Tourism Queensland v Dectar Pty Ltd

[2001] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Tourism Queensland to registration of trade mark application 794746(39) - filed in the name of Dectar Pty Ltd.

Background
Trade mark application number 794746 was filed on 20 May 1999 (the priority date) in the name of Dectar Pty Ltd of Tingira & Aumuller Streets, Portsmith, Cairns in Queensland.  That application was for the registration of the word trade mark The application covered the following services:

Class 35:        Business consultancy services in the tourism and travel industries.

Class 39:Transportation of tourists including helicopter, bus, marine and diving tours; arranging of tours for the aforementioned services, travel consultancy services for the aforementioned services, associated pick-up and delivery; and ticketing services for the aforementioned services.

The provisions of section 44(3)(a) were applied to the application as a result of s.44 objections raised in respect of trade mark numbers 592224, 592225, 595999, 598818, 598819, 678589, 678592, and 779543. Each of these marks is registered in the name of the opponent's predecessor, Queensland Tourist and Travel Corporation.

On 20 April 2000, the applicant requested that the Class 35 claim be deleted from the application. This was duly carried out by the Trade Marks Office (TMO) on 1 May 2000.

Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 10 February 2000 but only in respect of the Class 39 services as originally sought.

A notice of opposition to the trade mark's registration was filed by Tourism Queensland on 10 May 2000.  That notice listed a number of grounds of opposition which can be summarised as follows:

1. Trade mark application number 794746 is not capable of distinguishing the applicant's goods and/or services - section 41 of the Trade Marks Act 1995 (the Act);

2. 794746 is not inherently adapted to distinguish the goods of the applicant from those of other persons - section 41;

3. The use of  794746 by the applicant would be contrary to law - section 42;

4. Due to the existence of a number of trade marks which the opponent owns, 794746 is likely to deceive or cause confusion - section 43;

5. 794746 is identical with or deceptively similar to the opponent's registered trade marks - section 44;

6. The applicant is not the owner of the subject trade mark - section 58;

7. The applicant does not intend to use, or authorise the use of 794746, nor assign it to a body corporate for use by the body corporate, in Australia - section 59;

8. 794746 is substantially identical with, or deceptively similar to the opponent's registered trade marks which have acquired a reputation in Australia, as a result of which the use of 794746 is likely to deceive or cause confusion - section 60;

9. By reasons of the aforementioned matters, the Registrar's discretion ought to be exercised to refuse the application for registration.

At the hearing, the opponent indicated that while it did not abandon any grounds of opposition, it would only make submissions in relation to the grounds relying on ss.41, 43, 44, 58 and 60.

The applicant requested that the matter be heard by the Registrar.  The matter then came before me, as a delegate of the Registrar, for hearing in Canberra on 18 April 2001.  The matter was heard by telephone.  Mr Robert Wulff of Griffith Hack Patent and Trade Mark Attorneys of Sydney represented Dectar Pty Limited.  Mr David Yates of Allen Allen & Hemsley Lawyers of Sydney represented Tourism Queensland.

The Evidence
By way of background, the opponent, Tourism Queensland, is a travel service company specialising in travel and holidays in Queensland.  It has provided, in evidence, a significant amount of promotional material advertising these services.  As far as I can tell, the advertising materials date cover the period from February 1991 to the present.  The opponent alleges that it has used the name Sunlover Holidays in advertising material since 1986, but there is no specific documentary evidence of this.  Tourism Queensland owns numerous trade marks, and relies, variously, on the following registrations:

59224, 592225, 595998, 595999, 596000, 596001, 596002, 596003, 616085 and 616086, registered respectively in classes 42, 39, 14, 16,18, 21, 24, 25, 20 and 28.  Each of these trade mark registrations is a series comprising the following two device marks:

598818, 598819, 678589, 678592, registered respectively in classes 39, 42, 36 and 33.  Each of these trade mark registrations is a series comprising the following two word marks:

SUNLOVER

SUNLOVER HOLIDAYS

However, for the purposes of this determination, only those trade marks are in Classes 39 and 42 are particularly relevant.  These marks are 598818 (39), 598819 (42), 592224 (42) and 592225 (39).

The evidence-in-support comprised statutory declarations by Phillip James Hoffman dated 9 November 2000 and Ronald John Angel dated 10 November 2000.

Mr Hoffman is the owner of a travel agency and is President of the Australian Federation of Travel Agents.  He states in his declaration:

1. During the 10 years that his travel agency has operated, he has received advertising material from the opponent, and sold a "significant" number of products and packages offered by Sunlover Holidays.

