Untied Parcel Service of America Inc v United Air Lines Inc

[2006] ATMO 46

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 796947(35, 37, 39, 42) - UNITED SERVICES - filed in the name of United Air Lines Inc.

Delegate:

Alison Windsor

Representation:

Opponent: Cynthia Cochrane of counsel instructed by Spruson & Ferguson, Patent and Trade Mark Attorneys

Applicant: Tim Allen and Anna Tran of Corrs Chambers Westgarth, lawyers

Decision:

S52 opposition – grounds under ss42, 44 and 60 not established – trade mark to proceed to registration – costs awarded against opponent

Background

1. The applicant, United Air Lines Inc, applied to register a trade mark, details of which are shown below:

   Application number:  796947

   Trade Mark:  UNITED SERVICES

   Filing date:  10 June 1999

   Acceptance advertised: 05 December 2002

   Services claimed:  Class 35:  Sale of aircraft and surface aircraft parts

   Class 37:  Maintenance of aircraft and surface aircraft parts, equipment, ground and line maintenance

   Class 39:  Airport services, namely, receipt and dispatch of passenger baggage, handling of passengers, ramp services

   Class 42:  Engineering services, namely engineering designs, technical services, technical advisory and consultancy services for aircraft, aircraft engines, aircraft engine and component repairs, modification and maintenance of aircraft and aircraft parts.

   2.     On 21 February 2003, United Parcel Service of America, Inc (“the opponent”) filed notice of opposition.  Evidence in support, evidence in answer and evidence in reply were served in due course.

   3.     Following requests to be heard from both parties, the matter was set down for a hearing before me in Sydney on 17 March 2006.  The opponent was represented by Cynthia Cochrane of counsel, while Tim Allen of Corrs Chambers Westgarth, accompanied by Anna Tran, represented the applicant.

   4.     Late in the afternoon of 15 March 2006, less than 48 hours before the Hearing, the opponent served on the applicant notice that it intended to seek leave to adduce further evidence in the proceedings.  The applicant advised the Office it objected strenuously to the intention.  Because of an administrative oversight, I was not apprised of either the application to adduce more evidence, or the objection to this application until very shortly before the hearing took place in Sydney.  In the circumstances, I considered it appropriate to allow both parties to make representations on the request, advising that I would make a ruling in respect of the matter at the time of issuing the decision.  Before moving on to the substantive matter therefore, I shall deal with the request to adduce further evidence.

   Application for permission to serve further evidence

   5.     Regulation 5.15 allows for an application to submit further evidence.

   5.15 (1) A party to the opposition proceedings may apply to the Registrar:

   (a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

   (b) for permission to serve a copy of further evidence on the other party.

   (2) The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3) The Registrar must not grant an application unless the Registrar:

   (a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b) has given the parties a reasonable opportunity to make representations concerning the application; and

   (c) is reasonably satisfied that:

   (i) in the case of an application to which paragraph (1) (a) applies—the extension of the period for serving a copy of the evidence; and

   (ii) in the case of an application to which paragraph (1) (b) applies—permission to serve a copy of further evidence;

   is appropriate.

   (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

   (5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

   (6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).

   6.     Mr Simon Williams of Spruson & Ferguson, who had carriage of the opponent’s case, filed an application with the Trade Marks Office via e-mail and by mail.  The application consisted of a statutory declaration of Viet-Chau Tran, an employee of Spruson & Ferguson, and approximately 75 pages of assorted extracts from various internet sites.  The purpose of the material appears to be to provide the Hearing Officer with an explanation of the term “ramp services”, an item contained within the applicant’s class 39 service claim.

   7.     The applicant expressed strong objections to the opponent’s reliance on the Tran declaration.  The objections were that the evidence could have been obtained with reasonable diligence at an earlier stage; it would not be likely to have an important influence on the outcome of the opposition, it was not reliable and finally that procedural fairness had not been observed.  

   8.     I consider the applicant’s submissions are entirely reasonable on most of these issues.  Extracts from Internet sites going to a definition of the term in question could have been found and provided at any time.  In addition, this is the kind of information the Hearing Officer would apprise herself of if she was unsure of terminology.  I do not consider it was at all necessary for the opponent to undertake this activity at the time it did, and it certainly does not appear necessary to provide such a volume of material.

