The Institute of Chartered Accountants in Australia v the Chartered Institute of Management Accountants

[2015] ATMO 121

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 Registrations Designating Australia 1455843 (9, 16,

35,    36,    41,    42,     45)    -     THE    CHARTERED    INSTITUTE    OF

MANAGEMENT ACCOUNTANTS – held by The Chartered Institute of Management Accountants.

and

Re:Opposition by The Chartered Institute of Management Accountants to registration of trade mark application 1473990 (9, 16, 35, 36, 41, 42, 45) - THE INSTITUTE OF CHARTERED ACCOUNTANTS IN AUSTRALIA

- filed in the name of Chartered Accountants Australia and New Zealand.

DELEGATE:  Jock McDonagh

REPRESENTATION:             Opponent  1455843/  Applicant  1473990  Shauna  Ross,  of  Counsel, instructed by Sparke Helmore Lawyers

Applicant  1455843/  Opponent  1473990  Siobhan  Ryan  of  Counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys

DECISION:  2015 ATMO 121

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

Section 52 opposition – Grounds pursued under sections 44 and 60 not established – trade mark to proceed to registration

No order as to costs

Background

1. This decision relates to two opposition matters between Chartered Accountants Australia and New Zealand, also known as The Institute of Chartered Accountants In Australia, (‘ICAA’) and The Chartered Institute of Management Accountants (‘CIMA’). It is convenient to deal with the matters together as the issues and evidence are related and, at the request of the parties, were the subject of a single hearing before me, as a delegate of the Registrar, in Canberra on 17 July 2015. Shauna Ross,

of Counsel, instructed by Sparke Helmore Lawyers, represented CIMA. Siobhan Ryan of Counsel, instructed by Griffith Hack, Patent and Trade Mark Attorneys, represented ICAA. I will deal with the respective oppositions here  in  the chronological order of priority dates.

1. Application 1455843 is an international registration designating Australia (“IRDA”). It was filed in the name of CIMA under the Madrid Protocol on 4 May 2011, claiming Convention priority of 18 April 2011.

1. Details of the IRDA are as follows:

Trade mark:

THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS

Trade mark application: International Registration:

1455843

1093813

FilingDate:

4 May 2011

Specification:

Class 9: Computer software; computer software downloadable from the Internet; computer software being information databases for collating information; electronic databases recorded on computer media; magnetic data carriers; magnetic cards; encoded cards; calculators; downloadable electronic publications; apparatus and media for receiving, recording, storage, transmission and reproduction of sound and/or images; electronically recorded data featuring MP3s, JPEGs, MPEGs, CDs, DVDs; recordings of sound and images stored in digital or analogue form; mouse mats; parts and fittings for all the aforesaid goods

Class 16: Printed matter; printed publications; books; handbooks; manuals; periodicals; journals; magazines; guides; newsletters; workbooks; study textbooks; instructional and teaching materials; education and training course materials; printed business reports; printed guidelines; stationery; writing and drawing instruments; pens, pencils; folders; diaries, calendars and address books

Class 35: Accounting services; auditing services; promotion services; business management services; business research services; business consultancy services; business information services; business policy review, development and implementation services; business problem identification, analysis and resolution services; business priority identification and analysis; employment research services; employment consultancy services; employment information services;  career  planning  services;  market  research

services; compilation of information into computer databases; database management services; promotional services being the promotion of interests of the members of an association and the provision of business support or advice; advisory, consultancy and information services relating to all the aforesaid; research, analysis and development of new  and existing organisational and business  models, structures, practices and strategies

Class 36: Financial services; monetary services; insurance services; financial sponsorship of education and training activities and conferences; advisory, consultancy and information services relating to all the aforesaid
Class 41: Education services; training services; continual professional development tuition services; organizing and conducting classes, workshops, training courses, correspondence courses, lectures, seminars, symposiums, conferences and exhibitions; examination services; organizing, arranging and conducting examinations; electronic examination processes; educational assessment services; skills assessment services; instruction services; organisation of educational events; providing facilities for classes, workshops, seminars, symposiums, conferences, examinations and exhibitions; provision of educational examination facilities; provision of facilities for education and training; library services;  production and rental of educational audio tape, film, video, MP3s, JPEGs, MPEGs, CD's; DVD's; professional club services; publishing services; electronic publishing services; vocational guidance; career advisory services; preparation of syllabuses, examination systems, examinations and tests; organization and provision of entertainment events; information, advisory, consultancy and information services relating to all the aforesaid

Class 42: Quality control services being the certification of services provided by members of an association in the field of accountancy and finance; accreditation of accountants for quality or standards; services of a professional institute for and on behalf of its members; research and study services relating to accountancy and finance; quality assurance services; advisory, consultancy and information  services relating to all the aforesaid; industrial analysis and research services; certification of education and training awards; certification of educational and training standards; certification of educational examiners    and    educational    examining    bodies;

accreditation of educational examiners and educational examining bodies

Class 45: Professional representation and lobbying services in the field of accountancy, certification services, certifying individual attainment, materials and services meeting prescribed standards; advisory, consultancy and information services relating to all the aforesaid

1. Following its examination, the IRDA was provisionally refused under section 44 of the Trade Marks Act 1995 (“the Act”). However, following 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 5 September 2013.

