Southern Training Employment & Placement Solutions Inc v Steps Disability Qld Inc
[2009] ATMO 67
•28 August 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Southern Training Employment & Placement Solutions Inc to registration of trade mark application 1116532 (35, 41) - STEPS - filed in the name of STEPS Disability QLD Inc.
Delegate:
Claudia Murray
Representation:
Opponent: Edward Heerey of Counsel, instructed by Dobson, Mitchell & Allport, Lawyers.
Applicant: Ben Fitzpatrick of Counsel, instructed by Actuate IP, Patent and Trade Mark Attorneys and Lawyers.
Decision:
2009 ATMO 67
Section 52 opposition: sections 44. 58A and 60 – opponent unsuccessful - applicant’s prior use established - registration proceeding under subsection 44(4) - costs awarded against opponent.
Background
STEPS Disability QLD Inc (‘the applicant’) filed trade mark application number 1116532 on 31 May 2006, for the plain word trade mark:
STEPS
1. The application was filed in classes 35 and 41 of the International (Nice) Classification of Goods and Services in respect of:
Class: 35 Employment agency and recruitment services including those for people with a disability including career advice, case management, identification and assessment of skills, abilities and goals, clarifying job and skill requirements with employers, screening of job applicants through personal interviews, checking references, conducting interviews on behalf of employers, vocational and work capacity assessment, resume writing assistance, advertising, finding work experience opportunities
Class: 41 Provision of education and training services for people with a disability, for employers and for industry including in the fields of adult literacy and numeracy, job searching, job skills, self esteem, driving, management skills and requirements for workplace environments2. Grounds for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. Five prior registrations were cited, including trade mark number 1001596, owned by the Southern Training Employment & Placement Solutions Inc (‘the opponent’). The applicant provided evidence of prior use of its trade mark, which facilitated its acceptance subject to the endorsement: ‘Provisions of paragraph 44(4) applied’. The trade mark was advertised accepted for possible registration in the Australian Official Journal of Trade Marks on 8 March 2007.
3. On 30 May 2007, the opponent filed notice of opposition to registration of the trade mark. Three grounds of opposition were listed in the notice, including a ground under section 44, citing the opponent’s trade mark registration number 1001596, referred to above. The priority date of that registration is 10 May 2004. It covers ‘Employment agency services including recruitment and placement of temporary and permanent staff’ in class 35, and ‘Vocational training’ in class 41. The trade mark is:
4. Evidence in support, answer and reply was duly served and filed. Then followed an exchange of further evidence between the parties, initiated by the applicant, after which, at the parties’ request, the opposition was finally set down for hearing. I heard the matter, as a delegate of the Registrar of Trade Marks, in Melbourne on 27 May 2009. Mr Ben Fitzpatrick of Counsel, instructed by Mr Colin Cheung and Mr Daniel Lo of Actuate IP, patent and trade mark attorneys, lawyers, of Melbourne, represented the applicant. Mr Edward Heerey of Counsel, instructed by Dobson Mitchell & Allport, lawyers, of Hobart, represented the opponent.
Evidence
5. The evidence in relation to this opposition comprises:
Evidence in Support
ØStatutory declaration of Paul Abbott, with Exhibits 1 to 37, dated 20 August 2007.
Evidence in Answer
ØStatutory declaration of Garry Hooper, with Exhibits GH-1 to GH-37, dated 17 March 2008.
Evidence in Reply
ØStatutory declaration of George Giuliani dated 9 June 2008.
ØStatutory declaration of Karyn Grueber dated 17 June 2008.
ØStatutory declaration of Paul Abbott dated 18 June 2008.
ØStatutory declaration of Kenneth Norman Langston, with Exhibits KL-1 to KL-9, dated 18 June 2008.
Further Evidence (applicant)
ØStatutory declaration of Garry Hooper, with Exhibits GH-1 to GH-9, dated 23 October 2008.
