Trade Mark application numbers 1874318 and 1874320 (36) – CRESCENT WEALTH (Figurative) – in the name of Crescent Wealth Investments Australasia Pty Ltd
[2021] ATMO 63
•6 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade Mark application numbers 1874318 and 1874320 (36) – CRESCENT WEALTH (Figurative) – in the name of Crescent Wealth Investments Australasia Pty Ltd
Delegate: Nicholas Smith Representation: Applicant: Sam Hallahan of Counsel instructed by Odette Gourley of Corrs Chambers Westgarth Decision: 2021 ATMO 63
Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to grounds for rejection under sections 42(b) and 44 of the Act – section 44(4) considered and applied – trade marks to be accepted for possible registrationBackground
On 20 September 2017, Crescent Wealth Investments Australasia Pty Ltd (‘Applicant’) applied to register the trade marks detailed below under the Trade Marks Act 1995 (‘Act’).
Application Number:
1874318
Priority Date:
20 September 2017
Services:
Class 36: Development of investment products; discretionary fund management services; financial information services; financial investment services; financial portfolio management; financial services; financing of property development; funds management; funds investment; investment funds management; investment portfolio management services; development and management of pension, retirement and superannuation plans, funds and schemes; management services for real estate investment; provision of investment information; real estate acquisition and development for the purpose of investment; services relating to unregistered managed investment schemes
(‘Applicant’s Services’)
Trade Mark:
Application Number:
1874320
Priority Date:
20 September 2017
Services:
Applicant’s Services
Trade Mark:
The trade marks sought to be registered pursuant to application numbers 1874318 and 1874320 are collectively referred to as the (‘Trade Marks’).
The applications were duly examined under s 31 of the Act and grounds for rejection were identified by the examiner under ss 42(b) and 44 of the Act.
With respect to the s 44 ground of rejection, the examiner identified trade marks 1720170 and 1720171 set out below (the ‘Crescent Marks’) which closely resembled the Trade Marks and was registered for similar goods and services. The Crescent Marks are registered to Crescent Capital Partners Management Pty Limited (‘Crescent Owner’). As this is a request to be heard under s 33(4) of the Act the Crescent Owner does not appear in this proceeding.
Number
Trade Mark
Priority Date
Goods and Services
1720170
CRESCENT
(‘Crescent Mark’)
27 Mar 2013
Class 36: Financial services, including financial funds management but excluding insurance services; financial portfolio management; financial information services including on-line information services; banking and investment services; financial advisory and financial management services; all excluding insurance services (‘Crescent Services’)
1720171
CRESCENT CAPITAL PARTNERS
27 Mar 2013
Crescent Services
Between 2018 and 2021 the Applicant provided various submissions and evidence in response to the grounds for rejection. In response this office issued 6 further adverse reports, each maintaining the grounds for rejection under ss 44 and 42(b).
On 16 April 2021, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 1 June 2021. Sam Hallahan of counsel instructed by Odette Gourley of Corrs Chambers Westgarth, representing the Applicant, made oral submissions. In addition, in accordance with the pre-hearing directions I had given, the Applicant filed written submissions and the following declaration that it sought to rely on:
· Declaration of Talal Yassine, Managing Director of the Applicant dated 21 May 2021 with Annexures TY-1 to TY-41 (‘Yassine Declaration’).
I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the grounds for rejection. Nevertheless, I see no reason to consider grounds for rejection beyond the grounds under ss 42(b) and 44 of the Act raised by the examiner. In arriving at my decision, I have taken into account the Yassine declaration, the material identified above in the file, as well as the oral submissions made on 1 June 2021.
Legislative framework
Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[1]
[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].
Section 44
The relevant provisions of Section 44 of the Act are:
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(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.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.
In order for s 44 of the Act to apply the requirements of s 44(2) must be satisfied i.e. that at least one of Crescent Marks, being the marks identified by the Examiner:
· is registered by another person and has a priority date which is earlier than that of the Trade Marks (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Marks (‘the second requirement’); and
· is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).
