Visa International Service Association v Infinity One

[2001] ATMO 115

TRADE MARKS ACT 1995

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

Re:Opposition by VISA INTERNATIONAL SERVICE ASSOCIATION to registration of series trade mark application 809192(36) - INFINITY ONE and INFINITY 1 - filed in the name of INFINITY ONE.

Background

On 2 October 1999, a New York partnership, Infinity One ("Infinity"), filed at the Australian Trade Marks Office ("the Office") an application to register a series of trade marks, as allowed by s 51 of the Trade Marks Act 1995 ("the Act"). The two trade marks which make up the series are Infinity One and Infinity 1. The application claimed a priority date of 26 September 1999, the date of an application in the United States, numbered 790235. Such a claim is allowed by s 29 of the Act. The application specified that the services in respect of which registration was sought were Credit card transaction processing services in International Class 36.

The Office gave the application a number, 809192. In due course, it came to an examiner for consideration. The examiner wrote to the solicitor acting for Infinity, notifying a ground for rejection under s 44, based on registration 753771. Following the submission of argument by the solicitor, however, the citation was withdrawn and the application accepted.

Because it is on this registration that the ensuing opposition relies, it is convenient to set out the relevant details here:

Trade Mark: Infinite

Class 36: Financial services, including banking, payment, credit, debit, charge, pre-paid, deposit access, stored value, automated teller machine, point of sale, point of transaction services and electronic funds transfer services

Owner: Visa International Service Association

On 24 February 2000, the Australian Official Journal of Trade Marks carried the advertisement of acceptance of application 809192.  Within the statutory period of three months that followed advertisement, Visa International Service Association ("Visa") applied for an extension of time to file notice of opposition.  It filed a notice of opposition ("the notice") within the extended time granted, on 22 August 2000.

Visa served its evidence in support on 22 February 2001. Infinity served no evidence in answer. By letter dated 29 May 2000, its solicitors advised the Office that they had ceased to be the address for service of the applicant. The Office wrote directly to the Infinity at its New York address, explaining that the terms of s 215(5) of the Act required it to have an address for service in Australia.

Through its attorneys, Visa requested a hearing.  This was duly set down and notified to the parties.  The letter of notification sent to the trade mark applicant was returned as undeliverable mail.

The matter came before me, as the delegate of the Registrar of Trade Marks appointed to hear and decide it, in Sydney on 25 October 2001.  Mr Gerard Skelly, of the Sydney firm of Spruson & Ferguson, Patent & Trade Mark Attorneys, appeared for Visa, the opponent.  Not surprisingly, there was no appearance on behalf of the trade mark applicant.

Grounds of Opposition

Eight grounds of opposition are listed in the notice.  At the hearing, however, Mr Skelly advised that Visa relied only on the fourth of these.  That ground reads as follows:

The opposed trade mark is substantially identical with, or deceptively similar to, trade mark No. 753771 registered by the opponent in respect of similar services and for which the priority date is earlier than that of the opposed trade mark.

These reasons address only the ground under s 44, based on registration 753771. I see no need to consider grounds on which the opponent does not rely.

Submissions

I will refer to Mr Skelly's submissions in the course of my considerations, below.

Discussion

The Law

So far as it is relevant to this opposition, s 44 provides:

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

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

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

.....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.

The Act defines the terms "deceptively similar" and "similar services":

Definition of deceptively similar

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

Definition of .....similar services

14.(1) .....

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

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

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

The Act contains no definition of substantially identical, nor of likely to deceive or cause confusion.  However, as remarked by French J in Registrar of Trade Marks v Woolworths Limited [(1999) 45 IPR 411 at 425], ("Woolworths") :

The first touchstone of construction is the language of the Act. Some of its words, however, import meanings and applications which have been developed in the case law. Their use suggests the legislature did not intend to jettison the learning that had accrued to them.

At 425 - 6, in words reminiscent of Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co ((1983) 1 IPR 265 at 276), his Honour went on to sound a note of caution in respect of trade marks for services:

Previous case law must, however, be treated with care to the extent that it concerned conflicts between trade marks in respect of classes of goods. There is a somewhat different kind of conflict between a trade mark on goods and a trade mark on services. They are really quite different things. It was said in Kerly’s Law of Trade Marks and Trade Names, 12th ed, Sweet & Maxwell, at 2.08:

… in reality service marks are quite different from trade marks. Goods tend to be more or less durable, and the mark to stay with the goods; the service mark is there to advertise the service beforehand. Thus the service mark is closer in function to a business name, identifying the business as [s]uch as distinct from its products.

In the passage immediately following the above, his Honour summarised what is meant by likely to deceive or cause confusion:

The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5 per Kitto J.