2. In 1998, Mr Hoffman was named the number 1 seller of the opponent's products in Australia.

3. In the course of his business, he commonly refers to the opponent's products as "Sunlover products" or "Sunlover packages".

4. He, and others in the industry, refer to the web site operated by the opponent, and located at as "the Sunlover web site".

   [1] In this decision, domain names and web sites will be indicated using the accepted convention of underlining.  Where the subject trade mark is referred to as a trade mark, rather than a domain name or web site, inverted commas will be applied eg ">

   He has been informed by 2 travel agents employed in his agency that they have mistakenly believed that the applicant's business was associated with the opponent and have observed others in the industry making the same mistake - this mistaken belief continued until the position was clarified by a representative of the opponent.

At this stage, it is relevant to note that at paragraph 9 of Mr Hoffman's declaration, the names of the 2 travel agents referred to above were written into the declaration by hand.  These handwritten amendments were not initialled by the deponent or witness in the usual manner.  However, Mr Wulff, on behalf of the applicant indicated that he took no objection on this point.

Mr Angel is the General Manager of Sunlover Holidays and is authorised to give evidence on behalf of the opponent.  By way of summary, Mr Angel states:

1. The opponent has been the registered owner of the following domain names from the dates set out below:

   October 2000

   April 1998

   October 2000

2. Prior to 1991, the slogan "Sunlover" was owned by Stay and Play Australia Pty Limited.  In March 1991, the slogan was transferred to the applicant.  At that time, use of the slogan was limited to transport, travel and cruising services.  The slogan was not used with respect to a wider range of goods and services until 1997.

3. The applicant registered the mark "Sunlover" on 30 September 1996 (718537) and 25 September 1997 (744853).

4. The opponent has used its trade marks in promotional materials extensively since 1986 to date.  The domain names referred to in paragraph 1 above, have been used extensively since 22 April 1998 and continuing.  The use of these domain names has extended to promotional brochures which are available to travel agents, tour operators, potential travellers who have sought information from travel agencies and the like, and the general public.

5. Mr Angel and others employed in the travel industry have referred to the Opponent's products as "Sunlover" products and have referred to the web site accessed by use of the opponent's domain names as the "Sunlover web site".

6. There has been at least one incident where a travel agent has contacted the applicant, when they have in fact meant to contact the opponent.

7. The products of both the applicant and opponent are sold to a cross section of the public, most of whom do not have particular experience in the travel industry.

8. The opponent's web site located at receives over 500,000 visits per month.

9. The opponent has spent significant amounts of money on promotion of the Opponent's Trade Marks and has generated a significant amount of revenue from Sunlover Holiday products.

10.  Approximately 80% of web site visits are by Australians, and 85% of sales are to Australian consumers.

Mr Angel's statutory declaration included a substantial amount of advertising material, showing the opponent's trade marks and the domain names. The first use of the Opponent's Trade Marks appears to be in relation to products available from 1 February 1991.  There is also an unregistered mark which will be discussed during the course of this decision:

No evidence in answer or reply was filed. 

During the course of submissions, the representative of the applicant sought to introduce evidence in the form of material which is contained on other trade mark files.  In particular, the applicant asked me to have regard to the evidence lodged in relation to trade mark applications 718537 and 744853. No notice had been given to the Trade Mark Office Hearings Section nor to the opponent that the applicant wished to rely on this material.  In particular, the applicant did not serve any of the material contained in these files on the opponent. 

In relation to application number 744853, a letter was sent by the applicant's attorney to the TMO dated 16 December 1999.  The letter requested that the evidence of use filed in support of application number 744853 be applied to the current application.  It appears from the file that it was.  However, no copies of that other file appear on the current file, nor did the applicant serve this material once the opposition had commenced. Accordingly, the material is not before me as decision maker.  Regulation 21.19 of the Trade Marks Regulations 1995 allows me to take into account information that is not known to a party to the proceedings, but it does not require me to do so. In particular, I do not believe it is incumbent upon me as a decision-maker to make out the case for an applicant. There is a clear procedure laid down in Part 5 of the Regulations for the service of evidence and conduct of hearings generally. The applicant had every opportunity to serve and file evidence, but chose not to do so. In fact, the applicant filed a notice pursuant to Regulation 5.11(1) to the effect that it did not intend to rely on evidence in answer, on 7 February 2001. It did so at its own peril.

The applicant also submitted that as the opponent had full knowledge of material filed in relation to application number 718537, it was not incumbent upon the applicant to "re-serve" the material.  I do not agree with this proposition.  I believe that procedural fairness, and the regulations require the service of material on which a party intends to rely.