In the event that each of these requirements are satisfied it may be possible for the Registrar to accept the applications (or allow them to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Marks, other circumstances exist which would make registration of the Trade Marks proper, or that the Applicant has continuously used the Trade Marks beginning before the priority date of the Crescent Marks.
The issue of whether the requirements of s 44(2) were satisfied and if so whether the Trade Marks should be registered pursuant to s 44(3) were the subject of communications and submissions between the Examiner and the Applicant. However, in its written and oral submissions the Applicant indicated that it would focus solely on the issue of whether the Trade Marks should be registered pursuant to s 44(4). Notwithstanding that, it is appropriate as a first step to consider whether the requirements under s 44(2) are satisfied.
The Crescent Marks are registered by another person and have a priority date that is earlier than the priority date of the Trade Marks. The Crescent Marks are registered for a broad range of financial services and funds management services in class 36, all of which are similar to the Applicant’s Services, which comprise a range of financial and funds management services in class 36.
Substantially identical or deceptively similar
I will now consider whether the Trade Marks are substantially identical to the Crescent Mark. As trade mark 1720171 contains the additional elements ‘capital partners’ (and has the same priority date and is registered for the same set of services) were I to find that the Trade Marks are not substantially identical or deceptively similar to the Crescent Mark, I would necessarily reach the same conclusion with trade mark 1720171. As such I only need to consider whether the Crescent Mark is substantially identical or deceptively similar to the Trade Marks.
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.[2]
[2] (1963) 109 CLR 407, [12].
The Trade Marks and the Crescent Mark are set out below:
CRESCENT
On a side by side comparison there are clear differences between the respective trade marks, being the additional word ‘wealth’ and the additional device crescent and star device elements in the Trade Marks. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. I move then to consider whether either of the Trade Marks and Crescent Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from 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 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].[3]
[3] Ibid [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[4] at [49]; Australian Woollen Mills[5] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[6] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[7] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[8]
[4] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[5] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[8] [2012] FCA 1022, [38]-[46].
Each of the marks shares the word ‘crescent’, with the main distinguishing features being the additional word ‘wealth’ (a word being somewhat descriptive of the wealth management services for which the Trade Marks that are sought to be registered) and the device that contains an image of a crescent and star. The facts in the present proceeding have similarities with the facts in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[9] (‘Gallo’) in which the relevant marks compared were marks consisting of the word BAREFOOT, and a figurative mark, set out below, containing the word BAREFOOT, the image of a print left by a bare foot, and the word ‘Radler’, which although an unusual word, is descriptive of a type of beer.
[9] [2008] FCA 934. This matter was the subject of an appeal to the Full Federal Court, who agreed with the primary judge’s finding on the issue of deceptive similarity, see E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 and an appeal to the High Court on an unrelated point.
In Gallo the judge found that that notwithstanding the presence of the word ‘radler’ the essential element of the mark was ‘Barefoot’ which is the word that would leave a considerable impression on the mind of the consumer. In the present case, while there are differences between the respective marks, the essential feature of the Trade Marks, shared with the Crescent Mark, is the word ‘crescent’. The additional crescent device in the Trade Marks, like the barefoot device in Gallo, reinforces the central nature of the word crescent in the Trade Marks. Notwithstanding the presence of the star device and the word ‘wealth’, it is the crescent device that would leave a considerable impression on the mind of a consumer of ordinary intelligence. Consumers seeing the respective marks in respect of financial services are likely to focus on the distinctive word ‘crescent’ used in both the Trade Marks and the Crescent Mark.
I also note that the Crescent Mark is wholly contained within each of the Trade Marks. This fact alone does not make the the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning sufficiently different, from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[10] and JOCKEY vs THROTTLE JOCKEY.[11] However in the present case, such as in Gallo, the additions of the word ‘wealth’ and the device elements do not change the idea and impression of the mark as a whole when considering the services offered under the Trade Marks. Given the nature of the respective services, each mark conveys the same conceptual meaning.