   9.     As for the reliability of the information, I take the point that what was provided is a very small sample of the total number of “hits” on the Internet relating to the term.  I am unable to comment on whether the chosen hits are representative of the general run of hits, or whether they are carefully chosen to highlight specific aspects of the term “ramp services”.  I do not know the methodology used to decide which extracts were chosen and which were left out.  There is also the issue of the quality of many of the copies – poor photocopies at best, unreadable at all at worst.  Overall, I do not consider the information to be of great worth – I do not consider the opponent’s case would suffer in any way if the information was excluded.

   10.   As to whether the information would have an important influence on the substantive decision, I consider it would not.  Had the information not been provided, I would have apprised myself of the meaning of the term “ramp services” via the usual search avenues available within the Trade Marks Office.  Attempting to serve this quantity of information at such a late stage seems to me to be an unnecessary action. 

   11.   We then move to the issue of procedural fairness.  The applicant is of the opinion that the request to serve this evidence must have been intended as an attempt to “surprise and disconcert” it at a time close to the Hearing.  This may indeed have been the purpose of the action, but it is not a useful exercise for me to consider the possibility.  The sheer volume of the material would be enough to disconcert the party receiving it, and the poor quality of much of the material adds to that.  However, the applicant has been allowed to make its views known, the opponent has been allowed to explain why it wants this information to be considered and I shall now decide the issue.

   12.   I am aware that if my eventual decision was to be appealed to the Federal Court, a de novo hearing would result, and the proposed volume of evidence or something very similar would undoubtedly be allowed into the proceedings.  That said, I have to decide whether it is appropriate to allow the evidence into these proceedings.  Technically, the application for permission to serve the evidence is not in order, because the required $100 fee was not paid.  I am of the opinion the information was of little value to me, or to the applicant.  Since the application was not properly made, and the information is of little import, I do not intend to allow the evidence in.  Any reference to the term “ramp services”, should that be necessary later in the decision, will be on the basis of my understanding from my own research, and I shall explain my understanding at the appropriate time.

   The substantive opposition

   Grounds of opposition

   13.   The Notice of Opposition raised nine grounds of opposition.  At the Hearing, the opponent relied only on those grounds under section 44, section 60 and section 42.  For completeness, I find the remaining grounds have not been established.

   Evidence

   14.   The evidence filed and served is as set out below:

Declarant	Date Declared	Exhibits
Evidence in Support
Jeffrey William Fairbairn	21 June 2004	JWF-1 – JWF-21
Evidence in Answer
Thomas Edward Fraser	7 April 2005	TEF-1 – TEF-27
Evidence in Reply
Viet-Chau Tran	8 September 2005	VXT-1

15.   The Fairbairn declaration refers to the opponent’s stable of trade marks as a whole, and goes to providing information about the worldwide reputation of these marks.  It gives a history of the opponent’s business, and provides figures attesting to impressive sales and delivery activities worldwide.  It details the company’s activities in Australia since the provisions of services began in the late 1980s.  The declaration is supported by 21 exhibits giving a variety of examples of trade mark use, both within Australia and in other countries. 

16.   The Fraser declaration served as evidence in answer is set out in a similar way to the Fairbairn declaration.  It also provides a history of the applicant’s business, the use of its stable of trade marks worldwide and in Australia, and is supported by 27 exhibits which give a similar variety of example of trade mark use within Australia, and within other countries. 

17.   The Tran declaration filed as evidence in reply provides a copy of the worldwide settlement agreement signed by both parties in July 1994.  I shall refer to these declarations in greater detail where required later in my discussion.

Submissions

18.   In its submissions delivered at the Hearing, the opponent specified their case as follows:

“It is the opponent’s case that registration of the trade mark should be subject to the condition or limitation that it not be in respect of the following services:

a)Maintenance of aircraft and surface aircraft parts, equipment, ground and line maintenance in class 37

b)airport services, namely, receipt and dispatch of passenger baggage, handling of passengers, ramp services in class 39

c)              maintenance of aircraft and aircraft parts in class 42.”

19.   The submissions in respect of the grounds of opposition under section 42 refer to the agreement between the two parties, signed under the laws of the State of New York, United States of America, in July 1994.  This agreement defines the way in which the two parties intend operating in their respective markets, in order to, in the words of the agreement:  avoid possible conflict and confusion among the public and the trade and others concerning the respective activities of UPS and UAL and concerning the origin of the products and services identified by their Marks …”.  The opponent submits that the applicant’s use of the UNITED SERVICES trade mark in respect of the item “ramp services” would be contrary to law because it would amount to a breach of the agreement signed between the two parties.

