Velocity Conveyancing Pty Ltd v Velocity Legal Pty Ltd
[2024] ATMO 38
•29 February 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Velocity Conveyancing Pty Ltd to registration of trade mark application number 2055722 (class 45) – VELOCITY LEGAL – in the name of Velocity Legal Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Ed Heerey KC instructed by Moulis Legal Applicant: Siobhan Ryan KC instructed by Actuate IP |
| Decision: | 2024 ATMO 38 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42, 44, 60 and 62A pursued – s 44 established – evidence of honest concurrent use insufficient – registration of trade mark refused |
Background
This decision concerns an opposition brought by Velocity Conveyancing Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: VELOCITY LEGAL (‘Trade Mark’)
Number: 2055722 (‘Application’)
Owner: Velocity Legal Pty Ltd (‘Applicant’)
Filing date: 5 December 2019 (‘Relevant Date’)
Specification: Class 45: legal advice; legal advocacy services; legal consultancy services; legal information services; legal mediation services; legal services; legal support services; provision of information relating to legal services; advisory services relating to the law
(‘Claimed Services’)
Endorsement: Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied
The acceptance of the Trade Mark for possible registration was advertised on 2 August 2021. The Opponent filed a notice of intention to oppose on 31 August 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 September 2021. The Applicant filed a notice of intention to defend on 22 November 2021.
The Opponent filed Evidence in Support (‘EIS’) on 24 February 2022 and the Applicant filed Evidence in Answer (‘EIA’) on 30 May 2022. No evidence in reply was filed and an oral hearing was requested. Submissions were filed by the Opponent on 17 November 2023 (‘Opponent’s Submissions’) and by the Applicant on 24 November 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 1 December 2023. Ed Heerey KC, instructed by Shaun Creighton of Moulis Legal, presented submissions on behalf of the Opponent. Siobhan Ryan KC, instructed by Colin Cheung and Cameron Lang of Acutate IP, made submissions on the Applicant’s behalf. Scott McKenzie, a director of the Applicant, was present as an observer.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42, 43, 44, 60 and 62A of the Act. However, the Opponent’s Submissions stated that the s 43 ground is not pressed. As such, I treat that ground as abandoned.
To be successful, the Opponent bears the onus of establishing at least one of the above grounds.[1] If a ground of opposition is established in relation to all the Claimed Services, consideration of the remaining grounds is not required. 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 the Relevant Date, being both the filing and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
|
| EIA |
|
EIS
Mr Romano states that he is a director of Synergistic Brands Pty Ltd, Legalx (Aust) Pty Ltd and an associate of Canberra Lawyers Pty Ltd (collectively ‘Legalx Group’) in addition to being a director of the Opponent. The Legalx Group and the Opponent ‘are part of the same corporate group, operating under the same management’ and the latter ‘operates as a holding company, and licenses the Velocity branding rights to the Legalx Group’.[3]
[3] Romano Declaration, [10].
The Opponent is the owner of the following Australian trade mark registration:
Trade mark: Velocity Conveyancing (‘92 Mark’)
Number: 1508292
Priority date: 15 August 2012
Specification: Class 45: legal advice; legal consultancy services; legal services; legal support services; conveyancing (‘92 Services’)
10. According to the Romano Declaration, ‘the Opponent licenses the [92] Mark to the Legalx Group, who in turn operate the Australian legal services and conveyancing business which is operated under the brand Velocity Conveyancing’.[4] This business has ‘operated continuously since 1968’ and the 92 Mark was first used in Australia in 2011 with use being continuous thereafter.[5] In Mr Romano’s opinion, ‘the Opponent enjoys a substantial and a valuable reputation’ in respect of legal services.[6]
[4] Ibid [12].
[5] Ibid [13], [17].
[6] Ibid [35].
11. It is declared that the Opponent ‘brands almost all services’[7] with the 92 Mark and the 92 services are provided throughout the Australian Capital Territory, New South Wales and Victoria. The Opponent also provides its services via a website accessible at <velocityconveyancing.com.au> (‘Opponent’s Website’). The Romano Declaration details the annual turnover and advertising expenditure of the Legalx Group which pertains to use of the 92 Mark.
[7] Ibid [15].
12. Mr Romano discusses the differences between legal and conveyancing services. He states that some jurisdictions permit ‘non-lawyers to provide conveyancing services as licensed conveyancers’ and ‘in many jurisdictions conveyancing services and legal services are
[8] Ibid [24], [29].