[10] Chris Kingsley v David Scott [2011] ATMO 20.
[11] Jockey International Inc v Darren Wilkinson [2010] ATMO 22.
I find that both the Trade Marks are deceptively similar to the Crescent Mark and the requirements under s 44(2) are satisfied. It is then necessary to consider the application of s 44(4) of the Act.
Subsection 44(4): prior continuous use
Subsection 44(4) gives the Applicant the option of overcoming a finding under s 44(2) through the provision of evidence showing that it continuously used the Trade Marks for a period beginning before the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
The priority date for the registration of the Crescent Marks is 27 March 2013. The Trade Marks are substantially identical with each other and are sought to be registered for the same services so any use of one of the Trade Marks for the Applicant’s Services will amount to use or display of the other trade mark.
I have reviewed the Yassine Declaration, noting that its claims are not contradicted by any other evidence and I consider that it establishes the following:
· The Applicant is a company within a group of related companies described as the Crescent Wealth Group (‘Crescent Wealth’). Crescent Wealth’s business involves the provision of investment and superannuation products that comply with Islamic investment principles. While each of Crescent Wealth’s products are Sharia compliant, they are retail financial services products available to Australians of any religious background.
· The Applicant was incorporated on 19 January 2010, at the same time as other members of Crescent Wealth. The Applicant and other members of Crescent Wealth are wholly owned subsidiary companies of Crescent Wealth Group Holdings Pty Ltd, with the Applicant being the main operating company of Crescent Wealth.
· In 2011 the Applicant issued its first product disclosure statement (‘PDS’) for its Crescent Australian Equity Fund which refers to the Applicant as the responsible entity and investment manage of Crescent Wealth. The PDS uses the words ‘crescent wealth’ but does not display the Trade Marks.
· The Applicant is also the investment manager and markets and promotes the Crescent Wealth Superannuation Funds which offers members of the public the opportunity to invest their superannuation in the Applicant’s Sharia-compliant products.
· In mid-2011 the Applicant developed the Trade Marks. The Applicant has used the Trade Marks on e-mails since 5 October 2011 and also used the Trade Marks on a media release dated 6 October 2011. This media release stated that Crescent Wealth was launching Australia’s first Islamic investment option and outlined its plans to launch a further three funds as part of its aim of forming Australia’s first Islamic superannuation option. .
· In late 2011 the Applicant distributed a brochure bearing the Trade Marks which offered the Applicant’s services as an investment advisory and wealth management service.
· Between February and September 2012 the Applicant issued a series of further PDS’s for its various investment funds each of which bore the Trade Marks. These funds included funds for investment in Australian and international equities as well as funds for the investment in real estate. In December 2012 the Applicant launched the Crescent Wealth Superannuation Fund, with a media release bearing the Trade Marks.
· In 2014 the Applicant and its associated entities in the Crescent Wealth Group were sued by the Crescent Owner pursuant to ss 18 and 29 of the Australian Consumer Law and sections 12DA and 12DB of the Australian Securities and Investments Commission Act. On 23 March 2016 the Federal Court made final orders in the matter (Final Orders) following its judgement in Crescent Capital Partners Management Pty Limited v Crescent Funds Management (Aust) Limited [2016] FCA 229.
· Order 4 of the Final Orders stated (paraphrased) that Crescent Wealth is restrained from providing in Australia investment services or products under or by reference to:
(a)CRESCENT WEALTH
(b)Crescent Wealth Superannuation Fund
(c)Crescent Wealth International Equity Fund
(d)The CRESCENT WEALTH business name;
(e)The domain name crescentwealth.com.au
or any name substantially identical with the names in (a)-(e) without:
(f)Including the Respondents’ logo [i.e. the Trade Marks] and stating clearly and prominently, and reasonably proximately (e.g. not by way of footnoted text) to where any such name appears, including in any webpage, product disclosure statement, or advertising and promotional materials:
(g)“Neither [CRESCENT WEALTH] nor any of its products is associated or affiliated with Crescent Capital Partners”.
