Steven R Smith v Car2Go GmbH

[2013] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Steven R Smith to registration of trade mark application 1261383(12, 25, 28, 35, 36, 38, 41) - CAR2GO - filed in the name of car2go GmbH.

Delegate:

Nicole Worth

Representation:

Opponent: Troy Houghton of Counsel, instructed by Kim Walters of Gold IP Lawyers.

Applicant: Not present but written submissions were prepared by Danielle Jepson of Fisher Adams Kelly Patent & Trade Mark Attorneys.

Decision:

2013 ATMO 103

Section 52 opposition – ss 59, 42, 44, 62A – section 44 partially established – similar services – goods closely related to services – no other grounds established.

Background

1. This is an opposition brought by Mr. Steven R Smith (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark the subject of application number 1261383 in the name of car2go GmbH (‘the Applicant’).

2. Relevant details of the opposed application are as follows:

Trade Mark:  CAR2GO (‘the Trade Mark’)

Priority date:  10 September 2008

Owner:                car2go GmbH

Goods & Services:          Class 12: Vehicles, in particular motor vehicles and commercial vehicles, in particular used vehicles, accessories for vehicles in class 12; apparatus for locomotion on land, sea or by air.

Class 25: Clothing, headgear and footwear.

Class 28: Games, toys, in particular toy and model vehicles; gymnastic and sporting articles not included in other classes; Christmas tree decorations.

Class 35: Office activities; sales of used vehicles.

Class 36: Insurance services, financial services, monetary affairs, real estate services, lease purchase financing of vehicles, in particular motor vehicles and commercial vehicles.

Class 38: Telecommunications, rental of car phones.

Class 41: Education, training, entertainment, sporting and cultural activities.

1. Initially the application also included a range of business and advertising services in class 35 and a range of vehicle rental and travel services in class 39. During the examination of the application grounds for rejection under section 44 of the Act were raised on the basis of the Opponent’s prior registrations 1221036 (for the trade mark ‘1800 CAR 2 GO’ in class 39) and 1232239 (for the trade mark ‘car2go’ in class 35). In order to overcome the grounds for rejection, the Applicant deleted the relevant class 35 services and divided the class 39 services out of the application and into divisional application 1337471 (now lapsed and from which divisional application 1440890, currently under examination, has itself been divided).

2. Following the exclusion of those services from the subject application the Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 10 June 2010. The Opponent filed a Notice of Opposition to registration (‘the Notice’) on 8 November 2010, nominating most of the grounds available under the Act to oppose registration.

3. Following the service of evidence, described in more detail below, the matter was set down to be heard. I heard the matter, as a delegate of the Registrar of Trade Marks, in Brisbane on 4 September 2013. Troy Houghton of Counsel, instructed by Kim Walters of Gold IP Lawyers, prepared written submissions and represented the Opponent at the hearing. The Applicant did not attend and was not represented at the hearing, although written submissions were prepared on its behalf by Danielle Jepson of Fisher Adams Kelly, Patent & Trade Mark Attorneys.

Evidence

1. The evidence served and filed in this matter comprises statutory declarations by:

   Evidence in support

   ·     Steven Robert Smith, founder of a car rental business in Queensland and owner of business names including, inter alia, 1800 CAR2GO, with attachments A to F, made 27 September 2011.

   Evidence in answer

   ·     Danielle Belinda Jepson, trade mark attorney with Fisher Adams Kelly Patent & Trade Mark Attorneys, with exhibits 1 to 22, made 27 July 2012.

   Evidence in reply

   ·     Steven Robert Smith, now in his capacity as director of Car2go Australia Pty Ltd (a company not registered until after evidence in support had been served and filed), with exhibits A to R, made 25 February 2013.

   Further evidence

   ·     Steven Robert Smith with sealed exhibits A to C, made 29 August 2013.

2. I summarise below what I consider to be the relevant facts presented in the parties’ evidence.

Opponent’s Evidence

1. In September 2007 the Opponent and his wife decided to start a car rental business in Queensland. After some deliberation they determined that ‘1800 CAR2GO’ would be a suitable name for the business, in particular because it fitted the criteria of a “smart number” (being a telephone number formulated using the letters of a telephone keypad to form a word, the intention being that the telephone number will then be more memorable). The inspiration for ‘CAR2GO’ occurred when the Opponent happened to note the name of his barbecue ‘GRILL2GO’.

