United Parcel Service of America, Inc. v MPS Hold Co. Pty Ltd

[2022] ATMO 199

TRADE MARKS ACT 1995

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

Re:Opposition by United Parcel Service of America, Inc. to registration of trade mark application number 1899914 (classes 35, 39) - MPS - in the name of MPS Hold Co. Pty Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Jesmini Ambikapathy of Counsel instructed by Spruson and Ferguson.

Applicant: Lisa Egan of Mills Oakley.

Decision:

2022 ATMO 199

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition by United Parcel Service of America, Inc. (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

   Trade Mark Number:     1899914

Trade Mark:  MPS (‘Trade Mark’)

Applicant:  MPS Hold Co. Pty Ltd (‘Applicant’)

Priority Date:       15 January 2018

Specification:  Class 35: Distribution of goods (not being transport services) and wholesale of goods for pharmaceutical, veterinary and sanitary preparations and medical supplies; The bringing together, for the benefit of others, a variety of pharmaceutical, veterinary and sanitary preparations and medical supplies (excluding the transport thereof), enabling customers to conveniently view and purchase these goods; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Pharmacy retail services; Retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Procurement services for others (purchasing goods and services for other businesses)

Class 39: Consultation services relating to the packaging of goods; Logistics services (transport, packaging, and storage of goods); Packaging articles for transportation; Packaging of goods; Packaging of products; Packaging services; Wrapping and packaging services; Advisory services relating to the packing of goods; Packing; Packing of articles for transportation; Packing of goods; Packing of goods for transportation; Packing of merchandise; Packing of products; Arrangement for the transportation of goods; Distribution (transport) of goods; Distribution of goods (transportation); Provision of information relating to the transportation of goods; Transport; Transport of goods; Transport services; Transportation logistics; Transportation of goods; Replenishment of stocks; Advisory services relating to the storage of goods; Arrangement for the storage of goods; Storage; Storage consultancy services; Storage information; Storage of goods; Storage of goods prior to delivery; Transport information services; Delivery of goods

(‘Applicant’s Services’)

1. The Trade Mark was examined, accepted and subsequently advertised for opposition on 6 April 2020.

2. On 9 June 2020 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 July 2020.

3. The Applicant filed a Notice of Intention to Defend the opposition on 24 August 2020.

4. The Opponent filed Evidence in Support of its opposition on 1 March 2021. The Applicant filed Evidence in Answer on 14 July 2021. No Evidence in Reply was filed by the Opponent.

5. Following the conclusion of the evidence stages, both parties were given the opportunity to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks, on 15 August 2022. The Opponent was represented by Jesmini Ambikapathy of Counsel, instructed by Shannon Fati of Spruson and Ferguson. The Applicant was represented by Lisa Egan accompanied by Joshua Firmin, both of Mills Oakley.

Grounds, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 42(b), 44 and 60.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being the 15 January 2018 (‘Relevant Date’).

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

   Evidence in Support

   Declaration of Scott C. Casey, Vice President of the Opponent, made on 26 February 2021 (‘Casey Declaration’) with Exhibits A to P.

   Evidence in Answer

   Declaration of Melanie Young, Commercial Manager of the Applicant, made on 14 July 2021 (‘Young Declaration’) with Exhibits MY-1 to MY-13.

Opponent

1. The Opponent is a package delivery, shipping and logistics company founded in the United States of America in 1907. The Opponent operates in more than 220 countries and territories globally delivering over 15 million packages through its network every business day. In 2018, the Opponent delivered more than 5.2 billion packages and documents globally with a revenue that year of 72 billion US Dollars.

2. The trade mark ‘UPS’ (‘UPS Word Mark’) was derived from the Opponent’s company name, ‘United Parcel Services of America’. The Opponent has offered its delivery, courier and transportation services under the UPS Word Mark in Australia since 1991. In 2003 the Opponent also began using the following trade mark:

   (‘UPS Device Mark’)

3. Prior to adopting the UPS Device Mark, the Opponent used the following trade mark in Australia:

4. In addition to its core courier and transport services, the Opponent also offers freight forwarding services under both the UPS Word Mark and UPS Device Mark.

