Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd

[2019] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by Riding for the Disabled Association of Australia Limited to registration of trade mark application 1700826 (class 41) - PONY CLUB AUSTRALIA with device - in the name of Pony Club Australia Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Joanna Lawrence and Ivy King of Ashurst Applicant: Ian Horak of Counsel instructed by Ian Drew and Jarrod Lichtblau of Davies Collison Cave
Decision:	2019 ATMO 63 – Opposition under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 42(b), 44, 58 and 60 considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This is an opposition to registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’). Relevant details of the opposed mark are set out below:

   Application number:              1700826

   Applicant:Pony Club Australia Incorporated (‘Applicant’)

   Priority date:  2 July 2015 (‘Relevant Date’)

   Trade mark:   (‘Trade Mark’)

   Specification of services:       Class 41: Arranging of exhibitions for educational purposes; Conducting of educational conferences; Conducting of educational courses; Conducting of exhibitions for educational purposes; Dissemination of educational material; Educational advisory services; Educational assessment services; Educational consultancy services; Educational instruction; Educational seminars; Educational services; Event management services (organisation of educational, entertainment, sporting or cultural events); Management of educational events; Organisation of exhibitions for cultural or educational purposes; Provision of educational courses; Provision of educational information; Publication of educational materials; Setting of educational standards; Horse riding instruction; Horse riding schools; Horse training (‘Applicant’s Services’)

2. This application was examined and then accepted for possible registration. The acceptance was advertised on 24 December 2015. Riding for the Disabled Association of Australia Limited (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark on 24 February 2016 and a Statement of Grounds and Particulars (‘SGP’) on 24 March 2016. The Applicant replied with a Notice of Intention to Defend on 22 April 2016. This office then invited the Opponent to file evidence in support of its opposition.

3. The Opponent filed its evidence in support on 8 August 2016. The parties then made a joint application for a cooling-off period on 12 December 2016. The cooling-off period was recorded by this office, effectively placing the opposition on hold and deferring the Applicant’s due date for filing evidence in answer. The parties jointly requested an extension of the cooling-off period on 13 June 2017 out to the maximum of 12 months permitted by the legislation. After the cooling-off period had ended the Applicant filed its evidence in answer in three parts, the first declaration came in on 25 January 2018 with the balance of the Applicant’s evidence arriving four days later. The evidence stages were rounded off by the filing of the Opponent’s evidence in reply to the Applicant’s evidence, filed on 3 April 2018.

4. With the opposition in a state to be heard, this office invited the parties to request an oral hearing. The Applicant obliged by paying the hearing request fee on 30 April 2018. A hearing date was eventually scheduled for Canberra on 19 November 2018, and I was allocated to hear and decide the opposition in my capacity as a delegate of the Registrar of Trade Marks. I wrote to the parties on 18 October 2018 reminding them of their obligations to file a written outline of submissions prior to the hearing and inviting the Opponent to pay an attendance fee so that it could also attend the upcoming hearing. The Opponent made this payment on 22 October 2018, and the hearing went ahead before me as scheduled with both parties in attendance. Making submissions for the Applicant was Ian Horak of Counsel, instructed by Ian Drew and Jarrod Lichtblau of Davies Collison Cave. The Chief Executive Officer of the Applicant, Catherine Ainsworth, also attended the hearing. Representing the Opponent at the hearing was Joanna Lawrence, Counsel and Ivy King, Lawyer both at Ashurst.

   Evidence

5. The evidence filed in relation to this opposition consists of the following declarations:

   Evidence in support

   Karen Aspery, Executive Officer of the Opponent, made 5 August 2016 with annexures KA-1 to KA-20.

   Ariella Stone, State Office Manager of the Opponent, made 2 August 2016.

   Indira Narain, State Office Administrator of the Opponent, made 2 August 2016.

   Evidence in answer

   Catherine Ainsworth, Chief Executive Officer of the Applicant, made 25 January 2018 with exhibits CA-1 to CA-21.

   Emma Lipscombe, Managing Director and Editor of HorseWyse magazine, made 24 January 2018.

   Melissa Churches, Managing Director of Neptune Apparel, made 24 January 2018.

   Tanya McDermott, Manager of the Harness Education and Rehoming Opportunities program of Harness Racing Victoria, made 23 January 2018.

