South African Airways (Proprietary) Limited v Virtuoso, Ltd
[2011] ATMO 30
•6 April 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by South African Airways (Proprietary) Limited to application under section 92 of the Act by Virtuoso, Ltd to remove trade mark number 644176(39) - VOYAGER - in the name of South African Airways (Proprietary) Limited.
-and-
Opposition by South African Airways (Proprietary) Limited to registration of application 1215724(35, 39) VOYAGER CLUB in the name of Virtuoso, Ltd.
Delegate: Iain Thompson Representation: Opponent: Trevor Stevens, Principal of Davies Collison Cave
Applicant: Carmen Champion of Counsel instructed by FB RiceDecisions: 2011 ATMO 30
s92 - opposition successful as opponent’s trade mark has been used in relation to airline transport services and a frequent flyer program in Class 39.
s52 opposition successful under s44 because the trade marks are substantially identical and transportation services and travel agency services are similar services.
Costs awarded against applicant in both matters.Background
These matters are interconnected and have been convenient to both hear and decide together.
On 29 July 2003, Virtuoso, Ltd of Fort Worth, Texas, (‘the applicant’) filed an application to register the trade mark VOYAGER CLUB in Classes 35, 39 and 43. That application encountered objections to acceptance (which are central to these matters). The applicant subsequently filed a divisional, current details of which appear below:
Application No: 1215724
Priority Date: 29 July 2003Services:Class 35: Business marketing consultation services for others in the field of travel, including marketing for travel agencies, cruise-lines, and packaged travel services
Class 39: Travel agency services, including making reservations and bookings for transportation; arranging travel tours; travel guide services; travel information services; providing information in the field of travel by means of a global computer network
Trade Mark: VOYAGER CLUB
(‘the application’)
The same difficulties were encountered by the application as with the ‘parent’ application and were founded on section 44 of the Trade Marks Act 1995 (‘the Act’). Section 44 provides for the rejection of an application for registration based on prior conflicting trade marks. Details of the prior conflicting registration are:
Registration No: 644176
Owner: South African Airways (Proprietary) Limited
Priority Date: 28 October 1994Services:Class 35: Administering the allocation of “Frequent User” credits to customers
Class 39: Transportation services in this class
Trade Mark: VOYAGER
(‘the registration’)
The applicant sought an ex parte decision concerning whether ‘transportation services’ are similar to ‘Travel agency services, including making reservations and bookings for transportation; arranging travel tours; travel guide services; travel information services; providing information in the field of travel by means of a global computer network’. Don Nancarrow, the Registrar’s delegate, by letter to the applicant, stated:
I have now considered the matter of the class 39 services for this application, being ‘Travel agency services, including making reservations and bookings for transportation; arranging travel tours; travel guide services; travel information services; providing information in the field of travel by means of a global computer network’ and found them not to be similar services to ‘Transportation services in this class’.
The application was subsequently returned to examination where it was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 15 July 2009. On 3 September 2009, South African Airways (Proprietary) Limited, of Kempton Park, Johannesburg, South Africa, (‘the opponent’) filed Notice of Opposition to the registration of the trade mark.
In its turn, the applicant filed application under section 92 of the Act[1] seeking:
… the partial removal of trade mark registration 644176 in the name of South African Airways (Proprietary) Limited (“the Trade Mark”) from the Register in respect of only certain of the goods and/ or services so as to leave the Trade Mark registered in respect of the following specification of goods and/ or services:
Administering the allocation of “Frequent User” credits to customers
This [removal] application seeks to rely upon the grounds of s.92(4)(b)
[1] In an earlier application under section 92 of the Act, Alison Windsor, the Registrar’s delegate, found that the applicant did not have standing as a ‘person aggrieved’ and that the application for removal was not established: South African Airways (Proprietary) Limited v Virtuoso Ltd [2007] ATMO 66.
The opponent filed Notice of Opposition to the partial removal of the registration on the ground that it had used the registered trade mark.