2. Early in 2008 the Opponent registered the business name, as well as securing the right to use the smart number 1800 CAR2GO and registering domain names incorporating 1800car2go and car2go. In addition to its online presence, the business was promoted in tourist and automobile club publications, in the Yellow Pages® and White Pages® directories and upon brochure cards placed in accommodation houses. Since 2009 the Opponent has also utilised paid advertising upon Google® to promote the business.

3. Between January and March 2008 the Opponent filed applications for the following trade marks, all of which proceeded to registration:

Trade Mark	Priority Date	Services
1800 CAR 2 GO Registration no.: 1221036	24 January 2008	“Transport services; motor vehicle hire services” in class 39.
car2go Registration no.: 1232229	28 March 2008	“Transport services; motor vehicle hire services” in class 39.
car2go Registration no.: 1232239	29 March 2008	“Promotion (advertising) of business” in class 35.

Multiple other trade mark applications have since been filed by the Opponent. However it is not necessary to detail them here.

1. Sales and advertising figures for the years 2008 to 2014 indicate steady growth in turnover and considerable investment in advertising and marketing.

2. Since about October 2009 the Opponent has received enquiries from customers wishing to rent his vehicles on an hourly basis, apparently due to the mistaken belief that his business was connected with that of the Applicant, described further below.

Applicant’s Evidence

1. The Applicant does not attest to any matters itself but relies upon the declaration of its attorney, Ms Danielle Jepson. The Applicant is a wholly owned subsidiary of Daimler AG, a company whose brands of vehicles include “smart”. Ms Jepson describes smart brand vehicles as “a range of compact two-seater, environmentally friendly and highly economical vehicles”.

2. In 2001 the Applicant developed a concept for pay-as-you-go “car sharing” utilizing smart brand vehicles. Ms Jepson describes the concept as:

   The CAR2GO concept aims to meet customer demands for flexible urban mobility, through the use of smart cars that can be hired at any time of day or night following initial registration – without a contract, minimum charge or minimum duration…

   Once a customer has registered with CAR2GO, an electronic seal is affixed to the customer’s driving license that enables the available vehicle to be opened. The customer can come by a CAR2GO in a variety of ways. One example is instant hire when passing by: if there’s an available smart, the user can take it on the spot. The customer simply holds his driving licence against a reader in the windscreen area, gets in, enters his personal ID number into the vehicle and drives off. Available vehicles can be located at any time, quickly and easily via the Internet or a smart-phone application.

   The use period can be for any length of time. During stops, such as for shopping or similar, the vehicle remains reserved for the user at highly reduced rates. When the customer wants to return his CAR2GO, he parks the vehicle in any public parking space in the city zone. In addition, specially marked CAR2GO parking spaces are provided, for example at CAR2GO stations or shopping centres.

3. The Applicant filed an application for the trade mark CAR2GO in the European Community in 2001 which proceeded to registration the following year. Beginning in October 2008 the car sharing program was trialled by Daimler employees in Ulm, Germany. It was launched as an ongoing service in Ulm in March 2009.

4. Ms Jepson declares that more than 120,000 customers have since registered with the Applicant and its car sharing program now operates in certain cities in Germany, Austria, the United Kingdom, the Netherlands, France, the USA and Canada (although no dates are provided to indicate when the program was introduced to those cities).

5. Two articles are in evidence, both from April 2009, which discuss the Applicant’s car sharing program. The first appears to be published upon the website ‘carsales.com’ and is titled ‘Car2go coming Down Under’. It states:

   An Australian city could be one of the next in line to trial the innovative smart [car] based ‘car2go’ car-sharing system. Backed by Mercedes-Benz and smart’s parent company, Daimler, the pay-as-you-go system recently moved from a pilot program to a fully fledged operation in the German city of Ulm. It will also be trialled in Austin, the capital of the US state of Texas, from September and an Australian presence is being actively investigated…

   “We have had interest from cities all over the world – including several in Australia” [car2go’s project manager Robert Henrich] admitted. “We would probably think an Asian city would be next, because sometimes the thinking there for the consumer is more different to Ulm or Austin than it would be in Australia and we want to keep learning. But we have serious interest from some councils there and we are investigating all of them”.

