The Grapevine BVBA v Are Media Pty Limited
[2024] ATMO 95
•21 May 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Grapevine BVBA to registration of trade mark applications 2179953 (9, 35) – THE INSIDERS COMMUNITY and 2179954 (9, 35) – THE INSIDERS COMMUNITY (Fancy) – in the name of Are Media Pty Limited
Delegate: Nicholas Smith Representation: Opponent: Griffith Hack
Applicant: Media LegalDecision: 2024 ATMO 95
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, 60 and 62A considered – s 44 established in respect of a subset of the services – amendment made deleting the services for which the s44 ground has been established – trade marks to proceed to registrationBackground
This decision concerns oppositions brought by The Grapevine BVBA (‘Opponent’) to the registration of the trade marks (collectively ‘Trade Marks’) which are the subjects of the applications detailed below in the name of Are Media Pty Limited (‘Applicant’):
Application Number:
2179953
Filing Date[1]:
19 May 2021
Goods and Services:
Class 9: Downloadable podcasts; downloadable computer files; downloadable computer software; downloadable digital applications and apps; downloadable video; downloadable music; audio equipment; cameras; batteries; humidity meters; kitchen scales
Class 35: Commercial and business advocacy (promoting, publicising or otherwise representing the interests or concerns of others); market research including market research conducted using focus panels and groups; organisation of focus panels and groups for business, or commercial research purposes; audience and market response analysis, monitoring and surveying; opinion research, polling and analysis; market surveying services including sampling, testing and appraisal of goods and services, including consumer goods and services; surveys (opinion polling); marketing studies; business and commercial research; advertising effectiveness analysis and research; consumer ratings analysis and surveys; commercial and business statistical research and information; preparation of publicity documents and materials; collection and collation of research data and commercial information; promotional studies; dissemination of business and opinion research and analysis; sampling, testing and appraisal services in this class; arranging, organising and conducting competitions, contests and tournaments for advertising, business, trade, marketing, commercial and promotional purposes; consultancy, advisory, research and information services (including online, interactive, digital and datacasting services) in relation to the foregoing; the foregoing services provided via the internet or on social media(‘Applicant’s Goods and Services’)
Trade Mark:
THE INSIDERS COMMUNITY
(‘Trade Mark’)
Application Number:
2179954
Filing Date:
19 May 2021
Goods and Services:
Applicant’s Goods and Services
Trade Mark:
(‘Fancy Mark’)
[1] Also known in this decision as the ‘relevant date’.
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.
Following the advertisement of the applications’ acceptance for possible registration, the Opponent filed Notices of Intention to Oppose the registrations followed by essentially identical Statements of Grounds and Particulars on 3 March 2022 (‘SGP’)[2]. The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A. The Applicant filed Notices of Intention to Defend on 5 May 2022.
[2] The statements are identical other than the number of the trade mark opposed. As such they can be referred to in the singular.
Evidence
The parties filed essentially identical evidence in both matters with the only difference being the name of the trade mark opposed and the de minimus omission of a couple of articles in Annexure MR2-G to the second declaration of Macek Rubetzki filed in the Fancy Mark opposition. In respect of the Trade Mark the parties filed the following evidence:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Bjorn Cassier, founder and managing director of the Opponent (‘Cassier declaration’)
9 August 2022
1 to 5
Evidence in answer
Macek Rubetzki, Principal of Media Legal and the representative of the Applicant (‘Rubetzki 1’).
14 November 2022
MR1-A to MR1-B
Macek Rubetzki (‘Rubetzki 2’)
14 November 2022
MR2-A to MR2-G
Evidence in reply
N/A
In respect of the Fancy Mark the parties filed the following evidence:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Bjorn Cassier, founder and managing director of the Opponent
9 August 2022
1 to 5
Evidence in answer
Macek Rubetzki, Principal of Media Legal and the representative of the Applicant.
14 November 2022
MR1-A to MR1-B
Macek Rubetzki
14 November 2022
MR2-A to MR2-G
Evidence in reply
N/A
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 7 February 2023 the Opponent requested a hearing by written submissions. The matter was set down for a hearing by written submissions with a nominal hearing date of 1 February 2024 and the matter was allocated to me. In line with usual practice, a notice was sent to the parties on 27 November 2023 which contained a schedule for the provision of the parties’ written submissions. The Opponent filed written submissions on 18 January 2024 (‘Opponent’s Submissions’). The Applicant filed written submissions on 25 January 2024 (‘Applicant’s Submissions’).
