Singel Optus Pty Ltd v Aurora Energy Pty Ltd

[2012] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Singtel Optus Pty Limited to registration of trade mark application 1057045(35) - AURORA Logo - filed in the name of Aurora Energy Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Christian Dimitriadis of Counsel, instructed by Minter Ellison, Solicitors Applicant: Frances Drummond of Freehills Patent & Trade Mark Attorneys S52 opposition – s60 established. Registration refused.
Decision:	2012 ATMO 1

Background

1.   On 24 May 2005 (‘the Priority Date’), Aurora Energy Pty Ltd (‘the Applicant’) made application (‘the Application’) under the Trade Marks Act 1995 (‘the Act’) to register the trade mark (‘the Trade Mark’) which is shown below in class 38 in relation to “Telecommunication services”:

2. The Application was examined under section 33 of the Act. A first examination report dated 29 July 2005 raised an objection to registration under section 44 of the Act (conflicting prior trade mark rights) because of the existence of trade mark registration 725458 in the name of the Opponent. Details of registration 725458 are as follows:

Priority date:  10 January 1997

Services:Class 38: telecommunications services provided by means of satellite

Trade Mark     AURORA

(‘the Opponent’s Trade Mark’ or ‘the Opponent’s Registration’, as the context requires)

3.   The Opponent’s Registration is subject to the following endorsement:

Provisions of paragraph 44(3)(b) applied.

4.   Submissions in support of the Application were filed on 28 September 2005 but a second examination report was issued on 20 October 2005 in which the examiner maintained the objection.

5.   On 25 January 2006 the Applicant requested a hearing in connection with that objection and the matter was heard in Sydney on 20 July 2006 by Senior Examiner, Rowena Beal.  On 17 September 2006, Examiner Beal wrote to the Applicant indicating that she was not minded to accept the Application but leaving opportunity for further evidence.

6.   On 27 July 2007 the Applicant filed further submissions, together with a statutory declaration of Michael Larkin made 24 July 2007, with the result that on 13 March 2008 the Trade Mark was accepted for registration, subject to the following endorsements:

Registration of this trade mark is limited to the state of Tasmania.

The provisions of paragraph 44(3)(b) applied.

7.   Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 3 April 2008 in respect of the following class 38 services (‘the Services’):

Telecommunication services excluding telecommunication services provided by means of a satellite

8. On 3 October 2008, Singtel Optus Pty Limited (‘the Opponent’), filed Notice of Opposition to registration of the Trade Mark under section 52 of the Act.

9.   The parties served and filed evidence in aid of their cases.  The Opponent's Evidence in Support comprises the Statutory Declaration of Brian Edward Hayes made 15 December 2009 with Annexure BEH-1 to Confidential Annexure BEH-20 (‘the Hayes 2009 Declaration’). 

10.  The Applicant's Evidence in Answer comprises the Statutory Declaration of Gary Eiszele made 9 June 2010 with Annexures A to J (‘the Eiszele Declaration’) and the Statutory Declaration of Sally Linwood made 11 June 2010 with Annexures A to D (‘the Linwood Declaration’).

11.  The Opponent's Evidence in Reply comprises the Statutory Declaration of Brian Edward Hayes made 9 December 2010 with Exhibits 1 to 13 (‘the Hayes 2010 Declaration’). 

12.  The parties asked to be heard and acting as a delegate of the Registrar of Trade Marks I took written and oral submissions from the parties in Sydney on 9 June 2011. The Opponent was represented by Christian Dimitriadis of Counsel, instructed by Minter Ellison, Solicitors.  The Applicant was represented by Frances Drummond, at that time a partner in the firm of Freehills Patent & Trade Mark Attorneys.

13. The Notice of Opposition listed a number of grounds of opposition but at the hearing it was made clear that the Opponent only pressed those grounds under sections 42(b), 44(2), 58, 59 and 60 of the Act.

14. Sometime after that hearing, on 25 August 2011, the Opponent made additional written submissions, principally in relation to its ground of opposition under section 59. I gave the Applicant the opportunity to reply to those additional submissions and on 21 October 2011 I received a set of written responses.

Submissions and reasoning   

1. The onus is on the Opponent to establish a ground of opposition in order to succeed.[1]  The standard of proof is on the balance of probabilities.[2] 

   [1]Lomas v Winton Shire Council [2003] AIPC 91-839; [2002] FCAFC 413

   [2] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Section 44

   16. So far as relevant to this decision, section 44 of the Act states:

   (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.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (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.

   17. In order for the Opponent to establish the section 44 ground of opposition, it must establish that:

   §  the priority date of the Opponent’s Registration is earlier than the Priority Date of the Application (which it is, being 10 January 1997);

   §  the Application is for similar services to those of the Opponent’s Registration;

   §  the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark; and

   §  the provisions of subsections 44(3) or (4) do not apply.