   According to Mercedes-Benz Australia’s David McCarthy, car2go is one of a list of alternative transport solutions the company would like to see trialled in Australia. “Car2go is a product of Daimler’s Business Innovation department. Within that business unit there are people with experience and knowledge of the Australian market, so our biggest cities – Sydney, Melbourne and Brisbane – are on the radar for car2go” McCarthy told the Carsales Network. “What we learn from Ulm as a company will help make the local situation clearer. It could be that car2go comes Down Under via a third party operator. We have had strong interest from a number of specialist operators and they, like us, are looking closely at the results of how the initial car2go operation pans out” McCarthy said.

6. The second article also discusses the Applicant’s car sharing program and provides the same quotes from Robert Henrich and David McCarthy. It is published upon the website ‘redbook.com.au’.

7. Between May 2010 and February 2012 the Applicant’s car sharing program won a number of awards in the USA, Canada and Germany. Between June 2008 and May 2010 the Applicant filed multiple trade mark applications in jurisdictions including the European Community, the USA, Canada, Australia and Singapore, some of which are registered and some pending.

Grounds and Onus

1. The Opponent’s written submissions advised that he relies upon the grounds of opposition under sections 59, 44, 42 and 62A of the Act. For completeness I find that the other grounds listed in the Notice have not been established.

2. I proceed on the basis that the Opponent bears the onus of establishing at least one of the grounds on the ordinary civil standard of the balance of probabilities[1], and that the date at which the rights of the parties are to be determined is the date the application was filed.[2] The Opponent’s stance in respect of the ground of opposition under section 59 informs, at least to some extent, his position in respect of the other grounds of opposition so I will begin with a discussion of that ground.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 70 IPR 599 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 per Sundberg J at [22] to [26]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435 per Greenwood J at [16] to [32]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   [2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Section 59

1. Section 59 of the Act provides:

Applicant not intending to use trade mark

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

1. The act of filing an application to register a trade mark is prima facie evidence of an applicant’s intention to use that trade mark in respect of the goods or services specified in the application.[3] A mere allegation of non use by the Opponent is not enough by itself to shift the onus of proof to the Applicant, however where a prima facie case against it has been made then it is for the Applicant to rebut the allegation[4]. A lack of use is not itself determinative.[5]

   [3] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.

   [4] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.

   [5] See for example Suyen Corporation v Americana International Limited (‘Suyen’) [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’), or Crew v Newcastle Permanent Building Society Ltd [2009] ATMO 55; (2009) 83 IPR 112.

2. The nature of the intention has been described variously as “a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time”[6], “some definite and present intention to deal in certain goods…and not a mere general intention of extending his business at some future time to anything which he may think desirable”[7], and “a resolved or settled purpose which has been reached at the time when the mark is to be registered”[8], (all quoted by Dodds-Streeton J in Suyen[9]).

   [6] Ritz Hotel Ltd v Charles of Ritz Ltd and Another (1988) 15 NSWLR 157.

   [7] Re John Batt & Co’s Registered Trade Marks [1898] 2 Ch. 432.

   [8] Re Ducker’s Trade Mark [1929] 1 Ch 113.

   [9] Suyen, above n 6.

3. The relevant date at which section 59 is to be assessed has been the subject of judicial attention.[10] The Full Court in Food Channel Network Pty Ltd v Television Food Network GP[11] confirmed that the relevant date under section 59 was the date the application was filed. Dodds-Streeton J in Suyen followed this, although noting that “While the Full Court has now confirmed that the intention under s 59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain”[12]. Therefore, although I bear in mind that later events may cast light on the true position as at the relevant date[13], I proceed on the basis that the relevant date for assessing the Applicant’s intention is the date it filed its application, being 10 September 2008.

   [10] See for example the discussion of relevant cases in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29.

   [11] [2010] FCAFC 58; (2010) 86 IPR 437.

   [12] At [177].

   [13] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505, 509; Suyen, above n 6.

4. In his submissions the Opponent points out that Ms Jepson’s declaration, filed as evidence in answer on behalf of the Applicant, makes no positive statements regarding any intention to use the Trade Mark in Australia. He further submits that the evidence shows the business of the Applicant is in fact car rentals and its operations in Lyon, France, were suspended indefinitely because the Trade Mark conflicted with the name of a French vehicle rental company. On these bases, combined with the lack of any use in the intervening 5 years since filing, the Opponent submits:

   …[the Applicant] does not intend to use the Applicant’s Mark in Australia except in conjunction with the Applicant’s Class 39 Business in the event that it may somehow operate in Australia. This ambition cannot be achieved unless it somehow acquires the Opponent’s Marks registered under class 39.

