Visa International Service Association v TBM Accountants Pty Ltd

[2024] ATMO 150

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 trade mark application number 2165317 (classes 35 & 36) – BE WHERE YOU WANT TO BE - in the name of TBM Accountants Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Frances St John of Counsel, instructed by Allens Patent & Trade Mark Attorneys

Applicant: Self-represented

Decision:

2024 ATMO 150

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 59, 60 & 62A pressed – s 60 established – trade mark refused registration

Background

1. This decision concerns an opposition by Visa International Service Association (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of TBM Accountants Pty Ltd (‘Applicant’):

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number:   2165317 (‘Application’)

Trade Mark:  BE WHERE YOU WANT TO BE (‘Trade Mark’)

Filing Date:  22 March 2021

Specification:                  Class 35: Accounting; Accountancy; Advertising; Auditing of accounts; Business auditing; Book-keeping; Business appraisals; Tax consultancy (accountancy); Business consultancy services relating to insolvency; Business acquisitions; Consultancy relating to business acquisition; Business merger services; Consultancy relating to business mergers; Provision of commercial information; Marketing; Business management; Business management consultancy; Personnel management; Tax services (business management and accountancy services); Promotional services; Taxation (accountancy) advice; Taxation (accountancy) consultancy

Class 36: Corporate finance services; Financial advice; Financial evaluations; Financial management; Provision of financial information; Brokerage of bonds; Brokerage of securities; Brokerage of stocks; Insurance advice; Pension and retirement and superannuation plans and funds; Real estate advisory services; Provision of information relating to property (real estate); Corporate finance consultancy; Financial consultation services; Consultancy services relating to finance; Consultancy services relating to insurance; Consultancy services relating to investment; Consultancy services relating to personal finance; Consultation services relating to financial matters; Consultations relating to banking; Financial consultancy; Monetary affairs consultancy; Tax consultancy (financial); Share management

(‘Applicant’s Services’)

2. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose the Trade Mark on 25 October 2021 followed by a Statement of Grounds and Particulars (‘SGP’). On 17 February 2022, the Applicant filed its Notice of Intention to Defend. Thereafter, the parties filed their evidence in accordance with the Regulations. The following evidence was filed:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Denise Yee, Vice President of the Opponent (‘Yee’)	20 May 2022	DY-1 with Tabs 1 to 25
Evidence in answer
Con Karykis, Director of the Applicant (‘Karykis Declaration’)	13 February 2023	CK-1 to CK-11

3.     After the conclusion of the evidence stage, the parties had the opportunity to request a hearing.  Both parties asked for an oral hearing and I heard this matter on 5 August 2024.  Prior to the hearing, the parties filed a written summary of their submissions.  At the hearing, oral submissions were made by Frances St John of Counsel, instructed by Miriam Steel and Lena Balakrishnan of Allens Patent & Trade Mark Attorneys, on behalf of the Opponent.  Con Karykis of the Applicant made oral submissions on the Applicant’s behalf.  I make my decision based on the written record comprised of the materials outlined in the preceding paragraphs and oral submissions of the parties.

Grounds, onus and relevant date

4.     In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58A, 59, 60 & 62A.  The grounds of opposition under ss 43 and 58A were not pressed and I treat these grounds as abandoned.

5.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

6.     The date at which the rights of the parties are to be determined is 22 March 2021 (‘Relevant Date’) being both the filing date and priority date of the Application.

Opponent’s evidence

7.     The Opponent is a global payments transaction company which first used its mark VISA in 1976 for payment and financial services and became well known for its credit card (including digital card) services.  It has since expanded its service offerings to include, for example, commercial payment programs, information management services, business consulting and technology services, business advisory services, loyalty programs, expense management tools, security and fraud detection services, mobile platform services, hosting and sponsorship of events.  Collectively, all of the aforementioned services are referred to as the ‘VISA Services.’

