Urban Clean IP Pty Ltd v Leviathan Consolidated Pty Ltd

[2020] ATMO 164

TRADE MARKS ACT 1995

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

Re:Opposition by Urban Clean IP Pty Ltd to registration of trade mark application 1962108 (37) – UC URBAN CLEANERS YOUR LEISURE IS OUR PLEASURE (Figurative) – in the name of Leviathan Consolidated Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: IP Partnership Applicant: Bloomsbury Legal
Decision:	2020 ATMO 164 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44, 58A and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Urban Clean IP Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Leviathan Consolidated Pty Ltd (‘Applicant’): 

Application Number:

1962108

Filing Date:

16 October 2018

Services:

Class 37: Abrasive cleaning of surfaces; Acoustic ceiling cleaning; Advisory services for cleaning; Au pair services (household cleaning and maintenance services); Boiler cleaning and repair; Boiler cleaning services; Building cleaning; Car cleaning services; Carpet cleaning; Ceiling cleaning services; Cleaning and servicing of portable toilets; Cleaning consultancy and advisory services; Cleaning equipment hire; Cleaning of blinds; Cleaning of boilers; Cleaning of building exteriors; Cleaning of building interiors; Cleaning of building sites; Cleaning of buildings (exterior surface); Cleaning of buildings (interior); Cleaning of clothes; Cleaning of clothing; Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of drains; Cleaning of fabrics; Cleaning of factories; Cleaning of floor coverings; Cleaning of floor surfaces; Cleaning of footwear; Cleaning of furnishings; Cleaning of furniture; Cleaning of hospitals; Cleaning of hotels; Cleaning of industrial premises; Cleaning of leather; Cleaning of machines; Cleaning of motor vehicles; Cleaning of property; Cleaning of public buildings; Cleaning of schools; Cleaning of shoes; Cleaning of shops; Cleaning of streets; Cleaning of structures; Cleaning of textiles; Cleaning of upholstery; Cleaning of vehicles; Cleaning of wall surfaces; Cleaning services; Cleaning services for decluttering homes; Cleaning services for decluttering offices; Crime scene cleaning services; Diaper cleaning; Domestic cleaning; Domestic cleaning services; Drapery cleaning; Dry cleaning; Fur care, cleaning and repair; Hire of cleaning apparatus; House cleaning services; Industrial cleaning services; Installation of central vacuum cleaning systems; Janitorial cleaning services; Leather care, cleaning and repair; Maintenance and repair of cleaning apparatus; Mechanical and chemical cleaning services; Nappy (diaper) cleaning; Office cleaning services; Polishing (cleaning) of floors; Provision of cleaning services; Rental of carpet cleaning machines; Rental of cleaning apparatus; Rental of cleaning equipment; Rental of cleaning machines; Rental of machines for cleaning carpets; Rental of machines for cleaning floor coverings; Rental of machines for cleaning furniture; Rental of underwater abrasive cleaning apparatus; Sanitation (cleaning services); Sewer pipe cleaning; Street cleaning; Vehicle cleaning; Waste removal (cleaning); Window cleaning

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

1. Following the advertisement on 8 May 2019 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 4 July 2019.  The Opponent then filed a Statement of Grounds and Particulars on 11 July 2019 (‘SGP’). The SGP raised grounds of opposition under ss 44, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 22 August 2019.

   Evidence

2. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 14 December 2019 by David Boehm, Director of the Opponent, with Appendix A to G (‘Boehm declaration’).  Much of the Boehm declaration consisted of materials in the nature of submissions and will be treated as such for this decision.

3. The Applicant did not file evidence in reply

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 10 March 2020 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 8 September 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 6 July 2020 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 25 August 2020 (‘Opponent’s Submissions’). 

5. The Applicant sought to file evidence out of time on 27 August 2020 but as this evidence was filed out of time and there was not a compelling case for the Registrar to have regard to this late-filed evidence, I have not had regard to it for the purposes of this decision. The Applicant filed written submissions on 31 August 2020 (‘Applicant Submissions’).

6. At the hearing Samuel Rees, Molly Flynn and Ania Salehirad of the Opponent’s Representative represented the Opponent and Luming Wang of the Applicant’s Representative represented the Applicant, both appearing by video conference.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

8. The Opponent is an Australian company that holds the intellectual property in the Urban Clean Franchise system that it licenses to related entity Urban Clean 1 Pty Ltd ACN 600 479 543 (‘Trading Company’).  

9. The Opponent is the owner of the trade marks listed in Annex 1 below (‘Opponent’s Trade Marks’).  The services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Services’. 

10. The relevant claims/statements in the Boehm declaration can be summarised as follows (noting that I do not summarise the majority of the Boehm declaration which consists of submissions):

    ·     The Urban Clean franchise system was established in 2014 when the Opponent and the Trading Company were incorporated, however a predecessor in title to the Applicant commenced trading as Urban Clean in 2008 and created a website at which has been live since April 2009.

