Steven Muller v Thinkvid Pty Ltd

[2020] ATMO 141

TRADE MARKS ACT 1995

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

Re:Opposition by Steven Muller to registration of trade mark application number 1961742 (class 35) - THINKBONDIBEACH - in the name of THINKVID PTY LTD.

Delegate:

Timothy Brown

Representation:

Opponent: Self represented

Applicant: Written submissions by Karla Holzberger, IP Wealth Pty Ltd

Decision:

2020 ATMO 141

Trade Marks Act 1995 (Cth) – opposition under section 52 –section 44 – no ground established – Trade Mark to proceed to registration

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) brought by Steven Muller (‘the Opponent’) to the registration of the following trade mark:

   Trade Mark Number: 1961742

   Trade Mark: THINKBONDIBEACH (‘the Trade Mark’)

   Applicant: THINKVID PTY LTD (‘the Applicant’):

   Priority Date: 12 October 2018

   Specification:

   Class 35: see Annexure A

2. The Trade Mark application was advertised for acceptance in the Australian Official Journal of Trade Marks on 24 April 2019.

3. The Opponent filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) on 02 May 2019. The Applicant subsequently filed a Notice of Intention to Defend on the 12 June 2019.

4. Neither party has sought to rely on evidence.

5. The parties have both been informed of their right to request a hearing or make written submissions. Neither party has requested a hearing. However, the Applicant filed written submissions on 25 February 2020 (‘Applicant’s Submissions’). No submissions were filed by the Opponent.

6. As a delegate of the Registrar of Trade Marks I will decide the opposition taking into account the written material filed during these proceedings.

7. Before proceeding with the nominated ground of opposition, I note that the Applicant has raised an issue under section 53 of the Act concerning the connection between the Opponent and the owner of the earlier trade mark registration identified in the Opponent’s SGP. Section 53 of the Act provides for the continuation of proceedings in the name of another person where the right or interest relied on to file the notice of opposition becomes vested in another person. There is no requirement under section 53 that the Opponent outline a connection between himself and the owner of any earlier trade mark registration identified in support of a ground of opposition. Noting that at no point during this opposition has the right or interest upon which the Opponent relied on changed, I am satisfied that there is no basis to challenge the opposition under section 53 of the Act.

Grounds of Opposition

1. The nominated ground of opposition is section 44 of the Act.

2. The Opponent bears the onus of establishing the ground of opposition.[1] The standard of proof required to establish the ground of opposition is on the balanced of probabilities.[2]

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

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

3. The date at which the rights of the parties are to be determined is the priority date of the trade mark application,[3] the 12 October 2018.

   [3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Discussion

1. Section 44(2) of the Act provides:

   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.

1. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, held in the name of another person, in respect of similar services or closely related goods.

2. The Opponent has identified the following trade mark registration (‘the Trade Mark Registration’) in support of their section 44 ground of opposition:

   Trade Mark Number: 1510339

   Trade Mark:

   Priority Date: 24 August 2012

   Owner: Bondi Advertising Pty Ltd

   Specification:

   Class 35: see Annexure B

3. The Trade Mark Registration has a priority date of 24 August 2012, an earlier date than the priority date of the Trade Mark, and is held in the name of another person.

4. Both trade marks cover a broad range of advertising, marketing and promotional services in Class 35. In their submissions the Applicant accepts that the services specified in both trade marks are the same or of the same description. I am also satisfied that these services are clearly the same or of the same description.

5. The remaining issue is whether the Trade Mark is substantially identical or deceptively similar to the Trade Mark Registration.

Substantially Identical

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Windeyer J stated:

   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.[4]

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, [12].

2. The Full Federal Court has stated determining substantial identity involves consideration of the ‘dominant cognitive cues’[5]of each trade mark, or in other words, the essential features of the trade marks under comparison.[6] The side by side comparison is to be carried out with the dominant cognitive cues or essential features in the trade marks in mind.[7] If a total impression of resemblance emerges from the comparison then the trade marks will be considered substantially identical.[8]

   [5] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [206]; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51].

   [6] Ibid.

   [7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [51]-[52].

   [8] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 68; (1994) 120 ALR 495, [62]; Ibid [50].

3. On a side by side comparison having regard to the essential features of the respective trade marks there are clear differences. The Trade Mark Registration is a composite of three essential features, namely, the words BONDI ADVERTISING, a pair of crossed flags, and the phrase THINK OUTSIDE THE FLAGS. In contrast, the Trade Mark is comprised solely of the phrase THINKBONDIBEACH. The immediate effect of these differences creates an impression of dissimilarity between the trade marks sufficient to conclude that the trade marks are not substantial identical.