8.     The Visa Services are offered in over 200 countries and territories including Australia where the services are provided by the Opponent’s network of 19 Australian consumer banking institutions.  Yee attests that at the time of her declaration, there had been ‘over 230 billion payment transactions using VISA cards, involving over 3 billion VISA cards at over 100 million merchant locations accepting VISA cards, and over 15,000 financial institutions worldwide offering VISA cards to its customers’.  In the 12 months to 30 September 2021, the Opponent transacted $13 trillion on its global payment network.

9.     The Opponent also provides a range of ‘tools and resources’ to small and micro businesses and communities in the form of ‘financial education, digital skill building, digital commerce and equitable access to capital’ and offers various incentives and initiatives to employees making a social impact (‘Social Impact Services’).  Extracts from the Opponent’s websites at (‘Opponent’s Australian Website’) and about these services are provided. 

10.   In 1985, the Opponent adopted the slogan IT’S EVERYWHERE YOU WANT TO BE which was prominently featured in its advertising and marketing including in the Opponent’s sponsorship of major events such as the Super Bowl and Olympic Games.  From 2006 to 2014, the Opponent adopted an alternative slogan but in 2014, the Opponent resumed use of the revised slogan EVERYWHERE YOU WANT TO BE.  The slogans IT’S EVERYWHERE YOU WANT TO BE and EVERYWHERE YOU WANT TO BE are collectively referred to as the ‘Opponent’s Slogan’.

11.   Yee declares that the Opponent’s Slogan is one of the world’s most famous slogans and the corresponding advertising campaigns received numerous awards.  Various examples of advertising featuring the slogan are provided.  These advertisements show the Opponent’s Slogan appearing in close proximity to VISA but also used separately without reference to the VISA house mark.

12.   Yee outlines the various advertising featuring the Opponent’s Slogan undertaken over the years in Australia for the VISA Services and Social Impact Services including billboards, on public transport, in its corporate newsletters and promotional materials, point of sale, television, social media and online ads and sponsorships including the Sydney Olympic Games 2000 and Sydney Festival.  Many of the Opponent’s advertisements featuring its slogan are also posted to its social media accounts and YouTube.

13.   In support of Yee’s claim that the Opponent’s Slogan is famous, examples of third party references to the mark are provided.  These examples include a crossword clue in The 'Daily Themed Crossword Puzzle' online for 'financial services company whose tagline is 'Everywhere you want to be' with the answer being VISA and an entry about the slogan in exhibits details of the Opponent’s Australian registrations for marks including the Opponent’s Slogan as well as the Opponent’s annual sales, revenue and advertising expenditure.  The sales, revenue and advertising figures are extremely substantial.  These figures are not limited to the provision or promotion of the Opponent’s goods and services under the Opponent’s Slogan because Yee declares that the figures cannot be separated but the slogan is ‘routinely featured’.

15.   Yee notes that the Applicant previously applied to register the Trade Mark in class 35 under application number 1336628 but an objection to registration was raised under s 41 that the Trade Mark is not capable of distinguishing the Applicant’s services.  The Applicant filed evidence of use in support of that application but the evidence was considered insufficient to overcome the objection because the Trade Mark was used as part of a composite mark.  Yee alleges that the Trade Mark is still used either descriptively by the Applicant or as part of a composite mark. 

Applicant’s evidence

16.   Karykis declares that the Applicant is an accounting business in Adelaide, incorporated in 2008, which adopted the Trade Mark in good faith and has used the mark since that time. 

17.   In December 2009, the Applicant registered the trade marks TBM (Number 1336622) and the composite mark   (Number 1336634) (hereinafter ‘Applicant’s Logo’) in classes 35 and 36 for services similar to the Applicant’s Services.

18.   Karykis claims that the Trade Mark has been used in all aspects of the Applicant’s business including documents, working materials, and marketing and advertising.  Various examples of these materials and historical extracts of the Applicant’s website at between 2010 to 2022 are exhibited.  I note that there is a single use of the Trade Mark in these examples and all other uses are of the Applicant’s Logo.