5. The Opponent is the owner of the following registered trade marks in Australia:

Trade Mark No.	Trade Mark	Filing Date	Class
425181	UPS	12 April 1985	39
498561	UPS	1 November 1988	16
721157	UPS	5 Nov 1996	9, 35, 36, 38, 42
905460	UPS CAMPUSSHIP	6 Mar 2002	9, 35, 39
948233	25 March 2003	39
948235	25 March 2003	36
948237	25 March 2003	9, 16, 25, 35, 38, 42
965531	UPS TRADEABILITY	8 Aug 2003	9, 35, 39, 42
1151982	UPS WORLDWIDE EXPRESS SAVER	12 Dec 2006	39
1208869	UPS BROKER OF CHOICE	9 Apr 2007	35, 39
1201075	UPS AIR FREIGHT DIRECT	15 Aug 2007	39
1312821	UPS IMPORT CONTROL	30 Jul 2009	35, 39
1492017	UPS WORLDWIDE EXPRESS FREIGHT	18 May 2012	39
1917828	UPS MY CHOICE	19 Jul 2017	35, 39

(‘Collectively, ‘Opponent’s Trade Marks’)

1. Mr Casey explains that the Opponent uses the Opponent’s Trade Marks in nearly all of its advertising and promotional material, and on nearly all of its packaging, driver uniforms, vehicles and air crafts. Examples of such use are exhibited to the Casey Declaration.

2. In 1994 the Opponent launched the website (‘Opponent’s Website’). A prominent feature of the website is the capacity to allow consumers to track their packages.

3. Mr Casey claims that the Opponent’s Trade Marks have received worldwide recognition. Exhibited to the Casey Declaration are the following articles and reports:

• Forbes, ‘2017 Forbes Global 2000: The World’s Largest Transportation Companies’, ranking the Opponent as the world’s largest transportation company.

• Brand Finance, ‘Logistics 25 2017: Annual report on the world’s most valuable logistics brands’, which ranks ‘UPS’ as the world’s valuable logistics brand.

• Interbrand, ‘Best Global Brands of 2018’, which ranks UPS as the 18^th ‘best brand’ in the world.

• Fortune’s ‘World’s Most Admired Companies’ report, which ranked ‘UPS’ at 35 in 2017 and 33 in 2018.

1. The Opponent promotes and advertises its trade marks via various social media platforms, including Facebook, Twitter, YouTube and Instagram. Examples of use of the Opponent’s Trade Marks on these platforms are exhibited to the Casey Declaration. The Opponent’s advertising also includes sponsorship of major sporting events, including the Ferrari Formula One, Beijing 2008 and London 2012 Olympic and Paralympic Games, and The Masters and Open Championship golf tournaments.

2. Details the Opponent’s international and domestic revenue from between 2013 and 2018 are included in the Casey Declaration. The figures provided demonstrate that the Opponent has generated significant revenue both in the USA and internationally.

Applicant

1. The Applicant is a subsidiary of Sigma Healthcare Limited (‘Sigma’), a pharmacy wholesale and distribution business. The Applicant is a packaging, logistics and distribution company that specialises in packaging of pharmaceuticals and the provision of medication management software to pharmacists.

2. The Trade Mark was derived from ‘Medicated Packaging Systems’, the company name of the Applicant’s predecessor, Medication Packaging Systems (Australia) Pty Ltd.

3. The Applicant is also the owner of the following trade mark registrations in Australia:

Trade Mark No.	Trade Mark	Priority Date	Goods and Services
1230960	20 March 2008	Class 39: Packaging of products; packaging services Class 42: Design of packaging; computer software design; computer software development; online provision of web-based software Class 44: Consultancy and advisory services in relation to medical services; provision of medical services
1636686	24 July 2014	Class 10: Apparatus used for administering medication; devices for use in the administration of medicines Class 35: Wholesale services for pharmaceuticals

1. Ms Young declares that the Applicant’s services have been provided under the Trade Mark since 1997. The Applicant provides services under the Trade Mark to over 350 pharmacies in Australia and over 400 residential aged care facilities. The annual revenue generated from the Applicant’s services provided under the Trade Mark from 30 June 2013 to 30 June 2020 has been exhibited to the Young Declaration.

2. The Trade Mark has been promoted via the Applicant’s websites and Exhibited to the Young Declaration are screenshots from these websites from between 2002 and 2021 ( and 2018 and 2021 ( The Trade Mark is also referred to in third party newsletters and websites, such as Pharmacy Daily.

3. The Applicant’s annual marketing expenditure from 30 June 2013 to 30 June 2020 has been exhibited to the Young Declaration.

