Trade mark application number 2215847 (36) – NAKED (figurative) – in the name of Engage Insurance Services Pty Ltd

[2022] ATMO 17

TRADEMARKSACT1995

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

ReTrade mark application number 2215847 (36) – NAKED (figurative) – in the name of Engage Insurance Services Pty Ltd

DELEGATE:                   Robert Wilson

REPRESENTATION:         Applicant: Self represented by Cameron Taylor DECISION:  2022 ATMO 17

Trade Marks Act 1995

(Cth) – ex parte hearing – whether ground for rejection of application under s 44 – trade mark deceptively similar to earlier trade mark – registration refused

Background

1. On 11 October 2021 Engage Insurance Services Pty Ltd (‘the Applicant’) filed an application to register the trade mark detailed below.

ApplicationNumber:

2215847

PriorityDate:

11 October 2021

Services:

Class 36: Insurance advisory services; Brokerage of insurance; Brokerage advisory services relating to insurance; Insurance brokering; Insurance brokerage

(‘the Applicant’s Services’)

TradeMark:

(‘the Applicant’s Trade Mark’)

NAKED

(figurative)

1. The application was examined as required by s 311 and on 25 October 2021 the examiner issued an adverse report. The examiner indicated their view that there was a ground for rejecting the application under s 44, citing the trade mark detailed below. The examiner stated, ‘Your trade mark resembles the earlier trade mark [and] [t]he services are the same in Class 36. You have claimed insurance services which encompass the insurance services claimed by the earlier applicant’.

TradeMarkNumber:	1837576
Owner:	Naked Home Loans Pty Ltd
PriorityDate:	11 April 2017
Services:	Class 36: Advice relating to mortgages for residential properties; Advice services relating to enhancement of mortgages; Advisory services relating to mortgages; Agency services for lending on mortgage; Commercial mortgage brokerage; Insurance services for the protection of mortgages; Lending on mortgage; Mortgage advice; Mortgage and savings services; Mortgage banking; Mortgage banking and brokerage; Mortgage banking insurance; Mortgage brokerage services; Mortgage brokering; Mortgage broking; Mortgage financing services; Mortgage insurance; Mortgage investment management; Mortgage lending; Mortgage loan services; Mortgage loans; Mortgage protection policies; Mortgage services; Provision of information relating to mortgages; Provision of mortgage funds; Provision of mortgage loan insurance; Provision of mortgage loans; Provision of mortgages; Provision of online mortgage repayment calculators (‘the Cited Services’)
TradeMark:	NAKED HOME LOANSNAKED (figurative)	(‘the Cited Trade Mark’)

¹ References to sections or regula tions in this decision, are references to sections or regula tions of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indica ted.

1. The   Applicant   responded   to    the    adverse   report   by   correspondence   dated 25 October 2021, indicating their disagreement with the examiner’s view. The Applicant’s response was prepared by Cameron Taylor, an authorised representative of the Applicant. The Applicant’s response did not sway the examiner from his view, and a second adverse report was issued on 28 October 2021. Following the second adverse report, the Applicant requested to be heard.

1. I am a delegate of the Registrar of Trade Marks and it has fallen to me to decide whether a ground for rejecting the application exists under s 44, or to accept the application. I heard the matter on 28 January 2022. Cameron Taylor appeared at the hearing on behalf of the Applicant. In arriving at my decision I have considered all relevant material on IP Australia’s file associated with the application, including the Applicant’s written responses to the adverse report, and Mr Taylor’s oral submissions.

The Law in Respect of Section  44

1. Relevant provisions of s 44 are reproduced below:

Section 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.

Note 1: For deceptively similar see section 10. Note 2: For similar services see subsection 14(2). Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the

trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

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

Note: For limitations see section 6.

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

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

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

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

(b)    ending on the priority date for the registration of the applicant's trade mark; the Registrar may not reject the application because of the existence of the other trade mark.

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

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

1. As a starting point, there are a number of factors to be considered. All of those factors mustbe presentbefore a ground for rejecting the application under s 44 can exist. Those factors are:

   ·     the Cited Trade Mark is registered by a person other than the Applicant (‘the first factor’);

   ·     the Cited Trade Mark has a priority date which is earlier than the priority date of the application (‘the second factor’);

   ·     At least some of the Applicant’s Services are similar to at least some) of the Cited Services (‘the third factor’); and

   ·     The Applicant’s Trade Mark is substantially identical with or deceptively similar to the Cited Trade Mark (‘the fourth factor’).