   It follows, it is submitted, that an inference can be drawn from all of the surrounding circumstances that the Applicant has no intention to use the Applicant’s Mark.

5. There are perhaps a number of factors which might lead to an inference that the Applicant’s intention to use the Trade Mark is, and was, contingent upon it being able to use the Trade Mark in respect of the class 39 services that have now been divided out of the application (although I make no finding that the inference can be drawn). The difficulty with such an inference is that it nonetheless does not refute the existence of an intention to use the Trade Mark at the filing date, even if it be characterized as a ‘contingent’ or ‘conditional’ intention.

6. I consider it likely that the true position at the filing date was that the Applicant intended (though not necessarily immediately) to introduce its vehicle sharing program in Australia and to provide goods and services ancillary to it, all under the name CAR2GO. This is supported by the articles in ‘carsales.com’ and ‘redbook.com.au’, and by the fact that the Applicant has extended the program into several cities across two continents. Any subsequent change in intention, if such a change occurred, does not resolve the question as at the filing date. Moreover, I do not infer lack of intention from the lack of use in the intervening period. As pointed out by the delegate in Crew v Newcastle Permanent Building Society Ltd “It is not uncommon for traders to delay use of a trade mark pending the outcome of an application for registration (see Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 at 1921 (Reg)), in order to avoid any lost expenditure on the marketing of the trade mark”.[14]

   [14] Crew v Newcastle Permanent Building Society Ltd, above n 6.

7. Accordingly, I am not satisfied that at the filing date the Applicant did not intend to use the Trade Mark in respect of the goods and services listed in the application. Nor am I satisfied that the inference that the Applicant’s intention was contingent upon its ability to use the Trade Mark in respect of class 39 services would assist the Opponent’s case, even were I to draw it. As such, the ground of opposition under section 59 fails.

Section 44

1. Section 44 of the Act relevantly provides:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) 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 goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or
   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

1. In order to establish a ground of opposition under section 44, the Opponent must point to a registered or pending trade mark, owned by a person other than the Applicant, which:

   ·     has a priority date earlier than the Trade Mark;

   ·     is in respect of goods or services which are similar or closely related to those specified in the subject application; and

   ·     is substantially identical or deceptively similar to the Trade Mark.

2. In this regard the Notice lists trade mark registrations 1221036, 1232229 and 1232239, all of which are owned by the Opponent. For ease of reference I reproduce relevant details of the Opponent’s trade marks and the Trade Mark below:

Opponent’s trade marks
1800 CAR 2 GO	car2go	car2go
Registration no.: 1221036 Priority date: 24 Jan 2008 Services: “Transport services, motor vehicle hire services” in class 39	Registration no.: 1232229 Priority date: 28 Mar 2008 Services: “Transport services, motor vehicle hire services” in class 39	Registration no.: 1232239 Priority date: 29 Mar 2008 Services: “Promotion (advertising) of business” in class 35
The Trade Mark
CAR2GO Priority date: 10 Sep 2008 Goods and Services: Class 12: Vehicles, in particular motor vehicles and commercial vehicles, in particular used vehicles, accessories for vehicles in class 12; apparatus for locomotion on land, sea or by air. Class 25: Clothing, headgear and footwear. Class 28: Games, toys, in particular toy and model vehicles; gymnastic and sporting articles not included in other classes; Christmas tree decorations. Class 35: Office activities; sales of used vehicles. Class 36: Insurance services, financial services, monetary affairs, real estate services, lease purchase financing of vehicles, in particular motor vehicles and commercial vehicles. Class 38: Telecommunications, rental of car phones. Class 41: Education, training, entertainment, sporting and cultural activities.

1. All of the Opponent’s trade marks have earlier priority dates than the Trade Mark. The degree of resemblance between the trade marks of the parties was not disputed, so I will not enter into a discussion of those relevant principles here, save to say that I consider the mark the subject of registration 1221036 is at least deceptively similar to the Trade Mark and the Opponent’s remaining trade marks are substantially identical to the Trade Mark. What remains to be considered is whether the Trade Mark is applied for in respect of services that are similar to, and/or goods that are closely related to, the Opponent’s services in classes 39 and 35.

