Red Tree Finance Pty Ltd

[2024] ATMO 47

TRADE MARKS ACT 1995

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

ReTrade mark applications 2317734 (36) Red Tree Finance and 2317736 (36) RED TREE FINANCE (figurative) in the name of Red Tree Finance Pty Ltd

Delegate:                 Robert Wilson

Representation:       Applicant: Moulis Legal

Decision:                   2024 ATMO 47

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of applications under s 44 – charitable fundraising services not similar to loan focussed financial services – no ground for rejection – applications accepted

Background

1. On 28 November 2022 (‘Relevant Date’) Red Tree Finance Pty Ltd (‘the Applicant’) filed applications to register the trade marks detailed below (‘Applicant’s Trade Marks’).

Application No:	2317734
Services:	Class 36: Loans (financing); Provision of consumer loans; Secured loans; Provision of secured loans; Personal loan services; Loans against securities; Loan services; Financing of personal loans; Financial loan services
Trade Mark:	Red Tree Finance
Application No:		2317736
Services:		Class 36: Financial loan services; Financing of personal loans; Loan services; Loan financing; Loans (financing); Loans against securities; Personal loan services; Provision of consumer loans; Provision of loans; Provision of secured loans; Secured loans
Trade Mark:

2. The applications were examined as required by s 31[1] and on 27 February 2023 the examiner issued adverse reports in respect of both applications. The examiner raised a ground for rejecting the applications under s 44 and cited the same two registered trade marks in each case. The cited trade marks are shown below.

[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

Application No:

2194151

Priority date:

16 July 2021

Services:

Class 36: Charitable fundraising

Class 41: Education services; Provision of training

Class 45: Bereavement counselling

 (‘Registered Services’)

Trade Mark:

Application No:

2194152

Priority Date:

16 July 2021

Services:

Registered Services

Trade Mark:

RED TREE FOUNDATION

3. The examiner indicated in her reports that she considered that the Applicant’s Trade Marks are similar to the cited trade marks ‘as all contain RED TREE as a prominent and memorable element’. The examiner further indicated her view that in the context of the services claimed the differences between the trade marks are not sufficient to prevent confusion in the marketplace. The examiner also opined that the various financial loan services claimed by the Applicant in Class 36 are similar to the charitable fundraising for which the cited trade marks are registered in the same class. The examiner indicated that the Applicant might overcome the ground for rejection if it supplied evidence under s 44(3) or 44(4).

4. On 20 June 2023 the Applicant responded to the adverse reports. The Applicant’s responses were prepared and filed by the Applicant’s representatives Moulis Legal. The responses indicated the Applicant’s view that in each case the cited trade marks were neither substantially identical nor deceptively similar to the Applicant’s Trade Marks. The Applicant also indicated its view that the Class 36 services are not similar. Other than the Applicant’s submission that the respective trade marks are not substantially identical—with which the examiner agreed—the examiner was not persuaded by the Applicant’s submissions on deceptive similarity and dissimilarity of services. The examiner issued second adverse reports on 4 July 2023 following which the Applicant requested to be heard by way of written submissions.

1. I am a delegate of the Registrar of Trade Marks, and it is in that capacity that it has fallen to me to consider the applications. In doing so I considered the material mentioned above, IP Australia’s files related to the applications, and submissions filed by the Applicant on 20 February 2024. Those submissions were prepared by Moulis Legal and were filed in accordance with a schedule for submissions issued on 1 February 2024.

The Law in respect of section 44

6. Provisions relevant to the consideration of s 44 in this matter 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.  …

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.

Section 14 – Definition of similar goods and similar services

(1)  …

(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.

7. As a starting point, for there to be a ground for rejecting one or both of the present applications under s 44, the Registrar must be satisfied that there is at least one trade mark which is not owned by the Applicant and which:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);

·     is in respect of at least some services which are similar to the Applicant’s services (‘the second requirement’); and

·     is substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the third requirement’).

Consideration of the section 44 ground for rejection

The first requirement

8. The cited trade marks both have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.

The second requirement

9. As discussed above, the examiner indicated her view that the charitable fundraising services in Class 36 of the cited trade marks is a similar service to the financial services claimed by the Applicant’s Trade Marks. There are, in my view, no other services for which the cited trade marks are registered which might be of concern; accordingly, only the charitable fundraising services will be considered further.

1. Section 14 states that services are similar to other services, ‘if they are the same as the other services’ or ‘if they are of the same description as that of the other services’. Accepted authority on the assessment of whether goods are similar provides guidance on the factors to be considered in respect of the consideration of whether services are similar.[2] The factors include the nature and characteristics of the services; the origin of the services; the purpose of the services; whether the services are usually provided by one and the same trade channel; and whether those providing the respective services are regarded as belonging to the same trade. The consideration of these factors is sometimes referred to as the ‘NUT test’ (being for nature, use, and trade channels).

   [2] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 (Burley J); McCormick & Company Inc v McCormick [2000] FCA 1335 (Kenny J).

2. The Applicant’s services are financial services of a fairly narrow scope, being related to the provision of loans. Such services are very different in nature to charitable fundraising. Loan services are typically the provision of money to customers on a temporary basis under a contractual arrangement for a fee. Charitable fundraising, on the other hand, is the seeking out and collection of voluntary financial contributions from various entities such as individuals, businesses and governments. The uses of such services are also very different as reflected by their nature. Charitable fundraising would typically be carried out by a registered charity. The examiner’s research suggested that ‘it is not uncommon for charities to offer loans’. This may well be so, however, the consideration of trade channels is but one factor which is to be considered, and it is not an overriding factor. In the present matter, the possible common trade channel is insufficient to overcome the significant differences between the nature and uses of the respective services.

3. I am not satisfied that charitable fundraising is a similar service to the Applicant’s loan focussed financial services. The second requirement is therefore not satisfied. As the second requirement is not satisfied there is no ground for rejecting the applications under s 44. It is unnecessary to the consider the third requirement.

Decision

1. I am not satisfied that there exists a ground for rejecting applications 2317734 and 2317736. Accordingly, I accept the applications.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
12 March 2024