Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft

[2002] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by The Institute for Earth Education to registration of trade mark application 786169(16, 25, 41) - GREENING AUSTRALIA EARTH KEEPERS and device - filed in the name of Greening Australia Limited.

Background

On 22 February 1999, Greening Australia (South Australia) Inc, an incorporated association in South Australia, applied for the following trade mark:

The classes were ultimately amended to read as follows: 

Class 16 Printed matter and printed publications including newsletters; educational materials in this class; and stationery

Class 25

Articles of clothing including T-shirts; head wear including caps; and footwear

Class 41

Provision of environmental and ecological training and education services including education activities for children; arranging seminars, camps, bush walks and outdoor activities for the purpose of educating children and families about the environment; publication of books, newsletters and instructional materials concerning the environment and the protection of wild life

Class 42

Plant nursery services; advisory services dealing with environmental care and the ecology; and research services in relation to the care and maintenance of the natural environment

On 27 September 1999, the applicant assigned its interest in the application to Greening Australia Limited ("Greening Australia").

On 21 October 1999, 786169 was advertised as accepted for registration. 

On 12 January 2000, The Institute for Earth Education ("IEE"), filed a notice of opposition to Greening Australia's application. The only ground of opposition on which IEE relies is Section 60 of the Trade Marks Act 1995 ("the Act").  In doing so, IEE asserts that it is the owner of the following unregistered trade mark:

Earthkeepers

While there is no specific statement addressing how the opponent has applied its trade mark, it appears from the evidence that the opponent has used it in relation to goods and services in all the classes sought by the applicant.  This includes printed material, education services, advisory services and articles of clothing.

In due course, the parties were invited by the Trade Marks Office to request a hearing of the opposition.  Neither party requested a hearing, and the matter was referred to me for a decision as a Delegate of the Registrar of Trade Marks on the written record.

Evidence and submissions

Both parties have provided evidence in support of their respective positions.  The opponent has filed and relies on the following evidence:

Type of Evidence	Declarant	Date	Exhibits
Evidence in Support	Kristine Elizabeth Mosher	18.04.2000	KEM(1)1-3
Ian Kenneth Coutts	05.05.2000
Helen Christine Goldney	26.04.2000
David Warren Larritt	02.05.2000
Philip Donaldson	25.04.2000
Josephine Anne Evers	18.04.2000
Brian Francis Taylor	14.04.2000
Evidence in Reply	Judy Lee Harris	11.05.2001	JLH1
Kristine Elizabeth Mosher	30.04.2001	KEM(2)1-6
David Warren Larritt	12.05.2001	DWL1
William David Prime	21.05.2001
Further Evidence	Kristine Elizabeth Mosher	31.07.2001	KEM(3)1-4
David Scott Milner	27.07.2001

The applicant has filed and relied on the following evidence:

Type of Evidence	Declarant	Date	Exhibits
Evidence in Answer	Andrew Cameron Dunncliff	29.01.2001	ACD1-2
Mark Thomas	06.02.2001	MT1-5
Richard Stuart Catt	06.02.2001	RSC1-2
Sheryn Pitman	07.02.2001	SP1-4
Barry Mackie	08.02.2001	BM1-7

The opponent has also provided written submissions dated 4 September 2001.  The applicant provided written submissions on 6 August 2001 and 8 January 2002.

Grounds of opposition

Section 60 says:

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)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.

Note 2:       For priority date see section 12.

Section 10 is as follows:

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.

It is clear from the notice of opposition and its written submissions IEE asserts that the applied for trade mark is deceptively similar to the applicant's unregistered trade mark which has been used in relation to its goods and services. Section 60 is drafted in a way that recognises rights in both registered and unregistered trade marks. On the other hand, the applicant does not concede that the opponent's "Earthkeepers" is a trade mark, or that the term has been used as a trade mark on or in relation to the alleged goods and services. I will address this is due course.

The opponent does not allege substantial identity, and therefore, this is not a matter that I will consider further.

In determining whether the application falls foul of s.60, the following matters must be considered:

1. Is the applied for trade mark deceptively similar to the opponent's trade mark;

2. Had the opponent's trade mark acquired a reputation in Australia prior to 22 February 1999; and

3. As a result of the reputation of the opponent's trade mark, would use of the applied for trade mark be likely to deceive or cause confusion?

To determine whether the trade marks are deceptively similar, one must also have regard to the extent to which third parties would be confused or deceived due to the resemblance, if any exists, of the two marks.

Deceptive similarity

The well established tests for deceptive similarity were laid down by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658, where their Honours stated:

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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

and in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415 where Windeyer J said:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is the 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 impression that such persons would get from the defendant's television exhibitions.

Accordingly, it is the "idea of the trade mark" that must be considered - what is the "impression" that will be taken away?  Where there are two competing trade marks, one must also consider whether there is a "common idea".  Here, the common idea is principally generated by the fact that both trade marks prominently feature the words earth keepers.  The applied for trade mark shows them as two separate words with initial capitals - as per Earth Keepers.  The terms Earth Keepers and Earthkeepers  both give rise to ideas of conservation and conservationists.  The applied for trade mark clearly features two other significant elements - the words Greening Australia and the wombat device.  These however, add to (rather than detract from) the general notion of conservation. 

