Viner Finance, Inc. v Sal. Oppenheim Jr & Cie AG. & Co. KGaA
[2017] ATMO 24
•24 March 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Viner Finance, Inc. to extension of protection to Australia in relation to IRDA nos. 1170919 (IR No. 917382) Sal. Oppenheim (9, 14, 16, 35, 36, 38, 42, 45); 1174360 (IR No. 919167) Oppenheim Group (35, 36); AND 1181837 (IR No. 923318) Oppenheim Gruppe (35, 36) - in the name of Sal. Oppenheim Jr & Cie AG. & Co. KGaA.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Ken Hamilton of Spruson & Ferguson. Holder: No appearance or submissions. |
| Decision: | 2017 ATMO 24 Oppositions under Reg 17A.29 of the Trade Marks Regulations 1995 – sections 44, 60, 62A and 42(b) of the Act – two oppositions established under section 44 and one partially established – no other grounds successful - costs awarded accordingly. |
Background
This matter concerns three oppositions to the extension of protection to Australia for International Registrations Designating Australia (collectively, ‘the IRDAs’) in the name of Sal. Oppenheim Jr & Cie AG. & Co. KGaA (‘the Holder’). On 2 October 2006, the Holder had applied to extend protection of its three International Registrations to Australia and the current details of those applications are extracted below:
| IRDA No: 1170919 (International Registration no. 917382) Trade Mark: Sal. Oppenheim Convention Priority Date: 21 August 2006 (Germany) Specification of Goods & Services: Class 9: Data processing equipment, computers, automatic distribution machines, accounting machines, computer programs, data processing installations, false coin detectors, money counting and sorting machines, identification cards, interfaces, magnetic cards, smart cards, cash registers, electric checking (supervision) apparatus, readers (data processing equipment), software, word processing apparatus, monitoring apparatus
|
| 2. IRDA No: 1174360 (International Registration No. 919167) 3. Trade Mark: Oppenheim Group 4. Convention Priority Date: 21 August 2006 (Germany) 5. Specification of Services: Class 35: Economic forecasting, handling orders about purchase and selling of stock exchange via the Internet and other services; professional business consultancy relating to company mergers and acquisitions
|
| 6. IRDA No: 1181837 (International Registration no. 923318) 7. Trade Mark: Oppenheim Gruppe 8. Convention Priority Date: 21 August 2006 (Germany) 9. Specification of Services: Class 35: Economic forecasting, handling orders about purchase and selling of stock of stock exchange via the Internet and other online services; professional business consultancy relating to company mergers and acquisitions
|
The history of the progression of the IRDAs through the administrative process has been lengthy and fraught with complications. The IRDAs were initially examined under the provisions of the Trade Marks Regulations 1995 (‘the Regulations’) and accepted for possible extension of protection to Australia in March 2008.
However, the acceptances of the IRDAs were later revoked in July 2008 under r 17A.27[1] of the Regulations as the Registrar had found that they should not have been accepted under section 44 of the Trade Marks Act 1995 (‘the Act’) in the face of trade mark registration no. 532788.[2] Subsequently, the examination of the IRDAs continued until it became clear that an error had occurred in the office - namely, that at the time the acceptances were revoked, a letter of refusal had not been sent to the International Bureau (‘IB’) in accordance with the Regulations.
[1] Prior to amendments introduced by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).
[2] This trade mark registration is owned by the Opponent and relied upon for the purpose of these oppositions. I will return to the detail of that trade mark registration later in this decision.
Under r 17A.16 of the Regulations, an adverse report to the Holder of an IRDA must be sent through the intermediary of the IB. The effect of the regulation is that if a notification of a provisional or final refusal at the end of 18 months has not been sent, protection of the IRDA must be extended to Australia. Therefore, despite the existence of a ground for rejection against the IRDAs, they proceeded to acceptance and notices of those acceptances were published in the Official Australian Journal of Trade Marks on 24 November 2011 (five years after the convention priority date).
In the meantime, the possibility that an opposition may be filed after the 18 month period was a notification that had been sent by the office to the IB.
Notices of opposition to the extension of protection of the IRDAs (‘the Oppositions’) were then filed on 24 February 2012 by Viner Finance, Inc. (‘the Opponent’). The notices nominated grounds under the Act by virtue of r 17A.31 of the Regulations. The grounds of opposition to extension of protection for the IRDAs were those under sections 41, 42(b), 43, 44, 58, 58A, 59, 60, 62(a), 62(b) and 62A of the Act.