2. The Opponent submits:

   Because of the inference drawn earlier in these submissions (that the Applicant’s real intention is to use the goods and services of the classes under the Applicant’s Mark in support of and ancillary to the Applicant’s Class 39 Business in Australia as it operates overseas) those goods and services will have to be supplied to the same customers using the same supply channels as the Opponent’s Class 39 Business under the identical mark (the CAR2GO Marks) should the Applicant somehow operate in Australia under class 39.

   It follows…that the Applicant’s Mark is to be used ancillary to the Applicant’s Class 39 Business, which is not in operation in Australia and that the Applicant’s Class 39 Business is a necessary adjunct to those goods and services which will not operate without that business.

   It is submitted that in all the circumstances, those goods and services supplied under the Applicant’s Mark would be closely related to the Opponent’s Mark and that there is a real and tangible danger of deception and confusion occurring between customers of the car rental industry should the Applicant use the Mark.

3. As stated previously I have not drawn the inference described by the Opponent. Nonetheless I am bound to consider all of the circumstances in which the Trade Mark might notionally be used[15], including various “supply channels” through which the goods and services might reasonably pass. Where the supply channels of the parties intersect, it is possible that deception or confusion will arise. I begin with the consideration of similar services.

   [15] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411, at [50] wherein French J cited also Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353.

Similar services

1. Section 14(2) of the Act states that services are similar to other services if they are the same as the other services, or of the same description as that of the other services. The expression “of the same description” is a term of art describing the relationship between goods, or between services, such that they would be seen by purchasers as having the same trade origin if sold, or provided, under deceptively similar marks.[16] In MID Sydney Pty Ltd v Australian Tourism Co Ltd[17] the Full Federal Court accepted that, subject to any necessary modification, the principles applicable to determining similar goods also applied to determining similar services. Modifying those principles[18], the relevant considerations include the nature of the services and their respective purposes, the trade channels through which they are provided, whether they are normally provided by the same traders in the same places to the same class of customer, and whether those engaged in their provision are regarded as belonging to the same trade. The High Court, in Southern Cross, further noted that “no single consideration is conclusive in itself”.

   [16] Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246 (FC).

   [17] [1998] FCA 1616; (1998) 42 IPR 561.

   [18] As set out in Jellinek’s Application (1946) 63 RPC 59 and enlarged upon in John Crowther and Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd(‘Southern Cross’) (1954) 91 CLR 592.

2. Some of the services may be easily dispensed with. I am not satisfied that “office activities”, “real estate services”, “telecommunications” or “sporting and cultural activities” are similar to the Opponent’s services in either class 39 or 35. If there is any nexus between them I consider it slight. In respect of the comparison to the Opponent’s class 39 services, office activities, real estate or telecommunications are generally very far removed from transport services and motor vehicle hire. Similarly, although sporting and cultural activities are relatively broad, their subject matter does not ordinarily comprise transport services or motor vehicle hire. In respect of the comparison to the Opponent’s class 35 services, I note firstly that it is not apparent to me that the Opponent does, or intends to, promote any business other than its own. Nevertheless, given section 44 is concerned with notional use and for the purpose of comparison, I do not in any event consider that those who promote or advertise business on behalf of others would be thought to also provide office activities, real estate services, telecommunications or sporting and cultural activities.

3. Additionally I consider it improbable that office activities, real estate services, telecommunications or sporting and cultural activities would be provided, as per the Opponent’s submission, ancillary to a vehicle sharing program (although I observe that these services represent, then, an extraordinarily broad range purportedly to be provided under the Trade Mark).

4. The remaining services in the application to be discussed are “sales of used vehicles”, “insurance services, financial services, monetary affairs, lease purchase financing of vehicles, in particular motor vehicles and commercial vehicles”, “rental of car phones” and “education, training, entertainment”.

5. I will deal with education and training first. The claim for these services is not qualified in any way, and it therefore notionally includes all forms of education and training. It is not uncommon for transport companies to provide training and education, for example Linfox® Operations Training (which incorporates also The National Transport Institute of Australia), the Allied Pickfords® Removalist Training Academy, or Toll® Training Services. For this reason I consider it likely deception or confusion would arise where transport services on the one hand, and education and training on the other, are provided under trade marks all of which consist of, or incorporate, CAR2GO. The ground is therefore established in respect of these services.

