Royal Automobile Club of Australia Ltd v Royal Automobile Club of Victoria (RACV) Ltd

[2000] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by ROYAL AUTOMOBILE CLUB OF AUSTRALIA LTD to registration of trade mark application 710060 (classes 16, 36, 37, 39, 42) - RACV- filed in the name of ROYAL AUTOMOBILE CLUB OF VICTORIA (RACV) LTD.

and

Re:Opposition by ROYAL AUTOMOBILE CLUB OF VICTORIA (RACV) LTD to registration of trade mark application 712759 (classes 16, 36, 37, 39) - RACA- filed in the name of ROYAL AUTOMOBILE CLUB OF AUSTRALIA LTD.

Background. 

This is a matter concerning a dispute about the alleged incompatibility of the trade marks RACA, rendered in plain type, and RACV.  The latter is rendered as follows:

 

The two trade marks in question are sought to be registered, respectively, by Royal Automobile Club of Australia Ltd and by Royal Automobile Club of Victoria (RACV) Ltd.  For convenience, I will refer to the first of those firms as Australia and the other as Victoria.  Unless I indicate to the contrary, these terms include both the present incorporated bodies and their predecessors, the unincorporated clubs.

The goods and services for which Victoria and Australia seek registration are as follows:

Application 710060 (Victoria)	Application 712759 (Australia)
Class 16	Printed matter, publications and brochures all pertaining to insurance, financial services, motor vehicle maintenance and repair, vehicle towing, travel and tourism and legal services	Printed matter, publications and brochures pertaining to insurance, financial services, motor vehicle maintenance and repair, vehicle towing, travel and tourism
Class 36	Insurance, insurance and financial consultancy, insurance brokerage and consultancy	Insurance; insurance and financial consultancy; insurance brokerage
Class 37	Motor vehicle maintenance and repair; repair information; emergency vehicle breakdown assistance	Motor vehicle maintenance and repair; repair information; emergency assistance for vehicle breakdown
Class 39	Car rental; courier services; escorting and transporting travellers; message delivery; vehicle towing; travel and tourism advice, information and reservations; transport information	Car rental; courier services; escorting and transporting travellers; message delivery; vehicle towing; travel and tourism advice, information and reservations; vehicle inspections and assessments
Class 42	Legal services; vehicle inspections and assessments

I will come, below, to the details of the evidence relied on by Victoria and Australia in conducting their respective oppositions.  I have dealt with these two matters as being entirely separate proceedings, albeit that the outcome of one is of some relevance to the other.  That is the way I directed that they be argued for me to hear and decide, under delegation from the Registrar of Trade Marks.

At that hearing, Australia was represented by its patent attorney, Geoffrey Davidson of the patent attorney firm of Halford & Co.  Victoria was represented by Elspeth Strong of counsel, instructed by Freehills Carter Smith & Beadle, patent attorneys.

Evidence

In opposing registration of application 710060, the first-filed of the two applications, Australia has relied on the declaration of Richard Nelson, made on 13 January 1999.  It includes exhibits A to H.

In answer to Australia's opposition, Victoria has relied on a declaration made by Pearl Drier on 9 April 1999, which includes exhibits A and B.

In opposing registration of application 712759, Victoria has relied on a second declaration by Pearl Drier.  This declaration was made on 14 August 1997 and includes exhibits A, B, C and D. 

In answer to the opposition, Australia has again relied on the Nelson declaration.  The body of the declaration is identical and the minor differences in the exhibits stem from differences in the way the exhibited material has been copied.

In reply to Australia's evidence, Victoria has relied on a third declaration by Pearl Drier.

History of the parties

The club that was to become Australia commenced in 1903.  Despite still being a motorists' social club, it is not a populist organisation.  For its members, it provides what Mr Davidson characterised as typical motorists' organisation services: road service, touring advice and so on.  Mr Davidson described it as having a "not very large" membership.  In 1999, there were 3979 members.  It is not clear if the constitution now allows women to be full members, but, either way, in 1999 there were 1316 "town" members, 942 "country" members and 956 "associate" members.

Being a small and select club that needs to provide services over a wide area has presented Australia with a problem in logistics.  Mr Davidson noted that, since the time of petrol rationing after the Second World War, an arrangement has allowed members of Australia to avail themselves of services provided by the NRMA in New South Wales.  This has yielded similar benefits in other states, including Victoria. 

