The Star Pty Ltd

[2020] ATMO 137

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1985903 (class 43) – THE STAR (Word)- in the name of The Star Pty Ltd.

Delegate:

Kate Doherty

Representation:

Applicant: B Gardiner of Counsel, i/b King & Wood Mallesons

Decision:

2020 ATMO 137

Trade Marks Act 1995 (Cth) – Examination issues not overcome, s44 grounds for rejection exist, pursuant to s 33 the trade mark will not proceed to acceptance

Background

1. This decision follows a refusal by the Examiner of Trade Marks for the acceptance of trade mark number 1985903 in the name of The Star Pty Ltd (‘the Applicant’).

2. The Applicant exercised its right to be heard on the ground for rejection raised pursuant to s 44 of the Trade Marks Act 1995 (‘the Act’).

3. The Hearing was held on 5 May 2020 pursuant to s 31 of the Act. I heard the matter online as a delegate of the Registrar of Trade Marks. Details of the application for this divisional trade mark are as follows:

Trade Mark No:               1985903

Trade Mark:   THE STAR (‘Trade Mark’)

Filing date:  24 August 2015

Owner:   The Star Pty Ltd.

Specification of  Services: (at time of filing):

Class 43 Provision of food and drink; cocktail lounges; bars; cafes; snack bars; self-service restaurants; restaurants; catering services; hospitality services

1. The parent application is as follows:

Trade Mark No:               1716533

Trade Mark:   THE STAR (‘Parent Mark’)

Filing date:  24 August 2015

Owner:   The Star Pty Ltd.

Specification of  Services: (at time of filing):

Class 43 Hotels, hotel reservations and hotel services; restaurants; catering services; hospitality services; rental of temporary accommodation; rental of meeting rooms

1. The Trade Mark application was filed on 30 January 2019, the parent mark has a priority date of 24 August 2015.  

2. Written submissions were received, and the ex parte hearing was attended by the Applicant.

Onus and Standard of Proof

1. The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.[1] 

   [1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

2. The Applicant bears the onus of proof in a Hearing on Examination.[2] The application will not succeed if the cited ground is established. Pursuant to s 44 of the Act the rights of the Applicant are determined at the priority date of the parent application, the relevant date is 24 August 2015.

Grounds of Opposition

[2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

Section 44 – Identical etc. trade marks

1. Section 44 of the Act provides:

   44 Identical etc. trade marks

   (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.

To successfully oppose the application pursuant to s 44 of the Act the Applicant must establish the requirements of s 44(2) which are that at least one of the trade marks upon which it relies:

1.Has a priority date which is earlier than that of the Trade Mark (‘the first requirement’), and;

2.Is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’), and;

3.Is in respect of similar services which are closely related to the Opponent’s services (‘the third requirement’)

1. The first requirement is not in dispute, the priority dates of the cited marks are substantiated by the Register and are between approximately four and 15 years earlier than the priority date for the Trade Mark.

Summary of Marks Cited for the Trade Mark

1. The cited marks include the following (‘Cited Marks’):  

TM No.	Priority Date	Mark	Class	Reference
830485	4 April 2000	Star Coffee Co Café Bakehouse (Figurative)	35, 42	‘Bakehouse Mark’
1007729	24 June 2004	STAR CAR WASH CAFÉ (Word)	37, 43	‘Car Wash Mark’
1454379	18 October 2011	STAR BUFFET (Fancy)	43	‘Buffet Marks’
1454380	18 October 2011	STAR BUFFET (Figurative)	43
1454381	18 October 2011	STAR BUFFET (Figurative)	43

1. In respect of the third requirement, the Applicant accepts that the services are within the scope of the Cited Marks or similar services.[3] I am satisfied that the services are similar services.

   [3] Applicant Submissions [6].

2. In relation to the second requirement: the marks are not substantially identical.  The test for this is to compare the marks side by side.[4] The Cited Marks and Trade Mark consist of the following:  

Side By Side Test of Marks Cited for the Trade Mark

[4] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [12].

Trade Mark	Cited Marks
THE STAR
	STAR CAR WASH CAFE

1. The marks share a reasonably distinctive word, ‘Star’, but have few other similarities.  It is convenient to deal with the Car Wash Mark[5] as well as the Fancy Buffet Mark  together.[6]  The Applicant submitted that ‘STAR CAR WASH CAFE is non-sensical and contorts the use of STAR in an unusual sense’, but I find that the term is plainly descriptive of a café named STAR and located proximal to a car wash.[7] The Fancy Buffet Mark has de minimis stylisation, the mark consists solely of plain words in a plain font. It is possible to discount descriptive terms when considering s 44, therefore the significant difference between these two cited marks and the Trade Mark is the inclusion of the word ‘the’.

   [5] Trade Mark Registration Number 1007729.

   [6] Trade Mark Registration Number 1454379.

   [7] Applicant’s submissions [36].

2. I am persuaded by the authority relied upon by the Applicant that the inclusion of the word ‘the’ is significant enough to clear the threshold for the test of substantially identical.[8]   The separate question of deceptive similarity for the Car Wash Mark and Fancy Buffet Mark are discussed below.

   [8] Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515.

3. The test of substantially identical in relation to the Bakehouse Mark, as well as the additional Buffet Marks may also be considered together.[9]  Differences include the number of words, stylisation including the addition of various shapes as well as distinct fonts.  Only one word is shared, STAR, I find it is not a descriptive word and therefore is an essential feature and dominative cognitive cue.[10]  The significant number of additional features including shapes, words, stylisation and fonts lead to a finding that none of the marks are substantially identical.  The Applicant has not asserted that any of the marks are substantially identical and my finding is not controverted.[11]

   [9] Trade Mark Registration Numbers 1454380 and 1454381.

