Roadwhyz NSW (Hunter) Incorporated v Western Australia Local Government Association

[2018] ATMO 164

TRADE MARKS ACT 1995

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

Re:Opposition by Western Australia Local Government Association to registration of trade mark application 1593911 (41) – ROADwhyz – in the name of Roadwhyz NSW (Hunter) Incorporated

Delegate:

Adrian Richards

Representation:

Opponent: Herbert Smith Freehills (written submissions)

Applicant: Dr Robert Burrell of Go Trademarks (written submissions)

Decision:

2018 ATMO 164

Opposition to registration of a trade mark under section 52 of the Trade Marks Act 1995 (Cth)—grounds of opposition under sections 42(b), 44, 58 and 60 considered—marks not substantially identical or deceptively similar—no grounds of opposition established—trade mark to proceed to registration

Background

1. This decision with reasons concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act) to the registration of trade mark application 1593911. Relevant details of that application are set out below:

   Applicant:  Roadwhyz NSW (Hunter) Incorporated (‘the Applicant’)

   Trade mark:  ROADwhyz (‘the Trade Mark’)

   Specification of services:        Class 41: Charitable services, namely education and training; Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Arranging and conducting of workshops (training); Conducting instructional courses; Provision of educational information; Education services; Training; Publication of educational materials (‘the Applicant’s Services’)

   Priority date:  28 November 2013 (‘the Relevant Date’)

2. Having been examined, on 22 October 2015 the Trade Mark was advertised as having been accepted for possible registration. The Western Australian Local Government Association (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark on 13 November 2015, and a Statement of Grounds and Particulars (‘the SGP’) on 11 December 2015. This office gave a copy of the SGP to the Applicant, who responded by filing a Notice of Intention to Defend its application on 15 January 2016.

3. The Opponent filed evidence in support of its opposition on 3 May 2016, to which the Applicant filed evidence in answer on 24 August 2016. The Opponent had an opportunity to file evidence in reply to the evidence in answer but did not do so. The office wrote again to the parties on 11 November 2016 noting that no evidence in reply had been filed, and as a result the substantive opposition was ready to be heard. The letter accordingly invited the parties to request a hearing or file written submissions.

4. Two months later, the parties filed a joint application for a cooling-off period, placing the proceedings on hold for six months. After the expiry of the cooling-off period, this office wrote to the parties, again inviting them to request a hearing or file written submissions. The Opponent filed written submissions on 4 August 2017 and the Applicant followed suit on 13 December 2017. The opposition was recently allocated to me, a delegate of the Registrar of Trade Marks, to decide.

Evidence

1. The Opponent’s evidence in support consists of a declaration of Terri-Anne Pettet, Manager of the Opponent’s RoadWise Program, made on 2 May 2016 with exhibits TP-1 to TP-12. This declaration is chiefly concerned with outlining use of what I will refer to as ‘the Opponent’s Registered Trade Mark’, ‘the Opponent’s Word Mark’ and ‘the Opponent’s Composite Marks’ (together, ‘the Opponent’s Trade Marks’). I have set out below details of each of the Opponent’s marks that appear in its evidence:

   The Opponent’s Registered Trade Mark

   Trade Mark:  

   Specification of services:        Class 41: Road safety education services

   Registration number:               800186

   Priority date:  14 July 1999

   The Opponent’s Word Mark

   RoadWise

   The Opponent’s Composite Marks

2. Ms Pettet outlines the Opponent’s interest in this matter. The Opponent’s ‘RoadWise’ program is, in her words, ‘the Local Government and Community Road Safety Program for Western Australia.’ As might be surmised from this description, there are quite a number of activities that take place under the Opponent’s RoadWise banner, with the participation of 98 local government authorities, as at the Relevant Date. The Opponent began to use the term RoadWise in 1994. Over time the nature and extent of the programs offered under this term has changed. One aspect of that program, which would be familiar to many drivers, is the national Driver Reviver program’s rest stops in the state of Western Australia. From the year 1999 these have been jointly organised by the Opponent (taking over from the Western Australian Police Department) and local committees or groups.