[9] Ibid [25].
[10] Ibid [26].
Mr Romano asserts that marketplace confusion is likely because, for example, third party conveyancing software would return results for both parties when a search for ‘velocity’ is conducted. Exhibited to the Romano Declaration is correspondence exchanged between the parties prior to the Application being filed. Specifically, the Opponent emailed the Applicant on 11 September 2019 raising its concerns over the Trade Mark being used in light of the 92 Mark. The Opponent then formally notified the Applicant of the substantial risk of confusion between the trade marks on 19 November 2019. Mr Romano highlights that ‘[a]pproximately, two weeks later, the Applicant filed their application to register the [Trade Mark]’.[11]
[11] Ibid [38].
The remainder of the Romano Declaration contains what are essentially submissions addressing factors under s 44(3)(a) of the Act. Relevantly, Mr Romano does not believe the Applicant completed due diligence before adopting the Trade Mark and considers that the registration of same ‘would significantly diminish the value’ of the Opponent’s Velocity brand. He declares that the Opponent has invested significantly in the 92 Mark for more than a decade and submits that the Trade Mark should not proceed to registration.
EIA
15. The Macklin Declaration details an investigation undertaken to determine whether the Opponent maintains a Sydney office. Mr Macklin attended ‘1 Market street, Sydney NSW 2000’ (‘Address’) on 23 March 2022. He declares that ‘there was no listing for Velocity Conveyancing or any company of a similar name’[12] on the building directory at the Address. Mr Macklin asked the head concierge whether they ‘had any knowledge of Velocity Conveyancing being a tenant in the building’.[13] After attempts to locate the tenant, Mr Macklin was informed that ‘the website says [Velocity Conveyancing] are here but the phone number is not connected and they certainly are not here’.[14] A similar enquiry was made at the café in the lobby of the Address. The café staff member told Mr Macklin that ‘they had been working at the café for three years and had never heard of this tenant, had any enquiries or seen anyone who claimed to be from Velocity Conveyancing’.[15]
[12] Macklin Declaration, [9].
[13] Ibid [10].
[14] Ibid [11].
[15] Ibid [12].
16. The VR Declaration describes an investigation conducted into whether the Opponent operates a physical office space in Melbourne. Ms van Ruiten attended ‘40 City Road, Melbourne VIC 3000’ on 24 March 2022 and observed that the building’s tenant directory made no reference to Velocity Conveyancing. She also spoke with the lobby concierge and security team of the building who both informed her that they were not aware of Velocity Conveyancing being a tenant of the building.
17. The Verma Declaration outlines the Applicant’s adoption of the Trade Mark. Relevantly, a meeting took place between the Applicant’s founding directors on 9 September 2016 in which potential names were discussed. Mr Verma states that ‘Velocity Legal’ was selected ‘because the term “velocity” seemed like the perfect fit’ as ‘it would create connotations of speed and direction, two qualities which matched up with the core brand identity we wanted to create’.[16] After this meeting, the Applicant started developing marketing material featuring the Trade Mark and instructed Applied Marks Pty Ltd (‘Applied Marks’) to file the following application (‘Earlier Application’):
Trade mark: Velocity Legal
Number: 1797893
Owner: Applicant
Filing date: 21 September 2016
Specification: Class 45: legal services; legal support services; legal advocacy services; personal legal services; legal mediation services; legal consultancy services; legal information services; provision of legal services; legal services relating to wills; providing information, including online, about legal services
[16] Verma Declaration, [12].
18. The Applicant’s directors ‘thought it would be prudent’ to obtain specialist intellectual property advice regarding the proposed use of Trade Mark ‘prior to publicly opening [its] doors for business’.[17] Advice was sought from Phillips Ormonde Fitzpatrick (‘POF’) regarding the Earlier Application. On 27 September 2016, Mr Verma met with Michael O’Donnell of POF who recommended undertaking searches of the Australian Register of Trade Marks (‘Register’) as well as ‘general internet searches to see if there were any conflicting marks’ prior to commencing use of the Trade Mark.[18] Mr Verma actioned these recommendations by performing the searches on 28 September 2016 but he does not ‘recall the detail of those searches as they were conducted over five years ago’.[19] Nevertheless, Mr Verma sent a Facebook message on the same day to some of the Applicant’s directors stating that he ‘could not locate any actively registered mark which [Mr Verma] felt could make our use of either “Velocity Legal” or the logo problematic’.[20]
[17] Ibid [15].