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.
One matter that I note for context. The present proceeding is the second proceeding in respect of the Trade Mark. In The Grapevine BVBA v Are Media Pty Ltd[3] (‘Earlier Decision/Earlier Opposition’) the present Opponent was successful in opposing the registration for Application No. 1974814 for THE INSIDERS COMMUNITY for a selection of services in class 35. These services are not the same as the Applicant’s Goods and Services but there are undoubtedly similar services as much of the services relate to business and marketing. The Opponent was successful on the s 44 ground and much of the evidence and submissions filed by both parties in this matter draw out the similarities and differences between the present applications and the application the subject of the Earlier Decision.
[3] [2021] ATMO 66, (Hearing Officer Wilson).
The Opponent
The Opponent is a media company. According to the Cassier declaration:
The Opponent markets ‘The Insiders’ influencer platform, which is a leading global community platform, operational in more than 40 countries, including Australia.
The Insiders platform spreads word of mouth reviews and comments about a range of products. It is an online community platform whereby any person above 14 years of age with parental consent or 18 years of age or above without, can sign up, create a profile and take part in a range of campaigns to test and trial certain products and write reviews for the brand owner and other users of the platform.
Consumers can go to our Australian version of the website ( and become a member of the platform. We actively use the trade mark ‘The Insiders’ to publish and interact with our Insiders community.
We provide marketing services to our clients, based on shopper influencers …
THE INSIDERS is the name of our community. Our members are called ‘Insiders’ and this is reflected in every medium through which we communicate:
Online: website, member dashboard, mailings
Offline: printed materials (guides, letters)
The Opponent is the owner of the trade marks listed below. As both marks are identical and indeed TM 1670258 effectively subsumes the earlier mark this decision shall refer to them as the ‘Opponent’s Trade Mark’. The goods and services for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods and Services’.
Number
Trade Mark
Priority Date
Goods or Services
1533976[4]
17 Sep 2012
Class 35: Advertising, business management; business administration; office functions
1670258[5]
24 Oct 2014
Class 16: Paper, cardboard; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; printing blocks
Class 35: Advertising; business management; business administration; office functions
[4] Endorsement: Colour Claimed: TURQUOISE (Pantone 3125C)
[5] Endorsements: Colour Claimed: TURQUOISE (Pantone 3125C), Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
In addition to the statements extracted in paragraph 9, the Cassier Declaration also states that the Opponent first used the plain words THE INSIDERS as a trade mark in Australia in December 2018 and has promoted the Opponent’s Trade Mark via affiliate online marketing for their campaigns. It provides confidential evidence of sales in Australia which are unimpressive, key customers (which I would categorise as a small number of blue-chip companies in the electronics industry), as well as evidence of use of the Opponent’s Trade Mark on its website and Facebook page. The Opponent provides international figures for the number of Facebook likes and global sales which are fairly impressive.
The Applicant
The Applicant is an Australian media company, formally known as Bauer Media. Rubetzki 1 and 2 annex evidence that was filed by the Applicant in respect of the Earlier Decision, being a declaration of Adrian Goss, the then General Counsel and General Manager of the Applicant and Macek Rubetzki, who acted for the Applicant in the Earlier Decision.
The relevant claims/statements in Rubetzki 1 and 2, including the declarations in the annexures can be summarised as follows:
· The Applicant adopted and first used the Trade Mark in April 2014 and did so in awareness of the Opponent’s Trade Mark (then an application but one that the Applicant believed would not achieve protection) but did not believe there was any prospect of confusion given the visual, aural and semantic differences between the marks as well as the different uses given the intended use of the Trade Mark for a research tool.
· The Applicant has used the Trade Marks for its qualitative and quantitative research tool and research platform that enables the Applicant to conduct significant market research projects for its clients. The Applicant has enrolled significant numbers of people in studies under this tool and has promoted the Trade Marks through both online media and offline media, particularly magazines published by the Applicant such as Women’s Day and The Australian Women’s Weekly. The Applicant is not aware of any confusion between the parties surrounding the use of the respective Trade Marks.
