Key Points

  • The 'Mind Your Own Business' trade mark has a significant reputation.
  • Use of the trade mark 'Train Your Own Business & Device' is likely to be confused by consumers with the 'Mind Your Own Business' trade mark.
  • Where one trade mark has been clearly derived from another this strongly supports a conclusion that consumers would confuse the marks.

Facts

On 18 January 2010, Scott Ford filed an application for registration of the following trade mark in respect of range of training services in class 41:

Click here to view trade mark.

The application was accepted for registration and opposed by MYOB Technology Pty Ltd.  MYOB was represented by Davies Collison Cave, Patent and Trade Mark Attorneys.

Relevantly, the applicant had filed an earlier application on 5 October 2009 covering an identical range of services in class 41 for the following mark:

Click here to view trade mark.

This application was examined by the Trade Marks Office and encountered objections based on some thirty of MYOB's earlier applications and registrations.  The application lapsed as a result of Mr Ford not responding to the objections.  This lapsed application has considerable similarity to the stylised version of MYOB's logo mark which is as follows:

Click here to view logo mark.

In its opposition, MYOB led evidence of use since 1991 of the marks MYOB and 'Mind Your Own Business' to demonstrate its marks have a significant reputation in Australia.  MYOB also filed evidence of the earlier application filed by Mr Ford.

Mr Ford asserted in his evidence that the trade marks, the subject of his applications, had been designed by a third-party graphic designer engaged for the purpose of developing a logo for his new business.  Although no supporting evidence was provided, it was asserted that the Graphic Designer provided two logo trade marks which were the subject of his trade mark applications.

Mr Ford asserted that after his initial trade mark application was rejected, he filed an application to register the opposed mark.  He asserted that it was not his intention to take advantage of the reputation of the MYOB trade marks.

The matter was before the Delegate of the Registrar of Trade Marks, Iain Thompson.

The Decision

The Delegate considered the matter under Section 60 of the Trade Marks Act 1995 (Cth). On the issue of reputation, he concluded that "in view of the very high turn over under the trade marks MYOB and 'Mind Your Own Business', it is obvious that the reputation of the trade marks on which the opponent relies are substantial and those reputations are primarily amongst business professionals and those who run or manage small businesses".

In turning to the issue of confusion, the Delegate found the earlier filing of the lapsed application of importance, noting that "… the conclusion that the opposed trade mark was coined by the applicant with reference to the opponent's 'Mind Your Own Business' trade mark is unavoidable…"

The Delegate identified this as within the principle set out in Australian Woolen Mills Ltd v F S Walton & Co. Ltd1as follows:

"The rule that if a mark or get up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. …Moreover, he can blame no one but himself, even if this conclusion be mistaken that his trade mark or the get up of his goods will confuse and mislead the public".

The Delegate then held that the conclusion that use of the opposed mark would confuse is also "unavoidable".  He notes that when the reputation of the 'Mind Your Own Business' trade mark is taken into account, the obviousness of the derivation of the 'Train Your Own Business' mark is a "strong associative force" between the trade marks of the parties.

The Delegate further noted that MYOB offers training services via its accredited trainers and found it likely that people would have cause to wonder whether training courses offered under the 'Train Your Own Business' mark are offered by the same person who offers accountancy and book-keeping software under the trade mark 'Mind Your Own Business'.

The Delegate rejected the application and awarded costs to MYOB.