Further Evidence in Reply (opponent)
ØStatutory declaration of Paul Abbott, with Exhibits PA-1 to PA-11, dated 19 November 2008.
6. The earliest declarations of Mr Abbott and Mr Hooper shed some light on the history of their respective agencies. The evidence shows, and it is recognised by both parties, that each of their organisations has a long history in the state in which it was founded. Matters in dispute centre around the extent to which the services of the respective organisations have been provided elsewhere in Australia, especially as at the date of registration, 10 May 2004, of the opponent’s trade mark.
7. Mr Hooper is the applicant’s Chief Executive Officer. He explained that:
The original motivation behind what is now STEPS Disability Qld Inc, came about in 1989 as a result of a group of concerned parents who wanted to enhance employment options for their children and other young people with an intellectual disability living on the Sunshine Coast. This group incorporated as an association and at this point applied for and received government funding to establish a supported employment agency.
Due to ease of reference and recognition, the applicant became recognised as, and referred to as, “STEPS” rather than the original displayed trading name of “Sunshine Coast Supported Employment Programme Inc (STEPS)”. STEPS was also an acronym for the “Supported Training Employment Placement Services” provided by the applicant…
Given the increasing and more commonplace reference to the Applicant as “Steps” alone rather than the original trading name, the Applicant altered its trading name to “STEPS Employment” officially in October 1990, although it has been using this name since at least March 1990…
The Applicant has continuously used the STEPS name since approximately March 1990 in relation to a range of employment and training services targeted towards people with a disability…
Since 1990 the Applicant has progressively and consistently developed into an established employment and [training] organization with the principal aim of assisting people with a disability to become active and contributing members of the community.
Since 1990, the Applicant has expanded its physical presence in Australia from the Sunshine Coast to now operating offices in the following regions:
1) Sunshine Coast Region - Forest Glen, Caloundra, Nambour, and Maroochydore;
2) Wide Bay Fraser Coast Region - Bundaberg; Hervey Bay and Maryborough;
3) North Queensland Region - Ayr, Bowen, Collinsville, Townsville; and
4) Northern Territory - Alice Springs.[1]
[1] Statutory declaration of Garry Hooper, dated 17 March 2008, paras 10-20.
8. Mr Abbott is Manager, Communications and Compliance to the opponent. He was involved in the adoption of the opponent’s STEPS device trade mark, subject of the opponent’s trade mark number 1001596, pictured earlier in this decision. He declares:
I have been employed as a manager by Southern Training and Employment & Placement Solutions Inc ("STEPS") since March 1999. STEPS' principal business is providing employment services and vocational training with the employment services being support services for the. registered unemployed. The business is principally conducted from Level 12, 39 Murray Street, Hobart…
STEPS started using the Trade Mark inclusive of the device in April 1999 [trade mark number 1001596] when a branch of the business was opened in Kingston, in Tasmania on 22 April 1999. At that time a logo, with the letters "STEPS" in blocks was used in the shop front window of the Kingston office. The Kingston office at that time was called "Southern Tasmanian Employment and Placement Solutions" in order to differentiate it from the organisation's main trading name which was Huon Skills Training. The Trade Mark was chosen as it is an anagram of our name and it reflected the objective of helping unemployed people step by step into employment.
The Trade Mark has been used continuously and extensively in Tasmania since April 1999 with STEPS' employment and training services…
In December 1999 STEPS' name was formally changed from "Southern Tasmanian Employment and Placement Solutions" to "Southern Training Employment and Placement Solutions Inc". At that time the shopfront signage at Kingston was changed to include the words "Training Employment and Placement Solutions Inc"…
I and the STEPS Management became aware around April 2006 of STEPS Disability Qld Inc's use of a STEPS device, which at that time was the subject of the pending trade mark application 1037978, when STEPS Disability Qld Inc's courses were advertised as being held in Tasmania in June 2006. These courses were withdrawn following our letter of demand to STEPS Disability Qld Inc dated 29 May 2006.[2]
[2] Statutory declaration of Paul Abbott, dated 20 August 2007, paras 1-10.