The annexures to Rubetzki 2 include examples of use of the Opponent’s Trade Mark in Australia by the Opponent in 2019 and 2022, as well as searches using the terms ‘insiders advertising’ and ‘insiders research’. They also include evidence of the number of people enrolled in its Insides Community program, and number of surveys conducted, which, given the population of Australia, is a modest number.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
The onus of proof in an opposition rests upon the Opponent.[6] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[7] 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.[8]
Discussion
[6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[7] 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).
[8] 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).
Section 44
The relevant provisions of s 44 are 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).(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.
To successfully oppose the applications pursuant to s 44 the Opponent must establish the requirements of s 44(1) or (2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Marks (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Marks (‘the second requirement’); and
· is in respect of similar goods/services, and/or goods/services which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the applications (or allow them to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Marks, other circumstances which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of each of the Opponent’s registration. The Applicant does not submit that s 44(4) is applicable in this case and for completeness I reach the same conclusion.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark. Each of registrations of the Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Marks.
Similar goods/Similar services
Section 14 relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
McCormick & Company Inc v McCormick, set out below, summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods. Similar principles apply to the question of whether the services for which the Opponent’s Trade Mark is registered are services of the same description as the Applicant’s Services:
Whether the relevant goods are of the same description is essentially a question of fact.
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the 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 and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.
On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [9]
Closely related goods or services
[9] [2000] FCA 1335, [17] (Kenny J).
The case of Paypal, Inc v Braintree Communications Pty Ltd[10] summarises the legal principles applicable when determining if the Opponent’s Goods and Services are closely related to the Applicant’s Goods and Services as follows, that is the goods for which the Opponent’s Trade Mark is registered are closely related to the Applicant’s Services and the Services for which the Opponent’s Trade Mark is registered are closely related to the Applicant’s Goods:
[10] [2017] ATMO 90.
In Qantas Airways Ltd v Edwards[11] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[12]:
[11] [2016] FCA 729, [111] (Yates J).
[12] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).
... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
Yates J continued:
His Honour also said in this connection that “closely related” was of wider import than “similar”.
Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:
Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...
His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):
... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.
Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.
However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.
This understanding is supported by the following passage in [39] of his Honour’s reasons:
... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 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.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.
His Honour concluded at [40]:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.
The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [13]
[13] [2017] ATMO 90, [28]-[29] (Hearing Officer Thompson).
A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[14] namely:
[14] [1993] ATMO 55 (Hearing Officer Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
I am aware of the finding in the Earlier Decision that the third requirement was satisfied for the services for which the Trade Mark was sought to be registered in that case, however the Applicant’s Goods and Services are different to the services in that opposition.
The Opponent’s Trade Mark is registered for ‘Advertising; business management; business administration; office functions’. The Opponent’s Submissions on this point do not assist me, simply asserting that the overlap and similarities ‘are readily apparent’. I find that there are no ‘readily apparent’ similarities between the Opponent’s Services and the Applicant’s Goods in class 9 which relate to computer software and various other downloadable digital products and nor are they closely related under the legal test outlined above. Furthermore, I do not find the Applicant’s Goods to be similar to the Opponent’s class 16 goods which relate to paper products and other stationary. The third requirement is not satisfied in respect of the Applicant’s Goods.
With respect to the Applicant’s Services, I have broadly reached the same conclusion as in the Earlier Decision. While the Applicant makes much of the difference between its services, which are partially focused on measuring the efficacy of an organisation’s marketing strategies, I am satisfied that such services fall within the broad category of services that are described as ‘advertising; business management’. While there are organisations who specialise in the narrower category of services that the Trade Mark is sought to be registered the provision of services such as market research, preparation of publicity documents and material, and analysis of the success of such advertising is a common part of any advertising campaign and one that a company providing advertising and business administration services would be expected to offer as part of a broad range of advertising services. To put it another way, the Applicant’s Services are often produced by the same entities, are of a similar nature, and sold to the same customers as the Opponent’s Services. I find that the third requirement is satisfied in respect of the Applicant’s Services.
Substantially identical and/or deceptively similar
In the Earlier Decision the Delegate found that the Trade Mark and Opponent’s Trade Mark were not substantially identical but were deceptively similar. This decision was not appealed but the Applicant submits I should disregard the earlier decision on a number of grounds including that the services sought were different (which I accept but not in a manner that impacts my consideration of deceptive similarity) and that the evidence in the current proceedings differs from the Earlier Decision, in particular that new evidence is provided concerning the common use of INSIDERS for the provision of advertising and research services. I am unpersuaded by these submissions and I adopt the reasoning in paragraph 27 of the Earlier Decision. In particular while there is some use of the term ‘insiders’ in the advertising and marketing industry, I do not consider this term descriptive in respect of the Applicant’s Services nor common to the trade. I find the Trade Mark and the Opponent’s Trade Mark to be deceptively similar.