The parties have served and filed evidence in relation to the section 52 and section 92 matters. This comprises:
Declarant Known As Date declared Exhibits 1. Thevandra Krishna Krishna 1 1 December 2009 TK-1 to TK-4 2. Wayne Keith Willis Willis 1 31 March 2010 Annexures A to C 3. Thevandra Krishna Krishna 2 30 August 2010 4. Wayne Keith Willis Willis 2 28 May 2010 Annexures A & B
The matter came before me for a hearing of the issues on 16 February 2011 in Sydney. Carmen Champion of Counsel represented the applicant, instructed by FB Rice & Co. Trevor Stevens, a principal of Davies Collison Cave, represented the opponent.
The Evidence
The opponent is an international airline which, relevant to this matter, uses the trade mark VOYAGER in relation to its rewards, or frequent flyer, program (and ancilliary services) in connection with flights between Australia and South Africa[2]. Mr Krishna, in his first declaration, states that the rewards system comprises:
o Maintaining a database and tracking of flights made by members,
o Making bookings for award tickets,
o Check-in services for customers and their luggage,
o Lounge and catering services at numerous airports around the world,
o Excess baggage allowances,
o Car rental and chauffeur services, and
o Publication and circulation of a newsletter with the title ‘VOYAGER’.
[2] Subject to possible qualification by paragraph 12, below.
Mr Krishna goes on to state:
Services under my company’s trade mark VOYAGER specifically include travel information services as well as the following reservation and booking services:
(i) Co-ordinated schedules to make flight connections easier;
(ii) Priority waitlisting for flights that are fully booked;
(iii)Priority standby listings for flights without a prior reservation; and,
(iv)The issuing of award airline tickets for SAA and partner airlines.
The opponent became a member of STAR ALLIANCE (an affiliation of then 22 airlines around the world)[3] on 10 April 2006. This enables the member airlines to have reciprocal agreements with the respective frequent flyer programs of all Star Alliance carriers. In effect, states Mr Krishna, the opponent’s frequent flyer program under the trade mark VOYAGER is now a global program and the opponent’s frequent flyer program has members all over the world.
[3] I note that Star Alliance now claims to have 27 member airlines and carry in excess of 600 million passengers a year between 181 countries: >
Central to these matters, Mr Krishna also says:
In Australia [the opponent’s] services under the trade mark VOYAGER have been in use since 1994 and the trade mark VOYAGER is prominently featured in relation to all services provided in Australia under the trade mark. These services include the transportation of [the opponent’s] customers and the transportation of luggage.
Australia is [the opponent’s] fifth largest international long haul market with a total of 13 flights per week between the countries and currently operating on a code share basis with QANTAS. [The opponent] also has in excess of 26,000 members of its Frequent Flyer Programme in Australasia (Australia 24,000 and NZ 2,000). These numbers are increasing rapidly because [the opponent] is now part of the global alliance known as Star Alliance (referred to above). [The opponent] also re-introduced the reciprocal agreement with the QANTAS Frequent Flyer Programme on 01 November 2009. The Australasian market is of great importance to [the opponent], particularly in light of the large number of South African expatriates living here.
Mr Krishna gives details of the opponent’s internet websites and details of online ticket sales made in Australia since 2004:
Year
Online Ticket Sales in Australia
2004
272
2005 558 2006 717 2007 1150 2008 1602 Extracts of the opponent’s websites showing use of the VOYAGER trade mark are exhibited to Krishna 1. In common with many major service providers, the opponent also offers a credit card (VISA), co-branded with the opponent’s VOYAGER trade mark, with which one accrues further frequent flyer credits.
In Willis 1 in relation to the section 92 matter, Mr Willis, then trade mark attorney for the applicant, states:
Paragraph 5 of the Krishna Declaration states that “the trade mark is used by [the opponent] in relation to a “Frequent Flyer Programme” which rewards customer loyalty, and other services related to that programme”. The Macquarie Dictionary provides a meaning for the expression “frequent flyer”. Annexed hereto and marked “Annexure A” is an extract from the online Macquarie Dictionary providing the meaning in question. It will be noted that the scheme in question is described as “an incentive scheme” which may be contrasted with service that is provided for moneys worth. In other words, the incentive scheme is ancillary to the services ordinarily provided for moneys worth but is not itself service provided in the course of trade.
