Somerton Park Kindergym Pty Ltd

[2024] ATMO 80

TRADE MARKS ACT 1995

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

ReTrade mark application number 2382392 (41) – SOMERTON PARK KINDERGYM (figurative) – in the name of Somerton Park Kindergym Pty Ltd

Delegate:                 Robert Wilson

Representation:       Applicant: Wallmans Lawyers

Decision:                   2024 ATMO 80

Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 44 – element which is common to the trade marks is common to the trade and descriptive – not satisfied that use of trade mark is likely to give rise to deception or confusion – application accepted

Background

1. On 23 August 2023 Somerton Park Kindergym Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below:

Application Number:

2382392

Services:

Class 41: Gymnastic instruction; Conducting exercise classes; Children's entertainment services; Provision of children's educational services through play groups; Arranging and conducting of sports events; Instruction in sports; Information services relating to sport; Provision of apparatus for exercise; Provision of apparatus for sports; Children's adventure playground services

(‘the Applicant’s Services’)

Trade Mark:

(‘the Trade Mark’)

2. The application was examined as required by s 31[1] and on 14 September 2023 the examiner issued an adverse report. The examiner indicated her view that there were grounds for rejecting the application under section 44. The examiner cited six earlier trade marks in her report. The basis for the citations were that the Trade Mark ‘closely resembles the earlier trade marks because the earlier trade marks feature the word KINDERGYM as the significant and memorable element’. Further the examiner considered that each of cited trade marks was registered for services in Class 41 which are similar to the Applicant’s Services.  

[1] References to sections or regulations in this decision, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

1. The Applicant responded to the adverse report by correspondence dated 10 November 2023. The Applicant’s response was prepared and filed by the Applicant’s representatives Wallmans Lawyers. In respect of three of the cited trade marks, the Applicant provided letters of consent. The letters of consent meant that the grounds for rejection in respect of those citations were overcome under the provisions of s 44(3)(b). In respect of the remaining four citations the Applicant submitted that the Trade Mark is neither substantially identical nor deceptively similar to any of them.

4. The remaining citations are listed in the table below. Some of the cited trade marks are registered for goods and/or services in classes additional to Class 41; only the Class 41 services are listed below. Of the cited trade marks, 707119, 707121 and 1583617 are owned by Gymnastics Australia Limited. Trade mark 1096549 is owned by KSOTB Holdings Pty Ltd. For the remainder of this decision, the remaining cited trade marks will simply be referred to as the ‘cited trade marks’.

Registration Number	Trade Mark	Class 41 services
707119	(‘119 Trade Mark’)	The provision of a movement program for children and their care giver to assist in the social, emotional and physical development of the child
707121	(‘121 Trade Mark’)	An exercise and movement program for children and their carers
1096549	Kindygym Australia (‘549 Trade Mark’)	Organization of sports competitions; providing sports facilities; provision of information about sports; sports consultancy; timing of sports events
1583617	(‘617 Trade Mark’)	Education; providing of training; entertainment, recreation (including sporting) and cultural activities

5. The examiner was not persuaded by the Applicant’s submissions. Accordingly, the examiner issued a second adverse examination report on 5 December 2023, following which the Applicant requested to be heard.

6. The matter was scheduled to be heard on 2 May 2024. Prior to the scheduled hearing date, the Applicant filed a written summary of submissions to be relied upon at the hearing. The submissions were prepared by Wallmans Lawyers on behalf of the Applicant. The Applicant also filed a declaration made on 25 January 2024 by Beverly Manns, the Director and Secretary of the Applicant, with Annexures BM-1 to BM-7 (‘Manns declaration’).

7. In my capacity as a delegate of the Registrar of Trade Marks, I considered the Applicant’s submissions and the Manns declaration prior to the scheduled hearing date. Having done so, I was not satisfied that there was a ground for rejecting the application. My reasons for that decision are provided below. I informed the Applicant of my decision, and, in the end, the oral hearing was deemed unnecessary and was not held.

Consideration of the s 44 grounds for rejection

8. Provisions relevant to the consideration of s 44 in this matter are reproduced below:

Section 44 - Identical etc. trade marks

1. …

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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Section 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.

9. In accordance with s 33 the Registrar must accept the application unless she is satisfied that there are grounds for rejecting the application. If the Registrar is satisfied that there are grounds for rejecting the application she must reject the Application. In the present matter the Registrar may only reject the application if she is satisfied that at least one of the cited trade marks:

·     has a priority date which is earlier than the filing date of the application (being the priority date for the registration of the Trade Mark) (‘the first requirement’);

·     is registered in respect of at least some services which are similar to the Applicant’s Services (‘the second requirement’); and

·     is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).

The first requirement

1. All of the cited trade marks have a priority date which is earlier than the filing date of the application. The first requirement is, therefore, satisfied.

The second requirement

1. It is uncontroversial that at least some of the Class 41 services for which each of the cited trade marks is registered are similar to the Applicant’s Services. The Applicant did not make submissions to contrary. I am satisfied that the second requirement is satisfied in respect of at least some services.