Ms Strong, for Victoria, suggested that there is no current evidence of any such affiliation.  However, much of the historical material in Victoria's evidence makes it clear that there are long-standing links with what Victoria has called the other Royal clubs.  As long ago as 1929, the Victorian and Australian clubs co-operated in a Sydney-Melbourne reliability trial.  There is certainly clear evidence of formal, contractual, links with, and payments to, the NRMA.  Equally, in the Nelson declaration, annexure F states quite plainly that such services are arranged for members of Australia, outside New South Wales, by virtue of the fact that both Victoria and Australia are members of the Australian Automobile Association.  Likewise, Exhibit G (Members' Bulletin, June/July 1995) is undisputed evidence.  It confirms that Victoria offered reciprocal rights to members of Australia.  I think it would be arbitrary and unrealistic of me to suggest that reciprocal benefits are not still available in Victoria.

The links between the clubs are clearly seen in relation to the membership badges used, over time, by Victoria.  What follows is taken from material annexed to the Drier declarations.

The Automobile Club of Victoria commenced in 1903.  Its badge at that time had, as a central motif, an ornate letter V superimposed on the device of a winged motor car.  Around this, in an annulus, were the words AUTOMOBILE CLUB OF VICTORIA.  In 1916, when the club gained permission to include the word "Royal" in its name, the badge was changed accordingly.  At some stage the central motif may have been a flag but in 1921 the club fixed on the elements of a winged motor car, the letter V and the words ROYAL AUTOMOBILE CLUB OF VICTORIA.  It was used in two variants, as follows:

 

The version on the left was typically used in annual reports and on the cover page of the club magazine or journal.  The version on the right, which incorporates a very similar winged car device, was the one officially adopted as the bonnet badge, available for sale to members.  The latter design was based on one that the British Royal Automobile Club permitted to be used by Associate clubs in various districts of Britain.  Its family resemblance to the badge still used by Australia, shown below, is obvious.

What I will call the current badge was developed from a form introduced in 1952.  Again, it was based on a badge used by the Royal Automobile Club of England.  Most significantly, Victoria has claimed for many years that it was the instigator of a move, throughout the British Commonwealth, for all similar clubs to use a common design. Victoria referred to this, at the time it was introduced, as the "Empire-wide standard design". The 1952 version was used variously as black-on-white, white-on-black (as is the current one), or as a chromed metal badge.  The changes over the years have been minor, to do mostly with the crown featured at the top of the badge. The 1952 version (on the left) and the current one are as follows:

 

In total, for most of its history, Victoria has been keen to both emphasise its links with the Royal Auto Club of Britain and to have other organisations, here and overseas, do the same.

As to the history of the Royal Automobile Club of Australia, I draw on the undisputed evidence of the Nelson declaration.

The Australian club was founded in 1903.  In 1909 the club became officially affiliated with the Royal Automobile Club of Britain.  Permission to add the word "Royal" to its name was granted in 1919.

By 1922 Australia was using a membership badge that has continued in use with very little change, other than the inclusion, as a very small element, of the letters ISC some time in the 1980's.  This was to recognise the inclusion of the former Imperial Service Club.

The 1922 version as follows:

 

In 1945, the club finalised a contract with the NRMA for the supply, to members of Australia, of road service and insurance.  At that point, Australia apparently ceased to provide these services through its own office.  Mr Davidson suggested that this was no more than the "out-sourcing" of the provision of the services.

Issues and decision - 710060.

In fairness to Mr Davidson, I will note that the true opinion of his client is that there is, in fact, no conflict between the allegedly conflicting marks.  However, his client anticipates that Victoria, in opposing Australia's own application, 712759, may endeavour to force some sort of territorial restriction of that application.  Therefore, as Mr Davidson noted, his client is entitled to preserve its own position by opposing Victoria's application.  Since application 710060 is one of several that I will be required to consider in deciding the opposition to 712759, I must first decide if the earlier of the two applications is to survive, before deciding if it is an impediment to the latter.  My first question, accordingly, is to decide if Australia can impede the registration of Victoria's currently applied-for trade mark.

