Sykes Enterprises, Incorporated

[2017] ATMO 111

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1727731 (35, 36, 37, 39, 41, 42 & 44) SYKES in the name of Sykes Enterprises, Incorporated

Delegate:	Michael Kirov
Representation:	Applicant: Relied on written submissions prepared by Corrs Chambers Westgarth Lawyers
Decision:	2017 ATMO 111 Ex parte matter pursuant to s 33(4) of the Trade Marks Act 1995: Claimed mark not deceptively similar to prior cited trade marks – claimed mark capable of distinguishing the claimed services - s 41(4) endorsement appropriate. Application accepted.

Background

1. This decision follows from a hearing held at the request of Sykes Enterprises, Incorporated (“the Applicant”) pursuant to s 33(4) of the Trade Marks Act 1995 (“the Act”). The hearing was to contest the assessment made during examination that there were grounds under the Act for rejecting the application detailed below:

Application No:         1727731

Filing Date:                14 October 2015

ServicesClass 35: Customer relationship management services; business performance management services, namely, work force information, quality control information, and knowledge gathering, analysis, assessment, and management services; inventory control and management services; order taking, processing, and fulfillment services; administration, billing, and reconciliation of accounts; providing consumer product information for clients to customers with respect to such clients' products and services via telephone, e-mail, Internet, or any other form of communications media; customer service in the field of clients' products and services; telemarketing services; customer acquisition services, namely, inbound up-selling and cross-selling of clients' products and services; technical and support staffing services; business, business information, business management, business organization, business technology consulting and advisory services

Class 36:Warranty claims administration and processing services; payment processing services

Class 37:Emergency road side services

Class 39:Supply chain, logistics, and reverse logistics services, namely, storage, pickup, delivery, and transportation of documents, packages, parcels, and freight via air, ship, rail, truck, or other ground carriers; arranging for and coordinating storage, pickup, delivery, and transportation of documents, packages, parcels, freight via air, ship, rail, truck or other ground carriers; return management services, namely, management of returned merchandise

Class 41:Education and training services, namely, providing courses and instruction and developing instructional materials in the field of business management, career awareness, lifelong development, industry skills standards, information technology skills, and linguistic skills

Class 42:Technical support services, namely, troubleshooting of and advising with respect to computer hardware, computer software, communications equipment, communications services, Internet access technology, and Internet portal usage issues

Class 44:Providing health care and medical information

(“the Designated Services”)

Trade Mark:              SYKES  (“the Claimed Mark”)

1. The grounds for rejection raised during examination were based on ss 41(4) and 44(2) of the Act. Insofar as relevant, ss 41 and 44 are set out below:

   Section 41: Trade mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from goods or services of other persons.

   Note:  For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)…

   (4)This subsection applies to a trade mark if:

   (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances.

   Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b) the time of production of goods or of the rendering of services.

   Note 2:  For goods of a person and services of a person see section 6.

   Note 3:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)…

   Section 44: Identical etc. trade marks

   (1) …

   (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.

   (3) If the Registrar in either case is satisfied:

   (a) that there has been honest concurrent use of the 2 trade marks; or
   (b) that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:  For limitations see section 6.

   (4) …

2. The s 44(2) ground cited registrations 987958 and 987960 (collectively, “the Cited Marks”), which are detailed below:

Registration No:         987958

Filing Date:                6 February 2004

ServicesClass 37: Rental and hiring services in this class including of temporary fencing and barricades, excavation equipment and pipeline testing equipment; rental and hiring services in relation to construction equipment and machinery including compaction equipment, access equipment, compressors, welding equipment, loaders, trenchers, cleaning equipment, concrete and masonry equipment, electric tools, hand tools, lifting equipment, plumbing and pipe equipment, fencing equipment, scaffolding and ladders, dewatering equipment, laser equipment used in excavating, construction, plumbing and civil engineering; repair, installation and maintenance services; cleaning services

Class 39:Rental and hiring services in relation to forklifts, material handling equipment, traffic management and control equipment, storage containers

Class 41:Training and educational services; rental and hiring services in this class

Class 45:Rental and hiring services in relation to crowd control equipment

(“the Cited Services”)

Trade Mark:              

Registration No:         987960

Filing Date:                6 February 2004

ServicesClass 37: Same as registration 987958

Class 39:Same as registration 987958

Class 41: Same as registration 987958

Class 45:Same as registration 987958

Trade Mark:              

1. In the first of two adverse reports on application 1727731 the examiner concerned considered the Claimed Mark:

   …closely resembles the [Cited Marks] because they all contain the word SYKES as a prominent, memorable feature.  I do not consider the overall differences between the trade marks to be sufficient to prevent confusion. Consumers are likely to assume that the goods/services covered by your trade mark and the [Cited Marks] are from the same trader, or are otherwise related.

