trade mark application number 2010443 (classes 35 and 41) – composite trade mark WEST SWIM – ESSENTIAL SKILLS FOR LIFE with stylised fish device, in the name of Western Australian Swimming Association Inc.

DELEGATE:

Louise Tuohy

REPRESENTATION:

Applicant: Written submission from David Stewart, Bennett + Co.

DECISION:

2019 ATMO 181

Trade Marks Act 1995 (Cth) – Ex-parte s33(4) – s44 considered – trade

marks are deceptively similar – application rejected.  

Background

1. The following is a Decision on the Written Record pursuant to section 33(4) of the Trade Marks Act 1995 (‘the Act’).

2. The Applicant requests a Decision on the Written Record because it believes the section 44 ground for rejection raised against it’s Trade Mark application was inappropriate. While the Applicant has chosen not to submit evidence, it has provided the following statement:

We do not understand how the cited mark, consisting of the words “West”, “swim”, and a highly distinctive wyvern device, entitles the cited mark owner to a monopoly right in the words “West Swim”. These words are represented within the representation of the cited mark are not the sole distinguishing feature of the mark,  nor even the major distinguishing feature of the mark. When a highly distinctive device is added to words to form a composite mark, rights accrue to the composite, not the individual elements1.

1 Bennet + Co submission [2].

3.  The Applicant’s trade mark (‘the Trade Mark’) application was filed on 20 May 2019 in classes 35 and 41, details follow:

The Trade Mark: 2010443

Priority Date: 20 May 2019

Goods and Services:

Class 35: Organisation, management and operation of aquatic competitions; event management services

Class 41: Arranging of sporting events; arranging of sports competitions; coaching services for sporting activities; event management services (organisation of educational, entertainment, sporting or cultural events); instruction in sports; organisation of sporting activities; organisation of sporting events; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of information about sports; sporting activities; sporting information; sporting results services; sports club services; sports coaching; sports consultancy; sports education services; sports information services; sports instruction services; sports training; sports tuition; electronic publication of information on a wide range of topics, including online and over a global computer network; providing online electronic publications (not downloadable); sports club  services; association services being the provision of training and education to members of the association;  club  education  services;  educational  instruction;  educational  services; event

management   services  (organisation  of  educational,   entertainment,  sporting   or   cultural

Examination History

4. The application was examined under section 31 of the Act. The examiners first adverse report (‘the Report’) issued on 4 October 2019 and raised a ground for rejection under section 44 of the Act. The reasons outlined in the Report follow:

Cited Trade Mark Number(s): 1160531

Your trade mark closely resembles the earlier trade mark because your trade mark and the earlier trade mark contain the words WEST SWIM as memorable and identifying elements. Consumers are likely to assume that the services provided bearing the trade marks originate from the same trader or be otherwise confused.

AND

The class 41 services are the same or similar and are likely to be provided by the same trader.

5.  The examiner cited the following trade mark:

The Cited Trade Mark: 1160531

Priority Date: 9 February 2007

Goods and Services:

Class 16: Instructional and teaching materials, stationery and printed matter including indices and dividers, clip folders and binders, pens, pencils and writing instruments in this class, an advertising and promotional materials

Class 25: Clothing, footwear and headgear, including uniforms for staff and students and sporting clothes in this class

Class 41: Educational services, including services for teaching swimming and water safety; providing of training; entertainment activities, including arranging and providing special

occasion events; sporting activities, including sporting competitions and school events

Legal Framework Section 44

6. Section 44 of the Act relevantly provides:

Section 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.

(a)                  

…

7. There are three elements in section 44 and all must exist before the ground for rejection under section 44 can be raised. I discuss these elements below:

Priority date

8.  The priority date of the Cited Trade Mark is 9 February 2007 which is earlier than the priority date of the Trade Mark being 20 May 2019.

Substantially Identical Trade Marks

9.  In assessing whether trade marks are substantially identical the test stated by Windeyer J in

Shell Company of Australia v Esso Standard Oil (Australia) Ltd is applied:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison 2.

