Square, Inc v J Plus S Pty Ltd

[2020] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Square, Inc to registration of trade mark application number 1858135 (class 35) – Tax Square – in the name of J Plus S Pty Ltd.

Delegate:	Katrina Brown
Representation:	Opponent: Kate McHaffie of AJ Park Applicant: Self-represented
Decision:	2020 ATMO 47 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 established – registration refused.

Background

1. This decision relates to an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) by Square, Inc (‘the Opponent’) to the registration of the following trade mark:

   Trade Mark No:       1858135

   Trade Mark:             Tax Square (‘the Trade Mark’)

   Applicant:                 J Plus S Pty Ltd (‘the Applicant’)

   Filing Date:               11 July 2017

   Services:Class 35 - Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax assessment (accounts) preparation; Tax consultancy (accountancy); Tax filing services; Tax planning (accountancy); Tax preparation; Tax return advisory (accountancy) services; Tax return preparation; Taxation (accountancy) advice; Taxation (accountancy) consultancy (‘the Applicant’s Services’)

2. The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 7 December 2017.

3. The Opponent filed a Notice of Intention to Oppose on 7 February 2018 followed by a Statement of Grounds and Particulars (‘SGP’) on 7 March 2018.

4. The Applicant filed a Notice of Intention to Defend on 4 May 2018.

5. The Opponent filed the following declaration as evidence in support:

   ·Declaration of Kirupa Pushparaj (Director of Intellectual Property at the Opponent) made on 12 August 2018 with Exhibits KP-1 to KP-41.

6. The Applicant filed the following declaration as evidence in answer:

   ·Declaration of Pardeep Kumar (Director of Applicant) made on 12 November 2018.

7. The Opponent did not file any evidence in reply.

8. The matter was heard by way of written submissions. The Applicant’s written submissions contain new material which is properly characterised as evidence. This material was not filed during the evidence periods, nor was a request made for the material to be considered under reg 21.19 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’). As such, I have not considered the new material in reaching my determination in this matter. Notwithstanding, the new material would not have altered the outcome of this matter. 

   Grounds of opposition and onus

9. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. In its written submissions, the Opponent withdrew the ground under s 42(b). Therefore, I proceed on the basis that the only grounds being pursued are s 44 and s 60.

10. The Opponent bears the onus of establishing at least one of the remaining nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

    [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133].

11. If the Opponent establishes one of the grounds of opposition in relation to all the Applicant’s Services, there is no requirement for me to consider the other ground of opposition.

12. The date at which the rights of the parties are to be determined is 11 July 2017 (‘the Relevant Date’) being both the filing and priority date of the Trade Mark.

    Section 44

13. Section 44 of the Act relevantly provides:

    (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)  the applicant’s trade mark 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.

14. To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods. 

15. The Opponent relies on the following trade marks (‘the Opponent’s Registrations’) as the basis for this ground of opposition:

Trade Mark No:	1478099	1617500
Trade Mark:	SQUARE (‘the Opponent’s Trade Mark’)
Registered Owner:	Square, Inc.
Priority Date:	2 March 2012
Specification:	Class 9 - hardware and software for making and processing payment transactions with credit cards, debit cards, gift cards, cash, and other payment forms; financial software and accessories for mobile devices, cash registers, and other point of sale systems; e-commerce software to allow users to perform electronic business transactions; hardware and software that provides analytic tools for payment processing, to create, manage and optimize customer relationships and loyalty programs, and for business optimization Class 38 - providing electronic transmission of credit card, debit card, and gift card transaction data and related information, merchant-customer communications, and advertising and promotional materials; providing electronic transmission of financial and business information between and among customers and businesses	Class 35 - Provision of analytic tools related to credit card, debit card, gift card, cash, and in kind payment processing and tracking; services for reconciling, namely processing payment transactions based on credit cards, debit cards, gift cards, and other forms of payment; facilitating the exchange of financial and business information between and among customers and businesses related to e-commerce transactions; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes Class 36 - electronic credit card transactions; services for making and processing payment transactions with credit cards, debit cards, gift cards, cash, and other forms of payments; financial services, namely the provision of analytical tools to facilitate payment processing; electronic debit transactions; electronic cash transactions; merchant services, namely, payment transaction processing services; payment processing services, namely, credit card, debit card and gift card transaction processing services; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale

1. From the information set out above, it is evident that the Opponent’s Registrations are held in a name other than that of the Applicant and both share a priority date that is earlier than that of the Trade Mark.

