Vitalis Health & Home Care Pty Ltd v Vitalis Healthcare Pty Ltd

[2019] ATMO 135

TRADE MARKS ACT 1995

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

Re:Opposition by Vitalis Health & Home Care Pty Ltd to registration of trade mark application 1875540 (44) – VITALIS – in the name of Vitalis Healthcare Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Hamish Bevan of Counsel instructed by Moore + Moore IP Applicant: Edwina Whitby of Counsel instructed by IP Service International
Decision:	2019 ATMO 135 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58 and 60 considered – s 58 ground established – registration refused

Background

1. This decision concerns an opposition brought by Vitalis Health & Home Care Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Vitalis Healthcare Pty Ltd (‘Applicant’): 

Application Number:

1875540

Filing Date:

25 September 2017

Services:

Class 44: General practice (GP) medical services; Health care consultancy services (medical); Medical advisory services; Medical assistance; Medical care services; Advisory services relating to medical services; Alternative medical services; Consultancy and advisory services in relation to medical services; Emergency medical services; Medical services; Providing information including online, about medical services, and veterinary services; Provision of medical services; Consultancy relating to health care; Health care; Nursing care; Personal care services (medical nursing, health, hygiene and beauty care); Preparation of reports relating to health care matters; Providing information, including online, about hygienic and beauty care for human beings or animals; Provision of health care services; Provision of nursing care; Services for the care of the skin; Advisory services relating to health; Health centers; Health centres; Health screening; Healthcare; Medical health assessment services; Advisory services relating to medical problems; Analysis of tissues for medical treatment; Arranging of medical treatment; Behavioural analysis for medical purposes; Breath testing for medical purposes; Cardiology (medical services); Conducting of medical examinations; Dermatology (medical services); Endocrinology (medical services); Gastroenterology (medical services); Genetic testing for medical purposes; Lifestyle counselling (medical); Medical advice for individuals with disabilities; Medical clinic services; Medical equipment rental; Medical examination of individuals; Medical services for treatment of the skin; Medical treatment services; Nursing (medical); Oncology (medical services); Ophthalmology (medical services); Provision of medical facilities; Psychological testing for medical purposes; Rental of equipment for medical purposes; Rental of medical apparatus; Respite care (medical and nursing services); Services for the preparation of medical reports

(‘Applicant’s Services’)

Trade Mark:

VITALIS (‘Trade Mark’)

1. Following the advertisement on 15 February 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 11 April 2018.  The Opponent then filed a Statement of Grounds and Particulars on 10 May 2018 (‘SGP’). The SGP raised grounds of opposition under ss42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 25 May 2018.

   Evidence

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 31 August 2018.  This evidence consists of a declaration by Susan Turner-Kapsanis, Director of the Opponent, made on 30 August 2018 with Exhibits SKT-1 to SKT-51 (‘Turner-Kapsanis 1’). 

3. The Applicant filed Evidence in Answer (‘EIA’) on 20 December 2018.  This evidence consists of a declaration by Conor McCaffrey, Director of the Applicant, made on 18 December 2018 with Annexures A to T (‘McCaffrey Declaration’).  Paragraphs 34-69 of the McCaffrey Declaration contain material in the nature of submissions, and this material shall be treated as such.

4. The Opponent filed Evidence in Reply (‘EIR’) on 1 and 4 March 2019.  This evidence consists of declarations by: Susan Turner-Kapsanis, made on 28 February 2019 with Exhibits SK-52 to SK-68 (‘Turner-Kapsanis 2’); Claudia Lopez, staff doctor with the Opponent, made on 13 February 2019 (‘Lopez Declaration’); Enzo Marchione, director of Watermark Retirement Services, made on 4 March 2019, with exhibits EM-1 to EM-2 (‘Marchione Declaration’); and Joanne Thambyah, web designer and owner of Premier Web Services Pty Ltd, made on 27 February 2019, with exhibits JT-1 (‘Thambyah Declaration’).   

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 9 April 2019 the Applicant requested an oral hearing, with the Opponent making a similar request on 10 April 2019.  The matter was set down for a hearing in Sydney on 6 August 2019 and the matter was allocated to me.  In line with usual practice, a letter was sent to the parties on 25 June 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 23 July 2019 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 30 July 2019 (‘Applicant’s Submissions’). 

