Western Australian Land Authority - [2014] ATMO 10

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1511152(16, 35, 36, 37) - COCKBURN COAST THE JETTY (logo) - in the name of Western Australian Land Authority.

Delegate:

Robert Wilson

Representation:

Applicant: David Stewart of Wrays Lawyers.

Decision:

2014 ATMO 10

Ex parte matter pursuant to s 33: Trade mark deceptively similar to earlier trade mark covering similar services and s 44(2) accordingly applies. Registration is refused unless application amended according to this decision.

Background

This decision follows from an ex parte hearing held at the request of the Western Australian Land Authority (‘the Applicant’) pursuant to s 33 of the Trade Marks Act 1995 (‘the Act’) in relation to an assessment made during examination that there were grounds under s 44 of the Act for rejecting the following application (‘the Application’).

Application Number:

1511152

Priority Date:

29 August 2012 (‘the Priority Date’)

Goods and Services:

See Appendix 1

Trade Mark:

(‘the Applicant’s Trade Mark’)

The Applicant trades as ‘LandCorp’ and is the Western Australian Government’s land and property developer. The services provided by the Applicant include urban development and renewal projects. Amongst the development projects being undertaken by the Applicant is the development of the former Robb Jetty industrial area and its surrounds, which, according to the Applicant, is intended to create a mix of residential, business, transport and community infrastructure. This development project is divided into three precinct areas being: The Jetty, The Hilltop and The Powerhouse. As well as the trade mark under consideration here the Applicant has successfully registered the following three trade marks which are for similar goods and services to those applied for in connection with the Applicant’s Trade Mark:

In her report dated 16 January 2013 the examiner raised two earlier trade marks as citations pursuant to s 44 of the Act. Details of the two trade marks are shown below:

Trade Mark Number:

1348824

Priority Date:

4 March 2010

Goods:

Class 6: Apartments (metallic structures or buildings)

Trade Mark:

THE JETTY (‘the First Cited Trade Mark’)

Trade Mark Number:

1391382

Priority Date:

3 November 2010

Services:

Class 43: Accommodation letting agency services (holiday apartments); rental of holiday accommodation; rental of temporary accommodation

Trade Mark:

the jetty (‘the Second Cited Trade Mark’)

The examiner indicated that the Application would be able to be accepted for possible registration if the Applicant agreed to delete Classes 36 and 37 from the Application. The examiner also indicated that the Applicant might overcome the grounds for rejection by the provision of evidence of use and/or other circumstances under s 44. Rather than respond to the examiner’s report by written submissions and/or evidence to the examiner, the Applicant requested to be heard on the matter. The matter came before a delegate of the Registrar on 8 November 2013. At the hearing the Applicant was represented by David Stewart of Wrays Lawyers who made submissions on its behalf.

Legal Framework

There are a few aspects of the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Western Australian Land Authority [2014] ATMO 10
Case: [2014] ATMO 10
Decision Date: 31 January 2014

CaseChat Overview and Summary

This decision concerns an application by the Western Australian Land Authority (the Applicant) to register a trade mark. The Applicant sought to register its trade mark, arguing that registration should be permitted under section 44(3)(b) of the Act due to "other circumstances," specifically to prevent confusion arising from the use of place names. The Applicant contended that granting it a monopoly over a place name through trade mark registration would avoid public and emergency service confusion, as suggested by Landgate's policy on duplicated place names. The hearing officer, Robert Wilson, considered these submissions in the context of trade mark law.

The primary legal issues before the hearing officer were whether the Applicant's proposed trade mark should be accepted under section 44(3)(b) of the Act, and whether a cited trade mark (number 1391382) was deceptively similar to the Applicant's trade mark, thereby preventing registration under section 44(2). The Applicant's argument for acceptance under section 44(3)(b) rested on the assertion that trade mark registration was an appropriate mechanism to ensure the uniqueness of place names and prevent confusion.

The hearing officer found that the function of trade mark registration is not to ensure the uniqueness of place names or to prevent the type of confusion contemplated by Landgate. Consequently, he was not satisfied that the Applicant's trade mark should be registered on the basis of "other circumstances" under section 44(3)(b). However, the hearing officer concluded that the Second Cited Trade Mark was deceptively similar to the Applicant's trade mark, and the services offered under that mark in Class 36 were similar to some of the Applicant's claimed services in the same class, thus meeting the requirements of section 44(2).