3. The applicant’s evidence in answer consists of the following three declarations:

   ·Robert Geoffrey Burrell, registered trade marks attorney with GO trademarks, made 24 August 2016 with exhibits A to D

   ·Asaf Twina, registered trade marks attorney with GO trademarks, made 24 August 2016 with exhibit AT1

   ·Michelle Davis, President for the Applicant, made 18 September 2015 with annexures A to G

4. Mr Burrell’s declaration annexes extracts from dictionaries defining the word ‘wise’, as well as extracts from websites and newspapers that include the term ‘road wise’ used descriptively, both in Australia and in a number of other English speaking countries.

5. Mr Twina’s declaration introduces Ms Davis’ declaration into evidence as exhibit AT1. According to Mr Twina, Ms Davis’ declaration was filed previously to address an objection at examination. Mr Twina further declares that Ms Davis’ declaration shows ‘honest concurrent use’ of the Trade Mark. This particular form of words provide a clear reference to s 44(3)(a) of the Act, which I briefly touch on under the heading ‘Section 44’ below.

6. Ms Davis declares that she began to use the Trade Mark in 2007 but at the same time alludes to earlier use in her local area, recounting that she adopted the Trade Mark as a continuation of ‘an old program run by local police’ that went by the same name. The Applicant has not offered any further information about this asserted pre-2007 use of the Trade Mark. Returning to 2007, Ms Davis declares that having met with two police officers delivering a road safety talk to community members, she ‘joined forces with them to grow the program’. Use of the Trade Mark was eventually taken over by the Applicant in 2012, when it was incorporated, with Ms Davis as its President. Ms Davis also states that at the time of making the declaration, she was not aware of any instances of confusion between the Trade Mark and the Opponent’s Registered Trade Mark.

Grounds and onus

1. The SGP nominated six grounds of opposition: ss 42(b), 43, 44, 58, 60 and 62A of the Act. By the time of the Opponent’s submissions its case narrowed to four clearly pressed grounds: ss 42(b), 44, 58 and 60. Midway through the Opponent’s submissions, amidst its arguments in relation to s 44(3), is a paragraph suggesting that a seventh ground of opposition, s 62(b), could be applied to certain facts. The Applicant’s submissions correctly note that s 62(b) had not previously formed part of the Opponent’s case, and the Opponent had not (by December 2017) commenced the process to amend its SGP to include that ground of opposition. Given the Opponent at the time of writing these reasons has still not sought to add s 62(b) to its SGP, I will treat it as abandoned. So too the Opponent’s decision not to present argument under ss 43 and 62A. Therefore, I only have only considered grounds of opposition under ss 42(b), 44, 58 and 60 in these reasons.

2. The onus is on the Opponent to establish at least one of the four remaining grounds of opposition. The standard of proof I apply in these reasons is proof on the balance of probabilities.[1] The rights of the parties are to be 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 section of the Act reads:

   58 Applicant 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’s claim is that it is the owner of the Trade Mark because it was first in this country to use a trade mark that is substantially identical to the Trade Mark, in relation to services that are identical to the Applicant’s Services. All three elements need to be established by the Opponent. In the present matter, it has not been necessary for me to consider two of the elements, since the Opponent has not satisfied me that any of the Opponent’s Trade Marks are substantially identical to the Trade Mark.

3. A finding that the Opponent’s Word Mark is not substantially identical to the Trade Mark would lead me to the same finding for the remainder of the Opponent’s Trade Marks.[3] I have therefore used the Opponent’s Word Mark as the basis for my comparison below.

   [3] See, eg, Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506, in which the Court held that a composite trade mark consisting of a device of a mountain with the word Colorado was not substantially identical to the plain word Colorado.