Discussion and Reasons

Section 44

1. Section 44(2) relevantly provides:

   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.

2. To succeed under this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, which is in the name of a person other than the Applicant, and in respect services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services.

3. The Opponent relies on the Opponent’s Trade Marks with specific attention afforded to the following trade marks:

Trade Mark No.	Trade Mark	Filing Date	Goods and Services
425181	UPS	12 April 1985	Class 39: Services of transportation of written communications, documents and other property by diverse modes of transportation.
498561	UPS	1 November 1988	Class 16: All goods included in this class
721157	UPS	5 November 1996	See Annexure A

(‘Collectively, ‘UPS Word Marks’)

1. I note that the Opponent’s evidence and submissions also make reference to trade mark registration number 721154 ‘UPS ONLINE’. As this trade mark was not included in the list of trade marks relied on in the SGP, and covers goods and services already included in the UPS Word Trade Marks, I have not taken it into consideration in deciding this matter. 

2. Each of the UPS Word Marks has an earlier than the priority of the Trade Mark and is held in the name of a person other than the Applicant.

Substantial Identity

1. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell & Esso’) Windeyer J explained the test for determining substantial identity:

   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]

   [4] [1963] HCA 66; (1963) 109 CLR 407, [12].

2. The Opponent submits that when compared side by side it is apparent that each of the trade marks have three letters with two of those three letters being identical and positioned the same within the trade marks. The Opponent also submits that the letter ‘M’ in the Trade Mark is no more dominant or prominent a feature of the Trade Mark than the letters ‘P’ and ‘S’ and does not distinguish the Trade Mark from the UPS Word Marks.

3. I do not agree with the Opponent’s submission. The trade marks are each comprised of three letters that form an acronym rather than any known English word. In this context each individual letter is an important and essential feature of the trade marks. I am satisfied that when compared side by side the differences between the trade marks are significant enough that there is not an overall impression of resemblance between the Trade Mark and the UPS Word Marks.

Deceptively Similar

1. Section 10 of the Act defines ‘deceptively similar’ as:

   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. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell & Esso:

   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 [mark].[5]

   [5] [1963] HCA 66, [13].

2. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[6] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[7]

   [6] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [7] Ibid.

3. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[8] Accordingly, an allowance is made for imperfect recollection of the trade marks.[9] The impression comes from the trade marks in their entirety,[10] and is informed by the look, sound and ideas conveyed by the trade marks.[11]

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [9] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [10] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [11] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

4. The Opponent submits that the Trade Mark is deceptively similar to the UPS Word Marks for the following reasons:

• Two of three letters of the respective trade marks are identical in composition and placement.

• Aurally, ‘MPS’ and ‘UPS’ are likely to be confusingly similar because when spoken more emphasis is typically placed on the final two letters.

• ‘Customers are likely to seek out MPS by reference to the Opposed Mark, and to seek out UPS by reference to the UPS Trade Marks’

• The significant similarity and overlap between the Applicant’s Services and those for which the UPS Word Marks are registered.

1. The Applicant submits that the first letters of the acronyms ‘MPS’ and ‘UPS’ are, visually and aurally, very different and that this difference is sufficient to avoid any real or tangible risk of confusion.

2. I acknowledge that the respective trade marks are each comprised of three letter acronyms that end in the letters ‘PS’. Two of the three letters in the acronyms are the same, differing only regarding the first letter of each acronym. While the letters ‘PS’ do afford the trade marks some degree of similarity, in my view, this similarity is not sufficient for there to be a real or tangible danger of confusion. The trade marks are acronyms, or, characterised another way, initialisms.  They cannot be pronounced as words in the English language and each letter of the respective trade marks is likely to be pronounced individually. Accordingly, the first letter and syllable of the Trade Mark, ‘M’, is both visually and phonetically dissimilar to the first letter and syllable of the UPS Word Marks, ‘U’. Although the Opponent contends that greater emphasis would be placed on the last two letters of the acronyms, I consider it unlikely that the first letter of these three letter acronyms would be mispronounced or incorrectly identified. I also note the following comments from Sargent LJ in Re London Lubricants (1920) Ltd’s Application to Register a Trade Mark[12]:

   [T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.[13]

   [12] (1925) 42 RPC 264.

   [13] Ibid 279.

