Seek Limited v GMO (WA) Pty Ltd

[2012] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by SEEK LIMITED to registration of trade mark application 1209277 (35, 36, 45) - SEEK BUSINESS (Series) - filed in the name of GMO (WA) PTY LTD.

Delegate:	Claudia Murray
Representation:	Opponent: Mr Ben Gardiner of Counsel, instructed by Kliger & Partners Lawyers, Melbourne. Applicant: Mr Dirk Feinauer of Feinauer Commercial Lawyers, Perth.
Decision:	2012 ATMO 25 Section 52 opposition – section 60 ground established – because of reputation in opponent’s trade mark, use of applicant’s trade mark likely to deceive or cause confusion - registration refused – costs awarded against applicant.

Background

1. Trade mark application number 1209277 was filed by GMO (WA) Pty Ltd (‘the applicant’) on 7 November 2007, for the series of three trade marks:

2. The application now covers the following services in classes 35, 36 and 45 of the Nice Classification of Goods and Services:

   Class 35: Acting as agent for vendors in marketing, advertising and otherwise facilitating sales, mergers and acquisitions of businesses; business advisory services relating to franchising; business acquisition searches; stocktaking services; business immigration and emigration advisory services, all being professional business consultancy services; accounting services

   Class 36: Superannuation services; financial services in this class including financial management, planning, consultancy and advisory services in this class; brokerage including business brokerage; business brokerage including soliciting, marketing the offering for sale of businesses including hospitality, retail outlets, restaurants, manufacturing entities, service businesses, wholesale and distribution businesses, franchises and properties, acting as agents for vendors in marketing, advertising and otherwise facilitating sales of businesses (and including real and personal property); brokerage advisory services including advisory services in relation to acquisition and sale of businesses; valuations and appraisals including the valuation and appraisal of businesses and real estate including preparation of reports for commission or fee; assisting in arranging finance, loans and insurance for purchasers of businesses and real estate; brokerage consultancy and advisory services including in relation to business brokerage and collection of fees and royalties on services so performed; real estate affairs; insurance and financial affairs

   Class 45: Conveyancing services

3. Grounds of rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination, based upon two registrations, numbers 1136231 and 1205453, owned by Seek Limited. The applicant made a case for prior use of the trade marks which was accepted by the examiner. The appropriate endorsement (‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied’) was applied to the application and a minor formality issue to ensure correct classification of services was addressed, after which the application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 June 2009.

4. Seek Limited (‘the opponent’) filed notice of opposition to registration on 19 August 2009. Nine grounds of opposition were listed in the notice.

5. Evidence in support, answer and reply was duly served and filed. On 23 December 2010, the opponent requested a hearing on the opposition. The applicant thereafter sought and was granted permission to serve and file further evidence. In due course I heard the matters, as a delegate of the Registrar of Trade Marks, on 8 November 2011 in Canberra. Mr Ben Gardiner of Counsel, instructed by Kliger & Partners Lawyers, Melbourne, represented the opponent in person. Mr Dirk Feinauer of Feinauer Commercial Lawyers, Perth, represented the applicant via video link. During the hearing it became apparent that both parties were operating under the misunderstanding that the trade mark applied for comprised a composite representation in which the words SEEK BUSINESS were repeated three times. Instead, the trade mark application was made under section 51 of the Act, which provides:

   51  Application—series of trade marks

   (1)  A person may make a single application under subsection 27(1) for the registration of 2 or more trade marks in respect of goods and/or services if the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:

   (a)  statements or representations as to the goods or services in relation to which the trade marks are used or are intended to be used;

   (b)  statements or representations as to number, price, quality or names of places;

   (c)  the colour of any part of the trade mark.

   (2)  If:

   (a)  the application meets all the requirements of this Act; and

   (b)  the Registrar is required (under section 68) to register the trade marks;

   he or she must register them as a series in one registration.

6. The subject trade mark in fact comprises a series of three alternative versions of the words SEEK BUSINESS, each of which closely resembles the other. In light of the parties’ mutual misunderstanding upon this point, I allowed a brief period after the hearing for both sides to make any necessary adjustments to their written submissions to reflect the true nature of the disputed trade marks. Both parties availed themselves of this opportunity.