Deceptively Similar

1. Turning to whether the trade marks are deceptively similar, section 10 of the Act defines ‘deceptively similar’ as:

   ‘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.’

2. Deceptive similarity, unlike substantial identity, is not determined by a side by side comparison, but by a comparison between the impressions that a person of ordinary intelligence and memory would have based on an imperfect recollection of the trade marks.[9]

   [9] Australian Woollen Mills Ltd v F.S Walton & Co Ltd (1937) 58 CLR 641, 658; Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407, [13].

3. The trade marks will be considered deceptively similar if there is a real tangible danger of deception or confusion occurring.[10]This requires more than a mere possibility of deception or confusion, however, it is sufficient if there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services in question come from the same source.[11]

   [10] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) FCR 365, [50].

   [11] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365, [50]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [192].

4. In making this assessment regard should be given to all surrounding circumstances.[12] In the words of Lord Parker in In the Matter of an Application by the Pianotist Company Ltd for Registration of a Trade Mark (1906) 23 RPC 774, at 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion…in the mind of the public…you must refuse the registration in that case.

[12] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50]; Crazy Ron’s Communication Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1, [86]; SouthernCross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

1. The looks and sounds of the trade marks are relevant to this comparison,[13] as are the ideas conveyed by the trade marks,[14]but ultimately what must be compared is the general effect and impressions of the respective trade marks in their entirety.[15]

   [13] Australian Woollen Mills Ltd v F.S Walton & Co Ltd (1937) 58 CLR 641, 658; In the Matter of an Application by the Pianotist Company Ltd for Registration of a Trade Mark (1906) 23 RPC 774, 777.

   [14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 539; Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 59 IPR 318, 331.

   [15] Clark v Sharp (1898) 15 RPC 141, 146.

2. In the present matter, the Applicant has outlined in detail the various visual and aural differences between the trade marks, characterising the words BONDI ADVTERISING as the essential feature of the Trade Mark Registration and noting when considered as a whole the respective trade marks share no main or essential elements. In support of their position, the Applicant has emphasised the visual and aural effect of the differences in the overall layout and the placement of the respective BONDI and THINK elements in both trade marks.

3. I am in general agreement with the Applicant’s submissions. Although both the Trade Mark and the Trade Mark Registration share the words BONDI and THINK, the overall impressions conveyed by the respective trade marks are very different. The words BONDI ADVERTISING in the Trade Mark Registration are represented prominently above the phrase THINK OUTSIDE THE FLAGS and the accompanying crossed flag device. Considering the Trade Mark Registration in its entirety, the composite all three elements provides several overt points of visual and aural distinction from the singular phrase THINKBONDIBEACH.

4. The trade marks also convey different ideas to the consumer. Both trade marks may be referential to the geographical location of Bondi or Bondi Beach, but the similarities in idea extend no further than this. The Trade Mark Registration places considerable emphasis on the idea of BONDI, while the phrase THINK OUTSIDE THE FLAG is indicative of creative or imaginative thinking. The crossed pair of flags further emphasises the idea of ‘thinking outside the flag’, and the resemblance the flags have with surf life-saving flags may also serve to reinforce the idea of Bondi or Bondi Beach. In comparison, the Trade Mark invites consumers to ‘think’ of Bondi Beach. Noting the geographic significance of BONDI BEACH to the Australian marketplace, a consumer may also construe the term THINK as the primary distinctive element in the Applicant’s Trade Mark with the words BONDI BEACH indicating the location of the intended services. However, I accept the Applicant’s submission that it is likely that no single element of the Trade Mark will stand out to consumers compared to the Trade Mark as a whole. In either case, I am satisfied that both ideas are sufficiently distinct from those conveyed by the Trade Mark Registration, particularly noting the absence of any material in the Trade Mark capable of conveying the idea of creative thinking.

5. Allowing for the possibility of imperfect recollection and having regard to the visual, aural and conceptual differences outlined above, it is not likely that the Trade Mark would deceive or cause confusion because of similarity to the Trade Mark Registration. I am satisfied that the trade marks are not deceptively similar.

6. The Opponent has not established the ground of opposition under section 44 of the Act.

Decision

1. Section 55(1) of the Act provides:

   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.

2. The Opponent has not established a ground of opposition. Accordingly, the trade mark application may proceed to registration one month from the date of this decision.

3. The Opponent may appeal this decision to the Federal Court or Federal Circuit Court.[16] Should the Registrar be served with a notice of appeal before registration of the trade mark, I direct that registration of the trade mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

   [16] Trade Marks Act 1995 (Cth) s56.