Further, the applicant sought to rely on a letter from the opponent to the applicant dated 27 April 2000.  Again, this letter was not served, nor was the opponent informed that the letter would be raised at the hearing.  For the reasons set out above, I find this letter inadmissible.

Submissions
The opponent submitted:

1. As a result of extensive use of its marks which incorporate the words "Sunlover" or "Sunlover Holidays" and/or the devices used in conjunction with those words, since 1986, the opponent has developed a significant reputation in those marks and the word "Sunlover".

2. That the applied-for mark " can and should be reduced to the actual identifier "sunlover" as the designations "www" and "com.au" do not hold any significance.

3. The applied for mark falls foul of Section 44(2)(ii). Specifically, the applied for mark is:

(a)substantially identical with or deceptively similar to trade mark numbers 598818, 598819, 592224 and 592225; and

(b)registration is being sought for similar services.

In particular, the opponent submitted in relation to (a), that the essential element of each of the marks is the word "Sunlover.  The relevant trade marks and the services they cover are as follows:

749746		Class: 39 Transportation of tourists including helicopter, bus, marine and diving tours; arranging of tours for the aforementioned services; travel consultancy services for the aforementioned services; associated pick-up and delivery, and ticketing services for the aforementioned services
598818	sunlover and sunlover holidays	Class 39: Tourist and travel services including travel and holiday package services; services in arranging and providing travel transport by land, sea and air; services in arranging and providing tours and cruises; services rendered by travel agents and travel agencies including the booking services in this class; ticketing services including the issue of tickets and vouchers; and land, sea and air vehicle rental services, all being services included in this class
598819	sunlover and sunlover holidays	Class 42: Services in arranging and providing accommodation including hotel, motel and tourist accommodation reservation services; booking services in this class namely the booking of meals; retail and wholesale of souvenirs
592224	and	Class 42:  Services in arranging and providing accommodation including hotel, motel and tourist accommodation reservation services; booking services in this class namely the booking of meals; retail and wholesale of souvenirs
592225	and	Class 39: Tourist and travel services including travel and holiday package services; services in arranging and providing travel transport by land, sea and air; services in arranging and providing tours and cruises; services rendered by travel agents and travel agencies including the booking services in this class; ticketing services including the issue of tickets and vouchers; and land, sea and air vehicle rental services, all being services included in this class

1. 794746 contravenes s.43 in that it gives rise to a connotation of association of the applicant with the opponent and/or the opponent's services and/or a member of the programs which the opponent organises for tour operators, arising from a reputation that the opponent has garnered in its trade marks.

2. 794746 contravenes s.60 in that:

(a)it is substantially identical with or deceptively similar to the opponent's Sunlover trade marks which had acquired a significant reputation in Australia for similar services before the priority date; and

(b)even if members of the public are aware that the opponent does not provide the same services as the application covers, given the similarity of the services and the concept of brand extension, potential consumers will be misled into believing that the opponent has expanded its services.

1. 794746 contravenes s.44 in that:

(a)it is substantially identical with and/or deceptively similar to the opponent's Sunlover trade marks which have an earlier priority date and cover "similar" services; and

(b)a s.44(3) endorsement was applied at the examination stage to 794746 - such an endorsement is no longer appropriate in the absence of evidence in answer.

1. 794746 contravenes s.41 in that:

(a)the applicant's mark is not to any extent inherently adapted to distinguish the services the subject of the application; and

(b)there is no evidence which brings s.41(6) into operation.

1. 794746 contravenes s.58 in that the opponent is the true owner of the mark, as its use of substantially identical marks in relation to the same kind of services, pre-dates the priority date.

2. The Registrar's discretion should be exercised in the opponent's favour on the basis that:

(a)the applicant has provided no evidence of use and this should be interpreted to mean that the applicant has not used the applied-for mark;

(b)the opponent has provided extensive evidence of use;

(c)that the applicant has not used the mark, and the opponent has, therefore the opponent is likely to suffer far greater damage than the applicant, in the form of confusion amongst consumers, if the trade mark proceeds to registration; and

(d)the fact that the opponent did not object to the prior registrations of the applicant should not be read against the opponent here.

1. In relation to the failure of the applicant to serve any evidence, this should be read against the applicant. 

The opponent also provided submissions relating to the evidence served as evidence in support, however, it is not necessary to set these submissions out.  Rather, it is suffice to indicate that the submissions merely summarise the evidence, set out the relevant material and extract key information.  I will refer to these where necessary in my reasons.

