XGPrinter Pty Ltd v YQueue Singapore Pte Ltd
[2022] ATMO 139
•17 August 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by XGPrinter Pty Ltd to registration of trade mark application number 2048200 (classes 9, 35 & 42) – YQueue and trade mark application number 2048201 (classes 9, 35 & 42) – – in the name of YQueue Singapore Pte Ltd
Delegate: | Katrina Brown |
Representation: | Opponent: Jesmini Ambikapathy of counsel, instructed by Brian Shortt of IP Solved (ANZ) Pty Ltd Applicant: Sonia Stewart of counsel, instructed by Dunja Poljak of Clayton Utz |
Decision: | 2022 ATMO 139 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42(b), 43, 44, 58 & 60 – no grounds established – trade marks to proceed to registration. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by XGPrinter Pty Ltd (‘Opponent’) to the registration of the following trade marks (‘Trade Marks’):
| Trade mark number | 2048200 | 2048201 |
| Trade mark | YQueue (‘Word Mark’) | (‘Figurative Mark’) |
| Applicant | YQueue Singapore Pte Ltd (‘Applicant’) | |
| Filing date | 1 November 2019 | |
| Specification | Class 9: Computer software including software for mobile electronic devices (apps) including software for ordering goods and services; software for use in commerce Class 35: Ordering services (for others); retailing of goods (by any means); sale and promotion of goods and services; sales and marketing consultancy; direct marketing and promotional services Class 42: Installation, set up, maintenance and repair of software and software platforms; software as a service (SaaS); platform as a service (PaaS) (‘Applicant’s Goods & Services’) | |
The applications for the Trade Marks were examined as required under s 31 of the Act. Acceptance of the Trade Marks was advertised in the Australian Official Journal of Trade Marks on 2 April 2020.
The Opponent filed a Notice of Intention to Oppose each of the Trade Marks, followed by a Statement of Grounds and Particulars (‘SGP’) on 26 June 2020.
The Applicant filed a Notice of Intention to Defend the Word Trade Mark on 20 July 2020, followed by a Notice of Intention to Defend the Figurative Mark on 21 July 2020.
The Opponent filed the following declarations as evidence:
Declaration of Stephen Teudt (Director of Opponent) made on 19 October 2020 with Exhibits 1 to 17 (‘Teudt 1’); and
Declaration of Stephen Teudt made on 15 June 2021.
The Applicant filed the following declaration as evidence:
Declaration of Lee Chung Wei (Chief Executive of Applicant) made on 22 April 2021 with Exhibit-1.
Once the time allowed for filing evidence ended, a hearing was requested for both matters. The matters were heard jointly by me, a delegate of the Registrar of Trade Marks on 18 May 2022. The Opponent was represented by Jesmini Ambikapathy of counsel, instructed by Brian Shortt of IP Solved (ANZ) Pty Ltd. The Applicant was represented by Sonia Stewart of counsel, instructed by Dunja Poljak of Clayton Utz.
Grounds of opposition, onus, and relevant date
In the SGPs, the Opponent particularised grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. The ground under s 62A was not pressed by the Opponent. As such, I consider the ground under s 62A to be abandoned.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 1 November 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Marks.
Preliminary matter
The SGPs refer to the Opponent’s ‘YQME trade mark’ but do not clearly define what this is a reference to. Considering the SGPs, the evidence and the submissions, I take it to be a reference to a common law trade mark for YQME, or to the following trade mark registered to the Opponent (‘YQME Trade Mark’):
| Trade mark number | 1432436 |
| Trade mark | YQME |
| Priority date | 22 June 2011 |
| Specification | Class 9: Automatic printers for use with computers; computer controlled printers; computer printers; computer terminals for use with credit cards at point of sale; computer terminals for use with debit cards at point of sale; computer terminals for use with encoded cards at point of sale; computer terminals for use with magnetic cards at point of sale; printers for computers; printing apparatus for use with computers; electronic point of sale terminals; electronic point of sale transaction terminals; encoded cards for use in point of sale transactions; controlling software for computer printers; point of sale apparatus; point of sale terminals; printers for cash registers; printers for data processing apparatus; printers for electric controllers; printers for use with computers; machines for issuing (vending) receipts; machines for issuing (vending) tickets Class 43: Arranging for the provision of drink; arranging for the provision of food; arranging for the provision of meals; providing information, including online, about services for providing food and drink, and temporary accommodation; bistro services; cafe services; cafes; cafeteria services; coffee shop services; canteen services; canteens; booking of catering services; take away food services; takeaway food and drink services; food and drink catering |
The SGPs also refer to the Opponent’s ‘family of other YQme-formative trade marks’ which are collectively referred to as the ‘YQme Mark’. However, the SGPs do not clearly identify which trade marks constitute the YQme-formative trade marks. Considering the SGPs, the evidence and the submissions, I take the YQme-formative trade marks to be the following trade marks registered to the Opponent (‘YQME Formative Trade Marks’):
| Trade mark number | 1432451 |
| Trade mark | (‘Registration 451’) |
| Priority date | 22 June 2011 |