   Sarah Jade Green, digital and graphic designer, made 29 January 2018 with exhibits SJG-1 and SJG-2.

   Evidence in reply

   Karen Aspery, Executive Officer of the Opponent, made 3 April 2018 with annexures KA-21 to KA-24.

6. The declarations of Mses Stone and Narain provide their account of the discovery of use of the Trade Mark by the Applicant. Ms Narain found it on a social media website during her regular work duties and reported it to Ms Stone, who then reported it on to the Opponent’s national office. Both offer up opinions on the similarity of the Trade Mark to a mark in use by the Opponent (the latter is set out below and labelled ‘Opponent’s Trade Mark’). This is the full extent of these two declarations. How the Opponent came to discover use of the Trade Mark is neither controversial nor is it relevant to the grounds of opposition. The same can be said for the declarants’ opinions as to the similarity of two trade marks.

7. Turning for now to a similar aspect of the Applicant’s evidence in answer, the declarations of Mses Lipscombe, Churches and McDermott provide each declarant’s opinion on whether it is likely for the parties to be confused within the horse industry and whether use of the Trade Mark could cause confusion. Each of these opinions supports the Applicant. Just as it was with the evidence of Mses Stone and Narain, this aspect of the Applicant’s evidence not relevant to any of the grounds of opposition. What sets these declarations apart is that they corroborate Ms Ainsworth’s evidence as it relates to co-existence of the Trade Mark with the Opponent’s Trade Mark (defined and discussed further below). Ms Lipscombe is the Managing Director and Editor of HorseWyse, the leading Australian magazine for young horse riders. Ms Churches is Managing Director of Neptune Apparel, which, along with associated company Wini Equine, produces sports clothing for both of the parties and other sporting organisations. Ms McDermott is Manager of a program run by Harness Racing Victoria and for over 25 years has been a journalist in matters equine. She declares that she is familiar with the parties through her work. These three declarants are all reasonably experienced within their area of the horse industry, and so can offer such corroboration.

8. Returning to the balance of the Opponent’s evidence in support, Ms Aspery’s first declaration provides significantly richer content. It begins by outlining the Opponent’s history. The first Riding for the Disabled Centre opened in 1964 in Brisbane, with the other five Australian states and the Australian Capital Territory following in the next decade. Each of the state and territory organisations agreed to form the Opponent in 1979. It was then formally registered as both a limited company and registered as a charity in 2006.

9. The Opponent is an industry peak body. At some point the Northern Territory completed the full complement of eight state and territory-based Riding for the Disabled Associations. Each is a member of the Opponent. The Opponent ensures its members have access to accreditation, education and insurance. It coordinates interactions between its members, including the setting of shared policies and standards, and the delivery of national programs. It is the Australian leader in relation to matters equine as they relate to therapeutic riding, represents its members’ interests at the national level to government and industry and is itself a member of the international non-government organization Federation of Riding for the Disabled International. The Opponent also promotes elite athletes—for example, five of the Opponent’s riders represented Australia at the Paralympics in 2008.

10. The Opponent began using a trade mark with horse and rider in relation to its activities in 1980:

11. The Opponent adopted a new trade mark in 2007, executed in several slight variations such as colour/monochrome, or omitting/including a geographical reference (that is, ‘Australia’ or the name of an Australian state or territory). It is these later trade marks, two examples of which are reproduced below, that form the basis for the Opponent’s case in the present proceeding. I refer to these as the ‘Opponent’s Trade Mark’ since for the purposes of these reasons there is no material distinction that need be made between them.

12. I note here that between 2007 and 2012 the Opponent applied for and obtained registration of at least two trade marks that resemble the above marks. I have set out the details of the Opponent’s registered marks in my discussion of the s 44 ground of opposition below.

13. Ms Aspery’s first declaration also outlines the Opponent’s activities since adopting the Opponent’s Trade Mark up until the Relevant Date. For the same period, she outlines the marketing and promotion of those trade marks. I briefly outline this aspect of the Opponent’s evidence in my discussion of the s 60 ground of opposition.

