The Totally and Permanent Disabled Soldier's Association v the Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Limited

[2001] ATMO 63

TRADE MARKS ACT 1995

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

Re:Opposition by The Totally and Permanently Disabled Soldiers' Association to registration of trade mark application 747631(14, 16, 25, 41, 42) - T.P.I. ASSOCIATION and device- filed in the name of The Australian Federation of Totally & Permanently Incapacitated Ex-service Men & Women Limited.

Background

On 30 October 1997, The Australian Federation of Totally & Permanently Incapacitated Ex-service Men & Women Limited ('The Federation' or the applicant) filed application number 747631 across five classes of goods and services. A representation of the mark is shown below.

The application was examined at the Trade Marks Office (TMO). Three prior registrations were cited as preventing acceptance. However, the applicant argued that s.44(3) applied and the present application was accepted for registration and advertised as such in The Australian Official Journal of Trade Marks of 5 August 1999.

The endorsement entered on the Register reads: 'Provisions of paragraph 44(3)(b) applied.' At acceptance the specification of goods and services read:

Class	Goods or Services
14	Badges made of metal, medals, cufflinks, tie clips and keyrings
16	Magazines, newsletters, photographs, pens and stationery
25	Clothing and clothing accessories in this class including T-shirts, polo shirts, jumpers, ties and scarves; headgear
41	Information services, recreational services, club services in this class
42	The provision of accommodation including convalescent homes, nursing homes, retirement homes; temporary accommodation services

Following the advertised acceptance of the mark, The Totally and Permanently Disabled Soldiers' Association ('TPI - Assoc. Aust' or the opponent) filed a notice of opposition to the registration of the mark on 3 November 1999. The notice listed opposition grounds under s.57 of the Act in terms of ss.42(b), 43 and 44 and also grounds under ss.58, 59 and 60.

The three evidence stages, support, answer and reply enabled both parties to submit evidence to support their claims. This they did in some volume. A listing of the content of the evidence is shown under the Evidence heading below.

A history of the events that appears to emerge from the evidence, which have led to this opposition action may best be summarised chronologically as shown in the table below. Some of the chronologically ordered material that follows is not confirmed by both sides but, on a balance of probabilities, appears to best explain the historical background to the present opposition action.

The evidence of both parties was interspersed with some opinion and supporting written comments. Because each party has an incomplete understanding the other, some of these opinions are not only unhelpful but deflect the impact of the evidence that has been submitted.

State bodies existed from as early as the 1920's to assist Totally and Permanently Incapacitated (or Disabled) Ex-servicemen and women (TPI). These TPI bodies formed a Federal Council in the 1940's. This national body appears to have had a coordinating role rather than to have been a controlling entity of the affiliated bodies. The national body gained a more formal recognition and a title around 1952 - the CC TPI (see the table below). During the mid to late 1970's a dispute arose between the NSW Branch of CC TPI (TPI - NSW) and the sub-branch based in Newcastle (NND TPI). By the close of 1985 the long term result of this dispute saw NND TPI as the remaining member of CC TPI with the state and territory bodies, namely, TPI - Vic, TPI - NSW, TPI - Qld, TPI - Tas, TPI - SA, TPI - WA and TPI - ACT setting up another national organisation, 'The Federation' (see table below). Shortly thereafter NND TPI became TPI - Assoc. Aust (the present opponent - see table below) and CC TPI ceased to trade.