6. At the hearing Edwina Whitby of Counsel instructed by Max Steinhausen of IP Service International represented the Applicant, appearing in person. The Opponent was represented by Hamish Bevan of Counsel instructed by Sonal Moore of Moore + Moore IP, also appearing in person.  Also attending the hearing were Clémentine Ropert, law clerk of IP Service International, Conor McCaffrey, Director of the Applicant, Anish Ahmed, employee of the Applicant and Susan Turner-Kapsanis and Alex Chrisement, directors and co-founders of the Opponent.

7. On the day of the hearing as part of its submissions the Applicant provided two additional documents, being extracts from the Macquarie Dictionary and Shorter Oxford dictionary.  Following an indication that the Opponent did not oppose me having regard to this additional information, I have decided to have regard to these documents as part of the Applicant’s Submissions. 

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

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established.  

   In doing so I take account of     the written record comprised of the materials mentioned in the preceding paragraphs as well as the oral submissions made at the hearing.

   The Opponent

9. The Opponent is an Australian company that provides integrated health services.   

10. The relevant claims/statements in Turner-Kapsanis 1 can be summarised as follows :

    ·    The Opponent was incorporated on 31 July 2015 as Alive Home Care Pty Ltd.  Soon after the incorporation, the co-founders of the Opponent considered the name inappropriate and considered various other options, including ‘vitalis’, the Latin word for ‘alive’.  On 7 September 2015 the Opponent decided to trade under the name VITALIS and on 9 September 2015 the Opponent changed its name to Vitalis Home Care Pty Ltd.  In 2017 it changed its name to Vitalis Health & Home Care Pty Ltd.

    ·    On 9 September 2015 the Opponent registered a number of domain names containing the Trade Mark including <vitalishomecare.com.au> and <vitalishomecare.com>.  It has subsequently marketed its services under the Trade Mark and variants that combine the Trade Mark with a term describing the service offered (such as Vitalis specialist nursing services).

    ·    On 14 September 2015 the Opponent gave a presentation to the owners of the Watermark Retirement Village at Castle Cove that included a power-point presentation that used the Trade Mark.  In February 2018 the Opponent entered into an agreement with the Watermark Retirement Village to provide its residents with various services, again under the Trade Mark.

    ·    Between September and December 2015, the Opponent developed marketing material featuring the Trade Mark including a logo (‘VITALIS Logo’), 300 brochures and a website (which displayed the Trade Mark from 17 November 2015 and went live in January 2016).

    ·    The Opponent provides a range of health and in-home care services under the Trade Mark and VITALIS Logo, which include hospital substitution services, palliative and end of life care services, clinical services, in-home assistance, and consultancy and advisory services for individuals navigating the health system. 

    ·    The Opponent markets its services through brochures, over 7000 of which have been distributed since December 2015, information evenings, presentations at international conferences, marked cars, its website and a handbook given to clients.  These materials are provided by the Opponent and also distributed by other service providers. 

    ·    In particular, the Opponent, on 20-22 May 2016, was an exhibitor at the General Practice Conference and Exhibition (‘GPCE’) in Homebush, NSW.  A description of the Opponent and its services was provided on the conference website and in the delegate handbook.  At the GPCE the Opponent operated a booth which displayed large banners and brochures showing the Trade Mark.  The brochures provided at the conference offered services under the Trade Mark including those described as ‘personal health care by trained nursing assistants’ and ‘nursing at home’.  The banners displayed at the GPCE indicated that the Opponent was offering the following services under the Trade Mark:

    o   Over 75 Health Assessments

    o   Care Planning and Coordination

    o   Home Care & Nursing Services

    o   Hospital in the Home

    ·    The Opponent has partnered with various other well-known health service providers in Australia, including a number of well-known private health insurers who either use the Opponent’s services or refer their clients to the Opponent.  In particular in May 2016, the Opponent commenced a partnership with NIB to offer telephonic discharge support and chronic disease management program services.   

    ·    The Opponent has identified numerous instances of confusion where clients and potential clients have been confused between the Applicant and Opponent given the shared use of the Trade Mark.