14. The final major element of Ms Aspery’s first declaration concerns factors that might contribute to a risk of confusion or deception of the relevant public. She seeks to explore how the Applicant has put the Trade Mark to use, explaining how the parties can be seen as being in close proximity in the market and providing examples of where they have been promoted simultaneously on, for example, the websites of third parties. Such appearances are either due to both parties’ sponsorship/partnership of that third party, or because the parties are actively collaborating. The parties are allied in a program called ‘Sports CONNECT’, which is aimed at ‘developing pathways and provide opportunities for riders with disabilities within both organisations.’ The Opponent’s Trade Mark and an older mark of the Applicant’s are both plainly visible in marketing materials such as the example below.

15. Ms Aspery also provides an anecdote in relation to Equestrian Australia’s ‘Ready Set Trot’, a program for introducing horse riding to younger people. The parties are also allied in this program. In August 2015, an officer of Equestrian Australia mentioned to Ms Aspery that the Applicant wanted the Trade Mark to appear on ‘Ready Set Trot’ marketing materials. There is no detail as to how that conversation proceeded, but according to Ms Aspery this did not ultimately go ahead. However, Ms Aspery declares that at some point in 2015 a representative of the Applicant rolled out a display of a blue and red variant of the Trade Mark at a stand promoting the program.

16. It is worth noting at this point that there was significant disagreement by the parties as to how this type of evidence should be read. The Opponent’s position is that this shows that the parties operate in the same market, increasing any likelihood of confusion. The Applicant’s position on the other hand is that it demonstrates co-existence without confusion.

17. Jumping forwards to the Opponent’s evidence in reply, the final item of evidence filed in this opposition was Ms Aspery’s second declaration. It offers a detailed analysis and critique of several aspects of the Applicant’s evidence. It also attaches some correspondence between the parties and shows a variety of registered and unregistered trade marks used in the equestrian industry. There also is an account of an alleged instance of actual confusion, which I set out below in full:

    The Opponent has been informed of an instance where the parent of a child who rides with both the Opponent’s local association in Darwin, and the Applicant’s Horse and Pony Club in Darwin, asked a member of the Opponent’s staff if the Opponent was part of the Applicant’s organisation in reference to the Opponent’s RDA Mark and the Applicant’s Trade Mark displayed side-by-side on the gate into the riding centre.

18. Returning now to the balance of the Applicant’s evidence in answer, the Applicant’s lead declaration was made by Ms Ainsworth. The Applicant’s business structure is similar to that of the Opponent, described as:

    …a federated structure, with members of [the Applicant] being the voluntary, not-for-profit, State/Territory Sporting Organisations from each Australian State and the Northern Territory. Membership of the State/Territory Sporting Organisations, in turn are voluntary local riding clubs...

19. The Applicant’s history stretches back to The Pony Club—an organisation based in the United Kingdom which has been in operation there since 1929. The first use of any trade mark bearing the words Pony Club Australia was by a local riding club in Ingleburn, New South Wales established in 1938. This club eventually became a member of the Pony Club Association of New South Wales when the latter was formed in 1952. The Australian Pony Club Council was established in 1962. An unincorporated association, its membership consisted of the state and territory branches. The association then incorporated on 21 October 1985 to form Pony Club Australia Inc. A restructure on 6 July 2016 resulted in the Applicant. The Pony Club in the United Kingdom remains an affiliate to the Applicant and with organisations in Canada, the United States of America, New Zealand and Hong Kong.

20. Local clubs operating under the Pony Club Australia banner offer individual membership mainly to people under 25 years’ age. They provide instruction in riding and horse management, offer clinics and camps and hold social events. They also hold local competitions in various equestrian disciplines. The Applicant’s members, being State or Territory level organisations, hold State and Territory level competitions, while the Applicant holds competitions at the national and international levels. The Applicant also trains and provides accreditation for riding instructors and coaches for local riding clubs.

21. The Applicant also develops and maintains instructional materials for members, develops standards and accreditation for coaches, deals with the Australian Sports Commission on behalf of its industry and members, engages with its overseas counterparts to run international events and arrange rider exchanges, coordinates education, policy and standards between its members and develops links with other equestrian bodies.