2. The examiner specified the Applicant’s services in Class 37 (generally) and Class 42 (insofar as they include “various computer hardware/software support services”) as being similar to the “repair, installation and maintenance services” in Class 37 covered by the Cited Marks and the Applicant’s “training and educational services” in Class 41 to be the same as the similarly described Class 41 services of the Cited Marks.

3. The objection taken under s 41(4) was that:

   Your trade mark is, or has as its main feature, the word SYKES.  This word is also the surname of many Australians.

   People will often provide goods and/or services using their surname.  The more common a surname is, the more likely it is that other traders may wish to use.

   Other traders with this surname should be able to use it in connection with goods or services similar to yours.

   As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll.  The surname in your trade mark occurs 1923 times.  It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.

4. In response the Applicant submitted evidence of use of the Claimed Mark in declarations made by James T. Holder and Bhramar Gupta on 2 and 3 May 2016 respectively.  The Applicant’s attorneys’ accompanying submissions also highlighted the Applicant’s registration 1589671, which dates from 6 November 2013 and covers the identical services as application 1727731, for the mark shown below:

(“the SYKES Logo”)

1. Registration 1589671 is endorsed, “Evidence and/or other circumstances provided under subsection 41(4).” The Applicant’s attorneys pointed out that the essentially identical evidence of use was filed to overcome the same citation and registrability objections then taken against registration 1589671 as are now taken against application 1727731. Referring to that evidence, the attorneys said with respect to the s 41(4) objection:

   The Applicant submits that its trade mark should be accepted under section 41 because it is to some extent inherently adapted to distinguish the Applicant’s services, and it does in fact and will distinguish those services as being those of the Applicant.

   The Applicant’s evidence shows that it has been trading in Australia for over 5 years, after acquiring a business which by that time had been trading in Australia for 16 years.  The Applicant’s business in Australia is of considerable size, with three separate centres in New South Wales and Queensland, and approximately 600 Australian employees.  The size of the Applicant’s business in Australia is also indicated by the revenue earned from its Australian operations, which has grown from US$18.6 million in 2010 to US$33.1 million in 2014.

   While the Applicant has a significant presence in Australia, and has had for over 5 years, the size and scope of its business internationally is even more impressive.  The Applicant began operating under its SYKES brand in the United States in 1977, before transforming its business into its current form in 1992 and going public in 1996.  Since that time, the Applicant has grown into a significant global business.  The Applicant presently has 67 centres across 6 continents and 21 countries, and employs over 50,000 people.  The Applicant’s global business has reported annual revenue of over US$1 billion for every year since 2010.

   In Australia and around the world, the Applicant promotes its services to a broad range of national and international businesses across a range of sectors.  Across its global operations, including in Australia, the Applicant is known by its SYKES brand which is particularly prominent in its day-to-day operations and in its marketing activities.  Although the volume of the Applicant’s advertising may not be as extensive as might possibly be expected from businesses of its size in other sectors and industries, the nature of the Applicant’s business and sophisticated client-base means that qualitative, business-to­business relationship building are more important than simple brand promotion.  The Applicant’s worldwide reputation is particularly important to the Applicant’s marketing of it services in Australia.

   The Applicant therefore submits that, to the extent that the Examiner does not consider that the Applicant’s trade mark is sufficiently inherently adapted to distinguish the Applicant’s services, the evidence submitted by the Applicant demonstrates that the trade mark does and will distinguish its services from the services of other traders.

2. As regards the Cited Marks, the Applicant’s attorneys submitted the Claimed Mark was neither substantially identical with, nor deceptively similar to, these when compared as wholes, particularly given the relatively low inherent distinctiveness of the name “Sykes” shared by the marks.

