The Institute of Chartered Accountants in Australia v Association of International Certified Professional Accountants

[2016] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by The Institute of Chartered Accountants in Australia to protection of International Registration Designating Australia 1436245(35) - CHARTERED GLOBAL MANAGEMENT ACCOUNTANT - held in the name of Association of International Certified Professional Accountants.

Delegate:

Jock McDonagh

Representation:

Opponent: Shauna Ross, of Counsel, instructed by Maddocks Lawyers

Applicant: Susan Gatford of Counsel, instructed by Macpherson + Kelley Lawyers

Decision:

2016 ATMO 94

Reg. 17A.29 opposition – Grounds pursued under sections 42(b), 43, 44, 60 and 62A not established – IRDA to be granted protection.

Background

1. On 22 March 2011, the American Institute of Certified Public Accountants (now the Association of International Certified Professional Accountants) (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1081526. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade mark:       

CHARTERED GLOBAL MANAGEMENT ACCOUNTANT

Trade mark application:

International Registration:

1436245

1081526

Filing Date:

22 March 2011

Specification:

Class 35: Association services, namely, promoting the interests of financial and management accountants; and providing information and advice in the fields of accountancy and financial reporting

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). The IRDA was provisionally refused under sections 41 and 44 of the Trade Marks Act 1995 (‘the Act’). However, following withdrawal of the section 44 objection, and provision of evidence of use filed by the Holder, the provisions of subsection 41(5) of the Act were applied. IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 20 December 2012. 

2. The Institute of Chartered Accountants in Australia (now Chartered Accountants Australia and New Zealand) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 19 June 2013. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and filed evidence as provided by the Regulations.

3. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 11 May 2016.  Shauna Ross of Counsel, instructed by Maddocks Lawyers, appeared for the Opponent. The Applicant was represented by Susan Gatford of Counsel instructed by Macpherson + Kelley Lawyers.

   Evidence

4. The following evidence was filed in the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Tina Fisher	General Manager Sales & Marketing of Opponent	23.09.13 “Fisher 1”
Evidence in Answer
Teighlor Simon March	Assistant General Counsel American Institute of Certified Public Accountants	21.01.14 “March”	TSM-1 to TSM-17
Evidence in Reply
Tina Fisher	General Manager Sales & Marketing of Opponent	27.03.14 “Fisher 2”

Discussion

1. The Opponent relied on sections 42(b), 43, 44, 60 and 62A of the Act as the grounds of opposition. Regulations 17A.28 and 17A.34 extend grounds for rejection of, and opposition under the Act to IRDAs.

   Section 44 – Identical etc. trade marks

2. Section 44 of the Act states:

(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)  the applicant’s trade mark 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 similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

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

             (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar servicessee subsection 14(2).

Note 3:       For priority datesee 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 limitationssee 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 titlesee section 6.

Note 3:       For priority datesee section 12.

1. Thus to found its ground under subsections 44(1) and (2) the Opponent relevantly has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Holder and which:

   ·        has a priority date earlier than that of the opposed trade mark; and

   ·is registered or made in respect of the same or similar goods/services or closely related services/goods; and

   ·has a trade mark substantially identical or deceptively similar to the opposed trade mark.