Grounds of opposition
9. Just prior to the hearing, Mr Heerey advised that the opponent would be pursuing all three grounds of opposition, under sections 44, 58A and 60, which were raised in the notice of opposition.
Section 44 - Identical etc. trade marks
10. Subsection 44(2), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person’s trade mark application or registration that has an earlier priority date, and covers services that are similar to the applicant’s services. The definition of ‘deceptively similar’ in section 10 is that ‘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’. Section 14 defines ‘similar services’ as services which are ‘the same’, or ‘of the same description’.
11. Subsections 44(3) and (4) provide the following important exceptions to subsections 44(1) and (2):
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Submissions
12. It will be remembered that section 44 was initially raised as a ground of rejection during examination of the applicant’s trade mark. The application was accepted for possible registration in the face of the opponent’s STEPS word and device trade mark, on the basis of evidence of prior use of the trade mark provided by the applicant. Although Mr Heerey came to the hearing prepared to argue as necessary the deceptive similarity of the trade marks at issue, and the similarity of their respective services, these points, unsurprisingly, were not contested by the applicant. The plain, understandable, but perhaps regrettable, facts of the matter are that the applicant and the opponent, in the course of operating their long standing, and apparently successful and well regarded enterprises at opposite ends of Australia, have quite independently lighted upon deceptively similar trade marks to identify their similar services.
13. Having established the common ground between the parties, Mr Heerey turned his attention to the question of whether the applicant’s evidence was sufficient for registration under either of the exception provisions of section 44, honest concurrent use (subsection 44(3)) or prior use (subsection 44(4)). He indicated, (somewhat to the surprise of Mr Fitzpatrick), that the opponent did not dispute the applicant’s claim that it had been continuously using its trade mark from a date prior to the filing date of the opponent’s trade mark registration. What it took issue with, however, was the suggestion that any of this use had occurred outside of Queensland.
14. In terms of honest concurrent use, Mr Heerey noted that, while the applicant first adopted and used the STEPS trade mark in Queensland without knowledge of the opponent (which did not come into existence until nine years later), it did seek nationwide registration of the trade mark at a time when it had been placed on notice of the existence of the opponent, and its registration, most notably by way of the letter of demand described in Mr Abbott’s first declaration, quoted above. Then Mr Heerey went on to observe that it is quite common for subsection 44(3) to be applied so that the registration of a trade mark is limited to the geographical area in which honest concurrent use by the applicant has been established. Subsection 44(3) specifically refers to the Registrar’s ability to accept an application for registration ‘subject to any conditions or limitations that the Registrar sees fit to impose’. In this case, Mr Heerey said, the appropriate application of subsection 44(3) would be to limit registration of the applicant’s trade mark to Queensland. This would accord with the decision in terms of section 44 made in similar circumstances by Kenny J in McCormick v McCormick.[3]
[3] (2000) 51 IPR 102 at para 57.
15. On the matter of the acceptance for registration of the application under the prior use exception provided by subsection 44(4), Mr Heerey submitted:
As noted by the learned authors of Shanahan[4] in the context of prior continuous use under s 44(4) the following authority of Fitton’s Application[5] may be applicable where a person (such as the Applicant) may be the first user of a mark but another person (such as the Opponent) secures first registration of the mark:
“… in certain circumstances, for example, where the simultaneous use of both marks must inevitably result in extensive deception of the public, the court or the Registrar might take the view that the registration of both marks could not possibly be justified under section 2(2); in that event, if the trader second in date have actually secured registration first, the trader first in date would not be able to secure registration until he had first obtained a cancellation of the impeding registration.”
As the learned authors of Shanahan[6] note, s 44(4) TMA does not specifically give the Registrar power to impose conditions or limitations as s 44(3) does, but the Registrar’s powers under sections 33(2) and 55(b) allow for the imposition of conditions or limitations on the registration of trade marks, including those to which s 44(4) has been applied.
