Real Estate Institute NSW Ltd v Hollard Insurance Company Pty Ltd

[2017] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by The Real Estate Institute of New South Wales Limited to applications under section 92 of the Act by The Hollard Insurance Company Pty Ltd to remove trade mark numbers 992799(35, 36) - REALCOVER - in the name of The Real Estate Institute of New South Wales Limited

And

Re:Opposition by The Hollard Insurance Company Pty Ltd to registration of trade mark application 1615973(35, 36) - REALCOVER - filed in the name of The Real Estate Institute of New South Wales Limited.

Delegate:

Jock McDonagh

Representation:

REI NSW: Julian Cooke and David Larish of Counsel, instructed by Tress Cox

Hollard: Andrew Fox of Counsel, instructed by Addisons

Decision:

2017 ATMO 15

Trade Marks Act 1995 (Cth) Section 92 opposition – s92(4)(b) ground for removal - opponent established use in good faith in Class 36 – trade mark to remain on register – trade mark to be removed in Class 35

Trade Marks Act 1995(Cth) Section 52 opposition: sections 42, 44, 58, 59 and 60 pressed – no grounds of opposition established – trade mark to proceed to registration.

Background

1. This decision is pursuant to ss 92 and 52 of the Trade Marks Act 1995 (‘the Act’), wherein the parties have opposed applications made by each other: one being an application to remove a registered trade mark and the other being an opposition to the registration of an applied for trade mark.

2. Pursuant to s 92, The Hollard Insurance Company Pty Ltd (‘Hollard’) has applied to remove the registered trade mark detailed below. The Real Estate Institute of New South Wales Limited (‘REI’) has opposed the application to remove the registration below.

   Trade mark:   (‘the registered trade mark’)

   Registration no.:             992799

   Owner:                The Real Estate Institute of New South Wales Limited

   Filing date:  11 March 2004

   Services:Class 35: Advertising, business management, business administration, office functions

   Class 36: Insurance, real estate affairs.

3. Pursuant to s 52, Hollard has opposed registration of the trade mark detailed below, filed by REI:

   Trade mark:   (‘the application trade mark’)

   Application no.:               1615973

   Filing date:  7 April 2014 (also ‘the priority date’)

   Services:Class 35: Advertising, business management, business administration, office functions

   Class 36: Insurance, real estate affairs.

4. The parties filed evidence supporting their cases in due course (discussed in more detail later in this decision). Some of the evidence filed in the two matters is the same in both, with that of Mr Grainger being identical in both and that of Mr Clarke being very similar.

5. REI requested on 26 April 2016 that the matters be considered together and heard in Sydney. Hollard did not object to those requests and both matter were set down for a combined hearing in Sydney. The hearing was allocated to me, as a delegate of the Registrar of Trade Marks.

6. I heard the matter on 21 September 2016 in Sydney.  Julian Cook and David Larish, both of counsel and instructed by Tress Cox Lawyers, appeared for REI by video link. Hollard was represented by Andrew Fox of counsel, instructed by Addisons Lawyers.

   Evidence

7. The parties filed and served the following declarations in evidence in the removal matter:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Anthony James Grainger	Chief Operating Officer Realcover Insurances Pty Ltd (‘Realcover’)	1.09.15 “Grainger 1”	AJG-1 to AJG-23
Evidence in Answer
Timothy Paul Clarke	Senior Associate Addisons	22.12.15 “Clarke 1”	TPC-1 to TPC-13
Evidence in Reply
Anthony James Grainger	Chief Operating Officer Realcover Insurances Pty Ltd	7.03.16 “Grainger 2”	AJG-1 to AJG-18

1. The parties filed and served the following declarations in evidence in the opposition matter:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Anne Grobler	Head of Marketing of Hollard	9.05.15 “Grobler”	AG-1 to AG-31
Evidence in Answer
Anthony James Grainger	Chief Operating Officer Realcover Insurances Pty Ltd	1.09.15 “Grainger 1”	AJG-1 to AJG-23
Evidence in Reply
Timothy Paul Clarke	Senior Associate Addisons	8.12.15 “Clarke 2  ”	TPC-1 to TPC-13

1. In its written submissions filed prior to the oral hearing REI sought to have Grainger 2 considered as evidence in the opposition matter, under either Reg 21.19 or 21.15 of the Trade Marks Regulations 1995 (‘the Regulations’). Hollard did not concur with this.

