Tax Tips Pty Ltd v Xact Taxation Pty Ltd - [2016] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Tax Tips Pty Ltd to registration of trade mark application 1575702 (35, 36) - TAX REFUND ON SPOT (Logo) - filed in the name of Xact Taxation Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Michelle Gorton, solicitor, of Gorton IP

Applicant: Michael Martin, trade mark attorney, of Acumen IP

Decision:

2016 ATMO 25

Trade Marks Act 1995: section 52 opposition to registration; section 60 – reputation of Opponent’s Trade Mark – grammatical inaccuracy of Trade Mark and repetition of key themes of Opponent’s trade mark – likelihood of confusion – section 60 established.

Registration refused.

Background

In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Xact Taxation Pty Ltd (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No: 1575702

Priority Date: 20 August 2013

Services:Class 35: Company office secretarial services; Management of business offices for others; Office administration services (for others); Office functions; Office management services (for others); Providing information, including online, about advertising, business management and administration and office functions; Advice on tax preparation; Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax advice (accountancy); Tax assessment (accountancy) consultancy; Tax assessment (accounts) preparation; Tax consultancy (accountancy); Tax consultations (accountancy); Tax planning (accountancy); Tax preparation; Tax return advisory (accountancy) services; Tax return preparation; Tax services (business management and accountancy services); Taxation (accountancy) advice; Taxation (accountancy) consultancy.

Class 36: Financial advice relating to taxation; Financial advisory services relating to tax; Financial advisory services relating to taxation; Income tax financial advice; Provision of tax advice (financial); Tax advice (financial); Tax consultancy (financial); Tax consultations (financial); Tax financial planning; Tax returns financial consultancy; Tax services (financial); Taxation financial consultancy services; Taxation financial planning services; Acquisition for financial investment; Administration of financial affairs; Advisory services relating to (financial) risk management; Advisory services relating to financial investment; Advisory services relating to financial matters; Advisory services relating to financial planning; Business liquidation services (financial); Computerised financial services; Conducting of financial transactions; Consultation services relating to financial matters; Consultations (Financial); Financial analysis; Financial analysis for the purposes of identifying fraudulent financial activity; Financial appraisals; Financial assessments; Financial asset management; Financial assistance; Financial banking; Financial brokerage; Financial business appraisals; Financial clearing house service; Financial consultancy; Financial consultation services; Financial credit services; Financial database services; Financial economic advisory services; Financial economic analysis; Financial evaluation (insurance, banking, real estate); Financial evaluation of livestock; Financial evaluation of standing timber; Financial evaluation of wool; Financial evaluations; Financial exchange services; Financial fund management; Financial guarantee assessment services; Financial guarantee services; Financial information; Financial information services; Financial intermediary services; Financial investigation services; Financial investment; Financial investment advisory services; Financial investment fund services; Financial investment management services; Financial investment research services; Financial leasing; Financial lending; Financial loan services; Financial loss management; Financial management; Financial management advisory services; Financial market information services; Financial modelling services; Financial payment services; Financial planning; Financial risk management; Financial savings services; Financial securities; Financial services; Financial sponsorship; Financial transaction services; Financial underwriting; Financial valuation services; Financial valuations; Independent financial planning advice; Insolvency services (financial); Management of financial assets; Monitoring of financial portfolios; Organising financial collections; Preparation of financial analyses; Preparation of financial balance sheets; Preparation of financial reports; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of financial information; Provision of financial securities; Provision of information relating to financial services.
(‘the Applicant’s Specification’)

Trade Mark:

(‘the Trade Mark’)

Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 February 2014.
On 18 April 2014, Tax Tips Pty Ltd (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark. Thereafter, the opposition has followed the timetable set out below:
19 May 2014 – Statement of Grounds and Particulars filed by Opponent asserting:[1]
[1] Grounds not pursued by the Opponent at the hearing of the matter have been omitted.
Opponent has earlier use of the same/similar trade mark - Section 58A
relying on its claimed use of the trade mark subject of 1575311 since 1992 in respect of similar services.
Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60
The Opponent has acquired a strong reputation in the TAX REFUNDS ON THE SPOT trade mark in Australia in relation to the Classes 35 and 36 services (under [the Trade Mark]) since 1992. The Opponent is also the owner of Registration No 1575311 for TAX REFUNDS ON THE SPOT Logo in Classes 35 and 36 which has acquired a strong reputation in Australia since 1992.
30 May 2014 – Notice of Intention to Defend filed by the Applicant.
3 September 2014 – Evidence in Support filed by the Opponent:
Declaration of Ross Spiro Williams, director of the Opponent, made on 2 December 2014 with Annexures 1 to 81.
19 November 2014 – Evidence in Answer filed by the Applicant:
Declaration of Presh Batra, General Manager of the Applicant, made on 17 November 2014 with Annexures 1 and 2.
23 March 2015 – Evidence in Reply filed by the Opponent.
Declaration of Ross Spiro Williams made on 23 March 2015 with Annexures 1 and 2.
Both parties elected to be heard and appeared before me, a delegate of the Registrar of Trade Marks, in Canberra on 12 April 2016. Ms Michelle Gorton, solicitor, of Gorton IP appeared on behalf of the Opponent. Mr Michael Martin, trade mark attorney, of Acumen IP appeared on behalf of the Applicant.

