Republic Home Loans Pty Ltd v the CIA Pty Ltd

[2000] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by Republic Home Loans Pty Ltd to registration of trade mark application 744530(36) - REPUBLIC HOME LOANS - filed in the name of The CIA Pty Ltd.

Background
The matter here concerns an application for registration of a trade mark filed by The CIA Pty Ltd (the applicant) on 23 September 1997.  The application seeks registration of the word trade mark REPUBLIC HOME LOANS in respect of the following services, being services in class 36:

Banking, brokerage, financial analysis, capital investment, financial clearing houses, financial consultancy, credit card services, issue of credit cards, debit card services, financial evaluation, financial information, financial management, financing services, fund investment, funds transfer, hire purchase financing, issuing of traveller's cheques, lease purchase financing, loans (financing), mortgage banking, mutual funds, savings bank, securities brokerage, stocks and bonds brokerage, trusteeship, deposits of valuables.

Acceptance of the mark was advertised in the Australian Official Journal of Trade Marks of 22 January 1998.   On 22 April 1998, Republic Home Loans Pty Ltd (the opponent) filed a notice of opposition to registration of the applicant's mark.  The notice of opposition lists a number of grounds, of which the opponent chose to rely on those relating to sections 43, 60, 58 and 62 of the Act.  The last ground requests the exercise of the Registrar's discretion in refusing the mark for registration. 

The hearing on the opposition matter was appointed in Melbourne.  A short time before the hearing, advice was received from the opponent's attorney, Mr Michael Wolnizer, of Davies Collison Cave, that he would not be representing the opponent in person, but that he proposed to file written submissions.  Those written submissions were transmitted by facsimile.  No representations, either in person or by way of written submissions, were made by, or on behalf of, the applicant. 

The evidence
The opponent's evidence in support consists of a statutory declaration, with exhibits, by George Minas, who is a director of the opponent company.  Mr Minas commenced trading as a sole proprietor of a business in about 1995, the following year arranging for the incorporation of a company which was to become the vehicle for his finance broking business.  In 1997, he had decided to use the name REPUBLIC HOME LOANS in relation to his business, which was registered as a business name on 15 July, 1997.  The name of Mr Minas' previous company was changed to Republic Home Loans Pty Ltd, which is here the opponent, on 12 August 1997.  Mr Minas gives expenses incurred on advertising and promoting his business venture under the name REPUBLIC HOME LOANS and attaches some promotional material to his declaration.  He states the number of clients awaiting finance as at November 1997 and also provides an estimate of the opponent's projected income for a period of five years generated from the services offered under the name REPUBLIC HOME LOANS.   

Mr Minas knows the managing director of the applicant company, Christopher David Rankine, with whom he has had dealings, both personally and professionally.  He had confided in Mr Rankine his proposed business venture and the choice of the name to be used in relation to his business.  Mr Rankine had drawn up a logo to be used in connection with the name REPUBLIC HOME LOANS and had expressed a desire to become a partner in the business trading under that name, which had been rejected by Mr Minas.  Subsequently, Mr Rankine and his company jointly had issued a writ against Mr Minas and his company, seeking injunction, both interlocutory and final, restraining them from using the name REPUBLIC HOME LOANS, various associated slogans and a logo.  Mr Minas says that the application was unsuccessful and the only interlocutory order issued was that, until the trial of the proceedings, the rights in the name with the associated logos and slogans not be transferred or assigned.  Mr Minas exhibits copy of the order.  He says that at no time was Mr Rankine a director of the opponent's company, nor was there ever an agreement for Mr Rankine to have a share or other interest in the company.  

The applicant did not file any evidence in answer.

The opponent's written submissions and discussion

Whether the mark will be likely to deceive or cause confusion in terms of sections 43 and 60 of the Act

The same short submissions relate to both s.43 and s.60 grounds.  These submissions  assert that, having regard to the opponent's prior use of the identical trade mark and continued use of the mark in connection with a broad range of finance services, should the applicant commence use of the subject mark, then such use could  cause deception or confusion in the market place. 