22. The Applicant used a trade mark, it is said, ‘for many years’ that had been based on a mark used by The Pony Club in the United Kingdom. The Applicant’s old mark is set out below next to that of The Pony Club in the United Kingdom:

23. The Applicant decided to update its trade mark in 2014. It hoped to arrive at a more contemporary style that was also suitable as an embroidered image. An external consultant came up with several alternatives, from which the Applicant derived the ‘branding elements’ that it preferred. The content of those elements is the subject of some disagreement between the parties. Whatever their content, the elements were then given to Ms Green, a designer who has also given evidence for the Applicant. The final version of the proposed new trade mark was presented at the Applicant’s Annual General Meeting on 30 May 2015, where it received unanimous support. The Trade Mark was used by the Applicant and its member organisations the following month. Ms Ainsworth then reads into evidence several examples of uses of the Trade Mark in social media accounts of the Applicant and its member organisations, on the Applicant’s annual reports, the Applicant’s newsletter, websites of the Applicant and of third parties, HorseWyse magazine, a sponsored motor vehicle, and on a variety of clothing, promotional and merchandising items.

24. The Applicant’s income derives from a percentage of individual membership fees received by its member organisations, a grant from the Australian Sports Commission and from commercial sponsorships. As authorised users of the Trade Mark, the Applicant’s member organisations again sell membership fees, but also uniforms, equipment and merchandise. The combined sales of these goods and services are set out in a confidential exhibit to Ms Ainsworth’s declaration. Accompanying this are approximate spends by these same member organisations on marketing and advertising.

25. Ms Ainsworth’s declaration attempts to make out a positive case that there is no risk of confusion between the parties or their trade marks. This aspect of the Applicant’s evidence offers several more examples of, from the Applicant’s perspective, co-existence (or, from the Opponent’s perspective, closeness of the parties in the market) from between June 2015 and January 2018. A selection of these follow.

26. Between 2012 and 2016 Pony Club Queensland donated a significant sum to Riding for the Disabled Queensland as a result of fundraising by the former. Included with this is a copy of a newsletter advertisement from October 2016 promoting the fundraiser headed by a Queensland variant of the Trade Mark and the colour version of the Opponent’s Trade Mark. The header from that advertisement is below:

27. The Spring 2016 edition of HorseWyse magazine includes a page divided into quadrants with the top pair advertising the New South Wales and Victoria member organisations of the Applicant, and the bottom left advertising the Opponent. Again, the Applicant’s member organisations use their state variants (respectively, dark blue on light blue, and dark blue on white) while the Opponent’s advertisement uses the colour version of the Opponent’s Trade Mark.

28. A green and gold rendering of the Trade Mark also appears alongside the Opponent’s Trade Mark on a 2015 dated capture of the website for ‘Ready Set Trot’.

29. With these examples in mind, Ms Ainsworth finishes her evidence by declaring:

    Since my Company commenced use of its PONY CLUB AUSTRALIA trade mark in June 2015, I am not aware of, nor has anyone brought to my attention, any instances of confusion arising between my Company and the Opponent as a result of the no-existence of the trade marks.

30. Ms Green’s declaration provides a more detailed account of her efforts in coming up with the Trade Mark. The events are outlined at a level of detail that need not be restated here. Suffice to say they corroborate Ms Ainsworth’s account. That is, Ms Green was approached by the Applicant after it had already resolved to update its logo and had received some design work from another graphic design firm. Ms Green describes her brief as having been provided the logos of Equestrian Australia and Hockey Australia, ‘with a further instruction that the logo should in some way reflect a relationship between a child rider and a pony.’ The remainder of Ms Green’s declaration outlines the development process, through around 27 different options, that ultimately led to the Trade Mark.

    Grounds and onus

31. The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act. All four grounds were pressed by the Opponent at the hearing.

32. The onus falls on the Opponent to establish at least one of those grounds of opposition. In deciding whether it has done so, I apply the ordinary civil standard of the balance of probabilities.[1] The rights of the parties are determined as at the Relevant Date.[2]

    Discussion of the grounds of opposition

    [1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26], cited in Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 420 [133].

    [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

    Section 58

1. This ground of opposition as it appears in the Act is set out below:

   58Applicant not owner of trade mark

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

   Note:For applicant see section 6.

2. The Opponent alleges that it is the owner of the Trade Mark due to its prior use of the Opponent’s Trade Mark. For a claim to proprietorship to attach due to prior use, it would require (among other things) that the marks be identical or at least substantially identical.[3] The approach to be taken in making this assessment has been expressed in the following terms:

   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”. Whether there is substantial identity is a question of fact…Judging by the eye alone, as I think is proper for the determination of substantial identity…[4]

   [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414.

