SAPH Vision Quest Association Inc v Jacqueline Margaret Hendy

[2018] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by SAPH Vision Quest Association Inc to registration of trade mark application 1619849 (41) - NEW BEGINNINGS - in the name of Jacqueline Margaret Hendy.

Delegate:

Decision on the Written Record

Iain Campbell Thompson

Representation:

Opponent: self-represented – written submissions

Applicant: self-represented – written submissions

Decision:

2018 ATMO 76

Trade Marks Act 1995

Section 52 opposition to registration - section 44 – deceptively similar trade marks; services of the same description; no evidence filed by applicant. Consideration of information under regulation 21.19. Ground under Section 58A established.

Registration refused.

Background

1. In these proceedings Jacqueline Margaret Hendy (‘the Applicant’) has made an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark which appears below:

Application No: 1619849

Priority Date:  29 April 2014

Services:Class 41: Event management services; social club services (entertainment, sporting and cultural services); organising of entertainment, social, sporting, cultural, education, networking events; party planning (entertainment); arranging group recreational activities; booking of entertainment; arranging of entertainment including but not limited to exhibitions, musical entertainment, club entertainment and live entertainment; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer schemes; arranging and conducting of seminars, workshops and conferences; organisation of live shows; wine tasting events; dissemination of event and entertainment material; provision of entertainment facilities; organisation and conducting of festivals; weblog (blog) services (online publication of journals or diaries); writing for others (commissioned and custom writing); providing online electronic publications (not downloadable); publication of multimedia material online; production of audio recordings; production of audio/visual presentations; publishing services; publication of books; publication of periodicals; publication of electronic books and journals online; publication of multimedia material online; providing information, advisory and consultancy services in relation to the aforesaid services; provision of all the aforesaid services including by electronic means, on-line, by wireless technology and/or via a global computer network

(‘the Specification’)

Trade Mark:  NEW BEGINNINGS

(‘the Trade Mark’)

Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. During examination of the Trade Mark, in compliance with section 31 of the Act, the examiner cited the trade mark appearing below as a ground for rejection in terms of subsection 44(2) of the Act:

Registration No:              1614798

Priority Date:  3 Apr 2014

Goods/Services:              Class 35: Charitable services, namely business management and administration; Charitable services, namely organising and conducting volunteer programmes and community service projects; Charitable services, namely the recruitment, organisation and deployment of volunteers

Class 41: Charitable services, namely education and training

Class 45: Charitable services, namely mentoring (personal or spiritual)

Trade Mark:  

1. The Applicant provided evidence couched in terms of subsection 44(4) of the Act and the Trade Mark was accepted for possible registration and advertised in the Australian Official Journal of Trade Marks on 2 June 2016.

2. On 2 August 2016, SAPH Vision Quest Association Inc., the owner of 1614798 (‘the Opponent’s Trade Mark’), filed a Notice of Intention to Oppose.

3. On 1 September 2016, the Opponent filed a Statement of Grounds and Particulars detailing grounds in terms of, inter alia, subsection 44(2) and section 58A of the Act under which I will decide these proceedings.

4. On 19 October 2016, the Applicant filed a Notice of Intention to Defend.

5. Subsequently, on 9 February 2017, the Opponent filed Evidence in Support which I will briefly touch upon, below.

6. The Applicant has not filed Evidence in Answer.

7. Both parties have been informed of their right to be heard or to make written submissions. Both parties have made written submissions.

8. Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision which is to be based on the written record; that is, those materials referred to in the proceeding paragraphs.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The Relevant Date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application (whilst section 44 – which determines the disposition of this application – specifies the ‘priority date’, that date is here the same as the filing date).

Evidence

1. The Evidence in Support in this matter comprises a declaration by Bernd Hans Bauer, President of the Opponent which is a charity.

2. Relevantly, Mr Bauer declares as to the Opponent’s continuous use of the trade mark NEW BEGINNINGS (words) and the Opponent’s Trade Mark since April 2008 in relation to various charitable services.

3. As I have mentioned, there is no Evidence in Answer from the Applicant.  It may be that the Applicant believes that I may refer to the evidence of use (‘the EOU’) that she provided to the examiner; however, this is not so.  I may only, with an exception provided under regulation 21.19 of the Trade Marks Regulations 1995, (‘the Regulations’) refer to the evidence filed in relation to these opposition proceedings.