With respect to the Fancy Mark (which was not the subject of the Earlier Decision), the Fancy Mark is not substantially identical to the Opponent’s Trade Mark for the same reasons that the Trade Mark was found not to be substantially identical set out in Paragraph 24 of the Earlier Decision (noting that the Fancy Mark contains additional elements that further distinguish the respective marks). With respect to the question of deceptive similarity, the Fancy Mark is simply the Trade Mark with background colouring and a small amount of stylisation. The reasons set out in paragraph 27 of the Earlier Decision, particularly the discussion of THE INSIDERS representing the principal and memorable concept of the Opponent’s Trade Mark are applicable to the Fancy Mark and as such I find the Fancy Mark and the Opponent’s Trade Mark deceptively similar.
That, however, is not the end of the matter as the Applicant is seeking to rely on the provisions of s 44(3). Section 44(3)(a) concerns ‘honest concurrent use’, while s 44(3)(b) concerns ‘other circumstances’.
Subsection 44(3)(a): Honest Concurrent Use
31.In McCormick & Co Inc v McCormick[15] Kenny J stated:
[15] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
The first McCormick criterion concerns the honesty of adoption of the Trade Marks. Here, in the presence of different evidence, I reach a different conclusion than reached in the Earlier Decision. In the Earlier Decision the absence of direct evidence from Mr Rubetzki, who was the Applicant’s legal counsel when the Applicant adopted the Trade Mark, was the subject of criticism and resulted in a finding that the delegate was not persuaded that the mark was adopted honestly. In this case, Mr Rubetzki gives evidence, somewhat against his own client’s interest, that the Applicant adopted the Trade Marks in awareness of the then pending application 1533976. However the Applicant did not believe that there was any realistic prospect of confusion due to the stylistic differences between the marks and the view taken that the qualitative and quantitative research tools were sufficiently different to the broader business services for which the Opponent’s Trade Mark was sought to be registered, hence confusion was not likely to result.
While I have not reached the same conclusions as the Applicant did about respective differences between the marks and the services, I do not think the Applicant was unreasonable or willfully blind to reach those conclusions. The process of identifying a brand and determining the legal risk of its use is not an exact one and it was not unreasonable for the Applicant to reach the conclusions it did and proceed with its use. Furthermore, given there had been little or no use of the Opponent’s Trade Mark in Australia at the time of adoption, I do not conclude that the decision of the Applicant to adopt the Trade Marks was in any way motivated by the Applicant’s knowledge of the Opponent and in particular motivated by any prospect of taking advantage of any reputation the Opponent may have had in a similar mark. I am, therefore, satisfied that the Trade Marks were adopted honestly.
With respect to the second McCormick criterion, the Trade Mark had been used for 7 years at the relevant date. The Applicant had a reasonable number of clients and, since 2018, a not insignificant number of members enrolled in its program providing answers to its surveys. There was some level of advertising using the Trade Mark through the Applicant’s publications, but the Trade Mark was not used in a prominent manner in some of these advertisements (the ones relating to the results of the surveys conducted by the Applicant) and many other advertisements are about recruiting participants to the survey, rather than advertising the goods and services offered under the Trade Mark. The figures of direct revenue are low.
Balanced against the relatively low level of use is the absence of any evidence of confusion, as well as the limited degree of confusion likely to ensure due to the differences between the respective uses of the marks. I note that this is not a case where the respective trade marks fall into the category of ‘triple identity’, which the Trade Marks Office Manual of Practice and Procedure defines as those cases involving ‘trade marks which are identical or substantially identical and used for the same goods/services in the same geographical area (namely Australia)’. There is lesser risk of confusion inherent in the respective marks than in other cases where this office has had to consider the operation of s 44(3)(a).
With respect to the relative inconvenience to the parties if the Trade Mark were to proceed to registration (the final McCormick criterion), while I am aware that the parties have had disputes, I have no specific evidence before me of any inconvenience to the Opponent if the Trade Mark were to proceed to registration as there is no evidence before me of any confusion arising between the respective marks.