[4] 4th Edition page 333 [40.3005].
[5] (1949) 66 RPC 110 at 115-116.
[6] 4th Edition at p335 [40.3010].
16. Mr Heerey discussed cases where delegates of the Registrar have applied limitations under subsection 44(4), notwithstanding the lack of any explicit provision for such limitations in the subsection itself.[7] He concluded:
In the present case, the relevant point in time is the filing date of the Opponent’s Registration, 10 May 2004. Given that the Applicant has only established use of its trade mark in Queensland prior to that date, the appropriate application of s 44(4) would be to exercise the delegate’s discretion conferred by the word “may” by limiting registration to that State.
[7] Newport Electronics Inc v Newport Scientific Pty Lt (2000) 50 IPR 81 at 91-92, Rocket Trademarks Pty Ltd v Cunliffe Management Pty Ltd [2004] ATMO 29 at [12], Active Concepts Pty Ltd v True North Consulting Pty Ltd (2003) 58 IPR 573 at 580.
17. In response, Mr Fitpatrick quoted Campomar Sociedad, Limitada v Nike International Limited,[8] where the High Court considered the extent to which the 1955 Act balanced the interests of the consumers, the commercial interests of registered trade mark proprietors and traders who have common law rights the subject of equitable remedies. The High Court noted that:
Traders between whom a business is divided, or who unknowingly, perhaps in different geographical areas, have developed the same or similar marks in their businesses, will have an interest in the concurrent use of the marks. Should the legislation weigh against the possibility of deception in the minds of the public, the commercial claims acquired by such concurrent user? In addition, irrespective of prior or honest concurrent use, the state of the Register might be such that identical or substantially identical or deceptively similar marks for goods of the same description are registered in the name of different proprietors. May one of these sue the other for infringement and, if so, which one, or is an infringement to be denied to both?...
Provisions respecting honest concurrent use, whereby identical or nearly identical trade marks for the same goods or description of goods might be registered by more than one proprietor, subject to possible imposition of conditions, had first been made in Australia by s 28 of the 1905 Act. Of the concurrent use provision in s 34 of the 1955 Act, Bowen CJ observed in Riv-Oland[9]:
No doubt this provision had its origin in the situation that traders in different parts of the country might be circulating goods within their particular region under marks which were similar and doing so quite honestly. In such circumstances expansion of the respective markets might tend to bring the likelihood of deception or confusion. Notwithstanding this the policy of the legislation was to enable honest concurrent users to register their marks.[10]
[8] (2000) 46 IPR 481 at [24]-[40]
[9] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 573
[10] Campomar Sociedad, Limitada v Nike International Limited, op cit, at [47]-[52].
18. Mr Fitzpatrick concluded:
The Court (at [61]) also quoted with approval Deane J’s comments in Murray Goulburn[11] that considerations of policy in favour of construing the 1955 Trade Marks Act by reference to the avoidance of consumer confusion must be modified by the fact that there are alternative, and superior, statutory and common law rights that traders can rely on. In particular, the rights provided by the Trade Marks Act do not allow the owner to engage in conduct that would contravene the Trade Practices Act, or constitute the tort of passing off. See [67].
[11] New South Wales Dairy Corp v Murray Goulburn Co-op Co Ltd [1990] HCA 60; (1990) 171 CLR 363 at 396-397.
19. These comments related to the discussion around the applicant’s honest concurrent use of its trade mark. While Mr Fitzpatrick argued that the applicant would indeed be entitled to registration under the subsection 44(3) exception of honest concurrent use, he pressed the applicant’s claim of prior use, which was previously recognised when the trade mark was accepted for possible registration. In terms of that provision, he argued that to read subsection 44(4) as allowing the limitation of an application’s statutory rights to a single state of Australia was to place an impermissible ‘gloss’ on the provision. He said there was no qualifier to the fundamental trade mark tenet that a first user under common law was entitled to be the owner of the trade mark, along the lines of ‘but only where first user occurred’.[12]
[12] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 (28 November 1974).
