The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd
[2016] ATMO 111
•2 December 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Design Hunter Pty Ltd to registration of trade mark application no. 1637467 (41) - Design Hunter - in the name of Indesign Publishing Pty Ltd
Delegate:
Debrett G. Lyons
Representation:
Opponent: Sue Chrysanthou of Counsel, instructed by IP Solved (ANZ) Pty. Ltd.
Applicant: Chris Round of G & L Gates, Lawyers
Decision:
2016 ATMO 111
Opposition under section 52 of the Trade Marks Act 1995: section 44 considered and established; section 44(3)(b) not established; opposition successful – registration refused.
Background
On 18 February 2015 The Design Hunter Pty Ltd (“the Opponent”) filed an opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of a trade mark in the name of Indesign Publishing Pty Ltd (“the Applicant”).
Current details of the trade mark application are set out below:
Application No: 1637467
Priority Date: 29 July 2014
Services:Class 41: Arranging and conducting of seminars; Conducting seminars
(“the Services”)
Trade Mark: Design Hunter (“the Trade Mark”)
On 3 March 2015 the Opponent filed a Statement of Grounds and Particulars (“SGP”).
On 8 April 2015, the Applicant filed a Notice of Intention to Defend the opposition.
The parties filed evidence as later described, after which a hearing was requested and took place in Canberra on 19 August, 2016. I heard the matter as a delegate of the Registrar of Trade Marks, taking submissions via videoconference facilities. Sue Chrysanthou of Counsel, instructed by IP Solved (ANZ) Pty Ltd, appeared for the Opponent. The Applicant was represented by Chris Round of K & L Gates, Lawyers. Both representatives provided me with outline written submissions prior to the hearing and in accordance with directions I gave.
The parties are known to each other, having met in an opposition before this Office in connection with the same Trade Mark filed in class 35 in connection with services described as: “Organising an experiential consumer event that brings together commercial and residential design retailers”.[1]
[1] Trade Mark Application No. 1505993.
The resulting decision (“the Earlier Decision”)[2] was to refuse registration of the Trade Mark after the Opponent had established a ground of opposition under section 58 of the Act.
[2] The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2014] ATMO 93.
Grounds of Opposition
The SGP listed grounds corresponding with sections 42(b), 43, 58, 60 and 62A of the Act. At the hearing and in its written submissions the Opponent did not press the section 43 ground and I treat it as abandoned.
To succeed in its opposition the Opponent bears the onus of establishing at least one of the four grounds pressed. The relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[3] The relevant date at which the rights of the parties are to be determined is 29 July 2014 (the Priority Date). In essence the grounds pressed are that:
· Use of the Trade Mark would be contrary to law (s.42(b));
· the Trade Mark is substantially identical/deceptively similar to a trade mark owned by the Opponent (s.44);
· the Applicant is not the owner of the Trade Mark (s.58);
· another trade mark had acquired a reputation in Australia before the Priority Date of the Trade Mark so that use of the Trade Mark would be likely to deceive or cause confusion (s.60);
· the application for registration was made in bad faith (s.62A).
[3] Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
Evidence
For their evidence the parties rely on the following statutory declarations:
Evidence in support
Melissa Joye Bonney made on 2 June 2015 with Exhibits MJB-1 to MJB-7 (“Bonney 4”).
Evidence in answer
Kavita Nandan made on 28 September 2015 (“Nandan”)
Evidence in reply
Christopher John Lee made on 15 December 2015 with Exhibit CJL-1 (“Lee”).
The Applicant also seeks to reply on the statutory declarations of:
Melissa Joye Bonney made on 11 September 2013 with Exhibit MB-1 (“Bonney 2”), being a declaration made by Ms Bonney on 8 February 2013 with Exhibits MJB-1 to MJB-6 (“Bonney 1”); and
Melissa Joye Bonney made on 20 November 2013 together with Exhibits MJB-1 to MJB-9 (“Bonney 3”).
The Opponent has objected to the Applicant’s attempt to rely on Bonney 1, 2 and 3. Bonney 2 and 3 were filed as evidence in the Earlier Decision. Bonney 1 was originally filed in support of the Opponent’s then application (now registration) no. 1526158 in classes 35 and 42. None of Bonney 1, 2 or 3 was exhibited to Bonney 4 and the Applicant submits that evidence has not been filed in these proceedings in accordance with the Trade Mark Regulations 1995 (“the Regulations”).
It is not necessary for me to consider that argument in detail. If the issue is ultimately one of procedural fairness then that material has already been seen by the Applicant in the past and there is nothing to take it by surprise.[4] As it happens, I am able to reach my findings based on the Act, the uncontested facts and the Earlier Decision (which considered much of the same evidence) and so the status of Bonney 1, 2, and 3 in these proceedings is not critical.