2. The registrations (‘ICAA Marks’) relied upon by the Opponent are as follows:

Trade Mark No.	Trade mark	Goods/Services
666092 Priority date 7.7.95	Class 16: Printed matter, publications, newsletters, books and brochures relating to The Institute of Chartered Accountants in Australia or its members
666093 Priority date 7.7.95	Class 35: Accounting services; auditing services; professional consultation services in this class; business management assistance; business management consulting; business organisation consulting; commercial management assistance; commercial management consulting; business investigations; advisory services for business management; valuation services in this class; all such services being provided either by the Institute of Chartered Accountants in Australia or its members
666094 Priority date 7.7.95	Class 36: Financial services including financial management services relating to business, profession and retirement; financial analysis; financial valuations, fiscal valuations; financial management; financial assessments; fiscal assessments; investment services; valuation services in this class; all such services being provided either by the Institute of Chartered Accountants or its members
902551 Priority date 6.2.02	CA CHARTER	Class 9: Computer software; computer firmware; computer hardware; computer peripheral devices in this class; magnetic and optical data media including CD ROMs and floppy disks; calculators, adding machines; accounting machines; multi-media products in this class; web site and Internet products in this class; interactive computer products in this class; databases; electronic notice boards; computer programs including interactive computer programs; audio and visual products in this class including records, cassette tapes, compact discs, video tapes, DVDs and video discs; and manuals for use with any of the foregoing, sold as a package Class 16: Printed matter; printed publications including books, booklets, magazines, periodicals, journals, manuals, newsletters, brochures and pamphlets; stationery; photographs; instructional, promotional and teaching materials (except apparatus) in this class Class 41: Publishing; electronic publishing; electronic publication of information on a wide range of topics, including on-line publication; organisation of competitions for education and/or entertainment; information services (including on-line information services) relating to education, entertainment, recreation or cultural activities; educational examination; correspondence courses; education services; advisory services in this class; arranging and conducting training; arranging and conducting professional development programs; teaching services; organisation of competitions for education and/or entertainment; publication of information on the Internet; conduct of educational seminars and workshops Class 42: Maintenance of Internet sites, being the updating of information on these sites; research and development for others; provision of access to databases containing information on a wide range of topics, including provision of on-line access

1. The ICAA Marks have earlier priority dates. Before considering similarity of goods/services, I will first consider the similarity of the opposed trade marks. The Opponent does not assert that substantial identity is in issue, with which I concur.

2. The term deceptively similar is defined in section 10 of the Act as follows:

   10. 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.

3. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

4. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said: 

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. The standard which is applied to the assessment of whether the trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

6. The trade mark the subject of the IRDA is CHARTERED GLOBAL MANAGEMENT ACCOUNTANTS, while three of the ICAA Marks comprise a device showing the monogram CA in a circle above the words CHARTERED MANAGEMENT ACCOUNTANT, while the fourth comprises the words CA CHARTER.

7. I have previously considered a similar opposition matter The Chartered Institute of Management Accountants v The Institute of Chartered Accountants in Australia (‘CIMA v ICAA’) [1] in which the first three of the ICAA Marks were cited against CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. I consider that the principles I applied earlier apply here.

   [1] [2015] ATMO 121 at [21] – [26].

8. While the words ‘chartered’, ‘management’, and ‘accountant’ are common to both the trade mark the subject of the IRDA and the ICAA Marks, these terms are descriptive and common to the accountancy profession[2]. The word order is also important here, such that if the IRDA were rendered as GLOBAL CHARTERED MANGAGEMENT ACCOUNTANTS, the degree of similarity would be exponentially increased.

   [2] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216

9. The device in the first three ICAA Marks occupies the dominant position in the overall image. By contrast, the IRDA is a descriptive string of words without a graphic element.

10. The words of the IRDA set the concept that the trade mark is a badge of origin of a society or organization, whereas the first three ICAA Marks tend to describe a person’s professional qualification, and the fourth has no clear meaning. The IRDA is also obviously the business name of the Holder.

11. I consider that there are significant visual, aural, and conceptual differences that are relevant to the assessment of how a person would recall the respective marks. Even allowing for imperfect recollection, there are sufficient differences to enable distinction.

12. I am not satisfied that there is a reasonable likelihood of deception or confusion if the IRDA was given protection in Australia or that there is a real likelihood that some people will wonder or be left in doubt about whether the goods and services in question come from the same source. The ground of opposition under section 44 has not been established.

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

13. Section 60 of the Act provides:

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

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

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

    Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at paragraph 81:

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

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

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

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

3. Further, at 127, Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

4. In CIMA v ICAA, I found – on similar evidence as adduced in this matter – that the Opponent had the required reputation in the trade marks THE INSITUTE OF CHARTERED ACCOUNTANTS IN AUSTRALIA, CHARTERED ACCOUNTANTS, and the CA device. In this matter, the CA device is likely to have a similar reputation, which might also be attributed to the ICAA Marks here. The evidence is not as clear as in CIMA v ICAA, however, and it is difficult to determine which of the ICAA Marks have obtained the requisite reputation, other than the CA device.