The applicant's submissions, so far as they are relevant can be summarised as follows:

1. The applicant is the legitimate owner of the domain name which is a contraction of a registered business name.

2. The applicant provides the services specified in the application and transacts business at the website The business of the applicant is the provision of transportation services.  The opponent, on the other hand, is a wholesaler of holiday products.

3. The applicant and its predecessor have been trading continuously under the sunlover trade mark since 1989.

4. Trade mark registrations were granted for trade mark numbers 718537 (on the basis of prior continuous use and honest concurrent use) and 744853 (on the basis of honest concurrent use) and the evidence in relation to these files can and should be taken into account in the present matter.

Findings
Section 43
Section 43 reads:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

Section 43, when used in opposition to registration, requires an opponent to show that:

(a)there is a connotation in the proposed mark or one of its parts; and

(b)because of this, the trade mark is likely, when in use, to deceive or cause confusion.

In the present case, the opponent submitted that, because of the reputation that the word "Sunlover" has, this gives rise to a connotation of association of the applicant with the opponent and/or the opponent's services and/or a member of the programs which the opponent organises for tour operators. 

TGI Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720 (tgi friday's) is the most recent authoritative decision on the meaning of "connotation". The case confirms that the connotation must be in the mark itself and cannot be determined as the result of external considerations, such as reputation.

A similar approach was taken in George Schmidt v Down to Earth (Victoria) Co-Operative Society Limited (the down to earth decision) 41 IPR 632. In that case, Hearing Officer Forno stated, at 643:

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s.43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.

Insofar as the applicant attempts to rely on a connotation of association, the submission is properly made as it is in line with the approach taken by Hearing Officer Forno in down to earth and Deputy Registrar Hardie in Twentieth Century Fox Film Corporation v Michael F Durkan (2000) 47 IPR 651 (braveheart the musical). These cases confirm that where evidence convincingly shows a connotation exists which would lead people to wrongly assume that a trade mark is connected with another entity, purchasers might incorrectly infer an endorsement of the product, or a franchising relationship. Use of the trade mark in the face of such connotation is likely to deceive or cause confusion. However, evidence which seeks to establish reputation (as opposed to evidence of the notoriety or general and widespread knowledge amongst the intended market) in the opponent's mark, cannot be taken into account in making this assessment - tgi friday's.

I am therefore left to determine whether the applied for trade mark itself gives rise to a connotation of association.  I am not satisfied that it does.  There is nothing in the mark itself which gives rise to a connotation of the opponent.  Even when the proposed services are taken into account it is not clear to me that the proposed mark is in any way alluding to the opponent.  Rather, to my mind, "Sunlover" simply indicates that the services might relate to tourism activities that are conducted in the outdoors, most likely in a temperate or tropical climate.  I do not make any association with the opponent, nor is there any evidence before me which indicates that people in the intended market would do so.

I dismiss the s.43 ground.

Section 60
Section 60 says:

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

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.

Accordingly, to satisfy section 60, the opponent has the burden of establishing the following elements:

(i)   a pre-existing trade mark;
(ii)  substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

(iii)            the acquisition of a reputation in Australia by the pre-existing trade mark; and
(iv) a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

The opponent relies on the following pre-existing trade marks in support of its s.60 ground of opposition:

The registered word marks - sunlover and sunlover holidays

The registered device marks -  and   ("heart-shaped sun devices)

A common law trade mark -  which is illustrated in Exhibit "F" to Mr Angel's declaration.

The rules relating to determining substantial identity are outlined in such cases as Australian Woollen Mills[2] and Shell Co of Australia v Esso Standard Oil[3], where, in the latter case, Windeyer J said, at 414-415:

[2] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641

[3] Shell Co of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407

(The marks should) 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.

Applying Justice Windeyer's test to the trade marks in question, I make the following findings:

1. The essential feature of the applied for trade mark " is "sunlover". 

2. Similarly, the essential element of each of the word marks, sunlover and sunlover holidays is the word "sunlover".  In each case, the word "sunlover" is the only part of the marks that carry trade mark significance.  Accordingly, I find that the applied for trade mark is substantially identical to the opponent's word marks.

3. In relation to the opponent's and  marks, I am not satisfied that the total impression one gets is of substantial identity.  When compared with the subject trade mark, the heart-shaped device clearly distinguishes the opponent's mark from that of the applicant, is striking in its appearance, and draws the observer's attention to it.

4. In relation to the opponent's unregistered mark, again, I am satisfied that the heart symbol is the striking component of the mark and that there is no substantial identity. 

