The Senior'S Choice, Inc v the Seniors Choi Ce (Australia) Pty Ltd

[2014] ATMO 51

TRADE MARKS ACT 1995

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

Re:Opposition by The Senior's Choice, Inc to registration of trade mark application 1534366(44) - THE SENIOR'S CHOICE LOGO - filed in the name of The Seniors choice (Australia) Pty Ltd.

Delegate:

Hearing Officer: Robert F Wilson

Representation:

Opponent: Blake Knowles of Cullens Patent and Trade Mark Attorneys

Applicant: Not represented

Decision:

2014 ATMO 51
Section 52 opposition: section 42(b) ground considered - use of trade mark would infringe copyright – registration refused

Background

1. This is an opposition brought by The Senior’s Choice, Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of The Seniors choice (Australia) Pty Ltd (‘the Applicant’):

Application Number:

1534366

Filing Date:

6 January 2013

Services:

Class 44: Provision of health care services

 (‘the Applicant’s services’)

Trade Mark:

(‘the Applicant’s trade mark)

2. Following the advertisement of the application’s acceptance for possible registration on 2 May 2013, the Opponent filed a Notice of Intention to Oppose on 23 May 2013. The Opponent then filed a Statement of Grounds and Particulars (‘the SGP’) on 24 May 2013. The SGP particularised grounds of opposition corresponding to ss 42 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 5 June 2013.

Evidence

3. The Opponent filed Evidence in Support of its opposition on 2 August 2013. This evidence consists of:

• Declaration made on 16 July 2013 by Steve Gary Everhart, the owner and President of the Opponent, with Exhibits SGE-1 to SGE-8 (‘the Everhart declaration’); and

• Declaration made on 23 July 2013 by Pavel Bosak, graphic designer and owner of the business All Elements Design (‘the Bosak declaration’).

4. The Applicant filed certain documents on 11 October 2013. The documents consisted of:

• A document entitled ‘Evidence in Answer’, written by Mr Andrew Philpott a director of the Opponent;

• A two page colour brochure bearing the Applicant’s trade mark;

• A document headed with the Applicant’s Trade Mark and bearing the heading ‘Policies and Procedures’; and

• What appears to be a decision handed down by the California Corporations in the matter of The Senior’s Choice, Inc v The California Corporations Commissioner. The decision is dated 2007, and bears the reference OAH No. L2007020013.

5. The documents filed by the Applicant on 11 October 2013 were not accepted as Evidence in Answer as they were not in the form of a declaration as required by reg 21.17(1) of the Trade Mark Regulations 1995 (‘the Regs’). The Applicant was informed of this issue via correspondence issuing from IP Australia on 29 October 2013, and was provided information as to the required procedure and formalities for filing its evidence. The Applicant was informed that its deadline to file its Evidence in Answer was 21 November 2013.

6. Further documents were filed by the Applicant on 14 November 2013 which consisted of:

·   A document entitled ‘All Evidence in support’ [sic] written by Mr Ashley Wilson, Operations Manager of the Opponent;

·   A document entitled ‘Evidence in Answer’ written by Mr Ashley Wilson; and

·   Two copies of incomplete declaration forms.

7. These documents too did not meet the formalities required by reg 21.17 and were not able to be accepted as Evidence in Answer. On 2 December 2013 correspondence issued from IP Australia to the Applicant and the Opponent, advising that the further documents did not qualify as evidence in the proceedings. The parties were advised in the same correspondence that the deadline for the Applicant to file its evidence had now passed and that it had until 9 December 2013 to file an application for an extension of time should it wish to file evidence in the approved form.

8. The Opponent filed what was ostensibly Evidence in Reply on 28 November 2013. This was not accepted as Evidence in Reply because on the date it was filed there was no Evidence in Answer filed and the period in which the Opponent could file any Evidence in Reply to that Evidence in Answer could not therefore commence. This documentation from the Opponent consisted of:

• Declaration made on 28 November 2013 by Blake David Knowles, trade mark attorney at Cullens Patent and Trade Marks Attorneys, with Exhibits BK-1 to BK-9 (‘the Knowles declaration’).

9. On 19 December 2013 further correspondence was sent by the Trade Marks Office to the Applicant indicating that as it had not filed an application for extension of time to file its Evidence in Answer the evidence stages were now complete, and that the evidence filed by the Opponent on 28 November 2013 was not to be taken as Evidence in Reply.

