Limitations on the Prior Use Defence: Cabcharge Australia Limited v E2 Interactive [2017] ATMO 76 (28 July 2017)

On 30 August 2011, e2Interactive Inc. (the Applicant) filed a trade mark registration application for the following logo (the Trade Mark), covering a wide variety of products and services under classes 9, 35, 36, 38, 40, and 41, but mostly in relation to cards, communication, entertainment, and marketing/advertising. The application was initially rejected after examination revealed possible grounds for rejection under s 44, but the Applicant was able to provide evidence of prior use and the Trade Mark was advertised for possible registration. The Applicant engaged in the very Australian practice of drafting a trade mark application with a very wide specification. The Applicant’s trade mark included material for which it did not have evidence of use, but further, to which it seems unlikely to have ever wanted to applied the trade mark.

This opposition had been a long time coming. The proceedings commenced prior to the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and accordingly, those amendments did not apply to this matter.

The application was opposed by Cabcharge Australia Limited (the Opponent.) Adopting the classic “scattergun” approach to drafting notices of opposition, the Opponent initially relied upon most of the grounds of opposition available under the Act, but later advised that it would focus only upon the ss 42(b), 44, 60, and 62(b) grounds.

As part of its evidence, the Opponent drew the hearing officer’s attention to pending trade mark No. 1390374 (“FASTCARD”) and the recently registered trade mark1416896, for “CABCHARGE FASTCARD.” Both trade marks cover goods and services in relation to various printed matter, electronic funds transfer, and taxi services that utilise electronic funds transfer.

The usual point of difference between s44 and s60 of the Act came into play. Under s 44 of the Act, the respective marks must be considered as being in “notional use” in relation to all of the goods or services covered by the application(s) or registration(s) under comparison, whether or not such use has actually taken place. Under s 60, however, it is the actual past use enjoyed by the mark(s) relied on by an opponent which matters and not any abstract concept of notional use. In furtherance of this, the Opponent also provided evidence of extensive marketing and advertising using its “FASTCARD” trade mark, as well as proof of substantial revenue from the period of 2010 to 2013. But the revenue attributed to just the case of the mark “FASTCARD” was not separated out from other revenue. The Hearing Officer noted this. This led to the failure of the s60 ground. (The 42(b) and 62(b) grounds similarly failed.)

The outcome then hinged on s 44, and deceptive similarity. Upon noting that an average consumer has a general awareness of traders’ tendency to update their branding over time (unfortunately, with this very interesting concept confined only to a single line within a single paragraph), the Hearing Officer found deceptive similarity between the Applicant and the Opponent’s trade marks:

“In my opinion the word ‘Fastcard’ is a memorable, essential and distinguishing feature of the Trade Mark and also of both the Opponent’s trade marks. It is likely that deception or confusion could occur through contextual confusion whereby the word ‘Fastcard’, the common and memorable element in each of the respective trade marks, may induce traders and the public to believe that the trade marks emanate from the same trade source.”

With deceptive similarity established, the next issue was prior use as a defence. The Applicant submitted proof of individual agreements and presentations with nineteen partners for their cards or technology that bear the trade mark. The earliest of these was a presentation entitled “InComm Executive Overview” and “InComm Overview” which were made to two retailers in May 2010, which contain images of the prepaid cards bearing their trade mark. Other evidence included copies of email between the Applicant and other Australian retailers dated August 2010, and contain attached images of prepaid cards, some of which bear the applied-for trade mark. Other evidence included a copy of a full page advertisement which appeared in the Xbox 360 Magazine and the GameInformer Magazine in December 2010. The advertisement contained images of seven prepaid cards, some of which also evidenced use of the trade. But despite the strong evidence showing prior use within the context of prepaid cards that bear the Trade Mark as early as 22 September 2010, the Hearing Officer clarified that it only satisfiedprior use in relation to a narrow specification of the goods and services claimed, namely Class 9 and Class 36.

At best, the Applicant had fourteen months of use in Australia prior to the relevant date, only some of which was concurrent with the Opponent. With no sales figures or advertising spend evidence to support the short period of concurrent use, the Hearing Officer considered the prior use defence only partially established. As such, the Applicant’s Trade Mark proceeded to registration with protection for only limited goods and services.

The order relating to the costs of the application was that each party was to bear its own costs. This is because of the following: “83.On 10 July 2017 I informed the Applicant’s representative that it was my intention to refuse to register the Trade Mark unless the specification was refined in classes 9 and 36 in accordance with the evidence of prior use and that the remaining conflicting goods and services were deleted. On 27 July 2017 the Applicant agreed to these amendments.” The suggestion is that if, perhaps, the Applicant had done this much earlier in the piece to the opposition hearing might have been avoided.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.