6. In respect of entertainment services, I consider them to be similar to promotion (advertising) of business. Promotion of business can take forms ranging from traditional print and electronic media advertisements, to events held at stores, bars, restaurants or nightclubs, to flash-mob campaigns and performances. Particularly in recent years the line between promotional and entertainment services has blurred such that promotion is now a form of entertainment, for example the T-Mobile® ‘Life’s for Sharing’ campaign or Heineken’s® ‘Dropped’ campaign. Given this similarity, and that the respective services are to be provided under substantially identical trade marks, I am satisfied that the ground is established in respect of entertainment.

7. Insurance services, financial services and monetary affairs, insofar as they are in respect of motor vehicle insurance, I consider similar to motor vehicle hire. The provision of insurance is a standard feature of vehicle hire services, and whilst the ultimate provider of the insurance may not necessarily be the provider of the hire car, both services are nonetheless generally provided under the same trade mark and administered by the same representative (or, in other words, the insurance provider is not ordinarily identified to the customer nor is the customer required to deal with any representative other than that of the vehicle hire company in the arrangement of insurance). As such the ground is established in respect of insurance services, financial services and monetary affairs.

8. Similarly the rental of various car accessories is a standard feature of motor vehicle hire. Although car phones are perhaps less common now than they were previously, given the advent of mobile telephones, I consider it likely that potential customers would presume them to be included in the suite of accessories normally offered by vehicle hire companies. Even if rental of car phones were provided as a stand alone service, I consider that such provision under a substantially identical trade mark to that of a vehicle hire business would be presumed to be from the same trade source. The ground is therefore established in respect of this service.

9. Although one may not ordinarily seek hire services from sellers of used vehicles, it is not uncommon for used vehicle sales to be provided by vehicle hire companies. Prominent vehicle hire companies such as Hertz® and Budget® have sales divisions wherein customers may purchase ex rental vehicles. In addition, as with most sellers of vehicles, they offer financing options for such purchases. For these reasons I consider it likely that sales of used vehicles and lease purchase financing of vehicles would be mistakenly attributed to or confused with a vehicle hire provider, particularly where they are provided under substantially identical trade marks, and the ground is therefore established in this respect.

Goods closely related to services

1. French J said in Registrar of Trade Marks v Woolworths Ltd:[19]

   The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related.”

   [19] Registrar of Trade Marks v Woolworths, above n 16.

2. His Honour went on to observe that “the relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” and cited Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co:[20]

   Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.

   [20] [1983] FCA 145; (1983) 1 IPR 265.

3. The delegate in Aussat Pty Ltd, Re[21] suggested the following tests to determine the relationship between goods and services:

   ·     Are the goods and services of matching technical complexity?

   ·     Is the technical training of the people who make the goods or provide the services the same?

   ·     Do the people who make the goods or provide the services belong to the same unions or associations?

   ·     Are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in “vehicle hire services” and the goods “cars”, there are the ancillary personnel common to both, such as car detailers, mechanics, sales persons, credit checkers, and so on which give both the same flavour).

   ·     Do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of services agreement. Conversely, are the goods usually offered as part of a service agreement?

   ·     Is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of common source? (Such as “transportation services” and “vehicles”; or “vehicle hire services” and “vehicles”; or “restaurant and take-away food services” and “food”).

   ·     Does the service consist of altering, matching and/or installing the goods to a customer’s or client’s requirements? (Such as “curtains and furnishings” and “the sewing of furnishings”). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

   ·     Are the goods and services commonly offered by the one company or organisation? (For example, “retail sales” and the equivalent “goods”; or, “telephone communication services” and “telephones”).

   ·     Are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, “advertising services” and “directories”, or “publications”; or “travel agency services” and “publications”; or “telephony services” and “directories”).

   [21] [1993] ATMO 55; (1993) 27 IPR 309.

4. Some of the goods claimed by the Applicant may be easily dispensed with and do not require a great deal of discussion. They are gymnastic and sporting articles and Christmas tree decorations. They have no function in respect of the Opponent’s services and are unlikely to be provided, as per the Opponent’s submissions, ancillary to a vehicle sharing program such as the Applicant’s. As such there is little chance of deception or confusion in respect of these goods.