2. My next consideration is whether the goods and services of the Opponent’s Registrations are closely related, or similar, to the Applicant’s Services. The Opponent submits that the Applicant’s Services are similar to:

   at least the provision of analytic tools and software and e-commerce services covered by the Opponent’s Registrations, because, when judged in a business sense, the respective services would or at least could be provided to the same consumers, by the same provider, through the same channels and for the same, similar or related purposes.[3]

   [3] Opponent’s submissions [5.32].

   Comparison of services

3. The comparison of services for the purposes of s 44 is between the Applicant’s Services and the services claimed in the Opponent’s Registrations as set out at [16] of this decision. The comparison is not between the Applicant’s Services and what the Opponent has used its Registrations for in the marketplace.[4]

   [4] Berlei Hestia Industries Ltd v The Bali Company Co Inc (1973) 129 CLR 353, 362.

4. Section 14(2) of the Act provides:

   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.

5. Determining whether services are similar involves examining the ‘essential characteristics’[5] of the relevant services bearing in mind that it:

   ought not to be given too restricted a construction; at least not so as to be limited to [services] substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.[6]

   [5] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 [337].

   [6] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39 [28].

6. The factors for determining the similarity of goods are applicable, with necessary modification, to the question of whether services are similar.[7] The factors for determining if goods are similar are well-established and involve a consideration of:

   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 and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application, Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[8]

   [7] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] 90 FCR 236, 241; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 [70].

   [8] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.

7. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[9] the necessary modifications were made to the above factors resulting in the following list of likely considerations in the assessment of whether services are similar:

   [9] [2017] FCAFC 56 [339].

   ·the inherent character of each of the services;

   ·to whom are the services offered;

   ·how are the services provided;

   ·how are the services used;

   ·what is the purpose of the services;

   ·are the services differentiated by the functional level at which they are provided;

   ·where do the services originate;

   ·what is the method of their communication to the relevant target audience;

   ·how closely contestable are the services in substance: are they in the same market or trade;

   ·would consumers perceive the services as originating from the same provider.

8. I turn now to the comparison of the services.

   Are the services claimed by the Opponent’s Registration 1617500 similar to the Applicant’s Services?

9. In my opinion, the Applicant’s Services are similar in terms of s 14(2) to at least the Opponent’s claim in class 35 for ‘services for reconciling, namely processing payment transactions based on credit cards, debit cards, gift cards, and other forms of payment’ (‘the Opponent’s Registered Service’).

10. As a matter of language, the Opponent’s Registered Service is a service for reconciling payment transactions. The word ‘processing’ lends itself to various interpretations. In the context of the claim it may include: entering the details of payment transactions into a general ledger to enable the payments to be reconciled with a bank account statement; calculating the GST component of payments and reconciling it with a business activity statement; recording the details of payments made or received and reconciling those with income and expenses to be claimed in a tax return. These are the very types of processes that would be carried out as part of providing tax assessment (accounts) preparation, tax preparation and tax return preparation; all of which are specific claims within the Applicant’s Services.

11. Furthermore, it seems likely that a business that provides services for reconciling payment transactions, might also provide a broad range of other accountancy and taxation services such as those in the Applicant’s Services. In my opinion the Opponent’s Registered Service and the Applicant’s Services are the type of services that a consumer would perceive as originating from the same service provider.  