The Oppositions went through a number of suspensions due to negotiations but, ultimately, evidence was filed by the Opponent in respect of all the oppositions comprising:
o Declaration of Dennis McNamara (Secretary of the Opponent) made 17 December 2013 with exhibits 1 to 4.
o Statutory Declaration of Ken Hamilton (Australian legal representative of the Opponent) made 19 December 2013 with exhibits KH-1 to KH-6.
After seeking an extension of time, no evidence in answer was filed by the Holder for any of the oppositions. A cooling off period was later sought and granted, followed by two further suspensions of the opposition proceedings. On 2 March 2016, the Holder requested to be heard on the opposition to IRDA 1170919.
On 6 April 2016, the Registrar wrote to the parties in relation to two of the IRDAs (nos. 1174360 and 1181837) indicating that, as a hearing had not been requested for those oppositions, they would be given in due course to a delegate of the Registrar of Trade Marks to decide on the basis of the material comprising the written record. On 12 May 2016, the Holder also requested to be heard on the oppositions to IRDAs 1174360 and 1181837.
It was brought to my attention that a decision was then made in the office for all three oppositions to be heard concurrently and it also appears, on the information I have to hand, that this decision was made without seeking input from the parties. I do not think that anything substantive turns on this omission by the office to seek representations but I mentioned to Mr Hamilton at the hearing that it is usual for the office to seek input from the parties before scheduling matters in this fashion. In any event, all three oppositions to the IRDAs were subsequently set down by the office to be heard in Canberra on 23 January 2017. As a delegate of the Registrar of Trade Marks I was allocated to hear and decide the oppositions.
In my capacity as delegate, I invited the parties to supply a written summary of arguments prior to the hearing. The Opponent provided its summary indicating that it was pursuing grounds of opposition under sections 42(b), 44, 60 and 62A of the Act. The Holder did not file any written submissions and at the same time indicated that it was not going to appear at the scheduled hearing.
I heard the oppositions on the scheduled date. Mr Ken Hamilton of Spruson & Ferguson appeared by telephone and there was no appearance by the Holder.
Onus
The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[3] The rights of the parties are to be determined as at the date of the application[4] which is generally, but not always, the filing date.[5] In these matters the relevant date is 21 August 2006, being the convention priority date for the IRDAs.
Reasons
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].
[5] See sections 6, 12, and 72 of the Act.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(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.
In order to successfully establish the ground of opposition under section 44 of the Act for each IRDA, the Opponent must identify an earlier filed trade mark application or registration that is in respect of similar/closely related goods or services to the Holder’s goods and services and is substantially identical with, or deceptively similar to, the IRDAs.
The Opponent is relying on its trade mark registration, the details of which are set out below:
Trade Mark No: 532788
Trade Mark: OPPENHEIMER (‘the Opponent’s trade mark’)
Priority Date: 18 April 1990
Specification of Services:
Class 36: Financial and investment consultation services
The Opponent’s trade mark has an earlier priority date to those of the IRDAs. In terms of the similarity of the services, section 14 of the Act provides that services are similar to other services if they ‘are the same, or of the same description’.
‘Financial and investment consultation services’ in class 36 of the specification of the Opponent’s trade mark are so broad in scope that I find they include or are at least of the same description as the services in class 36 of the IRDAs. The services in class 35 of the IRDAs are business consultancy services with a specific focus on economic forecasting, buying and selling stock, and consultancy on company mergers and acquisitions. These services have the same characteristics, are provided to the same class of customer and are likely to go hand-in-hand with the Opponent’s financial and investment consultation services. Accordingly, I find that these services are also similar.
Even the services in class 35 of IRDA 1170919, which are wider in scope than the services of the other IRDAs, are services similar to those in the specification of the Opponent’s trade mark. That, however, is where the nexus of similarity between the goods and services ends between the Opponent’s trade mark and IRDA no. 1170919.
For IRDA no. 1170919, neither the Holder’s ‘money counting and sorting machines’ claimed in class 9, the ‘gold and silverware’ in class 14, ‘old banknotes’ and ‘old share certificates’ in class 16, consultancy services relating to telecommunications (class 38), ‘operating and maintenance of financial databases’ (class 42), nor ‘personal letter writing’ (class 45) are goods or services that are closely related or similar to the services in class 35 of the Opponent’s specification. In fact, none of the goods and services listed in those classes are similar or closely related to the Opponent’s services. As a result, the ground of opposition under section 44(1) and (2) cannot be established in relation to all the goods and services of that IRDA. I now turn to the comparison of the trade marks themselves.
Deceptively Similar and/or Substantially Identical
The Opponent firstly argued that, on a side by side comparison[6], the IRDAs were all substantially identical to the Opponent’s trade mark. While I have had regard to the Opponent’s arguments regarding the essential feature of the trade marks, I cannot find, on a visual or aural basis that there emerges a total impression of similarity or resemblance between them. I find that they are not substantially identical.