On the face of it, these two trade marks appear to me to have quite enough in common, both as regards primary trade mark elements and in conveying the same ideas, that I would want to find them deceptively similar. 

First, however, the applicant has drawn my attention to the decisions in Woolworths v Registrar of Trade Marks 42 IPR 615 and 45 IPR 411 (the metro cases) and submits that the words Greening Australia or the wombat device have such notoriety that their presence in the applied for trade mark saves it from deceptive similarity.  I am not satisfied that the opponent's submission is correct.   At first instance, Wilcox J confirmed that it is necessary to take into account all the elements of trade mark, and to avoid focussing on only the "duplicated" words.  However, I have also kept in mind the circumstances of that case and the words of French J on appeal where he said:

Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the marks from the viewers perception of them. For in the end the question of resemblance is about how the mark is to be perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without recognition of its notorious familiarity to consumers.

Here, I am not satisfied that the words "Greening Australia" or the wombat logo have the "degree of notoriety or familiarity of which judicial notice can be taken".  While the applicant has filed evidence of the activities of Greening Australia and asserts to its widespread reputation, this is not the same as notoriety.  While the term "notoriety" has not been judicially considered, the Manual of Practice and Procedure notes that the following questions are useful in considering whether a word has the sort of notoriety or familiarity that is required to fall within the decision of French J:

• Is there abundant and widespread consumer recognition of the word and its owner?

• Has there been widespread and overwhelming exposure of the word?

• Does the word have an extremely high profile with the average consumer?

• Has the owner become a household name through use of the word?

• Does the owner have an overwhelming commercial profile through its use of the word?

• Has the word and its owner become an icon?

I see no reason to disagree with the questions posed by the Manual. I am not satisfied on the evidence before me that "Greening Australia" or the wombat logo have achieved any of these standards.  Nor am I am satisfied that a case has been made that judicial notice can be taken of the name or logo.

Finally, it is also essential to take into account the target market. This is particularly true where the target market includes a large number of children.  It is clear from the evidence that both Greening Australia's and IEE's use of the "Earth Keepers" name is designed to be used in conjunction with environmental awareness programs for children.  The evidence shows that schools, parents, teachers and children are the target market.  In the case of children, I believe that their impression of the two trade marks will revolve around the term "Earthkeepers" rather than "Greening Australia" or the wombat logo.  While they may be attracted by the logo in the first instance, it is the environmental and altruistic elements that they will remember and which they will impress upon their parents.  In that sense, the common idea is reinforced.

Is it likely that members of the target group would be confused or deceived due to the resemblance of the trade marks?  I believe so.  The relevant test to be applied was confirmed by French J in the second metro decision at 399,695 where he said:

The use of the word "likely" in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a "real tangible danger of its occurring."

As I have indicated, the common ideas of the trade marks are identical.  The likelihood of confusion occurring, particularly when imperfect recollection and the role of children in the transaction is taken into account.  It is highly likely that a child will mention the IEE program in terms of "Earthkeepers" - this will lead parents or other adults to seek out information regarding the "Earthkeepers" program.  The end result of this may be that parents or adults will be unsure of whether it is the IEE or Greening Australia programs to which the child has referred.  At best, there will be confusion.  At worst, there will be deception in the sense that money will be invested in the wrong program.

For these reasons, I am satisfied that deceptive similarity exists.

Reputation prior to 22 February 1999

The opponent asserts, via Ms Mosher's first declaration, that it first used its trade mark in 1983, when the concept was discussed at a weekend workshop.  In 1987, the first Earthkeeper's camp was conducted by Prince Alfred College under licence from IEE.  Since that time, some 700 students have undertaken the course through Prince Alfred College - this is confirmed by a letter from the College dated 1 April 1999 which appears in KEM(1)2.  The program has also been discussed at a number of different conferences and workshops, and the program has been run in conjunction with a number of different schools, entities (such as the Guides) and education centres (such as Birrigai, an outdoor education facility  in the Australian Capital Territory).  As a result, the opponent asserts that literally thousands of children have experienced its Earthkeepers program.  The numbers increase significantly when one considers the numbers of parents and educators who are involved in one way or another with the programs. 

The exhibits to Ms Mosher's declaration satisfy me that, as at the date of the application, the opponent's Earthkeepers program was used by a significant number of licensees who offered or provided courses and was known by a substantial number of persons in Australia and the Australian Capital Territory.  In turn, I am satisfied that, prima facie, IEE's trade mark had acquired the requisite reputation amongst those persons by the application date.  The exhibits show that a significant number of adults and children have been exposed to the Earthkeepers program, and have in fact become Earthkeepers or Earthkeeper instructors themselves.  This means that they have more than a mere knowledge of the expression "Earthkeepers" - by necessary implication, participants in the course would be enjoy a far greater cognisance of the term, particularly if they themselves earn the imprimatur or title of "Earthkeeper".  Instructors would be even more cognisant of the expression, its meaning, significance and relationship with IEE. 