Onus & Relevant Date

5. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities[2].

[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156.

6. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[3].

Evidence

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

In Support

In his first declaration Mr Williams explains that in 1992 the Opponent was the first to offer a service by which claimants for tax refunds from the Australian Taxation Office could be issued (by the Opponent) with their refund within one hour of lodging their claim. The Opponent used the trade mark appearing below in relation to that service:
open paint

(‘the Thought Bubble Trade Mark’)

It is not explicitly stated by Mr Williams but I infer from the Opponent’s evidence that the scale of the Opponent’s operation has grown from one or two offices in 1992 in suburban Sydney (probably Bondi Junction and shortly thereafter in Parramatta or Kogarah) to have additional offices at Sutherland, Penrith, Campbelltown, Blacktown, Wollongong, and Miranda before the relevant date. Additionally, although it is also not explicitly stated by Mr Williams, I gather that the nature of at least a part of the Opponent’s business method is as a franchisor and that some of the aforementioned offices of the Opponent are run by franchisees.
The Thought Bubble Trade Mark’ at [7], above, was used consistently by the Opponent in relation to its services from around 1992 until around 2002 or 2003 when it was updated to that below:

(‘the Opponent’s Trade Mark’)

The Opponent used the Opponent’s Trade Mark from at least 2003 through to the relevant date albeit occasionally (in newspaper advertisements) with the words ‘Tax Refunds on the Spot’ appearing alongside the cartoon kangaroo rather than inside the speech bubble as in the example below:
The use by the Opponent of the Opponent’s Trade Mark has been on all of its stationery (including cheques), its website, and within Yellow Pages advertisements run by the Opponent’s central office – Yellow Pages advertisements placed by the Opponent’s branch offices do not feature the Opponent’s Trade Mark. Mr Williams’s claims as to the use of the Opponent’s Trade Mark are well supported with printouts from Wayback Machine (an Internet archive at web.archive.org) and by proofs of advertisements which appeared in Yellow Pages. These supporting documents corroborate and give weight to other materials annexed to Mr Williams’s declaration where the dates are not immediately apparent or are handwritten onto those materials.
That said, I observe that Mr Williams’s declaration is drafted as if the trade mark upon which the Opponent relies is the plain words ‘TAX RETURNS ON THE SPOT!’ which I advised Ms Gorton at the hearing appears to be lacking inherent adaptation to distinguish and accordingly unlikely to be (on its own) the basis of a successful opposition. Ms Gorton’s submissions encompassed both the Opponent’s Trade Mark and the ‘TAX RETURNS ON THE SPOT!’ (words) trade mark.
Mr Williams supplies annual ‘sales figures’ for the years 1992 through to 2013 and details of advertising expenditure for the same years. In regard to this Mr Williams states:
The forms of advertising used by my Company to advertise the TAX REFUNDS ON THE SPOT! trade mark in relation to the Services of Interest in Australia include brochures, invoices, letterheads, street signs, office signs, television, radio, cinema, magazines, Yellow Pages Telephone Directory, our website, , Google and various other websites on the Internet.
The individual branches also organize their own advertising in addition to the above.
The magazines my Company has chosen to use to advertise the TAX REFUNDS ON THE SPOT! trade mark in Australia are as follows:
• Rugby League Week
• ACP Magazines
• Sport Magazine
• Bauer media magazines (2006 – 2014)
My Company has also chosen to advertise in a number of newspapers including, but not limited to, The Daily Telegraph, the Wentworth Courier, Leader newspaper, the Courier Mail, and most other local newspapers around the local areas surrounding each of my Company’s locations in NSW.
Annexed and marked as Annexure 75 are copies of print advertisements showing use of the TAX REFUNDS ON THE SPOT! trade mark in relation to the Services of Interest placed in the above newspapers from 1996 to 2010.
My Company has also advertised the TAX REFUNDS ON THE SPOT! Trade mark in Australia on television from 2001 to 2014 on all the major stations. A copy of one of the television advertisements used by my Company is shown on the website. To view the advertisement, the link is on the top right hand side of our website.
Advertisements just like the one outlined in paragraph 22 above have been shown in cinemas during the advertisement period before the movie starts to promote the TAX REFUNDS ON THE SPOT! trade mark. The advertising was conducted through Hoyts Media and Val Morgan & Cinema in 2007, 2013 and 2014.
The annexures to Mr Williams’s declaration are, in the main, as corroborative of the advertising of the Opponent’s Trade Mark as they are of the TAX REFUNDS ON THE SPOT! (words) trade mark.
While Mr Williams claims use of the Opponent’s Trade Mark throughout Australia via clients’ access to the Opponent’s services over the Internet, I do not find this claim to be well supported within the supporting documents and to be at odds, somewhat, with the more obvious spread of the Opponent’s local offices in Sydney suburbs and the subsequent inference of localized provision of the Opponent’s instant tax refund services.