…
· No orders were made by the Court restricting the use of the Trade Marks. The Crescent Owners appealed the form of the orders to the Full Federal Court and the appeal was dismissed in Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Limited [2017] FCAFC 2.
The Yassine Declaration provides extensive further evidence of the use of the Trade Marks for product disclosure statements and advertising as well as the media coverage received for the Trade Marks however it is not necessary to summarise this evidence to any great degree other than to note that I am satisfied that whatever use of the Trade Marks commenced prior to 27 March 2013 has continued to this day.
I am satisfied from the evidence presented by the Applicant that the Trade Marks have been used in connection with some of the Applicant’s Services since 5 October 2011 (when it commenced use of the Trade Marks in respect of its investment services) and for all of the Applicant’s Services since December 2012 (when it commenced use of the Trade Marks in respect of its superannuation services). While the Applicant does not provide evidence of turnover prior to 2013, I am satisfied that the use of the Trade Marks prior to 27 March 2013 (and until 20 September 2017) was continuous as the Applicant, from October 2011, was an active business actively managing an investment fund (and in 2012 issued a series of additional PDS’s featuring the Trade Marks).
As I am satisfied that the provisions of s 44(4) have been established by the evidence supplied by the Applicant, I find that the ground for rejection under s 44 of the Act has not been established.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The issue raised by the examiner is that the use of the Trade Marks would be contrary to law (s 42(b)). The s 42(b) ground was raised by the examiner as a late ground in the fourth adverse report. The ground was raised on the basis that (in the examiner’s words) ‘there is a court decision that has been issued on the particular trade mark which establishes the illegality of its use’ and that ‘[a]ccordingly, your trade mark is contrary to law as it does not comply with the Orders in that decision’. The examiner indicated her view in the fifth adverse report that use ‘contrary to law, in addition to legislation … includes court orders’.
In order for the ground of s 42(b) to apply I have to be satisfied that the use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[12] There are three questions that I must consider with respect to this ground:
a)If use of a trade mark would result in a breach of a court order, is this ‘contrary to law’ for the purposes of s42(b) of the Act?
b)If the answer to (a) is yes does the use of the Trade Marks breach the Final Orders?
c)Is there any other basis to conclude that use of the Trade Marks would be contrary to law?
[12] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
I can address question (c) quickly; there is no evidence before me that would enable me to conclude, separate from the findings of the Federal Court made in respect of the dispute between the Applicant and the Crescent Owner, that use of the Trade Marks would be contrary to law. In particular, with respect to an argument that use of the Trade Marks would amount to misleading and deceptive conduct in breach of the ACL, I have no evidence before me as to the use of and reputation in the Crescent Mark by the Crescent Owner; such an issue is best considered in the event the Crescent Owner chooses to oppose the registration of these Trade Marks and files evidence and submissions on that point.
With respect to question (a), the starting point is the wording of s 42(b) of the Act, which refers to the use being ‘contrary to law’ rather than limiting its application to particular Acts, or even federal legislation only. While I have been unable to identify binding authority confirming that ‘contrary to law’ includes circumstances where the use of a trade mark would be in breach of a particular court order, there are a number of cases in which a broad interpretation of the operation of s 42(b) has been identified. This includes:
In the case of Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd, the Federal Court issued extensive dicta on the proper interpretation of s 42(b) and the role of the Registrar in considering this ground. It noted that the s 42(b) should not be limited to clear cut legislative breaches, rather the provision encompasses all laws. Furthermore the Court noted that the phrase ‘contrary to law’, when used in respect of other pieces of legislation, incorporates areas as diverse as international conventions and agreements.[13] This is supported by Shanahan’s Australian Law of Trade Marks and Passing Off which notes that ‘the provision applies to any illegality, including breach of contract or fiduciary duty’[14]
[13] Ibid, [27-28].