    ·    The Applicant would have known about the Opponent at the time of registration as the Applicant and Opponent share an accountant, who would have been aware of the Opponent’s use of the Trade Mark.  Employees of the Applicant also attended the GPCE in May 2016.

    12.     Turner-Kapsanis 1 also provides confidential evidence of the Opponent’s sales revenue and advertising expenditure.  Sales were minor in FY2016 but more significant in FY2017 and FY2018.

11. Turner-Kapsanis 2 provides additional documented notes of a meeting on 17 July 2015 between the co-founders of the Opponent in which they discussed the use of the Trade Mark by the Opponent on 17 July 2015.  The declaration otherwise provides additional notes and exhibits to support the chronology of the Opponent’s use of the Trade Mark from July to December 2015.

12. The Marchione Declaration states that the declarant, was first informed that the name of the Opponent’s business was to be known as Vitalis in late August or early September 2015, in connection with the presentation made by the Opponent to Watermark Retirement Village on 14 September 2015.  

13. The Thambyah Declaration states that the declarant, a web designer, was contacted by Ms Turner-Kapsanis on 1 September 2015 requesting a quote to design a website for a new venture named VITALIS.  Ms Thambyah started work on the website on 16 October 2015 and the website went live on 31 January 2016.  Ms Thambyah has subsequently designed websites for the Opponent at and which went live in July 2017. 

14. The Lopez Declaration states that the declarant, a medical doctor, first became aware of the Opponent on 8 November 2015, following which she was engaged by the Opponent and worked on developing a business plan and starting up the Opponent’s Hospital in the Home (‘HITH’) division.  This health service admitted its first patient for treatment on 24 August 2016 and now provides 150 patient visits per week in NSW.

    The Applicant

15. The Applicant is an Australian company that provides health care services.  

16. The relevant claims/statements in the McCaffrey Declaration can be summarised as follows:

    ·    The Declarant is a medical practitioner who in 2015 decided to start a new healthcare business in Australia, with the first step being setting up a family-oriented general practice.  The Declarant first thought of using the Trade Mark in July 2015 as it is the Latin word for life.  On 31 August 2015 the Declarant asked a friend to design a logo, with the first draft being created on 12 September 2015.  

    ·    On 13 September 2015 the Declarant purchased the domain name <vitalishealthcare.com.au> and on 13-14 September 2015 the Declarant arranged a business and company name clearance search.

    ·    On 22 September 2015 the Applicant was incorporated.  It applied to register a trade mark consisting of the words ‘Vitalis healthcare’ and a logo on 31 May 2016.

    ·    The Applicant commenced advertising the opening of the Vitalis Family Medical Practice in Kirrawee on 29 June 2016 on its website, on 14 August 2016 on Facebook and on 31 August 2016 in local newspapers and letterbox flyers.  The Vitalis Family Medical Practice opened for patients on 12 September 2016.  It now provides general and specialist medical services for all health related matters with facilities including several general practice treating rooms, a vaccination centre, medical nursing facilities and an onsite pathology collection.

    ·    The Applicant’s medical practice had significant turnover in FY 2017 and FY 2018 and has gained a substantial local business reputation.

    ·    The Declarant had no knowledge of the Opponent prior to July 2017, when Dr Neer Patel, a general practitioner working for the Applicant, informed the Declarant that the Opponent was using the Trade Mark for home and health care services.  The Applicant/Declarant’s accountant did not advise the Applicant about the Opponent, and while certain doctors engaged by the Applicant did attend the GPCE in 2016, neither of the doctors were made aware of the Opponent at the forum and neither of the doctors were working for the Applicant at the time. 

    Grounds of Opposition, Onus and Standard of Proof

17. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act, however at the oral hearing the Opponent’s counsel indicated that the Opponent would not be pressing the s 62A ground of opposition. He stated that this was due to the nature of hearings before the Registrar, where cross-examination is uncommon and noted that were this matter to be appealed the Federal Court, the Opponent may seek to press the s 62A ground.

