United Parcel Services of America, Inc v UTS Europe BV

[2003] ATMO 33

TRADE MARKS ACT 1995

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

Re:Opposition by United Parcel Services of America, Inc to registration of trade mark application 782885(35), (39) – UTS Logo - filed in the name of UTS Europe BV.

Background

1. In this matter, UTS Europe BV, (“UTS” or “the applicant”), of The Netherlands has filed application to register the trade mark, details of which appear below:

   Appn Number:  782885
   Priority Date:  14 Jan 1999

   Services:Class: 35 Advertising; business management; business administration; office functions; the aforesaid services including management and coordination of the services of (international) movers, management and coordination of services within the framework of moving internationally, insofar as the services mentioned relate to furniture removal services

   Class: 39 Furniture removal services

   Trade Mark:  
   Advertised:  28 Sep 2000

2. On 4 December 2000, United Parcel Service of America, Inc of the USA (“UPS” or “the opponent”) filed Notice of Opposition (“the Notice”) to the registration of the trade mark.  The Notice claims all of the available grounds of opposition under the Trade Marks Act 1995 (‘the Act’).

3. On 13 September 2002, UTS amended the specification of services to:

   Class 35

   Advertising, business management, business administration, office functions, the aforesaid services including management and coordination of the services of (international) movers, management and coordination of services within the framework of moving internationally, insofar as the services mentioned relate to furniture removal services

   Class 39

   Furniture removal services.

4. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 21 February 2003.  Russell Waters of Phillips Ormonde & Fitzpatrick represented UTS.  Khajaque Kortian of Spruson & Ferguson represented UPS by teleconference.

   The Evidence

5. The parties have served and filed evidence in support and evidence in answer as detailed below:

Declarant:	Known as/ /Position:	Date Made:	Exhibits:
Evidence in Support
Terence Brinley Hales	Hales Managing Director UPS Pty Ltd	9 Nov 01	TBH-1 – TBH-21
Elizabeth W Calvert	Calvert Assistant Secretary UPS	26 Oct 01	A-1 Confidential
Evidence in Answer
Peter Leaf-Milham	Leaf-Milham Director Chess Moving Australia Pty Ltd	11 Nov 02	PLM1 – PLM9
Cornelis Willem Wismeijer	Wismeiyer Managing Director UTS	5 September 2002	CWW1 – CWW8

Hales

1. This evidence shows that UPS is a large and well-known message and parcel delivery service which operates world-wide.  Some measure of the size and scope of UPS operations can be gauged by the fact that it has some 2000 registered or pending trade marks in some 200 countries world-wide for trade marks which comprise or contain the sign UPS.

2. The above-mentioned registered trade marks include those registered in Australia. The following were principally relied on at the hearing:

   Reg Number:  425180
   Priority Date:  12 April 1985

   Services:Class: 39  Service of transportation of written communications, documents and other property by diverse modes of transportation.

   Trade Mark:  
     ......................................
   Reg Number:  425181
   Priority Date:  12 April 1985

   Services:Class: 39  Services of transportation of written communications, documents and other property by diverse modes of transportation.

   Trade Mark:  UPS
     .....................................
   Reg Number:  721157
   Priority Date:  5 November 1996

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

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

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

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

   Class: 42Providing 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

   Trade Mark:  UPS

   Reg Number:  721156
   Priority Date:  5 November 1995

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

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

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

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

   Class: 42Providing 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

   Trade Mark:  

3. Use of the trade mark UPS and the UPS logo trade mark by the opponent started in 1933 in the USA.  Use of the trade marks in Australia started in 1987.  UPS and its related companies which use the trade marks employ 300,000 people world-wide.  The opponent, at the priority date of the opposed application, was delivering in excess of 3 billion packages/parcels or messages a year.  The opponent has 250 aircraft and 150,000 vehicles which are supported by the expenditure of over 100 million US dollars on advertising and promotion every year.  Details of the Australian component for its advertising and promotional budget have been supplied ‘in confidence’ by UPS and I have viewed these and consider them to be substantial.  The opponent sells, amongst other things, packaging for the parcels that it delivers.

   Calvert

4. Ms Calvert avers that on 24 November 1995, UPS entered into a confidential agreement with UTS Umsugs und Transportsystems GmbH & Co KG (“Umsugs”): it is Ms Calvert’s understanding that Umsugs and the applicant are related parties.  The agreement allows Umsugs to retain such trade marks registered or pending at the date of the agreement (subject to certain conditions) and binds Umsugs and its associated companies not to file applications to register the trade mark UTS or UTS Logo after the execution of the agreement.