20.   Grounds raised under section 44 also refer to this agreement, but in the context of defining the close relationship between the services of both parties.  The opponent quoted registered trade mark 425182 as the basis of its section 44 ground, the trade mark details being as follows: 

Name	No.	Class and services	Priority Date
UNITED PARCEL SERVICE	425182	39: Services of transportation of written communications, documents and other property by diverse modes of transportation	12 April 1985

21.   The opponent submitted that the two trade marks were deceptively similar as the applicant’s trade mark contained two of the three words making up the opponent company’s trade mark.  In addition, the applicant’s trade mark incorporated the first and more emphatic part of the opponent’s mark, the word UNITED.  Therefore, it submitted, there was a real tangible danger that a consumer would be caused to wonder whether there was a connection between the trade marks, based on the likelihood of a person who knows the opponent’s trade mark (UNITED PARCEL SERVICE) making the assumption the applicant’s mark (UNITED SERVICES) is simply a variation of it, and regard the services as emanating from a single trade source.

22.   The opponent submitted that its claimed services in the above noted registration are similar to the services noted in paragraph 16 above.  It said that as the trade marks were deceptively similar and the services likewise were similar or the same, the ground under section 44 was made out.

23.   In respect of section 60, the opponent claimed extensive use within Australia since February 1987, with an estimated market share within the country over the last three years of approximately 11 to 12%.  This, it said, amounts to a reputation within Australia such that the applicant’s mark in use in respect of the opposed services would be likely to deceive or cause confusion.

24.   The applicant submitted that its trade mark was neither substantially identical nor deceptively similar to the opponent’s UNITED PARCEL SERVICE trade marks.  It made this claim on the basis of the notoriety of the word UNITED in respect of the applicant’s broader trade mark usage in the field of aviation and air transportation, and its extensive use of the UNITED SERVICES mark in relation to the services relevant to the application. 

25.   The applicant also submitted that it was entitled to registration pursuant to the provisions of paragraph 44(3)(a) – honest concurrent use - because of its fame and notoriety in respect of the services claimed.  It claims use of the trade mark since 1999 following the launch in 1995 of a specialised business unit offering airline related services to other airlines.  It claims use of the UNITED SERVICES mark in Australia from 2000, when it began promoting its services to Australian airlines.

26.   The applicant also submitted it was entitled to registration pursuant to the provisions of paragraph 44(3)(b) – other circumstances – because of the two parties’ long history of coexistence.  In support of this it provided reference to the inter-party agreement mentioned previously in paragraphs 19 and 20.  The applicant’s view of the terms of this agreement differs markedly from that of the opponent.

27.   Rather than go into any further detail, I will deal with particular parts of both sets of submissions when necessary during my discussion later in the decision.,

Discussion and Reasons

Grounds of opposition under section 42

28.   Section 42 reads as follows:

Trade mark scandalous or its use contrary to law

42. 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.

29.   The opponent’s submissions in respect of this ground refer specifically to subsection 42(b) – use contrary to law.  The basis of their arguments in respect of this ground is that the applicant is using its trade mark in contravention of the terms of a worldwide coexistence agreement drawn up and signed by the two parties under the laws as they were in the State of New York, United States of America, in July 1994, and that this use is therefore contrary to law. 

30.   Madgwick J, in Advantage[1] pointed out that section 42 requires delegates of the Registrar to decide if use of a trade mark would be contrary to law.  It is now clearly understood that this involves the full range of statute law.  Moreover, once an allegation of breach of other law, such as, for example, a claim of passing off, is made, the Registrar is obliged to take such an allegation into account, and determine whether the relevant law would, rather than could, be breached. 

[1] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

31.    Both parties to this opposition have apprised me of the agreement between them.  The opponent is of the opinion that the applicant’s use of its trade mark on the item “ramp services” within the Class 39 specification is, or would be, clearly in contravention of the agreement.  The applicant is of the opposite opinion.  It is necessary for me to decide if the applicant’s notional use of the trade mark UNITED SERVICES in respect of that item, would be contrary to the terms of the agreement between the parties, and therefore would be contrary to law.

32.   The relevant terms of the agreement need to be set out here to make it clear what I am attempting to decide.  There has been no indication from either party that the terms of this agreement are confidential, so I intend to quote those parts of the agreement necessary to clarify the matter.

