Scott Ford v MYOB Technology Pty Ltd

[2013] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by MYOB Technology Pty Ltd to registration of trade mark application 1338756(41) - TRAIN YOUR OWN BUSINESS Logo - filed in the name of Scott Ford.

Delegate:

Iain Thompson

Representation:

Opponent: Ben Fitzpatrick of Counsel instructed by Ian Drew, solicitor, of Davies Collison Cave.

Applicant: Brian Elkington, solicitor, of Adams Pluck.

Decision:

2013 ATMO 37

s52 opposition – section 60 – use of opposed trade mark likely to confuse because of the reputation of the Opponent’s trade mark – registration refused.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Scott Ford (‘the Applicant’) details of which appear below:

   Application No: 1338756

   Priority Date:  18 January 2010

   ServicesClass 41: Arranging and conducting of workshops (training); arranging of exhibitions for training purposes; business training consultancy services; business training services; career advisory services (education or training advice); career counselling (education or training advice); career counselling (training and education advice); computer based training; computer training advisory services; computerised training; conducting training seminars; conducting workshops (training); employment training; industrial relations training; organisation of training courses; personal development training; providing courses of training; provision of training courses; provision of training facilities; staff training services; training; training consultancy

   Trade Mark:  

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 May 2010.

3. On 20 August 2010 MYOB Technology Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes the grounds under sections 60, 44 and 42(b) of the Act which were argued at a hearing.

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 30 November 2012.  The Opponent was represented by Ben Fitzpatrick of Counsel instructed by Ian Drew of Davies Collison Cave.  The Applicant was represented by Brian Elkington, solicitor, of Adams Pluck.  During proceedings, Mr Elkington requested that the Applicant give oral evidence.  Mr Ford was duly sworn and consequently examined by Mr Elkington and cross examined by Mr Fitzpatrick who subsequently requested that the Opponent be given the opportunity to respond with further evidence to the evidence given by Mr Ford.  At the completion of the parties’ submissions, I adjourned proceedings and allowed the Opponent this opportunity (which did not eventuate in any further evidence being served and filed).  Thereafter, I allowed the parties further time in which to prepare and file written submissions addressing Mr Ford’s oral evidence.

5. The further time having ended, and having received the further submissions of the parties, I am now in a position to finalise and issue my decision.

   Onus

6. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities: see 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]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13] . and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) per Bennett J at [13].

   Relevant date

7. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Evidence

8. Since this opposition should (in my consideration) succeed under section 60 of the Act, I will discuss only the evidence of the parties which goes to that ground.

9. The evidence served and filed in this matter comprises statutory declarations of:

   1.Ian Boylan, made 20 June 2011, with exhibits IB-1 to IB-14 (in support);

   2.Scott Ford, made 10 September 2011 with annexures A and B (in answer);

   3.Brian Elkington, made 20 September 2011, with annexures A and B (in answer).

   Ian Boylan

10. Mr Boylan is General Counsel for MYOB Group[1].  Mr Boylan draws attention to an application to register a trade mark by the Applicant details of which appear below:

    Application No: 1324061

    Priority Date:  5 October 2009

    Status:  Lapsed

    Services:Class 41: Business training consultancy services; business training services; career advisory services (education or training advice); computer based training; computerised training; conducting training seminars; mentoring (education and training); staff training services; technical training; training; training consultancy; arranging and conducting of workshops (training); arranging of exhibitions for training purposes; commercial training services; consultancy services relating to training; employment training; industrial training; life coaching services (training or education services); occupational health and safety services (education and training services); provision of training; provision of training courses; setting of training standards

    Trade Mark:  

    (‘the lapsed application’)

    [1] The relationship between MYOB Group and the Opponent is not explained in Mr Boylan’s declaration

11. Mr Boylan refers to the examiner’s report which issued on 14 December 2009 (approximately one month before the filing date of this opposed application).  The examiner’s report cited some thirty of the Opponent’s registrations as a bar to the registration of application 1324061.  Further, Mr Boylan alleges similarity between the shape that forms the background for the letters TYOB in the lapsed application and that which forms (and at the time of the filing of the lapsed application formed) the background for the letters MYOB on the Opponent’s website as shown below:

12. Mr Boylan attests to the history of the Opponent and its use of the trade mark MYOB in relation to financial and accounting software packages in Australia.  He says:

    The trade mark MYOB was first used by my Company in Australia in 1991. The trademark MYOB is an intialism [sic] for the words “MIND”, “YOUR”, “OWN”, “BUSINESS”. The trade mark MIND YOUR OWN BUSINESS was also first used by my Company in Australia in 1991. Now produced and shown to me and marked Exhibit IB-4 is a copy of an advertisement featuring the trade mark MIND YOUR OWN BUSINESS. This advertisement was featured on a large rear panel of approximately 600 buses throughout Sydney, Melbourne, Brisbane, Adelaide, Perth, Canberra, Hobart during the period August to October 2003. The expenditure for this campaign alone was $1,000,000.

    The trade mark MIND YOUR BUSINESS.SMARTER was first used by my Company in the first half of 2004 and has been used, throughout Australia and across the entire range of products and services produced by my Company. Now produced and shown to me and marked Exhibit IB-5 is a copy of my Company’s profile featuring the trade marks MYOB and MIND YOUR OWN BUSINESS SMARTER. In September 2004, this corporate profile was sent to approximately 7000 accounting practices Australia-wide.

    My Company initially operated in Australia under the name Data Tech Software Pty Ltd. In 1999 MYOB Technology Pty Ltd was incorporated and the assets of Data Tech Software Pty Ltd were transferred to MYOB Technology Pty Ltd. The incorporation of a new company under a new name was made in view of the overwhelming recognition of my Company’s trade mark MYOB in the Australian marketplace. Put simply, consumers of accounting software and business management software were and are overwhelmingly aware of the brands MYOB and MIND YOUR OWN BUSINESS, but were not as well aware of the company name Data Tech Software Pty Ltd. The changing of the company name was to align the fame of the trade marks with the company name

    […]

    When the MYOB and MIND YOUR OWN BUSINESS trade marks were first used in Australia, my Company provided goods and services to small and medium size businesses in the area of accounting software and software for business management. Since 1999, the goods and services provided by my Company under the MYOB and MIND YOUR OWN BUSINESS trade marks have extended considerably to include an extensive range of accounting and business software products, business services and solutions, financial services, bill payment systems, an extensive range of software support and technical services, website hosting, and related website management. In particular, my Company has now entered into offering services in relation to providing websites for businesses to allow businesses to obtain a low cost online presence.

13. Mr Boylan lists a wide range of accounting software products offered by the Opponent under a range of trade marks which all incorporate the letters MYOB.

14. Concerning the training services offered under both the Opponent’s aegis and its trade marks MYOB and MIND YOUR OWN BUSINESS Mr Boylan states:

    My Company offers an extensive range of training services in relation to its goods and services, which are provided through purpose built facilities, seminars and online. Now produced and shown to me and marked Exhibit IB-11 is a print from the website with details of the training events offered and run by my Company under the marks MYOB and MIND YOUR OWN BUSINESS.

    In addition to these training services which are offered by my Company, my Company authorises MYOB Certified Consultants to offer on-site training for its clients. Presently there are 862 Certified Consultants who are active or have a current agreement with my Company to offer training services in relation to my Company’s products. Many of my Company’s Certified Consultants have an additional level of training and are referred to by my Company as Accredited Trainers. There are 582 Accredited Trainers on my Company’s records.

    Now produced and shown to me and marked Exhibit IB-llA is a copy of the MYOB Certified Consultant Agreement which is entered into by Certified Consultants. I confirm that there are Certified Consultants operating in all States and Territories of Australia. Also, enclosed under cover of Exhibit 7 IB-11 A is a copy of the first 100 hits of a search of the Internet on the Google search engine for the phrase “Certified Consultants” together with my Company’s mark MYOB. The results disclose details of a large number of MYOB Certified Consultants.

    The training services offered by my Company and through Certified Consultants represent a significant proportion of the revenue derived by my Company. My Company takes pride in the quality of the training services provided in association with its marks and is careful to regulate external provision of training services in relation to its products and services. These Certified Consultants are offering training services, in relation to a wide range of my Company’s products and services.