10.  On a side by side comparison the visual differences between the two trade marks are apparent. While both trade marks share the words WEST SWIM the Trade Mark consists of a cartoon device of a stylised fish wearing googles and the words ESSENTIAL SKILLS FOR LIFE, whereas the Cited Trade Mark consists of a wyvern atop of three waves. The total impression that emerges from the comparison is that they are different.

Deceptively Similar Trade Marks

11. 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.

12.  In the case of Australian Woollen Mills v F. S. Walton and Company Ltd Dixon and McTiernan JJ provided the relevant test for comparison:

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

[T]he marks ought not…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 be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded3

13.  Furthermore, where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product. Thus, similarities between the verbal features of the two marks may give rise to confusion notwithstanding that the accompanying devices are entirely dissimilar’4.

14.  In this matter, the visually prominent and common element between the two trade marks is undoubtedly the words WEST SWIM. Nonetheless, there are visual differences between the device elements contained in the respective trade marks, with the Cited Trade Mark containing a wyvern atop three waves and the Trade Mark featuring a cartoon of a smiling fish with googles. Additionally, the Trade Mark also contains the expression ESSENTIAL SKILLS FOR LIFE.

15.  However, in estimating the effect of the trade marks on the relevant consumer, the distinctive words WEST SWIM are given specific visual prominence within both trade marks, and the remaining word and device elements do not serve to sufficiently differentiate them.

16.  While I note the Applicant’s statement in relation to composite marks, I have compared the respective trade marks in their entirety and the presence of the additional elements in the  trade marks do not overwhelm the identity of the distinctive words WEST SWIM and for that reason I am satisfied that the words WEST SWIM must inform the basis for any recollection (imperfect or otherwise) of the trade marks by a potential purchaser.

3 Australian Woollen Mills v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641, [658].

4 Plantmark Pty Ltd v Wal-Mart Stores, Inc [2003] ATMO 9.

17.  In this regard, consumers are more likely to recollect and focus on the common element WEST SWIM and are likely to be deceived or confused as to the trade source.

18.  I find the overall impression of the trade marks is that they are deceptively similar.

Similarity of Goods and Services

19. Section 14 of the Act provides:

Section 14. Definition of similar goods and similar services

(1)         For the purpose of this Act, goods are similar to other goods;

(a)     If they are the same as the other goods; or

(b)    If they are the same description as that of the other goods.

(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.

20. The Applicant has not disputed that the services claimed are not the same or of the same description to the services covered by the Cited Trade Mark. However, it is important to note that the Report only mentions the conflict in services in class 41 and provided an option to overcome the problems under section 44 of the Act by amending the specification of services in classes 41 and 35 by deleting all the items claimed with the exception of “event management services” claimed in class 35.

21.  Nonetheless, the ‘event management services’ claimed by the Trade Mark in class 35 are sufficiently allied to the ‘event management services’ covered by Cited Trade Mark in class

41. Therefore the ‘event management services’ claimed by the Trade Mark in class 35 are considered to be of the same description to the ‘entertainment activities, including arranging and providing special occasion events; and sporting activities including…school events” in class 41 covered by the Cited Trade Mark.

22. The ground for rejection under section 44 of the Act apply to all the services claimed by the Trade Mark in classes 35 and 41.

Decision

23. Section 33 of the Act provides:

Section 33. Application accepted or rejected

(1)         The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)     the application has not been made in accordance with this Act; or

(b)         there are grounds under this Act for rejecting it. Note: For this Act see section 6.

(2)         The Registrar may accept the application subject to conditions or limitations. Note: For limitations see section 6.

(3)     If the Registrar is satisfied that:

(a)     the application has not been made in accordance with this Act; or

(b)         there are grounds under this Act for rejecting it; the Registrar must reject the application.

Note: For this Act see section 6.

(4)         The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note: For applicant see section 6.

24.  For the reasons stated above I am satisfied there is a ground for rejecting trade mark application number 2010443 and I hereby reject it.

Louise Tuohy Hearing Officer

Oppositions and Hearings Trade Marks and Designs 18 December 2019