[4] Notwithstanding its claim that certain pages/exhibits were omitted from the papers it received previously.
Discussion
I am able to determine this opposition on the basis of the ground of opposition based on section 44 of the Act. Section 44(2) provides:
(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.
For the purposes of section 44(2) the Opponent relies on its registration no. 1526158 for the trade mark shown below (“the Opponent’s Trade Mark”):
The Opponent’s Trade Mark has a priority date of 22 November 2012, earlier than the Priority Date of the (opposed) Trade Mark.
As noted already, the Earlier Decision involved a comparison of the same trade marks. Hearing Officer Kirov found that the marks are substantially identical.[5] I understand that he was following the direction given by the High Court in recent times.[6] I have no reason to depart from Hearing Officer Kirov’s finding and only add that there is, in any event, no doubt that the trade marks are deceptively similar for the purposes of section 44(2).
[5] See footnote 2, [37].
[6] See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 86 IPR 224.
The Opponent’s Trade Mark is registered for the following services:
Class 35: Retailing services, namely the operation of a retail store specializing in furniture, home furnishings, interior decorations, lighting, mirrors, jewellery, cushions, ceramic ware, cosmetics, soaps, artworks and personal care products including the retail of these goods online
Class 42: Interior design services; design services relating to interior decoration styling; design consultancy and design project management
Section 14(2) provides that services are similar to other services:
(a) if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The Opponent relied on the class 42 services shown above. Since the compared services are not the same, the question is whether the Services are of the same description as the class 42 services.
The Opponent’s submissions in this respect are that:
The Opponent has a monopoly over “Interior design services; design services relating to interior decoration styling”. Those are broad services and encompass provision of a seminar about interior design.
A “Seminar” is “a meeting in which you receive information on and training in a particular subject”.
Plainly, the services are “similar” in that the conducting of seminars (about design) is an interior design service; a design service relating to interior decoration styling and a design consultancy and design project management service.
The fact that the word design is not included in the specification does not matter. The appropriate test is, notionally, to what use could the Applicant put the Opposed Mark if registration were to be granted. If the Opposed Mark proceeds to registration, the Applicant would have a monopoly for the arranging and conducting of seminars on any subject pursuant to the Opposed Mark.
Having regard to the definition of “seminar” above, a seminar is a meeting for the provision of information/training on a particular subject (in this case design). Accordingly, seminars are just a platform from which consultancy services, design services and project management services are delivered.
The services for which registration is sought by the Opposed Mark are the same, or at least of the same description, as the services for which the Opponent’s Trade Mark is registered. Although actual or intended use is not strictly a necessary consideration for section 44, on the Applicant’s own evidence, those seminars are on the subject of design.
The Applicant’s (redacted) written submissions were:
… The Applicant's Services are in the nature of education, while the Opponent's Services are in the nature of retailing and interior decorating. The risk of consumer confusion is therefore substantially lessened due to the nature of the services provided by reference to the Trade Mark and the way in which they are provided to the targeted consumer base identified by the Applicant.
The Applicant's Services to be provided by reference to the Trade Mark are clearly directed to a specialist group with expert knowledge of the Applicant. The Applicant's evidence is that its services are aimed at professionals in the field of design, not the ordinary consumer or shopper, which would be interested in the retail services and the interior decorating and project management services covered in the Opponent's Services. On this basis, the Applicant submits that its services are provided to a specialist clientele that has the necessary knowledge to distinguish between the Trade Mark and the Opponent's Logo when applied to the services concerned….
Class 42 is a technical class which has the following services in its class heading "Scientific and technological services and research and design relating thereto". The Opponent's Services are correctly classified as class 42 services and fall within that part of the class heading. Class 42 is pitched at specialists as most class 42 services are, they relate to the technical arts.
Class 41 is a class relating to "education; providing of training; entertainment; sporting and cultural activities." The claim in the Applicant's Services for "Arranging and conducting of seminars; Conducting seminars" falls squarely under the "providing of training" heading. The class heading relates to the education of people by way of a lecture conducted by a teacher to a class of students. A seminar is a conference or other meeting for discussion or training.
An initial observation is that the Services should be read at their widest and include all services which occur under those headings: I am to assume a use of the trade marks of the parties in respect of all of the services covered by their respective specifications.[7]
[7] Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8.
The Services necessarily include the arranging and conducting of seminars in relation to interior design and decoration. The Applicant’s concentration on the generic divisions behind the Nice Classification Scheme is misleading since the classification scheme is not conclusive of whether or not goods or services are “of the same description”. Services in the same international class may not be of the same description within the meaning of section 14(2)(b), whereas services in different classes may be of the same description.