Mr Davidson argued that Australia's case in relation to 710060 could be resolved under two headings:

• the trade mark applied for was, for one reason or another, likely to deceive or cause confusion

• Australia had a sufficient prior reputation in a deceptively similar mark, such that use of the opposed mark by Victoria would be likely to deceive or cause confusion.

Broadly, these two headings align with sections 43 and 60 of the Trade Marks Act 1995 (the act).  The former of these provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Mr Davidson asserted that a reputation as a trade mark can give rise to a connotation that will attract the action of s 43. Delegates of the Registrar of Trade Marks, in the absence of a court decision where that issue has been fully argued and considered, have taken a contrary view. The registrar's understanding and practice is that s 43 is confined to situations where the deceptive or confusing element is inherent to the trade mark itself. The Explanatory Memorandum that was before Parliament when the act was adopted supports this view.

Under protest, Mr Davidson accepted that the reputation issue could be adequately explored under s 60. Since the end result in this case will be the same, for reasons that I will to set out in due course, I will dispense with further consideration of s 43 and turn to s 60.

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

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.  A trade mark is deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

Note 2:  For priority date see section 12.  The priority date for application 710060 is 4 June 1996.

Mr Davidson made the point that the trade marks used by RACA were well-known in relation to the various services offered by Australia.  He argued that the competing trade marks, those used by Australia and the one sought to be registered by Victoria, were deceptively similar. 

The question before me now is, firstly, to decide if the specific form of Victoria's trade mark, the one now sought to be registered, is deceptively similar to the trade mark(s) used by Australia.  If the answer to this threshold question is "yes", various other questions follow, contingent on the extent of the reputation of Australia's trade mark.

Australia's opposition collapses, however, on the threshold question of deceptive similarity. I do not dispute any of the case law relied on by the legal representatives of either party. However, when I allow for the impression, based on recollection, of Victoria's mark, I am very far from convinced that the deceptive similarity aspect of s 60 has been established.

I do not think that there will be, in the mind of any person of ordinary intelligence and memory, any reasonable likelihood of either deception or confusion.  This is because of the background against which the competing marks must be seen.  Worldwide, on the evidence, there are many organisations that are the Royal Automobile Club of this or that state or country.  I am satisfied that this circumstance will be familiar to a wide range of people.  Moreover, it is a circumstance of which I can and should take note.  It is one of the "surrounding circumstances" relevant to the comparison of marks referred to in Pianotist Co's Appn (1906) 23 RPC 774, at 777.

The Full Federal Court recently made a similar point.  See Registrar of Trade Marks v Woolworths [1999] FCA 1020 at 61:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as in the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them". 

I acknowledge that the trade marks RACA and RACV - as rendered in use and on the application form respectively - share the first three letters in common.  However, I give, in this case, particular weight to the familiarity that people in general can be expected to have with the import of those three initial letters.  Both of the parties have relied on their relationship with the RAC of England, and Victoria's evidence shows that the links with other similar organisations are well publicised.  That is not surprising, as I think it is a matter of general knowledge that such organisations exist. 

It is beyond dispute that Australia, because of its non-populist character as a social club, is vastly less well-known than the other Royal clubs.  However, that does not diminish the salient fact that, in its home state, New South Wales, just as in other states, by far the majority of users of relevant goods or services will understand that RAC can mean different things in different states.

I would not go so far as to say that the letters RAC are "common to the trade", or that this is a crowded field.  However, I think they have attained a significance that is neither particularly strong nor proprietorial.  The marks of Australia are therefore not deceptively similar to the one that Victoria now seeks to register.

This finding, about the extent of the resemblance between Australia's marks in use and the one that Victoria seeks to register, has implications for s 43 as well as s 60. Specifically, even if I thought the reputation of Australia's marks was relevant to s 43, I would find that deception or confusion, far from being established as a reasonable likelihood, is precluded by the extent of the differences between the competing marks.

Accordingly, Australia has not established a ground of opposition under either s 43 or s 60.

Issues and decision - 712759.

One of the grounds argued by Victoria, in opposing registration of the trade mark RACA, is different to those relied on by Australia.  Ms Strong argued that:

• Victoria had a sufficient prior reputation in a deceptively similar mark, such that use of the opposed mark by Australia would be likely to deceive or cause confusion.