Costs

1. The Applicant sought an award of costs. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

28 August 2020

Annexure A

Specification for trade mark application no. 1961742

Class 35:

Advertising, marketing, and promotional services, including promoting and marketing the brands, goods and services of others through all public communication means; production of video recordings for advertising, marketing and publicity purposes; preparing advertisements for others, namely, preparing video advertising and promotional videos for commercial use via the Internet, television, digital cable and video-on-demand or download; provision of space on websites for advertising goods and services; compilation of advertisements for use as webpages on the Internet; rental of advertising time on communication media; rental of advertising space, including on the Internet, websites, at cinemas, and indoor and outdoor billboards, signage, and sales stands; provision and rental of advertising apparatus, materials, and matter; advertising and directory services, namely, promoting the goods and services of others by providing a website featuring information relating to businesses, including but not limited to, their contact details, physical address, opening hours, products and services offered, and hyperlinks to their websites; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; advertising and business services, namely, securing airtime on all forms of media communications stations, systems, networks, and services for the purpose of promoting the brands, goods and services of others; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising agencies specialising in marketing strategies to promote businesses and the design of word of mouth, viral, buzz and experiential marketing programs; advertising copywriting and scriptwriting; public relations; organisation and hosting of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; preparation and realisation of media and advertising plans and concepts; creation, design, compilation, production, dissemination and updating of advertising material; cooperative advertising and marketing services by way of solicitation, customer service and providing marketing information via web sites on a global computer network; search engine optimisation; web site traffic optimisation; business monitoring services, namely, tracking web sites of others to provide details about user click traffic or visits to the web site; business monitoring and consulting services, namely, tracking web sites and applications of others to provide strategy, insight, marketing, sales, operation, product design, particularly specialising in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; promoting the goods and services of others through search engine referral traffic analysis and reporting; advertising and online trading services for users to purchase or exchange goods and services via a web-based system or online portal; online trading services to facilitate the sale and exchange of goods and services of others via a global computer network; compilation and provision of commercial information, trade information, business directories, trade directories, and online business and trade directories, including for publishing on the Internet; data compilation and systemisation in a database; retailing and wholesaling of goods (by any means); organisation, operation, management and supervision of customer loyalty programmes and schemes, and discount card loyalty schemes; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, including the provision of such services provided by all means of retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through websites or televise on shopping programs; presentation of goods on communication media, for retail purposes; intermediary business services relating to the commercialisation of goods; business management consultancy; business administration; office functions; providing information, advice and consultancy in relation to all the aforesaid services; including provision of all the aforesaid services online, via a website, the internet, global computer networks or other computer networks, by electronic means or wireless technology, or accessible by mobile phones or other Internet-enabled devices

Annexure B

Specification of trade mark registration no. 1510339

Class 35:

Advertising; advertising agencies; advertising agency services; advertising analysis; advertising by mail order; advertising services provided by television; advertising services provided over the Internet; advertising services provided via a data base; advisory services relating to advertising; arranging exhibitions for advertising purposes; billboard advertising; business advertising services relating to franchising; business advice relating to advertising; business consultation relating to advertising; cinematographic film advertising; classified advertising; collection of information relating to advertising; conducting exhibitions for advertising purposes; consultancy relating to advertising; demonstration of goods for advertising purposes; direct mail advertising; direct market advertising; direct-mail advertising; dissemination of advertising material; dissemination of advertising matter; distribution of advertising material; electronic advertising services; event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); fashion show services (advertising or promotional services); franchising services (group purchasing, group advertising); graphic advertising services; hire of advertising aids; hire of advertising billboards; hire of advertising equipment; hire of advertising materials; hiring of advertising materials; information services relating to advertising; layout services for advertising purposes; market research for advertising; modelling for advertising or sales promotion; online advertising on a computer network; organisation of exhibitions for commercial or advertising purposes; organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; organisation of trade expositions or shows for commercial or advertising purposes; organisation of trade fairs for commercial or advertising purposes; organising of prize draws for advertising purposes; outdoor advertising; outdoor advertising services; personnel recruitment advertising; planning services for advertising; preparation of advertising material; press advertising consultancy; press advertising services; production of advertising films; production of advertising material; production of fashion shows for advertising or promotional purposes; production of sound recordings for advertising purposes; production of video recordings for advertising purposes; production of visual advertising matter; production, organisation and presentation of fashion shows for advertising or promotional purposes; promotion (advertising) of business; promotion (advertising) of concerts; promotion (advertising) of travel; promotional advertising services; providing information, including online, about advertising, business management and administration and office functions; provision of advertising information; provision of advertising space; provision of information relating to advertising; radio advertising; recruitment advertising; rental of advertising apparatus; rental of advertising billboards; rental of advertising materials; rental of advertising matter; rental of advertising space; rental of advertising space on the Internet; rental of advertising time on communication media; research services relating to advertising; response advertising; television advertising; updating of advertising material; writing advertising copy