   Evidence

7. The evidence in relation to this opposition comprises:

   Evidence in Support

   ØStatutory declaration of Matt Sallmann, with Exhibits MS-1 to MS-27, dated 26 October 2009.

   Evidence in Answer

   ØStatutory declaration of Graham Michael O’Hehir, with Exhibits GMO-1 to GMO-12, dated 10 August 2010.

   Evidence in Reply

   ØStatutory declaration of Matt Sallmann, with Exhibits MS-1 and MS-2, dated 10 November 2010.

   Further Evidence (Applicant)

   ØStatutory declaration of Graham Michael O’Hehir, with Exhibits GMO-1 and GMO-2, dated 6 May 2011.

   Onus and Grounds of Opposition

8. The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599; Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13 (at [22] to [26]).

9. Prior to the hearing, the opponent indicated that the grounds of opposition it wished to press were those under sections 60, 42, 44, 58 and 58A. For completeness, I note that none of the other grounds listed in the notice of opposition have been made out. An opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds pressed, although all grounds of opposition are available to an opponent in the event of an appeal from a delegate’s decision.

10. Mr Gardiner led his hearing submissions with the opponent’s ground under section 60, and I propose to confine my deliberations here to that ground.

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

11. The provisions of section 60 read:

    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.

12. To satisfy section 60, the opponent must demonstrate that, at the time of filing the opposed application (7 November 2007), there existed a reputation in another trade mark, such that use of the opposed trade marks for the services covered by the application would likely cause members of the public to be deceived or confused. The trade mark relied upon need not be subject of an application or registration in order to be relevant in terms of this section. Section 60 does not require the trade mark relied upon to be ‘deceptively similar’[2] to the opposed trade marks or that it has been used on similar goods or closely related services. Instead, the focus of the provision is squarely upon of deception or confusion of the public generated by the applicant’s proposed use of its trade marks in the face of the reputation of the trade mark relied upon by an opponent. The reputation of a trade mark may develop in a variety of ways, and be influenced by the particular trading environment in which it has evolved.[3]

    [2] As defined in section 10 of the Act.

    [3] McCormick & Co v Mary McCormick (2001) 51 IPR 102, at 129; McCormick & Company Inc v McCormick (includes corrigenda dated 18 September 2000) [2000] FCA 1335 (15 September 2000), per Kenny J at [85].

13. Mr Gardiner began his submissions by drawing my attention to the opponent’s fifty-one registered trade marks comprising or including the word ‘SEEK’. Thirteen of these predate the filing date of the opposed trade marks. Relevant details of a small sample of these registrations are shown in the table below:

TM No.	Trade Mark	Filing Date	Class/Services
750657	SEEK	9 Dec 97	Class 35: Advertising services including classified advertising services; Internet advertising including Internet classified advertising services
1033982	13 Dec 04	Class 35: Advertising services including classified advertising services; advertising services including classified advertising services on a global computer network; retailing and distribution of books via a global computer network; promotion of educational and professional development courses via a global computer network
1131366	SEEK COMMERCIAL	24 Aug 06	Class 35: Advertising services including classified advertising services; advertising services including classified advertising services on a global computer network; retailing and distribution of books including via a global computer network; provision of advice and information in connection with undertaking due diligence investigations in connection with the acquisition of a business or franchise; advice and information in connection with business structures through which businesses can be conducted; advice in connection with managing and conducting a business

1. Mr Gardiner submitted that, although not required by section 60, the family of ‘SEEK’ trade marks upon which the opponent relied in terms of that section were arguably substantially identical, and at least deceptively similar to the opposed trade marks. I am in agreement with him that indeed, all the trade marks in question are at the very least deceptively similar. Mr Gardiner continued:

   The Opponent operates the leading employment advertising websites in Australia and New Zealand. The Australian website, which is located at was launched in March 1998.

   Since October 2006 (before the Relevant Date), the Opponent, by its wholly owned subsidiary Seek Commercial Pty Ltd, has also operated a website offering a classified service for the advertisement of businesses and franchises for sale. This service is offered by reference to the Opponent's registered mark "SEEK COMMERCIAL" from a website located at (the SEEK Commercial Website).

