Source Homeloans Pty Ltd v Coles Group Ltd

[2008] ATMO 17

TRADE MARKS ACT 1995

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

Re:        Opposition by Source Homeloans Pty Ltd to registration of trade mark applications 966609(36) SOURCE; 969133(36) SOURCE CARD; 1021854(36) CML SOURCE; 1021855(36) COLES MYER SOURCE; 1028532(36) COLES MYER SOURCE (logo); and 1031743(36) SOURCE INSURANCE - in the name Coles Group Limited.

Delegate:

Iain Thompson

Representation:

Opponent: No representation or written submission

Applicant: Margaret Ryan of Phillips Ormonde & Fitzpatrick

Decision:

2008 ATMO 17

Section 52 opposition:

Grounds under sections 58 and 60 – alleged use of trade marks SOURCE HOME LOANS or SOURCE by opponent – onus on opponent to satisfactorily demonstrate such use; use established only in relation to mortgage brokerage services; services not the same kind of thing; trade marks not substantially identical; opposition under section 58 not established; no satisfactory demonstration of trade mark’s reputation, section 60 opposition also cannot be established.

Costs

Ordered against opponent

Background

1. These applications proceed in the name of Coles Group Limited of Tooronga, Victoria, and seek registration in Australia of the following six trade marks, current details of which are:

Appn No966609

Priority Date  18 August 2003

ServicesClass: 36 The retail sale of goods on credit; the provision of credit cards, credit accounts and other credit facilities; the rendering and collection of credit card accounts; other services in class 36 relating to the provision, operation and use of consumer credit facilities provided in connection with the retail sale of goods

Trade MarkSOURCE

Appn No969133

Priority Date  5 September 2003

ServicesClass: 36 The retail sale of goods on credit; the provision of credit cards, credit accounts and other credit facilities; the rendering and collection of credit card accounts; other services in class 36 relating to the provision, operation and use of consumer credit facilities provided in connection with the retail sale of goods

Trade MarkSOURCE CARD

Appn No1021854

Priority Date  23 September 2004

ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance

Trade MarkCML SOURCE

Appn No1021855

Priority Date  23 September 2004

ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance

Trade MarkCOLES MYER SOURCE

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

Appn No1028532

Priority Date  4 November 2004

ServicesClass: 36 Financial services including the sale of goods on credit, the provision of credit cards, credit accounts and other credit facilities, the rendering and collection of accounts and other services in class 36 relating to the provision, operation and use of consumer credit facilities; insurance services including home insurance, home and contents insurance, car insurance, life insurance, travel insurance, personal insurance and pet insurance  

Trade Mark

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

Appn No1031743

Priority Date  25 November 2004

ServicesClass: 36 Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance

Trade MarkSOURCE INSURANCE

1. Source Homeloans Pty Ltd, (‘the opponent’), of Alderley, Queensland, filed notices of opposition to the registrations of the above trade marks, (collectively, ‘the opposed trade marks’) reciting all of the grounds contained in Division 2 of Part 5 of the Trade Marks Act 1995, (‘the Act’).

2. The opponent filed evidence in support of the opposition.  These are declarations of Anand Martial Peter, Managing Director and CEO of the opponent – to all intents these declarations appear identical in their import and have been served and filed over the elapse of time in relation to the various matters.

3. Mr Peter’s declarations leave me facing a conundrum: in each of his declarations at paragraph 4, there is the request:

   I refer to the paragraphs and Exhibits contained in this declaration.  I say that the information contained in these paragraphs and Exhibits is CONFIDENTIAL in relation to the business activities of the Opponent and that the disclosure of the information contained in either of these paragraphs or Exhibits would seriously and adversely affect the business activities of the opponent.

4. The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition.  It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition.  The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction.  Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied.  Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition.  Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

5. This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed.  It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself).  None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.

6. The applicant has served and filed evidence in answer which I will also further discuss below.

7. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 17 September 2007.  The applicant was represented by Margaret Ryan of Phillips Ormonde & Fitzpatrick.  The opponent has been represented by Pizzeys of Brisbane but did not appear or file written submissions.