On the other hand, the applicant asserts that the opponent did not have the requisite reputation.  To support its case, the applicant relies on its own staff's lack of knowledge of the opponent's program prior to the adoption and launch of the applied for trade mark.  Mr Mackie and Ms Pitman assert that "market research" which was undertaken prior to Greening Australia choosing the "Earth keepers" name demonstrated that no-one they spoke to raised any awareness of IEE's Earthkeeper program. Ms Pitman states in paragraph 2 of her declaration that the market research involved approaches to school classes and individuals throughout South Australia. Mr Mackie referred to these approaches as "extensive market research" and states that no "person or any organisation, particularly schools, [made] any mention of the existence of the "Earthkeepers program" run by the IEE". Presumably, Mr Mackie makes these statements on the basis of what he was told by Ms Pitman or what he has read in a report. This evidence is more properly given by Ms Pitman or Ms Royle who were present at the discussions. Accordingly, I am not prepared to give this aspect of Mr Mackie's evidence any great weight. If his statements were made on the basis of a written report, there is no such report before me. Accordingly, this evidence must also be given little weight. Ms Pitman does not set out the names of the schools she consulted or provide any written record of these discussions. Given the absence of the list, and the documentary evidence that Ms Mosher annexes to her first declaration, I have some doubt as to the breadth of the market survey. It is clear to me that at least some schools in South Australia were aware of the program and were continuing to participate in it at the time Ms Pitman made her enquiries and at the date of application. Further, there is some evidence before me that a reputation may have been garnered outside South Australia via the Birrigai Outdoor School in the ACT and the various conferences and seminars, however the applicant's evidence is specifically limited to discussions with people in South Australia.

On balance therefore, I am not satisfied that the applicant's evidence is sufficient to show that the opponent's Earthkeepers program did not have a sufficient reputation at the date of the application. 

On the other hand, I am satisfied by the opponent's evidence that its program was known by a number of different entities and a substantial number of persons.  This is sufficient to satisfy the requirements relating to reputation.

I am also satisfied that the reputation has been garnered in a trade mark.  The opponent has clearly used the term "Earthkeepers", whether on its own or in conjunction with its name or the name of the licensed organisation, as an indicator of the source of services. This occurred prior to the application date.  In relation to goods, the catalogue which is included in KEM(2)-4 shows trade mark use of the "Earthkeepers" name on t-shirts and printed material.  Again, the catalogue and the items contained within it were available prior to the application date.

Accordingly, I am satisfied that the opponent's trade mark did have the requisite reputation at the date of the application.

Likelihood of deception or confusion occurring

The opponent's evidence is filled with exhibits and declarations which assert that deception or confusion has and will occur as the result of the applicant's use of the applied for trade mark. 

While I accept that the bulk of this material has been written or declared by members or employees of IEE, some of these members are also members of Greening Australia. There are also contributors who appear to hold responsible positions in the community, with the Guides and as teachers.  Even taking the potential for bias into account, I am satisfied that these declarations and exhibits show that there is a real, tangible likelihood that members of the community have been and will in future, be deceived or confused if the applicant is allowed to register and use the applied for trade mark.  As their Honours stated in Australian Woollen Mills supra in relation to deceptive similarity, evidence of actual deception is of great weight.

The evidence clearly shows that IEE licenses the Earthkeepers program to various entities. It is also clear that some people have been caused to wonder whether the Greening Australia Earth Keepers club has some association with or licensing relationship with IEE.  I believe that this is not an unreasonable reaction given the way that IEE has used its trade mark in the past.  I believe that the reaction is even more likely where the target audience is children, who do not have the degree of consumer acumen that might allow an adult to question the difference between the programs.  

It is important to note that I have not come to this conclusion on the basis Ms Mosher's unsupported assertion that licensees use the Earthkeepers name in conjunction with their own name (paragraph 7 of KEM(3)).  Rather, the documentary evidence satisfies me that it is well know amongst members of the environmental community that IEE licenses its Earthkeepers name and program to third parties.  This information is then passed on to children and their parents.  As a result, a Greening Australia Earthkeepers program would be seen as entirely consistent with the past licensing practices of IEE.  However, such a conclusion would be incorrect.  I believe that there is also a high likelihood that parents will be encouraged to sign their children up for the cheaper "club" program of the applicant, rather than the more expensive and involved residential program of the opponent. This would result in actual deception, over and above the initial confusion.

Accordingly, I am satisfied that the third element is also made out.

Conclusion

In the circumstances, I am satisfied that the opponent has made out its s.60 ground. Accordingly, the opposition is successful. The application for registration is refused.

Costs

The opponent has sought the cost of these proceedings.  As costs generally follow the event and I see no reason to derogate from the usual course, I direct that the applicant pay the opponents costs of these proceedings in accordance with Schedule 8 of the Trade Mark Regulations 1995. 

Geoff Purvis-Smith

Hearing Officer

Trade Marks Hearings

8 April 2002