3. For the purposes of the side-by-side comparison, the Opponent nominated the device from the Opponent’s Trade Mark (‘Opponent’s Device’) which is shown on the right below. There is some evidence of such use occasionally taking place before the Relevant Date. I therefore will adopt the same approach to put the Opponent’s case at its highest. The marks in comparison are set out below:

4. Beginning with my assessment of the similarities, both are executed in silhouette, both show the head and neck of a horse with the head of a rider in profile. The relative positions of the horse and rider in each mark are quite similar, and horse and rider are all are facing to the right.

5. The Opponent submits that this silhouette overlay of the horse and rider device is the essential feature for both marks. In making this point it further submits that the words in the Trade Mark are non-distinctive, and so are not essential features. I would observe at this point that in seeking to characterise the essential feature in this way, the Opponent strays toward the idea of the respective marks, rather than keeping to a visual comparison. I discuss the similarity of idea in relation to other grounds where deceptive similarity is relevant.

6. In contrast, the Applicant submits that it is the device elements that are less significant as identifiers of trade source. Its argument rests on the idea that both are suggestive of the Applicant’s Services. Unlike the Opponent’s submissions in relation to the words in the Trade Mark, however, I do not take this line from the Applicant as suggesting I read the devices down to a minimum (nor would I consider it appropriate to do so). The force of the Applicant’s point here is better addressed in relation to other grounds of opposition, again, where deceptive similarity is relevant.

7. As for the differences, the most obvious among them are the words in the Trade Mark. The submission by the Opponent that they are non-distinctive is not convincing. The second most striking difference is that of overall shape of their respective devices. The Trade Mark is executed as an incomplete circle, while the Opponent’s Device forms a heart shape. Other differences include the reversal of light and shade in the respective silhouettes—the Trade Mark showing a dark rider and a light horse, and the Opponent’s Device a light rider and a dark horse. The Opponent’s Device is generally more detailed, with the shadow from the peak of the cap on the rider visible along with the subjects’ eyes, the latter detail providing the subjects with an expression which is absent in the Trade Mark. The Opponent’s Device also includes an arc above the head of the rider, which does not appear to be representative of anything other than serving to complete the top left outline of the heart shape. There is no equivalent of this feature in the Trade Mark.

8. There are yet more differences but as I descend into the slighter details, I am aware of the diminishing returns that such an exercise represents in terms of comparison of overall impression. The principle behind this enquiry relates to the ground of opposition itself—is the similarity so close that earlier use of the Opponent’s Device extends the proprietorship of that earlier mark to the Trade Mark?[5]

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.

9. The presence of the words in the Trade Mark, the overall differences in shape and the various other visual differences noted above I consider outweigh the similarity of the horse and rider motif. This leaves me with a total impression that falls short of similarity. Since the marks I have compared are not substantially identical, this ground of opposition as it has been prosecuted by the Opponent cannot be established.

   Section 44

10. The relevant parts of this ground of opposition are reproduced below:

    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.

    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)that, because of other circumstances, it is proper to do so;

    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.

11. It is necessary to first consider the extent to which sub-s (2) applies. This subsection requires an earlier trade mark which is registered or has been applied for under the Act. The Opponent has nominated two of its registered marks for the purposes of this ground. The earlier of the marks is an example of the Opponent’s Trade Mark without a geographical reference, and the later is a series mark with seven states and territory names appearing below the letters ‘RDA’. Relevant details of each are set out below:

    Registration number:              1169477

    Priority date:  12 April 2007

    Trade mark:  

    Specification of services:       Class 41: Provision of instruction for the disabled

    Registration number:              1489038

    Priority date:  3 May 2012

    Trade mark:                
    Specification of services:       Class 41: Provision of instruction for the disabled

12. Applying the factors under s 44(2) to the above marks, the priority date of each registration is earlier than the Relevant Date. The Applicant’s Services include a variety of broadly worded claims for services that relate to education. Such claims would necessarily include the same services as the Opponent’s narrower claim in relation to the above registrations for the provision of instruction for the disabled.

13. I have already decided under s 58 that the Trade Mark was not substantially identical to the device found in the Opponent’s registered marks above. Adding to that device the letters ‘RDA’ (with or without a geographical reference) could only serve to diminish any visual similarity, so I find that neither is substantially identical to the Trade Mark.

