Terranora Group Management Pty Ltd v Rise Projects Pty Ltd

[2024] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by Terranora Group Management Pty Ltd to registration of trade mark application 1923491 (37) – Rise Projects – in the name of Rise Projects Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Macpherson Kelley Pty Ltd

Applicant: Geoff Davidson of Halfords IP

Decision:

2024 ATMO 63

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 58A and 60 considered – s44 established but s44(3)(b) applied – no other grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Terranora Group Management Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Rise Projects Pty Ltd (‘Applicant’): 

Application Number:	1923491
Filing Date:[1]	14 May 2018
Services:	Class 37: Advisory services relating to property development building and construction services; Property development (building and construction services) (‘Applicant’s Services’)
Trade Mark:	Rise Projects (‘Trade Mark’)
Endorsements:	Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 30 July 2021.  The SGP raised grounds of opposition under ss 42(b), 44, 58, 58A and 60.  The Applicant filed a Notice of Intention to Defend on 22 October 2021. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Godfrey Norman Mantle, director of the Opponent (‘Mantle declaration’)	25 January 2022	GM-01 to GM-06
Evidence in answer
Daniel Pszczonka, Founder and Managing Director of the Applicant (‘Pszczonka declaration’)	29 September 2022	DP-1 to DP-11
Evidence in reply
N/A

1. The entirety of the evidence filed by Applicant, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive. Equally, the Opponent has made claims of confidentiality of information that manifestly is not confidential, such as the fact that it has hired consultants.  Again, I have attempted to avoid disclosure of confidential information in my summary of the evidence but if I have erred, the issue has arisen due to the parties failing to properly set out the scope of confidential information claimed.

3. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 24 February 2023 the Applicant requested an oral hearing.  The matter was set down for a hearing via video-conference on 6 February 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 12 December 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 31 January 2024 (‘Applicant Submissions’).  At the hearing Geoff Davidson of Halfords IP represented the Applicant. The Opponent did not participate in the hearing. 

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of   the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

5. The Opponent is an Australian company involved in property development of land in the location of Bilambil Heights in New South Wales. It is a member of the Mantle Group.  

6. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’ or ‘Rise Mark’).[3]  The services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Services’. 

   [3] These marks are the subject of a related removal application brought by the Applicant, which will be discussed later in this decision.

Number	Trade Mark	Priority Date	Goods or Services
1176231	Rise	15 May 2007	Class 36: Advisory services relating to real estate ownership; advisory services relating to real estate valuations; appraisal of real estate; brokerage of real estate; commercial real estate agency services; leasing of real estate; management of real estate; property leasing (real estate property only); provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; real estate administration; real estate agencies; real estate agency services; real estate consultancy; real estate valuations; accommodation letting agency; leasing of accommodation; letting of office accommodation; provision of housing accommodation; provision of long-term accommodation; provision of permanent housing accommodation; provision of permanent housing accommodation; rental of accommodation
1176245	Rise	15 May 2007	Class 42:  Internet cafe services; consultation in environment protection and environment design services; design of sports facilities; designing and planning of real estate subdivisions and developments; real estate planning; real estate surveys

1. The relevant claims/statements in the Mantle declaration can be summarised as follows:

   ·     The Opponent is developing land in the Bilambil Heights area and has engaged consultants for this purpose. Between 2016 and 2019 it created various project documents and master plans. It has obtained various approvals from government authorities for its project.

   ·     Since at least 2009 the Opponent has used the Rise Mark to promote its property development services, including in respect of brochures distributed from 2013 to 2021 and in a newspaper article published in 2009.

2. The exhibits to the Mantle declaration display the project documents, government approvals, and a newspaper article and a brochure featuring the Rise Mark. For example, the exhibits include a concept plan prepared by, or for, the Opponent referring to the Rise Estate dated May 2010 and a project report dated February 2010. Exhibit GM-05 consists of a single article dated 7 April 2009 that refers to a new development called Rise, being a $1.3 billion master-planned community that will take 10 to 12 years to complete.  The brochure features the Rise Mark and details of the property development that the Opponent or the Mantle Group is behind.  