2. Strictly speaking, Reg 21.19 is applicable only where the Registrar intends to use material that is unknown to one of the parties. Here, although the parties are prosecuting two different actions, the actions are closely related and part of a single strategy being pursued by Hollard. Hollard’s legal representatives are aware of Grainger 2, which would have surely been considered by them when considering their design for the execution of the overall hearing.

3. I consider that to ignore Grainger 2 in the opposition phase of the hearing while considering it in the removal phase would be overly technical  and not allowing proper consideration of the matter as required with the philosophy espoused in Reg 21.16 (6). Therefore, I shall take Grainger 2 into account for both phases of the hearing.

4. In written submissions filed before the hearing, and in person at the hearing itself, REI’s legal representatives advised that they would not be defending the removal of the registered trade mark in Class 35, nor the opposition to the application trade mark in Class 35. Later in this decision, I shall make formal decisions reflecting this advice.

   The Opposition to the Removal Application

5. Section 92 relevantly states:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   (a)… ;

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

6. Section 100(1)(c) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s.92(4)(b), which it may do by, inter alia, establishing that the trade mark, (or, per s 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used in good faith during the relevant period.  I proceed on the basis that the relevant standard of proof is on the balance of probabilities.

7. REI submitted, and Hollard accepted for the purposes of the removal application only, that use of the application trade mark would constitute use of the registered trade mark ‘with additions or alterations not substantially affecting’ the identity of the registered trade mark. I concur with this approach and will proceed on that basis.

8. The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[1].  A single bona fide use of the trade mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[2].  However, Wilberforce J, in Nodoz Trade Mark[3], said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”

   [1] [1982] FSR 72

   [2] [2001] FCA 261; (2001) 51 IPR 149 at [17]

   [3] (1962) RPC 1 at 7.

9. As the application for removal was filed on 23 December 2014 the relevant period (‘the relevant period’) for the purposes of s 92(4)(b) is the three years ending on 23 November 2014.

10. REI’s case was that its evidence establised that the registered mark was used during the relevant period by Realcover and Arthur J Gallagher, both of whom were authorised users of the registered trade mark.

11. Having taken into account the evidence of Grainger 1 and Grainger 2 regarding the business arrangements between REI and Realcover, and Realcover and Arthur J Gallagher, I am satisfied that Realcover is an authorised user of the registered trade mark pursuant to s8 of the Act. I am further satisfied that as agent of its principal Arthur J Gallagher’s use of the registered trade mark is also authorised use.

    20.   Hollard accepted that Realcover and Arthur J Gallagher genuinely used the registered trade marks during the relevant period in respect of professional indemnity insurance for real estate agents.

12. However Hollard did not accept that such use was in respect of Class 36 services described as ‘insurance, real estate affairs’.

13. Further, Hollard did not accept that the use by Realcover and Arthur J Gallagher amounted to use by REI in respect of either ‘insurance’ or ‘real estate affairs’.

14. Counsel for Hollard submitted that the use of the registered trade mark for professional indemnity insurance did not amount to ‘insurance’, which Mr Fox submitted was general insurance, or insurance generally but not limited in any way.

15. Mr Fox also submitted that ‘real estate affairs’ had not been defined or construed by REI; however, it did not encompass the insurance services provided by REI or its subsidiaries and agents.

16. Unlike counsel for Hollard, I am satisfied that Grainger 1 and Grainger 2 establishes that as well as professional indemnity insurance and public liability insurance for real estate agents, services provided to the real estate industry include landlord insurance, home and contents insurance, ‘office pack’ insurance, management liability insurance and motor vehicle insurance.