   [10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [52].

   [11] Applicant’s submissions [7].

Deceptive Similarity

1. Deceptively similar is an additional consideration, the Act states:

   Section 10 – Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. Resemblance pursuant to s 10 relates to the overall impression of the mark, it is a question of fact whether the similarity is established.

3. .In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J observed:

   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 [trade mark].[12]

   [12] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [29], per Windeyer J (‘Shell’).

4. All the relevant marks share the word ‘Star’ as a dominant cognitive clue and memorable feature. 

5. The Examiner found the degree of confusion is high, as all marks feature the identical element: STAR. Whilst I am not bound by the examiner’s decision, I agree with this proposition. I am satisfied that STAR is a  quite striking and  essential feature of the Trade Mark.[13]  This similarity is compounded by the almost indistinguishable nature of the relevant services, small differences in the marks are less likely to be tolerated where products or services are the same.  As stated above, the Applicant accepts that the services are within the scope of the Cited Marks or similar services.[14]

   [13] CA Henschke & Co v Rosemount Estates Pty Ltd [1999] FCA 1561.

   [14] Above at [11]; Applicant Submissions [6].

6. The Parent Mark is currently restricted to use in specific premises, the use associated with the Trade Mark Application would not be restricted to businesses associated with hotels and catering services.  Those businesses are often larger and attached to prominent physical buildings or specific sales channels.  There is generally planning involved in seeking catering services, such as determining the number of persons and time of day the goods and services are required.  But any member of the general population may frequent a restaurant, or bar, and visit without planning or notice.  These factors contribute to the increased risk of confusion.

‘The’ as a Definite Article

1. A difference between the Cited Marks and the Trade Mark is the inclusion of the word ‘the’.   While the inclusion of THE met the threshold for the substantially identical test, the test is  different in relation to s 10.[15]  The authorities I have been directed to include wine bottle labels with the terms THE SIGNATURE and BAROSSA SIGNATURE.[16]  One label incorporates a geographic element, the matter also involved extraneous considerations relating to the consumers and trade channels associated with those specific products. 

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594- 595].

   [16] Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515.

2. I find the use of a definite article in relation to a star, of which there are many, to a signature for which there is limited meaning is clearly distinguishing.  ‘The signature’ is a relatively fixed concept, which may relate to an individual’s autograph or the pre-eminent version of something attributed to a brand whereas ‘the star’ is abstract and imprecise it does not convey any standard meaning.  A few of the common meanings of star include a celebrity, geometric shape, celestial body, premium version or an astrological sign.  Significantly to the services in the application, ‘Michelin Stars’ are an internationally recognised rating system.  All these uses are logical and in reasonably frequent use, the term is somewhat ambiguous without further context.   I find there would be limited change in use or meaning if THE was not present in the Trade Mark. There is no evidence before me that relevant consumers would find THE memorable in relation to the Trade Mark or any of the similar marks in the portfolio of the Applicant.  I would be forced into conjecture to decide whether THE would be imperfectly recalled.  The presumption of registrability mandates that I should resolve any uncertainties where there is a discretion in favour of the Applicant but I am not permitted to substitute that presumption for an absence of evidence.

Non-Essential Features in the Cited Marks

1. The word STAR is the dominant cognitive cue, and the most striking element, for all the marks.  The inclusion of star shapes in the Bakehouse Mark may be discounted on the basis that they are mere illustrations of the plain words.[17]  The word BUFFET is wholly descriptive for the services.  Whether the plate and cutlery elements in the Figurative Buffet Marks are merely illustrative of the words is more contentious, on balance I find that they are likely to be imperfectly recalled, associated with a buffet, and not distinctive features.  The use of geometric shapes in the Cited Marks are also not memorable and do not contribute to the level of distinctiveness which would function to alter imperfect recollection.[18] 

   [17]  E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15.

   [18] Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196.

2. The additional features in the Bakehouse Mark including the words COFFEE CO CAFÉ BAKEHOUSE EST 1999 may be discounted due to their prominence within the mark relating purely to their size, as well as their descriptive nature.  I find it is likely the Trade Mark will be thought to be associated with the Cited Marks.

Honest Concurrent Use

1. I find the Trade Mark is deceptively similar to the Cited Marks. No evidence of use before the priority date is before me, therefore the provisions of ss 44(3)(a) and 44(4) are not applicable. I am not satisfied there are any other circumstances which might apply to properly accept the Trade Mark for registration. There are insufficient reasons for the application to be accepted pursuant to ss 44(3)(b). I therefore find it is not proper in the circumstances to apply ss 44(3)(b).

Decision

1. I find that the Trade Mark and Cited Marks have overlapping goods and services.  I find that when each of the Cited Marks are compared with the Trade Mark allowing for imperfect recollection the overall impression is that they are deceptively similar.[19]    

   [19] Trade Marks Act 1995 (Commonwealth), s 10.

1. Section 33 of the Act provides:

33  Application accepted or rejected

(1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)  the application has not been made in accordance with this Act; or

(b)  there are grounds under this Act for rejecting it.

1. I find the ground of opposition pursuant to s 44 is established. Therefore, pursuant to s 33 of the Act I reject the Trade Mark Number 1985903 and I direct that the Trade Mark will not proceed to acceptance.

Kate Doherty

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 August 2020