   The Applicant

3. The Applicant is an Australian company involved in property development.  

4. The relevant claims/statements in the Pszczonka declaration can be summarised as follows:

   ·     The Applicant has used the Trade Mark since 2012, having been incorporated on 9 October 2012.  It holds the intellectual property in the Trade Mark – when a site is developed the declarant incorporates a special purpose vehicle company to develop the site and use the Trade Mark, under the personal supervision of the declarant, who is also the director of the Applicant.  The Applicant is also the head contractor of each special purpose vehicle company for each development.  It also manages the marketing for each development including by developing the marketing materials.

   ·     The Applicant has also extensively promoted the Applicant’s Services by reference to the Trade Mark including through its website at and a variety of promotional brochures, flyers, other advertisements and social media.

   ·     Neither the Applicant nor the declarant was aware of the Opponent or its use of the Rise Mark at the time it began using the Trade Mark or when it applied to register the Trade Mark.  The Applicant has never come across any instance of confusion between the Trade Mark and the Rise Mark.

5. The annexures to the Pszczonka declaration include a series of contractor agreements, purchase orders and invoices by the Applicant.  The Pszczonka declaration also annexes a variety of brochures, flyers and other advertisements for the Applicant’s developments that display the Trade Mark.  The annexures also include details of the Applicant’s turnover (which is impressive) and advertising expenditure which is not inconsiderable.

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60.  To successfully oppose the application the Opponent needs to establish at least one of the nominated grounds.  

7. The onus of proof in an opposition rests upon the Opponent.[4]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[5]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[6]

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

8. I note that parallel to the opposition to the registration of the Trade Mark, the Applicant has filed an application to remove (opposed by the Opponent) the Opponent’s Trade Marks.  I was the hearing officer for that matter and heard that matter on 19 March 2024.  I found that the application to remove the Opponent’s Trade Marks was established and have issued orders for the removal of the Opponent’s Trade Marks from the Register.  In Energy Beverages LLC v Cantarella Bros Pty Ltd[7], the Full Court suggested (at [176]) that where s 44(1) or (2) was made out, but where an earlier decision had been made that the ‘blocking’ citation should be removed for non-use (but that that mark had not yet been removed from the Register), the later application should be accepted under s 44(3)(b).  As such the ground of opposition under s 58A is no longer available to the Opponent (as it only applies where a mark has been accepted pursuant to s 44(4)) but I must consider the s 44 ground in order to determine whether s 44(2) is established and the application should be accepted under s 44(3)(b).    

   [7] [2023] FCAFC 44 (Yates, Stewart and Rolfe JJ)

   Discussion

   Section 44

9. The relevant provisions of s 44 are reproduced below:

   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.

   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:

   (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)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:

   (a)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

   (b)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.

10. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

11. As noted in paragraph 18 above this question is essentially moot, given the operation of s44(3)(b) of the Act but for the record I note that the Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks. Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. I am satisfied that the real estate advisory services for which trade mark no. 1176231 is registered for are similar services to at least a portion of the Applicant’s Services, being the advisory services relating to property development. I am also satisfied that the Trade Mark, which wholly incorporates trade mark no. 1176231 with the addition of a word that only adds limited distinctiveness (this issue is discussed further under the s 58 ground of opposition) is deceptively similar to trade mark no. 1176231. The requirements of s 44(2) are established however, as discussed under paragraph 18 above the Trade Mark should be accepted under s 44(3)(b) as I have issued an order to remove the Opponent’s Trade Marks from the Register.

12. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 58 – Applicant not owner of trade mark

13. Section 58 is reproduced below:

    Section 58 Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

14. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[8]

    · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[9] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark in Australia by the Applicant (‘the third factor’).[10]

    [8] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

    [9] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

15. The ground based on s 58 was particularised in the SGP as follows:

    Terranora Group Management Pty Ltd (ACN 073 498 969) (and its predecessors in title) first used the trade mark Rise on or before 15 May 2007 in relation to the property development industry, including for advisory services for property development building and construction services; Property development (building and construction services) and other equipment, parts, fittings and accessories for all of these services and has been using Rise in relation to these services on a continuous basis ever since.

1. The first factor relies on a determination that the Trade Mark is substantially identical to the Rise Mark for which the Opponent claims ownership.

2. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[11]

   [11] [1963] HCA 66, [12].

3. The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’)[12] and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[13] The court stated in Pham Global:

   There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

   … The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[14]

   [12] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ) (‘Accor’).