18. To successfully oppose the application the Opponent needs to establish one of the remaining nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 58 in respect of some of the services but was unsuccessful in respect of the other grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

19. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 25 September 2017 (‘relevant date’), being the priority date of the application in Australia.[3]

    Discussion

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

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

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

    Section 58

20. Section 58 of the Act is reproduced below:

    Section 58. Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

21. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. [4]  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[5]

    · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[6] and

    ·    that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[7]

    [4] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

    [5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [6] Re Hicks’ Trade Mark (1897) 22 VLR 636.

    [7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

22. The ground based on s 58 of the Act was particularised in the SGP as follows:

    1.The opponent was the first to adopt and use the VITALIS mark in Australia.

    2.The opponent commenced use of the VITALIS word mark in September 2015 and the VITALIS logo in November 2015.

    3.The opposed mark is identical to the opponent’s VITALIS word mark and substantially identical with or deceptively similar to the opponent’s VITALIS logo.

    4.The services specified in the application for the opposed mark are the same or same description as the services offered by the opponent under its VITALIS marks.

    5.The intended customers for the applicant’s services and the opponent’s services are the same.

23. The first factor is satisfied.  The Opponent was using the Trade Mark to advertise its services.   

24. With respect to the third factor, there was some dispute between the parties as to when the Applicant first used the Trade Mark in respect of the Applicant’s Services.  The Opponent submitted that the proper date of first use should be 14 August 2016, being the date that the mark was used on the Applicant’s Facebook page.  The Applicant submitted that the proper date of first use should be 29 June 2016, being the date of first use on the Applicant’s website at

25. For the reason set out in the paragraph below, nothing turns on whether the date of the Applicant’s first use of the Trade Mark was 29 June or 14 August 2016 so it is unnecessary that I decide which is the correct date.  However, given the Applicant’s assertion as to the date of its first use it is reasonable to proceed on the assumption that the first use by the Applicant is not earlier than 29 June 2016.

26. The only additional evidence of use by the Opponent of the VITALIS Mark between 29 June and 14 August 2016 is in respect of a Vitalis Hospital in the Home brochure, said to have been produced in July 2016 (Exhibit SKT-16 to Turner-Kapsanis 1).  The Applicant submits and I accept that the brochure annexed to Turner-Kapsanis-1 at Exhibit SKT-16 was clearly produced well-after 2016 (as it includes customer testimonials from 2018).  While noting that Turner-Kapsanis-1 does not expressly state that the brochure exhibited in SKT-16 was the one distributed in July 2016, the absence of the original brochure, or evidence of the printing and distribution of that particular brochure means that I am not prepared to accept that the Opponent was distributing a Vitalis Hospital in the Home brochure in July 2016.

1. Therefore, in order for the Opponent to succeed on this ground the Opponent has to establish that it has used the Trade Mark on services that are the same kind of thing as the Applicant’s Services before 29 June 2016. 

2. In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd[8], the Full Court summarized the authority as to the meaning of “same kind of thing”, noting the statements by the Full Court in Colorado that ‘Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name’[9] and ‘the question whether goods or services are of the same kind must be addressed in a practical and common sense way and by asking whether the relevant goods or services are essentially the same’.[10]

   [8] [2018] FCAFC 6

   [9] Colorado, [6].

   [10] Ibid, [89].

3. Rather than go through the Opponent’s use chronologically from its first use in September 2015 it is appropriate to consider the use of the Trade Mark as at the GPCE held in May 2016.  In that conference the Opponent displayed banners and brochures that featured the Trade Mark and listed the services offered.  The Opponent was featured in the delegate handbook which included a description of the services offered under the Trade Mark by the Opponent.  My review of the banners, brochures and delegate handbook that were in existence/on display at the GPCE indicates as of May 2016 the Opponent was offering the following services under the Trade Mark:

   ·    Home care services

   ·    Health assessment services

   ·    Services to assist patients in navigating the health care system, with such services provided either by nurses or non-medical practitioners; and

   ·    HITH services being clinical care provided by qualified nurses in the home.  I accept the evidence of Dr Lopez and Ms Turner-Kapsanis that HITH services are clinical services that operate as a substitute for medical treatment in the hospital, enabling patients to receive treatment in the home for less serious clinical matters.

