Trade mark application number 2166714 (classes 9, 41) – Q1 - in the name of 1Question Pty Ltd

[2022] ATMO 36

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2166714 (classes 9, 41) – Q1 - in the name of 1Question Pty Ltd

Delegate:	Katrina Brown
Representation:	Applicant: Minter Ellison
Decision:	2022 ATMO 36 Trade Marks Act 1995 (Cth) – s 38 proceeding – proposed revocation of acceptance – s 44 ground for rejection – reasonable in all circumstances to revoke acceptance – application returned to examination.

Background

1. This proceeding is in respect of the proposed revocation of acceptance of trade mark application number 2166714. The relevant details of this trade mark application are as follows:

   Trade mark:

   (‘Trade Mark’)

   Applicant:                 1Question Pty Ltd (‘Applicant’)

   Priority date:            6 April 2021

   Specification:            Class 9 - Application software; Downloadable software applications (apps); Computer software applications (downloadable); Computer software; Education software; Interactive education software; Interactive computer software; Computer software programs; Computer software downloaded from the internet; Computer software (recorded); Computer software products; Electronic publications (downloadable); Electronic and recorded multimedia publications; Electronic publications including those sold and distributed online; Printed publications in electronically readable form; Computer apparatus for educational use; Computer based training apparatus; Teaching apparatus; Teaching apparatus for use as study aids; Teaching instruments; Teaching programmes recorded on data carriers; Teaching robots; Training apparatus (teaching apparatus for teaching people); Training aids (apparatus for teaching people); Training guides in the form of a computer program; Training manuals in electronic format; Training materials (apparatus); Instructional apparatus; Instructional instruments; Instructional materials (apparatus); Downloadable podcasts; Downloadable webcasts; Electronic calculators; Electronic timers; Electronic notebooks; USB flash drives; Mobile phone cases; Lanyards for mobile phones

   Class 41 - Education services; Provision of education services via an online forum; Educational assessment services; Educational examination; Design of educational courses, examinations and qualifications; Setting of educational standards; Teaching; Educational instruction; Educational research; Educational advisory services; Educational consultancy services; Provision of educational courses; Provision of training courses; Dissemination of educational material; Publication of educational materials; Publication of multimedia material online; Electronic publication of information on a wide range of topics, including online and over a global computer network; Providing online electronic publications, not downloadable; Providing online videos, not downloadable; Distribution (other than transportation) of sound recordings; Arranging and conducting of seminars; Educational seminars; Providing information in the field of education

   (‘Applicant’s Goods and Services’)

2. The trade mark application was examined as required by s 31 of the Trade Marks Act 1995 (Cth) (‘Act’). The examiner did not identify any grounds for rejection and acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 7 September 2021.

3. However, on 11 October 2021 a delegate of the Registrar issued the Applicant a notice proposing to revoke acceptance of the trade mark application (‘Notice’) which relevantly stated:

   At the time of examination, there existed 8 trade marks (898834, 898835, 1031747, 1093077, 1424254, 2074489, 2074491, 2211080) with earlier priority dates which should have formed the basis of a Section 44 ground for rejection. The representation of your mark leads it to being interpreted by consumers as either Q1 or 1Q. Each of the earlier marks contains Q1, OneQ, Q-One as their primary identifying element. As such, the overall impression left in the mind of the consumers is sufficiently similar to each of the earlier trade marks that there would be a real and tangible danger of confusion within the marketplace.

   Additionally, the earlier filed trade marks share a variety of broad goods/services in classes 9 and 41 with those claimed in your trade mark

4. The Applicant requested to be heard by way of written submissions in relation to the intention to revoke acceptance. Ultimately the Applicant did not file any written submissions.

5. The matter has been allocated to me, a delegate of the Registrar, to decide.

   The relevant statutory provisions

6. Section 38 of the Act provides the Registrar with a discretionary power to revoke the acceptance of a trade mark application. Section 38 relevantly provides:

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)    the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)   it is reasonable to revoke the acceptance, taking account of all the circumstances.

7. Section 38 sets out a two-limb test. Firstly, I must be satisfied that the trade mark application should not have been accepted considering all the circumstances that existed at that time (regardless of whether the Registrar knew then of their existence). Secondly, I must be satisfied that it is reasonable to revoke acceptance taking account of all the circumstances. Both limbs of the test must be met for the acceptance to be revoked.

8. The effect of revocation under s 38 of the Act is that the application is taken to have never been accepted and it is returned to the examination phase of the application process.[1]

   [1] Act s 38(2)(a) and (b).

   Discussion

9. My first consideration is whether the trade mark application should not have been accepted taking account of all the circumstances that existed at that time. If there was a valid ground for rejection, clearly the trade mark application ought not to have been accepted.  