Discussion
20. The question of how the honest concurrent user, other circumstances and prior use exceptions to section 44 should be most appropriately applied in a case such as this is not an easy one. Clearly the wording of the two subsections is very different. Subsection 44(3) is couched in terms of circumstances under which the Registrar ‘may accept’ an application for registration, subject to any conditions or limitations he or she may think fit to impose. By contrast, the prior use provision, subsection 44(4), concludes that, if the Registrar is satisfied that its provisions are complied with, then he or she ‘may not reject’ the application because of the existence of the earlier filed trade mark. Unlike its co-provision, subsection 44(4) does not explicitly contemplate the imposition of conditions or limitations upon an application. However, as Shanahan points out, the Registrar also has such powers under subsections 33(2) and 55(b). These have been applied in the past to subsection 44(4) cases by delegates of the Registrar, seeking to limit the likely extent of deception and confusion of the public resulting from simultaneously registered trade marks.
21. It is interesting that the kind of limitations that delegates of the Registrar have previously focused upon under these circumstances seem generally to have related to the goods or services of the opposed application. This is despite the fact that the Act clearly contemplates a connection between prior use of a trade mark and possible geographical limitation. For example, dealing with protection for traders from infringement proceedings, section 124 provides that a person does not infringe a registered trade mark by using an unregistered, but first and continuously used, trade mark that is substantially identical with, or deceptively similar to, the registered trade mark in relation to similar services. However, subsection 124(2) adds the important qualification that ‘if the unregistered trade mark has continuously been used only in a particular area of Australia, [the infringement protection] applies only to the use of the trade mark by the person in that area.’
22. Notwithstanding the geographical references quoted above, I believe that a preference by delegates of the Registrar for limitation of goods or services over the imposition of geographical boundaries to the scope of even a registration in respect of services is entirely understandable. The global nature of modern communications, and especially the internet, has infinitely increased the ability of even the most geographically remote Australian communities to still keep well informed of the ebb and flow of commerce throughout the whole of this continent and, of course, the world. In Active Concepts Pty Ltd v True North Consulting, hearing officer Deirdre O’Brien commented:
At the hearing and in written representations, the opponent has argued that, as the applicant has only supplied its Internet access services to subscribers within the ACT and the surrounding region, the Registrar should limit its registration to that geographical area. Subsection 55(b) does give the Registrar the authority to register a trade mark subject to conditions and limitations. However I am satisfied the applicant is the owner of the trade mark with respect to Internet access services. I do not think it is fair and reasonable to expect it to confine its registration to the small geographical area in which it currently has subscribers. A geographical limitation may adversely affect its ability to defend its trade mark against unauthorised use by other traders. Moreover I am not satisfied that such a restriction is practicable. The applicant is offering its services on the Internet. By that means it is using its trade mark Australia wide even though its target market at present is confined to a particular area.[13]
[13] [2003] ATMO 16 (10 March 2003), pages 7-8.
23. Similarly, in this case I am satisfied that the applicant has clearly demonstrated its first use, and therefore ownership of the trade mark STEPS, in relation to the services specified in the application. I have briefly considered the possibility of restricting the services to those specifically targeted towards ‘people with a disability’, who are clearly still the applicant’s primary focus, although Mr Heerey did not suggest this. I have concluded that such a restriction would be meaningless in this instance, given the very close similarity (to the point of identity, in most aspects) between such services provided for people with or without disabilities. Regarding the question of a geographical limitation, I decline to proceed along this path, as it appears to me to be fraught with impracticality. Instead, I do not disturb the examiner’s original decision to apply the provisions of subsection 44(4) to this trade mark application as it currently stands. I note that the opponent’s trade mark was itself registered under those same provisions. The Act has provided a means for concurrent recognition of what may be, in fact, a somewhat crowded field of equally valid but competing common law and statutory rights in the STEPS name. As the High Court observed in Campomar, the onus then falls upon the respective trade mark owners to be proactive in avoiding contravention of the Trade Practices Act, or the tort of passing off.