5. The absence of the CA device in the IRDA would be noticed by the likely consumer base of the relevant services.

6. I do not consider that there is a real and tangible danger that the use of the IRDA would be likely to cause confusion in light of such reputation as existed in any of the ICAA Marks as at the priority date. This ground of opposition has not been established.

   Subparagraph 42(b) use contrary to law

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

   42Trade mark scandalous or its use contrary to law

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

   (a)         …

   (b)         its use would be contrary to law.

8. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘the ACL’), being Schedule 2 to the Competition and Consumer Act 2010.

9. In support of this ground, the Opponent contends that its members are required to submit to rigorous and stringent processes to entitle them to call themselves ‘Chartered Accountants’ and that the Opponent has a significant and valuable reputation in its ‘Chartered Accountant’ brand. Further, and different to its case in the ICAA v CIMA matter, the Opponent asserts that the Holder does not have a Royal Charter and may not use the designation ‘Chartered’.

10. Ms Gatford for the Holder pointed out that the Statement alleged “the Applicant is not authorized by law or entitled to use the ‘CHARTERED’ designation in combination with the word ‘ACCOUNTANT’. Accordingly, use and registration of the Applicant’s trade mark would be likely to mislead and deceive Australian consumers … into believing that the Applicant was a ‘CHARTERED’ accounting organization which it is not and that the Applicant’s services originate from the Opponent.’

11. I note that the words ‘chartered’ and ‘accountant’ are separated by the words ‘global management’, which tends to dilute the first adjective’s effect on the noun.

12. More importantly, while I acknowledge the evidence in Fisher 1 to the effect that the Opponent was established under a Royal Charter in 1928, and that the Opponent is the only Australian professional association qualified to endow the appellation “Chartered Accountant’, there is no evidence to support the contention that the Holder may not use the word ‘chartered’ in its IRDA. Nor is there evidence to support the assertion that Australian consumers would assume that the word ‘chartered’ would mean that a particular accountant was qualified by Royal Charter or a member of a body established by Royal Charter.

13. I also note that, as shown in March at [28], one of the Holder’s constituent bodies is the Chartered Institute of Management Accountants (CIMA), a body established by Royal Charter which endows Chartered management Accountant status on its members. March also evidences the mutual professional recognition of each other’s qualifications by the constituent bodies of the Holder, CIMA and the Association of International Certified Professional Accountants (AICPA).

14. Therefore, I am not satisfied that the Trade Mark is proclaiming misleading or deceptive attributes by the use of its business name. This leaves the misleading or deceptive nature of its name when it is used in the same market as the ICAA Marks.

15. In the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[3]  Gibbs C.J. said (at page 6):

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

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

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52 [the equivalent provision under the now repealed Trade Practices Act 1974].”

    [3] [1982] HCA 44; (1982) 42 A.L.R. 1.

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

    Section 43 Trade mark likely to deceive or cause confusion

17. In the Statement, the Opponent stated:

    The Applicant’s trade mark incorporates the word ‘CHARTERED’ which connotes that the Applicant has been granted authorisation by the Sovereign or Privy Council to use this designation and has attained the special status afforded to chartered bodies. The Opponent is the only Australian body to have been granted a Royal Charter by the Privy Council for accounting services. The Applicant is not entitled to use the ‘CHARTERED’ designation and the Applicant’s use of ‘CHARTERED’ is a clear misrepresentation and is likely to cause confusion and mislead, deceive or confuse Australians.

18. Section 43 provides:

    43Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

19. To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. The comments of Gyles J in Pfizer Products Inc v Karam[4] outlined the history of section 43 of the Act, stating that:

    [4] (2006) 70 IPR 599 (at [52 -53]).

    Section 43 does not have a long pedigree. It was enacted pursuant to Australia’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS and the 1992 Working Party Report led to a 1994 Bill containing the following cl 42(2):

    ‘An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding:

    (a)the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or

    
    (b) any connection or relationship that they may have with any particular person.’