Date	Event
Circa 1924 -26	Formation of 'The Totally and Permanently Disabled Soldiers' Association of Victoria Incorporated' [TPI - Vic]
1928	Use by TPI - Vic of a trade mark very similar to the present application, with the letters AIF being used rather than TPI until around 1940.
28 August 1929	Formation of 'The Association of Totally and Permanently Incapacitated (TPI) Ex-Servicemen & Women (SA) Branch Inc.' [TPI - SA]
10 December 1935	Formation of 'The Totally and Permanently Incapacitated Veterans' Association of New South Wales Limited.' [TPI - NSW]
15 September 1939	Formation of 'The Totally and Permanently Disabled Soldiers' Association of Australia (Queensland Branch) Incorporated' [TPI - Qld]
18 April 1939	Formation of 'The Totally and Permanently Disabled Soldiers' Association of Australia (Tasmania Branch) Incorporated' [TPI - Tas].
Circa 1940	A Federal Council set up to coordinate activities of State TPI bodies.
30 April 1940	Formation of 'The Australian Federation of Totally and Permanently Incapacitated Ex-Servicemen & Women Limited (Western Australia branch) Inc.' [TPI - WA]
1940's	Amendment of badge to display letters TPI rather than AIF.
4 December 1951	An organisation known as the 'T.P.I. Association' existed in Newcastle by this time.
Circa 1952	Formation of the 'Commonwealth Council of Totally & Permanently Disabled Soldiers Association of Australia' [CC TPI] from the earlier Federal Council.
22 December 1954	Use of mark shown by TPI - Qld (exhibit WAW - A5).
21 January 1958	'The Totally and Permanently Incapacitated Soldiers' Association' existed in Newcastle.
Circa 1967	'The Totally and Permanently Disabled Soldiers' Association (T.P.I.) Newcastle and Northern Districts Sub-Branch' [NND TPI] becomes affiliated with TPI - NSW which itself is a member of CC TPI.
12 May 1972	CC TPI file trade mark applications numbered 258423, 258424 and 258425 - all achieve registration.
Circa 1976-7	Dispute between TPI - NSW and NND - TPI.
March 1979	TPI - NSW, TPI - Tas, TPI - Qld, TPI - WA all withdraw from CC TPI.
12 March 1979	TPI - NSW, TPI - Tas, TPI - Qld, TPI - WA form 'The Australian Federation of Totally and Permanently Incapacitated Ex-Servicemen & Women Limited' [The Federation].
July, August 1979	TPI - Vic withdraw from CC TPI and join The Federation.
9 August 1982	Formation of 'The Australian Capital Territory Totally and Permanently Incapacitated Ex-Servicemen & Women's Association Inc.' [TPI - ACT]. This organisation joins CC TPI.
5 March 1984	The Federation incorporated as a public company.
1985	TPI - SA and TPI - ACT withdraw from CC TPI and join The Federation.
28 September 1988	Formation of 'The Totally and Permanently Incapacitated Soldiers' Association of Australia (Northern Territory Branch)' [TPI - NT] who join The Federation.
10 October 1990	Incorporation of 'The Totally and Permanently Disabled Soldiers Association of Australia' [TPI - Assoc. Aust.] being a descendant of NND TPI.
11 February 1991	CC TPI assigns trade marks 258423, 258424 and 258425 to the TPI. - Assoc. Aust. Thereafter CC TPI ceased to trade.

The Evidence
The declaratory evidence submitted for this matter is shown below.

Type	Declarant	Date	Exhibits
Support	William Wallace Dunsmore (first Dunsmore)	3 April 2000	'A' to 'F'
Answer	Arthur Clive Mitchell-Taylor	15 May 2000	Nil
Answer	Colin R Doust	31 August 2000	'CRD-1' to 'CRD-5'
Answer	Philip James Macken (first Macken)	1 September 2000	'PJM-1' to 'PJM-8'
Answer	Philip James Macken (second Macken)	3 October 2000	Nil
Reply	William Wallace Dunsmore (second Dunsmore)	2 April 2001	'A' to 'Z' and 'AA'

It should also be noted that exhibits 'PJM-1' to 'PJM-8' to the first Macken declaration consist of eight declarations which, themselves, also contain exhibits. These declarations and their exhibits are as follows.

Macken Exhibit	Declarant	Date	Exhibits
PJM-1	William Arthur Weir (first Weir)	17 February 1998	'WAW-1' to 'WAW-10'
PJM-2	William Arthur Weir (second Weir)	8 September 1998	'WAW-A1' to 'WAW-A27'
PJM-3	William Arthur Weir (third Weir)	27 November 1998	Nil
PJM-4	Major General Peter Phillips	4 September 1998	'PP-1'
PJM-5	Robert MacDonald Franklin	8 September 1998	'RMF-1'
PJM-6	Anthony Reid Brown	9 September 1998	'ARB-1'
PJM-7	Sir Walter Campbell	10 September 1998	'WC-1'
PJM-8	Peter Morgan	16 September 1998	'PM-1'

I do have some problem with the quality of sizeable portions of the evidence submitted. Statements, I believe, of opinion can be found within the declarations from both parties as well as exhibits that merely provide very weak circumstantial support for allegations that they purportedly verify. It would also appear, in my opinion, that neither party has a complete understanding of the history or operations of the other. However, the picture that I have endeavoured to provide from the material submitted is, I believe, on a balance of probabilities, close to the real chain of events that took place.

Discussion

Both parties were given the opportunity to be heard or, alternatively, to provide written submissions to support their case. Neither party chose either of those options - although there was some supporting argument inappropriately placed within the declarations submitted in the evidence from both sides. The matter has now been directed to me for decision based on the written material held in this Office. Firstly I must determine which grounds, if any, are arguably supported by the evidence.

The grounds relied upon by the opponent in the notice of opposition are those found under ss.42(b), 43, 44, 58, 59 and 60. I do not accept that there is any evidence or argument before me to support the grounds taken under ss.42(b), 43 or 59. The remaining three grounds - those under ss.44, 58 and 60 each have arguable support in the evidence and, therefore, become the focus of the remainder of these reasons.