24. The opponent has not succeeded in its ground of opposition under section 44.
Section 58A - Opponent’s earlier use of similar trade mark
25. Section 58A provides:
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
26. This section is a relatively new ground of opposition, which was introduced into the Act by Item 29 of Schedule 1 to the Trade Marks Amendment Act 2006. The ground came into effect at the commencement date of the legislation, on 23 October 2006. The application provision (Item 30 of Schedule 1) provides that the new ground applies to:
(a) applications for registration of trade marks made after the commencement of [the provision]; and
(b) applications for registration of trade marks pending but not accepted at that commencement.
27. Although the application at issue was filed before commencement of the provision, it was ‘pending but not accepted’ at that time, and so is caught by paragraph (b) of the provision.
Submissions
28. Mr Heerey’s arguments for the opponent under section 58A went as follows:
The Applicant submits that the same discretionary considerations set out above in respect of s 44(4) must logically apply also to s 58A. It follows that the delegate has the discretion to impose geographical limitations to the application of s 58A.
The Opponent has demonstrated nation-wide use of its trade mark by the filing of the Opponent’s Registration on 10 May 2004. The Applicant’s use of STEPS prior to that date was limited to Queensland. It follows that the Opponent has established that it first used its trade mark in every State and Territory apart from Queensland. As such, the ground of opposition under s 58A ought to succeed so as to restrict any registration of the Opposed Mark to Queensland.
29. That is to say, for every state except Queensland, where it recognised the applicant’s common law claim, the opponent was claiming a prior use of its deceptively similar trade mark, based upon the statutory rights conferred by its prior registration. In response, Mr Fitzpatrick argued that the circumstances of section 58A were parallel to those of section 58, and that the opponent’s case must fail, as its evidence did not establish use of its trade mark prior to the applicant’s date of first use, nor did it rebut the applicant’s date of first use.
Discussion
30. Mr Heerey’s submissions in relation to this new and generally untested ground of opposition were interesting, casting a potentially different spin on how it might be interpreted. However, I cannot accept his basic premise. A similar argument, but in relation to section 58 rather than 58A, was put to me in Ford Motor Company v Hino Motor Sales Australia Pty Limited[14]. There, I observed:
In The Shell Company of Australia Ltd v Rohm and Haas Company and Anor (1948-1949) 78 CLR 601, Dixon J said, at page 627:
The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. (Emphasis added.)
Ford did not strictly apply for the registration in the first instance - trade mark no. 760175 was unusually created as a result of a partial assignment to Ford of a much older registration. In any event, as Elkington, Hall and Kell, [Trade Mark Law in Australia, 2000], say of ownership disputes, at page 77:
The battle therefore is between the party who was first to file and an opponent who claims to have been first to use. In such cases the first user prevails. But this ground of opposition is tightly confined. The use must have been commercial use, as a trade mark, of the very mark applied for or one extremely close to it, and for the goods or services of application or "the same type of thing". (Emphasis added.)
In the present case, Ford is arguing ownership in terms of section 58 on the basis that that it is both "first to file" and "first to use". However, for the purposes of this section, Ford's second claim cancels out its first. Once use is demonstrated, a trade mark no longer falls into the category described by Dixon J as "so far unused". The nature and extent of its first use of the RANGER trade mark therefore determines Ford's rights of ownership under this ground of opposition.
[14] [2002] ATMO 75 (30 August 2002).
31. The new ground of opposition under section 58A was intended by the drafters to complement the ground available to common law owners under section 58. It attempts to address an apparent anomaly which previously existed within the opposition framework. This allowed a party to achieve acceptance of their deceptively similar trade mark in the face of an earlier trade mark, based on prior use, which then became immune to an opponent’s claim to ownership in terms of section 58, because it did not fall into that provision’s strict parameters of substantial identity which I have described above. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 puts it thus:
A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.