17. The International (Nice) Classification of Goods and Services shows in its heading for Class 36 ‘Insurance; financial affairs; monetary affairs; real estate affairs’. The online explanatory notes provide, inter alia, ‘this class includes activities relating to finance, real estate transactions and insurance. If a service affects the movement of money, investments in the form of money, insurance, or real estate, it is classified in Class 36’.

18. The insurance services established to have been provided by REI through its authorised users plainly fit the Nice classification.

19. Having regard to Grainger 1’s explanation of the role of REI in providing providing services to the real estate industry in New South Wales along with the supporting annexures, I am satisfied that the kind of insurances provided to members of the real estate industry is incidental to their dealing in real estate transactions. Therefore, it follows that the services are of a kind described in paragraph 26 above.

20. Therefore I am satisfied that REI has established that the registered trade mark with additions or alterations not substantially affecting its identity, was used in good faith on its Class 36 services during the relevant period.

21. Therefore, the registered trade mark is to remain on the Register in respect of all Class 36 services. As discussed earlier, the registered trade mark is to be removed from the Register for all services in respect of which it is registered in Class 35.

    Decision and Direction Trade Mark Registration 992799

22. Section 101 of the Act relevantly provides:

    101Determination of opposed application—general

    (1)Subject to subsection (3) and to section 102, if:

    (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b)the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods to which the application relates.

23. I have decided that the registered trade mark is to remain on the Register in respect of all Class 36 services. However, the registered trade mark is to be removed from the Register for all services in respect of which it is registered in Class 35.

24. Absent an appeal from either party filed within the required time, I direct that the Class 35 specifications be removed in their entirety.  If such an appeal is filed, the disposition of the application for removal should be in accordance with the Court’s order or direction.

    The Opposition to Registration of Application 1615973

25. I shall deal with each of the grounds of opposition in the same order as argued in Hollard’s submissions.

    Section 58: Applicant not owner of trade mark

26. Section 58 of the Act is reproduced below:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

27. The applicable law regarding ownership of a trade mark in Australia is well known.  As discussed by Hearing Officer Michael Kirov it in L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 at [18]:

    The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[4] (or in relation to goods considered to be “the same kind of thing”).[5]

    [4] Seven Up Co v OT Ltd (1947) 75 CLR 203.

    [5] Re Hicks’ Trade Mark (1897) 22 VLR 636.

28. The reference to a trade mark includes one that is at least substantially identical to it[6].

    [6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

29. Substantial identity was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (Shell)[7] by Windeyer J:

    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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

    [7] (1961) 109 CLR 407 (at 414-415).

30. The application trade mark is substantially identical to the registered trace mark, which is owned by REI. The application trade mark is not substantially identical to any of Hollard’s cited marks.

31. Hollard has not established this ground of opposition.

    Section 59: Applicant not intending to use trade mark

32. Section 59 of the Act provides:

    59Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)to use, or authorise the use of, the trade mark in Australia; or

    (b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

33. Hollard must establish that, as at the priority date of the applications (7 April 2014), REI did not intend to use or authorize the use of that trade mark in Australia. That intention need not be an intention to use the mark ‘immediately or within any limited time’.[8] The act of filing an application is prima facie evidence of an intention to use a mark.[9] In Intel Corporation v Magnatex International Pty Ltd[10], Hearing Officer Homann said:

    It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgement of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.

    [8] Ritz Hotel Ltd v Charles of Ritz Ltd (1988) 15 NSWLR 158 at 203.

    [9] Kimberly-Clark Worldwide Inc v Goulimis (2008) 78 IPR 612 at [10].

    [10] (1998) 41 IPR 406, at 412.

34. In his submissions, counsel for Hollard stated that the intention of REI to use the application trade mark in regard to professional indemnity insurance for real estate agents was insufficient intention to cover the services in the mark’s specification.

