Taxand Economic Interest Grouping v Rosa Westland & Graham Westland

[2018] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by Taxand Economic Interest Grouping to registration of trade mark application 1641577(35) - TAXLAND & DEVICE - filed in the name of Rosa Westland & Graham Westland.

Delegate:

Jock McDonagh

Representation:

Opponent: Shauna Ross of counsel, instructed by IP Solved Patent and Trade Mark Attorneys

Applicant: Siobhan Ryan, instructed by Davies Collison Cave Patent and Trade Mark Attorneys

Decision:

2018 ATMO 10

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b), 44, and 60 considered –no grounds established – trade mark to proceed to registration

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Rosa Westland and Graham Westland (‘the Applicants’). Relevant details of the applications are set out below.

Trade Mark Application No:	1641577
Trade Mark:	‘the Trade Mark’
Filing Date:	18.08.2014
Services:	Class 35: Accountancy; Business Consultancy; Bookkeeping; Tax Return Preparation; Taxation Advice (accountancy) (‘Applicant’s Services’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 January 2015. Taxand Economic Interest Grouping (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 13 March 2015. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 13 April 2015. The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. On 1 May 2015, the Opponent filed an amended SGP, correcting the Opponent’s name.

2. Thereafter the parties filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter as one hearing in Canberra on 9 October 2017 as a delegate of the Registrar of Trade Marks. Shauna Ross of counsel, instructed by IP Solved Patent and Trade Mark Attorneys, represented the Opponent by video link. The Applicant was represented by Siobhan Ryan, instructed by Davies Collison Cave Patent and Trade Mark Attorneys.

   Grounds of Opposition

4. The Opponent nominated grounds of opposition under sections 41, 42, 44, and 60 of the Act, all of which were pursued at the hearing. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

5. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

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

   Evidence

6. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Timothy Steven Wach (‘Wach Declaration’)	Managing Director of the Opponent	7.09.16	1 and 2
Craig Milner (‘Milner Declaration’)	Tax partner, Corrs Chambers Westgarth	9.09.16	CM-1 and CM-2
Evidence in Answer
Graham Westland  (‘Westland 1’)	Applicant	8.12.16	1 to 11
Rosa Westland  (‘Westland 2’)	Applicant	8.12.16
Madeleine Chan (‘Chan Declaration’)	Trade Marks Attorney for Applicant’s Attorneys	9.12.16	MC-1 to MC-10

1. The Wach Declaration informs me that Taxand is a global organization of tax advisory firms established in 2005. It is represented by independent tax firms in over 40 countries worldwide. Each firm in each country is a separate and independent legal entity responsible for delivering clients with tax advisory services.

2. The Wach Declaration says that Taxand was first present in Australia through the firms of Shaddick & Spence in May 2007 (later acquired by Greenwoods and Freehills) and Corrs Chambers Westgarth in 2012.

3. At [12], the Wach Declaration gives evidence of the following prior  Australian trade mark registrations owned by the Opponent that contain the word TAXAND (‘the Cited Marks’):

Number	Trade Mark	Filing Date	Goods and Services
1139366	TAXAND	6.10.06	16, 35
1220635	14.09.07	35, 36, 42, 45
1220677	TAXAND	14.09.07	35, 36, 42, 45

1. At [11] and [22] the Wach Declaration evidences the deponent’s belief that the Opponent enjoys a substantial reputation in Australia for its services under the TAXAND brand.

2. The Milner Declaration is made by a tax partner at Corrs Chambers Westgarth (‘Corrs’), an independent law firm with offices throughout Australia. The deponent, Mr Milner, at [10] to [17] gives evidence how Corrs came to be Taxand Australia, how the Cited Marks have been used in Australia, and the revenue generated from services under the Cited Marks.

3. Westland 1 provides details of the history and structure of Graham Westland’s business as a business management consultant and tax agent, this business is conducted as a sole trader. It also provides details of the invention and adoption of the Trade Mark and its subsequent use in the Applicants’ business.

4. Mr Westland states that he chose the name as its first syllable described the nature of his services and the second syllable was the second syllable of his surname. The device element of the Trade Mark was to be a distinctive device incorporating a map of Australia.

5. Westland 2 is made by Mr Westland’s client services operations manager and conforms the reasons for the adoption of the business name and that neither Westland deponent was aware of the Opponent or the Cited Marks when the Trade Mark was adopted.