1. No further correspondence was received from the Applicant and the Applicant took no further part in proceedings.

2. As was pointed out in correspondence received from the Opponent’s representative, Cullens Patent and Trade Mark Attorneys on 3 December 2013, under regulation 21.19 of the Trade Mark Regulations 1995, the Registrar may take into account any available and relevant information, provided that the information is known to both parties. The documents filed by the Applicant on 14 November 2013 and by the Opponent on 28 November 2013 were available to both parties up to (and beyond) the date of the hearing. As a result, both parties had a reasonable opportunity to make representations about those documents and I have considered the content of those documents and afforded them appropriate weight.

3. There is nothing before me to suggest that the documents filed by the Applicant on 11 October 2013 were ever seen by the Opponent. Of the documents filed on that date the document entitled ‘Evidence in Answer’ is almost the same as the document entitled ‘Evidence in Answer’ filed by the Opponent on 14 November 2013. There is no additional information in the 11 October Evidence in Answer document which alters my decision. Likewise, the remaining three documents filed on 11 October 2013 contain nothing which alters my decision.

4. The Opponent’s oral submissions were heard by Ms Claudia Murray, a delegate of the Registrar of Trade Marks, in Canberra on 25 March 2014. Mr Blake Knowles of Cullens Patent and Trade Mark Attorneys represented the Opponent by telephone. Mr Knowles’ oral submissions were supplemented by written submissions which were provided to both Ms Murray and the Applicant prior to the hearing. As is usual practice, there was an audio recording made of the hearing in Canberra. The Applicant was not represented at the hearing, nor did it provide written submissions beyond those contained in its correspondence mentioned above.

5. Subsequent to the hearing Ms Murray was transferred to another position in IP Australia and the matter has been allocated to me, also a delegate of the Registrar, for decision based on the submissions made at the hearing,[1] the evidence and the written submissions tendered prior to the hearing.

   [1] Obtained from the recording of the hearing.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

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

The Opponent

1. According to the Everhart declaration:

   The Opponent’s Business in the United States of America commenced in 1999, by The Senior’s Choice, LLC., a California corporation (‘TSC-CA’).

   In October 2005, TSC-CA merged with the Opponent and the Opponent assumed ownership of the Opponent’s Business and related intellectual property.

   The Opponent’s Business (via its Members) is the provision of in-home non-medical and companionship care for the elderly.

   The Opponent’s Business is constituted by a membership network of senior care providers in the United States and internationally. It is the largest membership network of senior care providers in the world … .

The Applicant

1. According to correspondence received from the Applicant it is an Australian company which provides in-home care to senior citizens, respite care and support to people suffering from disabilities.

History between the parties

1. The Opponent’s evidence includes correspondence between the Opponent and Mr Andrew Philpot a director of the Applicant. The evidence supports the Opponent’s submissions that:

   During this correspondence, Mr Philpot indicated that he was an owner of the company ‘The Senior’s Choice’ and the domain name …

   Mr Philpot indicated that he had spent 6 months doing due diligence work on the senior care market in the UK, USA and Australia.

   Mr Philpot proposed to the Opponent that a business relationship be formed and that the Applicant be permitted to duplicate the Opponent’s website and send new franchisees to training with the Opponent. …

   The Opponent issued a final response where it indicated that it had no interest in pursuing a business relationship with the Applicant.

Grounds of Opposition, Onus and Standard of Proof

1. At the hearing the Opponent pressed both grounds which it particularised in the SGP. As will become apparent it is necessary only that I consider the ground pursuant to s 42. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[2]

   [2] See s 55 of the Act and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

3. Judicial opinion is divided on the question of the relevant standard of proof. In Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited Murphy J said:

   It has been suggested in some cases that rather than the ordinary civil standard of balance of probabilities applying, there is a special standard that requires an opponent to registration of a trade mark to show that the trade mark is ‘clearly’ not to be registered. The division has not yet been resolved at the appellate level.

   …

   I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is ‘clearly’ not to be registered. The onus is to be discharged to the ordinary civil standard.[3]

I will adopt the approach taken by Murphy J in this regard.

[3] [2014] FCA 373, [30]-[37].

1. The date at which the rights of the parties are to be determined is 6 January 2013, being the application date of the application (‘the relevant date’).

Discussion

1. Insofar as it is relevant to this matter s 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:

   …

   (b) its use would be contrary to law.

2. The onus is on the Opponent to establish that use of the Applicant’s trade mark would be contrary to law.

3. The ground of opposition pursuant to s 42 was particularised by the Opponent in the SGP as follows:

   (i)[The Applicant’s trade mark] contains, as a substantial part, the following device:

(‘Heart logo’)

(ii)The Heart logo was created on behalf of the Opponent in July 2001, by Mr Pavel Bosak, of California, United States of America.