15. Mr Boylan also gives the revenue of the Opponent from sales in Australia of accounting products under the trade marks MYOB and Mind Your Own Business for which confidentiality is claimed but which by any standards is considerable.

    Scott Ford

16. Mr Ford states:

    Before starting my own business in April 2010 under the name “Train Your Own Business”, I worked at Rebel Sport for 18 years. With the knowledge and experience I gained at Rebel Sport, I decided I wanted to go into business for myself offering services in the field of business training.

    I knew that many small businesses simply don’t have their own internal training departments with which to implement appropriate business training for their employees. Based on my business experience, I believed I could work with retail businesses to devise and implement systems and tools they could use to train their own people. In this way, these businesses could avoid the considerable expense of having to outsource their employee training to consultants.

    I came up with the name “Train Your Own Business” because it fit the message I wanted to convey to prospective clients. I did not - and do not - believe that this name would somehow confuse people into thinking that my training and consulting business was connected to the accounting and bookkeeping software of the opponent.

    After deciding on the name, I engaged the services of a graphic designer and told him I needed a logo to use in advertising and promoting my business. A short time later the graphic designer gave me drawings of two different versions of a logo - each one comprised the words “Train Your Own Business”.

    The first version of the logo I tried to register was not approved by IP Australia because it contained the letters TYOB and I was told that this may be too close the opponent’s MYOB marks. Attached and marked “A” are pages from the IP Australian website showing details of the first trade mark application I filed. While I did not agree with the conclusion of IP Australia, I was handling this matter myself and did not really know what recourse I had. Therefore, I did not contest the matter further.

    I then filed the present application to register the second version of the logo provided to me by the graphic designer. This application did not contain the acronym TYOB and was subsequently approved by IP Australia and proceeded to acceptance.

    I have registered a company called “Train Your Own Business Pty Ltd” and I own the New South Wales business name “Train Your Own Business”. Attached and marked “B” are copies of the ASIC details of the company and business names.

    I have also had a website designed for my business which is not being used pending the resolution of this opposition.

    There was certainly never any intention on my part to take advantage of any reputation enjoyed by the opponent. As I stated above, I don’t believe that my trade mark would be confused with the opponent’s marks.

    Brian Elkington

17. Mr Elkington’s declaration brings into evidence the registrations of the Opponent and the applications of the Applicant.

    Oral Examination of Mr Ford

18. I do not consider that the oral examination or cross examination of Mr Ford added any insight into his reasons for the adoption of the trade mark, or what his instructions to the graphic designer might have been, or how the lapsed application happened to be deceptively similar to the trade mark appearing on the Opponent’s website.  Consequently, I have no formed opinion as to whether Mr Ford was forgetful or evasive in his address of these questions but in either event I have not found this evidence to be particularly relevant one way or the other.

    Section 60

19. Section 60 of the Act provides:

    60Trade 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.

20. Thus, to establish this ground the Opponent must establish that there was:

    1.    A trade mark or trade marks

    2.     Which at the priority date of the opposed application had a reputation, or reputations

    3.     Such that the use of the opposed trade mark would be likely to deceive or cause confusion.

21. The Opponent here relies on its MIND YOUR OWN BUSINESS trade mark (and its MYOB trade mark insofar as it is argued to establish the Applicant’s motives in applying for the opposed trade mark).

22. Concerning reputation, in McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, (‘McCormick’) Kenny J said, at [81]-[82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

23. Subsequently at [86] Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

24. The Opponent has adduced scant evidence of the advertising and promotional expenditure in relation to its trade marks – the one instance being the considerable expenditure in the first year of the use of its trade marks on advertising on buses.  However, the activity of the Opponent in the provision of services in relation to its MYOB and MIND YOUR OWN BUSINESS trade marks is considerable with 862 Certified Consultants around Australia supporting the accounting services which are offered under the trade marks – such activity should contribute to the reputation of the trade marks in terms of Kenny J’s comments at [85] in McCormick:

    It may be correct to say, as counsel for Mary McCormick did, that the volume of the company's sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company's products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

1. In addition, I consider that in view of the very high turnover under the trade marks MYOB and MIND YOUR OWN BUSINESS it is obvious that the reputations of the trade marks on which the Opponent relies are substantial and that those reputations are primarily amongst business professionals and those who run or manage small businesses (‘the relevant market’).