1. ICAA filed a Notice of Intention to Oppose the registration of the application on 1 November 2013. Thereafter the ICAA and CIMA filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) and a Notice of Intention to Defend and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

1. Application 1473990 was filed by ICAA as detailed below:

Trade mark:	THE INSTITUTE OF CHARTERED ACCOUNTANTS  AUSTRALIA
Trade mark application:	1473990
FilingDate:	10 February 2012
Specification:	Class 9: Computer software; computer firmware; computer hardware; electronic publications; computer peripheral devices in this class; magnetic and optical data media including CD ROMs and floppy disks; CD ROMs; DVD ROMs; solid-state memory products including memory chips; 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; electronic publications (downloadable); electronic  publications  including those sold and distributed online; printed publications in electronically readable form; printed publications in machine readable form; printed publications in optically recorded form; publications in computer readable form; publications in machine readable form; publications downloaded in electronic form from the internet;  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 35: Advertising; accounting and auditing services; consultancy and advisory services in relation to business, marketing, management and commerce; business and commercial management assistance; business investigations; professional consultation services in this class; wholesaling, retailing and trading services; business research, appraisals and analysis; advisory services for business management; valuation services in this class; economic forecasting; taxation assessment; management assistance services; information services in relation to business, marketing, management and commerce; publication services in this class; organisation of business promotional campaigns; business information services; promotional and advertising services in this class including sales promotion services; operation and administration of loyalty marketing and other sales  promotional incentive and customer loyalty programs; promotion including through frequent buyer incentive programs and customer loyalty programs; the supply of benefits in connection with loyalty and incentive programs and schemes; business services of a magazine club; arranging and managing subscriptions to magazines, other publications and to online services; organisation of exhibitions and trade fairs for commercial or advertising purposes; direct mail advertising; compilation of information into computer databases; office functions; recruitment services; dissemination of advertising, publicity and business information and advertising material on the Internet, rental of advertising space on the internet;  business management and administration services supporting utilisation of a global computer network; supply of the foregoing services online or over a global computer network; advisory, support, information and consultancy services relating to the foregoing

Class 36: Financial services including financial management services relating to business, professions and retirement; monetary affairs; real estate affairs; guarantees; banking; funds transfer; loans; lease- purchase  financing;  leasing  services  in  this  class;

brokerage;  business  liquidation  services  (financial); credit  card  and  debit  card  services;  consultancy  in establishing  employee           benefit            funds;                  mortgage            services; financial    sponsorships;  debt                    collection agencies;      factoring;     fiduciary services;   financial planning;  investment     planning;   investment management;  investment  consultancy  and  advisory services;  fund  raising;  retirement  payment  services; retirement planning;     financial   analysis;  financial research  and  appraisals;  financial  valuations;  fiscal valuations;  financial  management;  financing  loans; financial     clearing;  financial                    assessments; fiscal assessments; investment services; valuation services in this class; insurance services; insurance consultancy; insurance                 underwriting;      insurance     assessments; pension,  retirement  and  superannuation  plans  and funds;   arranging,     organising  and  conducting competitions, contests and tournaments for charitable fundraising  purposes;  advisory,  support,  information and consultancy services relating to the foregoing Class 41: Publishing; electronic publishing; arranging and  conducting  training;  arranging  and  conducting professional development programs; teaching services; information  services  (including  online  information services)  relating        to education,   entertainment, recreation  or  cultural  activities;      educational examination;  correspondence      courses;     education services; advisory services in this class; organisation of competitions  for                   education                  and/or  entertainment; publication of information on the internet; conduct of educational seminars and    workshops;  advisory, support, information and consultancy services relating to the foregoing

Class 42: Accreditation for quality or standards; certification of quality or standards; design and layout of books, magazines, publications and printed matter; hosting computer sites and web sites; web portal services (designing or hosting); quality control; computer programming; computer programming consultancy; computer rental; computer security services; computer software design; computer support services; computer system design ; computer systems analysis; consultancy in the fields of computer hardware and software; conversion of data or documents from physical to electronic media; creating, designing and maintaining web pages and web sites; data conversion of computer programs and data, not being physical conversion; design and development of computer security services; duplication of computer programs;   graphic   arts   designing   ;   information

technology services; installation of computer software; leasing access time to computer  databases; maintenance of computer software; recovery of computer data; repair of computer software; research and development for others; research and technical consultancy for industry; technical project studies; technical research; updating of computer software; advisory, support, information and consultancy services relating to the foregoing