    ·     The Opponent and the Trading Company offer services relating to cleaning, as well as advertising and general business management services.  The Opponent, Trading Company and predecessor in title have used the Opponent’s Trade Marks continuously since 2008.

    ·     The Opponent operates a franchise system with over 60 franchisees using the trading name Urban Clean.

11. The Annexes to the Boehm Declaration contain of snapshots taken of the Opponent/Trading Company’s Facebook page and website, as well as Google Search results and a Google search analytics result.  The Boehm declaration provides no evidence of sales figures, customer numbers, historical trading or advertising expenditure.  It provides no documentary evidence supporting its claims for the number of franchises in its business and provides no evidence of third party recognition, other than a single article (in what appears to be promotional trade journal) and single podcast consisting of interviews with the declarant.  All documentary evidence (other than a single article) postdates the date on which the Trade Mark was applied for.  Finally there is no evidence of any written licence agreement between the Opponent and the Trading Company or evidence going to the control the Opponent has over the use of the Trade Mark.

    The Applicant

12. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

    Grounds of Opposition, Onus and Standard of Proof

13. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44, 58A and 60 of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

14. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 16 October 2018 (‘relevant date’), being the priority date of the application in Australia.[3]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

    [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

    Discussion

    Section 44

15. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

    Section 44 - Identical etc. trade marks

    (1)…

    (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services  (applicant's services) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar     services or closely related goods; or

    (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

    (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

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

    Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

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

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

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

    Note:  For limitations see section 6.

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

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

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

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

    (b)ending on the priority date for the registration of the applicant's trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

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

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

    Section 10 - Definition of deceptively similar

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

16. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

17. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has not provided any evidence or submissions in this opposition there is nothing before me that could demonstrate that the requirements of ss 44(3) and 44(4) are satisfied.

18. The Opponent has particularised this ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. 

19. It is not necessary to discuss the principles behind the third requirement in any great detail.  The Trade Mark is sought to be registered for class 37 services broadly defined as cleaning services.  The Device Mark is registered for various cleaning services in class 37.  The Word Mark is registered for business administration and marketing services in class 35.  The third requirement is satisfied in respect of the Device Mark but not in respect of the Word Mark as business administration and marketing services are not similar services to cleaning services.

    Substantially identical and/or deceptively similar

20. I will now consider whether the Trade Mark is substantially identical to the Device Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] (1963) 109 CLR 407, 414.

21. The Trade Mark and the Device Mark are set out below:

22. On a side by side comparison there are clear differences between the respective trade marks, including the different devices, the use of the UC Logo, and the separate tag-lines.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Device Mark is deceptively similar.

23. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

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

    Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

    [5] Ibid [13].

24. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

    [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [10] [2012] FCA 1022, [38]-[46].

1. The Opponent submits that consumers of the respective goods and services do not spend a significant amount of time and energy researching different providers.  I do not accept this submission.  I note that the respective marks are registered for a variety of corporate cleaning services.  Such services are generally purchased by building or facility managers who would take more care in the selection of a cleaning services provider than, for example, an ordinary consumer selecting a fast-moving consumer product.

2. I note that the key similarities between the marks are the shared words ‘Urban’ and ‘Clean/ers’, and the marks are differentiated by different devices and different tag lines.  In the context of the goods and services for which the Trade Mark and the Device are registered/sought to be registered being cleaning the words ‘urban clean’ are descriptive in that they refer to cleaning services provided in urban areas.  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

3. Stephen J observed[11] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[12]

   [11] Albeit in relation to trade practices.

   [12] 140 CLR 216, 229.

4. There are numerous differences between the respective marks, including the presence of the ‘UC’ Logo, the roof and mop elements, and the words ‘your leisure is our pleasure’ in the Trade Mark. A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘urban clean(ers)’ in respect of cleaning services and other similar services and closely related goods. The Opponent does not have such a monopoly (noting that its registration for the word mark URBAN CLEAN is not for cleaning services). Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the Act.

5. Finally I note that the Opponent, in its submissions, has raised the fact that the Applicant is using the words ‘urban cleaners’ as its trading name and domain name, and suggested that these are relevant surrounding circumstances (and that I should discount elements of the Trade Mark as they are unlikely to be incorporated in all uses of the Trade Mark). For the purposes of s 44 I am only to compare the Trade Mark as it is sought to be registered and the Opponent’s Trade Marks, not some other trade mark as used or potentially used by the Applicant. If the Opponent is concerned with the Applicant’s purported use of ‘urban cleaners’ as a trade mark and trading name, it may seek other remedies in a court of law.

6. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58A

7. Section 58A is reproduced below:

   Section 58A – Opponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)    similar goods or closely related services; or

   (ii)   similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:  For predecessor in title see section 6.