33.   The relevant parts of paragraph 4 of the agreement read as follows:

UAL [United Airlines Inc] shall not use or seek to register, in Roman characters or in any other characters, including any transliteration or translation, UNITED alone or with any device element or elements or word or words … as a trade mark or service mark or trade name or corporate name or in any promotional material or in any other manner anywhere on or in relation to the Property Service …

34.   Property Service is defined in subparagraph 1(b) as being:

Service of transporting and offering to transport property, packages, letters and documents and like items by various means of transportation, and the dissemination of brochures, pamphlets, advertising material, like printed matter and other promotional material … and goods relating to said services

35.   The current version of the Oxford English Dictionary available online gives the following definition of “ramp”, in the context of airport services:  4. orig. U.S. The point or area at an airport where unloading and loading of aircraft takes place; the ‘apron’.  Using this definition and the normal methods of English language construction, “ramp services” will refer to those services taking place in an airport on the “ramp”, or “apron”.  My own research on the Internet confirms this meaning for the term at this very basic level.

36.    Attachment TEF-10 to the Fraser declaration details the applicant’s “ground handling” services within the category “airport services” as including “ramp services”.  The most recent listing of services within this category as set out in the applicant’s evidence is as follows:

• Marshalling
• Push-back and towing
• Baggage handling
• Positive bag match
• Cabin cleaning and provisions
• Water and lavatory services
• Ramp supervision
• De-icing services

My Internet research confirmed this list as representative of the services other airlines identify as “ramp services”. 

37.   It stands to reason that ramp services must include the unloading and loading of anything meant to be carried within an aircraft hold, as well as those other services that must be provided to prepare an aircraft for its next journey.  If the airline carries general cargo or mail, then “ramp services’ will involve the loading and unloading of these items.  The question is whether these services, in the context of the applicant’s services claim, and the use to which the trade mark could be put were it to be registered, are services forming part of the “property service” set out in the agreement.

38.   I am not satisfied they are.  Ramp services appear to be a necessary part of the running of an airline that carries passengers and/or freight.  The airline would not be able to operate without them, whether they provide them on their own behalf, or contract someone else to provide them. The services appear to be a complex amalgam of activities, of which unloading an aircraft is but a part.  They do not appear to be a delivery service per se.  While they handle the goods which would be consigned to a carrier involved in goods delivery, they are incidental to the airline service, rather than being in the nature of a delivery service.

39.   I am therefore not satisfied that the applicant’s use of its trade mark in respect of these services would be contrary to the terms of the agreement.  If my reading of the services is incorrect, then the contract terms could be breached.  But I must be satisfied the use would be, not could be, contrary to law, and I find I am not so satisfied.  This ground of opposition therefore has not been established.

Grounds of opposition under section 44

40.   Section 44 deals with the issue of conflict between trade marks.  For an opponent to establish grounds under section 44, it must demonstrate the following:

• The application must have a later priority date than that of the cited trade mark;
• It must be substantially identical or deceptively similar to the cited trade mark and
• It must be for similar services

41.   There is no question but that the opponent has two registered trade marks relevant to this opposition, both having earlier priority dates.  Trade mark 425182 was noted in paragraph 20 previously, and the applicant itself in its submissions refers to trade mark 721155, details of which are shown in the end note to this decision.[i]  

42.   The issues to be decided then, are whether the applicant’s trade mark is substantially identical or deceptively similar to those of the opponent, and whether the service claims involve the same or similar services.  

43.   In the Woolworths Metro decision[2], at paragraph 39, Wilcox J stated that:

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.

[2] Registrar of Trade Marks v Woolworths Limited 45 IPR 411

Accordingly, I will first discuss whether the services of the parties are the same or of the same description.

Comparison of services – 425182

44.   Section 14 of the Act relevantly allows:

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.

45.   The language of section 14(2) suggests the same sort of evaluative process as that enunciated in In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372, and applied in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, should be applied to the question of whether services are ‘of the same description’.

46.   Relevant at this point are the delegate’s comments in the Cesar Ritz decision[3], where he was extracting principles from the Full Bench decision in the Chifley Tower case,[4] as follows:

Thus, what I am to consider is the intrinsic nature of the services and the trade channels through which they are delivered, and 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.

[3] The Ritz Hotel Limited v Institut Hotelier Cesar Ritz SA [2003] ATMO 28

[4] Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561 at 567

47.   The opponent is objecting to part of the applicant’s claimed services, as set out in paragraph 18, claiming they are similar services to its own claim of “transportation of written communications, documents and other property by diverse modes of transportation”. 