While the process of assessing honest concurrent use is not a mechanical calculation of the five factors set out in paragraph 17, given the differences between the marks, the moderate level of use and the absence of evidence of confusion, I am persuaded that that this is a case where it is appropriate to apply the provisions of s 44(3)(a) of the Act and accept the registration of the Trade Mark for a subset of the Applicant’s Services, notwithstanding that the requirements under ss 44(1) and (2) have been satisfied. The subset relates to services directly relating to market research for which the Trade Mark has been used. I reach the same conclusion with respect to the Fancy Mark. The Trade Mark and the Fancy Mark are substantially identical such that the use of the Trade Mark outlined in paragraph 34 should also be considered to be use of the Fancy Mark.
The Applicant also suggests that I allow registration of the Trade Marks under s 44(3)(b) of the Act. The arguments provided by the Applicant at paragraph 123 of the Applicant’s Submissions merely repeat the arguments made in respect of honest concurrent use (and do not persuade me that any outcome different to that reached under 44(3)(a) should be reached), or (in respect of paragraph 123(c)) are generally unpersuasive. I do not find that s 44(3)(b) of the Act should be applied in this case.
I find the s 44 ground to have been established for both marks in respect of a subset of the Applicant’s Goods and Services. The s 44 ground has not been established (and hence the remaining grounds of opposition will need to be considered with respect to) for this modified set of the Applicant’s Goods and Services (‘Remaining Goods and Services’) being the Applicant’s Goods and the subset of the Applicant’s Services for which honest concurrent use has been established. The Remaining Goods and Services are Class 9: Downloadable podcasts; downloadable computer files; downloadable computer software; downloadable digital applications and apps; downloadable video; downloadable music; audio equipment; cameras; batteries; humidity meters; kitchen scales and Class 35: market research including market research conducted using focus panels and groups; organisation of focus panels and groups for business, or commercial research purposes; audience and market response analysis, monitoring and surveying; opinion research, polling and analysis; surveys (opinion polling); marketing studies; consumer ratings analysis and surveys; promotional studies
Section 58 – Applicant not owner of trade mark
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.
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 Marks are identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[16]
· that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[17] and
· that a person other than the Applicant has the earlier claim to ownership of the Trade Marks 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 Marks by the Applicant (‘the third factor’).[18]
[16] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..
[17] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[18] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The ground based on s 58 was particularised in the SGP as follows:
The opponent has for many years, since at least 2012 used the INSIDERS trade marks in respect of services covered by the [respective trade mark applications].
The applicant is therefore not the owner of the trade mark.
For the reasons set out in paragraphs 27 and 28 above I have found that neither of the Trade Marks are substantially identical to the Opponent’s Trade Mark. 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
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.
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.
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.[19]
[19] [2023] FCA 487, [20]-[21] (Kennett J)
In McCormick & Co Inc v McCormick,[20] 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’.[21] 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 …[22]
[20] [2000] FCA 1335.
[21] Ibid, [81].
[22] (1992) 33 FCR 302, 343.
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 its 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.[23]
[23] (1999) 47 IPR 423, 436.
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[24] 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.[25]
[24] [2000] FCA 1587.
[25] 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).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The Opponent had, before the priority date (19 May 2021), acquired a reputation in Australia in the INSIDERS trade marks, including in relation to market and business research, business management and organising and conducting of competitions.
The use of the similar trade mark by the applicant would be likely to deceive or cause confusion in the market place, including by falsely suggesting that the applicant’s goods and services are those of the opponent or that the applicant or its goods and services are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent.
In the present case, the evidence of the use of the Opponent’s Trade Mark is mostly in respect of use outside Australia. While the Opponent does have a small array of blue-chip clients in Australia, the sales figures for Australia are unimpressive. Moreover, the customer base of the Opponent (being companies seeking marketing services) is likely to be sophisticated and less likely to be confused by the similarities between the respective marks than for services targeted at consumers. I am satisfied by the limited evidence of use in Australia and the more extensive evidence of use internationally before me that the Opponent’s Trade Mark had, before the relevant date, acquired a limited reputation in Australia for marketing services, sufficient for the requirements under s 60(a).
It is not sufficient that the Opponent merely establish that its trade marks had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[26]
[26] (1937) 58 CLR 641, 658.
In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:
(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.[27]
[27] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[28]
[28] [2012] ATMO 124, [40] (Hearing Officer Thompson).