[6] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (414 – 415).
The consideration of whether trade marks are deceptively similar[7] requires a different approach. As Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:
[T]he marks ought not … 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 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.[8]
[7] See the definition in section 10 of the Act.
[8] (1937) 58 CLR 641, (658).
On a visual comparison of the IRDAs with the Opponent’s trade mark, I find that the element likely to be carried away and retained in the recollection of the relevant consumer is the name ‘OPPENHEIM’. On the face of it, this name does not have any meaning in relation to the goods and services and is distinctive and memorable. The common element also has a prominent place in each trade mark.
The fact that the Opponent’s trade mark also contains the suffix ‘-ER’ is a difference that may be evident on a side-by-side comparison, but it does not alter the overall visual impression likely to be recalled by the relevant consumer. Having regard to the aural similarities between the trade marks, In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark it was decided that:
[T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[9]
[9] (1925) 42 RPC 264, (279).
On an aural comparison, the likelihood of Australians slurring the pronunciation of the final syllable is particularly apposite to the present case. I find it more likely than not that the suffix ‘-er’ in the Opponent’s trade mark may be overlooked by the relevant consumers in an aural comparison.
In the Frigiking Trade Mark case[10], it was said that the court’s deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’. Matter which is common to the trade should be to some extent discounted in the comparison between two trade marks.[11] For the purposes of comparison, I find that the English word ‘Group’ or the German equivalent ‘Gruppe’ are words that lack inherent distinctiveness as they are commonly used to describe the manner in which a trading entity is organized. The relevant consumer would therefore pay less attention to that word element and its presence or absence in a trade mark would not significantly affect the likelihood of deception or confusion.
[10] [1973] RPC 739, [752].
[11] Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 58 RPC 127.
Finally, the presence of the name ‘Sal.’ appearing as the prefix of IRDA no. 1170919 is a point of visual and aural difference. Having said that, the common element ‘OPPENHEIM’ nevertheless forms the predominant element of the trade mark and if that IRDA is perceived as a person’s name, Australians have a tendency in everyday parlance to truncate the names of people and refer to the surname only. I therefore find that consumers would still have cause to wonder ‘whether it might not be the case that the two products or closely related products and services come from the same source’.[12]
[12] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50].
Accordingly, I find that the IRDAs are deceptively similar to the Opponent’s trade mark. As there is no evidence from the Holder, the ground of opposition under section 44(2) of the Act has been established in relation to IRDA nos. 1174360 and 1181837 and partially established for some of the services of IRDA no. 1170919.
Section 60
At the priority date of the IRDAs[13], section 60 of the Act provided:
[13] The amendments to section 60 introduced by the Trade Marks Amendment Act 2006 came into effect on 23 October 2006. See Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40, [29].
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia;
and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
I have already addressed the threshold question for the section 60 regarding whether the Opponent’s trade mark and IRDA no. 1170919 are deceptively similar in the above discussion under the section 44 ground of opposition. This ground will therefore be resolved on the question of whether the Opponent has demonstrated that the requisite reputation in Australia existed in its trade mark as at the priority date such that the used of the IRDA on the remaining services in the specification would be likely to deceive or cause confusion in the relevant marketplace.
Legal precedent in Australia points to a requirement that a ‘significant’ or ‘substantial’[14] number of consumers within the relevant trade/market (rather than Australian consumers as a whole) must be likely to be deceived or confused for this ground to be established. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[15] and may depend on the specialised nature of the relevant market.[16]
[14] See Renaud Cointreau& Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.
[15]“Bali” Trade Mark [1969] RPC 472, (496).
[16] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, [20].
The declaration of Dennis McNamara indicates that the Opponent’s trade mark OPPENHEIMER has been used in respect of financial services since at least as early as 1950 in the United States. The Opponent has also used, through its licensee OppenheimerFunds, Inc., the trade mark OPPENHEIMERFUNDS.
There is some evidence before me indicating lengthy use in the United States of ‘Oppenheimerfunds’ and some indication of global growth of the company. However, there is no demonstration in the McNamara declaration of how the Opponent’s trade mark appeared in advertising material to the Australian customer, no indication of the amount of sales of goods/services made to Australian consumers and only bald statements relating to advertising expenditure (e.g. ‘[O]ur annual advertising budget is significant’[17]).
[17] Declaration of Dennis McNamara, [12].