(a) Section 44 - Identical etc. trade marks

The legislation under this section allows:

44.(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.

(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.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.
Note 3:  For priority date see section 12.

In terms of s.44(1) and 44(2) three separate tests must be made. These are: (1) the similarity of the respective trade marks, (2) the similarity of the respective goods and/or services and (3) the priority dates of the respective trade marks.

The mark relied on by the opponent, as registered under numbers 258423(16), 258424(14) and 258425(26) and the present application are as shown.

Opponent's mark  Applicant's mark

The accepted test for substantial identity of trade marks is set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 414 where Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

In the present circumstances only very minor differences exist between the marks. The slanting of the usually horizontal line on the top of the letter T and the different relative sizes of the letters TPI in the opponent's mark and the dots separating the letters T.P.I in the applicant's mark (as shown above) are the most noticeable elements of difference. The overwhelming similarities, however, in the marks as a whole direct me to find that the respective marks are substantially identical.

Similarly, I do not believe that there could be any dispute that there exist identical goods claimed by the applicant in classes 14 and 16 of its multi-class application and those for which the opponent has registered its mark separately in classes 14 and 16. Such goods include metal badges, magazines, newsletters, photographs and sundry stationery items.

The third leg of comparison, being the priority dates of the respective marks, falls in favour of the opponent. The opponent's three marks have been registered from 12 May 1972 whereas the present application was filed on 30 October 1997.

The opponent has, therefore, satisfied all three legs of the legislation under s.44(1) to establish a valid barrier to the immediate progress of the present application. But that is not the end of the matter. Within the wording of the legislation of s.44(1) can be found the statement 'Subject to subsections (3) and (4)'. The initial acceptance of the present application was subject to an endorsement that reads: 'Provisions of paragraph 44(3)(b) applied'. These provisions consider 'other circumstances' that allow the mark to be registered, despite the conflict, because it is 'proper to do so'.

In its definition of the meaning of 'deceptively similar' trade marks, s.10 of the Act refers to a resemblance between the marks that is likely to deceive or cause confusion. This deception or confusion provides the reason for a conflicting mark to bar a later application in terms of s.44. To counteract such deception or confusion the 'other circumstances' that may be considered for s.44(3)(b) may include, among other considerations, some or all of the factors to be considered for the 'honest concurrent use' provisions of s.44(3)(a). D. R. Shanahan conveniently sets out these factors at p.202 in the text Australian Law of Trade Marks and Passing Off (Second Edition) and I do not intend to repeat them here.

In the present circumstances the manner in which the goods and services are offered is a compelling factor that reduces the risk of deception or confusion. The applicant is a national body that performs the role of coordinating the activities of TPI - Qld, TPI - NSW, TPI - ACT, TPI - Vic, TPI - Tas, TPI - NT, TPI - SA and TPI - WA. The total membership of these state and territory bodies amounts to around 15000 people. Each of the eight states and territories markets the goods and services that they offer among their own local members via newsletters and magazines. The opponent, with a membership of around 900, offers their goods and services in a similar manner.

The purchasers (whether through the applicant or the opponent) of these items, therefore, are well aware of the source of the goods and services that they obtain. I also note, supporting this view, that no actual cases of confusion were detailed anywhere in the evidence.

Apart from the above issue, in relation to allowing the present application to proceed one other factor also convinces me that it is 'proper to do so'.

The original badge used by TPI - Vic was designed and produced from around 1928. A representation is shown below.

As can be seen this mark contains the letters AIF rather than the letters TPI. The letters were changed to TPI sometime in the 1940's. Thus, from that time in the 1940's the various state and territory bodies have used a trade mark that I would consider (as I found earlier) to be substantially identical with the mark presently applied for. When the different state and territory bodies withdrew from the CC TPI at various times between 1977 and 1985, to join The Federation, all of them continued to use the trade mark. This amounts to a time period in excess of 50 years use of the mark for each of TPI - Qld, TPI - NSW, TPI - Vic, TPI - Tas, TPI - SA and TPI - WA. Implicit, I believe, in the setting up of The Federation, the filing of the present application for registration and the supporting evidence from these state bodies is that the rights accumulated in the mark over that time by these bodies would go to the advantage of The Federation. The six state bodies clearly did not give up their rights in the mark when they each withdrew from the CC TPI, because they simply continued their use of the mark as before.