South African Airways (Proprietary) Limited has two relevant trade mark registrations in the United States of America being registrations 2220035 and 3061792. Annexed hereto and marked “Annexure C” is a status report for each of these registrations obtained from the online database of the US Patent and Trademark Office. Both applications were filed as “intent to use” applications and, accordingly, describe those services in relation to which the trade mark has been used in the US as a pre-condition to registration. It will be seen that registration 3061792 claim services in class 35 and registration 2220035 claim services in class 39 with the odd description “transportation services, namely, airline passenger services in the nature of a frequent flyer program”.
Paragraph 6 of the Krishna Declaration purports to identify the “services” that are provided by the registered owner in Australia under the VOYAGER trade mark. Apart from the fact that it is difficult to conceive that any of these are services provided in the course of trade (it is hard to imagine that “excess baggage allowances” is a service provided for moneys worth) there is no evidence that any of these services are provided in Australia. Certainly, “lounge and catering services at numerous airports around the world” does not describe a service provided in Australia. I have visited the website and if my understanding of the flight timetables provided on the website is correct, the registered owner only provides flights between South Africa and Australia. In paragraph 6 of the Krishna Declaration, it is declared that the VOYAGER trade mark is used in relation to “car rental and chauffeur services” but such services are only provided to the holders of “Platinum” status and above [there is no evidence of how many Australians, if any, have this status] and such services are only available on “qualifying” international flights. This does not include flights to or from Africa and so, clearly, these services cannot have been provided in Australia.
According to the enquiries that I have been able to conduct, the registered owner maintains only a “skeleton” staff in Australia required to administer flights to and from South Africa. I therefore believe that it is more likely than not that almost all of the organisation and administration of the VOYAGER Frequent Flyer incentive scheme operated by the registered owner is carried out in South Africa and not in Australia.
And in relation to the section 52 matter, in Willis 2, Mr Willis states:
Virtuoso, Ltd. is either the applicant or registered owner of the trade marks VOYAGER CLUB or VIRTUOSO VOYAGER CLUB in 24 countries around the world. A spreadsheet identifying the applications/registrations in question that has been furnished to me by my US instructor is annexed hereto and marked “Annexure A”.
Research conducted either by myself or by my US instructor has revealed that the opponent, South African Airways (Proprietary) Limited is the registered owner of the trade mark VOYAGER or the trade mark SOUTH AFRICAN AIRWAYS VOYAGER in three countries or regions where there are existing trade mark registrations owned by Virtuoso, Ltd. These are the European Community, the United States of America and Switzerland. Annexed hereto and marked “Annexure B” are database extracts showing details of US registration 75357719 VOYAGER CLUB in the name of Virtuoso, Ltd. and US registration 3061792 VOYAGER (Stylised) in the name of South African Airways (Proprietary) Limited as well as European Community Trade Mark Registration 3116993 VOYAGER CLUB in the name of Virtuoso, Ltd. and 4027017 VOYAGER in the name of South African Airways (Proprietary) Limited.
In his evidence in reply, in Krishna 2, Mr Krishna states:
At paragraph 7 Mr Willis says “(C)ertainly, ‘lounge and catering services at numerous airports around the world’ does not describe a service provided in Australia”.
[The opponent] provides lounge and catering services in Australia for all GOLD and PLATINUM Voyager Club members and also for all Business Class and First Class members at Qantas lounges in Sydney, Brisbane, Melbourne and Perth. These facilities apply not only to Australian-based VOYAGER CLUB members but extend to all and any VOYAGER CLUB members travelling in Australia.
Also, at paragraph 7 Mr Willis says “the registered owner only provides flights between South Africa and Australia”.
In response, the route between South Africa and Australia is a very busy route and the number of SAA flights during 2004 and 2009 are summarised as follows:
Flights Per Week: JNB/PER/JNB
Mar ‘04 — Oct ‘09: 5 flights per week plus supplementary flights during peak periods
Oct ‘09 — Oct ‘10: 7 flights per week
Flights Per Week: JNB/SYD/JNB (Code share with QF)
Mar ‘04 — Mar –’06: 4 flights plus supplementary peak periods
Apr ‘06 — Mar ‘10: 5 flights plus supplementary during peak period
Mar ‘09 — Oct ‘10: 6 flights per week
Sep ‘10: — current: 7 flights per week
Furthermore, as stated above under paragraph 3, SAA VOYAGER CLUB members travelling to and from Australia on routes other than the South Africa/Australia route continue to enjoy VOYAGER CLUB membership benefits.