In Answer

Mr Batra’s declaration is largely submissions and a critique of Mr Williams’s declaration. I weight that portion of Mr Batra’s declaration accordingly. Annexure 1 of Mr Batra’s declaration contains the Applicant’s business card, a marketing flyer, the Applicant’s website address at ASIC business name registration record, copy of Australian Taxation Office Tax Agent Portal, and extract from Register of Tax Practitioners Board.
Annexure 2 to Mr Batra’s declaration contains various social media and other Internet printouts containing references to the Opponent and its services by reference to the indicium ‘tax refunds on spot’ or the address ‘taxrefundsonspot.com.au’.
Mr Batra concludes by stating:
In short, if our trademark application is rejected by IP Australia and objection of [the Opponent] is allowed, then [the Opponent] will get exclusive rights to offer “Tax refund on the spot” service. No Other accounting firm will be allowed to offer this service. [The Opponent] will restrict all accounting firms to offer “Tax refund on the spot” service. Customers will be forced to use [the Opponent’s] “Tax refund on the spot” service. This will be against open competition and against consumer interest.
Our trademark is in line with Trade Marks Act which says that descriptive words or phrase will usually become registrable if it is combined with registrable design or logo. Clearly, Our Trademark is also not in conflict with [the Opponent’s] trademark. I would request IP Australia to accept our trademark application and reject the objection by [the Opponent].
Of course, the riches of the English language are open to any trader to describe their similar service as offering ‘One hour tax refunds’, ‘Instant tax refunds’, ‘Tax refunds in a flash’, or ‘Immediate tax refunds’.

Evidence in Reply

Mr Williams’s second declaration is largely submission evidence which critiques Mr Batra’s criticisms of Mr Williams’s first declaration. I weight this portion of Mr Williams’s second declaration accordingly. Mr Williams’s second declaration adds confirmation of the location of the Opponent’s offices and corroborative material concerning the Opponent’s advertising under the Opponent’s Trade Mark which is outlined above.
Before discussing the ground under section 60, I note that the Applicant’s website to which I am referred reveals that it has two offices, one at 6 Main Street, Blacktown, and the other at 247 Church Street, Parramatta. I note now that the evidence shows that Opponent has an office at 64-70 Main St, Blacktown, and at 262 Church St, Parramatta.