[18] Ibid [16].
[19] Ibid [17].
[20] Ibid Annexure RV-2.
19. The Verma Declaration states that the Applicant was notified on 2 November 2016 that an adverse examination report had been issued in respect of the Earlier Application (‘Report’).[21] The Report identified the 92 Mark as a barrier to the Earlier Application’s acceptance. Mr Verma reviewed the Report and ‘conducted online searches for the Opponent’.[22] He concluded that concurrent use of the 92 Mark and the Trade Mark ‘would not cause any problems or customer confusion’ based on several factors including the parties seemingly focused on different markets, operated in different Australian jurisdictions,[23] targeted different clients and provided ‘vastly different services’.[24] In Mr Verma’s opinion, ‘the adverse examination report was a mistake’ because the POF recommended searches would have ‘identified any actual issues’ and ‘IP Australia also did not have context regarding the important differences between the marks and the nuances of [the Applicant’s] business’.[25] Mr Verma explains that the Applicant’s directors ‘decided that no further action was required’ as the 92 Mark ‘was unlikely to be a problem and that confusion in the marketplace could not create genuine issues given the clear difference between the relevant businesses’.[26] The Applicant thus allowed the Earlier Application to lapse in January 2018.
[21] The Report was dated 21 October 2016.
[22] Verma Declaration, [20].
[23] Mr Verma states that the Applicant ‘did not have any clients in the Australian Capital Territory, and obtaining such clients would be challenging given that our office is in Victoria’.
[24] Verma Declaration, [20].
[25] Ibid [20(h)].
[26] Ibid [21].
20. The Verma Declaration acknowledges that the Opponent emailed the Applicant regarding its use of the Trade Mark in November 2019. Mr Verma claims that, at the time of receiving this email, he retained the view that concurrent use of the 92 Mark and the Trade Mark was viable particularly as the parties ‘had been peacefully co-existing for over three years’.[27] Mr Verma opines that ‘there has still been no customer confusion occurring in the marketplace despite the parties co-existing for over five years’ as at the date of making his declaration.[28]
[27] Ibid [23].
[28] Ibid [24].
21. According to the Henshaw Declaration, the Applicant was incorporated on 9 September 2016 and it ‘provides legal and advisory services in a diverse range of legal practice areas’.[29] Mr Henshaw confirms Mr Verma’s version of events regarding the Applicant’s adoption of the Trade Mark and states that public use of the Trade Mark commenced on 3 October 2016. At this time, Mr Henshaw was not aware of any other business providing legal or related services under the name ‘velocity’. The Applicant only became aware of the Opponent and the 92 Mark when the Report was received.
[29] Henshaw Declaration, [14].
22. The Henshaw Declaration mirrors the account given in the Verma Declaration concerning the subsequent online research conducted by the Applicant regarding the Opponent and the conclusion reached that the parties operate in different spaces. Mr Henshaw reiterates that the Applicant’s directors determined consumer confusion was unlikely and the Report ‘was an error’ given the POF recommended searches undertaken by Mr Verma ‘would have identified any genuine issues’.[30]
[30] Ibid [22].
23. The Henshaw Declaration states that ‘the Applicant has not encountered any actual instances of confusion amongst clients or potential clients between itself and the Opponent’.[31] Mr Henshaw acknowledges that the Applicant received an unsolicited email from another firm ‘which may have been intended for the Opponent’ as well as receiving mail for a director of the Opponent in May 2022.[32] Mr Henshaw confirms that the Applicant received an email from the Opponent regarding its use of the Trade Mark on 11 September 2019.[33] Subsequently, the Applicant had a telephone call with the Opponent on or around 23 September 2019. During this call, the Applicant communicated its position that the parties could peacefully co-exist. The Henshaw Declaration claims that the intention behind filing the Application ‘was simply to reflect the continuing peaceful co-existence between the parties’ and asserts that the ‘Applicant does not have, and has never had, an intention to gain any benefit from the alleged reputation and goodwill of the Opponent (which the Applicant denies in any case)’.[34]
[31] Ibid [25].
[32] Ibid [25].
[33] Ibid [27].
[34] Ibid [30].