Here the opponent appears to have misinterpreted the concept of both sections of the Act.  Commenting briefly on the nature of the respective sections and the differences between them, Branson J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, observed at 434-435:

[79]   The broad provision contained in s 28(a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60.  Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion.  Section 60, which is a ground of opposition to registration is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.  

In terms of s.43, it is to be decided whether the mark possesses some connotation which, on use of the mark in relation to the designated goods or services, would be  likely to cause deception or confusion.  The section does not involve considerations of the existence of conflicting trade marks.  It focuses on the inherent nature of the mark the subject of the application.

What is understood by the term 'connotation' in s.43 was discussed at some length in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632, where the hearing officer observed, at 644:

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.           

Having assessed the applicant's mark REPUBLIC HOME LOANS in the context in which the mark is to be used, i.e. in respect of services which, fundamentally, are of a financial nature, I consider no connotation exists in the mark that would be likely to lead to deception or confusion through its use, nor has the opponent presented any evidence that that might be the case.   Accordingly, I find no justification for the ground of opposition based s.43.           

In order to challenge registration of a mark in terms of s.60, the applicant's mark must be either substantially identical with, or deceptively to, a mark (or marks) that has (or have)  acquired a reputation in Australia before the date of the applicant's mark and, because of that reputation, use of the applicant's mark would be likely to deceive or cause confusion.    

The opponent has conducted its business under the name REPUBLIC HOME LOANS, which is identical with the opposed trade mark.  The opponent's chances of success in relation to the s.60 ground depend upon the reputation residing in its mark for the services concerned before the relevant date - 23 September 1997 - the day on which the applicant filed its application, and the likely effect of that reputation on the prospective clients, in view of the  applicant's use of its mark.  Mr Minas declares that, as at the date of making of his declaration in August 1999, his company had been trading under the name for a period of over two years.  In support of the reputation of the mark, Mr Minas has listed the type of material the opponent has utilized to promote its mark.  To what extent the opponent's mark was exposed before the relevant date is impossible to assess, however, as the period of advertising and promoting the mark extends from July to November 1997, and the only sspecific indication shown in the evidence as to the clientele and the value of the services provided under the mark covers a period after filing of the subject application.   In my opinion, from the opponent's evidence presented in these proceedings, one cannot deduce that the opponent's mark had built up a reputation, which would be of significance in determining any likelihood of deception or confusion arising from  the use of the applicant's mark, before the applicant applied to register the subject mark.              

In view of the foregoing conclusions, the opponent has failed to mount a successful case in terms of s.60 of the Act. 

S.58 - applicant not the owner of the trade mark
In relation to this issue, in its written submissions the opponent has first referred me to what Dixon J said on "proprietorship", which is the same term as "ownership" under the current Act,  in Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601. The opponent has cited a summary of law on the issue of proprietorship, as stated by Deane J in Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 432-4333, stressing that a very small amount of use will suffice to establish proprietorship as, for example, had been held in Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592. Mr Minas' declaration, the opponent submits, establishes use in an identical mark to the subject mark prior to the date of the present application. The opponent's activities recited in his declaration are, the opponent says, sufficient to substantiate a proprietorship ground in light of Deane J's criterion set out in Moorgate v Philip Morris, supra. In addition, it is submitted, the applicant itself was of the view that REPUBLIC HOME LOANS  was a concept over which the opponent had ownership, as indicated in the copy of the applicant's letter exhibited to Mr Minas' declaration.  Furthermore, the opponent adds, the applicant had been unsuccessful in its interlocutory proceedings to prevent the opponent from continuing use of the mark and has shown no interest in the opposition proceedings.  

Section 58 provides that -

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

Pursuant to section 27, an application for registration of a trade mark is made by a person who is claiming to be the owner of the mark.  The section reads:

27.(1)     A persons may apply for the registration of a trade mark in respect of goods and/or services if:
   (a)   the person claims to be the owner of the trade mark; and
   (b)   one of the following applies:

(i)        the person is using or intends to use the trade mark in   relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.    