At paragraph 7 Mr Willis further says “such services are only provided to holders of ‘PLATINUM’ status and above there is no evidence of how many Australians, if any, have this status ....”.
In response I say that there are 38 PLATINUM VOYAGER CLUB members in Australia and 13 LIFE TIME PLATINUM VOYAGER CLUB members in Australia
At paragraph 8 Mr Willis says “(A)ccording to the enquiries that I have been able to conduct, the registered owner maintains only a “skeleton” staff in Australia....”.
In response to that statement I say that my Company employs in Australia 7 full time staff, 6 part time staff and 19 dedicated staff appointed by our GSA who handle SAA’s customer service, sales, ticketing functions throughout Australia.
Onus
It is the practice of the delegates of the Registrar to follow Pfizer Products Inc v Karam [2006] FCA 1663, as regards onus. Gyles J said of the onus in trade mark oppositions:
I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.
See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]. The standard of the onus may nevertheless still be considered a live issue although, in my opinion, it has not been changed by the more recent decision of Lander J in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 whose words at paragraphs 54-55 were clearly obiter:
In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I said that I should follow the decision in Lomas because it was a decision of the Full Court and I should follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 as a matter of comity and because other judges of the Court had followed that decision.
That is still my opinion. It may be, as Gyles J has pointed out, that the decision in Lomas was obiter and does not strictly need to be followed but it is a decision of the Full Court in circumstances where there are competing lines of authority at first instance which have left judges of this Court divided. The conflict cannot be resolved at first instance and must be resolved in the Full Court. As I indicated in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131, I favour the reasoning of Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands Pty Ltd [2003] FCA 1517; 61 IPR 130 but thought because of Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 and comity I should follow the other line of authority. That is still my view, notwithstanding the criticism of that approach in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787. [Stress added]
I will accordingly decide this matter on the balance of probabilities, although if I adopted the higher standard referred to by Lander J, my decision in relation to the section 52 proceedings would be unaltered.
And in the instance of an opposed application under section 92 for the removal of a trade mark from the register, the onus is on the opponent to establish use of the trade mark – subparagraph 100(1)(c) of the Act provides:
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
[…]
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in goods faith, by its registered owner in relation to the relevant goods and/or services.
See also Optical 88 Ltd’ v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 at [204] per Yates J:
[T]he opponent cannot be heard to complain of what might be found to be deficiencies in proof of the use that is relied on to rebut the allegation of non-use, when it has the means at its disposal to show precisely how, when and where the challenged mark was used ...
Legislative background
Relevant to the application for removal of the registration, section 92 provides:
92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
[…]
(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.
Relevant to the opposition under section 52 of the Act, section 44 of the Act provides:
44Identical etc. trade marks
(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).
Also relevant to this decision are sections 7, 10, 14(2) and 17 of the Act which respectively provide:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
10Definition 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.
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
In these reasons, the consideration of the application under section 92 for the partial removal of the registration is, to my mind, logically antecedent to consideration of the matter of the opposition to the registration of the application under section 52 of the Act.
Section 92
The relevant period for purposes of subsection 92(4)(b) is from 9 March 2006 until 9 March 2009.
The non-use proceedings relate only to Class 39 services included in the registration – that is: “transportation services in this class”.
Broadly speaking, it is the opponent’s thesis that the services provided to its frequent flyers under the trade mark VOYAGER include transportation services whereas the applicant for removal states that the ‘administration’ of frequent flyer services, or more particularly, those described in the opponent’s evidence, do not include transportation services.
Mr Stevens submitted in this regard:
Transportation services were provided between Australia and South Africa by the opponent within the period 9 March 2006 to 9 March 2009. Refer to Statutory Declaration by Thevandra Krishna of 30 August 2010 at paragraph 5. [Mr Krishna here attests to the frequency of flights between Australia and South Africa by the opponent].
These transportation services included the transport of customers under the trade mark VOYAGER — that is, passengers and their baggage, were transported between South Africa and Australia under and by reference to the opponent’s services under the trade mark VOYAGER.