4. With respect to the conclusions reached above, two matters need to be noted.  Firstly, use of a trade mark does not require there to be an actual dealing in the relevant goods or services; the use of the mark in an advertisement of the goods or services in the course of trade suffices.[11]  The fact that the Opponent did not actually treat its first patient as part of its HITH service until 24 August 2016 is not determinative; by advertising its HITH service under the Trade Mark in May 2016 it was using the mark in respect of HITH services. 

   [11] See Mooregate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 433-434. See also the summary of authorities in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [166]-[170].

5. Secondly, while I accept the Applicant’s submissions that the brochures in evidence describing HITH services post-date 29 June 2016, it is acceptable (and I have done so) to have regard to those brochures in order to determine the nature of the HITH services offered by the Opponent at the GPCE.[12]  These brochures support the statements in the Lopez Declaration and Turner-Kapsanis-1 at [35] that HITH is an industry expression used to describe certain types of clinical services performed in the home by medical professionals that otherwise would be performed in a hospital.

   [12] See the approach taken in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [78].

6. As such I am prepared to find that the Opponent has used the Trade Mark from a date prior to the Applicant’s first use of it in respect of services that are broadly described as:

   ·    Medical advisory and consultancy services;

   ·    Home care services; and

   ·    Medical services. 

7. I do not accept the submissions made by the Applicant that medical advisory and consultancy services can only be provided by medical professionals; there is simply no evidence to support the claim that non-medical professionals cannot and do not assist individuals in navigating the health care system.  I also do not accept the submissions, to the extent that they are made, that medical services can only be provided by trained doctors.  The specification ‘medical services’ is not limited to services provided by doctors and the broad range of clinical services provided as part of the HITH services offered by the Opponent under the Trade Mark are medical services provided by a trained medical professionals that act as a substitute for the medical services that would be provided in a hospital.

8. I find that the Opponent has established the ground of opposition pursuant to s 58 of the Act in respect of the following services that are the same kind of thing as the services the Opponent was offering under the Trade Mark in May 2016:

   Class 44: Health care consultancy services (medical); Medical advisory services; Medical assistance; Medical care services; Advisory services relating to medical services; Alternative medical services; Consultancy and advisory services in relation to medical services; Medical services; Providing information including online, about medical services; Provision of medical services; Consultancy relating to health care; Health care; Nursing care; Personal care services (medical nursing, health, hygiene and beauty care); Preparation of reports relating to health care matters; Providing information, including online, about hygienic and beauty care for human beings or animals; Provision of health care services; Provision of nursing care; Services for the care of the skin; Advisory services relating to health; Health screening; Healthcare; Medical health assessment services; Advisory services relating to medical problems; Arranging of medical treatment; Behavioural analysis for medical purposes; Breath testing for medical purposes; Conducting of medical examinations; Lifestyle counselling (medical); Medical examination of individuals; Medical treatment services; Nursing (medical); Respite care (medical and nursing services); Services for the preparation of medical reports

9. The Opponent has failed to establish the s 58 ground of Opposition in respect of the following services (‘Remaining Services’).  It is therefore necessary to consider the other grounds of opposition and, if those grounds are not established, whether or not the Registrar should reject the Trade Mark in its entirety or offer an amendment.

   Class 44: General practice (GP) medical services; Emergency medical services; Providing information including online, about veterinary services; Health centers; Analysis of tissues for medical treatment; Cardiology (medical services); Dermatology (medical services); Endocrinology (medical services); Gastroenterology (medical services); Genetic testing for medical purposes; Medical clinic services; Medical equipment rental; Medical services for treatment of the skin; Provision of medical facilities; Psychological testing for medical purposes; Rental of equipment for medical purposes; Rental of medical apparatus;

10. It is therefore necessary to consider the other grounds of opposition and, if those grounds are not established, whether or not the Registrar should reject the Trade Mark in its entirety or offer an amendment.

    Section 60

11. Section 60 of the Act is reproduced below:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

    [17] (2000) 50 IPR 1.

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

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

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

17. The Opponent has particularised this ground of opposition in the SGP by repeating the particulars for its s 42(b) ground of opposition. The particulars for the s 42(b) ground are set out below:

    1.The opponent commenced using VITALIS as a trade mark in September 2015 in relation to a range of aged care services including medical and nursing services.

    2.The opponent commenced using the VITALIS logo as part of its branding in November 2015.