3. Finally, there are no stylistic or figurative elements present in the trade marks that might cause the individual letters ‘M’ or ‘U’ to be mistaken. For these reasons, I am satisfied that there would not be a real or tangible danger of confusion between Trade Mark and the UPS Word Marks.

4. For completeness, I note that the SGP and Opponent’s submissions refers to additional trade mark registrations, namely the Opponent’s Trade Marks. I do not consider it necessary to consider these trade marks further. Noting my conclusions in relation to the UPS Word Marks, I would arrive at the same conclusion for any of those other trade marks that specify similar goods or services to the Trade Mark given that in addition to the letters ‘UPS’ they incorporate elements that further differentiate them from the Trade Mark.

5. The section 44 ground of opposition is not established.

Section 60

1. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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.

1. To establish this ground of opposition, the Opponent must establish:

• A reputation existing in another trade mark in Australia before the Relevant Date; and

• That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

1. The Opponent relies on the Opponent’s Trade Marks, contending that through its use of the UPS Word Mark and trade marks containing ‘UPS’, the Opponent’s Trade Marks had developed an extensive reputation in connection with delivery, transportation, logistics, international commerce, financial and supply chain management services (‘Opponent’s Services’).

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[14] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[15]

   [14] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [15] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[16] or providing evidence of high volume of sales,[17] advertising expenditure or other promotion of goods or services to which the trade mark applies.[18] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[19]

   [16] Ibid [118].

   [17] McCormick (n 14) [86].

   [18] Ibid.

   [19] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[20] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[21]

   [20] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [21] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. The Applicant submits that the evidence does not demonstrate any reputation in Australia in ‘UPS’ or any of the Opponent’s Trade Marks. The Applicant’s submits that the Opponent’s evidence is general in nature, focused on the Opponent’s global reputation rather than the reputation of ‘UPS’ in Australia. In particular, the Applicant emphasises that while the Opponent has provided evidence of significant sales, it has not provided any sales data in Australia or otherwise demonstrated how the international use of the Opponent’s Trade Marks translates to a domestic reputation in Australia. By way of example, the Applicant points to the sales data in the Casey Declaration, which details the international revenue generated by the Opponent but does not indicate what portion of those sales may be attributed to use of the Opponent’s Trade Marks in Australia.

5. It is not necessary for the Opponent to demonstrate that the earlier trade mark was used in Australia, nor is it necessary that the Opponent’s services are offered in Australia. All that is required by section 60 is that the trade mark has a reputation at the relevant date in Australia sufficient for there to be a likelihood of deception or confusion.[22] However, I accept that in practice it may be challenging to establish a reputation in Australia purely on the basis of overseas use of a trade mark.[23]

   [22] Conagra (n 15) [117].

   [23] See: Ibid [92].

6. In Pham Global Pty Ltd v Insight Clinical Imagine Pty Ltd[24], the Full Court referred to Lockhart J’s explanation from Conagra regarding the issues of foreign reputation and impact of modern developments in telecommunications and advertising:

   Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.[25]

   [24] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

   [25] Ibid [80]; Conagra (n 15) [115].

7. The Opponent’s evidence demonstrates that the UPS Word Mark and UPS Device Mark:

• Were used in generating significant amounts of revenue for the Opponent in connection with delivery, packaging, shipping, supply chain and logistics services.  I accept that the Opponent’s sales revenue and marketing does not specify the amounts that could be attributed to activities in Australia. Nonetheless, the total revenue figures for the Opponent’s international business from between 2013 to 2018 are significant.

• Were displayed prominently on the Opponent’s packaging, delivery vehicles, and delivery uniforms.

• Were exposed to a significant number of subscribers and followers via the Opponent’s various social media accounts. The use of UPS Trade Mark and the number of subscribers and followers on the Opponent’s social media accounts, in particular, Facebook (1.9 million followers), Twitter (‘250.6K Followers’), YouTube (‘37.3K subscribers’) and Instagram (‘132K followers’).

• Received third party recognition from a number of brand evaluation firms as the leading brand in the packaging and delivery market.

• Were used in the sponsorship of major well-known sporting and entertainment events, including the Beijing 2008 Olympics and London 2012 Olympics. However, I note that the Opponent’s sponsorship activities at these events are not demonstrated in any detail except for a general explanation of these sponsorships from the Opponent’s Website.

• Were prominently used and displayed on the Opponent’s Websites for its online service activities in relation to shipping and delivery services.