48.   There are some issues which need to be clarified here.  Firstly, the applicant’s claim in class 42 does not cover “maintenance of aircraft and aircraft parts” per se, but is for engineering services, namely, design and technical advisory and consultancy services involved with maintenance of aircraft and aircraft parts.  I do not see any similarity between the opponent’s transportation services and such design and advisory services.  The specific services mentioned in class 42 are thus not similar to the opponent’s services.

49.   Neither do I see that maintenance of aircraft and surface[5] aircraft parts, nor equipment, ground and line maintenance as similar service to general goods transportation services.  The only connection appears to be that the opponent uses aircraft whilst delivering goods for its clients on some of its routes, and these aircraft will need maintenance at various times.  Such use of aircraft does not necessarily equate to a perceived connection in the course of trade with the services of aircraft maintenance, nor of the general maintenance services carried on around airports the aircraft use during delivery runs.  I do not consider there is an expectation on the part of the general public that a goods delivery company will offer to them general maintenance services for goods carrying vehicles.

[5] The inclusion of the word “surface” in the applicant’s specification appears to be an error which occurred during the amendment process prior to acceptance of the application.  The original claim is for “aircraft and surplus aircraft parts”.  However, the word “surface” was provided by the agent, and was taken at face value by the examiner.  The application was accepted with the specification as it stands.  I am not convinced it makes sense in the context of the applicant’s activities.

50.   This leaves only a consideration of the services in class 39.  The applicant has specified its class 39 services as “airport services namely receipt and dispatch of passenger baggage, handling of passengers, ramp services”.  The opponent is claiming goods delivery services as noted before. 

51.   A most relevant part of the applicant’s specification is the word “namely”, as use of that word tightly specifies the services.  The only services covered by the applicant’s claim are those which can be described as “airport services”.  It does not cover any services which do not fit into this description.  Most of the applicant’s claim is clear in this respect – receipt and dispatch of passenger baggage and handling of passengers - clearly specific airport services, and clearly not general delivery services. 

52.   This brings me to the question of what the claim for “ramp services” covers and whether these services do conflict with the delivery services the opponent claims.  This has already been discussed above in paragraphs 35 to 38 while considering the question of use contrary to law. 

53.   As noted, the services the applicant has claimed are specific to the running of an airline, and more specifically are only carried out at the airport.  They do not appear to me to be in any way likely to be confused with general goods delivery services.  While the services involve the physical handling of goods, some of which no doubt are in the process of delivery to an ultimate recipient, they are not goods delivery services.  They are simply a part of the processes which must be undertaken at an airport when the baggage hold of an aircraft has to be loaded or unloaded.  I do not find the applicant’s claimed services similar to those of the opponent.  The ground of opposition in respect of section 44 has therefore not been made out for the opponent’s registration 425182.

Comparison of services - 721155

54.   For completeness, given this trade mark has been mentioned in the proceedings, I shall consider whether the services claimed are similar to those of the application.  The services, noted in the end note to this decision, cover 4 classes.  Broadly they cover a range of administrative and business management services in class 35, insurance and financial services in class 36, electronic message etc services via various means in class 38 and a broad claim in class 42 for varying services, including veterinary services, legal services, scientific and industrial research services in class 42.  The applicant meanwhile is dealing in the services noted above. 

55.   I consider the opponent’s range of services here is even further removed from the applicant’s services than is the case with registration 425182.  There is little if any nexus of similarity between any of the services offered by both parties.  I do not consider the two sets of services are similar or of the same description. 

56.   Accordingly, I find the services of the trade marks under consideration are not the same services, nor are they similar services. 

Comparison of trade marks

57.   As mentioned above in paragraph 40, for an opponent to substantiate grounds under section 44, all three considerations must be met.  I have found that the services are not the same or similar, and thus all three considerations cannot be met.  However, if my reading of the services issue is not correct, and because the opponent had raised grounds under section 60, it is appropriate that I consider whether the trade marks are at least deceptively similar.

58.   The expression “deceptively similar” is defined in section 10 of the Act: 

Definition of deceptively similar

10. 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.

59.   The appropriate tests to be applied in determining deceptive similarity were set out by the Full Bench of the Federal Court in the Hill Of Grace decision[6], as follows:

There is no room for doubt, in general terms, about the test to be applied. In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ described it as follows:

"But, in the end, it becomes a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side. 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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."

Equally well known is the following passage from the judgment of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415:

"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 television exhibitions."