Ultimately, the hearing officer refused to register the Applicant's trade mark as it stood. However, he provided an option for the application to proceed to registration within one month if the Applicant, within fourteen days, requested the deletion of all services in Class 36 except for "financial sponsorship of education, training, entertainment, sporting and cultural activities." The decision also stipulated that if a notice of appeal was served within four weeks, registration would be stayed pending the outcome of the appeal.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Under the heading of ‘Orthological Issues’ the Applicant has discussed, at length, issues surrounding toponyms (place names). The thrust of these submissions seems to be summed up in the words the Applicant has quoted from Landgate’s[11] policy, being: ‘Duplicated names may lead to confusion for the public and to emergency services providers’.[12] The Applicant has averred that to prevent such confusion it ought to be given, by allowing registration of its trade mark, a monopoly over the place name of its development. That this is an ‘other circumstance’ which would warrant acceptance of the Applicant’s Trade Mark under s 44(3)(b) of the Act is an argument with little merit. The function of the registration of trade marks has never been to ensure that place names are unique and thereby avoid the type of confusion contemplated by Landgate.[11] Landgate is Western Australia’s primary source of land information.[12] Landgate – Geographical Names Committee, Policies and Standards for Geographical Naming in Western Australia [5.3] >I am not satisfied that it is appropriate to register the Applicant’s Trade Mark on the basis of ‘other circumstances’ pursuant to s 44(3)(b).ConclusionI am satisfied that the Second Cited Trade Mark, number 1391382, is deceptively similar to the Applicant’s Trade Mark, and that its services in Class 36 are similar to some of the services claimed by the Applicant in the same class. Accordingly, the provisions of s 44(2) are met. Additionally, in my opinion, it is not proper to accept the Application under s 44(3)(b).I refuse to register the Applicant’s Trade Mark in respect of the specification of goods and services as it now stands.However, the Application may proceed to registration in one month if, within fourteen (14) days of the date of this decision, the Applicant requests in writing the deletion of all of its claimed services in Class 36 with the exception of:financial sponsorship of education, training, entertainment, sporting and cultural activitiesIf so amended, the Application may then proceed to registration one month from the date of this decision.If the Registrar has been served with a notice of appeal within four weeks of the date of this decision, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application be in accordance with the Court’s order or direction.Robert WilsonHearing OfficerTrade Marks Hearings31 January 2014Appendix 1 – the Applicant’s Goods and ServicesClass: 16 Printed matter; published works in the form of printed matter; company magazines; periodical magazines; newsletters; printed publications; promotional publications; pamphlets; maps, posters and wall calendars; stationery Class: 35 Business project management in relation to real estate use; the aforestated references to real estate include: land, marina, waterfront, wharfs and harbours; industry, technology, science and business parks and precincts; buildings, infrastructure and facilities; and other real estate; the aforestated services include for the purposes of: construction, maintenance, support, repair, and re-fit of ships, other marine craft and infrastructure for offshore oil and gas extraction and production; and for commercial, industrial, research, defence, naval, marine, maritime, recreational, entertainment, retail, residential, sporting, community, social, educational, training, cultural, tourism and other purposes; organising and conducting expositions, exhibitions, conferences, seminars, workshops and trade fairs for commercial and advertising purposes; publicity; business management assistance, including pooled resource and leveraged purchasing facilitation, business networking facilitation Class: 36 Real estate affairs; acquisition and provision of real estate; real estate evaluations, real estate sales and leasing of real estate; real estate investment advice and services, real estate brokerage and real estate asset development; real estate management, real estate administration, real estate advisory, consultancy and information services, real estate development and real estate project management, including financial management; the aforestated references to real estate include: land, marina, waterfront, wharfs and harbours; industry, technology, science and business parks and precincts; buildings, infrastructure and facilities; and other real estate; the aforestated services include for the purposes of: construction, maintenance, support, repair, and re-fit of ships, other marine craft and infrastructure for offshore oil and gas extraction and production; and for commercial, industrial, research, defence, naval, marine, maritime, recreational, entertainment, retail, residential, sporting, community, social, educational, training, cultural, tourism and other purposes; financial sponsorship of education, training, entertainment, sporting and cultural activities Class: 37 Development of real estate; re-development and renewal of real estate; development and construction of infrastructure in relation to real estate; project management services in relation to real estate, being building and infrastructure project management services, being building and infrastructure construction supervision; the aforestated services include for the purposes of: construction, maintenance, support, repair, and re-fit of ships, other marine craft and infrastructure for offshore oil and gas extraction and production; and for commercial, industrial, research, defence, naval, marine, maritime, recreational, entertainment, retail, residential, sporting, community, social, educational, training, cultural, tourism and other purposes; maintenance, repair, cleaning and security services (being installation, maintenance and repair of security systems and devices) in relation to real estate and infrastructure; the aforestated references to real estate include: land, marina, waterfront, wharfs and harbours; industry, technology, science and business parks and precincts; buildings, infrastructure and facilities; and other real estate; the aforestated references to infrastructure include communication facilities and networks, access and links to communication facilities and networks, and other infrastructure(‘the Applicant’s Goods and Services’)

Ratio Decidendi

Legal Principle Established

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Application Number:	1511152
Priority Date:	29 August 2012 (‘the Priority Date’)
Goods and Services:	See Appendix 1
Trade Mark:	(‘the Applicant’s Trade Mark’)

Trade Mark Number:	1348824
Priority Date:	4 March 2010
Goods:	Class 6: Apartments (metallic structures or buildings)
Trade Mark:	THE JETTY (‘the First Cited Trade Mark’)

Trade Mark Number:	1391382
Priority Date:	3 November 2010
Services:	Class 43: Accommodation letting agency services (holiday apartments); rental of holiday accommodation; rental of temporary accommodation
Trade Mark:	the jetty (‘the Second Cited Trade Mark’)