[14] Mark Davison, Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 5th ed, 2012) [50.2060].
In Herbert Neumann v Sons of the Desert SL[15] the delegate of the Registrar considered a ground of opposition under s 42(b) of the Act based both on a claim that the use of the particular trade mark would be a breach of contract, and also breach a provision under Spanish law. In that case counsel for the Opponent noted that it was not uncommon for the provisions of s 42(b) to be applied in respect of breaches of other non-statutory laws, such as passing off.[16]
[15] [2007] ATMO 14.
[16] Counsel in its submissions referred to MasterCard International Inc v Etteridge (Trade Marks Office, 21 October 2002) as an example of a case where the Registrar considered a passing off claim in the context of s 42(b); see also Subafilms Ltd v Tenancy Management Pty Ltd, [2006] ATMO 11.
In Osgaig Pty Limited v Shigemitsu Industry Pty Ltd[17] the delegate of the Registrar considered a case where the then opponent had successfully brought proceedings against the then applicant in the Federal Court and the Court had issued orders that the then applicant display various disclaimers in its signage and advertising indicating it was unconnected to the Opponent. The Delegate stated at [14] that ‘Clearly, for this time period the public use of the trade mark by the applicant, without the disclaimer, would be contrary to law.’ The Delegate then found that by reason of the judgement made by the Federal Court that the use of the subject matter trade mark was misleading and deceptive, notwithstanding that the particular court order commenced after the relevant date (and was only for 12 months) that at the relevant date the use of the Trade Mark was contrary to law.
[17] [2006] ATMO 41.
As noted above, while there is no direct authority on this point, it appears that guidance from the Federal Court and past practice of this office suggest that it is appropriate to take an expansive view of this provision and hence contrary to law could include a circumstance where the use of the Trade Mark is in breach of a court order, which would amount to contempt of court which can be both a breach of civil and criminal law[18].
[18] See Witham v Holloway [1995] HCA 3, [9].
It is therefore appropriate to consider whether use of the Trade Marks would be in breach of the Final Orders. The Final Orders do not place any restrictions on the use of the Trade Marks, only the words ‘crescent wealth’ (and any name substantially identical with ‘crescent wealth’). As noted at 16 above the Trade Marks are not substantially identical to ‘crescent’ and I consider that the addition of the device elements means that the Trade Marks are not substantially identical to ‘crescent wealth’ either. Furthermore the Final Orders specifically refer to the Trade Marks by requiring any use of the words ‘crescent wealth’ to used be with the Trade Marks and an appropriate disclaimer (which suggests that the Trade Marks operate to distinguish the Applicant’s services from those offered by the Crescent Owners)[19]. The Court did not order the use of a disclaimer when the Trade Marks were used solus. In summary the Federal Court did not impose any restriction on the Applicant’s use of the Trade Marks in the Final Orders. The form of the Final Orders was subsequently appealed to the Full Federal Court, with the appellant in that case seeking broader orders on the Applicant. This appeal was dismissed. The use of the Trade Marks would not be in breach of the Final Orders.
[19] This is further supported by dicta in the Federal Court judgement itself which refers to the Trade Marks as ‘distinguishing logos’, see Crescent Capital Partners Management Pty Limited v Crescent Funds Management (Aust) Limited [2016] FCA 229, [69].
I find that the ground of rejection under s 42(b) of the Act has not been established.
Decision
Section 33 of the Act relevantly provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
(2)The Registrar may accept the application subject to conditions or limitations.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
As I am not satisfied that there are a grounds for rejection under ss 42(b) and 44 of the Act, I accept the application to register the Trade Marks.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
6 July 2021
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