Section 60

Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
The initial step under section 60 is to consider whether the Opponent’s Trade Mark has a reputation in Australia. A necessary subset of this consideration is an assessment of whether the Opponent’s use of the Thought Bubble Trade Mark contributed to any reputation that the Opponent’s Trade Mark might have.
Subsection 7(1) of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The expression ‘substantially affect the identity’ resounds with the similar expression within section 44 of the Act ‘substantially identical’. The consideration of whether the use of the Thought Bubble Trade Mark is a use of the Opponent’s Trade Mark is thus akin to the familiar assessment of whether two trade marks are substantially identical albeit the decision of the Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[4] indicates that subsection 7(1) is more broadly applied than that in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[5]:
[4] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.
[5] [1963] HCA 66; (1963) 109 CLR 407 at [12].
The trade marks in question appear side by side below:
The essential features of the above trade marks are a cartoon kangaroo carrying a wad of banknotes, with a thought/speech bubble containing the words ‘Tax refunds on the spot’. Although the kangaroo within the Thought Bubble Trade Mark is carrying a briefcase on which is emblazoned the uppercase word ‘TIP’, I do not consider that the presence or absence of the briefcase significantly detracts from the total impression of resemblance between the trade marks of the Opponent. I therefore conclude that the extent of the use made by the Opponent of its Thought Bubble Trade Mark contributes to whatever reputation the Opponent’s Trade Mark might have.[6]
[6] See also the decision of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381.
What is ‘reputation’? In McCormick & Co Inc v McCormick[7] (‘McCormick’) Kenny J said:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[7] 2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
Also, Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[8] (albeit in relation to paragraph 28(a) of the, now repealed, Trade Marks Act 1955) said that the reputation required to be demonstrated was:
… one of which a significant number of persons were aware … What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[8] [2000] FCA 1587 at [91]; (2000) 50 IPR 1.
I consider that it is reasonable to assume that the relevant purchasers of the Opponent’s services are those individuals who wish to have a speedy tax return. The nature of the Opponent’s advertising and the media in which it appears both suggest that the people who avail themselves of the Opponent’s services under the Opponent’s Trade Mark are people anxious to access their tax refunds immediately. In Kosciuszko Thredbo Pty Ltd v ThredboNet Marketing Pty Ltd[9] Siopis, Rares & Katzmann JJ referred to Thomas Montgomery v Thompson[10] (‘Stone Ales’):
There, Lord Macnaghten, with his customary pungency, discussed the terms of an injunction granted against a fraudulent trader who had set up a brewery business at the town of Stone. The plaintiff had for a century carried on its business there and had for many years been famous for producing ales known as “Stone Ales”, a name the defendant applied to the products he produced “in the hope of reaping where he had not sown” (at 223). His Lordship said of the defendant (at 225):
It would have been impossible for him to have called his ales “Stone Ales,” and to have distinguished his ales from those of the plaintiff. Any attempt to distinguish the two, even if honestly meant, would have been perfectly idle. Thirsty folk want beer, not explanations. If the public get the thing they want, or something near it, and get it under the old name – the name with which they are familiar – they are likely to be supremely indifferent to the character and conduct of the brewer, and the equitable rights of rival traders.
[Stress added]
[9] [2014] FCAFC 87 at [45].
[10] [1891] AC 217.