3. A second adverse report issued maintaining both grounds for rejection. As regards the s 44(2) ground, the examiner wrote:

   You submit that the citations should be reconsidered, because you consider there to be sufficient differences between the cited trade marks, SHORCO SYKES and COATES SHORCO SYKES, and the plain word SYKES, which is your client’s trade mark.  You draw attention to the fact that the examiner of [the SYKES Logo] (which contains additional bolding and an underline) withdrew these citations, after the same submissions.  I note that your argument hinges on the fact that SYKES was also subject to a surname objection, and is therefore, in your view, not a particularly distinctive feature.  However, after considering your arguments and consulting with my principal examiner, I remain unpersuaded.  While it is true that SYKES is a relatively common surname, and the additional words COATES (also a surname) and SHORCO (which suggests a shoring company-which is actually the case) add some extra content to the trade mark, I do not believe this sufficient, overall, to eclipse the plain word SYKES.  I should also remind you that your argument regarding the differing representation of the word SYKES does not apply in the current case, as all of these trade marks are rendered in plain text.  While the stylisation of the [SYKES Logo] could be seen to add a point of difference when comparing the trade marks, the fact that the [Claimed Mark] lacks any additional material is problematic.  The services covered by the respective trade marks are also relevant (although I note that you don't mention this). As outlined in my first report, the broader claims of the earlier trade marks cover services which are identical, in some cases, to those covered by your client’s trade mark.  Namely, the claims relating to training and education services in class 41 and repair, installation and maintenance services in class 37, which effectively encompass your client’s narrower claims in these classes.  Taking account of these various factors, I am maintaining the section 44 ground for rejection.

4. As to the s 41(4) ground, the examiner also sought to distinguish the Claimed Mark from the registered Sykes Logo, stating:

   You present a similar argument in respect of your client’s evidence of use in relation to the section 41(4) ground for rejection. That is, that the acceptance of the [SYKES Logo] based on the same evidence, also justifies the acceptance of the [Claimed Mark]. You submit that “there is no real difference in the use of the word in the stylised form or word mark SYKES”. With respect, I disagree, and I have already discussed this in relation to the section 44 matter. Your statement also raises the question of why your client is taking the trouble to apply for both versions of the trade mark, if they believe that there is no functional difference between them? The lack of any additional material in the current version has the effect of strengthening the ground for rejection. This is because a common surname with some ‘get up’ will inevitably have a greater capacity to distinguish the relevant goods/services than a plain word version, even if both are subject to a section 41(4) ground for rejection. What this means is that stricter approach is likely to be warranted for the latter version, when assessing evidence of use submissions.

5. The examiner was otherwise critical of the evidence of use relied upon, considering it to be too limited in scope and insufficiently documented, and because,

   Most examples of the trade mark are the stylised version rather than the plain word version.  As noted above, these are essentially different trade marks, and use of the stylised version is not use of the trade mark as applied for.

6. The Applicant subsequently requested a hearing by way of written submissions and the matter has now been allocated to me as a delegate of the Registrar to decide.  The Applicant’s written submissions (“the Submissions”) were prepared by its attorneys, Corrs Chambers Westgarth, on 25 July 2017.

Submissions

1. The Submissions reiterate the Applicant’s central contention, namely that:

   6. The Applicant is the registered owner of the [SYKES Logo] in respect of the same services in respect of which registration of the [Claimed Mark] is sought (trade mark no. 1589671).

   7. The same grounds for rejection as are raised against the [Claimed Mark] were raised against the [SYKES Logo].

   8. Those grounds for rejection were overcome following the filing of evidence that was similar to the evidence set out in the Holder Declaration and the Gupta Declaration, and the filing of written submissions.  The [SYKES Logo] was entered on the Register on 1 October 2015.

   9. [The Claimed Mark] and the [SYKES Logo] are substantially identical. The relevant services are identical.  The evidence shows that the Applicant has used both marks generally to the same extent as one another.

   10. The Applicant submits that the [Claimed Mark] ought to be accepted on the same basis that the [SYKES Logo] was correctly accepted and registered.

2. The Submissions go on to make several further points.  They firstly highlight that a surname such as “Sykes” does contain a relatively significant degree of inherent adaptation to distinguish the Designated Services.  Indeed, the Submissions note:

   18.(a) The [Designated Services] are relatively uncommon.  Some of the [Designated Services] are narrowly particularised (e.g. “business performance management services, namely, work force information, quality control information, and knowledge gathering, analysis, assessment, and management services”), others are services that are commonly consumed, but which are provided by a relatively small number of large businesses (e.g. “Emergency road side services”).

   (b) It is not common for other traders in the Applicant’s industry to use their surname as a trade mark.