The third requirement

The distinctiveness of KINDERGYM and KINDYGYM

1. The degree of distinctiveness of the term KINDERGYM, and KINDYGYM are central to the considerations of substantial identity and deceptive similarity in this matter. In this regard the Applicant submitted that, KINDERGYM and KINDYGYM ‘are integers which are descriptive or in common use and must be discounted in considering whether the marks are deceptively similar’.

2. The Applicant also submitted that KINDERGYM is an amalgamation of the two words, ‘kinder’—being the German word for ‘child’—and ‘gym’. The Applicant referred to the definitions of ‘gym’ and ‘kindergarten’ found in the Macquarie Dictionary to support its submissions. Relevant parts of those definitions are reproduced below:

   Kindergarten: any childcare centre; [lit., children’s garden; coined by German educational reformer Friedrich Froebel, 1782–1852]

   Gym: a centre providing fitness equipment and classes.

3. The Applicant also submitted that the ‘Australian public are familiar of [sic] the meaning of “Kinder” in association with child or children’. The Applicant noted that:

   The term ‘kinder’ is currently incorporated in 156 registered trade marks, many of which are in connection with the popular children’s brand of chocolate “Kinder Surprise” which we suggest has assisted in educating the public on the meaning of the word ‘Kinder’ in connection with child/children.

4. The Application further submitted that:

   [T]he ordinary signification of ‘Kindergym’ is the mere combination of ‘Kinder’ AND ‘Gym’ referring to:

   (a)a gymnastics class for children, likely pre-school age; and/or

   (b)a location (ie gym) for children to perform gymnastics.

   On that basis alone … Kindergym should be accepted as a descriptive term or one which is not inherently adapted to distinguish goods and/or services.

5. I would add to the Applicant’s submissions that KINDY is equally well understood in Australia to have the same meaning as ‘kindergarten’—being an abbreviation of that term. The Manns declaration provides many examples where the terms ‘kindergym’, ‘kinder gym’, ‘kindygym’ and ‘kindy gym’ are used as descriptive terms for services such as those indicated by the Applicant. I am persuaded by the Applicant’s submissions, and find it uncontroversial, that KINDERGYM and KINDYGYM have the ordinary signification described by the Applicant. Further, I am satisfied that the terms are commonly used by traders providing services such as the Applicant’s Services.

The relevance of descriptive terms in trade marks

1. The presence in trade marks of elements which are common to the trade in question and are descriptive of the relevant goods or services is unlikely to give rise to deceptive similarity.[2] To find deceptive similarity in such cases risks giving to the owner of the earlier mark ‘a complete monopoly of all words conveying the same idea as his trade mark’.[3] In the case of Conde Nast Publications Pty Ltd v Taylor, the two trade marks under comparison both included the word ‘vogue’. Burchett J stated:

   [I]t should be borne in mind that ‘vogue’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.[4]

   [2] See for example: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15, [3] (Dixon, Willams and Kitto JJ).

   [3] Ibid.

   [4] (1998) 41 IPR 505, 511–512.

2. It is with these principles in mind that the questions of substantial identity and deceptive similarity are considered.

Substantially identical?

1. I will firstly consider whether the Trade Mark is substantially identical to any of the cited trade marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] [1963] HCA 66, [12].

2. The respective trade marks are juxtaposed below.

The Trade Mark	The cited trade marks
Kindygym Australia

1. On a side by side comparison, it is apparent there are significant visual and aural differences between the respective trade marks. The Trade Mark includes a significant and distinctive graphic device composed of three children playing: the absence of this device in any of the cited trade marks, alone, is sufficient to mean that the Trade Mark is not substantially identical to any of the cited trade marks.

Deceptively similar?

1. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in 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 impressions that such persons would get from the defendant’s [trade mark].[6]

   [6] Ibid [13].

2. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[7]

   Second, the question of deceptive similarity is not to be decided by a side by side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[8]

   Third, allowance must be made for imperfect recollection.[9]

   Fourth, the effect of the spoken description must be considered.[10]

   Fifth, it is necessary to show a real tangible danger of deception or confusion.[11]

   Sixth, 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 the two products come from the same source.[12] …

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[13]

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[14]

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[15] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[16] [17]

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon, Evatt and McTiernan JJ).

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon, Evatt and McTiernan JJ).

   [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

   [14] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362 (Mason J).

   [15] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).

   [16] Ibid [100].

   [17] [2012] FCA 1022, [37]–[46].

3. As indicated by s 10, a significant aspect of the concept of deceptive similarity is the likelihood of deception or confusion. There may well be similarity between trade marks, which arises out of common elements, but unless that similarity is likely to give rise to deception or confusion, the trade marks are not deceptively similar. In the present matter, the Trade Mark contains a significant graphical device which is not present in any of the cited trade marks. The overall arrangement of the words and devices in the Trade Mark is different to that in each of the cited trade marks. The only common element is a term which is common to the trade and descriptive of the services in question. Because of the combination of the aforementioned factors, I am not satisfied that the Trade Mark so nearly resembles any of the cited trade marks that it is likely to deceive or cause confusion. Consequently, I am not satisfied that there exists a ground for rejecting the application.

Decision

1. I am not satisfied that there exists a ground for rejecting the application. Consequently, I have accepted the application. The Applicant will receive official notice of the acceptance in due course.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
30 April 2024