Ms Champion’s submissions were that:
The term “administering” means “to manage or to have charge of or the execution of” something: The Macquarie Concise Dictionary. The relevant services are therefore concerned with the managing or taking charge of the allocation of frequent flyer points. The operative word is “allocation” as the relevant services are not concerned with the management of the frequent flyer program generally. The Macquarie Concise Dictionary defines the word “allocate” as “to set apart for a particular purpose.
The question therefore arises as to what evidence if any the opponent is seeking to rely upon to resist the removal of the relevant services from Trade Mark Registration 644176. The answer is none. The two declarations of Thevandra Krishna made on 1 December 2009 and 30 August 2010 respectively tell us absolutely nothing about the service of managing the allocation of frequent flyer points which was allegedly conducted by the opponent during the relevant period in Australia.
The Krishna declarations state that the opponent offers a frequent flyer program but says nothing about the manner in which the accumulated points are administered, by whom they are administered, and, importantly, where they were administered during the relevant period. The document marked Ex TK-3 states that a member of the opponent’s frequent flyer program can track his/her mileage activity on the website or by contacting the Voyager Contact Centre. The Krishna declarations are silent on whether the opponent had a Voyager Contact Centre in Australia during the relevant period. Even if it did, there is no explanation as to whether such a centre in Australia was involved in the relevant services during the relevant period.
The opponent has the onus of proof. From the above comments it will be seen that its evidence is deficient in proof. […] Relevantly, the opponent has at all times been represented by a firm of well-known and experienced trade mark attorneys which suggests that the opponent was not in a position to provide the information necessary to defeat the section 92 application.
It is probable that the question of use of the trade mark VOYAGER by the opponent in relation to ‘transportation services’ during the relevant period should be looked at quite differently and to do this I return to the questions posed by the evidence of Mr Willis. Are “the provision of frequent flyer points and ancillary services” a service? And, if so, where are they included in the International (Nice) Classification of Goods and Services?
I do not properly understand Mr Willis’s submission evidence that frequent flyer services provided by an airline to its customers are not a service. It is possible that his view is shaped by the notion that frequent flyer services are ‘free’. However, the accumulation of frequent flyer points is dependant on the expenditure of significant amounts of money in order for a passenger to gain access to the benefits that such a scheme may provide. If looked at from a contractual viewpoint there is, in entering into such a scheme, an offer, agreement, consideration and an intention to create legal relations. The pages of conditions on the applicant’s website (as well as the websites of other airlines) support this view. Lest there be any doubt, I accept that the provision of frequent flyer services to passengers is a service provided by airlines to their customers. Further, the provision of such services are explicitly accepted as services in a search of the Australian classification of goods and services and, to judge by the applications for protection under the Madrid Agreement, by the International Bureau as well.
An Office Classification Determination has placed “customer loyalty programmes (sales promotions through -)(for others)”[stress added] in Class 35. However, as Mr Willis observed in his evidence, United States trade mark registration 2220035 VOYAGER claims services in class 39 with the “odd” description “transportation services, namely, airline passenger services in the nature of a frequent flyer program.” This could be anomalous. After some research of the classification of services, it transpires that the correct approach to the classification of such services is that frequent flyer/customer loyalty services are classified according to the service provided by the frequent flyer/customer loyalty scheme, with the administration or management of these schemes falling in Class 35.
Thus, the following entries occur in a search of the Australian classification scheme:
Class 35
Organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes
Organisation and management of customer loyalty programmes
Organisation and management of customer loyalty programmes whereby customers obtain a discount on their utilities bills (gas, water, electricity, telecommunications) by obtaining these services
Organisation and management of discount card loyalty schemes
Organisation, operation and supervision of customer loyalty schemes
Sales promotion through customer loyalty programmes (for others)
Sales promotions through customer loyalty programmes (for others)
Class 36
Issuing of tokens of value in relation to customer loyalty schemes
Issuing of vouchers or tokens of value in relation to the supply of benefits for customer loyalty and frequent buyer schemes
Class 39
Provision of travel services from customer loyalty and frequent buyer schemes
Transportation services provided in relation to a customer loyalty or frequent buyer scheme
Travel booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme
Class 41
Entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme
Provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes
Class 43
Provision of restaurant booking or reservations from customer loyalty and frequent buyer schemes
Restaurant booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme
Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme
Accordingly, the provision of frequent flyer services by an airline to its customers is a service occurring in Class 39. Therefore the opponent’s United States registration is not an anomaly.