24. The Henshaw Declaration sets out the Applicant’s use of the Trade Mark since October 2016. The Trade Mark has been used on various print and online mediums including on the website accessible at <velocitylegal.com.au> (‘Applicant’s Website’), Facebook account, signage and business stationery. Annexed to the Henshaw Declaration are historical captures of the Applicant’s Website and various publications displaying the Trade Mark in use. Mr Henshaw claims that the Applicant ‘has received substantial and widespread media coverage’ and this has ‘generated substantial awareness’ of the Trade Mark.[35] Examples of various industry awards and recommendations that the Applicant and its lawyers received between 2017 and 2021 are provided. The Applicant’s annual revenue derived from the provision of the Claimed Services under the Trade Mark has also been disclosed as well as the annual marketing expenditure relating to same.
[35] Ibid [42].
25. The remainder of the Henshaw Declaration details the Applicant’s understanding of Legalx Group’s corporate structure as well as Mr Henshaw’s views concerning the differences between legal and conveyancing services. Mr Henshaw contends that legal services have a different nature and function to conveyancing services. In his experience, ‘the target consumers for legal services and conveyancing services do not meaningfully overlap’ and there ‘is separate legislation dealing with legal services and conveyancing services in all states and territories other than the ACT and Queensland’.[36] Attention is also drawn to the Opponent’s Website which contains no reference to legal services and instead only promotes residential conveyancing services.[37] Mr Henshaw opines that any legal services offered by the Legalx Group is provided by another entity under a different trade mark.
[36] Ibid [67]–[68]. Mr Henshaw explains that in ‘states and territories where there is separate legislation, legal services can only be provided by legal practitioners, while conveyancing services can be provided by non-legal practitioners’. Meanwhile, in the Australian Capital Territory and Queensland, ‘conveyancing services can only be provided by legal practitioners (or by non-legal practitioners under the supervision of a legal practitioner’.
[37] Ibid [57].
Section 44
26. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(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.
...
(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.
27. To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the Relevant Date;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of services and/or goods which are either similar and/or closely related to the Claimed Services.
The SGP nominated the 92 Mark as the basis for this ground of opposition. For context, the 92 Mark formed one of the bases of the s 44 ground for rejection raised during the examination stage of the Trade Mark. Acceptance of the Trade Mark was achieved when the Applicant persuaded the examiner with evidence of honest concurrent use of the relevant marks. I note the mere fact that the provisions of s 44(3)(a) of the Act were applied at the examination stage is not binding and additional evidence has been filed in this proceeding.
It was common ground between the parties that the 92 Mark is registered by another person and has an earlier priority date. Similarly, it was not disputed that the Trade Mark and the 92 Mark are at least deceptively similar and the Claimed Services and the 92 Services are similar.[38] I agree. In short, ‘velocity’ forms an essential feature of each trade mark and this gives rise to self-evident aural, visual and conceptual similarities. Plainly, the trade marks are at least deceptively similar and the 92 Services are similar to the Claimed Services given each contains unrestricted claims for ‘legal advice’, ‘legal services’ and ‘legal support services’. The requirements listed at [27] of this decision are satisfied.
[38] Opponent’s Submissions, [53]–[62]; Applicant’s Submissions, [54].
30. Accordingly, the Opponent has in principle established a ground of opposition under s 44(2) of the Act in relation to all the Claimed Services. However, s 44(2) of the Act is expressed as being subject to s 44(3).[39] The s 44 ground of opposition may thus be overcome if the evidence shows there has been honest concurrent use of the Trade Mark and the 92 Mark in Australia. It is the Applicant who bears the onus of establishing honest concurrent use and this is to be determined as at the Relevant Date.
Honest concurrent use
[39] I note that s 44(2) of the Act is also expressed as being subject to s 44(4). However, prior continuous use was not open to the Applicant given first use of the Trade Mark occurred after the priority date of the 92 Mark.
31. The guiding factors for assessing whether there has been honest concurrent use were summarised in McCormick & Co Inc v McCormick (‘McCormick’) by Kenny J who stated:
The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.[40]
[40] [2000] FCA 1335, [30] (‘McCormick’).
32. A prerequisite to satisfying s 44(3)(a) of the Act is establishing that the concurrent use of the trade mark was honest. The honesty of the use has been characterised as the most important factor, ‘for if it is not honest it is as nothing’.[41] In Tivo Inc v Vivo International Corporation Pty Ltd, Dodds-Streeton J observed:
Honesty in this context has been held to mean “commercial honesty”. Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:
(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are “invented” or are not such as to be obviously attractive to other traders;
(b) the subsequent conduct of the applicant;
(c) the likelihood of confusion;
(d) the applicant’s knowledge of the opponent’s mark; and
(e) whether the adoption of the mark, and the continued use of it, was surreptitious.[42]
[41] Re Granada Trade Mark [1979] RPC 303, 313.