| Specification | Class 9: Computer terminals for use with credit cards at point of sale; computer terminals for use with debit cards at point of sale; computer terminals for use with encoded cards at point of sale; computer terminals for use with magnetic cards at point of sale; electronic point of sale terminals; electronic point of sale transaction terminals; encoded cards for use in point of sale transactions; point of sale apparatus; point of sale terminals; automatic printers for use with computers; computer controlled printers; computer printers; controlling software for computer printers; printer apparatus for use with computers; printers for cash registers; printers for cash registers; printers for computers; printers for data processing apparatus; printers for electric controllers; printers for use with computers; machines for issuing (vending) receipts; machines for issuing (vending) tickets Class 43: Arranging for the provision of drink; arranging for the provision of food; arranging for the provision of meals; providing information, including online, about services for providing food and drink, and temporary accommodation; bistro services; cafe services; cafes; cafeteria services; coffee shop services; canteen services; booking of catering services; take away food services; takeaway food and drink services; food and drink catering; canteens |
| Trade mark number | 1962978 |
| Trade mark | (‘Registration 978’) |
| Priority date | 18 October 2018 |
| Specification | Class 9: Computer terminals for use with credit cards at point of sale; computer terminals for use with debit cards at point of sale; computer terminals for use with encoded cards at point of sale; computer terminals for use with magnetic cards at point of sale; electronic point of sale terminals; electronic point of sale transaction terminals; encoded cards for use in point of sale transactions; point of sale apparatus; point of sale terminals; automatic printers for use with computers; computer controlled printers; computer printers; controlling software for computer printers; printer apparatus for use with computers; printers for cash registers; printers for cash registers; printers for computers; printers for data processing apparatus; printers for electric controllers; printers for use with computers Class 39: Food and beverages delivery services Class 43: Arranging for the provision of drink; arranging for the provision of food; arranging for the provision of alcoholic beverages; arranging for the provision of meals; providing information, including online, about services for providing food and drink, and temporary accommodation; bistro services; cafe services; cafes; cafeteria services; coffee shop services; canteen services; booking of catering services; take away food services; takeaway food and drink services; food and drink catering |
Section 58
Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.
At the hearing, this ground of opposition was only pressed in respect of the Word Mark. To succeed under this ground of opposition, the Opponent must establish that:
the trade mark relied upon by the Opponent is identical or substantially identical with the Word Mark;[3] and
the Applicant’s Goods & Services are the ‘same kind of thing’ as the goods or services for which the trade mark relied upon by the Opponent has been used;[4] and
a person (other than the Applicant) has the earlier claim to ownership based on use, of the trade mark relied upon by the Opponent, prior to the application to register the Word Mark or any actual use of the Word Mark (whichever is the earlier).[5]
[3] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[4] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[5] Settef SpA v Riv-Oland Marvle Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In the SGP, the Opponent nominates the YQME Trade Mark and the YQME Formative Trade Marks as the basis for this ground of opposition.
My first consideration is whether the YQME Trade Mark or the YQME Formative Trade Marks are identical or substantially identical to the Word Mark.
It is evident that the respective trade marks are not identical. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[6]
[6] [1963] HCA 66, [12] (Windeyer J).
The Word Mark consists of the letter Y and the word ‘Queue’. The YQME Trade Mark and the YQME Formative Trade Marks each consists of the letters ‘YQ’ and the word ‘me’. Each of YQME Formative Trade Marks contains additional stylisation, including a fork device in Registration 978. A total impression of resemblance does not emerge from the required comparison. There are clear differences between the Word Mark and the YQME Trade Mark and the YQME Formative Trade Marks that are unlikely to go unnoticed on a side by side comparison. Consequently, I do not consider the Word Mark to be substantially identical with the YQME Trade Mark or the YQME Formative Trade Marks.
The s 58 ground of opposition has not been established.
Section 44
Section 44 of the Act relevantly provides:
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(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.
To succeed the Opponent must establish that the Trade Marks are substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods, similar services, or closely related goods or services.
In the SGPs, the Opponent identifies the YQME Trade Mark and the YQME Formative Trade Marks as the basis for this ground of opposition. The details of these trade marks are set out at [11] and [12] of this decision. From those details, it is evident that the YQME Trade Mark and the YQME Formative Trade Marks are each held in a name other than that of the Applicant, and the priority dates are earlier than the Relevant Date.