(iii)Upon payment by the Opponent of design fees to Mr Bosak, all intellectual property rights in the Heart logo were assigned to the Opponent.

(iv)The Heart logo is an original artistic work in which copyright subsists under section 32 of the Copyright Act 1968, with protection extended in Australia by regulation 4 of the Copyright (International Protection) Regulations 1969, the Berne Convention (International Convention for the Protection of Literary and Artistic Works) and other relevant international agreements relating to copyright to which the United States of America and Australia are both parties.

(v)The Applicant has commenced use of, and applied for registration for, [the Applicant’s Trade Mark] without the permission of the Opponent.

(vi)The unauthorised reproduction of the Heart logo is an infringement of the opponent’s copyright under section 36 of the Copyright Act 1968.

(vii)Given the infringement of the Opponent’s copyright in the Heart logo, use of [the Applicant’s Trade Mark] by the Applicant would be contrary to law under section 42 of the Trade Marks Act 1995.

1. The Applicant has not explicitly addressed the issue of ownership of copyright in the Heart logo or the Applicant’s trade mark, however, in its correspondence Mr Ashley Wilson, the Operations Manager of the Applicant wrote:

   The core branding of our business is the name The Senior’s choice (Australia) Pty Ltd and the colour heart logo.

   The certificate of registration of this company name commenced on the twentieth day of August 2012. …

   This company name was available and was not and has never been opposed.

   The company then conducted a search on IP Australia’s website to establish if we could trademark our name The Senior’s choice and use a heart logo that was in full colour and most importantly establish if it was being used or trademarked by someone else. No results were shown to indicate otherwise.

   The company then conducted a search using google to find a business that could design a logo. The business we used was The Company choose [sic] to use the words ‘The Senior’s choice’ being the first 3 words of our registered Australian company name and the company choose to have these 3 words in Italics with the first word ‘The’ in black and second word ‘Senior’s’ in yellow and the third word ‘choice’ in orange/red. The online company vista print then matched these 3 words with hundreds of different images and our company choose the full colour heart which forms part of our trademark application.

2. It is not necessary that I reproduce all the relevant parts of the Copyright Act 1968 (‘the CA’) here; however, I will refer to them as necessary.

3. For the Opponent, Mr Bosak, a graphic designer based in United States of America, has declared:

   I was commissioned in July 2001 by Mr Steve Everhart, on behalf of The Senior’s Choice, LLC, to create a logo for The Senior’s Choice business.

   I subsequently designed the following branding incorporating the brand name ‘The Senior’s Choice’ and the Senior’s Choice Logo (consisting of a stylised heart surrounding an image of an elderly person and a carer):

[(‘the Senior’s Choice Logo’)]

Upon receiving payment for the design work, all rights (including copyright) to the Senior’s Choice Logo were assigned to The Senior’s Choice, LLC.

1. A painting or drawing, whether of artistic quality or not, is an artistic work.[4] ‘The threshold of what is an artistic work is low and, for copyright to subsist, the work does not need to be remarkably artistic’.[5] I am satisfied that the heart logo contained within the Senior’s Choice Logo (‘the monochrome Heart logo’) is an artistic work for the purposes of the CA. The Heart logo and the monochrome Heart logo appear to be identical other than the existence of colour within the Heart logo. It seems likely that the artwork originally created by Mr Bosak was done in the same colours as the Heart logo, although this is not clear from his declaration. As will be seen from my discussion below, whether this is the case or not does not affect my decision.

   [4] Copyright Act 1968 s 10.

   [5] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [17] (Madgwick J).

2. A provision of the CA that applies in relation to an artistic work first published in Australia also applies in relation to an artistic work first published in the United States of America as if the artistic work was first published in Australia.[6] As the monochrome Heart logo was first published in the United States of America I am satisfied that the CA applies to the monochrome Heart logo.

   [6] Copyright Act 1968 s 184; Copyright (International Protection) Regulations 1969 reg 4.

3. Copyright subsists in an original artistic work that is unpublished and of which the author was a qualified person at the time when the work was made. If copyright subsisted immediately before its first publication, copyright continues to subsist in an artistic work once published.[7] A qualified person includes a citizen of the United States of America.[8] It is reasonable to assume that Mr Bosak is a citizen of that country. I am satisfied that copyright subsists in the monochrome Heart logo.