In relation to deceptive similarity, the relevant test was set down by Dixon and McTiernan JJ in Australian Woollen Mills - supra at 658:

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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

Lord Parker (then Parker J) said in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777:

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. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

Taking these tests into account, I am satisfied that the applicant's trade mark is deceptively similar to the opponent's word and device marks.  I find that the word "sunlover" is the dominating element of each of the marks (749746, 598818, 598819, 592224, 592225 and the common law mark).  It is also the element that consumers are likely to remember and recall in the manner described by Justices Dixon and McTiernan.

The next consideration therefore is whether the pre-existing trade marks have acquired a reputation in Australia. 

I am satisfied that the uncontested evidence of Mr Angel establishes that that the opponent has made extensive use of the trade marks sunlover, sunlover holidays,  and  over a considerable period of time.  I am satisfied that these particular trade marks have acquired a reputation and that this reputation pre-dates the priority date of 20 May 1999.  I am not satisfied that the same can be said of the opponent's unregistered trade mark as the use of this mark appears to have ceased in the early 1990s. I do not propose to take my consideration of that mark any further.

In relation to my findings on sunlover, sunlover holidays,  and , I have taken the following evidence into account:

(a)significant, continuing advertising by the opponent, using the word "Sunlover" and the heart-shaped sun devices, since at least 1991, as set out in Exhibits C through I to Mr Angel's declaration;

(b)the amount spent on advertising in the period 1997 to 2000 - an average of over $4 million per year;

(c)the number of bookings made through the opponent in the period 1992 through 2000 for Sunlover Holiday products - 1,093,50; and

(a)annual average sales of Sunlover Holiday products in the period 1997 to 2000 - $164,351,736.

However, based on the evidence of use contained in Exhibits C through I and the submissions of the opponent that:

SUNLOVER HOLIDAYS is the largest land-based tour wholesaler in Australia...[the opponent's holiday products] are holiday "packages" which combine transport, accommodation, tour guide and other holiday resources of many different operators throughout Queensland...These packages are put together by operators who submit them for inclusion with [the opponent's] advertising program

...

The Opponent is a wholesaler of holiday products.  It has generated considerable income for tour operators...

I believe that the opponent's reputation is limited to the wholesaling of holiday packages and travel advice.  The reputation does not extend to the provision of "hands on" transportation services. For example, while the opponent may arrange transportation for tourists, they rely on a third party to actually provide the means of transport and the actual service.  

The final question therefore is whether this reputation, which exists in only a portion of the relevant market, will mean that the requisite deception or confusion will arise. 

The standard to be applied when testing for deception or confusion was set down by French J in the woolworths at 426.  In considering the phrase "likely to deceive or cause confusion", his Honour quoted from Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594:

The use of the word 'likely' in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a 'real tangible danger of it occurring'.

In determining the likelihood of future deception or confusion, it is often helpful to determine the extent of any previous confusion or deception.

In the present case, the opponent effectively conceded in its evidence (paragraph 7 of Mr Angel's declaration) that the applicant has been operating under the “Sunlover” name since at least 1991.  Notwithstanding this, the opponent can point to only one specific instance of confusion.  This was a mis-directed e-mail which was sent to the applicant by mistake.  No evidence was presented as to how or why the e-mail was sent to the applicant rather than the opponent.  In particular, there was no evidence before me which indicated that the mistake occurred due to confusion or deception arising from the opponent's reputation in its mark, or the applicant's use of the Nor was there any evidence that the author even knew of the existence of the applicant. I am not satisfied that the mere fact that someone sends an e-mail to an incorrect address is sufficient to establish that the sender was deceived or confused in the manner required by s.60.

The opponent also sought to rely on the evidence of Mr Hoffmann to establish that there was general confusion within the industry regarding the applicant’s association with the opponent.  This evidence was anecdotal and provided no specific examples.  The evidence simply extended to assertions that the general public and members of the industry mistakenly refer to the opponent by the applicant’s registered trade marks, "Sunlover".  This is not deception or confusion arising as to the services offered by the applicant - rather, it is due to people referring to the opponent by an abbreviated, incorrect name.  There was no documentary evidence before me that indicated that any person thought that the applicant was or might be in some way associated with the opponent.  The same reasoning can be applied to Mr Hoffmann's assertion that members of the industry and the public refer to the opponent's web site as “the Sunlover web site”.  This, again, is through no fault of the applicant.  There is no evidence before me that any person, whether within the knowledge of Mr Hoffmann or not, has mistakenly gone to the applicant’s web site thinking that they were in fact accessing the opponent’s web site.  Nor is there any evidence before me that anyone has been confused or deceived when visiting to the extent that they have wondered as to whether they have reached the opponent’s web site.