   18. Section 14(2) of the Act defines services as similar to other services if they are either the same as the other services or if they are of the same description as that of the other services.

   19.  The Services at issue are “Telecommunication services excluding telecommunication services provided by means of a satellite”. The services of the Opponent’s Registration are “Telecommunications services provided by means of satellite”. 

   20.  The Opponent submits that the Evidence in Support demonstrates that the respective class 38 services are (a) the same in purpose; (b) offered within the same marketplace (namely the telecommunications marketplace); (c) recognised in the telecommunications marketplace as closely related and integrated services; (d) offered as integrated services by the Opponent; and (e) regarded as the same by the Opponent.

   21.  In particular, the Opponent submits that the Hayes 2010 Declaration lends support to the argument that the respective services are similar because satellite-related telecommunication services are closely related to and are integrated with other telecommunication services such as the provision of broadband over optical fibres. 

   22.  The only bases on which it might be concluded that the respective services are dissimilar are (i) because the Applicant’s services are only provided in the State of Tasmania, or (ii) because a meaningful distinction might be drawn between telecommunication services provided by means of satellite and those which are not so provided.

   23.  My findings are (i) that the territorial limitation is without consequence since the Opponent’s Registration is not limited geographically, and (ii), as has been observed by those who have considered this point earlier in time, consumers would not distinguish between the trade marks on the basis of whether the telecommunication services are provided by satellite or not.  I find the Services to be similar services to those of the Opponent’s Registration.

   24.  The Trade Mark and the Opponent’s Trade Mark are not substantially identical. The determination of substantial identity involves a side by side comparison of the trade marks[3].  The Trade Mark differs from the word mark of the Opponent’s Registration by the inclusion of the lower case letter “e” prefixing the word AURORA, the inclusion of a bow ribbon device element above the integer “eAURORA” and the assembly of the Trade Mark in four square boxes, the first of which incorporates the elements just described, whilst the remaining three boxes are cut by lines which when viewed together are evocative of power-lines and are described that way by the Applicant.   The visual differences between the parties’ trade marks outweigh the single element of commonality, being the word “aurora”.

   [3] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 1B IPR 523 at 528.

   25.  On the other hand, whether the Trade Mark is deceptively similar to the word mark AURORA entails a determination of whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark.  In Anheuser-Busch Inc v Budejovick[yacute] Budvar [2002] FCA 390 at [143], [2002] FCA 390; 56 IPR 182 at 216, Allsop J observed that :

   [143] The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of...

   26.  The Applicant made detailed submissions on this point of law however, in broad terms, a judgment about deceptive similarity is generally a matter of first impression rather than one of meticulous comparison. Allowance must be made for imperfect recollection and the idea of the Trade Mark is a factor.  What is important is the likely effect or impression produced by the Trade Mark on consumers and potential consumers.

   27.  In this case the simple word AURORA must be measured against the impact of that same word, coupled with a commonplace prefix, “e”, understood by consumers to mean either “electronic” or to carry the flavour of something technological and having, within the context of the Services, little inherent adaptation to distinguish, then set within a logo comprising four boxes which together also show what the Applicant acknowledges to be powerlines, once more a non-distinctive element in the context of telecommunication services.

   28.  Viewed as wholes the word “aurora” is the obvious distinguishing feature of both trade marks.  In my opinion, consumers who saw the two trade marks would think the services emanated from the same trade source. I have no hesitation finding that the Trade Mark is deceptively similar to the Opponent’s Trade Mark. 

   29. The residual questions are whether acceptance of the Application can be justified under section 44(3) or section 44(4). The onus shifts to the Applicant to show that these provisions might apply.

   30. It is clear on the evidence that there is no scope for the application of section 44(4) however the Applicant submits that the provisions of section 44(3) should permit registration of the Trade Mark since, in its words, it has “built up a strong reputation under its Aurora brand in Tasmania in relation to the relevant services, and accordingly in these circumstances, it would be fit and just for the Registrar to accept the application for registration.”

   31.  The Opponent submits on the other hand that the declaration by Michael Larkin dated 27 July 2007 and the letter by Freehills Patent & Trade Mark Attorneys dated 7 July 2007 (both annexed to the Hayes 2009 Declaration), do not demonstrate sufficient evidence of use of the Trade Mark or any other circumstances that would support the registration of the Application, even if registration was limited to the State of Tasmania.

   32. Whilst conditions and limitations of registration of the Application were considered earlier, that was at a time before these proceedings and before the filing of evidence by the Opponent. Having regard to what is before me now, I am mindful that the Federal Court has said that the doctrine of honest concurrent user is derived from the common law and pre-dates the Act and that as a matter of statutory construction, section 44(3) does not provide an exception to section 60[4]. Accordingly, I have here suspended further analysis of section 44 and look instead to the Opponent’s case under section 60.