The declaration of Ken Hamilton simply provides the history of the examination of the IRDAs with attached copies of the examination reports to the Holder, along with examiner’s worksheets relating to the acceptance, revocation and later acceptance of the IRDAs. As such, its contents are not relevant to my consideration under section 60 of the Act. There is no more evidence before me relating to the reputation of the Opponent’s trade marks in Australia as at the priority date.
In short, I am not satisfied that the Opponent’s evidence before me demonstrates the requisite reputation in either of the trade marks OPPENHEIMER or OPPENHEIMERFUNDS necessary to enliven the provisions of section 60. I find that this ground of opposition has not been established.
Section 42(b)
Section 42 of the Act relevantly provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)…
(b)its use would be contrary to law.
The Opponent’s argument under this ground of opposition is that the use of the IRDAs would be contrary to law and specifically constitute a breach of section 18 of The Australian Consumer Law[18] and also amount to passing off at common law. This argument is based on the similarity of the trade marks and the reputation of the Opponent’s trade mark.
[18] The Australian Consumer Law came into effect on 1 January 2011. The (now repealed) section 52 of the Trade Practices Act 1974 would therefore apply instead to the IRDAs.
I have addressed the nature and extent of the demonstrated reputation earlier, and it follows that there are not a reasonably significant number of potential purchasers that are likely to be aware of the Opponent’s trade mark and then misled or deceived by the use of the IRDAs. As there is not a reputation in the Opponent’s trade marks sufficient to support a finding that the use of the Trade Mark would deceive or confuse Australian consumers, it follows that the reputation is likewise insufficient to support an argument for misleading and deceptive conduct.[19]
[19] See Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8].
In relation to the tort of passing off, that argument from the Opponent must also fail. As mentioned inEquity Access Pty Ltd v Westpac Banking Corp:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[20]
[20] Equity Access Pty Ltd v Westpac Banking Corp [1989] FCA 506; (1989) 16 IPR 431 [40].
I am not satisfied that the use of the IRDAs would be contrary to law and I find that the ground of opposition under section 42(b) of the Act has not been established.
Section 62A
Section 62A of the Act provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The ground of opposition under section 62A is available to the Opponent as the ground applied to all trade marks accepted on or after 23 October 2006.[21] The IRDAs were accepted well after that date. Dodds-Streeton J in the case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) found in relation to the ground under section 62A:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[22]
[21] Item 36 of the Trade Marks Amendment Act 2006.
[22] [2012] FCA 81, [165]-[167].
The Opponent submits that the Holder would have had knowledge of the Opponent’s international fame and reputation and therefore its decision to apply to register similar trade marks must be regarded as having been made in bad faith.
There is nothing in the evidence before me to indicate that the Holder ought to have been aware of the Opponent’s activities (and as I have already found, the evidence does not establish a significant reputation in Australia of any of its trade marks). The submissions of the Opponent in this regard are accordingly unsupported and baseless. They certainly do not rise to the level of a finding that the Holder’s conduct in filing for extension of protection to Australia of the IRDAs was an action of ‘an unscrupulous, underhand or unconscientious character.’[23]
[23] Ibid.
I find that ground of opposition under section 62A of the Act has not been established.
Decision
At the time of filing the opposition, r 17A.34 provided:
17A.34Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2)The Registrar must tell the International Bureau of his or her decision.
The provisions for decision on oppositions to IRDAs are couched differently to those for national trade mark opposition decisions under section 55 of the Act. The provisions here clearly allow the Registrar to refuse protection to all goods and services listed in the IRDAs or to extend protection for some or all of those goods and services. This decision is guided by the extent to which a ground of opposition has been established.
In these oppositions, the Opponent has established a ground of opposition under section 44 of the Act in relation to all of the services listed in classes 35 and 36 of IRDAs 1170919, 1174360 and 1181837. I refuse protection of the IRDAs in respect of those services.
I extend protection in respect of the goods and services in classes 9, 14, 16, 38, 42 and 45 listed in IRDA no. 1170919 one month from the date of this decision.
If the Registrar is served with notices of appeal before the protection is extended, I direct that the protection shall not occur until the appeal has been withdrawn or discontinued. Otherwise I direct that protection of the IRDAs be subject to any orders of the court.
The International Bureau will be notified of the Registrar’s decision.
Costs
For the opposition to IRDA no. 1174360, I award costs against the Holder under section 221 of the Act in the allowable amounts set out in Schedule 8 of the Regulations. For IRDA no. 1181837, I award costs against the Holder in line with the practice set out in the decision of Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[24]
[24] [2001] ATMO 78; (2001) 53 IPR 591.
I make no award of costs in relation to IRDA no. 1170919.
Heath Wilson
Hearing Officer
Oppositions and Hearings
24 March 2017
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