The concept of proprietorship of a trade mark was explained by McGarvie J in Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd Philip Morris Ltd (No 2) 59 ALJR 77 at 83.
…
In considering who, within s.40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas (1949) 78 CLR 601 at 625 and 627.

Thus, the person who first used the mark in Australia in respect of the relevant goods or services may claim the right to ownership of that mark.  However, in disputed claims of ownership the mark upon which the person challenging the applicant's ownership relies must be substantially identical - Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049. In addition, the goods or services for which that mark is used need to be "the same kind of thing", as enunciated by Holroyd J in Re Hicks' Trade Marks (1897) 22 VLR 636 at 640. In the present case, as I have previously indicated, the marks concerned are identical. The opponent claims to have used its mark in respect of financial services which are encompassed in the applicant's statement of services.

In the absence of any evidence that the applicant has used the mark before the date of its application for registration, for the opponent to claim any right to ownership in the mark the opponent must rely on any use that occurred before 23 September 1997.  There is no clear indication in Mr Minas' declaration as to the exact date when the opponent first provided the financial services under the name REPUBLIC HOME LOANS for the reasons I will explain below.  The opponent has submitted that the various steps taken by it before the relevant date, are sufficient to substantiate a ground based on ownership.  

It has long been established that, in determining first use of a mark a small amount of use will suffice, but that use must be shown to be trade mark use in Australia in respect of the designated goods or services - Seven Up Co v O.T. Ltd (1947) 75 CLR 203 at 211, Aston v Harlee Manufacturing Co (1960) 104 CLR 391 at 400 and Moorgate v Philip Morris, supra, at 432.  Concerning use of a trade mark to support a proprietorship claim, in Moorgate v Philip Morris, Deane J explained at 433:

The Court was referred to a large number of cases and to some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx" ; Ex parte Amalgamated Tobacco Corporation Ltd [(1951) 82 CLR at 204-205] or that the mark has been used in an advertisement of the goods in the course of trade: Shell Co of Australia v Esso Standard Oil (Australia) Ltd. [(1963) 109 CLR at 422]. In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.

The actions taken by the opponent before actually providing its services involve selecting the name REPUBLIC HOME LOANS for use in respect of finance broking business in May 1997 and subsequently registering it as a business name.  The opponent changed the name of the company Clarice Holdings Pty Ltd, under which it had previously operated, to Republic Home Loans Pty Ltd, on 12 August 1997.   In this regard, I note that in his declaration Mr Minas refers to the new name as Republic Home Loans, declaring that from the day the change of the name was effective his company offered financial services under that name.  As in the exhibited copy from the Australian Securities Commission the change of the name is identified as Republic Home Loans Pty Ltd - the name of the present opponent - Mr Minas' statement does not settle the issue of first use of the trade mark REPUBLIC HOME LOANS by the opponent. These aforementioned activities may suggest some preparation towards commencing the opponent's operation under the adopted name in connection with the financial services, but they fall short of demonstrating the opponent's firm intention to use the name REPUBLIC HOME LOANS in the trade mark sense in relation to offering its financial services to the public. 

As was held in Shell Co Australia v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 422, use of a trade mark in an advertisement constitutes use in the course of trade. However, any offer or advertisement featuring the mark must serve the purpose of soliciting trade under the mark. There is evidence that the opponent expended money on advertising and promoting the name REPUBLIC HOME LOANS during the period July to November 1997. For this evidence to have a bearing on use of the mark in relation to the opponent's services, the opponent needs to show that the mark was advertised before the relevant date in a manner so as to attract clients seeking its financial services. I could not find evidence in the exhibits to Mr Minas' declaration that satisfy this requirement to the extent that the evidence fails to indicate that any of the promotional and adverting material had been circulated to the interested public before 23 September 1997. Where the dates appear in print on the promotional material, for example, on the pamphlets in relation to interest rates, those dates are well past the relevant date.                     