5. The question is not as straightforward in respect of clothing, headgear and footwear, and games and toys, in particular toy and model vehicles. Such items are commonly used by businesses as promotional merchandise, so whilst a common manufacturer might not be assumed, deception or confusion may arise by virtue of the mistaken belief that the items are promoting the business of the Opponent. This is particularly the case because CAR2GO clearly refers to cars, goods with which the Opponent’s services are connected. The likelihood of deception or confusion is further heightened here by the fact that the parties’ trade marks are substantially identical (except perhaps 1800 CAR 2 GO). Weighing these considerations together, I am satisfied that the ground is established in respect of clothing, headgear and footwear, and games and toys, in particular toy and model vehicles.

6. I turn now to the Applicant’s claim for goods in class 12. I note in particular the comments of the delegate in Aussat relating to transport services and vehicle hire – specifically that there are ancillary personnel common to both “vehicle hire services” and “cars” which give them the same flavour, and that the nature of “transport services” and “vehicle hire services” is such that they would cease to exist without the goods “vehicles”. I note also that at the introduction of trade marks in respect of services, the then Registrar of Trade Marks stated (emphasis added):[22]

   …identical or deceptively similar marks [used] in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributable to the same source. Motor vehicles and vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of “closely related goods and services”…

   [22] F J Smith, “The Trade Marks Amendment Act 1978”, (1979) 53 ALJ 118.

7. Whilst neither of the above is binding they nevertheless give some indication that the provision of vehicles may be considered closely related to the provision of both transport services and motor vehicle hire. Despite this I do not consider that vehicles makers ordinarily provide vehicle hire services, or vice versa. Had I no evidence before me to indicate that the Applicant was itself a manufacturer of vehicles that wished also to provide hire services, it would likely be the end of the matter. However the fact the Applicant does intend to do so (established by its evidence and inferred from its divisional application for class 39 services), and bearing in mind the very high degree of resemblance between the trade marks of the parties, I cannot but conclude that deception or confusion is likely. The same is to be said in respect of apparatus for locomotion on land, which incorporates motor vehicles, and accessories for vehicles, a common component of vehicle manufacture.

8. The provision of apparatus for locomotion by sea or air may be considered closely related to transport services, in that the latter would cease to exist without the former. In addition, given the specialised nature of these goods it is not unreasonable to consider that the maker of the apparatus will also provide related services utilising the apparatus, such as transport services. By way of example Airbus® provides specialised transport aeroplanes which are available for charter, and Kawasaki® produces heavy industry ships and provides associated shipping services.

9. Consequently the ground is established in respect of all of the goods in class 12.

10. The Applicant did not submit that the application could proceed under the provisions of either subsections 44(3) or (4), and there is no evidence before me of use in Australia or other circumstances which would make the application of those provisions appropriate.

11. I will discuss the remaining grounds of opposition only in respect of those goods and services not caught by the opposition under section 44, being gymnastic and sporting articles in class 28, Christmas tree decorations, office activities, real estate services, telecommunications and sporting and cultural activities.

Section 42

1. Section 42 of the Act relevantly provides:

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

…
(b) its use would be contrary to law.

1. In Advantage-Rent-A-Car v Advantage Car Rental Pty Ltd[23] Madgwick J observed that the Registrar must be satisfied the use of a trade mark would (not could) be contrary to law in order for a ground under section 42 to be established. In this respect the Opponent submits that the use of the Trade Mark in Australia would constitute a contravention of section 18 of Schedule 2 of the Competition and Consumer Act 2010, which states “A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive”. Although the Competition and Consumer Act 2010 did not come into force until 1 January 2011, the Opponent submits that it nevertheless is the relevant law because it looks to prospective conduct should the Trade Mark be registered in Australia.

   [23] [2001] FCA 683; (2001) 52 IPR 24 at [28].

1. Wilcox J considered the relevant date to assess section 42(b) in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd[24] and commented that:

   I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was effected.

   [24] [2003] FCA 1502; (2004) 59 IPR 343 at [47].

2. As such, although I bear in mind the Opponent’s submission, I take the relevant law to be the equivalent provisions in sections 52 and 53 of the now repealed Trade Practices Act 1974, in force at the priority date (being the date of filing the application, 10 September 2008):

   Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

   Section 53. A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

   (a)    falsely represent that goods or services are of a particular standard, quality or grade, or that goods are of a particular style or model;

   (b)    falsely represent that the goods are new;

   (c)     represent that goods or services have the sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

   (d)    represent that the corporation has a sponsorship, approval or affiliation it does not have;

   (e)    make false or misleading statements concerning the existence of, or amounts of, price reductions;

   (f)   make false or misleading statements concerning the need for any goods, services, replacements or repairs; or

   (g)    make false or misleading statements concerning the existence or effect of any warranty or guarantee.