35. Grainger 1 demonstrates to me that REI’s intention from 2009 was to ‘refresh’ the registered trade mark (used since 2004) and continue to use the application trade mark in exactly the same way. As discussed, this has been in regard to professional indemnity insurance and public liability insurance for real estate agents, services provided to the real estate industry including landlord insurance, home and contents insurance, ‘office pack’ insurance, management liability insurance, and motor vehicle insurance.

36. The insurances provided to members of the real estate industry has been incidental to such members’ dealing in real estate transactions, and thus amounts to real estate affairs. I am satisfied that REI has demonstrated the requisite intetion as the priority date of the applied for trade mark.

37. This ground of opposition has not been established.

    Section 44 Identical etc. trade marks

38. So far as is relevant, section 44 provides:

    44Identical 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)… ; 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) …;

    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)…

1. Under this ground Hollard must first establish that the trade mark application or registration that it relies upon has an earlier priority date. Secondly, it must establish that this trade mark contains similar services, or closely related goods[11]. Thirdly, it must establish that this trade mark is substantially identical with, or deceptively similar to, the application for a trade mark.

   [11] Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J.

2. In pursuit of this ground Hollard referred collectively to its ‘family’ of 15 registered trade marks listed in Grobler at [12]. Hollard focused on three representative trade marks, the details of which are as follows:

Registration Number	Trade Mark	Classes	Priority Date
1675623	Class 36: Insurance; financial affairs; monetary affairs	2.02.2005
1341930	REAL INSURANCE	Class 16: Printed matter relating to insurance Class 36: Accident insurance; administration of insurance business; administration of insurance plans; arranging of insurance; home contents insurance; household insurance services; information services relating to insurance; insurance; insurance administration; insurance arranging services; insurance claim assessments; insurance claim settlements; insurance for property owners; insurance information; insurance of buildings; insurance relating to property; insurance services; insurance services relating to property; insurance services relating to travel; insurance services relating to vehicles; insurance underwriting; life insurance; life insurance underwriting; motor insurance; motor vehicle insurance services; personal insurance services; providing information, including online, about insurance, financial and monetary affairs and real estate affairs; provision of insurance information; travel insurance; vehicle insurance services; insurance management services Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.	22.01.2010
1461653	REALSURE	Class 36: Insurance broking	25.11.2011

1. I have already dealt with the issue of substantial identity at [42]. My conclusion is the same for this ground of opposition.

2. As regards deceptive similarity, it is defined in section 10 of the Act:

   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. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, 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" (1937) 58 CLR, at p 658.

4. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said: 

   You must take the two words. You must judge of them, both by their look and by their sound. 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 of the respective owners of the marks.

5. The standard which is applied to the assessment of whether the trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

6. The trade marks upon which the Opponent relies all contain the word REAL (or MYREAL), while many also contain the word INSURANCE. Other ‘family’ marks included descriptive elements such as PAYASYOUDRIVE, HOME&CONTENTS, CAR, POLICIES, PORTAL, ROYALTIES, DEALS, VAULT and INFO.

7. The word REAL is a common English word, often used in trade marks and is not inherently descriptive. As pointed out in Grainger 1 at [35], the word appears in 449 times for Class 36 in the Register.

8. I do not consider that the word REAL can be considered the dominant feature in the application trade mark. Indeed, no component of the mark on its own is an essential feature. The composite mark as a whole provides the distinctiveness of the application trade mark.

9. I note also that despite the applied for trade mark being substantially identical to the registered trade mark and having been used extensively used in Australia since 2003, there is no evidence of actual confusion between it and any of Hollard’s trade marks.

10. I consider that there are significant visual, aural, and conceptual differences that are relevant to the assessment of how a person would recall the respective marks. Even allowing for imperfect recollection, there are sufficient differences to enable distinction.

11. I am not satisfied that there is a reasonable likelihood of deception or confusion if the application trade mark was registered or that there is a real likelihood that some people will wonder or be left in doubt about whether services in question come from the same source. The ground of opposition under section 44 has not been established.