Comparison of trade marks

The matters for consideration in comparing trade marks are well-established.  There is a convenient summary of the case law, (at least as far as it had been developed up until the time of the book's publication), in Chapter 9 of Australian Law of Trade Marks and Passing Off  (D.R. Shanahan, The Law Book Company, 1990) .  Some of the cases involved the registrability of a trade mark, but many have been infringement actions.

As stated by Parker, J (as he then was) in 1906 (Pianotist Co's Appn.(1906) RPC 774 at 777 (Ch.D.)):

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

The terminology of the present Act, like its predecessor, makes a distinction between substantial identity and deceptive similarity.  The appropriate tests for each are to be found in the case law.  The test for substantial identity, which is a narrow test, is notably defined in a frequently quoted passage from The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited ((1963) 109 CLR 407)) , ("Shell").  Windeyer J said, at 414:

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.

The test for deceptive similarity is broader.  At 415 of the same judgement, in a passage quoted with equal frequency, his Honour said:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

In Rysta Ltd's Appn [(1943) 60 RPC 87 at 108 per Luxmoore J, dissenting, but approved on appeal in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65], Luxmoore LJ said:

It is the person who knows only the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  Little assistance is therefore to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.  The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

More recent cases have applied the criteria for deceptive similarity in terms of the present Act.  In MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] 1616 FCA (18 December 1998), ("MID Sydney”), an infringement action on appeal from a single judge of the Federal Court, Burchett, Sackville and Lehane JJ said, at page 11:

About some aspects of the question to be answered [of whether the marks are deceptively similar] there can be no doubt. First, what is to be compared with Touraust's mark is the impression based on recollection of MID's mark that persons of ordinary intelligence and memory would have: The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415. Secondly, deceptive similarity is not to be considered having regard only to MID's actual use of its mark but rather to the extent of its statutory monopoly, that is, having regard to the full extent of the services in respect of which the mark is registered.

In Woolworths, supra, at 428, French J reformulated the classic test for deceptive similarity as follows:

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

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

(ii)A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products or services come from the same source.  It is enough that the ordinary person entertains a reasonable doubt.

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

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

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

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

In the recent infringement case of C A Henschke & Co v Rosemount Estates Pty Ltd [[2000] FCA 1539 (31 October 2000)].("Henschke"), in the joint judgement on appeal of Ryan, Branson and Lehane JJ, in the Federal Court, their Honours said, at paragraph 42:

....it is still true that questions of deceptive similarity must be considered against the background of the usages in the particular trade (Shell at 410).....The significance of surrounding circumstances...was discussed in the judgement of the Full Court in MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 at 245, 246: such circumstances provide the context for consideration of the question whether a near resemblance between two marks is likely to deceive or cause confusion.

Comparison of services

As noted above, a ground for rejection in terms of s 44 depends on the existence of a trade mark registered by another person in respect of similar services or closely related goods. The present circumstances involve a comparison between two sets of services. As defined by s 14, similar services means the same services or services of the same description.

In MID Sydney (supra) the Federal Court considered similarity of services.  The particular services in question were, on the one hand, property management services, and on the other hotel management.  The judge at first instance, Hill J, had found that although running a hotel and managing property might have in common some activities which could be described as "usual adjuncts" to each of those services, that did not mean that hotel management and property management were services of the same description [(1998) 44 IPR 20 at 31]. At pages 9-10 of the decision on appeal, confirming that finding, their Honours said:

Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration..... The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

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

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

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

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

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

This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided.

The tests applied

Visa's registered trade mark 753771 has a priority date of 29 January 1998. It meets the criterion set out at s 44(2)(b).

The rights of the parties are to be determined as at the relevant date of 2 October 1999, which is the date of filing the series application.

In determining those rights, I must consider:

• whether the services in respect of which Infinity seeks registration are similar to those in respect of which Visa's trade mark is registered, and

• whether the two trade marks in the series are substantially identical or deceptively similar to Visa's registered trade mark.

In this instance, I think it is sensible to begin by addressing the question of whether the services are the same or of the same description.  Mr Skelly submitted that the scope of Visa's registration,

Financial services, including banking, payment, credit, debit, charge, pre-paid, deposit access, stored value, automated teller machine, point of sale, point of transaction services and electronic funds transfer services

encompassed the services of Credit card transaction processing services for which Infinity had applied.

It appears to me that Credit card transaction processing services are covered by the credit and the electronic funds transfer services which are specifically included in the registration.  Even if they are not, I believe that Credit card transaction processing services would in any case constitute a subset of the Financial services in respect of which Visa's trade mark Infinite is registered. 

The term Financial services is not limited in any way by the ensuing words of the specification.  It must, I think, be construed at face value.  It would appear to include all services in the class relating to credit cards.  In contrast to the circumstances considered in MID Sydney, supra, it would appear that any credit card transaction processing services, whether visible to the customer who actually uses a credit card or not, is a kind of financial service.  Thus, in my view, the trade mark Infinite is registered for use on the same services as those for which the contested application has been accepted.