19.   According to Karykis, the Applicant operates in a different sphere to the Opponent, providing different services to a different customer base for different purposes and that there has never been any confusion.  The remainder of Karykis essentially amounts to submissions which are not necessary to summarise here.

Discussion

Section 60

1. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. In its SGP, the Opponent claims that:

   … As a result of the Opponent's extensive use and promotion of the phrase EVERYWHERE YOU WANT TO BE, consumers associate this slogan and its associated meaning, when used in connection with financial services, with the Opponent.

   The slogan EVERYWHERE YOU WANT TO BE and the Opposed Trade Mark BE WHERE YOU WANT TO BE have a number of similarities, visually, aurally and conceptually.

   Because of the Opponent's reputation in the slogan EVERYWHERE YOU WANT TO BE in Australia before the filing date of the Opposed Trade Mark, use of the Opposed Trade Mark is likely to deceive or cause confusion.

3. Accordingly, to succeed on this ground of opposition, the Opponent needs to establish that:

   ·     the Opponent’s Slogan had a reputation in Australia at the Relevant Date; and

   ·     as a result of that reputation in the Opponent’s Slogan, use of the Trade Mark for the Applicant’s Services is likely to deceive or cause confusion.

   Reputation

   23.   Justice Kenny considered the meaning of ‘reputation’ in McCormick & Co Inc v McCormick (‘McCormick’) and based on the definition in the Macquarie Dictionary, his Honour concluded it refers to ‘the recognition of the [trade mark] by the public generally.’[4]  This does not mean the whole of the Australian population but rather the reputation must be amongst a ‘significant or substantial’ number of Australian consumers, tempered by the nature of the relevant market.[5]   In the present case, the relevant market is not specialised as most Australian adults are potential consumers of financial and business services.

   [4] [2000] FCA 1335, [81] (‘McCormick’).

   [5] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   24.   The Opponent must establish the ‘existence and extent of reputation’ as a matter of fact.[6]  In terms of establishing reputation, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[7]  

   [6] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   [7] [2019] FCA 923, [83],

   25.   The Opponent submits that at the Relevant Date, a reputation existed in the Opponent’s Slogan by virtue of the longstanding, global use on a substantial scale for a broad range of financial and related business services, with much of the use and promotion directed to Australians who engaged with that advertising as demonstrated by the metrics provided for the Opponent’s social media accounts.  In particular, the Opponent notes that the slogan was a core mark in the Opponent’s promotional activities since 2000.  It is the Opponent’s contention that many Australians would have been exposed to the Opponent’s Slogan as a result of it featuring in the Opponent’s advertising on television, the Opponent’s Australian Website which has significant users and page views,[8] in job advertisements,[9] social media, the Opponent’s YouTube channel and sponsorships in Australia such as the Sydney Olympic Games and Laneway Festival.  The Opponent’s Slogan also featured in sponsorships and promotions overseas viewed by Australians such as the FIFA World Cup 2018 which was watched by over 9 million Australians and the FIFA Women’s World Cup 2019 when the Matildas placed fourth.[10]

   [8] Yee, [26(g)].

   [9] Yee, Exhibit DY-1 Tab 13.

   [10] Yee, [26(i) and (j)].

   26.   The Opponent further argues that whilst the Opponent’s Slogan is most commonly used in close proximity to the VISA mark, the Opponent’s Slogan still has an independent reputation. Yee includes examples of the Opponent’s Slogan used alone[11] and separately from VISA.[12]  The Opponent refers to the decision in Peter Bodum A/S v DKSH (Aust) Pty Ltd[13] where Bodum was found to have established a secondary reputation in the shape of its coffee plunger because of the nature and extent of the advertising, despite trade marks such as BODUM also appearing very prominently on the packaging and in the majority of advertising and promotion.  In the Opponent’s submission, the third party uses such as in a crossword clue demonstrate that the Opponent has a separate reputation in the Opponent’s Slogan.