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[29]
[29] [2016] FCA 729, [142] (Yates J).
Finally, I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Marks by the Applicant, rather than actual use or any reputation acquired by the Trade Marks.[30]
[30] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.
I am satisfied that confusion is unlikely to occur based on the reputation of the Opponent’s Trade Mark. I reach this conclusion based on the limited reputation of the Opponent’s Trade Mark in Australia, the differences between the marks outlined earlier in the decision, that the Applicant’s Goods are not in any way similar to the marketing services for which the Opponent’s Trade Mark has acquired a reputation and the fact that the customer base for the parties’ respective marketing services and market research services is a sophisticated one and less likely to discount the various differences between the Trade Marks and the Opponent’s Trade Mark than would occur were the services targeted at the broader community.
I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.
Section 42
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.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[31] 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’.[32]
[31] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent has particularised the ground of opposition in the SGP as follows:
The opponent had, before the priority date (19 May 2021), acquired a reputation in Australia in the INSIDERS trade marks, including in relation to market and business research, business management and organising and conducting of competitions.
The use of the similar trade mark by the applicant would be likely to amount to conduct that is misleading and deceptive or is likely to mislead or deceive in breach of sections 18 and 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010), including by falsely suggesting that the applicant’s goods and services are those of the opponent or that the applicant or its goods and services are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent.
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,[33] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Marks would be contrary to s 18 of the ACL.
[33] 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).
Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[34], 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 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[35] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.
[34] [2014] ATMO 65, [50] (Hearing Officer Wilson).
[35] [2003] FCA 104, [107] (Beaumont J).
For these reasons I am not satisfied that use of the Trade Marks by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Section 62A
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[36]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[37]
[36] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).
[37] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[38]
[38] Ibid [165]-[166].
The Opponent has particularised this ground of opposition in the SGP as follows:
The applicant was aware of the opponent’s prior rights in the INSIDERS trade mark at the time of the filing by the applicant of [relevant trade mark application] (“Trade Mark”).
At the time of the filing of the application, the applicant knew that it was not the owner of the Trade Mark and, further, that it was not entitled to hold itself out as the owner of the Trade Mark, by filing the application.
The adoption and subsequent filing of the Trade Mark in circumstances in which the applicant was aware of the prior rights of the opponent amounts to conduct that falls short of the acceptable standards of commercial behaviour.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[39] In the present case the Opponent’s Submissions at paragraphs 72 and 73 do not reflect the particulars referred to above. They appear to suggest that I should find bad faith because the applications were filed on the same date as the oral hearing that resulted in the Earlier Decision. As this allegation was not particularised in the SGP I shall not consider it other than to note that the Fancy Mark was not the subject of the Earlier Decision, the Trade Mark is sought to be registered for different goods and services, and that neither the Earlier Decision, nor the present one, has reached the conclusion that the Applicant is not the owner of the Trade Marks. The Applicant has provided an explanation, for its adoption of the Trade Marks, which I have discussed and accepted during my consideration of s 44(3)(b), above. Given that I have accepted the adoption of the Trade Marks was done honestly I am not persuaded that the filing of the present applications to register the Trade Marks, notwithstanding that they were made in awareness of the Opponent and its rights, were made in bad faith. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.
[39] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
Resolution of Opposition
In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[40]
[40] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
While I am unpersuaded that the Applicant has any particular intention of using either of the Trade Marks for the Applicant’s Goods, in the absence of the Opponent raising the s 59 ground (and hence providing the Applicant with notice that it should file evidence on the subject), I do not think it unreasonable to refuse to offer an amendment to the Applicant’s Goods and Services on the basis of such speculation. Accordingly, with respect to the services for which honest concurrent use of the Trade Marks has been established, I think it reasonable to offer an amendment allowing it to amend the applications to the more narrow range of services for which honest concurrent use has been established.
On May 15, 2024 I provided the Applicant with an opportunity to amend its application for the Fancy Mark to the Applicant’s Goods and the Trade Mark to the Revised Goods and Services. The amendment has now been made and on that basis I find that the Opposition under s 44 has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.
Decision and Costs
Following the amendments referred to in the paragraphs above I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark nos. 2179953 and 2179954 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the applications should be in accordance with the Court’s order or direction.
Both parties have sought an award of costs in their favour. As each party has had a degree of success I make no order as to costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
21 May 2024
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