    Are the goods and services claimed by the Opponent’s Registration 1478099 closely related, or similar, to the Applicant’s Services?

12. I have found that the Opponent’s Registered Service is similar to the entirety of the Applicant’s Services. As such, there is no need for me to determine whether the goods and services claimed by the Opponent’s Registration 1478099 are closely related, or similar, to the Applicant’s Services because that determination will not alter the outcome of this matter.

    Comparison of trade marks

13. The remaining question to be answered under s 44(2) is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark.

14. Trade marks do not need to be identical to be considered substantially identical. This is acknowledged in the well-established test for substantially identical trade marks set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

    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.[10]

    [10] [1963] HCA 66 [12].

15. As the test for substantial identity involves a side by side comparison, I have reproduced the Opponent’s Trade Mark and the Trade Mark below:

    SQUARE     Tax Square

16. In respect of similarities between the trade marks, I note that they both contain the word ‘square’. In respect of differences I note that the Opponent’s Trade Mark consists of one word whereas the Trade Mark consists of two words being ‘tax’ and ‘square’. I also note that the Opponent’s Trade Mark is entirely in capital letters whereas ‘T’ and ‘S’ are the only capital letters in the Trade Mark.   

17. The importance of these similarities and differences must be assessed with regard to the essential feature/s of each of the trade marks. An essential feature is a feature that strikes the eye.[11] In my opinion, the word ‘square’ is the essential feature of each of the trade marks.

    [11] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 162; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [51].

18. The Opponent’s Trade Mark consists solely of the word ‘square’ in plain text and as such it is unquestionably the essential feature. In relation to the Trade Mark, the additional word ‘tax’ is utterly descriptive of the Applicant’s Services and I note the following observation made in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd:

    it is unlikely that the essential elements of a mark or its dominant cognitive clues [sic] are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services.[12]

    Neither party has suggested that the word ‘square’ has any descriptive relevance in relation to the services. Nor has the Applicant suggested that ‘tax square’ has an understood meaning which would effectively dilute the prominence of the word ‘square’. Considering all of the above, I am satisfied that the word ‘square’ strikes the eye and is the essential feature of the Trade Mark.

    [12] [2017] FCAFC 83 [52].

19. I now turn to the relative importance of the similarities and differences having regard to the essential feature. The similarity (the word ‘square’) is significant as it is the essential element of each of the trade marks. The differences in capitalisation are of little to no importance. As noted above, the additional word in the Trade Mark is utterly descriptive in relation to the Applicant’s Services.

20. I have also considered the fact that the additional word is at the beginning of the Trade Mark. The significance of this positioning ‘depends very much upon what the first word is and what the second word is’[13]. Here, the first word is descriptive and the second word is the essential element. In similar situations the courts have found trade marks to be substantially identical. For example, in PB Foods Ltd v Malanda Dairy Foods Ltd,[14] CHOC CHILL was found to be substantially identical to CHILL and in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[15] CAIRNS HARBOUR LIGHTS was found to be substantially identical to HARBOUR LIGHTS. 

    [13] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 [35].

    [14] [1999] FCA 1602.

    [15] [2015] FCA 554.

21. In my opinion the differences between the trade marks are relatively slight having regard to the essential feature. I am satisfied that there is a total impression of resemblance between them. The Trade Mark is substantially identical to the Opponent’s Trade Mark.

22. The Opponent has established the ground of opposition under s 44 of the Act.

23. Section 44(3) and 44(4) of the Act enable a trade mark to be registered, which would otherwise have been rejected under s 44(2), due to honest concurrent use, prior use or other circumstances. In this matter, the Applicant’s evidence is not sufficient for me to apply the provisions of s 44(3) or s 44(4).

    Decision

24. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, 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.

25. The Opponent has established the ground of opposition under s 44 of the Act. Accordingly, I refuse to register trade mark number 1858135.

    Costs

26. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

    Katrina Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    26 March 2020