    Section 42(b): Trade mark’s use contrary to law

12. Section 42 of the Act relevantly provides:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    […]

    (b)its use would be contrary to law.

13. Hollard put forward two separate arguments in support of this ground.

14. The first argument was to the affect that REI would breach the Insurance Act 1973 (Cth) if it were to provide insurance generally and other than in respect of its Australian Prudential Regulation Authority (‘APRA’) authorization. Also the registration under Class 36 for ‘insurance’ would be a false and misleading representation that REI or its authorised users have APRA authorization to provide all insurance services, rather than the limited authorisation currently held for professional indemnity insurance and public liability insurance.

15. I do not accept this line of reasoning. It would not be the use of the trade mark that would be contrary to law but the provision of services without authorisation. The authorisation could conceivably be obtained from APRA upon request.

16. The second argument was that use by REI of the word REAL as part of its trade mark in the provision of insurance services would convey to consumers that it is affiliated with, or has the sponsorship or approval of Hollards, which it does not. This would constitute the tort of passing off and/or contravene the Australian Consumer Law.

17. Such a ground will not be made out in circumstances where an opponent has been unable to establish the s60 ground: for example see Watches of Switzerland v Mappin & Webb Lt.[12] and see my discussion below.

    [12] (2015) 111 IPR 568 at [67].

18. This ground of opposition has not been established.

    Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

19. 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.

    Note:For priority date see section 12.

20. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

21. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (“McCormick”)[13] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [13] (2000) 51 IPR 102

22. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

23. Hollard has provided evidence of extensive use of a ‘family’ of REAL marks in Australia since February 2005: Grobler [15] and [22]. I note that the dominant features of Hollard’s family of marks are the word REAL (generally, but not always, rendered in lower case)  along with a large lower case ‘r’ with a ‘shadow’ of a lower case ‘I’: for example see registration 1675623 in the table at [52], above.

24. While Hollard does not specify any particular trade mark, it is clear that there is a family of REAL marks and there is consumer appreciation in Australia of the products provided under those marks. I am satisfied that Hollard’s REAL marks have the required reputation.

25. However, I am not similarly satisfied that the reputation would lead to the application trade mark causing deception or confusion. While similarity of marks is no longer required under s60, I consider that the dissimilarity of the trade marks is such as to militate against deception or confusion.

26. As I have already noted, the registered trade mark and the application trade mark have been in use for a number of years, yet there is no evidence of any confusion in the marketplace. REI’s target consumers may well be also seeking other forms of insurance as provided by Hollard; however, I consider that the conceptual differences in the competing marks are such that deception or confusion is unlikely.

27. The ground of opposition has not been established.

    Decision Registration 992799

28. Section 101 of the Act relevantly provides:

    101Determination of opposed application—general

    (1)Subject to subsection (3) and to section 102, if:

    (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

    (b)the Registrar is satisfied that the grounds on which the application was made have been established;

    the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

29. I have decided that the registered trade mark 992799 is to be removed from the Register for Class 35 services.

30. The grounds for removal have not been established in regard to the Class 36 services and I therefore refuse to remove registered trade mark 992799 in Class 36.

    Decision Application1615973

31. Subsection 55(1) of the Act requires me to decide either to refuse to register the trade mark, or to register the trade mark (with or without conditions or limitations) in respect of the 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.

32. The Opponent has not established any of its grounds of opposition in relation to the Class 36 services. The opposition is established in relation to the Class 35 services.

33. I refuse to register trade mark application 1615973 in Class 35.

34. Trade mark application 1615973 may then proceed to registration in Class 36 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 the appeal has been dismissed or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

35. Both parties claimed their costs. REI has been substantially successful in relation to the application for removal of the registered trade mark in that it remains on the Register in Class 36. Likewise, REI has achieved registration of the application trade mark in Class 36.

36. Costs usually follow the event. I award costs against Hollard in accordance with Schedule 8 of the Trade Marks Regulations 1995.

    Jock McDonagh

    Hearings Officer

    Trade Marks Hearings

    22 February 2017