In relation to the ownership question, my attention has also been directed to copy of a letter of recommendation from Mr Rankine to Mr Minas and his wife (exhibited by Mr Minas). The opponent submits that by the words "Their latest venture, Republic Home Loans is, put simply, a great vision", the writer has acknowledged that, in  creating the "Republic Home Loans" concept, the opponent had ownership rights in it, which included the intellectual property rights subsisting in the name.  The opponent has also requested to take into consideration the fact that the applicant's interlocutory proceedings to prevent the opponent from continuing to use the mark REPUPBLIC HOME LOANS had failed.     

These are considerations which might have assisted the opponent's case in challenging the applicant's ownership right to the mark,  had the opponent successfully established prior use of its mark within the guidelines postulated by Deane J in Moorgate v Philip Morris, supra.   As the matters stand, I can give them no weight. 

I find then that the opponent has not been able to substantiate its alleged claim to ownership of the identical mark.  Accordingly, the opposition as it related to s.58 of the Act fails.

S. 62 - the application was defective etc.
 The opponent has submitted that the applicant knowingly made a false claim to proprietorship of the mark and that the act of filing the application therefore amounts to a false claim (and hence representation) to ownership.  The submissions emphasize that at no time was there any partnership arrangement between the parties concerned, and that the opponent had engaged the applicant's services as a marketing and advertising consultant.  The evidence demonstrates, the opponent says, that the applicant had full knowledge of the opponent's activities under the REPUBLIC HOME LOANS trade mark and its efforts to commercialise the name.  In these circumstances it must be the case, it submits, that the subject mark was filed in bad faith and that the claim to proprietorship was false.  The applicant's acknowledgment (in Mr Rankin's letter to which I have referred in relation to the s.58 ground), the opponent maintains, is extremely persuasive evidence of these assertions.  Not only is  the application made in bad faith, it continues, but it also arguably constitutes a breach of fiduciary duty which the applicant owed to the opponent by virtue of the relationship of the applicant as the marketing and advertising consultant. 

Section 62 reads:

62.  The registration of a trade mark may be opposed on any of the following grounds:

(a)that the application, or a document filed in support of the application, was amended contrary to this Act;

(b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

The opponent's s.62 ground of opposition is based on paragraph (b) of the section.  I cannot accept the opponent's allegation expressed in its submissions.   In light of the opponent's evidence, it would appear that Mr Rankine had been on friendly terms with Mr Minas and was aware of the opponent's business plans and his choice of the name REPUBLIC HOME LOANS to be used in connection with the business.  Mr Rankine was instrumental in the preparation of a logo to be used with that name.   However, I have found the opponent has not been able to establish its ownership claim to the trade mark REPUBLIC HOME LOANS at the date of the present application.  In my view therefore, there is no substance in the allegation that at the time of making its application the applicant knowingly made a false claim, in terms of s.27 of the Act, as being the owner of the mark.  It follows that the opponent's ground based on para.62(b) must be dismissed.    

Registrar's discretion
In relation to this issue, the opponent has submitted that, having regard to prior and continuous use of the mark by the opponent, the applicant's false claim to ownership of the mark and its lack of faith in applying to register the mark in the knowledge of the opponent's use of an identical mark, the application should be refused for all the services specified in the application. 

The onus is on the opponent to convince the Registrar of the validity of the grounds of opposition raised in the notice of opposition.  It will be obvious from my earlier findings that the opponent did not present sufficient evidence in order to make a case in terms of sections 58 and 62, the grounds upon which it relies in seeking the Registrar's discretion to refuse registration of the subject mark, nor has the opponent convinced me that, for reasons based on any of the other grounds of opposition, the mark should not be allowed to proceed to registration.

Conclusion
In view of the foregoing, I have found that the opponent has failed in respect of the grounds of opposition upon which it relied.  Consequently, I dismiss the opposition and direct that the mark of application 744530 be registered.

Vija Zars
Hearing Officer

6 September 2000