Evidence

1. The evidence filed in the matter is as follows:

Declarant	Date Declared	Exhibits
Evidence in support
Anand Martial Peter	30 May 2005	AP-1 to AP-8
Evidence in answer
Danny Murdoch	20 June 2006	DM-1 to DM-3
Alyssa Emelia Grabb	20 June 2005	AEG-1
Alyssa Emelia Grabb	2 March 2006	AEG-1
David Geoffrey Howell	28 Februry 2006	DGG-1 to DGG-19
Mark Lake	9 February 2006
Tony Kynaston	1 March 2006	TK-1 to TK-12

1. Mr Peter avers that the opponent company was formerly called You Australia and was ‘rebranded’ in 2002 with the word SOURCE as the main identifying feature of the branding of the business.  Mr Peters states that the opponent is a non-bank lender who manages funds for some five non-bank wholesale lenders. 

2. Mr Peters avers that the opponent’s services also range from sourcing loans for regulated and unregulated residential properties, commercial, personal, domestic, cars, credit cards or any other credit related facility or service.  However, exhibits to Mr Peter’s declarations establish only that the opponent is what is known as a mortgage broker – and offers, inter alia, lo doc, no doc and line of credit loans, all originating from other traders.  The exhibits also refer to a website The only service that I can ascertain which is offered on the website is the mortgage brokerage service described above– there do not appear to be any links to other websites operated by the opponent which might offer other services under the trade mark.  The website web.archive.org (known also as Wayback Machine) places the date of creation of this Internet site at February 2003, before the priority date of the first opposed application, and which then offered the same services as are now offered.  The trade mark appearing on this site is the same as the documentation in evidence and is:

1. Ms Ryan stressed in her submissions the relative lack of documentation provided by the opponent which can be dated with any certainty that goes to show use of the use of the opponent’s trade mark prior to 18 August 2003, the priority date of the first of the opposed applications.  I agree.  However, taken in combination, with some allowance made for the general difficulty of showing use of a trade mark in relation to services, I believe that the evidence establishes satisfactorily that the opponent had some slight use of the above trade mark in relation to mortgage broking services prior to the relevant date and that this use was in all likelihood limited to the Brisbane area.  I note that one of the opponent’s advertising expenditures has been on a Brisbane Yellow Pages® listing where it is listed as a mortgage broker.

2. However, I also agree with Ms Ryan that there are difficulties with the manner in which the opponent has presented its evidence of reputation of the trade mark it relies on.  Figures (which I take to be confidential) are presented in terms of a ‘percentage annual growth’, with no initial figure given or established.  I am not sure what this means – does it mean an increase in the funds which have been brokered for the opponent’s customers?  Does it mean the total number of loans made?  Does it mean the revenues in the form of commissions from the sale of mortgages?  And, whatever it means, what was the start point?  If the start figure would have reflected one customer, it would appear that the opponent might have documented under 20 or so customers.

3. Similarly, the opponent gives its approximate annual advertising of its services offered under the trade mark.  But there is no mention of when this advertising occurred – I am presumably asked to infer that it occurred before the priority date of the first opposed application but am unwilling to do so in the absence of both an explicit statement and supporting documentation as to when it occurred.

4. Mr Howell is General Manager, Financial Services of the applicant.  He states that the trade mark COLES MYER SOURCE was licensed to General Electric Finance Capital of Australia in October 2003 and has been in use since then.  Mr Howell avers that in excess of one million credit cards bearing the trade mark have been issued since that date.

Other

1. The extremely wide range of grounds canvassed in the Notice of Opposition seemingly includes one under section 28(a) of the Trade Marks Act 1955 – and another which is not a ground of opposition at all, ‘Registration of the opposed trade marks would prejudice the opponent in the conduct of its business.’  The breadth of the grounds, none of which were expressly abandoned prior to the hearing, makes any decision about which grounds may be relevant (or at least arguable) fraught for both the applicant and hearing officer and has obviously contributed significantly to the workload of the applicant’s legal representatives in both prosecuting the opposition and in preparation for the hearing.  Obviously, even if the opponent is partially or completely successful in its opposition, this issue will go to any award of costs as the applicant has had to consider the evidence and each of the multitudes of grounds in relation to each of the opposed applications.  However, after going through a similar exercise myself, the evidence appears to me to be couched in terms of, or be relevant only to, section 58 of the Act.  Potentially some of the evidence goes to section 60 (or possibly, via section 42 of the Act to section 52 of the Trade Practices Act 1974) but the evidence of reputation of the opponent’s trade mark is, as discussed above, not of any real weight at all.  Ms Ryan presented argument in terms of both sections 58 and 60; however, I find now that the section 60 ground (if it were ever seriously pursued by the opponent) has not been established and that the grounds other than that under section 58 (whether they be ones available under the Act or not) have not been established.