[42] [2012] FCA 252, [246].
33. Simply being unaware of an existing mark at the time of coining a trade mark is not necessarily sufficient to establish that the adoption of the trade mark was commercially honest. A failure to conduct adequate searches or take reasonable precautions in adopting a mark may be fatal to a claim of honest concurrent use. In Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd, Davies J said:
The evidence does not support a finding that either Mr or Mrs Pham knew about the use of similar marks by Insight Clinical Imaging before Insight Radiology commenced using the Radiology marks. Nonetheless, I do not think that it can be said that there has been honest concurrent use of the Radiology marks. In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [293], Dodds-Streeton J found there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark. In Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239, Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of “honestly” within the terms of the good faith “own name” defence under s 122(1)(a) of the Trade Marks Act. In the present case, I have accepted the expert’s evidence that the Google search that Mrs Pham conducted would have come up with Insight Clinical Imaging. Had reasonable diligence been exercised by her at the time, it is reasonable to expect that she would have searched the website and found out that Insight Clinical Imaging was trading in the same field, using similar marks. Whilst there is insufficient evidence from which to conclude that she had looked at the website, the evidence does point to a failure on her part to conduct an proper and adequate search, either because her search was not sufficiently comprehensive to bring up the website in the search result or, if it did, because she failed to visit the website. Furthermore, no searches were done once the IR composite mark had been designed to check whether there were any similar marks used by other traders or before Insight Radiology commenced using the logo. These matters demonstrate a lack of diligence and reasonable care in carrying out adequate searches before the marks were adopted for use by Insight Radiology. It cannot be said that there has been “honest” concurrent use of the Radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with Insight Clinical Imaging’s website and its similar marks. …[43]
[43] [2016] FCA 1406, [125] (emphasis altered) affd Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [103] (Greenwood, Jagot and Beach JJ).
34. The Opponent contends that the Applicant’s case ‘must fail at the first hurdle as there was a “lack of diligence and reasonable care in carrying out adequate searches before the mark was adopted for use”’.[44] Attention was drawn to Mr Verma’s searches of the Register which, ‘if [Mr Verma] carried out an adequately diligent search’, should have uncovered the existence of the 92 Mark.[45] In this context, the Opponent asserts that the ‘only finding open to the Delegate is that [Mr Verma’s] searches were inadequate or that he merely ignored [the 92 Mark]’.[46] Emphasis was also placed on the fact that upon receiving the Report, the Applicant did not seek professional advice, be it from Mr O’Donnell of POF or Applied Marks. In the Opponent’s opinion, the Applicant’s choice ‘to rely instead on its own erroneous understanding of trade mark law constitutes a lack of reasonable diligence which precludes a finding that it acted with requisite objective honesty when it filed [the Application]’.[47]
[44] Opponent’s Submissions, [63] citing Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [103] (Greenwood, Jagot and Beach JJ).
[45] Ibid [65].
[46] Ibid.
[47] Ibid [8].
35. For its part, the Applicant highlighted that it conceived of the Trade Mark independently and promptly filed an application to register the Trade Mark (i.e., the Earlier Application). Relevantly, the Applicant points out that ‘prior to commencing use, [it] took professional advice on appropriate searches and undertook those searches. On the basis of the searches, the Applicant formed a view that its proposed use would not be problematic’.[48] The Applicant submits that there is no evidence Mr Verma ignored the 92 Mark and claims that the view formed by the Applicant was only reached after the ‘Applicant’s directors actively considered the likelihood of confusion’.[49] In the Applicant’s opinion, the fact that the Opponent has not provided any examples of consumers being misled or deceived reinforces the reasonableness of its original view.
[48] Applicant’s Submissions, [4].
[49] Ibid [5].
36. Evidently, the honesty of use is a critical issue on which the parties diverge. For the following reasons, I am not satisfied that the Applicant has satisfied the requisite standard of honesty in its concurrent use of the Trade Mark.