Accordingly, I am not satisfied that there has been any real, tangible deception or confusion to date.  What little confusion may have occurred is not tangible enough to warrant the rejection of the application.

On the other hand, I believe that one reason for this lack of confusion to date was the distinctive "markets" in which the parties operated.  In this respect, I use the term "markets" to differentiate between the provision of hands on services and the wholesaling of holiday packages and travel advisory services, rather than the trade channels. In the present case, the applicant has sought the following services:

749746 - 39 Transportation of tourists including helicopter, bus, marine and diving tours; arranging of tours for the aforementioned services; travel consultancy services for the aforementioned services; associated pick-up and delivery, and ticketing services for the aforementioned services (emphasis added)

Insofar as the services now include "travel consultancy services", they impinge upon the reputation that the opponent has garnered in its trade marks.   This means that there is an increased risk of deception or confusion.  Because of the extent of the opponent's reputation, I believe that this risk is real and tangible.  Internet users are likely to be confused or deceived as to the nature of the consultancy services offered by the applicant and will be caused to wonder whether they are in fact dealing with Sunlover Holidays. 

Accordingly, I am satisfied that, so long as the words "travel consultancy services" remain in the application, there is a real, tangible likelihood of deception or confusion arising, and the s.60 ground is made out.

Section 44
The opponent submitted that 794746 contravenes s.44(2) on the basis that:

(a)it is substantially identical with and/or deceptively similar to the opponent's Sunlover trade marks;

(b)each of the opponent's Sunlover trade marks has an earlier priority date than the applied-for trade mark; and

(c)the services sought under the present application are "similar" to the services covered by the Sunlover trade marks. 

These submissions accord with the requirements of s.44(2).

I have already found that the trade marks in question are either substantially identical or deceptively similar. 

The priority dates for each of the trade marks are as follows:

749746        20 May 1999

598818         23 Mar 1993

592225         11 Dec 1992

Therefore, condition (b) is satisfied.

In relation to (c) - it is clear that the opponent's services covered by trade mark numbers 598818 and 592225 are so wide that they comprehend all the services now sought by the applicant.  Accordingly, they are similar services and the  condition is satisfied. 

Accordingly, all the elements of s.44(2) are satisfied.

In that case, the balance of s.44 comes into consideration:

(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.

(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.

Subsections 44(3) and (4) allows the Registrar to accept an application where there is evidence placed before him that there has been honest concurrent use of the 2 trade marks or the applicant has continuously used the applied for mark in accordance with the terms of s.44(4).

Here, the opponent submitted that as the applicant had placed no evidence before me, and therefore, it was open to me to infer that neither s.44(3) nor (4) could be made out.

As I have already indicated, the applicant sought to rely on evidence that had been filed in relation to other applications, but to which the examiner in this case might have had regard to. Again, this evidence was not served or filed as required by the Regulations in this case.  Accordingly, and in order to achieve procedural fairness, I have ruled this evidence inadmissible.

I do not however, accept that the opponent's submission that it is incumbent upon me, in these circumstances, to infer that because the applicant filed no evidence of past use, ss.44(3) and (4) cannot be made out. This is not what the section requires. Rather, the section states that the Registrar must be satisfied. The section does not state that he must be satisfied only on the basis of the applicant's evidence or that a presumption is to be drawn in the absence of such evidence. Here, the opponent has conceded in paragraph 7 of Mr Angel's declaration that:

(a)until 1997, the "Sunlover logo" was “only used in respect of transport, travel and cruising services”; and

(b)in the period after 1997, the applicant used “Sunlover” with respect to a wider range of goods and services. 

When these concessions were raised by the applicant in support of its own case, the opponent submitted that it was not open to me to use this evidence to assist the evidentiary shortcomings of the applicant.  I am not satisfied that the opponent is correct in its assertion. 

As a finding of fact, I am satisfied that in the period 1991 to 1997, the applicant was involved in the provision of “hands on” travel services. In relation to the period after 1997, I am satisfied that these “hands on” services continued. However, in the absence of any evidence, I am unable to find that these services were expanded after 1997. I am also satisfied that the opponent has engaged in wholesaling and travel advisory services during the same period. In this respect, I refer to my comments in relation to s.60, so far as they are relevant to a determination of the services the opponent offered during the relevant period.

Accordingly, I am satisfied that there has been honest concurrent use sufficient to satisfy s.44(3) insofar as the use involves the provision of "hands on" services. I am not satisfied that there has been any use in relation to "travel consultancy services".