   Leaf-Milham

5. The declarant is the director of a company, which is called Chess Moving Australia Pty Ltd (“Chess”).  The declarant is also Chairman of UTS Australia and New Zealand Pty Ltd.  He avers that Chess has been using the opposed trade mark since October 1998 in relation to its furniture removal business.  Having inspected the materials exhibited to this declaration, I observe that the trade mark UTS Logo appears on packaging, vehicles, buildings, stationary and marketing material.  The use in trade of the UTS Logo appears to be in relation to any international removals of furniture and personal effects that might be effected by Chess from Australia to overseas destinations.

6. The declarant has provided details of the total revenues of Chess in relation to its services.  The figures should be viewed with some reserve since, as I have stated, it appears that Chess uses the UTS Logo trade mark in trade relation to international removals and it is not clear what fraction of Chess services comprise overseas removals.

   Wismeijer

7. The declarant states that he is Managing Director of the applicant and that the opposed trade mark was first used by “UTS Germany” which was formed by a group of German moving companies.  The material exhibited to the declaration appears to confirm that the services offered in relation to the opposed trade mark relate to international removals of furniture and personal effects.  Indeed, the 1998/99 Business Report contains a section on the renaming of the company as INTERNATIONAL MOVE MANAGERS UTS.

8. However, I will state now that I find this declaration to be otherwise vague.  For instance, the declarant avers at paragraph 4 of his declaration that, “As at the end of the 1998/99 financial year, the [opposed trade] mark was used at 120 locations in 20 European countries, 12 locations in Australia, 4 locations in New Zealand, and in North America and was also in use in Asia, Latin America, Africa and the Middle East through UTS overseas system partners and selected agents.”  However, it would appear that the UTS trade mark is not used in trade within North America even though I would be led to infer from the above-quoted passage that it is.  The claim in the declaration appears to be founded on the fact that, according to the 1998/99 Business Report, North American Van Line Inc is a shareholder in the applicant.  However, North American Van Line does not appear use the opposed trade mark in trade.  I am inclined to weight this declaration accordingly.

9. Neither of the declarations in answer addresses the agreement that the applicant, or an associated company, reached with the opponent.

   Evidence Conclusions

10. Both of the declarations led as evidence in answer appear, in my consideration, to make claims as to the scope of the use of the opposed trade mark which are unsupported by the exhibits.

    Submissions

11. It was a central tenet of the opponent’s submissions that the trade marks are, at the least, deceptively similar.  In this regard Mr Khortian referred me to a decision of the European Office for Harmonization in the Internal Market (Trade Marks and Designs)(“OHIM”) (Decision Number 1040/2002) in which OHIM found that the UPS opposition to the registration of the UTS Logo trade mark succeeded based on the similarity of both the trade marks and the services.

12. It was the thrust of the applicant’s submissions that the trade marks are not deceptively similar and the services are not related.

13. Both the applicant and the opponent referred me to similar case-law in the presentation of their submissions.

    Other

14. I intend to ignore the issue of enforcement of the agreement between the parties.  The agreement is a private and confidential contract between the parties under German law.  I find no parallels between the circumstances before me and the facts in Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24. That case was decided because copyright in the trade mark which existed in the United States of America was enforceable in an Australian Court under Australian copyright legislation which gives effect to international copyright conventions. Mr Khortian did not draw my attention to any legislation that allows for the enforcement of German contracts in Australian Courts. Moreover, the suitable venue for disputes involving the agreement is, by the agreement, a court in Dusseldorf.

15. However, the terms and existence of the agreement are issues that might go to section 44(4) should that subsection become relevant to my reasons.

    Reasons

16. As most of the grounds of opposition are predicated on the similarity of the trade marks and the services, I will discuss the alleged similarity of the trade marks and of the services and then apply the outcome of those considerations to the specific grounds of opposition. In doing so, I note that it not essential to the operation of section 60 of the Act that the goods or services of the parties be similar or closely related.

    Similarity of the Services.

17. As observed by Wilcox J in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 39:

    The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

18. Section 14(2) provides:

    14  Definition of similar goods and similar services

    ….

    (2)       For the purposes of this Act, services are similar to other services:

    (a)       if they are the same as the other services; or

    (b)if they are of the same description as that of the other services.

19. The sole cases in which ‘services of the same description’ has received judicial consideration are the CHIFLEY TOWER cases.  In the appeal, reported at Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561 at 567, Burchett, Sackville and Lehane JJ said:

    Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered: s 120 (2) (c) ? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120 (2) (c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (TM Act 1955), although the expression "services of the same description as [services in respect of which the trade mark is registered]'' was used in the earlier legislation: see TM Act 1955 ss 33 (2), 36 (1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; at 606; 1A IPR 465 the High Court said this:

    There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59; 1A IPR 393. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the assistant-comptroller elaborated on the observations of Romer J in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ..."

    Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227; at 240; 26 IPR 246) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

    In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... "in a business sense"; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the trade marks legislation parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase "goods of the same description" ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.

    We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance MID's argument.

    For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

    This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.

20. In the penultimate paragraph, above, reference is made to a passage at 567 of the judgment where the Full Bench stated:

    It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel. Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which Touraust intends to conduct.

21. Thus, what I am to consider is the intrinsic nature of the services and the trade channels through which they are delivered.  I am not to be distracted by the fact that the services of the parties might have some features in common which are incidental to their essential nature.

22. I consider that the services of the parties are services of the same description.  Both services involve the transportation of goods on behalf of other persons.  The services therefore have the same purpose and effect.  People who are members of the same trade union and are considered to be in the same trade carry out both services.  Insurance in relation to items of high value is offered in conjunction with both services.  I note in the exhibits to the evidence that, in regard to many items, the two services use identical packaging which are supplied as a part of the service or as goods ancillary to it.  While it was submitted by Mr Waters, that furniture removal and a parcel delivery service have differences, I consider that they have much more in common: for example, if a person were considering shipping a dozen framed pictures internationally, the two services might both logically suggest themselves.  Both services would, under these circumstances, be rendered to the same person for the same purpose, using similar packaging for the goods, be collected by a similar van by persons who are in the same union.  The only differences would appear to lie in relative speed and expense.

1. I note that the parties both operate small vans and trucks (pantechnicons) in relation to their services.

   Similarity of trade marks

   29.     I do not think that it was enthusiastically argued by Mr Khortian at the hearing that the trade marks are substantially identical.  I will merely note that, on a side by side comparison of the closest of the opponent’s trade marks to the opposed trade mark, (the UPS ‘word’ trade mark and the  trade mark), there are differences - Shell Company of Australia Co Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (reversed on appeal but not on this principle)

   The trade marks are not substantially identical.

   30.     I adopt the approach set out by Dixon and McTiernan JJ Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641, at 658, in determining the issue whether the trade marks are deceptively similar:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

   31.     In the latter test, the trade marks ought not be considered side by side.

   32.     Further, I am to consider other contextual factors stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

2. The consideration of what constitutes ‘deceptive similarity’ should take into account the definition of the term in section 10 of the Act:

   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.

3. Deceptive similarity was considered in Woolworths, above, by French J.  At paragraph 50 he said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

4. Concerning the comparison of the trade marks, one of the factors to be considered is the effect of the fact that both trade marks are manifestly acronyms composed of initial letters. – It is difficult to regard either of them as being words in any language, although I note that the word ‘ups’ might be used in informal English (as, for example in the phrase, “Life has its ups and downs.”)  However, the indicium UPS is rendered in upper case in the opponent’s trade marks and is not likely to be seen as a word.  The most likely use of the trade marks in speech is as letters U.P.S. and U.T.S. and, indeed, this is how the parties referred to the trade marks at the hearing.  As remarked in the OHIM decision – as the trade marks have no ascertainable or immediate meaning, they will not be distinguished from each other on the basis of meaning.

5. A further factor to be considered is the relative strength of the trade marks.  Where a trade mark is manifestly comprised or derived from indicia which are common to a trade, these trade marks might start attracting the genus of considerations which applied in Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127. It is apparent that the opponent’s ‘word’ trade mark UPS is an acronym or initialization derived from the words UNITED PARCEL SERVICE. It is possible that the applicant’s trade mark had similar origins in the words UNITED TRANSPORT SERVICE; however, this issue is not addressed in the evidence in answer. Some allowance for that lack of inherent distinctiveness in the roots of the trade marks must be made in the comparison.

6. Another factor to be considered in the comparison is whether the opponent’s trade mark has the sort of notoriety referred to by French J in Woolworths, above, at para 61:

   Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths " cannot be assessed without a recognition of its notorious familiarity to consumers.

7. This observation was subsequently qualified by the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 (31 October 2000) where Ryan Branson and Lehane JJ observed at paragraph 51:

   Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.

8. In my estimation, the opponent’s UPS and UPS Logo trade marks fall within the status of being so ubiquitous within the relevant market that users of such services must be taken to have a degree of familiarity with them.  This would, to an extent, affect potential customers’ imperfect recollection of the opponent’s trade marks.

   StandardThe

9. At paragraph 45 of Woolworths, French J said:

   It was put in his written submission that the test be applied in considering likely deception or confusion may be stated as in Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8:

   "Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration."

   So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act. The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

10. And in Blount Inc v Registrar of Trade Marks 40 IPR 498 at 504, Branson J observed:

    Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

11. I am satisfied that the trade marks are deceptively similar. I do not consider that the stylised rendition of the logo which comprises the opposed trade mark detracts in any way from its immediate impact as having the initial letter U and the terminal letter S with an intermediate letter which on a closer inspection resolves itself as being the letter T. While Mr Waters submitted that the letter T is, in use, invariably coloured red and hence readily discernable, this is not apparent on the application – there has been no limitation as to colour requested. Section 70 of the Act provides:

    70  Colours in registered trade marks

    (1)A trade mark may be registered with limitations as to colour.