4. The High Court summarised the relevant considerations on this area of law in the often quoted passage:

   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]

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

5. For the purposes of the side by side comparison the Trade Mark and the Opponent’s Word Mark are set out below:

ROADwhyz  RoadWise

1. The marks begin with the same five letters and terminate with three different letters. Of the letters that are shared, only the R is in the same case. Each consists of two syllables. The first syllable ROAD/Road is visually very close. The Opponent submits that the first syllable is ‘dominant’ over the second syllable, but then apparently contradicts this by submitting that ‘the essential feature or “dominant cognitive [cue]” of both marks is clearly “RoadWise” / “roadwhyz”’.[5] The second syllable whyz/Wise is markedly different and from this it is plain that the marks cannot be visually characterised as sharing one impression of resemblance. This in turn promotes the importance of the second syllable in each mark. With equal emphasis placed on the whole of both of these marks, when compared side by side, my conclusion is that there is a total impression of dissimilarity.

   [5] Referring to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205.

2. The Opponent’s submissions on substantial identity also go to aural and conceptual similarity between the marks. To boundlessly consider the sound and meaning of the marks for the purposes of s 58 of the Act would represent a radical departure from what the law requires me to do, which is conduct a side by side visual comparison. Despite the Opponent’s suggestion that I do so, I will not be taking that path. Though I have of course addressed non-visual aspects of similarity in my discussion of deceptive similarity under s 44 of the Act.

3. The Trade Mark is not substantially identical to any of the Opponent’s Trade Mark Marks. It follows that the Opponent has not established the ground of opposition under s 58 of the Act.

Section 44

1. Section 44 of the Act relevantly provides:

   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:…

2. As s 44(2)(a) makes clear, this ground of opposition can be based only on trade marks that are registered or pending registration. This means that only the Opponent’s Registered Trade Mark is eligible for consideration here. It has a priority date earlier than the Relevant Date, and the Applicant’s Services are similar to those claimed by the Opponent’s Registered Trade Mark. Since I have already found above that these marks are not substantially identical, the sole question remaining in s 44(2) is whether these marks are deceptively similar. As the notes to this provision indicate, the statutory definition of this term is found in s 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. In order to assess the risk of confusion it is useful look to any visual, aural and conceptual similarity between the marks, taking into consideration the potential for imperfect recollection by the consumer. Both the similarity of the services and any accounts of actual confusion are highly relevant factors, but are not themselves determinative.

4. Recalling my discussion of s 58, there is limited visual similarity between the marks. They both consist of eight letters, the first five of which are shared and the final three are not. Where the present analysis differs from s 58 is in acknowledging the device in the Opponent’s Registered Trade Mark. This R shape formed by a stylised pair of roadways presents a striking visual difference to the Trade Mark. Of course, I must consider what is sometimes called ‘nominal use’ of the Trade Mark—the ways the Applicant might be entitled to use it should it be registered.[6] But to consider the Trade Mark with an additional deceptively similar device to the one that appears in the Opponent’s Registered Trade Mark would go beyond a fair assessment of use to which the Applicant can properly put the Trade Mark. Rather than attempt this line of argument, the Opponent instead seeks to read down the device, in effect arguing that it is not ‘an essential feature’ of the Opponent’s Registered Trade Mark. In response the Applicant quotes the following warning of the perils of such an approach:

   [A]lthough everything depends on the particular circumstances, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[7]

   [6] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 24 [100].

5. In contrast to the above discussion, when compared aurally, the prominence of the device in the Opponent’s Registered Trade Mark is somewhat diminished. This is because of the natural tendency of consumers to refer only to the words of a composite trade mark.[8] At any rate, the device might be described as the letter R or road(s), which would do little to modify the aural expression of the compounded pairing ‘RoadWise’ in the Opponent’s Registered Trade Mark. The compound is formed from two ordinary English words, leaving the reader in no doubt as to how to pronounce them. As for the Trade Mark, its first syllable is also plainly to be read aloud as ‘road’, but the pronunciation of its second syllable is ambiguous. The marks are on one reading aurally identical—the English words ‘wise’ and ‘whys’ being homophones. However reading the misspelling ‘whyz’ as ‘whys’ is not automatic—the letters ‘s’ and ‘z’ in the termination of a word typically lead to different sounds, such as in ‘marquis’ and ‘quiz’. The Applicant submits, correctly in my view, that this odd spelling could instead be pronounced ‘whiz’.

   [8] See, eg, Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177, 180-1.