   [13] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ) (‘Pham Global’).

   [14] Ibid [51]-[52].

4. In comparing the marks side-by-side I note that the Trade Mark contains the additional element ‘projects’.  This creates a mark that is visually and aurally distinct from the Rise Mark and there is even a conceptual difference, noting that the meaning of the Rise Mark is that of an upward movement and the addition of the term ‘projects’ changes the meaning of the mark to something in respect of a particular project.  The Opponent has the obligation to establish this ground (and indeed any ground) of opposition and the Opponent has not chosen to file submissions or involve itself in the hearing in any way.

5. The Applicant’s Services consist of advisory services in respect of property development as well as property development itself. Whilst property development schemes are sometimes called ‘projects’ I do not consider the term ‘projects’ to be so descriptive of the Applicant’s Services (compared to terms such as Radiology or Clinical Imaging for radiology services[15])  such that the sole essential element of the Trade Mark is the word ‘rise’.  The term ‘projects’ is not unique to the property development industry and has a broad range of uses.  The addition of the term ‘projects’ creates a two-word mark that has a different meaning to the trade mark RISE.  Notwithstanding the use of the term ‘projects’ in property development, I am satisfied, when making a side-by-side comparison, cognisant of the essential elements of each mark, that the Trade Mark and the Rise Mark are not substantially identical.   

   [15] See Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, (Greenwood, Jagot and Beach JJ).

6. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 60

7. Section 60 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.

8. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

9. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[16]

   [16] [2023] FCA 487, [20]-[21] (Kennett J)

10. In McCormick & Co Inc v McCormick,[17] Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[18]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner … .[19]

    [17] [2000] FCA 1335.

    [18] Ibid [81].

    [19] (1992) 33 FCR 302, 343.

11. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [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.[20]

    [20] (1999) 47 IPR 423, 436.

12. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[21] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[22]

    [21] [2000] FCA 1587.

    [22] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

13. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opponent has been continuously using the trade mark Rise and other substantially identical variants thereof since at least 15 May 2007 in relation to the property development industry, including for advisory services for property development building and construction services; Property development (building and construction services) and other equipment, parts, fittings and accessories for all of these services.

14. In the present case the evidence of use of the Rise Mark is minimal and does not establish a reputation in the Rise Mark in the property development industry.  The Opponent’s use of the Rise Mark relates to a single, uncompleted project (albeit one of apparently significant scale) that has been in existence for approximately 13 years.  The Opponent has prepared a small number of project documents, received limited media coverage, and sent a set of brochures about the project to approximately 35 entities over an 8-year period, some of whom may have been overseas (noting that some of the brochures were in the Chinese-language and were directed at Chinese companies).  This limited use is not sufficient to establish a reputation in the Rise Mark sufficient for the requirements under s 60(a). 

15. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

16. Section 42 is reproduced below:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

17. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law.  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[23]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[24]

    [23] Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [24] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

18. The Opponent has particularised the ground of opposition in the SGP as follows: 

    •The Opponent has been continuously using the trade mark RISE and other substantially identical variants thereof since at least 15 May 2007 in relation to services including advisory services for property development building and construction services; Property development (building and construction services) and other goods and services relating to these services.

    •The Opponent has developed a substantial reputation in the trade mark RISE under which the services are provided.

    •The use of the Applicant’s trade mark in relation to the proposed services is likely to constitute the common law action of passing off. i.e. that either –

    i. The Applicant’s or services provided under the Applicant’s trade mark are those of the Opponent;

    ii. The Applicant’s services provided under the Applicant’s trade mark are associated/affiliated/endorsed by the Opponent; or

    iii. The Applicant’s services provided under the Applicant’s trade mark are done so under licence from the Opponent.

    •Due to the reputation of the Opponent in the property development industry, the use of the Applicant’s trade mark in relation to the proposed services is likely to mislead and deceive consumers in contravention of the Australian Consumer Law.

19. As previously stated, the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[25] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [25] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

20. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[26] where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (Cth) (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[27] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[28]

    [26] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [27] [2003] FCA 104, [107].

    [28] [1989] FCA 506, [40] (citations omitted).

21. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision and Costs

22. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1923491 may proceed to registration not less than one month from the date of this decision with the following endorsement: ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied’.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

23. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    9 April 2024