10. The basis for the proposed revocation of acceptance is that there is a ground for rejection under s 44 of the Act. Section 44 of the Act relevantly provides:

    (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.

    …

    (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.

11. The Notice identified eight registrations as the basis for the s 44 ground for rejection. From the outset, I note that registration 1424254 has been removed from the Register, and as such I will not discuss it any further. The details of the other seven registrations (‘Proposed Citations’) identified in the Notice are as follows.

TM no	Trade mark	Priority Date	Specification[2]
898834	14 Dec 2001	Classes 35, 36, 41, 42
898835	14 Dec 2001	Classes 4, 14, 16, 18, 20, 21, 24, 25, 28, 30, 35, 36, 41, 42
1031747	25 Nov 2004	Classes 35, 36, 41, 43
1093077	3 Jan 2006	Classes 41, 43
2074489[3]	9 Mar 2020	Classes 9, 35, 36, 41, 42
2074491	OneQ	9 Mar 2020	Classes 9, 35, 36, 41, 42
2211080	Q-ONE	20 Dec 2019	Classes 9, 42

[2] The specifications of the Proposed Citations are set out in full in Annexure A to this decision.

[3] This is a registration for a series. There are two trade marks in the series. The second trade mark is not reproduced here as the only difference is a change of colour.

1. For there to be a ground for rejection under s 44 of the Act, the Trade Mark must be substantially identical with, or deceptively similar to, at least one of the Proposed Citations. Additionally, the Proposed Citations must have an earlier priority date than the Trade Mark, be in the name of a person other than the Applicant and be in respect of similar goods/services or closely related goods/services to the Applicant’s Goods and Services.

2. Each of the Proposed Citations is held in a name other than that of the Applicant, and each has a priority date earlier than the Trade Mark.

   Comparison of trade marks

3. My next consideration is the similarity of the trade marks. In my opinion the Trade Mark and the Proposed Citations are at least deceptively similar. Section 10 of the Act defines deceptively similar as:

   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.

4. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the Proposed Citations.

   [4] [1963] HCA 66 [13].

5. The Trade Mark consists of the numeral ‘1’ and the letter ‘Q’. The representation is stylised with the numeral ‘1’ positioned in the negative space in the middle of the letter ‘Q’. As a result of the positioning, the Trade Mark has a relatively distinctive appearance.  However, ‘the eye is not an accurate recorder of visual detail’ resulting in trade marks being remembered by a general impression rather than a ‘photographic recollection of the whole’.[5] In my opinion the general impression of the Trade Mark is ‘Q1’. Arguably, a person of ordinary intelligence and memory could also view the Trade Mark as ‘1Q’.

   [5] de Cordova v Vick Chemical Co (1951) 68 RPC 103, 106 (Radcliffe LJ).

6. The dominant element of Proposed Citations 898834, 898835, 1031747 and 1093077 is a stylised representation of the letter ‘Q’ and the numeral ‘1’. The general impression of these trade marks is ‘Q1’. The general impression of Proposed Citation 2211080 is ‘Q ONE’. Conversely, the general impression of Proposed Citations 2074489 and 2074491 is ‘ONE Q’.

7. Having regard to the similarity of the impressions, I must now decide whether there is a real and tangible likelihood of confusion or deception. Firstly, I do not consider there to be an appreciable difference between the numeral ‘1’ and the word ‘one’. Whilst there are differences in the stylisation of the Trade Mark and the Proposed Citations, each will be referred to as ‘Q1’ or ‘1Q’. In my opinion there is a real and tangible danger of confusion. I consider that a person familiar with one of the Proposed Citations who later encounters the Trade Mark may be caused to wonder whether the trade marks originate from the same source.

   Comparison of goods and services

8. I must now consider whether the Applicant’s Goods and Services are similar and/or closely related to the goods and services for which the Proposed Citations are registered.

9. Pursuant to s 14(1) of the Act ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[6] Pursuant to s 14(2) of the Act, ‘similar services’ are services that are the same or of the same description. The test for determining similar services has generally been equated with the principles applicable to determining similar goods.[7]

   [6] Jellinek’s Application (1946) 63 RPC 59 (Romer J); Beck, Koller & Company’s Application (1947) 64 RPC 76.

