Stephen Julian-Fraser v Stephen Roche

[2012] ATMO 43

TRADE MARKS ACT 1995

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

Re:Opposition by Stephen Julian-Fraser to registration of trade mark application 1324174 (25) - TRADIESDOWNUNDER - filed in the name of Stephen Roche.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Michael Julian appeared on behalf of the opponent

Applicant: Was not present at the hearing

Decision:

2012 ATMO 43

s. 52 opposition: sections 43, 44, 60 and 62A pressed – s 60 ground of opposition established for all goods – use of applicant’s trade mark likely to deceive or cause confusion - no requirement to consider other grounds - costs awarded against the applicant.

Background

1.     Stephen Roche (‘the applicant’) filed application number 1324174 on 9 October 2009 in class 25 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  tradiesdownunder

Trade mark application:              1324174

Filing Date:  9 October 2009

Specification:  Class 25: Men’s clothing

2.     Stephen Julian-Fraser (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 11 May 2010. Thereafter the parties served and filed evidence as allowed for by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3.     I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 19 August 2011. Mr Michael Julian appeared on behalf of the opponent to present submissions. The applicant did not attend the hearing but did provide written submissions for consideration.

Grounds of Opposition

4.     The Notice nominated a number of grounds of opposition available under the Act.  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’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

[2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

5.     At the hearing the opponent advised that he was not formally withdrawing any of the grounds of opposition listed in the Notice. However, he only provided submissions which go to the grounds under sections 43, 44, 60 and 62A of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

6.     Therefore, the grounds remaining for my consideration are those under sections 43, 44, 60 and 62A of the Act.

Evidence

7.     The evidence provided for this matter consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Michael H Julian[3]	Director	11 August 2010	Attachment 1 to 7
Evidence in Answer
Stephen Roche	11 October 2010	Attachment 1 to 9
Evidence in Reply
Michael H Julian	Director	27 January 2011	Attachment 1
Michael H Julian	Director	17 February 2011	Attachment 1
Opponent’s Further Evidence
Michael H Julian	Director	19 August 2011	Attachment 1 to 12

[3] For ease of reference throughout the decision this statutory declaration will be referred to as ‘Julian 1’

8.     It is to be noted that the opponent applied for permission to serve further evidence on the day of the hearing. The further evidence had been discussed in the opponent’s original evidence and submissions although it had not been brought into proceedings. The opponent applied for permission to serve further evidence in order to bring the evidence into proceedings which was granted. The applicant did not provide comment or object to the further evidence.

Section 60 - Reputation in Australia

9.     Section 60 of the Act provides:

60          Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

10.   To establish the ground of opposition under section 60, the opponent must demonstrate:

Øthat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

Øthat because of the reputation of the other trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

11.   Unlike sections 44 or 58 of the Act, section 60 does not require that the goods or services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that I consider the opponent’s trade mark to be deceptively similar to the applicant’s trade mark. The details of the opponent’s trade mark are as follows:

Trade mark:  

Trade mark registration:             1187492

Filing Date:  17 July 2007

Specification:  Class 35: Employment agency and recruitment services; employment agency and recruitment services provided on-line from a computer database or the Internet; recruitment consultancy services; recruitment consultancy services provided on-line from a computer database or the Internet; business consulting, management, planning and supervision; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization; business management consulting with relation to strategy, marketing, production, personnel and retail sale matters; advice in the field of business management and marketing; management consultancy (personnel -); accountancy services

12.   A consideration of the opponent’s DOWNUNDER TRADIES trade mark when compared to the applicant’s TRADIESDOWNUNDER trade mark reveals that both trade marks consist of the same words albeit in reversed order. The applicant’s trade mark does not have a space between the words ‘tradies’ and ‘downunder’ but the effect of reading or referring to the trade mark is the same. A consumer is unlikely to see or refer to the applicant’s trade mark as anything but TRADIES DOWNUNDER. I note the addition of graphics to the opponent’s trade mark but these graphics are a minor element, do not affect the words by which the trade mark will be identified, and are not sufficient to distinguish the trade marks from each other.