The first and second factors

1. That the first and second factors are present was not disputed by the Applicant. I am satisfied that they are. These factors need not be considered further.

The third factor

1. The main thrust of the Applicant’s submissions is its contention that the Applicant’s Services and the Cited Services are not similar. The Applicant’s Services are various

insurance services, which are not restricted to any particular type of insurance. The Cited Services are services related to mortgages, including insurance services associated with mortgages. Of the Cited Services it is only the insurance services which are at issue here; those services as they appear in the specification of services are:

Insurance services for the protection of mortgages; Mortgage banking insurance; Mortgage insurance; Provision of mortgage loan insurance

For the sake of simplicity, future references to the Cited Services in this decision are a reference only to the insurance services listed above.

1. The factors to be considered when deciding whether goods are similar are well established. The nature of the goods, their uses, and the trade channels through which they are sold require consideration. While these factors are not necessarily determinative, they are important.2 It is accepted that those factors are also relevant to a comparison of services.3

2. Mr Taylor indicated that the Applicant is in the business of providing strata insurance. The Applicant has requested an amendment to the Applicant’s Services, which reflects the nature of their business. As is usual practice, such amendment requests are not immediately made by this office unless they would overcome the ground for rejection, as there is a potential such an amendment would potentially, and unnecessarily, disadvantage the Applicant. As will be seen, the amendment would not assist the Applicant so has not been made.

1. In written correspondence to the examiner, Mr Taylor submitted that there is no similarity between mortgage insurance and strata insurance and provided the following analysis of the services:

   The financial service product Mortgage Insurance is not Strata Insurance. There is no mortgage insurance product that overlaps Strata Owners Body Corporate Insurance. Strata Insurance is purchased by the elected volunteers of [the] executive of the body

² Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606-7 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ); Jellinek’s Application (1946) 63 RPC 59 (Ch); J Lyons & Co Ltd’s Application [1959] RPC 120, 128 (Evershed MR).

³ Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [333] (Greenwood, Besa nko and Katzmann JJ).

corporate on behalf of the Body corporate. Strata insurance is a compulsory, mandatory product with prescribed levels of coverage as per legislation.

Lot owners may purchase mortgage insurance when seeking to obtain a home loan to buy a unit. Mortgage Insurance does not protect the home owner/borrower. Purchasing a unit simply allocates voting rights to the lot owner. The ownership of the building and common areas resides in the Strata Plan legal entity, managed by the executive on behalf of the strata plan

Purchase of either insurance product is mutually exclusive, by completely different consumers and reasons.

1. At the hearing, Mr Taylor elaborated on the above submissions and clarified aspects of the relevant types of insurance. There are two types of insurance that could broadly fall within the term mortgage insurance. The first, ‘mortgage protection insurance’, is a product that protects the borrower from the risk of default. The second, ‘lenders mortgage insurance’, protects the lending institution against any loss it might incur if a borrower is unable to repay their loan. In both cases the insurance is purchased by a mortgager—in the first case as a voluntary decision to protect themselves; in the second case as a compulsory purchase specified in a loan agreement.

1. It is apparent that the same consumers might well be purchasers of both strata insurance and one or both types of mortgage insurance. For example, a person purchases a unit in a strata corporation and purchases mortgage protection insurance to cover themselves in case they should default on their loan repayments. That same person may well have also been required to purchase lender’s mortgage insurance by their lending institution. That same person is subsequently elected to the executive of their strata corporation. In their role as a member of the executive they are likely to be involved in the (compulsory) purchase of strata insurance. Consequently, I am not persuaded by Mr Taylor’s submission that, ‘Purchase of either insurance product is mutually exclusive, by completely different consumers’.

1. While it is apparent that the insurance services we are concerned with here insure against different things they are far more similar than, say, mortgage insurance vs comprehensive insurancefor a motor vehicle, or strata insurance vs maritime insurance. Both mortgage insurance and strata insurance are linked to the domicile in which a person (with a mortgage) lives. One insures against default on the loan for the domicile, the other insures, amongst other things, the domicile itself. From this point of view, I

am satisfied that mortgage insurance services are similar to strata insurance services. The third factor is therefore present.

The fourth factor

1. Assessing the existence of the fourth factor involves two considerations. Firstly, whether the Applicant’s Trade Mark is substantially identical to the Cited Trade Mark, and, secondly whether they are deceptively similar. If either one of these considerations is found in the affirmative, the fourth factor is present. I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Mark.

1. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 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. 4

1. On a side by side comparison there are clear differences between the respective trade marks. The Applicant’s Trade Mark is a single word with some notable stylisation. The Cited Trade Mark consists of three words. Both trade marks contain the common element ‘naked’. The combination of the stylisation of the Applicant’s Trade Mark and the additional words in the Cited Trade Mark mean that the trade marks are not substantially identical. I therefore need to consider whether the trade marks are deceptively similar.

1. Section 10 provides a definition of ‘deceptively similar’ and is reproduced below.

   Section 10 - Definition of deceptively similar

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

1. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to

⁴ [1963] HCA 66, [12].

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]. 5

Usual comparisons which are made when assessing deceptive similarity are the visual, aural, and conceptual similarities and differences between the trade marks being compared.

1. Mr Taylor made no submissions regarding the visual, aural, and conceptual similarities or differences between the trade marks. Mr Taylor instead referred to the co-existence on the Register of, amongst others, trade mark number 1926622, NAKED EDGE REAL ESTATE (‘the NAKED EDGE Trade Mark’), with the Cited Trade Mark. The NAKED EDGE Trade Mark is registered for various services including real estate agency services and insurance services relating to real estate. While I am not certain what was in the mind of the examiner of the NAKED EDGE Trade Mark, I can provide a possible rationale for the registration of that trade mark in the face of the Cited Trade Mark.

1. Descriptive elements in trade marks can be largely discounted in making comparisons between trade marks. The ‘REAL ESTATE’ element of the NAKED EDGE Trade Mark is descriptive of the services and can be largely discounted. This leaves ‘NAKED EDGE’ as the principal distinguishing part of the trade mark and the part of the trade mark which is likely to be seen as indicating the trade source. The ‘HOME LOANS’ element of the Cited Trade Mark is, similarly, descriptive of the Cited Services and can be largely discounted. This leaves ‘NAKED’ as the principal distinguishing part of the Cited Trade Mark. The comparison, then, between the NAKED EDGE Trade Mark and the Cited Trade Mark is essentially a comparison of NAKED EDGE vs NAKED. There are some visual similarities between those two signs. Both contain the word NAKED, which is highly distinctive in respect of the services. The additional word ‘EDGE’ in the former adds a significant visual difference. A similar conclusion arises when the aural similarities are considered. Conceptually, the two signs are quite different. The first, perhaps, giving rise to concepts of advantage, the second of nudity. The

⁵ Ibid, [13].

combination of the visual, aural and conceptual differences is likely to be the reason the examiner accepted the application to register the NAKED EDGE Trade Mark in the face of the Cited Trade Mark.

1. In respect of the trade marks under comparison here, the ‘HOME LOANS’ element of the Cited Trade Mark will likely be seen as descriptive material and can be largely discounted. This leaves the ‘NAKED’ element of the Cited Trade Mark as the principal distinguishing part of the trade mark and the element that is likely to be seen as indicating the trade source of the Cited Services. The Applicant’s Trade Mark is solely the word ‘NAKED’, albeit stylised. The comparison here therefore is NAKED vs NAKED (stylised). Visually there are some differences between NAKED in plain text and the Applicant’s Trade Mark. Nevertheless, the stylisation is not so extreme that the visual difference is more than slight. The aural rendering of the two trade marks is likely to be identical—both simply as the word ‘naked’. The two trade marks, being the same word, are conceptually identical. On an overall assessment the trade marks are very similar.

2. It is easy to imagine a unit owner who has bought mortgage insurance from NAKED HOME LOANS attending a meeting of the executive of a strata corporation and being faced with purchasing strata insurance from NAKED. It is very likely that person would be deceived or confused as to whether those services come from the same trade source. The Applicant’s Trade Mark so nearly resembles the Cited Trade Mark that it is likely to cause deception or confusion. I am satisfied, therefore, that the Applicant’s Trade Mark is deceptively similar to the Cited Trade Mark.

1. I have found that all four factors necessary for the rejection of the application under s 44 are present. I note for the sake of completeness that Mr Taylor made no submissions in respect of ss 44(3) or 44(4), nor was relevant evidence provided. I, therefore, reject the application.

Decision

1. I am satisfied that there exists a ground for rejecting the application under s 44. Accordingly, I reject the application.

Robert Wilson Hearing Officer

Delegate of the Registrar of Trade Marks 7 February 2022