Therefore, and subject the deletion of "travel consultancy services for the aforementioned services" from the application, I am satisfied that the provisions of s.44(3)(a) should be applied. If the deletion is made, then this ground of opposition will fail. This is in line with the decision of Kenny J in McCormick & Company Inc v McCormick (2000) AIPC 91-637 where Her Honour indicated that s.44(3) could not be used as an exception to s.60. In the present circumstances, so long as the amendment is made to the application, then there will be no conflict between the s.60 and s.44 grounds. On the other hand, if the amendment is not made, the s.60 ground will be made out and the opposition will succeed.

Section 41
Section 41, so far as it is relevant to this application, reads:

s41(1) ...

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

...

Sections 41(4) through (6) are relevant only where the proposed trade mark does not have the requisite inherent adaptation - Branson J in Blount Inc v The Registrar of Trade Marks 40 IPR 498 at 504-505 (the blount case) and Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) AIPC 91-539 - the cranberry classic case.

The applicant has submitted that the trade mark in question " should be reduced to its unique identifier - "sunlover".  This approach necessitates the removal of the terms "www" and ".com.au" from my consideration.  Paragraph 14.2 of Part 22 of the TMO Draft Manual of Practice and Procedures states in relation to s.41:

A domain name is the address of an Internet site that allows the public access to the site and is typically a combination of standard address code material and an identifier. Standard address code material such as ' ' 'net', 'org', 'com', 'shop' or 'au' and punctuation symbols '~', '.' or'/' point to directories, sub-directories and servers and are common to many domain names. An identifier may be an individual's name, an existing trade mark, a company name, a product name, a topic or any other combination of letters and numerals and is unique within any given domain name registration system.

In a domain name, it is the identifier which enables one domain name to be differentiated from another, and may lend a domain name some trade mark significance. In other words, it is the identifier which is the distinguishing element of a domain name, and this is the element which should be considered when assessing the inherent adaptation of the domain name.

The identifier will be assessed in the same way as are all other trade marks. If it consists of a word, phrase or combination of letters and/or numbers which other traders would wish to use in the normal course of their trade, then grounds for rejection should be raised. An example of when grounds for rejection should be raised is the domain name Sydney is a well-known geographical location and should be available for other traders to use to indicate the origin of their goods and/or services. Similarly trade marks such as smith.com, EC.com or bestprice.com should be rejected as lacking inherent adaptability to distinguish as a surname, a two letter trade mark or laudatory expression.

This approach was the subject of a practice direction in the Australian Official Journal of Trade Marks on 22 October 1998. I see no reason to depart from the TMO's established position. Accordingly, in relation to my assessment under s.41 only, I will focus on the word "sunlover" rather than "

Taking this into account, the opponent has submitted that the applicant's trade mark is not to any extent inherently adapted to distinguish the applicant's services from those of the opponent. This is largely on the basis that the opponent uses the same mark for similar services. The opponent has also submitted that s.41(6), which allows the Registrar to take into account prior use by the applicant, cannot apply in the present circumstances because the applicant has filed no evidence of use.

For the reasons set out below, I have found that the proposed trade mark does have the requisite inherent adaptation.

The test for determining whether the proposed mark has the requisite degree of inherent adaptation to distinguish, was confirmed by Wilcox J in the cranberry classic case where he referred to Kitto J's directives in the michigan case[4].  At paragraphs 22-23, Wilcox J says:

[4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514

[Kitto J] said the question whether a mark is inherently adapted to distinguish must:

"be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of the words forming part of the common heritage for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

This test was cited with approval by Gibbs J in Burger King Corporation v Registrar of Trade Marks[5].  In F H Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited[6] the Full High Court was concerned with an application for registration of the word "Barrier" in relation to skin protection creams. Kitto J (with whom Barwick CJ and Windeyer J agreed) said at 555:

[5] (1973) 128 CLR 417 at 425

[6] (1965) 112 CLR 537

"... the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods."

As I have already indicated, there has been concurrent use of the word "Sunlover" by the parties.  The opponent sought to rely on this to establish that it was a trader who not only wanted to use the mark in connection with similar services, but had in fact done so.  In support of that submission, they relied on Melhero Pty Ltd v Club X (1997) 37 IPR 151. In that case, it was found that the use of the trade mark "Adam & Eve" by a number of parties meant that it was incapable of distinguishing the respondent's goods and services from other traders. I am not satisfied that it is good authority in this case. I believe that that case was decided on its own particular facts, not least of which was the almost universal usage in the English language of the term "Adam & Eve". "Adam & Eve" was a term that was common to the adult services trade. I have not been shown that "Sunlover" is a term which is common to the tourism trade.