• the trade mark which Australia seeks to register was deceptively similar, if not substantially identical, to relevant registered trade marks owned by Victoria.

The first of these grounds is a matter under s 60. I have already set out that provision and will not repeat it. However, the threshold test, as I have called it, must now be applied to the marks used by Victoria, vis a vis that sought to be registered by Australia.  I must, in testing this, allow for reasonable and fair use of the mark that Australia seeks to register.  With that in mind, I allow fully for a point made by Ms Strong.  She argued that the reproduction of the trade mark RACA, as evidenced by the Nelson declaration, not only could but would be in capital letters of a typeface very close to that used by Victoria to render the RAC element of its trade marks.

Under s 60, Victoria relies on its extensive use of the trade marks RACV and RAC in various forms.

I have already said, in dismissing opposition to registration to trade mark application 710060, that the trade mark element RAC is in use in various parts of the world, and of Australia in particular, to indicate an automobile club that claims some sort of link with the RAC of England.

I do not dispute that Victoria is loosely referred to as "the R.A.C." in Victoria, just as its Queensland and Tasmanian counterparts presumably are in their respective states.  Obviously, it is a motoring club with Royal patronage.  True, even in the days when its road patrols rode motorcycles, the side-cars of these were marked simply Royal Auto Club.  There is no doubt that the letters RAC are very prominent in the current badge used by Victoria. However, I think it must be obvious, at all times, to those using this convenient short form, that Victoria is not, and never was, the only RAC. 

Ms Strong suggested that there would be times when, perhaps in the course of ringing Directories Assistance to seek out a phone number, a hurried caller will ask for the phone number of "the R.A.C." or even "the Auto Club".  That scenario is a reasonable one, somewhat reminiscent of the case of Montgomery v Thompson (1891) 8 RPC 361: "thirsty folk want beer not explanations". However, the principle should not be taken too far. Ms Strong's argument would have me infer that Victoria has some sort of monopoly on the letters RAC that it does not have in practice.

At most times, if Victoria is referred to as "the RAC", it will be in a context where the identity of the Royal Automobile Club of Victoria was already established by context, either expressly or by implication.  I think that this kernel of truth, residing in the background, will be sufficient to prevent any significant risk of confusion between the trade mark RAC and RACA in relation to these services.  Therefore, I conclude that the trade marks RAC, in the forms used by Victoria over time, and RACA are not deceptively similar.

For parallel but more visible and obvious reasons, I do not find that the trade marks RACV and RACA are deceptively similar.  I simply do not see that, in the context of these marks for these goods and services, the import of the final letters, A and V respectively, will be overlooked in any reasonable number of cases.

Therefore, both of those things being so, the opposition fails under s 60.

As to Victoria's remaining ground, s 44, this provides as follows in subsection 1. 

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.  (A trade mark is deceptively similar to another if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. )

Note 2:  For similar goods see subsection 14(1).  ("Similar goods" are goods of the same description, a concept carried over, without alteration, from the 1955 legislation)
Note 3:  For priority date see section 12. (For present purposes, the priority dates of the registrations on which Victoria relies are earlier than that of the opposed application)

Australia's application also seeks registration in respect of services.  Subsection 44(2) deals with such an application, as follows:

(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.

Mr Davidson, for Australia, did not attempt to argue that there was not sufficient conflict between the scopes of the competing applications.  I will proceed on the basis that, if either s 44(1) or (2) is triggered, it will be because the relevant marks are sufficiently similar.

Leaving aside applications that have been lapsed for more than 12 months and that cannot, under s 80(b), now impede Australia's application, Victoria relied, in the notice of opposition, on the following trade marks:

• 349370 and 349372.  These registrations both relate to the trade mark RACV, registered in plain upper-case letters, in respect of various relevant services in classes 39 and 37.

• 349369 and 349371, in the same classes, and for the following trade mark:

 

• 710060, with which I have already dealt.

At the hearing, Victoria sought to amend its notice of opposition to include reference to another of its registered trade marks.  This registration, 393969, is in class 42.  It is for the same RACV trade mark as 349370 and 349372.  I have allowed this to be done and, consequently, allowed both parties to make written submissions about the relevance or otherwise of that registration.  My decision as follows takes account of those submissions.