6. It has been held in numerous cases that the beginning of a trade mark will often be the most important in the comparison.[9] But the word ‘road’ at the beginning of both marks is not in any way distinctive of road safety education. In contrast ‘wise’ and ‘whys’ while both somewhat descriptive in this context do more work than the word ‘road’ in terms of distinctiveness and memorability of the expressions. So, when considering the whole of each trade mark, the conceptual impression is different. The Opponent’s Registered Trade Mark creates the sense of being informed or aware (wise) about roads, and the ‘road’ aspect is reinforced with the R shaped device incorporating a stylised road. The Trade Mark in contrast conjures up an idea of offering answers—giving students the ‘whys’ of the road. Or, on the aforementioned other possible pronunciation of ‘whys’, that students of the Applicant would become whizzes of road related matters. Only where both marks are presented aurally, and the speaker pronounces the second word in the Trade Mark as ‘wise’, could the idea of the Trade Mark align with that of the Opponent’s Registered Trade Mark.

   [9] See, eg, Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279.

7. Mr Burrell makes the point in the Applicant’s submissions (supported by his declaration) that the phrase ‘road wise’ lacks distinctive character:

   The opponent’s mark enjoys relatively little inherent adaptation to distinguish. The phrase ‘Road Wise’ is naturally adapted to convey information about road safety. It is a phrase whose meaning is immediately and obviously recognisable and it is a phrase that has been used by third parties both in Australia and overseas to convey information about road safety…

8. As I prefaced while outlining the evidence, Mr Burrell’s declaration is solely concerned with providing support for this point. Within its annexures is indeed significant usage of ‘road wise’, ‘road-wise’ or ‘roadwise’ in this descriptive sense. Within Australia, this usage in the evidence consists of:

   • A 1993 newspaper article about a mobile vehicle inspection unit being displayed at the Brisbane Truck and Machinery Show: ‘The theme of the display would concentrate on the three Rs – roadworthy, road wise, and road safe.’
   • A 1995 driver education kit called ‘Road wise’ produced by Film Australia and CreaTV for the NRMA-ACT Road Safety Trust.
   • A 2001 newspaper article about New South Wales pre-school students learning about road safety titled ‘Little nippers road wise’.
   • A 2001 newspaper article from the Australian Capital Territory concerning threats to echidnas: ‘there is no evidence that echidnas become road-wise when their home range areas are cut by motorways.’
   • A 2004 newspaper article about road safety education efforts for senior citizens in New South Wales titled ‘Road-wise seniors’.
   • Comments from 2007 on a pet related internet forum: ‘Also, driving is excellent foundation work for a pony to become road wise, responsive to cues, etc.’
   • A 2011 newspaper article from Western Australia quoting a police sergeant: ‘parents need to know how road-wise their kids are’.
   • A 2011 newspaper article from Western Australia referring to awareness activities one of the Opponent’s affiliates, the City of Swan RoadWise Committee, titled ‘Speeding drivers urged to get road wise and save lives’.
   • Comments from 2011 on a motorcycle related internet forum: ‘Use your L time to get roadwise and bikewise.’
   • A 2015 newspaper article from Queensland quoting the mother of a girl with Aircardi syndrome: ‘When we are out in public, she does often think it is a game to run away from us and she is not very street smart or road wise.’
   • A 2015 newspaper article about Walk Safely to School Day: ‘Sydney mum [name omitted] is among the parents ensuring her kids are road-wise when it comes to the daily school commute.’
   • A 2015-2016 Victorian Police road safety operation titled ‘Operation Roadwise’.
   • A 2016 newsletter from a school in Western Australia: ‘The Year 10’s are enduring a 10-week SDERA Drivers Education Course in an attempt to become road wise proficient to receive their learner’s permit.’
   • A 2016 website for a driving instructor in Queensland: ‘[Name omitted] is also Blue Card approved so get Road wise and call for a Driving lesson booking’.
   • 2016 information pages from the website of the Professional Driver Trainers Association of South Australia titled ‘Road Wise – Fatigue’ and Road Wise – Alcohol’.

