Slater & Gordon Pty Ltd v Ann Rosa Mary Slater

[2013] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Slater & Gordon Pty Ltd to registration of trade mark application 1083124(42) - SLATERS INTELLECTUAL PROPERTY LAWYERS - filed in the name of Ann Rosa Mary Slater.

Delegate:	Jock McDonagh
Representation:	Opponent: Siobhan Ryan of counsel instructed by  Phillips Ormonde Fitzpatrick Applicant: Ian Wylie of counsel instructed by  Slaters Intellectual Property Lawyers
Decision:	39 ATMO 2013 Section 52 opposition to registration – ss 41, 42(b), 43, 59 and 60 grounds pressed - s 60 ground of opposition established – 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 Ann Rosa Mary Slater (‘the Applicant’) details of which appear below:

Application No:                 1083124
Priority Date:  30 October 2005
Services:  Class 42: Legal services
Trade Mark:  SLATERS INTELLECTUAL PROPERTY
  LAWYERS     (‘the Trade Mark’)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted under the provisions of section 41(5) for possible registration in the Australian Official Journal of Trade Marks on 10 August 2006.

2. On 9 February 2007, Slater & Gordon Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 41, 42(b), 43, 59 and 60 of the Act, which were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have not been established and note that any ground may be relied upon should my decision be appealed to the Court where the matter will be considered de novo.

3. The Opponent bears the onus of establishing at least one of those grounds of opposition on the balance of probabilities.[1]

   [1] 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] and most recently 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) 94 IPR 551 per Dodds-Streeton J at [13].

4. However, Ms Ryan submitted that, in terms of the section 41 ground of opposition, the lack of inherent adaptability of the trade mark having been established (by reason of its essential feature being a common surname), the onus shifts to the Applicant to satisfy the Registrar that the provisions of section 41(5) should be applied, citing Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 503 and 505, Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [15] and Darley v Darley Stud Management Company Pty Ltd (2009) 84 IPR 603 at [31] and [36].

5. Because I consider the Opponent established the section 60 ground, it will not be necessary for me to discuss the latter onus question.

6. The time at which the grounds of opposition must be established is the date of filing of the application for registration, 30 October 2005: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

7. The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 15 March 2013.  Siobhan Ryan of counsel, instructed by Phillips Ormonde Fitzpatrick, represented the Opponent.  Ian Wylie of counsel, instructed by Slaters Intellectual Property Lawyers, represented the Applicant.

8. The following evidence was filed in accordance with relevant legislation:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Marcus Rogers Clayton (“Clayton”)	Legal practitioner of Opponent	09.08.07
Trevor Dobbyn (“Dobbyn”)	National President and Victorian Branch Secretary of Australian Rail, Tram and Bus Industry Union	09.08.07
Andrew Grech (“Grech”)	Managing Director of Opponent	08.11.07	AG-1 to AG-29
Peter Semmler QC	Barrister at Law	07.12.07
Evidence in Answer
Ann Rosa Mary Slater (“Slater 1”)	Applicant, Solicitor	09.09.08	AS-1 to AS-11
Ann Rosa Mary Slater (“Slater 2”)	09.10.08	AS-12 to AS-90
Shannon Elizabeth Platt (“Platt”)	Partner, DLA Phillips Fox	05.11.08
William James Henty (“Henty”)	Partner, WJ Henty LLB	05.11.08
Evidence in Reply
Kirsten Marie Morrison “Morrison”)	General Counsel and Company Secretary of Opponent	18.06.09	KMM-1
Steven Lewis (“Lewis”)	Practice Group Leader Commercial Litigation of Opponent	17.02.09
Peter Douglas Stewart Coats (“Coats”)	Partner, Minter Ellison	19.05.09
Stephen Martin Freeman (“Freeman”)	Practice Group Leader of Opponent	11.02.09
Michael Eric Salter (“Salter”)	Consultant DLA Phillips Fox	13.05.09

1. On 12 March 2013, the Applicant sought permission to file and serve portions of a declaration made by her on 16 April 2006 as evidence to support acceptance under section 41(5). Briefly described, the evidence was revenue and advertising figures supplied, but redacted by IP Australia in response to a Freedom of Information request by the Opponent. I advised the parties that I would hear submissions on this preliminary issue at the hearing of the substantive matter.

2. At the hearing, Ms Ryan opposed the filing of the further evidence. Since the evidence was only relevant to the section 41 ground, I do not need to consider whether or not to allow permission. However, I do suggest that it would be overly bureaucratic to refuse permission to file evidence that had already been filed during the examination process to establish the issue the Applicant again wishes to support in the hearing.

Discussion

Ground  8 – section 60: Reputation in the opponent’s trade mark

1. As at the priority date of the application, section 60 of the Act provided:

   60. 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.