4. Regulation 21.15(6) states that in the absence of a hearing request the Registrar will decide the matter by reference to relevant information held in the Trade Marks Office.  The Trade Marks Examiners Manual defines relevant information as including the notice of opposition, any evidence which has been properly filed and written submissions (if any) by the parties.  Unless the Applicant chooses to refile material filed as part of the examination process in an opposition proceeding (which it has not chosen to do)[1], such material is not part of the written record on which a delegate can have regard to when deciding an opposition. 

5. This is to ensure that the Opponent is afforded natural justice and procedural fairness in that it has had access to all of the relevant material upon which this decision is based as well as having the opportunity to respond to what any of the Applicant’s evidence is asserted to show.

6. I observe, however, that it is apparent from Mr Bauer’s submissions that he obtained the EOU following a request under the Freedom of Information Act 1982.

7. In terms of 21.19 of the Regulations, referring to the declaration of the Applicant dated 4 May 2016 upon which the examiner based the decision to accept the Trade Mark for possible registration, I accordingly note that the Applicant claims continuous use of the Trade Mark since ‘early 2013’ in relation to a series of networking ‘events’.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical 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.

   […]

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

2. Accordingly, the questions that arise under subsection 44(2) in respect of the Opponent’s Trade Mark vis-a-vis the Trade Mark are:

   1.    Is its priority date earlier? and

   2.    Are the services involved ‘similar services’? and

   3.    Are the trade marks substantially identical or deceptively similar?

3. To establish its ground under section 44 of the Act the Opponent must establish each of the above requirements (respectively, the ‘First’, ‘Second’, and ‘Third requirements’).

Priority Date

1. The priority date of the Opponent’s Trade Mark is earlier than that of the Trade Mark.  The First Requirement is accordingly established/

Similar Services

1. Section 14 of the Act relevant provides:

   14Definition of similar goods and similar services

   […]

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

2. The expression ‘services of the same description’ was discussed in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[2] by Greenwood, Besanko and Katzmann JJ:

   [2] [2017] FCAFC 56 at [333].

   The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:

   There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the AssistantComptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.

   Dixon J had said much the same thing in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 when his Honour observed:

   What forms the same description of goods [or services] must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

   There is no good reason to believe that these statements of principle do not apply in relation to services for the purposes of s 120(2)(c) and, in fact, they have been found to so apply: MID Sydney Pty Ltd v Australian Tourism Co Ltd, supra at [241], Burchett, Sackville and Lehane JJ at 243 and 244. Plainly enough, the calculus of factors may alter when the question becomes one of applying the principles to services. By way of illustration, the Full Court at 242 and 244, supra at [241] of these reasons, concluded that the services involved in conducting “an hotel business” including the accommodation of guests, the operation of restaurants and bars and the provision of conference and business facilities and other services normally offered by hoteliers (the impugned services), had different characteristics from services described as “property management services” (the registered services) and thus, those services could not be described as services of the same description as property management services. Those conclusions were reached by the Full Court by construing the words “property management services” and taking into account the evidence given by service providers as to the features of the various services.

   As a question of statutory construction and statutory purpose concerning s 120(2)(c), the centrality of s 20 of the Act must be kept in mind in conjunction with s 120(2)(c).

   Section 20 confers on the registered owner of the trade mark the exclusive right to use (and authorise others to use) the trade mark and the right to obtain relief for infringement. The scope of the monopoly grant (subject to the Act) is conditioned not only by a corresponding right to seek relief to stop others from using, as a trade mark, a sign substantially identical with or deceptively similar to the registered trade mark in relation to, relevantly here, the registered services, but also in relation to services of the same description as the registered services. Determining whether services are services of the same description as the registered services involves examining the essential characteristics of each.

   In the written and oral submissions the appellants again place reliance, on this issue, on the notion that the registered services of the appellants “plainly overlap”. Thus, it is said that the features of the services provided by the respondents, the subject of the findings, are necessarily features of the same description as the features of the registered services. We have already taken a different view about the extent to which it can be said that the registered services “plainly overlap”.

   As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

   (1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

   (2) To whom are the services offered?

   (3) How are they provided?

   (4) How are they used?

   (5) What is their purpose?

   (6) Are they bundled together with other services?

   (7) Are they differentiated by the functional level at which they are provided: wholesale or retail?

   (8) Where do they originate?

   (9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

   (10) How closely contestable are the services in substance: are they in the same market or trade?

   (11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].

