Tokyo Metropolitan Government

[2017] ATMO 52

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1731187(39, 43) – TOKYO +device- in the name of Tokyo Metropolitan Government

Delegate:

Cristy Condon

Representation:

Applicant Phillips Ormonde Fitzpatrick filed written submissions on behalf of Tokyo Metropolitan Government.

Decision:

2017 ATMO 52

Trade Marks Act 1995 (Cth) – s 33 ex parte matter – section 44 considered – s 44 ground is applicable – trade mark refused.

Background

1. This decision concerns an application filed by Tokyo Metropolitan Government ( the ‘Applicant’) for the following trade mark:

Trade Mark No.:

1731187

Priority Date:

Services:

Trade Mark:

27 July 2015 (the ‘relevant date’)

Class 39: Railway transport; car transport; boat transport; air transport; conducting of travel tours; escorting of travelers; travel arrangement and reservation services

Class 43: Providing temporary accommodation; reservation of temporary accommodation; preparation of food and beverages

(the ‘relevant services’)

(the ‘Trade Mark’)

1. Section 31 of the Trade Marks Act 1995 (‘the Act’) requires an application for a trade mark (the ‘application’) to be examined and for the Registrar to report on whether the application has been made in accordance with the Act and if there are grounds for rejecting it.

2. During examination of the Trade Mark the delegate of the Registrar (the examiner) found the application for the Trade Mark had been made in accordance with the Act but a ground for rejection applied under section 44 of the Act. The Applicant was advised of its right to provide evidence of honest concurrent or prior use of the Trade Mark. It was not, however, advised of its right to be heard in relation to the matter. Either of these options may overcome the 44 ground for rejection and allow the Trade Mark to proceed to acceptance. At any rate, the Applicant requested to be heard and I have been delegated to hear the matter based on the written record. This record comprises written submissions made by Phillips Ormonde Fitzpatrick on behalf of the Applicant.

3. As a preliminary matter, I mention that the focus here is not to review the examination but rather to give a fresh look at the ground for rejection that has been raised.  This means I, as delegate of the Registrar of Trade Marks, am not bound by the examiner’s decision and must at the end decide to register the Trade Mark or refuse to register it.[1]  The Applicant has a right to appeal my decision to the Federal Court or the Federal Circuit Court.[2]

   [1] Section 55 of the Act.

   [2] Section 56 of the Act.

Relevant Legislation and Discussion

1. Section 44 of the Act relevantly provides:

44  Identical etc. trade marks

(1)[…]

(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.

(3)[…]

(4)[…]

1. In addition, pursuant to section 33 of the Act, the Registrar must accept an application for registration unless satisfied that there is a ground for rejecting it.

2. The following registered trade mark is owned by A & K S. a.r.l. ( the ‘registered owner’) and it was raised as a barrier to the Trade Mark’s acceptance for possible registration:

Trade Mark No.:

1297257

Priority Date:

Services:

Trade Mark:

4 May 2009

Class 39: Transport; travel arrangements; making reservations and bookings for transportation; conducting sightseeing tours for others; arranging travel tours; travel services offered by travel agents in this class

(the ‘Opponent’s services’)

(the ‘registered trade mark’)

1. Pursuant to section 44, in order for this registered trade mark to block the Trade Mark’s acceptance it must:

   ·     have a priority date which is earlier than the relevant date

   ·     be substantially identical with, or deceptively similar to, the Trade Mark; and

   ·     be in respect of services which are similar to the relevant services

2. In considering the three requirements I notice firstly that the registered trade mark has a priority date that is earlier than the relevant date. 

3. In terms of the third requirement, I must of course consider section 14(2) of the Act but it is well accepted[3] that I must also consider the reported cases.  These cases state that in considering whether the services for which the registered trade mark is registered are similar to the relevant services I need to take into account various factors including the broad categories of the nature of these services, the uses thereof, and the trade channels through which they are provided for sale. No single consideration is conclusive in itself. [4]

   [3] Jellinek’s Appn (1946) 63 RPC 59; re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369.

   [4] re an Application by John Crowther & Sons (Milnsbridge) Ltd [372].

4. Taking these factors into consideration I am satisfied that the registered trade mark’s transport, travel and tour related services in class 39 are the same, or similar to, the relevant services in class 39.  The Applicant’s class 43 services include the provision of temporary accommodation; reservation of temporary accommodation and the preparation of food and beverages.  These services are often provided by the same trade channels and used in connection with the provision of the Applicant’s class 39 services.  These services are very much intertwined.  For example, a cruise ship provider would not only provide the travel tours but also the accommodation, food and beverage service.  For this reason I find the Applicant’s class 43 services are also similar to the Opponent’s services.  Even if I am wrong, I do not find it appropriate here to dissect the specification of relevant services for the Trade Mark and, in the words of the delegate in MHFC Holdings Pty Ltd, ‘the Applicant has not assisted its position in this regard, and I consider that I have not been provided with a principled basis upon which I could approach such a task’[5].

   [5] [2016] ATMO 96 (3 November 2016) at [47].

5. Regarding the second requirement, the concept of ‘substantial identity’ was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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.[6]

   [6] [1963] HCA 66, [12].

6. The crux of the Applicant’s submissions in this regard are that the Trade Mark is not substantially identical to the registered trade mark because:

   The ampersand symbol is stylised: it is missing the top right hand side arc that joins to the straight diagonal line. There is no such stylisation in the cited mark. To the right hand side of the “&” symbol is the word TOKYO in bold, block, uppercase letters.

7. I consider the device element is the only element that the two trade marks have in common.  In the case of the registered trade mark, this device is clearly an ampersand.  The Trade Mark, however, comprises of the word ‘TOKYO’ the well-known geographical name for the capital city of Japan, and a stylised logo that, in my opinion, bears a strong resemblance to an ampersand (with a section missing as the Applicant notes above).  