   [4] McCormick & Co Inc v McCormick  [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38,192

   Section 60

   33. Section 60 was amended by the Trade Marks Amendment Act 2006 and it is the unamended section which applies in this action[5]. As it was, section 60 stated that:

   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.

   [5] Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40

   34.  I have already found the parties’ trade marks to be deceptively similar.  Section 60 then requires proof, not just of reputation, but that it is more likely than not that because of that reputation, use of the Trade Mark is likely to deceive or cause confusion.   

   35.  Use of the Trade Mark will be likely to cause confusion if the result of its notional use on the Priority Date (24 May 2005) would have been that a number of people would have cause to wonder whether it might not be the case that two services came from the same source[6] because of the reputation of the Opponent’s trade mark. 

   Reputation

   [6] Registrarof Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411 at [50]; SouthernCross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595.

   36.  The Opponent’s principal trade mark is OPTUS which it has used very widely since 1991 when it was incorporated as Optus Communications Pty Limited.  The OPTUS trade mark has since been widely used for a broad range of telecommunication goods and services.  The Opponent has used the AURORA trade mark since 1997.  The Hayes declarations show use of the AURORA trade mark principally in relation to “black spot” telecommunication services but also in connection with various packaged telecommunication products.  Confidential information annexed to the Hayes 2009 Declaration includes an estimate of the revenue from the Opponent’s AURORA marked services for the 2008/2009 financial year.  The sales are in the tens of millions of dollars and although the accounting period postdates the Priority Date it is not unreasonable to interpret the information (in conjunction with marketing and market feedback data in the Hayes 2009 Declaration) as indicative of a very substantial business even in 2005.

   37.  Albeit that the Opponent has a much broader reputation in its OPTUS trade mark, my assessment of the evidence is that the Opponent had acquired a reputation in Australia, including Tasmania, in relation to telecommunication services in connection with its trade mark AURORA by 24 May 2005 when the Application was filed.

   Likelihood of confusion

   38.   Although the parties’ trade marks are not, in law, substantially identical, they have in my view a close degree of similarity.  Moreover, telecommunications services, whether provided by satellite or not, are at one level generically identical.  Accordingly, for the purposes of section 60 (which does not strictly require that the parties be engaged in the same business) there is a collision of factors which made it plain to me that use of the Trade Mark by the Applicant in relation to the Services would wrongly convey the idea of a connection with the Opponent’s business conducted under the AURORA trade mark and would be likely to deceive or cause consumers as to the source of those Services.

   39.  In making the assessment of whether there was a likelihood of confusion or not, I have paid full regard to the use which the Applicant has made of the Trade Mark in Tasmania.  The Eiszele Declaration explains that the Applicant is a Tasmanian Government owned company formed in 1998 as an electricity supplier and retailer but that over the years it has expanded its services to include gas retailing and “telecommunications infrastructure services”.  The Eiszele Declaration goes on to state that the “Applicant has developed a niche in the Tasmanian telecommunications market” and gives some background to that statement by way of explaining that “[I]n 2000 the Applicant commenced its move into the telecommunications space with the launch of TasTal, a retail seller”. 

   40.  Annexed to the Eiszele Declaration is the statutory declaration of Michael Larkin dated 24 July 2007.  Mr Larkin was at that time the Manager of Communications of the Applicant.  Nowhere in Mr Larkin’s declaration is there an explicit statement as to when the Applicant first used the Trade Mark in connection with telecommunication services.  Annexure B to that declaration is said to be printouts from TasTel’s website.  What appears to be the homepage reads in its introduction: “TasTel has been formed through a partnership between Aurora Energy and AAPT”.  The Trade Mark appears towards the bottom on that webpage in small dimensions and as part of a statement: “TasTel PBL Powered by [Trade Mark]”.  At the foot of that same webpage is a copyright notice which reads:

   © 2005 Aurora Energy AAPT Pty Ltd ABN 21 095 021 trading as TasTel.

   41.  All other pages of the website prominently use the name TasTel in what I would describe as a trade mark sense.  At the Priority Date, there is little evidence before me that the Trade Mark had been used in relation to telecommunication services, even in Tasmania.  The joint enterprise in which the Applicant was involved at the time appeared to deliver telecommunication services under the trading name TasTel and in 2005 was an emerging business.  I do not consider that this is a case where the Opponent’s reputation in the trade mark AURORA was, at the Priority Date, competing for public attention with the use of that term by another enterprise such that there might be a diminished likelihood of confusion.

   42. I find that the Opponent has established a ground of opposition under section 60 of the Act. Accordingly, it is unnecessary for me to reach a concluded view on section 44 or the other grounds pressed by the Opponent in this case.

   Decision

   43. Section 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.

   44.  The Opponent has established a ground of opposition and I refuse to trade mark application 1057045.

   Costs

   45. The Applicant has been unsuccessful in this matter and the Opponent is entitled to costs. To that end, I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   16 January 2012