3. It is apparent that many of the services within the Specification are ‘of the same description’ as those services within the Opponent’s Class 41 specification of services, especially when viewed from the perspective of ‘infotainment’ services.  ‘Charitable services, namely education and training’ includes, for example, ‘infotainment’ services relating to music, culture, food, wine, sport, well-being, health (and the like) for fund raising purposes.  These services have, or are commonly perceived to have, the same origins in trade as the corresponding and/or analogous services within the Applicant’s Specification.  There appears to be no ‘bright line’ that separates the services of the parties: the Opponent’s evidence shows, for example, that the Applicant has run a ‘live show’ as a charitable event, or fundraiser for a charity.

4. Most of the services within the parties’ specifications are, accordingly, ‘services of the same description’.

5. The Second Requirement is thus established.

Substantially identical or Deceptively Similar Trade Marks

1. In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[3] (‘Shell’) Windeyer J said:

   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”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [3] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

2. The two trade marks under comparison are:

   NEW BEGINNINGS  vs 

3. There is not a ‘total impression of resemblance’ having regard to the essential features of the Opponent’s Trade Mark – the device component of the Opponent’s Trade Mark obviously functions as an ‘essential feature’ of that trade mark and does not do work analogous to the features under consideration in (for example) E & J Gallo Winery v Lion Nathan Australia Pty Ltd[4] or PB Foods Ltd v Malanda Dairy Foods Ltd.[5]

   [4] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.

   [5] [1999] FCA 1602; [1999] AIPC 40,117; (1999) 47 IPR 47.

1. The trade marks are not substantially identical.

2. Turning to the question of ‘deceptive similarity’, section 10 of the Act 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.

3. In regard to ‘deceptive similarity’ Windeyer J continued in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

4. In Re Pianotist CoLtd’s Application[6] endorsed by the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[7], Lord Parker stated:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to conclusion that there will be confusion—that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods—then you may refuse the registration, or rather you must refuse the registration in that case.

   [6] (1906) 23 RPC 774 at 777.

   [7] [1952] HCA 15; (1952) 86 CLR 536 at 538.

5. And in Tivo Inc v Vivo International Corporation Pty Ltd[8] Dodds-Streeton J observed:

   In Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1 (“Crazy Ron’s”) at [77], the Full Federal Court reiterated the House of Lords’ unanimous approval in Aristoc Ltd v Rysta Ltd [1945] AC 68 (“Aristoc”) at 86 of Luxmoore LJ’s recognition in Re Rysta Ltd’s Application [1943] 1 All ER 400 at 407 that the court must allow for consumers who know only of one of the marks and have an “imperfect recollection” of it when encountering the other trade mark, and that accordingly:

   [l]ittle assistance... is to be obtained from a meticulous comparison of words, letter by letter, and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

   [8] [2012] FCA 252 at [100].

6. And Her Honour stated that:[9]

   It is necessary to compare the trade marks both visually and aurally. The test is not whether customers might think that the marks are the same, but rather whether there is a real risk that the respondents’ use of the Vivo trade mark will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt (see Crazy Ron’s at [76]; Southern Cross at 595; Woolworths at 382) as to whether the respondents’ products come from the same source as those of the applicants. It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed” or “mixed up”.

   [9] Ibid at [102].

7. Here, the parties’ similar services will be requested or referred to by the words within (or constituting) the trade marks, ‘New Beginnings’, and confusion on that basis is likely to ensue.

8. Accordingly, I find that the trade marks of the parties are deceptively similar.

9. The Third Requirement is thus established.

10. As each of the three requirements has been founded, the ground under subsection 44(2) is, consequently, established.

Subsection 44(4).

1. This subsection requires the Applicant to demonstrate continuous use of the Trade Mark in relation to services within the Specification beginning before the priority date of the Opponent’s Trade Mark and up until the priority date for the registration of the Trade Mark.

2. I am satisfied that the Applicant has done so.

Section 58A

1. Section 58A of the Act provides:

   58AOpponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)similar goods or closely related services; or

   (ii)similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:For predecessor in title see section 6.

2. As I discussed under the heading ‘Evidence’, Mr Bauer’s declaration establishes that the Opponent has continuously used the Opponent’s Trade Mark since April 2008 in respect of its similar services.  That is before the first use of the Trade Mark by the Applicant.

3. The Opponent has, accordingly, established its opposition under section 58A of the Act.

Decision

1. 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.

2. As the Opponent has established its opposition to the registration of the Trade Mark, it is appropriate that the Registrar refuses to register it which, as one of her delegates, I now do.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

17 May 2018