8. Comparing the relevant trade marks side-by-side I consider they both include similar device elements but as I have articulated above, the trade marks have clear and noticeable differences.  I am satisfied the respective trade marks are not substantially identical.  I move then to consider whether the earlier registration is deceptively similar to the Trade Mark.

9. Deceptive similarity is defined by section 10 of the Act:

   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.

10. The consideration of deceptive similarity is not a side by side test[7].  It requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling, or imperfectly recollecting, the earlier registration in the marketplace[8], to the impression that they would form from the Trade Mark in those same circumstances. 

    [7] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [415] (Windeyer J) (‘Shell’).

    [8]Clark v Sharp (1898) 15 RPC 141, [146]; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

11. Confusion may result if the identifiable features of one trade mark are incorporated in another trade mark.  The probability of this confusion must be likely, in other words a tangible danger, that is a higher threshold than the standard ‘more probable than not’.  In the words of French J the effect must be “finite and non trivial”[9]

    [9] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

12. Therefore I need to consider whether the coexistence of the registered trade mark and the Trade Mark in relation to the same class 39 services and similar class 43 services is likely to result in marketplace confusion.  I must judge this confusion by the general effect of the respective wholes having noted the common similarities and differences between the trade marks.[10]

    [10] Clark v Sharp (1898) 15 RPC 141 at 146 (Cth).

13. In this regard, the Applicant submits the relevant trade marks are conceptually different and that the two trade marks look very different.  I respectfully disagree with the Applicant’s argument.  The essential and only element in the registered trade mark is the ampersand logogram.  This conjunctive symbol is easily recognised and is in wide use.  I note that it is most commonly used to indicate the conjunction word ‘and’.  The Applicant says, “it is our submission that the “&” symbol is a non-distinctive symbol and the likelihood of other traders wishing to use the same, unembellished “&” symbol is high”. 

14. However, I do not agree that when this logogram appears alone and unadorned that it is devoid of any capacity to distinguish the services or, as Hearing Officer Murray said in relation to the capacity of the ‘greater than’ mathematical symbol to function as a trade mark, it is no more than “a randomly precipitated blemish on the page”[11]. The fact is the ampersand logogram is registered as a trade mark for certain class 39 relevant services, no application has been filed to remove it and, as such, the trade mark owner has certain rights under the Act in respect of others seeking to use substantially identical or deceptively similar marks as trade marks in respect of those, or similar services.

    [11] Ab Initio Software LLC [2010] ATMO 66 [15].

15. The Applicant also argues that the registered trade mark was accepted without the provision of evidence.  However, I cannot comment on the examination of the registered trade mark, and given this trade mark is now registered, I view this line of argument a moot point.  But for the sake of completeness I also note that this very issue has already been discussed in an earlier matter.  The owner of the registered trade mark opposed the registration of trade mark 1289191 (a stylised ampersand device) and the Hearing Officer said the registered trade mark:

    … is invariably separated from the use of the Abercrombie & Kent name.  It is given dominant physical placing in all the advertising material I have seen.  Finally, the use is more than ornamental and has the capacity to be indicative of the services of a particular trader. [my emphasis][12]

    [12] Abercrombie & Kent Group of Companies, S.A. v Carnival plc [2011] ATMO 102 [25].

16. Meanwhile, the Trade Mark comprises a representation of a stylised ampersand superimposed on a dark circle and the word ‘TOKYO’.  There are a suite of ways to represent an ampersand and they include the following examples:

1. As illustrated above, the ampersand logogram has a range of variability and I consider the representations above are all instantly recognisable as representations of the ampersand logogram.

2. The Applicant also asks me to consider that the registered trade mark is for an image of an ampersand, not for a plain word mark.  Which it submits, means that changes to the font or style of the logogram image in use may affect the identity of the mark.  Whilst that is true, I am required to assess the relevant trade marks as whole, noting their similarities and differences.  The Applicant’s argument in this regard tapers back to its earlier argument that the registered trade mark is devoid of inherent capacity to distinguish which I have already addressed above.  For completeness, I note that the remaining submissions from the Applicant are in response to the examiner reports which, unless directly relevant to the matters I have considered in this decision I have not considered as I am to take a fresh look at the ground for rejection that has been raised.

3. Accordingly, in the context of the imperfect recollection principle[13] I am satisfied that the Trade Mark would be glanced at by potential consumers and seen as containing an ampersand at the very beginning of the Trade Mark. At the risk of repetition, even though the Trade Mark also contains the word ‘TOKYO’ this word is a well-known geographic location and, as such, it is unable to satisfactorily differentiate the trade marks.  A potential purchaser may be caused to wonder if the relevant services are provided by the Opponent.  The identity[14] of the registered trade mark is retained in the Trade Mark. 

   [13] Aristoc Ltd v Rysta Ltd [1945] AC 68

   [14] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; Eau De Cologne’s Application (1990)17 IPR 540; Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCAFC 156 (the ‘idea ‘of the mark)

4. Taking all the above factors into my consideration of judging the respective wholes of the two trade marks I find that there is a real and tangible danger that potential purchasers would imperfectly recall the registered trade mark and be deceived or confused as a result on encountering the Applicant’s services bearing the Trade Mark.  The trade marks are deceptively similar.

Decision

1. I am satisfied that the ground for rejection applies under section 44 and as delegate of the Registrar of Trade Marks I accordingly refuse to register the Trade Mark.

2. If the Registrar has been served with a notice of appeal before that time, I direct that the refusal of Trade Mark 1731187 shall not occur until the appeal has been decided or discontinued.

Cristy Condon

Trade Mark & Designs Oppositions and Hearings

31 May 2017