   The Opponent is now one of Australia's 100 largest publicly listed companies. It has grown strongly since its incorporation in 1997 and has been one of Australia's largest 200 companies since September 2005 (more than two years before the Relevant Date).

   It has developed a very strong reputation in its registered trade marks. This reputation can be inferred from its very substantial revenue, its wide advertising and the popularity of its websites with both advertisers and internet users.

2. The evidence supports Mr Gardiner’s contentions. ‘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 [trade] mark, as opposed to the product.’[4] The opponent has demonstrated significant revenue derived from, and substantial marketing and advertising expenditure associated with, its ‘SEEK’ employment advertising websites, including its ‘SEEK COMMERCIAL’ service advertising the sale of businesses and franchises. Its advertising has not been confined to the internet, but has appeared in various media including print advertisements, billboards, online banner advertisements, radio, television, search engine advertising and through sponsorships.[5]

   [4] McCormick & Company Inc v McCormick, op. cit. at [86].

   [5] Statutory declaration of Matt Sallmann, dated 26 October 2009, especially at paras 6, 16-21 and Confidential Exhibits MS-4 and MS-17.

3. Mr Feinauer, for the applicant, argued to the contrary that many factors militated against deception or confusion of the public being caused by its use of the opposed trade marks in the face of the opponent’s reputation in its trade marks. He said that these included:

   (a) the difference between the Opposed Services and the “advertising services” provided by the opponent; and

   (b) the visual (and verbal) difference between the Opposed Mark and the trade marks used by the opponent;

   (c) the context where:

   (i) the word “SEEK” is a common non-descriptive term;

   (ii) the word “SEEK” is used by many others in relation to various trade marks in a variety of different services;

   (iii) the Opposed Services are expensive and selected with particular care; and

   (iii) the Applicant has used a domain name since 2004.

4. Further, Mr Feinauer contended that the respective businesses of the parties were so different that they did not overlap at all. He described the opponent as ‘an internet publisher offering a classified service’, whereas his client provided the services of an agent or business broker. He said:

   The business of an agent or business broker is completely different to that of a person providing classified advertising. Business brokers manage the buying and selling process on behalf of those who own or seek to own private small business. Their role in this process typically includes: estimating the value of the business; advertising it for sale with or without disclosing the business identity; handling buyer interviews, discussions, and negotiations with prospective buyers; facilitating the progress of any due diligence investigations; and generally assisting with the sale of the business.

5. It may well be that, outside the virtual world of the internet, the services provided by the applicant are quite distinguishable, as the applicant contends. However, for the purposes of section 60, while it is the actual use of the opponent’s trade marks which must be considered in terms of the reputation which has been developed, it is the notional use which the applicant may make of its trade marks on any of the services covered in its application which I must take into account. In any event, it is clear that, like all progressive, viable businesses of today, the applicant wishes to be visible on the internet to potential customers. Its evidence reflects this, showing use of the domain name, which was referred to by Mr Feinauer above. That domain name was the subject of a separate dispute before the World Intellectual Property Office, which did not end well for the opponent.[6] Although it is not a relevant consideration for the decision in terms of section 60 to be made here, I do note in passing that the applicant’s evidence does not reflect any use to date of the series of trade marks subject of this opposition.

   [6] Statutory declaration of Matt Sallmann, dated 26 October 2009, Exhibit MS-27: WIPO Domain Name Decision DAU2006-0010 Seek Limited v. Arazac Nominees Pty Ltd.

6. The opponent has persuaded me that, given its established reputation (at the time the opposed application was filed) in the ‘SEEK’ trade mark, there is a real and tangible danger that the applicant’s use of the opposed trade marks, on the services specified, would likely cause a reasonable person to wonder whether those services also originated from the opponent. This conclusion is sufficient for the opponent’s success in terms of section 60.

   Decision

7. Subsection 55(1) of the Act provides:

   (1)     Unless the proceedings are discontinued or dismissed, 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.

8. The opponent has succeeded in relation to the ground it pressed under section 60. I therefore refuse to register the series of trade marks subject of application number 1209277.

   Costs

9. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant, GMO (WA) Pty Ltd.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   22 February 2012