   Discussion

   Section 44:  Identical etc. trade marks

   16. Section 44 of the Act is reproduced below:

   Section 44 - Identical etc. trade marks

   (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)    it 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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (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.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

   (c)that there has been honest concurrent use of the 2 trade marks; or

   (d)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)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (e)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (f)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. The Opponent nominated the Cited Marks listed in [9], above in its SGP in respect of the s44 ground of opposition.

7. The priority dates of the Cited Marks are earlier than that of the Trade Mark.  The parties agreed that the Applicant’s Services are similar to those of which the Cited Marks are registered and I concur with that position.

8. Accordingly, it remains for me to decide whether the Trade Marks is either substantially identical with, or deceptively similar to one or more of the Cited Marks.

9. In Registrar of Trade Marks v Woolworths[3] (‘Woolworths’) French J said at [39]:

   [3] [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

10. The assessment of the likelihood of deception or confusion is informed by the factors referred to in Woolworths by French J who said at [50]:

    (i) To show that a trade mark is deceptively similar to another 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) In considering whether there is a likelihood of deception or confusion 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."

11. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[4]:

    [4] (1961) 109 CLR 407 at 415

    The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

12. The Court added at 416, that:

    [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

13. The decisive question is whether the use of the Trade Mark for the services in Class 35 given the prior Cited Marks in Class 35 would result in a tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that each party’s trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[5]

    [5] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

14. Upon consideration of the respective trade marks it is clear to me that there are sufficient visual, aural, and conceptual differences to prevent a person of imperfect recollection considering the marks to be similar.

15. The device element of the Trade Mark is distinctive and striking, while the Cited marks cannot claim such a description. While the respective marks comprise a single word, that of the Trade Mark can readily be perceived as ‘tax’ and ‘land’, while the Cited Marks could either be perceived as two words (‘Tax And’) or one word.

16. The aural representation of the respective marks is quite different. The Trade Mark would sound like ‘Tax Land’, while the Cited Marks could either sound like ‘Tax And’ or run together with the ‘XA’ letters merging as ‘zand’ or ‘sand’.

17. I have also taken into consideration the lack of conceptual similarities between the respective trade marks. The Trade Mark conveys a concept of a ‘Tax Land’, reinforced by the map of Australia device. There is a singularity of purpose, being tax.

18. The Cited Marks are two single word marks and a composite mark with a nondescript device element. While the first syllable shares the word ‘Tax” with the trade mark, it seems to be an incomplete phrase, ‘tax and …’ possibly (as suggested by Ms Ryan) to convey conjunction with ‘Law’ or ‘Investment’. This would suggest a party that provides tax services and something else/extra.  In the context of the services of the parties, the conceptual difference between “and” and “land” is significant.

19. The shared first syllable ‘TAX’ is not sufficient in itself to create a deceptive resemblance between the marks, particularly since it is descriptive of the parties’ services. Given the nature of the parties’ services, any consumer will make a careful choice based on recommendations or their own research, understanding that ‘TAX’ is descriptive of the services and focusing on the marks as wholes.

20. I am not satisfied that there is likely to be deception or confusion when all surrounding circumstances have been taken into consideration. This ground of opposition has not been established.

    Section 41

21. Section 41 of the Act provides:

    41Trade 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 the 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)This subsection applies to a trade mark if:

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

    (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

    (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)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1:For applicant and predecessor in title see section 6.

    Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

1. Accordingly, the initial step is to consider whether the Trade Mark is not capable of distinguishing the Applicant’s Services from the goods or services of other persons and, as I have said, in these proceedings it is for the Opponent to satisfy me on the balance of probabilities that was so at the Priority Date.

2. The classic test for inherent adaptation to distinguish is laid out in Clark Equipment Co v Registrar of Trade Marks[6] (‘Clark Equipment’) where Kitto J stated:

   [6] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5].

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

3. When that passage was more recently considered by a differently constituted High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[7] (‘Cantarella’) the majority uncovered a two-step process.  They stated:

   [7] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Crennan and Kiefel JJ.

   It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable).  When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods.  The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.[8]

   [8] Ibid., [50].

4. Accordingly directed, the first step is to determine the ordinary signification of the words comprising the Trade Mark in respect of the Services.  The High Court in Cantarella continued:

   Once the “ordinary signification” of a word … is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[9]

5. So, by way of example how that two-step process works, the High Court found that according to their ordinary significations, ORO and CINQUE STELLE were merely allusive of the relevant goods and so there was no need to go on to consider the needs of other traders.