As allowed by regulation 21.15 of the Regulations I made a Google® search of the phrase “design seminars”. That search produced as its first result the “International Seminar Series | Decor + Design Show Melbourne”, the homepage of which reads:
The 2016 International Seminar Series, sponsored by Australian House and Garden is celebrating Australian design and examining the industry’s future trends and hot topics. The all-star seminar line-up brings together international and Australian design experts to discuss their work, design inspirations and share perspectives.
In its written submissions the Applicant states that it “is a publishing company that hosts a variety of design and architectural events in Australia aimed at design professionals.[8] The Applicant offers the Applicant’s Services at these events in the form of curated panel discussions”.[9]
[8] Nandan declaration, [11].
[9] Nandan declaration, [26].
Kavita Nandan is the Applicant’s Financial Director and made a declaration on 25 February 2014 in connection with the Earlier Decision, stating that:
[The Applicant] also hosts a variety of design and architectural events in Australia and South East Asia, including an event called “Saturday in Design” which commenced around 10 years ago and, more recently, Sydney Indesign. HABITUS pavilions at these events target the Design Hunter community and feature use of the DESIGN HUNTER mark by [the Applicant].
In Mid Sydney Pty Ltd v The Australian Tourism Co Ltd & Ors[10] it was observed that:
[10] [1998] FCA 1616; 90 FCR 236.
The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:
“There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek’s Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s case the Assistant‑Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade …’. ”
Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd’s Application [1959] RPC 120 at 128:
“In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases … one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged … ‘in a business sense’; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods … . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited … lend some support to the view that the phrase ‘goods of the same description’ ought not to be given too restrictive a construction – not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.”
We accept that these principles, subject to any necessary modification, apply in relation to services.
I note in the case before me the obvious convergence of interests and the reference to a “Design Hunter community” and draw the finding that this is an industry where a provider of the Opponent’s class 42 services is likely to also be the provider of the applied-for Services.
I find that the compared services are of the same description. The Opponent has accordingly successfully made out its case under section 44(2).
That finding is not quite the end of the matter since the Applicant argues that other circumstances “warrant the acceptance of the Trade Mark for registration under the provisions of section 44(3)(b) of the Act”.
Section 44(3)(b) provides that
(3) If the Registrar in either case is satisfied:
(a)…
(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.
The circumstances I am asked to take into account are (i) the Applicant’s prior registrations for the Trade Mark; (ii) continuous use of the Trade Mark; and (iii) the lack of evidence of marketplace confusion.
Kavita Nandan’s 25 February 2014 declaration, already quoted in the Earlier Decision, goes on to explain that the Applicant:
…is a publishing company which specialises in high quality magazines, websites and events related to architecture and design, in Australia and South-East Asia. [The Applicant] publishes a portfolio of well-known print and online publications such as INDESIGN MAGAZINE, DESIGN QUARTERLY, HABITUS, LOOKBOX and CUBES. [The Applicant] has been producing specialised print and online media, and events for design and architecture audiences, for over 13 years.
[The Applicant] is the owner of the following trade mark registrations for the DESIGN HUNTER mark in Classes 16 and 41:
Regn No.
Priority Date
Goods/Services
1233686
4.04.2008
Class 16: Magazine and publication
1350753
15.03.2010
Class 41: Online publication
The DESIGN HUNTER mark was first used by [the Applicant] in Australia on or around 2008 in the context of [the Applicant’s] HABITUS magazine. The HABITUS magazine and associated online publications cater to a rapidly growing audience of high end, design savvy consumers. The HABITUS magazine is promoted by [the Applicant] as “the first magazine for the Design Hunter”, in the HABITUS magazine and in promotional material for the HABITUS magazine.
Of relevance to these proceedings were Hearing Officer Kirov’s findings that:
Despite the claim in the Applicant’s submission … that [it] has used the Opposed Mark “since at least 2008 in the context of publications and various events” there is no actual evidence before me that the Applicant used the mark in relation to organizing an event “bring[ing] together commercial and residential design retailers”, or for services of this kind, before filing the opposed application.
Nothing before me indicates a different state of affairs before the Priority Date and I have no reason to invoke section 44(3)(b). The Applicant’s earlier registrations are limited to publishing. The “continuous use” referred to is in connection with publishing. The evidence of “curated panel discussions” (whether or not that activity might fall within the meaning of a “seminar”) is not compelling. I consider that the absence of evidence of confusion is bound up by those observations. There is nothing which makes me think that it is proper to accept the Trade Mark subject to section 44(3)(a) and I decline to do so.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the ground raised pursuant to section 44 of the Act. I accordingly refuse to register trade mark application number 1637467.
Costs
Each party requested an award of costs in its favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
December 2, 2016
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