Section 58

1. Section 58 of the Act provides:

   58 Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that

   the applicant is not the owner of the trade mark.

   Note: For applicant see section 6.

2. Absent use by the applicant of the opposed trade marks before the priority date of the opposed applications, it is incumbent upon on the opponent to demonstrate authorship and use prior to those dates in the course of trade[1] of a trade mark which is at least substantially identical to the opposed trade marks in relation to services which are ‘the same kind of thing’[2] as the services in respect of which registrations of the opposed trade marks are sought.

   [1] Moorgate Tobacco Company Ltd v Philip Morris Ltd (No. 2) [1984] HCA 73; (1984) 156 CLR 414 at 432-434, Deane J,

   [2] In re Hick’s Trade Mark (1897) 22 VLR 636 at 640 per Holroyd J.

3. Substantial identity, which is the minimum requirement of similarity to establish ownership, was discussed by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495. He commented:

   The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75; (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible. There is, as Mr Shanahan points out in his work, p. 158, real difficulty in assessing the broader notion of deceptive similarity in the absence of some notional user in Australia of the prior mark (something postulated by s. 33) or prior public recognition built up by user (para. 28 (a)).

4. At the outset I remark that I have some concern that the opponent’s trade mark may not be substantially identical to any of the opposed trade marks because of the logo form of the applicant’s trade mark.  The disc on which the word SOURCE appears in the opponent’s trade mark does not function as a background for the trade mark as a whole, but serves purpose to highlight the word SOURCE contained within it.  Neither may it be appropriate when it is viewed in conjunction with the disk to dismiss the word ‘homeloans’ since it is conjoined and invariably appears in the opponent’s trade mark.  It is not easy, therefore, to dismiss the disc as a mere background for the trade mark as it has work to do and functions otherwise within the opponent’s trade mark.  When asked about the logo form of the trade mark at the hearing, Ms Ryan did not press the issue or present argument, so I will leave the issue a moot one since a decision on this issue does not affect the outcome of proceedings one way or the other.  I will remark, however, that, if pressed on this issue by Ms Ryan, my inclination would have been to accede to the point.

5. Notwithstanding this, the opposition in relation to trade marks 1021854(36) CML SOURCE, 1021855(36) COLES MYER SOURCE, and 1028532(36) COLES MYER SOURCE (Logo) cannot be established since those opposed trade marks do not show a substantial identity to the opponent’s trade mark SOURCE HOMELOANS.  The indicia other than the word SOURCE in those trade marks contribute in a substantial way to the identity of the trade marks.

6. Following the rationale of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, and setting aside my reservations about the graphic of the disk in the opponent’s trade mark, the balance of the applied for trade marks, 966609(36) SOURCE; 969133(36) SOURCE CARD; and 1031743(36) SOURCE INSURANCE (’the balance of the applications’) are at least arguably substantially identical to the opponent’s trade mark.

7. I turn now to the question of whether the services that the opponent performs, the provision of mortgage broking services, are ‘the same kind of thing’ as the services in respect of which the balance of the applications are made.

8. In the recent case of Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, Kenny J said at paragraph 14:

   As we have seen, generally speaking, the prior public use in Australia of a mark as a trade mark – that is, the use of the mark in relation to goods or services in order to show a connection between the goods and the user of the mark – may support the user’s claim to be the "owner" of the mark for the purpose of s 27 of the 1995 Act: see Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73; (1984) 156 CLR 414 at 432 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). For this purpose, too, the owner’s right to registration extends to goods "of the same kind" as the goods that have already borne the mark: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 per Stirling J and In re Hick’s Trade Mark (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):

   [The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.