   [7] MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

10. Applying these principles, it is plainly evident that the Applicant’s Goods and Services contain goods or services which are similar to those claimed by each of the Proposed Citations. For example:

Trade Mark

Proposed Citations

Class 9: Application software; downloadable software applications (apps); computer software applications (downloadable); computer software; education software; interactive education software; interactive computer software; computer software programs; computer software downloaded from the Internet; Computer software (recorded); computer software products

2074489 & 2074491

Class 9: Computer software; application software; computer programs

2211080

Class 9: Computer software applications, downloadable

Class 41: Education services; provision of education services via an online forum; educational instruction; provision of educational courses; provision of training courses

898834, 898835 & 1031747

Class 41: Educational services for tourists and other groups

Class 41: Arranging and conducting of seminars

1093077

Class 41: Arranging, conducting, managing and hosting of conferences and conventions

2074489 & 2074491

Class 41: Arranging, organising and conducting of workshops (training), educational forums, educational symposiums, seminars, webinars

Class 41: Dissemination of educational material; publication of educational materials; publication of multimedia material online; electronic publication of information on a wide range of topics, including online and over a global computer network; providing online electronic publications, not downloadable

2074489 & 2074491

Class 41: Providing information, including online, about education; publication and dissemination of educational material; electronic publication of information on a wide range of topics, including online and over a global computer network; providing online electronic publications, not downloadable

1. The above is not an exhaustive list. The extent of the similar goods, similar services or closely related goods/services is a matter best explored by the examiner if acceptance of the Trade Mark is revoked.

2. For the reasons explained above, the requirements of ss 44(1) and 44(2) have been met. In the absence of any evidence or information that would allow the provisions of ss 44(3) or 44(4) to be applied, there is a valid ground for rejection under s 44 of the Act in respect of each of the Proposed Citations. Therefore, I am satisfied that the application should not have been accepted taking into account all the circumstances that existed at that time. The first limb of s 38 is established.

3. The second limb of s 38 of the Act requires me to also be satisfied that revocation is reasonable, taking into account all the circumstances. The Applicant has not drawn my attention to, nor have I identified, any specific circumstances which might give me pause in finding it is reasonable to revoke acceptance. Notably, if acceptance is revoked the Applicant is in no worse position than it would have been had the s 44 ground for rejection been raised during examination. Additionally, there is a public interest to ensure that the Register is as consistent and accurate as possible. The public interest, and the private interests of the Applicant, are best served by returning the application to examination and allowing the Applicant the normal and legitimate opportunity to overcome any ground for rejection that may be raised.

4. As such, I find that in all the circumstances it is reasonable to revoke acceptance of the trade mark application.

   Decision

5. I am satisfied, in terms of s 38 of the Act, that the trade mark application should not have been accepted and that it is reasonable to revoke acceptance.

6. Accordingly, I revoke acceptance of trade mark application number 2166714. The application will be returned to examination giving the Applicant an opportunity to overcome any grounds for rejection which may be raised.

   Katrina Brown
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   11 March 2022

   Annexure A

   898834

   Class 35: All advertising and business services in this class relating to the administration of retail and commercial property; business management; business administration; office functions; retail services

   Class 36: Real estate management and leasing of real estate

   Class 41: Education and entertainment services namely the exhibition of films, the arrangement of presentation, exhibitions, concerts and other forms of entertainment and the provision of educational and entertainment services for tourists and other groups, sporting and cultural activities, including the sponsorship of sporting and cultural events

   Class 42: All forms of catering, including the provision and/or preparation of food and drink for consumption; takeaway kiosk, restaurant, bar, cafe and wine bar services; hotels; motels; bars; cafes; restaurants; tavern operation; services included in this class relating to provision of information and guidance to tourists and other groups

   898835

   Class 4: Candles, wicks

   Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments

   Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter, bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; plastic materials for packaging (not included in other classes); playing cards

   Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking stocks; whips, harness and saddlery

   Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of- pearl, meerschaum, and substitutes for all these materials or of plastics

   Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges, brushes (except paint brushes), brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes

   Class 24: Textiles and textile goods, not included in other classes; bed and table covers

   Class 25: Clothing, footwear, headgear

   Class 28: Games and playthings; gymnastic and sporting articles not included in other classes

   Class 30: Coffee, tea, cocoa, sugar, rice, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle; yeasts, baking powder, salt, mustard; vinegar, sauces (condiments); spices; ice

   Class 35: All advertising and business services in this class relating to the administration of retail and commercial property; business management; business administration; office functions; retail services

   Class 36: Real estate management and leasing of real estate

   Class 41: Education and entertainment services namely the exhibition of films, the arrangement of presentation, exhibitions, concerts and other forms of entertainment and the provision of educational and entertainment services for tourists and other groups, sporting and cultural activities, including the sponsorship of sporting and cultural events

   Class 42: All forms of catering, including the provision and/or preparation of food and drink for consumption; takeaway kiosk, restaurant, bar, cafe and wine bar services; hotels; motels; bars; cafes; restaurants; tavern operation; services included in this class relating to provision of information and guidance to tourists and other groups

   1031747

   Class 35: All advertising and business services in this class relating to the administration of retail and commercial property; business management; business administration; office functions; retail services

   Class 36: Real estate management and leasing of real estate; sponsorship of sporting and cultural events