    3.In November 2015 the opponent launched its website with a “coming soon” homepage.  The main website went live in January 2016.

    4.The opponent has, since November 2015, promoted its services throughout the health care and aged care industry, including retirement villages, doctors, hospitals and business partners.  The opponent has promoted its services via its website and the distribution of printed materials such as brochures and business cards, as well as in multiple health industry conference materials both as an exhibitor and as a presenter.

    5.The opponent’s VITALIS trade mark being its VITALIS word mark and logo, had acquired a reputation, throughout at least the Sydney Metropolitan region, before the priority date of the opposed mark in respect of the opponent’s services.

    6.Because of the reputation acquired by the opponent in the VITALIS trade marks, the use of the opposed mark by the applicant is deceptive or misleading or likely to be deceptive or misleading.

    7.The use of the opposed mark is use, in trade or commerce, which is misleading or deceptive or likely to mislead or deceive consumers in contravention of ss18 and 29 of the Australian Consumer Law which is Schedule 2 to the Competition and Consumer Act 2010 (Cth).

    8.The use of the opposed mark amounts to actionable passing off by the applicant.  

18. Having reviewed the Opponent’s evidence, I find that at the relevant date, the Opponent had been trading for a little over two years. Sales and advertising expenditure were negligible in the first year, commensurate with setting up a new business. The Opponent’s sales increased significantly in the second year, though only to a level characteristic of a small business, and marketing expenditure decreased. Many of the Opponent’s services, such as the HITH service, only started treating patients in the second year of the Opponent’s operation. Given the breath of the health care market in Australia and the extent of the potential relevant market (extending to either all or a significant proportion of Australian adults), I am not satisfied that at the relevant date, the Opponent had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market, sufficient for the requirements under s 60(a) of the Act. As the Opponent has failed to establish this requirement of s 60 it has fallen at the first hurdle and consequently has failed to establish this ground of opposition.

    Section 42

19. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

20. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]

    [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

21. The Opponent has particularised the ground of opposition in the SGP in the manner set out in paragraph 44 above. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[22] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [22] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

22. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[23], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[24] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    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.[25]

    [23] [2014] ATMO 65, [50].

    [24] [2003] FCA 104, [107].

    [25] [1989] FCA 506, [40] (citations omitted).

23. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Resolution of Opposition

24. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[26]

    [26] [2014] FCA 1304, [232].

25. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has not been established.

26. At the oral hearing I raised the prospect of some form of amendment to the Applicant’s Services and asked the parties to address me on the appropriate course of action were I to find the opposition established in respect of some of the Applicant’s Services. The Opponent submitted that this would be a case where an amendment is not appropriate since the nature of the specification of the Applicant’s Services contains many overlapping services and as such it would be difficult to sensibly excise various services. The Applicant’s submissions on this point were unhelpful, since they were made on the assumption that I would find that the Applicant was the owner of the Trade Mark for medical services (and similar services) which is not the conclusion I have reached under the s 58 ground of opposition.

1. In circumstances where I have found that the Opponent is the proper owner of the Trade Mark in respect of ‘medical services’ I consider that it would not be appropriate to offer an amendment to the Applicant to limit its services to, for example, ‘Emergency medical services’ or any other specialist medical service that overlaps with ‘medical services’.  I accept the Opponent’s submissions that it would be difficult to sensibly excise those specialist services and note that if the Applicant wishes to register the Trade Mark for a more narrow range of specialist medical services it may choose to file such an application.

2. The Applicant has also sought to register the Trade Mark for the following services that are not medical services: ‘Providing information including online, about veterinary services; Medical equipment rental; Provision of medical facilities; Rental of equipment for medical purposes; Rental of medical apparatus’.  In the absence of any evidence that the Applicant presently provides those services or any submissions from the Applicant seeking that the registration proceed on the basis of that very limited subset of services I decline to offer the Applicant an opportunity to amend the Applicant’s Services to limit them to the non-medical services referred to above.  

   Decision

   57. I have found the Opponent has established the ground of opposition it raised pursuant to s 58 of the Act. As the Delegate of the Registrar I refuse to register the Trade Mark.

   Costs

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

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   10 September 2019