    (2)The limitations may be in respect of the whole, or a part, of the trade mark.

    (3)To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

    Note:For limitations see section 6.

12. If the trade mark were registered as it stands, it would be taken to be registered for all colours – further, I am, in terms of Bali, above, to consider all of the uses that the applicant might make of its trade mark were it to be registered. 

13. There are, therefore, very marked visual similarities between the trade marks.

14. Mr Khortian submitted that, phonetically, there are also strong similarities and drew my attention to the passage in the OHIM decision that discusses this.  The opponent’s ‘word’ trade mark UPS is likely to be pronounced ‘Yew-Pea-Ess’; the applicant’s trade mark is likely to be pronounced ‘Yew-Tea-Ess’.  The minor difference between the trade marks is the ‘hard’ consonant ‘Pea’ or ‘Tea’ occupying the centre of the signs.  Both of these consonants are sounded as plosives – the former is a labial plosive, the latter is an alveolar plosive.  Both of these sounds are formed towards the front of the palate and sound very similar.  Accordingly, there are strong linguistic and auditory similarities between the trade marks.

15. The visual, phonetic and linguistic similarities between the trade marks, coupled with the ubiquity of the opponent’s trade marks (as demonstrated in the evidence), go to the doctrine of imperfect recollection. The so-called 'doctrine of imperfect recollection' springs from the principle posited by Luxmoore LJ in Re Application by Rysta Ltd (1943) 60 RPC 87 at 108, where he said:

    The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s 12 of the Trade Marks Act 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

    The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

16. The evidence shows that the opponent’s UPS word trade mark has a degree of ubiquity such that most Australians in the relevant market must have a degree of acquaintance with it.  I am satisfied that this increases that likelihood that a person ‘seeking to buy [services] under the trade description’ will be either confused or deceived.

    As I have stated, I consider the trade marks to be deceptively similar.

    Sections 44 and 60

17. Insofar as it is relevant to these proceedings, section 44 of the Act provides:

    (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.

18. The trade marks on which the opponent relies have earlier priority dates than that of the opposed application.  I consider in these reasons only the registered  UPS ‘word’ trade marks.

19. The applicant’s trade mark is, as discussed above, deceptively similar to the opponent’s trade mark UPS.  This is the subject of registration 425181 UPS which is registered in Class 39 in respect of “Services of transportation of written communications, documents and other property by diverse modes of transportation.”  The term in the specification, ‘other property’ includes furniture and thus is effectively the same service as that of the applicant’s specification “Furniture removal services”. 

    The opponent has therefore established its grounds under subsection 44(2) in relation to the application in Class 39.

20. In relation to the application in Class 35, the applicant’s services are, “Advertising, business management, business administration, office functions, the aforesaid services including management and coordination of the services of (international) movers, management and coordination of services within the framework of moving internationally, insofar as the services mentioned relate to furniture removal services”.  The foregoing services form a subset of the “Advertising services; business management services; business administration services” specified on the opponent’s registration 721157 of the UPS ‘word’ trade mark in Class 35.  The services are therefore the same services.  The trade marks are deceptively similar as discussed above.

    The opponent has therefore established its grounds under section 44(2) in relation to the application in Class 35.

21. Section 60 of the Act provides:

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

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

    (a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note 1:For deceptively similar see section 10.

    Note 2:For priority date see section 12.

22. The opponent has established that its UPS trade mark had a reputation in Australia at the priority date. I have also decided that the trade marks are deceptively similar. It is not necessary for the opponent to establish that the services of the parties are of the same description in terms of section 60 of the Act; however, the services of the parties both in Class 35 and 39 are of the same description. I therefore consider that because of the reputation of the opponent’s trade mark, the use of the applicant’s trade mark would confuse or deceive.

    The opponent has established its grounds terms of section 60 of the Act.

23. As the opposition is established in terms of section 60, the honest concurrent user provisions of section 44 are not available to the applicant: McCormick and Co Inc v. McCormick (2000) 51 IPR 102.

    Other Grounds

1. As the opponent has established its grounds under both sections 44 and 60, consideration of the other grounds is otiose.

   Conclusion/Decision

2. Section 55 of the Act provides:

   55  Decision

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

3. I refuse to register application 782885.

   Costs

4. The opponent has succeeded in establishing its opposition.  I therefore order costs against UTS.

   Ian Thompson
   Hearing Officer
   Trade Marks Hearings

   16 May 2003