   [7] Copyright Act 1968 s 32.

   [8] Copyright Act 1968 s 184; Copyright (International Protection) Regulations 1969 reg 4.

4. Copyright subsists in a published artistic work until the end of 70 years after the end of the calendar year in which the author of the work died.[9] It is far less than 70 years since the logo was created, consequently copyright subsisted in the monochrome Heart logo at the relevant date.

   [9] Copyright Act 1968 s 33.

5. The author of an artistic work is the owner of any copyright subsisting in the work.[10] However, copyright is personal property and is transmissible by assignment.[11] Mr Bosak declared that he was commissioned to design the Senior’s Choice Logo in 2001 and upon payment for his work assigned his copyright to The Senior’s Choice, LLC. Mr Everhart declared that in October 2005, The Senior’s Choice, LLC merged with the Opponent and the Opponent assumed ownership of the Opponent’s Business and related intellectual property. This chain of authorship and assignment suggests that the copyright in the monochrome Heart logo, is owned by the Opponent; I am satisfied that this is the case. I note that the Applicant has provided no submissions or evidence which explicitly disputes the Opponent’s ownership of the copyright.

   [10] Ibid s 35.

   [11] Ibid s 196.

6. Copyright in relation to an artistic work includes the exclusive right to reproduce the work in a material form.[12] The copyright in an artistic work is infringed by a person who, not being the owner of the copyright, and without licence of the owner of the copyright, reproduces or authorises the reproduction of the artistic work.[13]

   [12] Ibid s 31.

   [13] Ibid s 36.

7. Mr Everhart has declared:

   The Opponent at no time consent[ed] to the use by Mr Philpot or any entity associated with him, of the Opponent’s intellectual property.

8. The Applicant has not suggested that it has been licenced by the Opponent to use the Senior’s Choice Logo. I am satisfied that the Applicant is not licensed to use the Senior’s Choice Logo.

9. It remains to be considered whether the Applicant in using its trade mark would be reproducing the monochrome Heart logo. The Opponent has averred:

   By filing a trade mark application, the subject of which constitutes a reproduction of the Opponent’s artistic work (or a substantial part of the Opponent’s artistic work), the Applicant has infringed copyright. Further, use of the [Applicant’s trade mark] will constitute an ongoing infringement of the Opponent’s copyright, and is therefore contrary to law.

10. The Applicant’s trade mark clearly contains the Heart logo. Whilst very similar, due to the absence of colour, the monochrome Heart logo and the Heart logo are not identical. Chief Justice Gibbs stated in SW Hart & Co Pty Ltd v Edwards Hot Water Systems that:

    The notion of reproduction, for the purposes of copyright law, involves two elements – resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron (1963) Ch 587, 614, ‘a sufficient degree of objective similarity between the two works’ and ‘some causal connection between the plaintiffs’ and the defendants’ work’. Lord Reid said in Ladbroke (Football) Ltd v William Hill (Football) Ltd (1964) 1 WLR 273, 276; (1964) 1 ALL ER 465, 469:

    Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.

    In the same case, Lord Evershed said, at p 283; p 473 of ALL ER, ‘that what amounts in any case to substantial reproduction … cannot be defined in precise terms but must be a matter of fact and degree’.[14]

    [14] 159 CLR 466, [4].

1. Notwithstanding the differences between the two, I am satisfied that there is a sufficient degree of objective similarity between the Heart logo as it appears in the Applicant’s Trade Mark, and the monochrome Heart logo that reproduction of the Applicant’s trade mark would constitute reproduction of the monochrome Heart logo for the purposes of the CA.

2. The Applicant has indicated in its correspondence that it chose the device element of its trade mark from amongst hundreds of different images supplied to it by a company called ‘vista print’. Given the prior relationship between the Applicant and the Opponent this claim seems somewhat dubious. Nevertheless, without more I am not able to be satisfied that the Applicant, or alternatively the company that supplied the image, had produced the heart logo within its trade mark ‘by independent work without copying’.[15]

   [15] Ibid.

3. I am satisfied that use by the Applicant of the Applicant’s trade mark would constitute an infringement of the copyright in the monochrome Heart logo and would therefore be contrary to law. The Opponent has, therefore, established the ground of opposition pursuant to s 42(b) of the Act.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 42(b) of the Act. As a Delegate of the Registrar of Trade Marks I refuse to register the Applicant’s trade mark.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has succeeded in its opposition, I award costs against the Applicant.

Robert F Wilson
Hearing Officer
Trade Marks Hearings
11 June 2014