The opponent also submitted that the fact that it had used the trade mark "Sunlover" in the past meant that, almost as a matter of certainty, they had satisfied the test laid down in the michigan case.  However, the mere fact that two traders wish to use the same name may only indicate that the term is a popular trade mark.  The rule also states that it is designed to protect the:

"common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess".

This rule applies only to words that are likely to be required for the sake of their ordinary meaning.   "Sunlover" is not such a word.  Although, in application to tourism services, it may strongly allude to tours designed for "sun seekers", I have not been shown that it is a word that is commonly used or likely to be used to describe such tour services.  On the contrary, the opponent's evidence points to nothing other than its own trade mark use of the word. 

I am therefore satisfied that "Sunlover" does possess the requisite degree of inherent adaptation.  Accordingly, I dismiss this ground of opposition. 

Section 58
Section 58 states:

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

The opponent submits that the applied-for trade mark contravenes s.58 in that the opponent is the true owner of the mark, as it had use of substantially identical marks in relation to the same kind of services, before the priority date.

I have already found that the opponent has used its marks in relation to the provision of wholesaling and arranging of tourism services.  The opponent submits that the mark has been so used since 1986 (Angel declaration paragraph 12), but provides no documentary evidence which pre-dates February 1991.  The applicant contests the assertion regarding 1986, but concedes that the evidence shows use from February 1991.  I am satisfied on the evidence that the opponent's trade marks have been used in relation to these services since February 1991.  I am also satisfied, on the basis of the concessions made by the opponent that I have already discussed, that the applicant has used its "Sunlover" trade mark in relation to the provision of tourist transport services since March 1991.  At some earlier time, the slogan "Sunlover" had been used by another entity, who transferred it to the present applicant in March 1991. Accordingly, and in the absence of more specific dates, I am unable to determine which party had the first use of the "Sunlover" trade mark.  In any event, until at least 1997, the parties used their trade marks in relation to different segments of the tourist industry.  Accordingly, each could establish their ownership of the relevant marks in relation to their particular services in accordance with the decisions in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 and Microcom Pty Ltd v Microcom Systems Inc (1998) 41 IPR 163. 

However, for an opponent to succeed on a s.58 ground, it bears the onus of establishing that it (or another party) has a superior proprietary claim to the applied for mark. I am not satisfied that the opponent has made out any such case, even in relation to "travel consultancy services". Accordingly, this ground is dismissed.

Registrar's Discretion
Section 55 says:

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.

As I have already indicated, I am minded to allow the application to proceed to registration, but only on the condition that the words "travel consultancy services for the aforementioned services" are deleted from the application.  I believe that this is an appropriate exercise of my discretion. 

The Remaining Grounds
The opponent also relied, but did not provide submissions on, a number of other grounds set out in the notice of opposition.  These were not abandoned.  However, in the absence of evidence to support these additional grounds, I find that they are not made out and are therefore dismissed.

Conclusion
The opponent has not succeeded in so far as its opposition relies on sections 43, 41 and 58. In terms of s.60 however, I am satisfied that as a consequence of the reputation which attaches to the opponent's trade marks, use of the applied for trade mark in relation to "travel consultancy services" is likely to lead to deception or confusion. I am also satisfied that although the provisions of s.44(3) address the objection that the application is in breach of s.44(2), the necessary honest concurrent use does not extend to "travel consultancy services".

Accordingly, I direct that the subject trade mark application may proceed to registration, but only if, within one month from the date these reasons are issued, the statement of services claimed in this application is amended to read:

Transportation of tourists including helicopter, bus, marine and diving tours; arranging of tours for the aforementioned services, associated pick-up and delivery, and ticketing services for the aforementioned services. 

Costs
The usual course in these proceedings is to award costs to the successful party.  In the circumstances, however, the opponent has been put to considerable effort in pursuing its case.  The applicant, on the other hand, has done very little, particularly with regard to the collation, serving and filing of evidence.  Further, it is the applicant which has attempted to extend its registration to include services that have been the traditional domain of the opponent. Finally, the fact that the applicant offered to amend its application at the hearing is not sufficient reason to ignore the costs that would have been incurred by the opponent in preparing its case and appearing at the hearing.  With these factors in mind, I direct the applicant to pay the costs of the opponent, irrespective of whether the applicant amends its application in the manner set out above. 

Geoff Purvis-Smith
Hearing Officer
27 July 2001