   (c) The Applicant is not aware of any other trader in Australia using SYKES as a trade mark in relation to services that are the same as the Applicant’s services.

   (d) The name “Sykes”, while occurring on the electoral roll more than the arbitrarily designated 750 times (i.e. 1,923 times), is nevertheless relatively uncommon in light of the fact that there are many names with SFAS values in the tens and hundreds of thousands...

1. The Submissions contend that insufficient regard was had, in terms of s 41(4)(b)(i) of the Act, to the “extent” to which the Claimed Mark is inherently adapted to distinguish the Designated Services, arguing that the name “Sykes” falls toward the higher end of the range. Citing my decision in Re Abalner Pty Ltd[1] as an example, they say:

   …[I] noted that the surname “Blair”, which appears on the Australian electoral roll 3,094 times, “is by no means as common” and therefore “contains relatively greater inherent adaptation to distinguish the claimed services” than other more common surnames (at [11]).  On that basis, “Sykes” is significantly more inherently distinctive than “Blair”, and the comments made by the Hearing Officer regarding the extent of inherent distinctiveness of “Blair” apply with significantly more force with respect to “Sykes”.

   [1] (2015) 114 IPR 171.

2. Noting that ss 41(4)(b)(ii) and (iii) then require consideration of “the use or intended use of the trade mark, and other relevant circumstances,” the Submissions further contend that the assessment of the Applicant’s evidence of use was flawed:

   27. First, the Examiner has taken an overly quantitative approach to the evidence, in spite of Ms Gupta’s evidence that a qualitative approach to marketing is most appropriate and effective in the Applicant’s industry (Gupta Declaration at [10])…

   29. Secondly, the Examiner’s reference to the “many” examples of use of the [SYKES Logo] in the evidence indicates that she has given insufficient regard to the many examples of use of the [Claimed Mark].

   33. Thirdly, the Examiner has seemingly dismissed the Applicant’s continuous use of the [Claimed Mark] in Australia since 2010.  [Annexed to the Submissions are “a series of printouts from the Wayback Machine demonstrating unequivocally that the Applicant has been using the [Claimed Mark] continuously since at least 1998.”]

   37. Fourthly, the Examiner appears to have a mistaken understanding of what constitutes use in the course of trade in relation to certain goods or services.

   42. Fifthly, the Examiner appears to have considered the evidence on the basis of a mistaken understanding of the nature of the [Designated] Services.

   45. Sixthly, the Examiner has incorrectly dismissed or discounted evidence of use of the [SYKES Logo] and of the Applicant’s name, “Sykes Enterprises”.[2]

   [2] The Submissions acknowledge that “the Applicant’s use of its name ‘Sykes Enterprises’…does not constitute use of the [Claimed] Mark as a trade mark,” but contend nevertheless that it “undoubtedly contributes significantly to the public recognising the [Claimed] Mark as a trade mark that distinguishes the [Designated] Services from the services of other traders” and is accordingly an “important circumstance to be considered under s 41(4)(b)(iii).”

3. The Submissions elaborate upon these six points in some detail before again emphasising the direct relevance of the Applicant’s use of the SYKES Logo.  While the significance of this use was dismissed in examination because the Claimed Mark was considered relevantly different from the SYKES Logo, the Submissions argue the use should in any event be given due weight as a relevant “other circumstance” in terms of s 41(4)(b)(iii), along with continuous use of the Applicant’s corporate name, “Sykes Enterprises,” its overseas use of, and registrations for, the Claimed Mark and “the size and extent of the Applicant’s business in Australia and around the world.”

4. As regards the s 44(2) ground for rejection, the Submissions argue that, as the examiner of registration 1589671 has already found in the case of the SYKES Logo, the Claimed Mark is not deceptively similar to either of the Cited Marks, adding:

   64. The only relevant difference between the [Claimed] Mark and the SYKES Logo is the fact that the SYKES Logo constitutes the word “SYKES” in a particular style of representation, whereas the [Claimed Mark] is any style of representation of the same word.  However, this point of difference is insubstantial, given that the style of representation in the SYKES Logo– both in terms of font and the horizontal line – is so plain.

5. The Submissions conclude with an appeal that s 44(3) of the Act, the honest concurrent user provision, be invoked in the Applicant’s favour if its case under s 44(2) should fail.