There is no evidence to indicate that the Applicant knew about the Opponent or the 92 Mark when it coined the Trade Mark on 9 September 2016. However, a mere lack of knowledge at the time of conceiving the Trade Mark is not determinative of the matter. The first public use of the Trade Mark is declared to have occurred on 3 October 2016. It is therefore relevant to consider the Applicant’s conduct prior to and after this first use of the Trade Mark. In my assessment, there are issues present within the EIA which, cumulatively, cast significant doubt on the honesty of the adoption of the Trade Mark and its subsequent use.
38. The Opponent’s assertion that Mr Verma’s searches were either inadequate or that he ignored the 92 Mark’s existence holds some weight. Mr Verma recorded the searches recommended by POF in a file note taken during his meeting with Mr O’Donnell. The file note reveals that he was advised, inter alia, to conduct a ‘prefix search (e.g VEL)’, a ‘part word: LOCITY’ search, a ‘Velocity phonetic’ search as well as to ‘search associated classes (45 & associated)’ (collectively ‘POF Searches’).[50] Due to the passage of time, Mr Verma cannot recall the ‘detail of those searches’.[51] However, by his own evidence, Mr Verma ‘spent a bit of time scouring the register’ and did ‘not locate any actively registered trade mark’ which would be ‘problematic’.[52] The published history of the 92 Mark indicates it would have appeared on the Register at the time Mr Verma conducted the POF Searches and no evidence was led by the Applicant to suggest otherwise.[53]
[50] Verma Declaration, Annexure RV-1.
[51] Ibid [17].
[52] Ibid Annexure RV-2.
[53] For example, there is no suggestion that the 92 Mark was incorrectly indexed or had been removed from the Register.
Whilst it is possible for the 92 Mark to have been inadvertently overlooked when the results of a single search were viewed by Mr Verma, the plausibility of this diminishes rapidly given the 92 Mark would have appeared in each of the POF Searches conducted. The likelihood of Mr Verma not identifying any ‘problematic’ mark is remote and difficult to accept particularly when another trade mark containing the word ‘velocity’ existed on the Register and would have appeared in the POF Searches. Indeed, this other mark, being trade mark 1441413 for ‘Velocity Docs by RSK LEGAL’,[54] was raised as a ground for rejection in the Report as well as against the Application some three years later.[55] In this context, it is realistic to expect that at least one of these earlier marks would have been identified if reasonable diligence had been exercised when the POF searches were performed. It follows that the Opponent’s assertion that Mr Verma either did not conduct an adequate search or simply ignored the 92 Mark has considerable merit.
[54] This trade mark is a composite mark that was registered at the time the POF Searches were conducted. It was subsequently removed from the Register in February 2022 being some 5 years after the POF Searches.
[55] Cf Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719, [75] (Davies J).
40. Turning to the ‘internet check’ recommended by POF,[56] Mr Verma does not elaborate on the searches undertaken on 28 September 2016 other than stating he conducted ‘general internet searches to see if there were any conflicting marks’.[57] The evidence indicates a possibility that the Applicant may have become aware of the Opponent when it was incorporated on 9 September 2016 given the Opponent had changed its name ‘to Velocity Conveyancing Pty Limited on 16 August 2016’.[58] On or around the time that the Applicant received the Report, Mr Verma visited the Opponent’s Website. However, the Verma Declaration is silent as to what additional ‘online searches’, if any, were conducted. It appears that any distinctions drawn by Mr Verma between the Applicant and the Opponent were based exclusively on the Opponent’s Website.
[56] Verma Declaration, Annexure RV-1.
[57] Ibid [17].
[58] Romano Declaration, Exhibit PR-2.
41. Meanwhile, there is a logical disconnect between the Applicant allowing the Earlier Application to lapse and its position that the Report was a ‘mistake’ or an ‘error’. Engaging Applied Marks to file the Earlier Application and seeking advice from POF prior to commencing use of the Trade Mark demonstrates that the Applicant was alert to the importance of protecting its intellectual property. The Report was issued in the same month that the Applicant commenced use of the Trade Mark. In this setting, if the Applicant verily believed the Report was a ‘mistake’ or an ‘error’, it is difficult reconcile why it did not dispute the findings of the Report within the 15 month response period. This deliberate inaction is especially peculiar given the Applicant could have readily sought advice from Applied Marks and provided it with instructions to lodge submissions. Alternatively, it could have engaged POF, who at the time had recently met with Mr Verma, to either take carriage of the matter or provide advice. In my view, not responding to the Report and allowing the Earlier Application to lapse is incompatible with a genuine belief that the Report was erroneous.