My next consideration is whether the Trade Marks are substantially identical with, or deceptively similar to, the YQME Trade Mark or the YQME Formative Trade Marks.
Substantially identical
I have already found in respect of the s 58 ground of opposition, that the Word Mark is not substantially identical with the YQME Trade Mark or the YQME Formative Trade Marks.
The Opponent does not assert that the Figurative Mark is substantially identical with the YQME Trade Mark or the YQME Formative Trade Marks. For the sake of completeness, in my opinion a total impression of resemblance does not emerge from a side by side comparison of the Figurative Mark and the YQME Trade Mark or the YQME Formative Trade Marks. I am satisfied that the trade marks are not substantially identical.
Deceptively similar
Section 10 of the Act defines deceptively similar as:
a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In Shell, Windeyer J provided the following insights on deceptive similarity:
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 [trade mark].[7]
[7] Ibid [13].
As such, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Marks and of the YQME Trade Mark and the YQME Formative Trade Marks. I must consider the look, sound, and idea conveyed, allowing for imperfect recollection.
The Opponent asserts that the trade marks are deceptively similar because they share the same essential feature, namely the letters ‘YQ’.
Word Mark
The Word Mark, the YQME Trade Mark and the YQME Formative Trade Marks do all begin with the letters ‘YQ’. However, this does not automatically amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:
That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[8]
[8] [2021] FCA 328, [245].
The fact that each of the trade marks contain ‘YQ’ is not, in this instance, a sufficient basis to conclude that the trade marks are deceptively similar. The likely impression that a person of ordinary intelligence and memory would have of the Word Mark is that of the letter ‘Y’ and the known word ‘Queue’. The likely impression of the YQME Trade Mark is that of an invented word consisting of the four letters Y-Q-M-E. Due to the stylisation, the likely impression of the YQME Formative Trade Marks is that of the letters ‘YQ’ and the known word ‘me’.
Each of the trade marks must be considered in their entirety.[9] The word ‘me’ in the YQME Trade Mark and the YQME Formative Trade Marks cannot simply be ignored. There is nothing before me to establish that the word ‘me’, or the letters ‘M-E’ are descriptive of any of the goods or services. Additionally, ‘YQ’ and ‘me’ is an unusual combination which does not form part of the common stock of the English language. It is likely that the YQME Trade Mark and the YQME Formative Trade Marks will be remembered as a whole, namely ‘YQME’ or ‘YQ-ME’, rather than simply by the letters ‘YQ’. I also note that Registration 978 contains the device element of a fork which forms part of the letter ‘Q’.
[9] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).
The Opponent asserts that the trade marks convey the same idea, namely ‘why queue’ or ‘why line up’. There is nothing before me to establish that the letters ‘Y’ and ‘Q’ are commonly understood abbreviations for the words ‘why’ and ‘queue’. Nor does the evidence establish that ‘YQ’ in combination is a commonly understood reference to ‘why queue’. Notwithstanding, as the letter ‘Y’ is aurally the same as the word ‘why’, I can entertain that when followed by the word ‘Queue’, a consumer might make the leap that the Word Mark conveys the idea of ‘why queue’. However, I do not think that a consumer would make the same leap in respect of the YQME Trade Mark or the YQME Formative Trade Marks because ‘why queue me’ is nonsensical.
Considering all the above, I am not satisfied that there is a real and tangible danger of deception or confusion.
Figurative Mark
In respect of the Figurative Mark, I do not think the letters ‘YQ’ will be immediately apparent to consumers. The stylisation lends itself to various interpretations such as the letter ‘Y’ and a cursive ‘G’, the combination ‘QY’, a simplified rendering of a character with outstretched arms, or even a paperclip as suggested by the Applicant’s counsel. The Figurative Mark is highly fanciful and creates an impression beyond the plain letters ‘YQ’.
Furthermore, for the reasons expressed above in [32] to [34], I do not consider it likely that a consumer would recall the YQME Trade Mark or the YQME Formative Trade Marks simply by the letters ‘YQ’, rather they would be recalled in their entirety.
When the trade marks are considered as wholes, I am not satisfied that there is a real and tangible danger of deception or confusion.
Consequently, the s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Marks would be likely to deceive or cause confusion.
Reputation
For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[10] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[11] number of people or potential consumers. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[12] In Rodney Jane Racing Pty Ltd v Monster Energy Company it was 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.[13]
[10] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).
[11] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).
[12] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[13] [2019] FCA 923, [83] (O’Bryan J).
Turning to the reputation demonstrated in the evidence, it is declared in Teudt 1 that the Opponent has used the YQME Trade Mark in Australia since 2011. It is not declared when the YQME Formative Trade Marks were first used in Australia. From the examples provided in Teudt 1 Registration 451 has been used since 2011. From the evidence, it is not clear to me when Registration 978 was first used in Australia.