14. The only issue left for me to decide under s 44(2) is whether either of the registered marks is deceptively similar to the Trade Mark. The starting point is to note s 10 of the Act which provides:

    10Definition 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.

15. There are several principles from the decided cases that can help in making this assessment. Below is a reproduction of many of the principles as they were summarised in Southcorp Brands Pty Ltd v Winston Wine Pty Ltd:[6]

    [6] [2014] ATMO 91, [25].

    • imperfect recollection must be allowed for;[7]

    [7] Aristoc Ltd v Rysta Ltd [1945] AC 68, reiterated in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, [77] and approved of in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [100].

    • the test is not necessarily that consumers think the marks are the same, but that they are from the same trade source;[8]

    [8] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594.

    • it is sufficient if the minds of the public are merely “perplexed” or “mixed up”;[9]

    [9] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [100]-[102].

    • use of a distinctive mark or highly distinctive part of a mark with an addition or substitution may lead consumers to believe both are from the same source;[10]
    • the first portion of a word is the most important[11] and there is a tendency to slur the termination of words (accentuating their beginning)[12];
    • a mark will be found to be deceptively similar to another if it takes a prominent and distinctive feature of that mark;[13]
    • marks are remembered by general impression or some significant detail rather than photographic recollection of the whole;[14]
    • commonality of idea, despite differences in execution, may leave similar impressions;[15]
    • there is a tendency to abbreviate marks;[16]
    • the nature of the goods involved, the circumstances of their sale and the nature of the consumers are relevant considerations;[17]
    • a family of marks containing a common element is a relevant consideration;[18]
    • evidence of an intention to appropriate the goodwill of another is relevant to the question of whether use is likely to cause confusion;[19]
    • in certain circumstances the reputation of a trade mark may be taken into account in the assessment under section 44.[20]

    [10] Ibid [122].

    [11] Conde Naste Publications Pty Ltd v Virginia Taylor [1998] 864 FCA.

    [12] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279.

    [13] Seven-Up Co v Bubble Up Co. Inc (1987) 9 IPR 259; De Cordova v Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) 1B IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491, 497-8.

    [14] De Cordova v Vick Chemical Co. (1951) RPC 271.

    [15] Jafferjee v Scarlett (1937) 57 CLR 115, 121-2.

    [16] Ballantyne & Son LD v Ballantyne Steward and Co [1959] RPC 273.

    [17] Pianotist’s Application (1906) 23 RPC 774, 777; Conde Naste Publications v Taylor (1951) RPC 271.

    [18] McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37; Semigras Trade Mark [1979] RPC 330, 339; Beck Koller & Co (England) Ltd (1947) 64 RPC 76, 82.

    [19] Australian Woollen Mills Ltd v FS Walker & Co Ltd (1937) 58 CLR 641; WD & HO Wills v Philip Morris Ltd (1997) ATPR 41-590; NEC Corporation v Punch Video(s) Pte Ltd (2005) 67 IPR 17; Sydney Wide Distributors Pty Ltd v Red Bull Australia Pty Ltd 55 IPR 354.

    [20] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411; Henschke v Rosemount Estates Pty Ltd (2000) 52 IPR 42.

16. It is pertinent to add to this two other principles from the body of precedent:

    • ‘a mere possibility of confusion is not enough—for there must be a real, tangible danger of its occurring.’[21]
    • Normal and fair use to which each of the marks, as applied for, can be put needs to be considered.[22]

    [21] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (citations omitted).

    [22] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.

17. Beginning with this normal and fair use consideration, the Opponent suggested that the words of the respective marks be discounted either as descriptive or not memorable. Supporting this, the Opponent pointed to evidence of an instance of use of the Trade Mark by the Applicant with the words PONY CLUB AUSTRALIA slightly cropped (it would seem inadvertently) and another couple of instances where the words were much smaller than the device. The Opponent also sought to highlight evidence of its use of the Opponent’s Trade Mark without the letters ‘RDA’ at all. I do not accept the Opponent’s suggestion. To ignore or greatly discount the textual elements of these marks would not be a fair assessment of the ‘respective wholes’ of the marks.[23]

    [23] Clark v Sharp (1898) 15 RPC 141.