Class 45: Dispute and conflict resolution services; mediation and arbitration services;intellectual property consultancy; licencing of intellectual property; litigation services; advisory, support, information and consultancy services relating to the foregoing

1. The application was examined in compliance with section 31 of the Act and also was provisionally refused under section 44 of the Trade Marks Act 1995 (“the Act”). However, following evidence of use filed by ICAA, the provisions of subsection 41(5) of the Act were applied. It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 7 November 2013. CIMA filed a Notice of Intention to Oppose the registration of the application 7 January 2014. Thereafter CIMA and ICAA filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) and a Notice of Intention to Defend and filed evidence as provided by the Regulations.

Evidence

1. The following evidence was filed in the oppositions:

Evidence Stage	1455483	1473990
Evidence in Support	Tina   Fisher   –   3   June 2014 (Fisher)	Maggie   Heasman   –   1   May 2014 (Heasman 1)
Evidence in Answer	Maggie Heasman – 18 August  2014 (Heasman 2)	Valentina Stojanovska – 19 December 2014 (Stojanovska 2)
Evidence in Reply	Valentina Stojanovska – 19 December 2014 (Stojanovska 1)	Nil

Preliminary Matter

1. Counsel for ICAA sought to have Heasman 1, filed in the opposition to application 1473990 to be used as evidence in the opposition to application 1455483, pursuant to Reg 21.19 of the Regulations. Counsel for CIMA objected to Heasman 1 being used.

1. Both counsel made submissions and I reserved my decision on this preliminary issue and proceeded to hear the substantive matter.

1. The relevance of Heasman 1 to this opposition was to establish honest concurrent use and/or prior use of the trade mark in the event of the section 44 ground being established. As will be discussed below, section 44 is not established in this matter, so there is no requirement for Heasman 1 to be considered.

Discussion – Application 1455483

1. ICAA relied on sections 42(b), 44 and 60 of the Act as the grounds of opposition.

Section 44 – Identical etc. trade marks

1. 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 similar see section 10. Note 2: For similar goods see subsection 14(1). Note 3:    For priority date see section 12.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

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

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

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

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

Note 1:     For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note4:     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.

Note1:     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.

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 Applicant 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.

1. The registrations, which each have a priority date of 7 July 1995, relied upon by ICAA are as follows:

Trade Mark No.	Trade mark	Goods/Services
666092	Class 16: Printed matter, publications, newsletters, books and brochures relating to The Institute of Chartered Accountants in  Australia or its members
666093	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	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

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

1. 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.

1. 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.

1. 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.

1. 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."

1. The trade mark the subject of the IRDA is THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS, while the cited trade marks comprise a device showing the monogram CA in a circle above the words CHARTERED MANAGEMENT ACCOUNTANT.

1. While the words ‘chartered’, ‘management’, and ‘accountant’ are common to both the trade mark the subject of the IRDA and the cited marks, these terms are descriptive and common to the accountancy profession1.

2. The device in the cited marks occupies the dominant position in the overall image. By contrast, the IRDA is a descriptive string of words without a graphic element.

1. The opening four words of the IRDA set the concept that the trade mark is a badge of origin of a society or organization, whereas the cited marks tend to describe a person’s profession.

1. 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.

1. 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

1 Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216

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

1. 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.

1. 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?

1. 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.

1. ICAA, in Stojanovska 1, annexed a large number of ICAA trade marks in Australia. In submissions, Ms Ross narrowed these down (for section 60 purposes) to the following ten trade marks. Where these are registered with this Office, I show registration details. It should also be noted that ICAA refers to all of the following trade marks as ‘CHARTERED ACCOUNTANTS’ trade marks.

Trade Mark No.	Trade Mark	Class	Priority Date
[1473990]	THE INSTITUTE OF CHARTERED	9,    16,      35,	[*Opposed,
	ACCOUNTANTS IN AUSTRALIA	36,  41,  42,	10 February
		45	2012]
CHARTERED ACCOUNTANTS
CHARTERED        MANAGEMENT ACCOUNTANTS
666089 666090 666091	16, 35, 36	7 July 1995
666092 666093 666094	16, 35, 36	7 July 1995
1059150	9,    16,      35, 36, 41, 42	7 June 2005
1474052	9,    16,      35,	10 February
	36,  41,  42,	2012
	45

1622228	9,    16,    35, 36, 41, 42	[filed]     12 May 2014
1632439	9,    16,    35, 36,  41,  42, 45	[filed] 4 July 2014

1. Ms Ross submitted that ICAA has been using CHARTERED ACCOUNTANTS trade marks in respect of ICAA goods and services since 26 September 1928. The trade marks have, it was submitted, been used by ICAA to offer, promote and provide ICAA goods and services to prospective candidates, existing candidates, accountants and the accounting industry.