1. The overseas examples offered up by Mr Burrell consist of:

   • A 1998 news article about road safety activities in a borough in the United Kingdom titled ‘GET ROAD WISE IN WYRE’.
   • A 2001 news article about driver training in the United Kingdom titled ‘Time to get roadwise.(News)’
   • A 2011 Hyundai South Africa media release concerning road safety titled ‘Be road-wise this festive season’.
   • A 2012 Indian newspaper article about a road safety NGO titled ‘ROAD wise’.
   • A 2015 blog post on an Irish school website titles ‘Transition Year students get road-wise!’
   • An article from a New Zealand website ‘Kiwi Families’ espousing the benefits of families walking their children to and from school: ‘Your littlies get to learn the ways of the road and become more road wise.’
   • A New Zealand government webpage about a bicycle safety program: ‘Children learn to ride their cycle with confidence and be road-wise.’
   • A leaflet from a county council in the United Kingdom aimed at those new to driving urging them to ‘Get road wise’.
   • A short course titled ‘RoadWise’ offered in the United Kingdom.
   • A safe driving guide from an NGO in the United States of America titled ‘Road Wise’.
   • A website promoting road safety in a United Kingdom county titled ‘ROAD wise’ at the web address
   • A road safety factsheet from a state government in the United States of America titled ‘Driving and Being Road-Wise FactSheet’.

2. Also among the examples supplied by the Applicant were advertisements of driving instructors in Australia and the United States of America who have called their businesses ‘Roadwise Driving School’, ‘Be Road Wise!’ and ‘RoadWiseDriver’. The Applicant submits these are yet more examples of descriptive use of the term ‘road wise’. But in their respective contexts they appear to me as (at very least) attempts at using these particular phrases as badges of origin.

3. The reason all of this evidence of descriptive use of the phrase ‘road wise’ matters is because consumers are slow to assume that descriptive terms designate a badge of origin.[10] Mr Burrell’s evidence therefore indicates that if people see the term ‘road wise’ used in relation to road safety education, they would more naturally consider this a description of the services on offer.

   [10] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536.

4. To sum up the points made so far:

   ·     Visually, the marks are quite different.

   ·     Conceptually, the marks are quite different.

   ·     There are two pronunciations of the Trade mark open to the reader:

   o   Reading it as ‘road whiz’, the marks are quite different.

   o   Reading it as ‘road wise’, the marks are identical.

• A consumer, hearing the Trade Mark pronounced ‘road wise’, is very likely to process it as a description of the services rather than a reference to the source of those services.

1. Confusion itself does not set a particularly high bar for the opponent—mere wonderment as to the origin of the services is enough.[11] That said, the extremes of the consumer base are set aside—the astute and the careless are disregarded in equal measure. Also tempering the test somewhat is the need to assess whether confusion as to the trade source is likely. That is, it would not be enough to show that confusion is possible. There must be ‘a real tangible danger of its occurring’.[12]

   [11] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

   [12] Ibid.

2. That a likelihood of confusion must be assessed also means that past instances of actual confusion, while highly relevant, cannot in themselves be conclusive. In 2015 the Opponent received an email from an enthusiastic paramedic based in New South Wales, who ‘saw your program on the news’ and expressed an interest to ‘join your team.’ Only this email is in evidence, but Ms Pettet goes on to declare that some time after this email, the Opponent discovered that the paramedic had meant to contact the Applicant. As the Applicant’s submissions correctly state this instance of confusion ‘ran in the wrong direction’. That is, the paramedic was caused to wonder whether services produced by the Opponent could have been produced by the Applicant. In other words, it was the Trade Mark that the paramedic was first aware of, not the Opponent’s Registered Trade Mark.

3. The Applicant and its predecessor Ms Davis have been offering services under the Trade Mark since 2007. One instance of ‘inverse confusion’ (as the Applicant’s submissions refer to it) in all of that time is of little consequence to the present assessment.

4. There is not a sufficient likelihood of confusion for the Opponent to establish its ground of opposition under s 44 of the Act. It is therefore not necessary for me to discuss in any detail the Applicant’s evidence in relation to use of the Trade Mark. I do however indicate that this evidence would likely have provided me with a basis for finding that there had been honest concurrent use of the Trade Mark.