18. As I have found in my discussion in relation to s 58, the marks do have some similarity in appearance: in summary, each includes a device with silhouette of the heads of a horse and a rider. However the words PONY CLUB AUSTRALIA and the letters RDA are quite different visual cues as to trade source. These differences in text also provide a significant aural distinction between the marks. It is true that the device elements of each mark conveys the idea of a horse and rider, but when each is taken as a whole, the concept or idea conveyed by the marks is also informed by their textual elements: a pony club in Australia and a three letter acronym. The device elements of the marks also serve to reinforce the equestrian nature of the services that are offered by the parties. The evidence shows that there was at the Relevant Date many examples of horses, riders and riders with horses appearing in devices of participants in the horse industry, somewhat diminishing the distinctiveness that a device of that nature can afford. There is also a fairly high cost involved with equestrian activity, which would to lead to more cautious consumers of the Applicant’s Services.

19. The Opponent raised two cases that it submits are analogous to the present opposition: Dial-an-Angel v Saggitaur Services Systems,[24] and Mobil Oil Corporation v Dynam Nominees.[25] In Dial-an-Angel, the marks in comparison were both composite marks. Each included a different looking depiction of an angel in their devices together with the words DIAL AN ANGEL in one mark and GUARDIAN ANGEL in the other. The services offered in relation to those marks were domestic assistance and childcare. These were held to be deceptively similar by reasoning that a person ‘who had seen the applicant’s registered mark and remembered that idea, although not the detail of the mark, could easily mistake the respondent’s mark for it.’[26] In Dynam, the compared marks contained different depictions of Pegasus, the winged stallion from Greek mythology. The earlier mark consisted solely of a device depicting the mythical beast, while the mark subject to challenge also included the words ‘Pegasus IC Certified Practicing Accountants’. Both marks were used in relation financial services and they were held to be deceptively similar. For both of these cases the distinguishing facts from the present opposition are the same—an angel has little to do with domestic services and Pegasus is in no way descriptive of bookkeeping. Those device elements were very much inherently distinctive and therefore memorable for their respective services. The same cannot be said for a device of a horse and rider in relation to the Applicant’s Services which are either specifically related to horses or might readily be inferred to be so by reason of the Opponent’s Device.

    [24] (1990) 96 ALR 181 (‘Dial-an-Angel’).

    [25] (1999) 49 IPR 665 (‘Dynam’).

    [26] Dial-an-Angel (1990) 96 ALR 181, 192-3.

20. The Applicant also provided two cases that it submits are analogous to the present matter: S.A. Jean Cassegrain v Victoria Racing Club,[27] and The Polo/Lauren Company LP v Horse Australia Pty Ltd.[28] Two of the marks in comparison in Cassegrain were of a rider on a horse in full gallop, as depicted below:

    [27] [1999] ATMO 75 (‘Cassegrain’).

    [28] [2018] ATMO 150 (‘Polo’).

21. In that decision the hearing officer noted the identical subject matter in the devices, concluding that they encompass a common idea of a horse and rider. However, having noted but noted a number of stylistic differences and the difference in the words concluded that they were not deceptively similar. The reasoning of Cassegrain also indicates that where the words of the marks are very different, as is the case here, it will greatly reduce risk of confusion despite a similarity in other features. The second example provided by the Applicant, The Polo/Lauren Company LP v Horse Australia Pty Ltd,[29] followed similar reasoning.

    [29] [2018] ATMO 150.

22. I now turn to the Opponent’s account of an instance of actual confusion that I included word for word in my summary of the evidence. Actual confusion, where it is shown to have occurred, is of great weight.[30] However, an absence of evidence of actual confusion where marks have been in concurrent use, and when confusion could have been expected to otherwise occur, can tend against a finding of deceptive similarity.[31] This case falls in the latter category. Here we have one reported instance of confusion where both the Trade Mark and the Opponent’s Trade Mark were displayed on a gate in front of a riding centre. How many other people who had passed through that gate and had not been caused to express any wonderment is not in evidence. One person in a period of three years of concurrent and proximate use indicates to me that the likelihood of any confusion is quite low indeed. Adding to this notion is the evidence of the parties showing or describing many other examples of the Trade Mark appearing near the Opponent’s Trade Mark.

    [30] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658.

    [31] Re Holbrooks Ltd's Application (1909) 26 RPC 791.

23. I have not been satisfied that the Opponent has shown that the Trade Mark is deceptively similar to either of the Opponent’s registered trade marks. The Opponent has not established this ground of opposition.