8. As the Trade Mark was not accepted because of s 44(4) or a similar provision of the regulations made for the purposes of Part 17A; this ground of opposition is not available to the Opponent. I find that the Opponent has failed to establish the ground of opposition pursuant to s 58A of the Act.

   Section 60

9. Section 60 of the Act is reproduced below:

   Section 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)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.

10. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[13]

    [13] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

11. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[14]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[15]

    [14] [2000] FCA 1335, [81].

    [15] (1992) 33 FCR 302, 343.

12. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[16]

    [16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

13. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[17] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[18]

    [17] (2000) 50 IPR 1.

    [18] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

14. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[19]

    [19] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

15. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opponent is the owner of Trade Marks 1780437 and 1610931 which have been continuously used in Australia since 2 July 2014.  In addition to the Opponent’s registered Trade mark for the word ‘UrbanClean’, the Opponent uses the website to promote its cleaning services.  Urban Clean is renowned for cleaning commercial spaces, offices and medical centres.  The Urban Clean Franchise System has been promoted across Australia since 2014 and Franchises are located in QLD, NSW, Victoria, ACT and SA.   

16. I refer to my comments in paragraph 10 above regarding the limitations of the Opponent’s Evidence. In summary the Opponent asserts reputation and use but provides no documentary evidence showing any use of the Opponent’s Trade Marks before the relevant date. Furthermore it provides no evidence of sales, advertising expenditure or third party recognition. Finally it provides no documentary evidence supporting its claims that it has 60 franchisees or the locations of these franchisees. In the absence of such evidence I am not satisfied that either of the Opponent’s Trade Marks had, before the relevant date, acquired a reputation in Australia for cleaning services, sufficient for the requirements under s 60(a) of the Act.

17. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Decision

18. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1962108 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

19. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    20 October 2020 

    
    