Furthermore, the explanations of Mr Verma and Mr Henshaw as to why the Applicant persisted using the Trade Mark in the face of the Report are problematic. Like Mr Verma, Mr Henshaw’s deductions regarding the potential for marketplace confusion appear to be based solely on an inspection of the Opponent’s Website.[59] The Henshaw Declaration annexes a screenshot of the Opponent’s Website dated 4 October 2016.[60] This screenshot discloses information that directly contradicts Mr Henshaw’s assertions. For example, Mr Henshaw asserts that the Opponent does not provide legal services and is operating in ‘a completely different jurisdiction’.[61] Yet the screenshot clearly describes the Opponent as being ‘Professional Solicitors focusing on Conveyancing. We have offices in the ACT, Sydney, Regional NSW and Victoria’.[62] In the absence of further explanation, this incongruity undermines the cogency of any deductions made by Mr Verma and Mr Henshaw.
[59] Henshaw Declaration, [22], [57]–[58].
[60] Ibid Annexure AH-55.
[61] Ibid [22].
[62] Ibid Annexure AH-55 (emphasis added).
43. In any event, the Applicant appreciated that it did not have sufficient intellectual property expertise to properly assess its intended use of the Trade Mark. This much is obvious from the fact that the Applicant’s directors, ‘who each are qualified lawyers with practising certificates and personal experience and knowledge of the Australian legal industry’,[63] retained Applied Marks to file the Earlier Application. Indeed, the Applicant considered it prudent to obtain further specialist advice from POF before using the Trade Mark. This approach reflects caution and stands in direct contrast with the Applicant’s subsequent conduct, after it was put on notice as to the existence of the 92 Mark. Even if I accept that Mr Verma’s searches of the Register did not disclose the 92 Mark’s existence, the Applicant was undeniably aware of the 92 Mark approximately one month after it commenced use of the Trade Mark by virtue of the Report. It is surprising that the Report caused the Applicant, who had until that point relied on professional advice, to abruptly change tack and cease seeking further advice from Applied Marks or POF. Instead, it is declared that the Applicants directors took it upon themselves to determine the merits of the Report and whether there was any genuine potential for confusion in the marketplace. This departure from its initial cautious approach is even more pronounced given the Applicant’s directors had no intellectual property expertise and the very act of obtaining professional advice has been described as a ‘basic step’.[64]
[63] Applicant’s Submissions, [19].
[64] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [126] (Davies J).
44. Overall, the Applicant’s conduct leading up to the adoption and use of the Trade Mark does not sufficiently support a claim of honest concurrent use. For the reasons explained above, the POF Searches conducted by Mr Verma were, at best, performed with a lack of reasonable care and, at worst, demonstrative of a blatant disregard for the 92 Mark. The same is true in relation to the purported online searches undertaken by the Applicant and the notable lack of specificity regarding what online resources were consulted when it concluded that marketplace confusion was not likely. Similarly, the Applicant’s inaction with respect to the Earlier Application does not sit comfortably with its asserted belief that the Report was an ‘error’ or a ‘mistake’. Rather, such inaction is perhaps more reflective of a tactical decision made by the Applicant. To this end, the decision to abandon seeking professional advice regarding the potential consequences stemming from the 92 Mark’s existence is glaring. The Applicant’s choice to persist with use of the Trade Mark, based solely on the research undertaken by its directors and their belief that the parties offered different legal services, ultimately ‘reflects adversely upon a claim to honest concurrent use’.[65] In this regard, there is some force in the submission made by the Opponent’s counsel who described the Applicant’s avoidance of professional advice (after receiving the Report) as being akin to burying its head in the sand.
[65] Ibid.
45. Accordingly, I am not satisfied that the honesty of the concurrent use has been established such that it is appropriate to apply the provisions of s 44(3)(a) of the Act. Hence, it is not necessary to discuss the remaining honest concurrent use factors listed in McCormick. For completeness, there is nothing in the evidence which supports the existence of other circumstances that would make it proper to apply s 44(3)(b) of the Act.
46. The s 44 ground of opposition has been established.
Decision
47. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
48. The Opponent has established the s 44 ground of opposition in relation to all the Claimed Services. As such, I refuse to register trade mark application 2055722.
Costs
49. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
29 February 2024
and Edelman JJ).
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
Legal Concepts
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Injunction
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Remedies
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Breach
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Intention
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