   Class 41: Education and entertainment services namely the exhibition of films, the arrangement of presentation, exhibitions, concerts and other forms of entertainment and the provision of educational and entertainment services for tourists and other groups, sporting and cultural activities

   Class 43: All forms of catering, including the provision and/or preparation of food and drink for consumption; takeaway kiosk, restaurant, bar, cafe and wine bar services; hotels; motels; bars; cafes; restaurants; tavern operation; services included in this class relating to provision of information and guidance to tourists and other groups

   1093077

   Class 41: Arranging, conducting, managing and hosting of conferences and conventions; entertainment services including the provision of amusements

   Class 43: Services for providing food and drink; rental of conference and convention facilities

   2074489 & 2074491

   Class 9: Computer software; application software; computer software for use in connection with financial, investment and superannuation services; computer programs; computer hardware; computer peripherals; bank cards (encoded), chip cards and smart cards; financial transaction apparatus; electronic funds transfer machines; electronic financial transaction apparatus; machine readable devices for cashless transactions; card processing terminals; electronic publications; application service provider featuring application programming interface (API) software for use, deployment and management of smart contract systems; software for encryption and decryption of data, documents and communications; computer software for use in collecting, transferring, receiving, tracking, storing and transmitting information and currency; computer software for enabling and facilitating financial transactions, and the payment and exchange of money and currency, including cryptocurrency; computer software for use in managing, collecting, transferring, receiving, tracking and storing transactions; computer software for use in managing sales and purchases made on an online marketplace; computer software for enabling financial transactions, including secure transactions via Blockchain platforms; computer software allowing real-time communications; computer software for integrating with other programs; computer software for the generation of invoices and receipts for transactions, including electronic invoices and receipts; electronic wearable devices for facilitating and making payments and transactions; wearable computer hardware; handheld computers; telecommunications apparatus and instruments; wireless communication devices for the transmission of voice, data, images, audio, video, and multimedia content; network communication apparatus; wearable digital electronic devices capable of providing access to the internet, for sending digital data; smart watches; wearable activity trackers; connected bracelets (measuring instruments); computer software for setting up, configuring, operating or controlling mobile devices, wearable devices, computers, computer peripherals; application development software; downloadable pre-recorded audio, video and multimedia content; computer peripheral devices; peripheral devices for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smart watches, smart glasses, wearable computer peripherals; wearable peripherals for use with computers, mobile telephones; mobile electronic devices, smart watches, smart glasses

   Class 35: Advertising and promotional services; business and commercial administration services; business management and administration; office functions; advertising, promotional, business and commercial information and advisory services; superannuation contribution management and administration, payroll processing and administration; database management; human resources services; business management and administration; office functions; advertising, promotional, business and commercial information and advisory services

   Class 36: Financial and superannuation services; Financial management services; investment and investment management services; fund investment services; management of investment monies, including fund management; management of unit trusts; portfolio tracking and analysis services; providing information about investments and securities; financial assessments; insurance assessments; financial services, including investment platform services and financial administration services; pension and retirement and superannuation plans and funds; financial advisory and consultancy services; financial investment advisory services; investment services; fund management services; advisory services relating to life insurance, pension and retirement and superannuation plans and funds, investments and banking; financial services including loan, investment, banking, and financial management services; financial valuation; actuarial services; providing advice and information relating to the foregoing; financial sponsorship; financial services, including commercial loan finance and securities, personal loans, superannuation, rollover funds, investment services and financial planning; life insurance; life insurance underwriting; insurance services including insurance underwriting, valuation and loss assessment services; brokerage services namely insurance brokerage, brokerage of vehicles and other consumer goods, including identification, assessment, negotiation and advisory services in connection with purchase of vehicles, and other consumer goods and services; financial valuation; actuarial services; Financial, insurance, superannuation and actuarial investigation services; providing advice and information relating to the foregoing; financial sponsorship; insurance including car, third party, personal accident, caravan, boat, home, personal effects, building, travel and life insurance

   Class 41: Arranging, organising and conducting of workshops (training), exhibitions, educational forums, educational symposiums, seminars, webinars, conferences, courses, and events; business education and training services; mentoring (education and training); personal development training; providing information, including online, about education, training, entertainment, sporting and cultural activities; publication and dissemination of educational material; electronic publication of information on a wide range of topics, including online and over a global computer network; providing online electronic publications, not downloadable

   Class 42: Platform as a service; development of computer platforms

   2211080

   Class 9: Regulating apparatus, electric; measuring devices, electric; computer software applications, downloadable; electric regulating apparatus in the nature of voltage regulators for electric power; electric control panels; electrical substations; electricity measuring instruments, namely electricity meters or electricity meter readers; electric transformers.

   Class 42: Consultancy in the field of energy-saving.