Revenue figures relating to the provision of goods or services bearing the YQME Trade Mark or the YQME Formative Trade Marks have been provided for 2011 to 2020. The figures before the Relevant Date are modest. I do note that the Opponent declares that its goods and services facilitate an average of 3.5 million transactions annually, however no documentary evidence has been provided to support this statement.
The Opponent has also provided the approximate annual expenditure relating to the promotion of the YQME Trade Mark and the YQME Formative Trade Marks from 2011 to 2020. Once again, these figures are modest. The YQME Formative Trade Marks are promoted via third party websites, direct marketing campaigns, trade shows, print media such as the annual Manly Yacht Club Handbook, online media such as Café Culture magazine. The trade marks are also promoted via social media. Exhibit 11 to Teudt 1 consists of captures of the Opponent’s Facebook account showing use of the YQME Formative Trade Marks prior to the Relevant Date. The number of followers and likes of the Opponent’s Facebook posts are modest.
Goods and services bearing the YQME Trade Mark and the YQME Formative Trade Marks are also promoted on the Opponent’s website, Exhibit 5 to Teudt 1 consists of screenshots from this website sourced from an internet archiving service. The screenshots are dated from 2011 to 2019 and show use of the YQME Formative Trade Marks in relation to a printer and an online ordering system allowing customers to order food and drink from restaurants and cafes via a website or a mobile phone app. Notably, the Opponent has not provided any indication of the exposure of its website in the marketplace, such as the number of views or visitors.
On the evidence before me, I am not satisfied that the Opponent has established (as a matter of fact) that any of its trade marks were recognised at the Relevant Date by a significant or substantial number of potential consumers. The revenue figures, promotional expenditure and documented exposure in the marketplace are all modest. Additionally, these modest figures relate to various trade marks, namely the YQME Trade Mark, the YQME Formative Trade Marks and potentially the following trade mark which is featured in numerous promotional examples through the Opponent’s evidence:
This is problematic because each of the trade marks is treated as a separate mark for the purposes of s 60.[14]
[14] Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).
Consequently, the s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Marks would not could be contrary to law.[15]
[15] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The Opponent submits that use of the Trade Marks would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). The Opponent also submits that use of the Trade Marks would amount to the common law tort of passing off.
ACL
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[16]
[16] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
The relevant provisions of the ACL require that I be satisfied that there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods & Services, or as to them having some connection with the Opponent. This is a stricter requirement than s 60 which only requires conduct that would be likely to deceive or cause confusion.
As already indicated in respect of s 60, I am not satisfied that use of the Trade Marks is likely to deceive or cause confusion. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Marks is likely to mislead or deceive or amount to a false or misleading representation.
Passing Off
Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
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.[17]
[17] [1989] FCA 506, [40] (Hill J).
Section 18 of the ACL is the equivalent of s 52 of the TPA.[18] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
[18] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).
As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Marks does not amount to passing off.
The ground of opposition under s 42(b) of the Act has not been established.
Section 43
Section 43 of the Act provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To succeed under this ground of opposition, the Opponent must establish that there is a connotation within the Trade Marks and, because of that connotation, the use of the Trade Marks would be likely to deceive or cause confusion.
The Opponent asserts that due to the reputation in the YQME Trade Mark and the YQME Formative Trade Marks, use of the Trade Marks is likely to falsely convey to consumers that the Applicant has the licence or approval of the Opponent.
Section 43 of the Act is concerned with a connotation arising from the Trade Marks, not from a likelihood of deception or confusion resulting from similarities between the Trade Marks and another trade mark.[19] As such, any deception or confusion resulting from the similarity with the YQME Trade Mark or the YQME Formative Trade Marks is outside the scope of s 43 of the Act.
[19] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).
Furthermore, I am not satisfied that the Trade Marks contain a connotation. A connotation is a secondary meaning implied by a trade mark.[20] Whilst an implication of sponsorship or association can qualify as a secondary meaning,[21] it must be more than mere allusion or suggestion. In this instance, the evidence does not establish that the Opponent’s use of ‘YQME’ is so well-known that use of a trade mark containing the letters ‘YQ’ connotes the Opponent, or an association with the Opponent.
[20] Ibid.
[21] Ibid [55].
Consequently, the s 43 ground of opposition has not been established.
Decision
Section 55 of the Act relevantly 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.
The Opponent has not established a ground of opposition. Accordingly, trade mark numbers 2048200 and 2048201 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.
Costs
The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.
In respect of trade mark number 2048200 I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth). In respect of trade mark number 2048201 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[22]
[22] [2001] ATMO 78.
Katrina Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 August 2022
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
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