Here also I keep in mind that it is apparent that the Opponent’s reputation is likely to be confined geographically by the nature of its operations within the Sydney area. However, I note that the Applicant’s operations are similarly confined and not only may but do occur within the same two suburbs within which the Opponent has offices and within the same two streets as those within which the Opponent has offices.
As to the assessment of reputation, in McCormick, Kenny J said at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
In McCormick Kenny J also said at [85]:
As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the `esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
The extent of the Opponent’s advertising its services under the Opponent’s Trade Mark is outlined above. I will mention that the Opponent has also advertised on radio but that, since the Opponent’s Trade Mark is not seen on radio, this advertising contributes to reputation only inasmuch as the repetition of the words ‘Tax refunds on the spot’ might call the Opponent’s Trade Mark to mind amongst those people already familiar with it. The Opponent has also provided sales figures and I would assess these as being strong. Indeed the Applicant in his declaration states:
[The Opponent] started in 1991 and operating for last 20 years and has 9 branches. This means that [the Opponent] has massive client base. [The Opponent] has millions of Dollars in turnover and they have spent millions in Advertisement and they are in operation for last 20 years, clients know very well their office location and identify [the Opponent] with their unique trademark.
In view of the foregoing, I would assess that the Opponent’s reputation is strong within the Sydney region.
It is convenient to dispose of certain of the Opponent’s submissions about the likelihood of confusion which, in my consideration, go to the principle in Australian Woollen Mills Ltd v F S Walton & Co Ltd[11] (‘Australian Woollen Mills’) enunciated by Dixon J and McTiernan J:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive .... In the present case it has caused a prolonged and expensive inquiry into the states of mind, motives and intentions of three people whose combined judgment decided that the company should adopt the trade brand and description complained of. This in turn necessitated an investigation of the steps by which the picture was obtained, considered and adopted and what was said and done by a number of persons in relation to the subject....
[11] [1937] HCA 51; (1937) 58 CLR 641 at 657.
Here the Opponent drew my attention to its perceptions of the similarities between the trade marks of the parties and the coincidence of the Applicant opening offices on the same streets as those within which the Opponent has offices.
However, I am mindful that it has been said[12] (albeit in relation to ‘passing off’ and ‘unfair trade’ at the higher standard of ‘mislead or deceive’):
Where an intention to deceive is found, it is not difficult for the court to infer that the intention has been, or in all probability will be, effective: see Slazenger & Sons v. Feltham & Co. (1889) 6 R.P.C. 531 at 538 per Lindley L.J. But in dealing with the issue of deception the learned judge directed himself correctly and made the comment, which is also good law, that:
“the court must be on its guard against finding fraud merely because there has been an imitation of another’s goods, get-up, method of trading or trading style (see, for example, Goya Ltd. v. Gala of London Ltd. (1952) 69 R.P.C. 188).”
[12] Cadbury-Schweppes Pty. Ltd. v.The Pub Squash Co. Ltd. [1981] RPC 429 at 493-4.
The assessment of the likelihood of confusion or deception is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[13] at [50]. Absent references to deceptive similarity (which is not a requirement under section 60) French J said:
[13] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue […] under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) […] all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[14] the Registrar’s delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[14] [2012] ATMO 124 at [40].
The services of the parties are identical and, as I have observed, the Opponent’s Trade Mark has a strong reputation in Sydney. Accordingly, I now turn to the similarity of the parties’ trade marks.
Confusion or deception cannot arise solely from reputation but must always involve some degree of similarity between marks, whether it is called deceptive similarity or something else.[15] It is possible that trade marks which, absent reputation, have no obvious deceptive similarity at all, are conceptually so similar that the use of the second comer to the trade mark field would be likely to confuse or deceive. A hypothetical example is that of the brewer who sells his well-known beers under the trade marks ‘SLIPS’, ‘MID ON’, and ‘LONG STOP’, which are fielding positions in cricket matches. Another trader’s hypothetical use of the trade mark ‘FINE LEG’ (also a fielding position in cricket matches) would, in view of the strong reputation of the trade marks ‘SLIPS, ‘MID ON’ and ‘LONG STOP’, be likely to confuse at least.
[15] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647
The different concepts ‘deceive’ and ‘cause confusion’ were explained in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[16]:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[16] (1979) RPC 410 at 423.
Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney[17] (‘Mickey Mouse case’):
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[18] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[17] [1937] HCA 38; (1937) 57 CLR 448.
[18] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.
Within the Trade Mark the oddity in construction of the expression ‘Tax Refund on Spot’ (where the word ‘the’ is obviously missing), suggests that (when coining the Trade Mark) the Applicant knew of the Opponent’s use of the expression ‘Tax Refund on the Spot’ within the Opponent’s Trade Mark but wished to avoid exactly replicating it within the Trade Mark. Another indicium within the Opponent’s Trade Mark also occurs within the Trade Mark, that being the pictorial element of a wad of one hundred dollar notes. There is also the concept or theme common to the parties’ trade marks that a pictorial ‘something’ within the parties’ trade marks is in the process of delivering that wad of one hundred dollar notes. These similarities seem to be more than mere coincidence and, coupled with the close physical proximity of the parties’ businesses, strongly suggest an attempt by the Applicant to appropriate part of the reputation of the Opponent’s Trade Mark, leading to a similar conclusion as that arrived at in Australian Woollen Mills that the Trade Mark can be presumed to be fitted for the purpose and therefore likely to deceive or confuse.
Thus, while the individual indicia which occur within the Opponent’s Trade Mark, the words ‘Tax Refunds on the Spot!’ and the depiction of the wad of one hundred dollar notes, may in themselves lack inherent adaptation to distinguish in relation to the services, the thematic or conceptual similarity to which I have referred, in combination with the expression ‘Tax Refunds on (the) Spot!’ and depiction of the wad of one hundred dollar notes does, in my consideration, result in the conclusion that there are strong textual, pictorial and thematic similarities between the trade marks of the parties.
I consider it likely that a person seeing the Trade Mark will, because of the textual, pictorial and thematic similarities I have discussed, immediately associate it with the Opponent and assume that the service provided under the Trade Mark is offered under the Opponent’s auspices. While it is possible that the misapprehension might not persist up until the service has been provided, it is not necessary that this be so in order for a likelihood of confusion to be found: in Tivo Inc v Vivo International Corporation Pty Ltd[19] Dodds-Streeton J observed:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[19] [2012] FCA 252 at [105].
The above principle applies also to deception or confusion arising under section 60.
The Opponent has established its ground under section 60.

Decision

Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
I refuse to register the Trade Mark.

Costs

The Opponent sought its costs in the event that it was successful. I accordingly award costs against the Applicant at the scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

29 April 2016