I will interpose the observation that the fact that the computer and personnel which administer the opponent’s frequent flyer program might not be located within Australia is not determinative of whether the services are provided in Australia: Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; (1994) AIPC 91-049; (1994) 120 ALR 495. The services are offered by the opponent under the VOYAGER trade mark to Australians within Australia and the services are booked by or provided to Australians within Australia who join the scheme as Australian members.
In finding that the opponent has used its trade mark, sufficient to defeat the application for partial removal of the trade mark VOYAGER from the register, I initially observe that the opponent has, of course, used its registration of the trade mark VOYAGER in relation to its Class 35 services because, as a member of Star Alliance, it has administered and allocated frequent flyer points on behalf of other members of Star Alliance.
I also find that the opponent has used its trade mark VOYAGER in relation to the provision of its frequent flyer program as a subset of the overarching expression “transportation services” within Class 39 as that is where such services occur in the classification of services. This finding is consistent with the United States registration in which frequent flyer services are treated as a subset of transportation services.
Further, I agree with Mr Stevens that the trade mark VOYAGER has been used by the opponent in relation to, inter alia, airline transportation services in the broad for the following reason. There were, according to Mr Krishna’s evidence, in the relevant period, 717 people (year 2006) rising to 1602 people (year 2008) who were members of the VOYAGER scheme. In 2005, the year before the relevant period, there were 558 members of the scheme. It is, in my consideration, quite unrealistic to imagine that none of the people who were members of the scheme availed, or intended at some time to avail, themselves of the opponent’s ‘free’, or reduced price, airline tickets for airline transportation from Australia during the relevant period (which was offered under the VOYAGER trade mark) when that was the core object of the scheme. In other words, the trade mark VOYAGER functioned during the relevant period so as to indicate a connection in the course of trade between the owner of the trade mark and the transportation services it offered or provided to qualifying members of its frequent flyer program. These transportation services include transportation by airline, transportation of baggage, and (according to the evidence of Mr Krishna) the provision of chauffeur services.
I thus find that the opponent has used its VOYAGER trade mark in Class 39 in relation to its frequent flyer service and has also used it in relation to transportation by airline, transportation of baggage, and the provision of chauffeur services. The applicant for removal did not seek, or argue for, a partial removal in Class 39.
Accordingly, the opponent has successfully opposed the application for partial removal of the registration.
Section 44
In terms of section 44, relevantly quoted above, the registration 644176 VOYAGER on which the opponent relies has an earlier priority date than the application.
Mr Stevens put the other issues to be considered in relation to section 44 in the following way - whether:
The respective trade marks are substantially identical or deceptively similar; and
The applicant’s services are the same or similar to the opponent’s services as registered.
The term ‘similar services’ embraces ‘services of the same description’: section 14, above.
In Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 39 French J stated that “The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.” I will therefore first consider whether the services of the parties are similar services.
In Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616, the Court referred to the expression ‘similar services’ and said that:
[…] the expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, “The Trade Marks Amendment Act 1978” (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (“TM Act 1955 “), although the expression “services of the same description as [services in respect of which the trade mark is registered]” was used in the earlier legislation: see TM Act 1955 , ss 33(2), 36(1A). The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at 606 the High Court said this:
There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek’s Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...’. “
Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128:
In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase `goods of the same description’ ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.”
We accept that these principles, subject to any necessary modification, apply in relation to services.
Mr Stevens, for the opponent, pressed its view that the trade marks involved (VOYAGER and VOYAGER CLUB) are substantially identical or (failing that) are deceptively similar and that the services at issue are similar services. Mrs Champion argued, for the applicant, that the trade marks are neither substantially identical nor deceptively similar (but not very loudly as to the latter) and she vigorously contested the opponent’s view that the services “travel agency services” and “transportation services” are similar. In this latter view, Mrs Champion took some solace in the decision of Mr Nancarrow, the Registrar’s delegate, that these services are not similar.