However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.
The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.
Item 29
This item creates a new ground of opposition in section 58A to enable the owner of a registered trade mark to oppose registration of a similar mark accepted under the prior use provisions of subsection 44(4). While other grounds may be relevant in a proceeding, the owner of the registered mark will need to establish that their use of the mark predates the use of the accepted application for an opposition to succeed under the new ground.
32. In their online commentary on the scope of section 58A, Shanahan’s authors say:
Section 58A was added to the Act in 2006. According to the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 which accompanied the amendment to the Act, s 58A was needed to enable the owner of a trade mark that is deceptively similar to another trade mark to oppose its registration on the basis of absolute first use.[15]
[15] [TMA 58A.10] Scope.
33. The opponent in this matter has already conceded that the absolute first user of the STEPS trade mark is the applicant. The ground of opposition under section 58A has not been made out.
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
34. I have referred above to the Trade Marks Amendment Act 2006 (‘The Amendment Act’), which introduced the new ground of opposition under section 58A. That legislation also affected the provisions of section 60, via Items 31 and 32. Regrettably, however, there was no similar application provision included for section 60, to that put in place for section 58A. The rationale for that application provision (which was also applied to a new ‘bad faith’ ground of opposition under section 62A) was to ensure that the new ground of opposition applied only to trade mark applications that were filed after commencement of the amending legislation, or, if they had already been filed, that they had not yet been accepted, and so had not been liable for opposition proceedings under the old grounds of opposition to have already commenced. Hearing Officer Debrett Lyons considered the issues surrounding the most appropriate application of the ‘new’ section 60, under these circumstances, in Apple Computer Inc. v Todaytech Group Pty Ltd, (the ‘Macron’ case).[16] At paragraphs 47 and 48 he found:
In matters under the Act, the ‘right’ spoken of must include the right or privilege of a trade mark applicant to have its application dealt with by the law as it stood at the time the trade mark application was filed. That is an accrued right. It must include the right to find the grounds of opposition to be as they were at the filing date, certainly not of wider ambit.
Therefore, I find that the repeal of section 60 did have the capacity to affect rights or privileges that the applicant had acquired and, but for a contrary intention in the Amendment Act, the impact of section 8(c) of the AIA is to preserve those rights and privileges.
[16] 2007 ATMO 40.
35. Having determined, at paragraph 61, that there was no such contrary intention in the Amendment Act, Mr Lyon’s conclusion was that the pre-amendment provisions of section 60 are properly applied to applications filed prior to the commencement of the amending legislation.
36. It follows from the conclusion in Macron that the pre-amendment version of section 60 applies to the opposed trade mark I am considering here. That version of section 60 reads:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
37. The comparison is between an existing substantially identical or deceptively similar trade mark that ‘had acquired a reputation in Australia’, and the opposed trade mark. The relevant date for assessing the reputation of the opponent’s mark is the filing date of the applicant’s trade mark, 31 May 2006. It is not a requirement of section 60 that the trade mark relied upon by an opponent is either an applied-for or registered trade mark, merely that it has acquired a reputation as at the priority date of the opposed trade mark.
Submissions
38. Mr Heerey began his submissions regarding section 60 by making the following observations:
S 60 was amended by the Trade Marks Amendment Act 2006 (Cth) with effect from the date of Royal Assent to that Act, which was 23 October 2006. While that Act specified that the amendments to ss 62, 58A and 61 would apply to applications filed but not yet accepted at the date of Royal Assent, it was silent as to whether the amendments to s 60 would also apply to applications which had been filed but had not yet been accepted at that date. It has been well established that where an application was filed and accepted before 23 October 2006, s 60 applies in the form as it stood before that amendment.[17]
It seems also that the practice of the Office is to apply s 60 in its unamended form to applications which were filed before 23 October 2006, regardless of whether or not they had been accepted by that date.[18] On that approach, the present opposition is governed by s 60 in the form it took prior to that amendment…
[17] Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478 ; Men's Gallery Australia Pty Ltd v Platinum 253 Pty Ltd (2008) 78 IPR 71.