Accordingly I will consider the Opponent’s submissions relating to section 18 of Schedule 2 of the Competition and Consumer Act as being in reference to sections 52 and 53 of the TPA.

1. In this regard the Opponent states:

   [T]he use of the Applicant’s Mark in respect of the class of services for which registration is sought would represent to consumers that the Applicant’s services are the same as the Opponent’s services, or are derived from sources associated with the Opponent.

   [T]he use of the Applicant’s Mark in respect of the class of services for which registration is sought represents to consumers that there is some association between the services provided the Applicant’s Mark and Opponent’s services. (sic).

2. To supports these claims the Opponent provided evidence to demonstrate the extent of his trade marks’ reputation, such that “a not insignificant number”[25] of persons would be misled or deceived by the use of the Trade Mark. This evidence comprises sales and advertising figures and statistics relating to website traffic.

   [25] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193, cited by the Full Court in Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; (2008) 79 IPR 174.

3. I consider that some reputation of the Opponent’s trade mark, in respect of motor vehicle hire, is established by his evidence. However, even though the Opponent need not establish any specific degree of similarity between the goods and services of the parties, that reputation is not so extensive that goods and services as disparate as gymnastic and sporting articles, Christmas tree decorations, office activities, real estate services or telecommunications services would mistakenly be believed to emanate from the Opponent. Accordingly I am not satisfied that the use of the Trade Mark upon the goods and services remaining for consideration would amount to either misleading or deceptive conduct or false representation.

4. Accordingly the ground under section 42(b) is not established.

Section 62A

1. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. In this regard the Opponent submits that the subject application “is an attempt to cement the Applicant’s Mark in subordinate classes (when the true intention of use is to support use of the mark under class 39), with a view to somehow supporting its class 39 business in Australia at some later date or creating leverage over the Opponent”, and further that:

   The prosecution of the Application (for the subordinated classes) along with the resubmission of the class 39 application for the identical mark in circumstances where the Applicant knew or ought to have known of the Opponent’s Marks can be classified as unscrupulous, underhanded and unconscientiously in character (sic) [in accordance with Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551, per Dodds-Streeton J at 166].

2. I am not satisfied that the application was made in bad faith. There is nothing to suggest that at the time the application was filed the Applicant knew of, or had any dealings with, the Opponent (and the fact the Applicant registered CAR2GO in Europe in 2001 suggests honest adoption of the trade mark). The Opponent’s submissions appear to go to the subsequent prosecution of the application, which is not under scrutiny and says nothing of the Applicant’s state of mind at the time it filed the application. In short the ground of opposition under section 62A is not established.

Decision

1. Section 55 of the Act provides

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

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

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

   Note:  For limitations see section 6.

2. I am satisfied that the opposition has been established, under section 44, in respect of the following goods and services:

   Class 12: Vehicles, in particular motor vehicles and commercial vehicles, in particular used vehicles, accessories for vehicles in class 12; apparatus for locomotion on land, sea or by air.

   Class 25: Clothing, headgear and footwear.

   Class 28: Games, toys, in particular toy and model vehicles.

   Class 35: Sales of used vehicles.

   Class 36: Insurance services, financial services, monetary affairs, lease purchase financing of vehicles, in particular motor vehicles and commercial vehicles.

   Class 38: Rental of car phones.

   Class 41: Education, training, entertainment.

3. That being the case, I will allow the Applicant fourteen (14) days from the date of this decision to amend its application by deleting those goods and services from it. The goods and services that would remain in the application would then be:

   Class 28: Gymnastic and sporting articles not included in other classes; Christmas tree decorations.

   Class 35: Office activities.

   Class 36: Real estate services.

   Class 38: Telecommunications.

   Class 41: Sporting and cultural activities.

4. If the application is so amended, I direct that it may proceed to registration one month from the date of this decision. In the event that the application is not so amended, I refuse the it in its entirety.

5. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the amendment and registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.

Costs

1. The Applicant has requested costs. However, as neither party has been entirely successful I decline to make an award of costs against either party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Nicole Worth

Hearing Officer

Trade Marks Hearings

13 December 2013