Section 60

1. Section 60 of the Act reads:

   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.

2. The Opponent’s submissions put forward a well established proposition: reputation in a trade mark can be assessed by direct evidence of consumer appreciation of the mark, but more commonly reputation is inferred from a combination of advertising and sales figures.[13]

   [13] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (‘McCormick’).

3. The Opponent then contends that all of the Opponent’s Trade Marks are shown to have attained a sufficient reputation following the above formula. However, the pragmatic approach recognised in McCormick[14] does not fit neatly with the Opponent’s RoadWise program. The Opponent is not operating a business, so there are no sales figures to tender. I have not been provided submissions on the obvious disanalogy. Instead, it appears that in lieu of the nonexistent sales figures, funding figures for the Opponent’s RoadWise program have been included in evidence and referred to in submissions. Sales often (though not always[15]) offer a reliable proxy for reputation in a trade mark by showing the popularity of goods or services sold under it. The same is not readily inferred from the amount of money a government allocates to its programs. The Opponent has not discharged its onus to explain how its program funding might be relevant to an assessment of the reputation of any of the Opponent’s Trade Marks. Perhaps this is a situation where only direct evidence of consumer appreciation would suffice. At any rate, this has not been attempted. The Opponent’s evidence also provides figures of membership of its RoadWise program network, but it is again hard for me to draw inferences as to reputation in one or more of the Opponent’s Trade Marks from this. The Opponent’s submissions do nothing to assist such inferences being drawn.

   [14] Ibid.

   [15] See Hills Industries Ltd v Bitek Pty Ltd (2011) 214 FCR 396, 424-5 [188]-[197].

4. The Opponent has, however, included some elements of the McCormick[16] recipe. Its evidence includes advertising expenditure and an outline of marketing activities in relation to its RoadWise program for the years 2007, 2009, 2010, 2012 and 2013. This information indicates substantial promotion and other related activities took place in the state of Western Australia during those five years. Much of this information is high level and as such is often unclear as to which of the Opponent’s Trade Marks (if any) were used in those activities.

   [16] (2000) 51 IPR 102.

5. Having dealt with a very similar question above in relation to s 44 of the Act, for the purposes of s 60 I will move past these deficiencies in the evidence of a reputation in one or more of the Opponent’s Trade Marks. I take this approach in order to move on to the second limb of s 60, which is where this ground most clearly fails. Once again, any risk of confusion between the Trade Mark and any one of the Opponent’s Trade Marks derives from the common words ‘road’ and ‘wise’ (on a possible, though not only, reading of the Trade Mark). I have already accepted that those two words in that order are apt to describe the services on offer by both parties. It follows that any confusion resulting from the use of the Trade Mark is unlikely due to the reputation in any of the Opponent’s Trade Marks, but instead because of the descriptive character of those two words.

6. The Opponent has not established this ground of opposition.

Section 42(b)

1. Section 42(b) of the Act states:

   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.

2. In its SGP, the Opponent nominated ss 18 and 27 of the Australian Consumer Law as forming the basis for this ground.[17] In the Opponent’s submissions, this was pared back to just s 18 of the ACL, which relevantly reads:

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

   18 Misleading or deceptive conduct

   (1)    A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

3. Conduct is misleading or deceptive if it leads into error.[18] This is a greater level of mistakenness than mere uncertainty or confusion,[19] which I have already considered and dismissed in relation to ss 44 and 60 of the Act. Both of those grounds failed on this exact issue, so it follows that s 42(b) must also fail. The Opponent has not established this ground.

   [18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Mason J).

   [19] Ibid.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 Decision

   (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.

2. The Opponent has not established any ground of opposition to any extent, so I have decided that 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, I direct that 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.

3. Both parties have that an award of costs me made. Costs usually follow the event. I have not been presented with any reason to make an exception in this matter. Accordingly, I award costs against the Opponent in the applicable amounts set out in sch 8 of the Trade Marks Regulations 1995 (Cth).

Adrian Richards

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs Group

5 October 2018