[18] See eg Citigroup Inc v Lou Pozzebon [2009] ATMO 4 at [20]; Haoliang Sun & Golden Land Group Pty Ltd v Chinese Culture School Inc [2009] ATMO 12 at [93].
39. Mr Heerey then went on to argue that there could be no doubt the opponent’s evidence established it had a ‘sufficient’ reputation in Tasmania as at the relevant date to trigger section 60, and he pointed to the declaration of Mr Giuliani, as corroborated by the declarations of Mr Abbott and Mr Langston, as further establishing its sufficient reputation nationally. Mr Fitzpatrick responded that, even where some level of reputation was demonstrated by the opponent, the opponent had failed to demonstrate the existence of any real or tangible danger of deception and confusion arising through use of the trade mark by the applicant.
Discussion
40. I have briefly discussed the history behind the application of the Amendment Act to section 60 above. All of the subsequent Trade Marks Office decisions cited above by Mr Heerey follow the earlier Macron decision. The decision by Justice Jacobsen[19] referred to by Mr Heerey deals more specifically with how the amended provisions of section 60 are to be treated in the course of section 88 rectification proceedings.
[19] Health World Ltd v Shin-Sun Australia Pty Ltd, op cit.
41. In the event, the differences between the ‘old’ and ‘new’ provisions of section 60 have little practical relevance to the present opposition. What would have been avoided in the new section 60, had it applied in this case, is the old threshold test that the trade marks at issue must be, in the first instance, either substantially identical or deceptively similar. It is common ground, of course, that the trade marks of the parties are deceptively similar.
42. The courts have recognised that, for the purposes of section 60, an opponent's reputation can have accrued from a variety of sources. Kenny J, in McCormick & Co v Mary McCormick,[20] quoted with approval the following discussion, by Hearing Officer Iain Thompson, of how reputation can be developed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[21]
[20] Op cit, at para 85.
[21] See Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436.
43. The opponent has provided me with a range of information, which paints a persuasive picture of the not-insignificant reputation it has clearly established for itself in its home base of Tasmania. It is, however, a highly localised reputation, and in his submissions, Mr Heerey was unable to point to any convincing evidence to support his contention that I should find that reputation also extended into mainland Australia. Even, as Mr Fitzpatrick pointed out, the small number (three) instances of customer confusion over the identity of the parties reported in the opponent’s evidence, actually reflect the greater reputation of the applicant outside Tasmania, rather than the other way around.
44. I have considered whether this case warrants the application of a similar geographical restriction to this trade mark to that which I applied some time ago, in a case where the opponent’s reputation was localised in Western Australia. The registration subject of that opposition carries an endorsement indicating that it does not extend to the state of Western Australia.[22] However, the circumstances there were somewhat different, in that the opponent was providing monopoly water utility services in that state. Taking that into account, together with the reasoning already laid out in my discussion of the section 44 ground of opposition, I have decided not to proceed along any course involving geographical restriction of the applicant’s trade mark. The particular circumstances of this case have led me to the conclusion that it is appropriate to facilitate a full coexistence of the trade marks of both parties on the Register, as envisaged under section 23[23] and elsewhere in the Act. The opponent has not made out its ground of opposition under section 60.
[22] Water Corporation v Watercorp Pty Ltd [2003] ATMO 23 (22 April 2003).
[23]Section 23: Limitation on rights if similar trade marks etc. registered by different persons
If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first‑mentioned owner is authorised to do so under the registration of his or her trade mark.
Decision and Costs
45. Subsection 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
46. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[24] I find that the opponent has not met the onus upon it, in terms of any of its grounds of opposition. The trade mark, subject to its current endorsement in terms of subsection 44(4), may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
[24] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599.
47. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark opponent.
Claudia Murray
Hearing Officer
Trade Marks Hearings
28 August 2009
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