Wow! Travel Pty Ltd v Wow Tours Pty Ltd

[2019] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Wow! Travel Pty Ltd to registration of trade mark application 1810690(39) – WOW TOURS & Device - in the name of Wow Tours Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent:  not represented Applicant:  Chris Bolden of Bolden Lawyers
Decision:	2019 ATMO 60 Trade Marks Act 1995 Section 52 opposition to registration - ground under section 58A established; trade marks deceptively similar; identical/similar services.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Wow Tours Pty Ltd (‘the Applicant’) has sought registration of the trade mark which appears below:

   Application No:         1810690

   Priority Date:             22 November 2016

   Services:Class 39: Operating disability supported tours and respite supported tours; provision of disability supported tours and respite supported tours; personal  tour guide services for the disabled; organising disability supported tours and respite supported tours (excluding travel agency services for booking or arranging travel)

   (‘the Services’)

   Trade Mark:               

   (‘the Trade Mark’)

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2. The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration on 13 April 2017 in the Australian Official Journal of Trade Marks.

3. On 13 June 2017 Wow! Travel Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose followed, on 3 August 2017, by a Statement of Grounds and Particulars (‘the SGP’).

4. Thereafter the Opponent filed its Evidence in Support and the Applicant filed its Evidence in Answer.  The matter was set for hearing in Canberra before me, a delegate of the Registrar, on 5 February 2019.  The Opponent thereafter indicated that it would not be represented at the hearing and would not file written submissions.  The Applicant filed written submissions and chose to be heard by telephone, represented by Chris Bolden of Bolden Lawyers.

5. The Opponent bears the onus of establishing a ground of opposition which is detailed in the SGP on the balance of probabilities.[1] The SGP includes a ground of opposition under section 58A of the Act which I have found to be established.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

6. Although numerous declarations were filed by both sides, it is only necessary for me to summarise, here and later, that much of the evidence which has bearing on the section 58A ground of opposition. In outline, the Opponent conducts a travel agency business and has done so since 2003. It is the owner of trade mark registration number 1589218 for the word mark, WOW, registered on 1 November 2013 in class 39 for: “Advisory services relating to travel; Agency services for arranging travel; Information services relating to travel; Travel consultancy; Travel tours and cruises” (‘the Opponent’s Registration’ or ‘the Opponent’s Trade Mark’ as the context requires).  It has used the trade mark WOW and iterations thereof including WOW! Travel to designate its business.

7. The Applicant’s business provides what it describes as staff-supported specific holidays and/or tours for people with physical and/or intellectual disabilities or requiring respite care.  That business has operated since 2011 by reference to the Trade Mark and other indicia discussed later.

   Section 58A

   Statement of Grounds and Particulars

8. In relation to section 58A the relevant passages from the SGP state:

   The Applicant is not the owner of the Opposed Trade Mark, and Registration would therefore be contrary to section 58 and Section 58A of the Act by reason of the earlier use of the same or similar Trade Mark.

   The Opponent has used the WOW and/or WOW TRAVEL and/or WOW! and/or WOW! TRAVEL trade marks in connection with a retail travel agency business since 2003, that use being many years before the priority date of the Opposed Trade Mark (being 22 November 2016), the Opponent having first used the WOW and/or WOW TRAVEL and/or WOW! and/or WOW! TRAVEL trade mark in 2003. A chronology of the Opponent’s use of the trade mark follows.

   The Opponent has traded continuously using the trade marks WOW and/or WOW TRAVEL and/or WOW! and/or WOW! TRAVEL from 2003 to the present day.

   With respect to the services provided under the trade marks WOW and/or WOW TRAVEL and/or WOW! and/or WOW! TRAVEL , the travel agency business operated by the Opponent has offered and continues to offer all the expected services associated with the planning, arranging and booking of travel, accommodation and tour guide services. These services are the same services, or closely related services, or similar services to those of the Opposed Trade Mark application.

9. I note that the application was accepted under the provisions of section 44(4) of the Act. Section 44 of the Act is concerned with substantially identical with, or deceptively similar trade marks and, so far as relevant to the facts of this case, provides:

   44Identical etc. trade marks

   (1)…

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

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

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

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

10. The examiner of the application found the Trade Mark to be deceptively similar to the Opponent’s Trade Mark. Nevertheless, after submissions from the Applicant the examiner applied section 44(4), set out below:

    (4)If the Registrar … is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)the similar goods or closely related services; or

    (ii)the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant’s trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

11. In these proceedings before me the Opponent seeks to rely on section 58A which states:

    58AOpponent’s earlier use of similar trade mark

    (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

    (a)subsection 44(4); or

    (b)a similar provision of the regulations made for the purposes of Part 17A.

    Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

    (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

    (a)first used the similar trade mark in respect of:

    (i)similar goods or closely related services; or

    (ii)similar services or closely related goods;

    before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

    (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

    Note:For predecessor in title see section 6.

12. Since both the opposed Trade Mark and the Opponent’s Trade Mark claim only services the Opponent’s reference in the SGP to “closely related services” is a muddlement of the legislative provision; properly expressed, the Opponent was required to show that it, as the owner of a similar trade mark, first used that trade mark in respect of similar services before the Applicant first used the Trade Mark and has since continuously used the similar trade mark in respect of those services.

13. Section 14(2) of the Act provides that 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 Applicant’s submission is that:

    “[its] services are very specifically “disability supported tours and respite supported tours”, in the nature of supported short tours or excursions for the disabled requiring assistance, and specifically exclude “travel agency services for booking or arranging travel”. The Applicant’s services do not relate to the booking of extended holiday travel and there are no advisory services nor information services nor consultancy of that extended holiday travel nature offered by the Applicant. The Applicant does not offer the services to simply book third party travel cruises or extended holiday travel tours.”

14. For present purposes, all that need be said is that the Opponent’s Registration covers “travel tours” at large and the Services are a subset of travel tours. The compared services are overlapping and I find them to be similar within the meaning of the Act.

15. In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd is applied:[2]

    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 identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

    [2] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

16. Set out side by side the trade marks under consideration are:

    WOW             and

17. Clearly they are not substantially identical when the test is applied.  Notwithstanding the wholly descriptive character of the word “TOURS” in the Trade Mark, the logo element is such that when the total impression of resemblance or dissimilarity is made they are quite different.

18. As to deceptive similarity, in Shell Windeyer J continued at [13]:

    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. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

19. The Applicant’s submission is that the Trade Mark “contains a distinctive wheelchair logo with a stylised arrow, head and raised arms figure, making it quite distinctive”.  Further, that the word “wow” was chosen as an anagram for “Walk or Wheels”.

20. In my assessment the compared trade marks are deceptively similar.  I have already noted that the word “tours” has no distinctive value.  The device element has some originality and may be registrable on its own but in combination here I find that the central and dominant part of the Trade Mark is WOW, that is, the Opponent’s Trade Mark.  It is how the Trade Mark will be known and referred to when the Services are subject to any verbal request.

21. The Opponent has established that it as the owner of a similar trade mark and has at least registered that similar trade mark in respect of similar services.  It remains for the Opponent to show that it used a similar trade mark before the Applicant first used the Trade Mark and has continuously used it since for similar services.

22. The evidence shows that aside from the Opponent’s Trade Mark, WOW, there has been use since 2003 by the Opponent of variations thereof, including WOW!, WOW TRAVEL and WOW TRAVEL!, all for travel agency services. Section 7 of the Act states:

    Use of trade mark

    (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

23. The word “tours” is, as noted, non-distinctive and is an addition not substantially affecting the identity of the Opponent’s Trade Mark.  The exclamation mark, if not non-distictive when added to any word, is certainly so when added to words such as “bang”, “wham”, “pow” or “wow”.  Again, it is not an addition substantially affecting the identity of the Opponent’s Trade Mark.  For the purposes of the relevant legislative provisions I consider each of these variations to be use of the Opponent’s Trade Mark.

24. The Applicant’s submission is that there has been continuous use of the Trade Mark by the Applicant or by its predecessor-in-title to the Trade Mark from 2011.  In short, the business name “Walk Or Wheels Holidays” was registered on 11 November 2010, used, and during 2011 morphed into use of WOW and WOW TOURS.  Broadly within the same period the Applicant registered and began to use the domain names wowtours.org and wowtours.com.au for website content.  The evidence is to some degree mixed, showing use of  “Walk Or Wheels”, “Walk Or Wheels Holidays”, “Walk Or Wheels Tours”, “WOW” and other signs not corresponding exactly with the Trade Mark but what is clear is that there is no use of the Trade Mark any earlier than 2011.

25. To the extent that the Applicant responds to the section 58A ground of opposition, its argument is that the Opponent’s Trade Mark has been and continues to be used with an exclamation mark and/or the word “TRAVEL”. The argument appears to be that this use is not use of the Opponent’s Trade Mark or of a similar mark. For the reasons already given I reject that argument and find that the Opponent has used a similar trade mark before the Applicant first used the Trade Mark and has continuously used it since for services similar to the Services.

26. It follows that the Opponent has established section 58A of the Act.

    Decision

27. Section 55 of the Act relevantly provides:

    55Decision

    (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.

    Note:For limitations see section 6.

28. The Opponent has established a ground of opposition and I refuse to register the trade mark.

    Costs

29. The Opponent did not appear or make written representations and so at this time there is no order as to costs. However, I see no reason why the matter might not be assessed in line with the principle that costs follow the cause and should be awarded in accordance with the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    17 April 2019