I should be slow to depart from Mr Nancarrow’s decision. However, it is apparent that I should do so in terms of the evidence which is before me which shows more detail of the marketplace and how it has changed in the period of time following his decision.
The issue of whether the services of the parties are of the same description is resolvable by positing one simple question: How do people come to use the opponent’s service of transporting them by aircraft from Australia and back again? The answer is, of course, that the applicant sells them tickets to do so as a part of its transportation service. This act of selling tickets in this manner is not a discrete ‘service’ in terms of the Act as it is not performed on behalf of another person; it is merely a necessary component of airlines getting people onto their aircraft as a part of a transportation service. The booking of airline tickets from the airline involved has, however, the appearance and flavour of being a travel agency service in terms of the Act.
Further, an inspection of the websites of the opponent, Virgin Blue, QANTAS, Rex and easyJet, for example, shows that as well as selling tickets for travel on their own aircraft, airlines sell through their websites bookings for car rental, holidays and hotels.
As a part of her argument that travel agency services are specialised services and unlikely to be confused with transportation services, Mrs Champion submitted:
Travel agency services are provided in Australia by travel agents. In NSW their activities are governed by the Travel Agents Act 1986 (NSW). The NSW Act requires travel agents to be licensed: section 6. That Act defines the business of a travel agent in the following terms:
4 Business as travel agent
(1) For the purposes of this Act but subject to this section, a person carries on business as a travel agent if the person carries on a business (whether or not in the course of or as incidental to, or in connection with, any other business) of
(a) selling tickets entitling another person to travel, or otherwise arranging for another person a right of passage, on a conveyance other than a prescribed conveyance,
(b) selling to, or arranging or making available for, another person rights of passage to, and hotel or other accommodation at, one or more places:
(i) which are within or outside New South Wales, or
(ii) some of which are within, and others of which are outside, New South Wales,
(c) purchasing for resale the right of passage on a conveyance other than a prescribed conveyance, or
(d) carrying on an activity prescribed for the purposes of this paragraph,
or if the person holds out or advertises that the person is willing to carry on any activity referred to in paragraph (a), (b), (c) or (d).”
Mrs Champion also referred to the Victorian Travel Agents Act 1986 (Vic) which regulates who must be licensed to carry on business as a travel agent in Victoria. That Act defines a travel agent as any individual or company that:
i. Sells, resells, or offers to sell travel tickets
ii. Makes or offers to make travel arrangements
iii. Advertises any of those things
However, the above leads me to conclude that an airline might not be found to be providing travel agency services under the Trade Marks Act 1995 when selling tickets for travel on its own aircraft because it is not providing a service on behalf of another. However, in terms of the Travel Agents Act 1986 (NSW) and Victorian Travel Agents Act 1986 (Vic) the airline necessarily will be providing a travel agency service.
As I have observed, these sales of tickets to travel from the websites of airlines occur alongside provision for the bookings of hotels, hire-cars, and packaged holidays. The distinction that the ticket sales for travel on its own aircraft are not a service in terms of the Act but are an integral part of a transportation service, whereas the bookings of holidays, hire-cars and hotels are a service in terms of the Act is one which I am certain will be lost on the general public. The services are quite intermingled as a person might book a flight, hotel and hire-car on an airline’s website at the same time in exactly the same way as that person might otherwise book the identical services on a travel agent’s website.
The services are, in terms of the classical analysis, offered by the same person, through the same trade channel, to the same customer and for the same purpose. I thus conclude that transportation services and travel agency services are services of the same description
In regard to the decision made by Mr Nancarrow, the Registrar’s delegate, that the services in suit are not of the same description, it must be again stressed that I have the benefit of evidence from two parties and substantial argument from very experienced advocates on related issues and the marketplace is one which has undergone a swift evolution over the last few years.
I turn now to the question of whether the trade marks of the parties are substantially identical.
Substantial identity is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414:
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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….