    That Bill was enacted but never came into force. In the 1995 Bill (and Act) cl 42(2) of the 1994 Bill was replaced by what is now s 43 of the 1995 Act. The Explanatory Memorandum stated that cl 43 provides:

    ‘That an application for registration must be rejected if the trade mark ... because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods or services.’
    [Emphasis added]

    It seems that the final form of s 43 is a wider version of the earlier clause with a similar purpose.

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…

20. Recently, in Primary Health Care Limited v Commonwealth of Australia[5], Jagot J stated:

    [5] [2016] FCA 313 at [17].

    Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):

    (1)      The section:

    looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).

    (2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).

    (3) The purpose of s 43:

    is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).

    (4)      “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).

    (5)      “The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).

    (6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).

    (7)      All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).

    (8)      The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).

21. The Opponent is in effect pleading an alternative to the previous ‘contrary to law’ ground, where it submitted that the IRDA was a direct statement to the effect that the Holder was a body established by Royal Charter. Here the Opponent alleges that the IRDA has a secondary meaning to the same effect. Again, there is no evidence that relevant consumers would draw that connotation from the IRDA.

22. Further, in my opinion, if a relevant consumer did think that the Holder was established by Royal Charter, that would not necessarily be deceptive or misleading. The Royal Charter has allowed the Opponent and CIMA (a constituent body of the Holder) to certify suitably qualified accountants with a professional qualification. AICPA (another constituent body of the Holder) likewise certify suitably qualified persons with a professional qualification. CIMA and AICPA mutually recognize each other’s certification.

23. I am not satisfied that the connotation as pleaded in the Statement has been established. In any event, if such connotation had been established, I am not satisfied that it would be likely to cause confusion and mislead, deceive or confuse consumers. The opposition under section 43 is not established.

    Section 62A Application made in bad faith

    46. Section 62A of the Act provides:

    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.

    47.   Bad faith was judicially considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) wherein Dodds-Streeton J stated:

    Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    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…

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[6]

    48.   This approach was endorsed by Bennett J in DC Comics v Cheqout Pty Ltd.[7]

    49.   In the Statement, the Opponent alleged ‘[a]s at the date of application the Applicant possessed knowledge of the Opponent’s use and reputation in ‘CHARTERED ACCOUNTANT’ and ‘CHARTERED MANAGEMENT ACCOUNTANT’ that it had accrued since the 1920s because the Applicant and Opponent were both founding members of the Global Accounting Alliance on 2006. In the absence of a Royal Charter, the Applicant knew it was not entitled to use the ‘CHARTERED’ designation and accordingly its application has been made in bad faith to deliberately capitalize on the Opponent’s long-standing reputation.

    50.   While I am satisfied that the Holder has been aware of the Opponent (and probably its trade marks) since 2006, I am not satisfied that this along with the use of the word ‘chartered’ along with the word ‘accountant’ amounts to bad faith. Given that a constituent body of the Holder, CIMA, uses those words apparently in good faith tends to disprove the Opponents claim for a monopoly in the descriptive word. As Ms Gatford for the Holder pointed out, the High Court has noted that there is a price to be paid for the adoption of a descriptive name.[8]

    51.   I am not persuaded that the Opponent has discharged the onus of establishing that the Holder, as at the priority date, applied for extension of protection of the IRDA in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to apply for extension of protection of the IRDA as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

    52. Accordingly I find that the s 62A ground of opposition has not been established.

    [6] [2012] FCA 81 [164].

    [7] [2013] FCA 478.

    [8] Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216.

    Decision

24. Regulation 17A.34 provides:

    17A.34Decision on opposition

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

    (2)The Registrar must tell the International Bureau of the Registrar’s decision.

25. I find that the Opponent has not established any of its grounds of opposition. Therefore, I direct that protection of IRDA 1436245 be extended in respect of all the listed goods and services one month from the date of this decision.

26. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided with protection proceeding or discontinued or, if this decision be successfully appealed, that the application be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg 17A.34(2).

    Costs

1. Both parties sought their costs. Costs may follow the event and I award costs against the Opponent at the scale set out in the Regulations.

   Jock McDonagh

   Hearings Officer

   Trade Marks Hearings

   2 November 2016