   [11] Yee, [27].

   [12] Yee, Exhibit DY-1 Tabs 4 and 17 at pp 438 and 439.

   [13] [2011] FCAFC 98; 280 ALR 639 (Greenwood, Tracey and Buchanan JJ).

   27.   I agree with the Opponent’s submissions that its use of the Opponent’s Slogan for the Visa Services and Social Impact Services has been so longstanding and extensive that a large proportion of Australian consumers would have been exposed to the mark.  I am satisfied on my assessment of the evidence that the Opponent had a substantial reputation in the Opponent’s Slogan at the Relevant Date in financial and related business and technology services amongst a significant proportion of Australian consumers.  I turn now to a consideration as to whether given this reputation, use of the Trade Mark for the Applicant’s Services is likely to deceive or cause confusion.

   Likelihood of Deception or Confusion

   28.   The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. The Opponent needs to establish a causal connection between the reputation of the Opponent’s Slogan and the likelihood that use of the Trade Mark will deceive or cause confusion.

   29.   In Registrar of Trade Marks v Woolworths Ltd, French J highlighted the following principles concerning confusion:

   (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 and services come from the same source. It is enough if 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 into 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.[14]

   [14] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

   30.   It is not necessary for the marks in question to be deceptively similar but the degree of the similarity is a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of an opposed mark.[15]  Similarly, there is no requirement that the Trade Mark be used, or proposed to be used, in relation to similar goods or services but the nexus or connection between the services under consideration is relevant to the likely degree of confusion.[16] 

   [15] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

   [16] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 (Hearing Officer I. Thompson).

   31.   I also note that in deciding whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or reputation in the Trade Mark held by the Applicant.[17]

   [17] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

   32.   The Opponent argues that the Trade Mark is highly similar to the Opponent’s Slogan with the two marks sharing the elements ‘WHERE YOU WANT TO BE’ and differing only in the first element ‘EVERY’ as compared to ‘BE’.  Moreover, the Opponent submits that EVERYWHERE and BE WHERE have virtually identical meanings. Yee annexes the Macquarie Dictionary definitions of the separate elements of each mark[18] which indicate that the Trade Mark will be understood as meaning ‘wanting to be located in a place, part or point’ whereas the Opponent’s Slogan would be understood as referring to wanting to be ‘in every part or place; or all places’.  The Applicant contends that the marks are different with the Opponent’s Slogan indicating that Visa is available everywhere its consumers are whereas the Trade Mark suggests that the Applicant’s Services help consumers achieve their financial goals.  In my opinion, there is a degree of conceptual difference between the two marks on a close analysis but any such dissimilarity is overcome by the overall similarity of the marks.

   [18] Exhibit DY-1, Tab 25.

   33.   The Applicant disputes that there is a likelihood of confusion given the Applicant provides accounting, financial and taxation services and do not offer credit cards or payment services.  I must consider the scope of the Applicant’s Services as covered by the Application and not the services the Applicant has provided to date.  In any event, on my assessment of the parties’ evidence, there is overlap between the services each party provides and between the Applicant’s Services and the services in which the Opponent’s Slogan has a reputation.  Further, the classes of potential consumers such as individuals and small businesses are the same.

   34.   I am satisfied, on the balance of probabilities, in all the circumstances that as a result of the reputation in the Opponent’s Slogan at the Relevant Date, there is a real likelihood that consumers would be caused to wonder if the Applicant’s Services are connected to the Opponent.  Accordingly, the s 60 ground of opposition is successful.

   Decision

   35.   Section 55(1) provides:

   (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.

   36.   The Opponent has established a ground of opposition under s 60 and I refuse to register the Trade Mark which is the subject of application number 2165317.  The refusal is to be recorded one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions. 

   37. The Opponent sought an award of costs. As the Opponent has been successful in the opposition, I award costs against the Applicant under section 221 of the Act in accordance with Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   26 August 2024