Given the marks at issue, Ms Strong, for Victoria, argued that the competing marks are substantially identical.  This, on the basis of The Shell Co of Australia Limited v Esso Standard Oil Australia Ltd (1961) 109 CLR 407 at 414, is an untenable argument and I reject it.

Ms Strong also argued that the marks registered in the name of Victoria are deceptively similar, in terms of s 10, to the one that Australia now seeks to register.

At the hearing, Mr Davidson, for Australia, characterised the stance of Victoria as "disingenuous". He referred to the history of the marks, the advocacy by Victoria of the Empire-wide standard design and the fact that state borders do not impede the flow either of travellers or of knowledge. These are issues that would normally be more relevant to s 60 than to s 44. However, here, they are so much in the public domain that they colour s 44 as well.

In response to the amendment of the notice of opposition Mr Davidson has, in written submissions, made numerous references to the state of the register in relation to trade marks owned by the other Royal clubs, as Victoria has termed them.  Mr Davidson had already attempted to do this at the hearing.  I said at that time that the details of those registrations were not in evidence.  I therefore do not intend to have regard to his analysis of what territories are or might be covered for those various registrations.  The terms of the registrations would not, in any case, be any indication of the extent to which the trade marks in question were actually used, since a mark can be used in a territory for which it is not registered.  However, as I have said, even though the material is not in evidence, I think it would be completely artificial for me to suggest that the public is unaware of the existence of a number of different Royal Automobile Clubs.

I have already said that I regard the general public knowledge of the multiplicity of Royal Automobile Clubs as a critical circumstance in the comparing of marks under s 60. I have already set down the reasons why the marks used by Victoria are not, for the purposes of s 60, deceptively similar to that which Australia now seeks to register. I believe that the same conclusion applies to those marks, as registered, for the purposes of s 44.

Accordingly, I find that Victoria has not established its ground of opposition under s 44.

Residual Discretion?

Neither party has established any ground of opposition.  Ms Strong argued that in such a case I still had the discretion not to register Australia's trade mark.  Ms Strong referred to a paragraph in Lahore, Patents Trade Marks and Related Rights, dealing with that issue.  However, that reference (paras 66,350 - 66,360) seems to leave the issue more open than Ms Strong would suggest. 

Ms Strong also specifically referred to TV Shopping Network Ltd v Home Shopping Network Inc (1998) 40 IPR 639 at 645. In that decision, Hearing Officer Forno directed that registration proceed. He did, however, agree that the registrar had a discretion not to register, even if no grounds of opposition had been established.  Mr Forno subjected this to a strong caveat: "provided that natural justice is accorded to both sides".

It would normally be manifestly unjust to refuse - outright, save only for an appeal to the Federal Court - to register an application unless the registrar was satisfied, somehow, that the applicant had already had adequate opportunity to prepare or consider all relevant material and to prepare and argue its case on the issue in question.  I cannot imagine how the applicant would ever have had such an opportunity, at an opposition hearing, in respect of a ground that the opponent had not adequately invoked.  I believe that the appropriate way to accord natural justice to an applicant, in a case where a significant issue arises, is by way of revoking acceptance.  This is an option under s 44.  That course of action was set out as sometimes appropriate under the 1955 act - see the former Examiners Manual, section 9.14 - and remains so under the current act.

I also note the comments of French J in Registrar of Trade Marks v Woolworths, supra, at 47, that the balance of the 1995 legislation is shifted, to some extent, towards the identification and protection of commercial products and services, rather than the protection of consumers. I believe, therefore, that it would take fairly remarkable circumstances to cause the registrar to impede registration where no ground of opposition has been established. In such a case, in the sort of exceptional circumstances that Mr Forno was considering, revocation of acceptance would allow a ground that the opponent had not relied on to be dealt with adequately, fairly, and within the framework of the Trade Marks Act.

However, in the present case I can see no reason why registration should be delayed. 

Conclusion

My decision in terms of s 55 is, accordingly, that both applications should be registered.  I direct that the applications may proceed to registration after 30 days from the date of this decision.  If the Registrar has been served with a notice - or notices - of appeal before that time, I direct that registration of the relevant application or applications shall not occur until the appeal has been decided or discontinued.

I make no order as to costs.

Terry Williams
Hearing Officer

28 June 2000