Windeyer J added, at 416, that "[the] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone but, by the effect of that similarity in all the circumstances". Thus, for instance, although the present Trade Marks Act contains no analogue of s 66 of the Trade Marks Act 1955 (Cth), it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade. (My emphasis)

[6] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at paragraph 40

60.   The opponent claims the trade marks are deceptively similar because the application mark consists of two of the three words which make up the opponent’s trade mark, and the application mark is thus likely to be seen in the marketplace as a version of its own mark. 

61.   The applicant submits the word UNITED solus has a degree of notoriety as envisaged by Branson J in her comments in the Woolworths Metro case[7] and is therefore not likely to be confused with the opponent’s mark. 

[7] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at para 61. I note Justice Branson was the dissenting judge in this case.

62.   There is an element of truth in both positions.  The applicant’s trade mark, UNITED SERVICES, comprises two words of the opponent’s three word mark, UNITED PARCEL SERVICES.  On a side by side comparison, the trade marks have similarities, but are not substantially identical. 

63.   The applicant had a number of trade marks for the word UNITED alone and with a stylized U device, all of which may feed into the degree of notoriety Justice Branson envisaged in the quoted reference.  I do not intend to make a determination on whether or not this notoriety exists at this stage.

64.   However, I note there is one aspect of the word UNITED which neither party has mentioned:- the word is one which is far from uncommon in commerce.  From my own knowledge of the general marketplace I am aware that many different commercial organizations use the word “united” within their names.  I am aware the word is often adopted when firms or groups of people amalgamate into a single organization in order to offer particular goods or services.  Indeed, both parties to these proceedings mention such amalgamations in their respective early histories.

65.   I am satisfied, based on my knowledge of commerce, that the buying public will be familiar with the need to differentiate between trade marks which incorporate the word UNITED.  The Macquarie Dictionary defines the word as meaning, in part, “combined” or “formed by the union of two or more things, bodies”.  These meanings are as likely to strike the consciousness of the person in the marketplace as are the references to either of the parties involved in this opposition. 

66.   Given the surrounding circumstances, the purchasing public is thus likely to be more careful in determining whether the particular UNITED mark they are faced with refers to the commercial entity they wish to deal with.  Applying the tests articulated above, and taking into account all the circumstances surrounding the trade marks, I consider the likelihood of confusion between two trade marks to be minimal.  I do not find the two trade marks to be either substantially identical or deceptively similar.  I find the ground of opposition based on section 44 is not established.

Ground of opposition under section 60

67.   To satisfy s.60, the opponent has the burden of establishing the following elements:

• a pre-existing trade mark;
• substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;
• the acquisition of a reputation in Australia by the pre-existing trade mark; and
• a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

68.   The opponent has nominated its pre-existing trade mark, and I have found it not to be deceptively similar to that of the applicant.  The ground under section 60 therefore cannot be established. 

69.   However, I think it is useful here to refer to the issue of claimed reputation in the opponent’s trade mark, UNITED PARCEL SERVICE.  The Fairbairn declaration and its exhibits provide a substantial quantity of material, with impressive sales figures, both worldwide and within Australia.  However, this material, while it demonstrates some little use of the opponent’s UNITED PARCEL SERVICE mark, in the main demonstrates use of the letters UPS on their own, or of either of the following trade marks:

70.   The opponent has demonstrated to me a considerable reputation in any of the three versions of its UPS letter trade mark, but I do not consider this reputation can be said to transfer to the full word mark, UNITED PARCEL SERVICE.  The opponent’s evidence puts its weight on the “shorthand” reference to the company, UPS, and the majority of examples of the trade marks in use are the letter marks.  While it is clear from the evidence that the opponent company owns all these trade marks, what has been put before me convinces me the reputation, at least in the Australian market, lies in the letter marks, not the word mark.  Even had I found the applicant’s trade mark to be deceptively similar to the opponent’s, the evidence the opponent supplied does not establish a reputation in the appropriate trade mark.  The ground under section 60 could not be established.

Decision.

71.   I have found none of the grounds of opposition have been established.  Therefore, the opposition fails.  The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.       

Costs

72.   It is usual for costs to follow the event.  As the opponent has been unsuccessful in the opposition, the applicant for registration is entitled to its costs.  I therefore award costs against the opponent, United Parcel Service of America, Inc, in accordance with the official scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

14 June 2006

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Trade mark no:  721155	Class 35:  Advertising services; business management services; business administration services; office functions services; providing computerized tracing of packages in transit; distribution of samples; management assistance services; management consulting services
UNITED PARCEL 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; computer programming services