    Annex 1 Opponent’s Trade Marks

Number	Trade Mark	Priority Date	Services
1619031	(‘Device Mark’)	23 Apr 2014	Class 35: Advertising; business management; business administration; and office functions Class 37: Cleaning services; contract cleaning; carpet cleaning; commercial and industrial cleaning; facility
1780437	URBANCLEAN (‘Word Mark’)	30 Jun 2014	Class 35: Administration relating to marketing; Advice relating to marketing management; Business advice relating to marketing; Business consultancy services relating to marketing; Business consultancy services relating to the marketing of fund raising campaigns; Conducting of marketing studies; Consultancy relating to marketing; Design of marketing material; Direct marketing; Direct marketing and selling by home party plan; Marketing; Marketing advisory services; Marketing agency services; Marketing analysis; Marketing and business development of inventions; Marketing and sales channel management; Marketing assistance; Marketing consultancy; Marketing forecasting; Marketing information; Marketing management advice; Marketing research; Marketing studies; Planning of marketing strategies; Planning services for marketing studies; Preparation of marketing plans; Preparation of reports for marketing; Product marketing; Production of sound recordings for marketing purposes; Production of video recordings for marketing purposes; Promotional marketing; Provision of advice relating to marketing; Provision of information relating to marketing; Research services relating to marketing; Search engine optimisation services (marketing services); Sponsorship (promotion and marketing services); Telephone marketing services; Administration of the business affairs of franchises; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Service to assist in establishing a network of business contacts; Administration of business affairs; Administration of businesses; Administration of the business affairs of franchises; Administration relating to business appraisal; Administration relating to business planning; Advice relating to business management; Advice relating to business organisation; Advice relating to the acquisition of businesses; Advice relating to the sale of businesses; Advisory services for business management; Advisory services for business management; Advisory services relating to business management; Advisory services relating to business organisation; Advisory services relating to business planning; Advisory services relating to business risk management; Arranging business introductions; Arranging business shows; Arranging exhibitions for business purposes; Association services being the provision of business support or advice; Benchmarking (evaluation of business organisation practices); Business accounts management; Business acquisitions consulting services; Business administration; Business administration advisory services; Business administration consultancy; Business advertising services relating to franchising; Business advice; Business advice relating to advertising; Business advice relating to franchising; Business advice relating to marketing; Business advisory services; Business advisory services relating to product development; Business advisory services relating to the establishment of franchises; Business advisory services relating to the management of businesses; Business advisory services relating to the operation of franchises; Business analysis services; Business assistance; Business assistance relating to corporate identity; Business assistance relating to franchising; Business assistance relating to the establishment of franchises; Business consultancy; Business consultancy relating to franchising; Business consultancy relating to the administration of information technology; Business consultancy services relating to data processing; Business consultancy services relating to manufacturing; Business consultancy services relating to marketing; Business consultancy services relating to the supply of quality management systems; Business consultancy to firms; Business consultancy to individuals; Business consultation; Business consultation relating to advertising; Business consultation services relating to franchising; Business counselling; Business data analysis services; Business development services; Business efficiency expert services; Business efficiency studies; Business enquiries; Business evaluation services; Business examination services; Business expertise services; Business feasibility studies; Business finding services; Business franchising consultancy and business support services; Business franchising services (group purchasing, group advertising); Business information; Business information agency services; Business inquiries; Business intelligence services; Business investigations; Business management; Business management advice; Business management advisory services; Business management and administration services supporting utilisation of a global computer network; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of call centres; Business management of outsourcing; Business management of performing artists; Business management of reimbursement programmes for others; Business management of reimbursement programs for others; Business management of sports people; Business management organisation consultancy; Business merger services; Business modelling services; Business monitoring services; Business negotiation of contracts (for others); Business negotiations; Business organisation consulting; Business organization and management of discount services; Business organization consultancy; Business planning; Business planning consultancy; Business project management; Business project management services for construction projects; Business promotion services; Business records keeping; Business recruitment consultancy; Business referrals services; Business relocation services; Business representative services; Business research; Business secretarial services; Business statistical analysis; Business statistical information services; Business statistical studies; Business strategic planning; Business strategy services; Business supervision (on behalf of others); Business surveys; Call centre services being the provision of business information; Collecting business information; Collecting business statistics; Collecting information for business; Collection of statistics for business; Commercial business management; Compilation of business data; Compilation of business directories; Compilation of business information; Compilation of business statistics; Computer assisted business information; Computerised business auditing; Computerised business information retrieval; Computerised business information services; Computerised business records keeping; Computerised business research; Conducting business shows; Conducting exhibitions for business purposes; Conducting of business appraisals; Conducting of business feasibility studies; Conducting of business research; Conducting of internal business communication surveys; Consultancy relating to business acquisition; Consultancy relating to business document management; Consultancy relating to business efficiency; Consultancy relating to business management; Consultancy relating to business mergers; Consultancy relating to business organisation; Consultancy relating to business planning; Consultancy relating to business promotion; Consultancy relating to the establishment and running of businesses; Consultancy relating to the preparation of business statistics; Data base services for business; Data processing for businesses; Data processing for the collection of data for business purposes; Dissemination of business information; Economic analysis for business purposes; Economic forecasting analysis for business purposes; Economic forecasting for business purposes; Economic information services for business purposes; Efficiency or process auditing (examining, reviewing or assessing the working of a business or organization); Evaluation of business opportunities; Information services relating to businesses; Intermediary business services relating to the commercialisation of goods; Intermediary business services relating to the commercialising of goods (wholesaling); Logistics services (business management and organization of facilities and resources); Management advisory services for businesses; Management assistance in business affairs; Management consultations relating to business; Management of business (for others); Management of business offices for others; Management of business projects (for others); Marketing and business development of inventions; Obtaining business statistics (for others); Operation of businesses (for others); Organisational services for business purposes; Organising of business competitions; Outsourcing services (business assistance); Preparation of business reports; Preparation of business statistics; Preparation of documents relating to business; Preparation of statistics (business); Processing of business survey results; Procurement services for others (purchasing goods and services for other businesses); Professional business consultancy; Project business management and administration; Project studies for businesses; Promotion (advertising) of business; Providing business information via a web site; Providing information, including online, about advertising, business management and administration and office functions; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Provision of business advice relating to franchising; Provision of business assistance; Provision of business bureau facilities; Provision of business data; Provision of business information; Provision of business information relating to franchising; Provision of business information relating to joint ventures; Provision of business management assistance; Provision of business management information; Provision of business statistical information; Provision of commercial and business contact information; Provision of information in relation to business administration; Provision of information in relation to business management; Provision of information relating to business; Research of business information; Research services relating to business; Risk management consultancy (business); Service to assist in establishing a network of business contacts; Strategic business consultancy; Strategic business planning; Supervision of businesses on behalf of others; Surveys for business purposes; Technology transfer services (business services); Writing of business reports; Advice relating to business management; Advice relating to business organisation; Advice relating to commercial management; Advice relating to marketing management; Advice relating to personnel management; Advice relating to the sale of businesses; Association services being the provision of business support or advice; Business advice; Business advice relating to advertising; Business advice relating to franchising; Business advice relating to marketing; Business management advice; Marketing management advice; Provision of advice relating to marketing; Business negotiation of contracts (for others); Procurement of contracts (for others); Business negotiation of contracts (for others); Business negotiations; Negotiation and conclusion of commercial transactions for third parties; Advisory services relating to customer service; Compilation of lists of prospective customers; Organisation, operation and supervision of customer loyalty schemes; Sales promotion through customer loyalty programmes (for others); Computerised compilation of customer indexes