On 14 February 2014, Platinum Freight Management Pty Ltd (Applicant) filed Australian trade mark application 1606084 for the term ‘PLATINUM LOGISTICS’ in class 36 for “Customs brokerage” and in class 39 for “Transportation and courier services, including the transportation by land, sea and air of documents, goods and parcels; packing, storage and delivery of goods; freighting; shipping, brokerage and forwarding of cargo; customs clearance services being logistics, transport and storage services; warehousing” (Application). The Application was advertised as accepted for registration on 10 July 2014. Platinum Logistics Pty Ltd (Opponent) filed a Notice of Intention to oppose the Application on 9 September 2014. The Statement of Grounds and Particulars filed by the Opponent relied on sections 44, 58, and 60 of the Trade Marks Act 1995 (Cth) as grounds of opposition. As the self-represented Opponent did not file any evidence or written submissions, the grounds of opposition under sections 58 and 60 were not established.

Hearing Officer Cristy Condon’s decision with respect to the opposition was handed down in Platinum Logistics Pty Ltd v Platinum Freight Management Pty Ltd [2016] ATMO 18 (23 March 2016).

Section 44 Ground of Opposition

Substantially identical

In applying the side-by-side test in Shell full name, the Hearing Officer concluded that the common element, PLATINUM, was not sufficient to impose an impression of resemblance between all the marks, due to the presence of other descriptive words and design elements.

Deceptively similar

The Opponent made its case on the basis that the Mark was deceptively similar to its own mark, ‘EXPRESS POST PLATINUM’, as the two marks both conveyed the same idea of the superiority of their services. However, the fact that the marks both contained words that conveyed a common idea was not enough to satisfy the requirements of s 44 of the Act.

Relevantly, the Hearing Officer said,

‘The word “PLATINUM” is the only element in common to the trade marks and is, at best, strongly allusive to the character or quality of the services because it is used by many different traders as an indication of the quality of the services on offer’

This is particularly reminiscent to us of credit cards: “platiunum” credit cards are touted as being better than “gold” credit cards.

As the Opponent failed to establish a ground of opposition, the Mark proceeded to registration under subsection 55(1) of the Act.

Conclusion: common idea not sufficient

The decision demonstrates that in order to establish the ground of opposition under s 44 of the Act, more is needed than the presence of words that convey a common idea.