Concerning substantial identity, Mr Stevens submitted:
It is submitted that these trade marks are substantially identical. In the context of the services, the word CLUB is wholly descriptive and/or non-distinctive. The following cases, inter alia, support the line of argument that substantial identity exists where the additional word lacks any significant level of distinctiveness:
➢ MICROCOM and MICROCOM NETWORKING PROTOCOL (Microcom Systems Inc v Microcom Pty Ltd [1998] ATMO 2)
➢ IMAX and IMAX SPORTS
(Imax Corporation v Vago Imports Pty Ltd [2002] ATMO 80)
➢ CHOC CHILL and CHILL
(PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602)
➢ LEUK and LEUK BEAR
(Challenge Cancer Support Network Inc v Leukaemia foundation of Queensland [2002] ATMO 29
The essential feature of the trade marks in question is the word VOYAGER. It is one which is fully adapted to distinguish the parties’ services – it is, at most, allusive as to the nature of the services of the parties – as a synonym of the word ‘traveler’. However, the words are not properly interchangeable as to speak of oneself as a ‘voyager to London’ would be unusual in modern English.
Mrs Champion argued that the word CLUB has no facility in relation to the applicant’s services.
I think that the latter argument tends to slip past the facts that the word CLUB is present in the applicant’s trade mark and that frequent flyer schemes such as those of the opponent are presented to the public as being in the nature of a club – the environs of the frequent flyer lounges, for example, are ‘clubby’ and one must be a member to enter and enjoy the benefits. Some guidance can also be gleaned from the trade marks register: 440832(39) RED CARPET CLUB is registered by United Airlines Inc; 472499(39) CLUB-WORLD is registered by British Airways Plc; 519306(39) and 721813 (39) ADMIRAL’S CLUB are registered by American Airlines, Inc; 549729(39) CLUB ANA is registered by All Nippon Co Ltd; 590659(39) EXECUTIVE CLUB is registered by British Airways Plc; 905588(39) TABUA CLUB is registered by Air Pacific Limited; 918446(39) MILE HIGH CLUB is registered by Virgin Blue Airlines Pty Limited; 925602(39) KORU CLUB is registered by Air New Zealand Limited; 933606(39) and 933607(39) CLUB ZOOMIN’ are registered by Freedom Air Limited; 1174404(39) CLUB 2000 is registered by societe Air France; and 1217288(39) PPS Club is registered in the name of Singapore Airlines Limited. Each of the foregoing is registered for frequent flyer or air transportation related services to passengers.
I also observe (although this is in no way determinative) that Mr Krishna states in Krishna 2:
[The opponent] provides lounge and catering services in Australia for all GOLD and PLATINUM Voyager Club members and also for all Business Class and First Class members at Qantas lounges in Sydney, Brisbane, Melbourne and Perth. These facilities apply not only to Australian-based VOYAGER CLUB members but extend to all and any VOYAGER CLUB members travelling in Australia.
In the above and subsequent passages Mr Krishna uses the expression ‘Voyager Club’ in relation to the opponent’s frequent flyer program. However, that is not the trade mark of the opponent; it is the trade mark of the applicant and the apparently accidental misuse of the expression seemingly escaped the attention of the drafter of the declaration, Mr Krishna and two experienced advocates. It also escaped my attention until I came to write these reasons.
I thus consider that the trade marks VOYAGER and VOYAGER CLUB are substantially identical.
Least I be wrong in the above, I turn to the issue of whether the trade marks are deceptively similar.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.
The standard which is applied to the test is that specified in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50 by French J who said:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
It is inevitable, I consider, that the trade marks VOYAGER and VOYAGER CLUB will be confused with each other in relation to the services encompassed by the scope of the specifications of the application and the registration. The term ‘CLUB’ is one frequently used by service providers to hold out an air of exclusivity to their customers and is one which is in fact often used this way by airlines in relation to their frequent flyer programs and other operations. A further example, which does not appear in the list of examples I have given above, is the well-known QANTAS CLUB.
I find that the trade marks are, if not substantially identical, in any event deceptively similar.
The opponent has established that:
its registration has an earlier priority date;
its registration covers services which are of the same description as those covers by application 1215724; and,
its registered trade mark is substantially identical with (or deceptively similar to) the opposed trade mark.
Accordingly, the opponent has established its opposition to registration of the application in terms of section 44 of the Act.
Decision
Section 55 of the Act relevantly provides:
Decision
55. 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.
I refuse to register application 1215724.
Costs
The opponent is entitled to its appropriately apportioned costs in relation to these proceedings which I award at the official scale against the applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
06 April 2011
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