    Section 60

24. This provision reads as follows:

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

    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.

25. The Opponent suggests that the Opponent’s Device should be considered the ‘other trade mark’ (as it is described in s 60(b)). This would effectively leave me to compare the same marks that I compared in the s 58 ground of opposition. This is not open to me, however, because the Opponent’s evidence does not achieve the threshold requirement in s 60(a) of a reputation in the Opponent’s Device on its own. As I noted when discussing s 58, there is some evidence of use of the Opponent’s Device by itself prior to the Relevant Date. Minimal use can be enough for that ground, but not for s 60.

1. For the purposes of s 60(a), to establish that there is a reputation it must be shown that there are a ‘substantial number of persons who are aware of the [trade mark]’.[32] What is substantial will vary based on the nature of the goods or services in question.[33]

   [32] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, 346.

   [33] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1, 19-20 [91].

2. While fewer than the public in general, the number of people involved in the horse industry in Australia is likely to be of significant size. This warrants evidence that would tend to show fairly widespread and frequent use of any trade mark that the Opponent seeks to rely upon for this ground of Opposition. What the Opponent has instead provided is income, advertising expenditure and other marketing and business information that relates to the Opponent’s Trade Mark (that is, the device with the letters RDA with or without a geographical reference) and, presumably, the Opponent’s Device simpliciter. The Opponent then would once more have me ignore the RDA that appears in its (significantly more frequent) use of the Opponent’s Trade Mark, so that I find a sufficient reputation in the Opponent’s Device alone. That would not be an appropriate assessment under s 60(1). There are but a handful of examples in the evidence of use of the Opponent’s Device by itself, and no separate revenue and marketing figures. This is not enough to find that the Opponent’s Device enjoys a reputation among a substantial number of persons in the equine industry.

3. None of this is to suggest that the Opponent has failed to show that there existed at the Relevant Date a reputation in the Opponent’s Trade Mark (as opposed to the Opponent’s Device by itself). In my estimation, the Opponent’s evidence meets the threshold of s 60(a), showing that there indeed existed the requisite reputation in the Opponent’s Trade Mark. But even with this reputation in mind, the lack of a likelihood of confusion or deception that I found under s 44 for the Opponent’s registered trade marks applies to my assessment in relation to s 60(b) as regards to the Opponent’s Trade Mark (with or without a geographical reference).

4. This ground of opposition has not been established.

   Section 42(b)

5. This provision is set out below:

   42Trade mark scandalous or its use contrary to law

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

   (a)…

   (b)its use would be contrary to law.

6. The laws that the Opponent allege use of the Trade Mark would be contrary to are ss 18, 29(g)-(h) of the Australian Consumer Law,[34] and the tort of passing off. The facts that the Opponent relies upon for all three of the ACL provisions and common law cause of action are the same as it relied upon under s 60. Because of that reliance, it is not necessary for me to discuss in any detail those provisions or the elements of passing off. Reference to the decided cases and my earlier reasoning for s 60 are sufficient. The citations that follow concern the predecessor to the ACL, the Trade Practices Act 1974 (Cth) (‘TPA’). For ease of reference, below is a short list of the relevant equivalent provisions of the TPA and the ACL:

   [34] Competition and Consumer Act 2010 (Cth), sch 2 (‘ACL’).

TPA	ACL
Section 52	Section 18
Section 53(c)	Section 29(g)
Section 53(d)	Section 29(h)

1. If s 60 is not established, a claim to s 18 ACL based on reputation cannot succeed. This is because s 52 TPA presented a higher test than s 60 of the Act.[35] The next step is to recall that ‘the Court’s conclusion on s 52 [TPA] would necessarily carry with it a conclusion on s 53(c) and (d) [TPA]’.[36] Finally, for passing off:

   [W]here the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 [TPA] will invariably mean that proceedings for passing off would likewise fail.[37]

   [35] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36].

   [36] Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107].

   [37] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (citations omitted).

2. The Opponent has therefore not established this ground of opposition.

   Decision and costs

3. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or 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.

   Note:For limitations see section 6.

4. The Opponent has not to any extent established a ground of opposition nominated on its SGP. The Trade Mark may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

5. Both parties have sought an order for costs. The general rule is that costs follow the event. I see no reason to deviate from this. I award costs against the Opponent under s 221 of the Act.

   Adrian Richards
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   23 April 2019