1. Ms Ross also pointed to confidential evidence of substantial revenue received by ICAA for its goods and services between 1994 and 2012, similarly substantial advertising and promotional expenditure during the period 2003 to 2012, and media/marketing plans for the period 2007 to 2013 were also exhibited.

1. However, while there is certainly evidence of ‘a high volume of sales, together with substantial advertising expenditures and other promotions’, it is not clear as to which of the various CHARTERED ACCOUNTANTS trade marks the evidence attaches.

1. It seems to me that, after reading Stojanovska 1, particularly Annexes J and K, that since receiving its charter and a grant of arms ICAA as an institution identified itself by the words ‘The Institute of Chartered Accountants in Australia’ and by its arms, shown below. At the same time its members were entitled to describe themselves as ‘Chartered Accountants’ and, at least from 1994, use the membership logo as shown below.

Institute Coat of Arms     Membership Logo

1. Over time it would seem that a version of the membership logo (such as trade mark 1474052) replaced the coat of arms for identification of the Institute. ICAA also seems to have modernised its trade mark as shown in trade mark 1622228 shown above.

1. I am prepared to accept that the words ‘The Institute of Chartered Accountants in Australia’ and ‘Chartered Accountants’, as well the Membership Logo displayed above, have required reputations in Australia as trade marks in order to satisfy the first limb of section 60.

1. However, the dominant features of the words ‘chartered accountants’ and the CA devices attributed to those words are such that members of the relevant consumers – described as ‘prospective candidates, existing candidates, accountants and the accounting industry’ – are unlikely to attribute a business connection between the IRDA and ICAA.

1. 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 CHARTERED ACCOUNTANTS trade marks as at the priority date. This ground of opposition has not been established.

Subparagraph 42(b)

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

42 Trade 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.

1. 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.

1. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, 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].”

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

Discussion – Application 1473990

1. CIMA relied on sections 44 and 60 of the Act as the grounds of opposition.

Section 44 – Identical etc. trade marks

1. The provisions of the Act and legal principles relating to this ground have been detailed above in paragraphs 13 to 20, and I do not intend to repeat them here. There was no controversy between the parties as to the relevant legal principles, only the application of the evidence to those principles.

1. CIMA has cited its IRDA as the earlier registration that is deceptively similar to the ICAA application (‘the ICAA mark’). CIMA does not contend that the ICAA mark is substantially identical with the IRDA.

1. While there is no doubt that the degree of similarity between the ICAA mark and the IRDA is greater than in the cross-opposition above, I am still not satisfied that the relevant consumers would be led to wonder whether the goods and services under the ICAA mark come from, or are associated with, CIMA.

1. As discussed earlier, the words ‘chartered’, ‘management’, and ‘accountant’ are common to both the ICAA mark and the IRDA. These terms are descriptive and common to the accountancy profession. I consider that in the relevant surrounding circumstances the likely consumer of the goods and services will appreciate the differences between an ‘institute’ and a ‘chartered institute’ and especially a ‘management accountant’ and a ‘chartered accountant’.

1. Having taken into account the evidence and submissions as applied to the relevant legal principles I am not satisfied that there would be a real tangible danger of deception or confusion occurring if the ICAA mark were registered. This ground of opposition has not been established.

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

1. Again, the legislation and legal principles applicable to this ground of opposition have been detailed above.

1. CIMA relied upon use of the IRDA and the following device as having acquired a reputation from 1986 to before the priority date:

   Chartered Institute of Management Accountants

1. The evidence intended to establish the reputation of the IRDA and the CIMA device shown above suffers similar defects as for this ground applied to the IRDA.

1. Similarly, and for the same reasons, I am not satisfied that the use of the ICAA mark would be likely to deceive or cause confusion. This ground of opposition has not been established.

Decisions

Application 1455843

1. Regulation 17A.34 provides:

17A.34     Decision 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.

1. I find that ICAA has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1455483 be extended in respect of all the listed goods and services one month from the date of this decision.

1. 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 IB will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg 17A.34(2).

Application 1473990

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

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

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

Note: For limitations see section 6.

1. I find that CIMA has not established either of its grounds of opposition. Trade mark application 1473990 may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Neither party has established its opposition. Both parties submitted that costs should follow the event. Therefore, I make no order as to costs.

Jock McDonagh Hearings Officer Trade Marks Hearings 23 December 2015