Discussion

1. I am in broad agreement with the above matters I have highlighted from the Submissions. I agree that inherent adaptation to distinguish must be seen as falling within a continuum, as it were, with some trade marks, (such as the Claimed Mark in this case, being the relatively uncommon surname “Sykes”), being relatively higher on the scale. I agree too that the nature and relative sophistication of the Designated Services is relevant to assessing the Claimed Mark’s inherent capacity to distinguish those services. That only a large enterprise (such as the Applicant) could realistically provide many of the Designated Services, (and there being no suggestion others have ever done so under the name/trade mark Sykes), is accordingly relevant in this case. The Applicant is also right in my view to emphasise in the Submissions that s 41(4) requires consideration of the Claimed Mark’s capacity to distinguish the relevant services at some future time, not that it be presently distinctive of all of the services now claimed in the application.  In this regard the fact that, if accepted, the Claimed Mark had already become distinctive of some of the Designated Services, is a strong indication on the face of it that the mark is at least capable of distinguishing the related services claimed.

2. Moreover, I agree with the Applicant that the Claimed Mark is substantially identical to the SYKES Logo and thus that use of either variant is relevant to assessing the Claimed Mark’s ongoing capacity to distinguish.  The generally accepted test for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd,[3] where his Honour said at 528:

   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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

   [3] (1963) 1B IPR 523.

3. The Claimed Mark and the SYKES Logo are set out side by side below:

   SYKES                

4. The marks do not to my mind differ in material particulars. Both consist of one essential feature, the name “SYKES” and it is obviously by this name that both marks would be recognized, recalled and described. The “differences” neither affect the meaning of the mark nor do they significantly alter the effect of the mark on the viewer or interlocutor. Any trifling difference in the scripts used is of no relevance whatsoever. The underlining of the name in the SYKES Logo is likewise an insignificant addition, one anticipated, I think, by s 7(1) of the Act as “not substantially affect[ing] the identity of the trade mark.”

5. Moreover the Claimed Mark and the SYKES Logo would in principle, as I see it, qualify under s 51(1) of the Act for registration as a series. Such would be consistent with the often cited decision by the Assistant Registrar in Lynson (Aust) Pty Ltd’s Appn[4] that the trade marks shown below qualified for registration as a series under s 39(1)(c) of the Trade Marks Act 1955 because “they resemble each other in material particulars” and “differ in respect of … matter which is not distinctive and does not substantially affect the identity of the mark”:

LYNSON             

[4] (1987) 9 IPR 350.

1. I accordingly agree with the Applicant that for the purposes of s 41(4)(ii) of the Act it is proper to consider the use enjoyed by either the Claimed Mark or the SYKES Logo where relevant.  I also think the evidence of use provided is significant in demonstrating that the Applicant’s business is a substantial, multi-national enterprise with large capital and human resources already deployed in many countries (some 50,000 employees worldwide, 600 in Australia) and with significant and growing investment in Australia since 2011.

2. Taking all the foregoing into account I am on balance satisfied the name “Sykes” is likely to achieve the Applicant’s intention of distinguishing, at least in future, its relatively specialized services of interest amongst relevant Australian consumers. I would therefore favorably reconsider the s 41(4) ground for rejection and, in line with registration 1589671 for the SYKES Logo, add the same endorsement:

   Evidence and/or other circumstances provided under subsection 41(4).

3. In line with the Applicant’s request in the Submissions that, “the [Claimed Mark] ought to be accepted on the same basis that the SYKES Logo was correctly accepted and registered” I have therefore formally endorsed the application accordingly.

4. As to the s 44(2) ground for rejection, the identical two citations were originally taken against registration 1589671 but were withdrawn based solely on the Applicant’s then submissions. That is to say the Applicant satisfied the examiner concerned that the SYKES Logo and the Designated Services were sufficiently different from the Cited Marks and the Cited Services respectively as to obviate any significant risk of deception or confusion arising. Accordingly registration 1589671 bears the s 41(4) endorsement described above but it is not endorsed in relation to the original (withdrawn) s 44(2) ground for rejection.

5. I do not think it would be appropriate to take a different view in the case of the present application. I accordingly confirm that the s 44(2) citations are withdrawn based on the contents of the Submissions.

Decision

1. I have favorably reconsidered the Cited Marks and found that the Claimed Mark is capable of distinguishing the Designated Services in terms of s 41(4) of the Act. I have endorsed the application accordingly and its proposed acceptance for registration may accordingly now be advertised.

Michael Kirov
Hearing Officer
Trade Marks Hearings
4 October 2017