I note that Exhibit 'AA' to the second Dunsmore declaration reveals letters from TPI - Tas, TPI - SA, TPI - Qld, TPI -WA, TPI - ACT and a branch of The Federation in the Gold Coast - Tweed Heads area. These letters are dated from various times in 1997 to 2000. Some of them make mention of the opponent's three registered marks by number and several make mention of earlier correspondence that had been received from the opponent. All of them indicate a request to continue to use the opponent's registered marks. I place little weight on these letters indicating a relinquishing of the common law rights of these state bodies. Nor do I accept that the officers signing those requests to the opponent were empowered to waive any legal entitlement of either the present applicant's rights or the state and territory bodies affiliated with The Federation. It seems to me that these letters had been generated as a result of some sort of request from TPI - Assoc. Aust. rather than arising out of a recognition by these state bodies that they had no rights under common law to use the mark. I believe that this long established use by the various state bodies from the 1940's is a relevant factor. Such use pre-dates the existence of NND TPI, which itself is the forerunner of TPI - Assoc. Aust.

For the above reasons, I believe that it is proper to allow the present application to have the benefit of the provisions of s.44(3)(b). This being the case, the s.44 ground of opposition is not successful.

(b) Section 58 - Applicant not owner of trade mark

This section of the legislation reads:

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

• that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

• that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

• that the opponent has the earliest claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

As I have previously found, in relation to s.44 above, the respective marks of the applicant and of the opponent are substantially identical. The evidence shows that some of the respective goods on which the parties have both used the mark and are also contained within the specifications of either their registrations (for the opponent) or application (for the present applicant) in classes 14 and 16 are identical.

The remaining factor from the three listed above concerns the earliest claim to ownership. The present application date is 30 October 1997. First actual use of the mark, however, is not so clear cut. The first time that the opponent used the mark may be traced from TPI - Assoc. Aust. to CC TPI and then back to the member states and territories of CC TPI. These bodies include TPI - Vic, TPI - SA, TPI - NSW, TPI - Qld, TPI - Tas and TPI - WA, who had all used the mark from its genesis in the 1940's. Use by the applicant may be tracked from The Federation to its member states and territories - the same use that could be relied on by the opponent from the 1940's. This same use by these bodies makes it difficult to establish an exclusive first use by either party. Thus, it appears that each party has a right to an identical claim in 'first use' of the mark - and such a claim cannot override the claim of the other party.

Given all of the above, the opponent has not satisfied me that it has had first use of the mark, and I find that I am unable to find in favour of the opponent under this ground of opposition.

(c) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

Here the legislation allows:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

I have previously found, in terms of both s.44 and s.58 above, that the respective marks of the parties are substantially identical. I must also look at the level of reputation in Australia for the mark relied on by the opponent, as at the present date of application, and assess the degree of deception or confusion that would result if the applicant uses its mark in a normal and fair manner.

The priority date of the present application is 30 October 1997. The evidence submitted by the opponent shows, in my opinion, a not-insignificant reputation for the opponent's mark, although only details of the financial accounts of the opponent for the years 1987, 1989 and 1995 to 2000 inclusive have been provided. The reputation built up after 30 October 1997 cannot be considered here. However, from these figures and the general commentary in the evidence, I accept that some moderate level of reputation has been attained. This is, of course, not the end of the matter - the real assessment must be to ascertain the likelihood of deception or confusion that would ensue if the applicant uses its mark in the face of this reputation.

In this regard I return to the manner in which both parties market their goods and present their services to prospective purchasers. Both the opponent and the applicant operate in what can best be described as 'closed markets'. They provide their members with magazines and newsletters and conduct regular meetings and social functions for their members to attend. The goods and services of the two parties are not freely available to the general public. In order to obtain information on what may be purchased it is clearly necessary that a prospective purchaser must already have made some sort of commitment to their provider. Therefore, the reputation enjoyed by the opponent in its mark resides, particularly, in the members of TPI - Assoc. Aust. A similar circumstance exists for each of the members of The Federation. Thus, I cannot envisage any genuine level of deception or confusion occurring among the people making up the target markets for the goods and services of the respective parties. The fact of the matter is that the members of a particular TPI organisation know that the goods or services are supplied through their own branch or sub-branch, and this renders the likelihood of deception or confusion extremely low.

Thus, I find that this ground of opposition has not been established.

Conclusion

From the foregoing, I have found that although the opponent has been able to establish the necessary conditions for s.44(1) and s.44(2) to present a valid barrier to the present application, there is sufficient evidence to apply the provisions of s.44(3)(b) in the applicant's favour. The other two grounds of opposition, those under ss.58 and 60 have not been established. Thus, as the delegate of the Registrar in this matter, I dismiss this opposition and direct that on payment of the registration fee that this application may proceed to registration.

Don Nancarrow
Hearing Officer
24 July 2001.