1. I agree with the Applicant that much of the evidence outlined above is not specific to the Opponent’s use of its trade marks in Australia. However, I also note that Annexure I of the Casey Declaration includes a list of the Opponent’s services that are provided to Australia, which include shipping, tracking, delivery and logistics services. The market for these services would include the majority of the Australian purchasing public, retail and business intermediaries, and business involved in distribution and supply chains.  Accordingly, I consider the relevant class of consumers to be a broad demographic of the Australia public.

2. Although I accept that the Opponent’s evidence does not specify its Australian revenue, I am satisfied based on the evidence relied upon by the Opponent that at the Relevant Date the UPS Word Mark and the UPS Device Mark had a reputation with respect to Opponent’s Services  amongst a significant number of people in Australia. The evidence demonstrates that as of the Relevant Date both the UPS Word Mark and the UPS Device Mark had acquired a prominent worldwide reputation. Given the nature of delivery, packaging, and shipping services, which are provided to international consumers, I am satisfied that the reputation of these trade marks would also be prominent amongst Australian consumers of those services. However, I am not persuaded that this reputation extends separately rest of the Opponent’s Trade Marks. I will now turn to whether, by reason of the reputation of the UPS Word Mark and/or the UPS Device Mark, use of the Trade Mark would be likely to deceive or cause confusion.

Likelihood of Deception or Confusion

1. Section 60(b) requires a causal connection between the reputation of the earlier trade mark and the likelihood that use of the Trade Mark will deceive or cause confusion.

2. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[26]:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[27]

   [26] [1979] 19 RPC 410.

   [27] Ibid 423.

3. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether the Applicant’s services derive from the same trade source as another trade mark.[28]

   [28] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

4. Although not a necessary requirement of section 60, the similarity of the trade marks, and the similarity of the relevant goods or services in respect of which the reputation is established and the goods and services of the trade mark application remain relevant considerations.[29]

   [29] Qantas Airways Ltd v Edwards [2016] FCA 729, [142]-[143] (Yates J).

5. The Applicant’s Services include delivery, packaging, logistics and shipping services. These services the same or very similar to services associated with the reputation of the UPS Word Mark and UPS Device Mark. I am satisfied that consumers of the Applicant’s Services would likely recognize both the UPS Word mark and UPS Device Mark and be aware of their reputation for delivery, packaging, shipping and logistics services.

6. In terms of the similarity of the trade marks, the Opponent contends that the trade marks are deceptively similar. I refer to the discussion of the section 44 ground of opposition and my conclusion regarding the similarity of the Trade Mark to the UPS Word Mark.  Although section 60 does not have a requirement that the trade marks be substantially identical or deceptively similar, the degree of similarity between the trade marks is relevant to whether use of the Trade Mark would deceive or cause confusion. In my view, there are sufficient differences between the trade marks to render the chances of confusion unlikely. This is also the case for the UPS Device Mark as the additional device elements only serve to further differentiate the UPS Device Mark from the Trade Mark. Even accounting for the extensive reputation of the UPS Word Mark and UPS Device Mark, I am satisfied that there would not any likelihood of deception or confusion between the trade marks.

7. The section 60 ground of opposition is not established.

Section 42(b)

1. Section 42(b) provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29(1)(g) and (h) of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [30]

   [30] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

Australian Consumer Law

1. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[31] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[32]

   [31] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [32] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

2. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Marks and the Opponent’s Trade Marks are related.

Passing Off

1. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[33] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation[34] that:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[35]

   [33] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [34] [1989] FCA 771.

   [35] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Decision

1. Section  55(1) relevantly provides:

   Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 1899914 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Marks not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

14 November 2022

Annexure A

Goods and Services of Trade Mark Registration Number 721157

Class 9: Computer programs and software; batteries; alternative power supplies; surge protectors; magnetic discs and tapes; printers, scales, and scanners

Class 35: Advertising services; business management services; business administration services; providing computerized tracing of packages in transit; distribution of samples; management assistance services; management consulting services

Class 36: Insurance services; financial affairs services; monetary affairs services; real estate affairs services; brokerage services; banking services; factoring services; underwriting services

Class 38: Services of transmitting messages, letters, documents, and other texts, by telex, by telephone, by electronic means, and by one or more global computer networks

Class 42: Providing of food and drink; temporary accommodation services; medical, hygienic and beauty care services; veterinary and agricultural services; legal services; scientific and industrial research services and computer programming services