I now turn to the trade marks themselves.  Mr Skelly submitted that the trade marks Infinity One and Infinity 1 are substantially identical to his client's trade mark Infinite.  If I did not agree with him on that, he said, I should at least find them deceptively similar. 

I think that, on a side-by-side comparison, the differences created by the addition of the word and arabic numeral forms of the lowest cardinal number, (viz. ONE and 1), taken together with the differences in termination, number of syllables and word function between INFINITE and INFINITY, preclude a finding of substantial identity.

The comparison is therefore the familiar one of trade mark law (Shell, supra): are the trade marks deceptively similar?  In considering this, I should have regard to the trade channels through which the services are provided, (MID Sydney, supra), and the usages in the particular trade (Henschke, supra), so far as I am aware of them.

I think it is reasonable to assume, as Mr Skelly did, that the circumstances of trade in respect of Credit card transaction processing services are services involving the merchant's bank, the credit card holder's bank, and the approval or declining of a purchase.  Equally, as he said, it is not clear whether the services specified are visible at any point to the ordinary customer using a credit card. 

As "behind the scenes" services, Credit card transaction processing services may be services projected to institutional providers and their computer technicians working in the financial services industry.  Such customers are likely to be skilled and sophisticated.  The purchase of Credit card transaction processing services by such persons is, I think, likely to be negotiated through a contract.  It will not be undertaken hastily or carelessly.  For such customers, I think the risk of confusion or deception is likely be low.

However, as Mr Skelly suggested, the services are not so closely defined as to be restricted in this way.  They may involve a call-centre or similar processing set-up.  Staff turn-over in such places is notoriously high.  The persons employed there are likely to be relatively untrained and working under pressure.  The work may well involve aural and oral use of the trade marks, where the slurring and abbreviation of words is likely to increase the likelihood of confusion. 

It is reasonable to assume, in the absence of any evidence from Infinity, that the services are visible at some point to the end-customer.  That person must also be assumed to be unsophisticated, and not necessarily paying close attention to the credit card transaction in his or her purchase of quite small-ticket, humdrum items such as petrol on the way home from work.

In such circumstances of service provision, the similarities between trade marks are more likely to lead to deception or confusion. 

I agree with Mr Skelly also that the addition of a numeral or a number word to a word used as a trade mark is a common enough practice amongst traders in many lines of business.  The word is the essential feature of this series of trade marks, and the part that will command attention.

The evidence confirms Mr Skelly's submissions that the word infinite and its variants are not common in the financial services sector.  It appears not to be a crowded field, in which small variations of infinite would be more easily noted and serve to distinguish between different providers' offerings.

I think it is obvious that words are remembered by meaning, by appearance and/or by sound.  Here we have grammatical variations of the same word, so they are very close indeed in all three components.  Infinite is the adjectival form of infinity, which is the noun.  Their meaning is essentially the same, conveying the idea of something immeasurably great or endless. 

Mr Skelly drew my attention to Johnson & Johnson v Kalnin & Anor [(1993) 26 IPR 435]. In that judgement, assessing the weight to be given to the grammatical differences in word function between the components of Band-aid and Band>>it, Gummow J quoted with approval an expert witness, a Mr B K Martin, who had stated in cross-examination:

With respect I don't believe the average Australian thinks much about these things at all [ie linguistic structure, grammar].  They're in ordinary everyday usage or put it this way, my experience as a teacher of linguistics has led me to believe that it is extremely difficult to get even volunteer students to get a secure mastery of grammatical terminology, so this is only a personal opinion and I suppose it's impressionistic, but I don't believe that most speakers of Australian English are particularly conscious of linguistic structure. [Parenthetic material added].

I think grammatical confusion is probably more likely to occur where the words at issue are not commonplace ones.  That is the case with infinite and infinity. 

Given the very similar appearance and sound of the words infinite and infinity, and their similarity of meaning, I think it is likely that the hypothetical customer will be confused or deceived when encountering Infinity's trade mark used in relation to the same services as Visa's.  I do not think that the presence of the cardinal number, One or 1, in the series of trade marks is sufficient to render this unlikely. 

Decision

I have found that application 809192 is deceptively similar to registration 753771 in terms of s 44 of the Act. In terms of s 55 of the Act, the opponent has therefore established one of the grounds on which the opposition was based. I refuse to register trade mark application 809192.

Costs

Visa sought costs.  Infinity has apparently chosen not to appoint a representative in Australia, nor to attend the hearing, and nor to make submissions in the matter of costs.  In the circumstances, I do not think it is appropriate for me to award costs.

Arminel Ryan

Acting Hearing Officer
21 November 2001