2. Concerning the likelihood of deception or confusion, in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J said at [50] (with reference to deceptive similarity redacted):

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply […] under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

3. I consider that the conclusion that the opposed trade mark was coined by the Applicant with reference to the Opponent’s MIND YOUR OWN BUSINESS trade mark is unavoidable – particularly in view of the Applicant’s earlier filing of the lapsed application and the specific form of the trade mark thereon.  However, this in and of itself, does not necessarily lead to a conclusion that the use of the opposed trade mark would be deceptive or confusing – see for example McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design [1997] FCA 962 (albeit at the higher standard of ‘mislead or deceive’).

4. Viewed in this light, the circumstances of this matter have something in common with the so-called parody cases.  In parody cases it has to be plain that the copying is a take-off and not a rip-off.[2]  Here, where a degree of copying may be confidently inferred, the aping must also be such that there is no likelihood of either deception or confusion.

   [2]  Nike Inc v “Just Did It’’ Enterprises [1993] USCA7 1181; 6 F 3d 1225 quoted in Coca-Cola Company v All-Fect Distributors Ltd (T/as Millers Distributing Company) (1998) 43 IPR 47 by Merkel J.

5. Nor can I be blind to the principle enunciated in Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 by Dixon and McTiernan JJ:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.

6. The conclusion that the use of the opposed trade mark would confuse is, I consider, unavoidable.  I consider that for many people who are familiar with the English language the expression ‘train your own business’ would be understood to be derived from the expression ‘mind your own business’.  When the reputation of the Opponent’s trade mark MIND YOUR OWN BUSINESS is taken into account, this obviousness of derivation of the opposed trade mark to those in the relevant market is, in my assessment, nigh on unavoidable and as such the derivation functions as a strong associative force between the trade marks of the parties.

7. The Opponent in fact offers training services via its 582 Accredited Trainers.

8. Because of these factors, I consider that there is a likelihood of confusion between the trade marks and that it is likely that people will be caused to wonder whether it may be the case that the training courses offered under the trade mark TRAIN YOUR OWN BUSINESS are offered by the same person who offers accountancy and book-keeping software under the trade mark MIND YOUR OWN BUSINESS.

9. Further, while the concepts ‘deceive’ and ‘cause confusion’ have often been conflated, the word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’  In Pioneer Hi-Bred  Corn  Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

10. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

    In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

11. And in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265, at page 174, Lord Denning said of the differences between ‘confusion’ and ‘deception’:

    Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

12. It is likely in my estimation that the confusion would not persist to the point of sale of the Applicant’s training packages to the relevant public.  However, in Taco Co. (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Deane and Fitzgerald JJ said (of the higher standard ‘mislead or deceive’)[3] at page 199:

    It is, in the circumstances, unnecessary that we form or express any concluded view on the question whether it is a principle of the law of passing-off that deception must continue, or be likely to continue, to the “point of sale”. As a matter of principle and of logic, it is difficult to see why it should be. For the purposes of the present appeal, it suffices to say that, even if such a limitation should be recognized in the law of passing-off, we see no ground for importing it into the provisions of s 52 of the Act. In our view, it is sufficient to enliven s 52 that the conduct, in the circumstances, answers the statutory description, that is to say, that it is misleading or deceptive or is likely to mislead or deceive. It is unnecessary to go further and establish that any actual or potential consumer has taken or is likely to take any positive step in consequence of the misleading or deception. That is not to say that evidence of actual misleading or deception at the point of sale and of steps taken in consequence thereof is not likely to be both relevant and important on the question whether the relevant conduct in fact answers the statutory description and as to the relief, if any, which should be granted.

    [3] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1 per Gibbs C.J. (at page 6)

13. And,in relation to confusion in particular, Dodds-Streeton J noted recently in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (confirmed by majority on appeal to the FFC) at [105]:

    It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

14. As I have said, the use of the opposed trade mark would confuse because of the reputation of the Opponent’s trade mark and, accordingly, the opposition under section 60 is established.

    Decision

15. Subsection 55(1) of the Act 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.

16. I refuse to register application 1338756.

    Costs

17. Having been successful, the Opponent is entitled to its costs which I award at the official scale against the Applicant.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    6 June 2013