13.   It is now for me to determine if the opponent has acquired a reputation in Australia for its DOWNUNDER TRADIES trade mark which is sufficient to establish that use of the opposed trade mark would be likely to deceive or cause confusion. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[4] by Kenny J at paragraph 81:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

[4] [2000] FCA 1335; (2000) 51 IPR 102

14.   The opponent’s evidence contains a number of attachments which demonstrate that the opponent has used his DOWNUNDER TRADIES trade mark on his company’s trades recruitment services and on clothing. The promotional materials for the recruitment services include a number of advertisements including pamphlets (August 2007), newspaper advertisements (November 2007), posters (August 2008) and sponsorship deals (2008) which indicate that the opponent has been broadly and actively advertising his trades recruitment services to a range of tradesmen through a variety of means.

15.   The evidence demonstrates that the opponent has mainly aimed the advertisement of his services through TAFE institutions and sponsorship deals with Electro Group. The quantity of posters and brochures sent to the TAFE institutions around Australia number in the thousands. The opponent’s active participation (with leading trade organizations such as Master Builders Association and ACT Regional Building and Construction Training Council) in training schemes designed to attract qualified tradesmen to the ACT has received media attention which appears to be increasing over the years as the opponent’s business and reputation expands.

16.   The opponent’s evidence also demonstrates that his DOWNUNDER TRADIES trade mark has been used on t-shirts and caps since at least October 2007 as some of the opponent’s early advertising materials also show pictures of tradesmen wearing these goods with the DOWNUNDER TRADIES trade mark clearly visible on the shirt. Mr Julian states that the t-shirts and caps bearing the DOWNUNDER TRADIES trade mark have been sold to customers since 2007. The applicant has also confirmed that items of clothing bearing the opponent’s trade mark are sold through the opponent’s website.

17.   The opponent’s advertising of its DOWNUNDER TRADIES goods and services through printed publications combined with its sponsorship programs and media exposure makes it likely that a considerable number of Australian customer are aware of the opponent’s goods and services and particularly tradespersons which are the target customers/clients of both the opponent and the applicant. I am satisfied that the opponent has established the existence of a significant reputation in Australia within the trade recruitment industry for its DOWNUNDER TRADIES trade mark before the priority date of the opposed trade mark.

18.   I now need to determine if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark on goods which may be different from the opponent’s goods and services. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[5].

[5] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

19.   The applicant has argued that he uses his TRADIESDOWNUNDER trade mark on goods which are not covered under the opponent’s trade mark registration for DOWNUNDER TRADIES. This is true. However, the opponent’s evidence demonstrates that he has been using his DOWNUNDER TRADIES trade mark on his trade recruitment services which has developed a strong reputation in the trade industry. The opponent has also used his trade mark on promotional clothing which is sold through his website. This situation taken together with the similarities between the trade marks will add to the likelihood of confusion taking place in the marketplace between the applicant’s trade mark and the opponent’s trade mark.

20.   Attachment 6 accompanying the Julian 1 declaration contains a recounting of a situation where the opponent’s services were referred to as TRADIES DOWNUNDER. Mr Roche responded to this in his statutory declaration stating that the confusion in this situation ‘is a common mistake and could be applied to any double barreled named company’. I disagree with Mr Roche. The opponent’s evidence demonstrates that it has been using DOWNUNDER TRADIES as his business name and as a trade mark.  The point of a trade mark is to act as a badge of origin for the goods or services which to it is applied. The law is specific in disallowing trade marks which might cause deception or confusion. I believe that where the trade marks share the same words and are aimed at the same customers the likelihood of confusion between the trade marks significantly increases.

21.   I consider that, given the already existing and growing reputation evidenced by the opponent in his DOWNUNDER TRADIES trade mark, a significant number of Australian consumers would at the very least subscribe to a reasonable doubt[6] as to some sort of connection between it and the applicant’s trade mark. Since the trade marks are also similar, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger section 60.

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

22.   The opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

23.   Section 55 of the Act provides:

Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

24.   I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. I refuse to register trade mark application 1324174.

Costs

25.   It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

27 April 2012