9. Her Honour subsequently remarked at paragraph 17:

   As Allsop J notes,[3] this approach conforms to the approach in the Trade Mark Office in opposition proceedings based on prior use. His Honour refers to numerous examples. Other examples can be cited. In Howe Laboratories Inc v Daemar (1936) IPR 638 the services of the opponent – the treatment of motors and engines – were held not to be the same kind of thing as the applicant’s lubricant conditioning agent. In Coleman Company Inc v Igloo Products Corporation (1999) 48 IPR 158 the opponent’s insulated containers were held not to be the same kind of thing as the applicant’s insulated thermoelectric containers. In The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334, the opponent’s service of providing food and drink refreshments to cinema patrons was not the same kind of thing as the applicant’s food goods. In Nissan Jidosha Kabushiki Kaisha v Woolworths Ltd (1999) 45 IPR 649 the clocks mounted in the opponent’s vehicles were not the same kind of thing as the applicant’s clocks and watches. In Cantarella Bros Pty Ltd v Novadelta-Comercio E Industria De Cafes LDA (1998) 42 IPR 265 olive oil and olive products were held not to be the same kind of thing as coffee.

   [3] Op cit at paragraph 91.

1. The specification of services of the first opposed application 966609(36) SOURCE is:

   The retail sale of goods on credit; the provision of credit cards, credit accounts and other credit facilities; the rendering and collection of credit card accounts; other services in class 36 relating to the provision, operation and use of consumer credit facilities provided in connection with the retail sale of goods.

2. One of the items in the opponent’s evidence is a letter from a credit card company offering the opponent cheques and/or credit cards emblazoned with the opponent’s trade mark.  However, there is no evidence that the opponent took up this offer and what needs to be established by the opponent is its public use of the trade mark in the course of trade.[4]

   [4] Shahin  Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278

3. I do not think that mortgage broking services are the same kind of thing as the applicant’s credit and credit card services.  The services do not, to my mind, have the degree of relatedness as (for example) hatchets and axes.  Without comment on whether the services involved are similar services, the activities involved are in fact different from each other and involve different types of activities.

4. It follows that the opponent has not established its opposition in relation to 966609(36) SOURCE.

5. The specification of services of opposed application 969133(36) SOURCE CARD is identical to that of 966609(36) SOURCE discussed above.  The opponent has not established its opposition in relation to 969133(36) for the same reasons as those given for 966609(36), above.

6. The specification of services of opposed application 1031743(36) SOURCE INSURANCE is:

   Insurance services including home insurance, home and contents insurance, car insurance, life insurance, pet insurance and travel insurance.

7. I note that the opponent offers mortgage insurance as a part of its broking service.  I do not believe that the evidence establishes that the opponent is an insurance originator but that the opponent retails mortgage insurance.  I am not convinced that mortgage insurance broking services are the same kind of thing as home insurance services.  The former is a commission sale on behalf of an insurance company – the latter involves activities of a different kind.

8. The opponent has not established its opposition in relation to application 1031743(36) SOURCE INSURANCE.

9. It follows that the opponent has not established its grounds in relation to any of the opposed trade marks on the sole ground that it has apparently pursued.

Decision

1. Section 55 of the Act  provides:

   55 Decision

   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.

2. Subject to any appeal, or appeals, against these decisions, applications 966609(36) SOURCE; 969133(36) SOURCE CARD; 1021854(36) CML SOURCE; 1021855(36) COLES MYER SOURCE; 1028532(36) COLES MYER SOURCE (logo); and 1031743(36) SOURCE INSURANCE may proceed to registration one month from the date of these reasons.  If such appeal or appeals are lodged within the required time, the disposition of the applications should be in accordance with the Court’s order or direction.

Costs

1. Section 202 of the Act provides:

202  Registrar’s powers

The Registrar may, for the purposes of this Act:

(a)summon witnesses; and

(b)receive written or oral evidence on oath or affirmation; and

(c)require the production of documents or articles; and

(d)award costs against a party to proceedings brought before the Registrar; and

(e)       notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.

Note:For the awarding of costs see section 221.

1. Section 221 of the Act provides:

221  Costs awarded by Registrar

(1)             The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2)             A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3)             If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

1. The applicant sought its costs should it be successful in these matters.  I award costs against the opponent and, having regard to the manner in which the opponent has pursued this opposition and the workload it has placed upon the applicant’s legal representatives (and subsequent costs to the applicant) discussed at paragraph 16, above, the applicant is entitled to its costs at the official scale which I order the opponent to pay in relation to each of the opposed applications.

Iain Thompson

Hearing Officer

Trade Marks and Designs Hearings

11 February 2008