6. Although the Trade Mark was applied for in colour, I will consider also the fact that it could also be rendered in monochrome.  The map of Australia is highly stylized. The broken circles evoke energy and force (like whirlpools). One of the circle parts morphs into an arrow. I consider that no other trade would be likely in the ordinary course of its business and without any improper motive, to desire to use this logo in relation to their services: F.H. Faulding & Son Pty Ltd v Imperial Chemical Industries of Australia And New Zealand Ltd (1965) 112 CLR 537.

7. The word element of the Trade Mark should not be considered in isolation. However, there is nothing in the evidence that establishes that the phrase ‘Tax Land’ or word ‘Taxland’ is an expression commonly used to define a particular field of interest or activity, or makes a direct reference to the relevant services.

8. I am satisfied that the Trade Mark is inherently distinctive for the specified services. As a result, the Opponent has not established this ground of opposition.

   Section 60

   [9] Ibid., [71].

9. Section 60 of the Act is reproduced below:

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

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

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

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

10. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

11. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[10]  by Kenny J at [81] – [82]:

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

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

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

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

    [10] (2000) 51 IPR 102

12. Further, at [86], Kenny J said:

    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.

    45.   The Opponent submitted that the revenue generated by providing services under and by reference to the Cited Marks is substantial. It also submitted that the evidence showed use of the Cited Marks on the internet and social media, along with the more traditional examples of business cards, signature blocks and news publications.

    46.   Due to the Opponent’s requesting commercial in confidence status for all its evidence, I shall not specify the revenue stated in the Milne Declaration. In fact the revenue is only referred to in general terms, apart from the years 2012 and 2013. The revenue for those years averaged in ‘six figure’ dollar terms.

    47.   Ms Ross also pointed to the association between the Opponent and Corrs, which accelerated the path to substantial and valuable reputation of the Opponent.

    48.   Ms Ryan submitted that there was no evidence of revenue or advertising figures relating to the Opponent before being involved with Corrs. Further, she submitted, the revenue shown in the Milne Declaration is actually surprisingly low for a practice comprising five partners and 10 practitioners.

    49.   Ms Ryan also submitted that there is no evidence to establish the reputation of Corrs as a firm in Australia, particularly in the field of tax consultancy. He states that evidence indicates that Taxand’s services are limited to Corrs’ clients but there is no evidence as to the volume or reach of its client base. Ms Ryan asserts that it is unlikely to be ‘substantial’ or significant’ in the overall market for .tax advice in Australia.

    50.   I note that the Opponent’s evidence of use of the Cited Marks is invariably alongside Corrs branding.

    51.   I am not satisfied that the use of the Trade Mark would be likely to deceive or cause confusion. Consumers of Corrs’ tax consultancy under the Cited Marks are more likely to perceive the services under the Cited Marks to be those of Corrs rather than of the Opponent. I do not consider that there is a real and tangible risk of relevant consumers mistakenly attributing a business connection between the two parties or attributing the Applicants’ services to the Opponent.

    52.   This ground of opposition has not been established.

    Subparagraph 42(b)

    53. Subparagraph 42(b) of the Act provides:

    42Trade mark scandalous or its use contrary to law

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

    (a)…

    (b)its use would be contrary to law.

    54.   The Opponent relies on section 18 of the Australian Consumer Law 2010 (‘the ACL’), and the common law tort of passing off.

    55. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[11], Gibbs C.J. said (at page 6):

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

    [11] [1982] HCA 44; (1982) 42 ALR 1

    56.   In the same case Mason J. said (at page 15):-

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

    57.   The opposition under subparagraph 42(b) is not established.

    Decision and Costs

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

    Unless subsection (3) applies to the proceedings, the Registrar

    must, at the end, decide:

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

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

    specified in the application;

    having regard to the extent (if any) to which any ground on which the

    application was opposed has been established.

    Note: For limitations see section 6.

14. Subsection (3) does not apply to these proceedings.

15. The Opponent has not established its opposition to the registration of the Trade Mark.

16. The Trade Mark may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

17. Cost may follow the event and I order costs against the Opponent at the scale set out in the regulations.

    Jock McDonagh

    Hearing Officer

    Oppositions and Hearings

    29 January 2018