2. To satisfy section 60, an opponent has the burden of establishing the following elements:

• a pre-existing trade mark;

• substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark; 

• the acquisition of a reputation in Australia by the pre-existing trade mark; and

• a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. The opponent has nominated its common law trade mark SLATER & GORDON, which has been used by the Opponent since the late 1980s. I accept the evidence declared in Grech that until that decade, the legal profession observed very strict advertising restrictions.  I am satisfied that Grech demonstrates trade mark use of the name SLATER & GORDON prior to the Applicant’s priority date.

2. The Opponent conceded that the Trade Mark was not substantially identical with SLATER & GORDON, but did contend that the marks were deceptively similar.

3. Counsel for both parties substantially agreed that for deceptive similarity, the marks need not be considered side by side, rather the comparison is between the impression based on recollection of the Trade Mark that people of ordinary intelligence would have and the impression that such people would get from the Opponent’s mark.[2]

   [2] Both citing, for example, Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592

4. The parties also agreed that deceptive similarity was determined by the impression produced in the mind of potential customers. Other matters to be considered include the way in which the marks will be used, the particular services provided and the character of the possible purchasers.

5. Ms Ryan submitted that the essential element of the Trade Mark was the word SLATERS, with the additional words being purely descriptive and not making a material contribution to distinctiveness. The Trade Mark shared an almost identical first element with SLATER & GORDON. Further, she pointed out that, in the context of the provision of legal services, it was common for partnerships to be referred to by the possessive form of the first surname in the partnership name. Ms Ryan gave the example of “Corrs” for “Corrs Chambers Westgarth” and others, supported by the evidence of Grech at [42].

6. Ms Ryan also cited George Ballantyne & Son Ltd v Ballantyne Stewart & Co Ltd [1959] RPC 273, in which BALLANTYNE AND STEWARTS and BALLANTYNE STEWARTS OLD ARGYLLE infringed a registration for BALLANTINE.

7. Both parties had filed declarations from legal practitioners. Those filed by the opponent supported the proposition that SLATER & GORDON was referred to widely in the legal profession as “Slaters” and that they would assume that the Trade Mark was that of the Opponent: for example Semmler, Coats and Salter.  Likewise the Applicant’s Henty and Platt declarations evidenced no such confusion.

8. Further, in Dobbyn, the Opponent had evidence of an officer of a major client of the Opponent declaring that he identified the Opponent as “Slaters” and that use of the Trade Mark might confuse him into believing it was use by the Opponent.

9. I note also that the Opponent’s own application to register SLATER & GORDON for legal services under application 1138274 in class 42 faces an official objection under section 44 that it is deceptively similar to the Trade Mark.

10. I am satisfied that there is a reasonable probability of deception or confusion or a real tangible danger of it amongst a substantial number of average potential consumers of legal services is left wondering if services provided under the two marks are related. I consider that a consumer considering which legal firm providing intellectual property specialisation is likely to think that that the Trade Mark is that of the Opponent.

11. I turn now to the third limb, that of reputation in Australia. The oft quoted passage of Kenny J in McCormick & Company Inc v McCormick (2000) 51 IPR 102 at [86] states:

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

1. There can be little doubt that the Opponent is one of the better-known legal firms practicing in Australia. The Opponent has provided a great deal of evidence (in Grech) to demonstrate its awareness among the general public because of its extensive advertising of its legal services provided under its mark since the 1980s in popular media such as local and national newspapers, on radio and television, and in general directories such as the White and Yellow Pages.

2. The opponent also provides evidence (in Grech and Morrison) of the widespread publicity that the Opponent’s legal cases have attracted since the 1990s and tend to consolidate the Opponent’s reputation.

3. Grech also provides convincing confidential evidence of substantial expenditure promoting its legal services under and by reference to its SLATER & GORDON trade Mark in the decade prior to 30 October 2005.

4. Because of its reputation I am satisfied that a significant section of the Australian public is likely to be deceived or confused by the use of the Trade Mark.

5. Mr Wylie correctly pointed out that the Opponent has gained its reputation as a large personal injury, industrial and employment, and “no win no pay” class action firm. He submitted that it has no reputation in intellectual property services, unlike the Applicant’s reputation as a boutique intellectual property practice with an entirely different look and feel.

6. I consider that it is likely that the public, knowing that the Opponent largely practices in the areas detailed by Mr Wylie, will think that the Opponent has added descriptive words to its abbreviated title to indicate that it is also offering intellectual property legal services.

7. Consequently, I am satisfied that this ground of opposition has been established.

8. Mr Wylie submitted that if this, or any other ground was establish, that I should direct that the Trade Mark application may proceed to registration, but only if, within one month from the date of these reasons are issued, the statement of services claimed in the application is amended to read: “intellectual property, information technology, media, entertainment and related commercial law and litigation services”.

9. This amendment would not remedy the situation where consumers will mistakenly assume that the Opponent has extended its well known areas of practice into those detailed by Mr Wylie. I do not propose to make such a direction.

Decision

1. Section 55(1) of the Act provides:

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.

1. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1083124.

Costs

1. In the event that the Opponent prevailed, Mr Stewart sought an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
11 June 2013