Case Notes, Deceptively similar?

Two yachts, one Anchorage

ANCHORAGE seems like a good name for a funds management business.  Sounds safe and secure.  It also reminds me of Michelle Shocked and Northern Exposure – but that’s just showing my age.  We can also thank Anchorage for Sarah Palin.

No doubt for these reasons, amongst others, the parties in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2015] FCA 882 independently chose the name of that fine town for their unrelated funds management businesses.

The applicant was an Australian company which had operated here since 2007, while the respondents were a US firm called Anchorage Capital Group LLC and its wholly-owned Australian subsidiary, ACPA Pty Ltd.  The respondents’ business started in the United States in 2003 and established a presence in Australia in 2011.

On 26 May 2011, the applicant applied for registration of the marks ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL PARTNERS in respect of various financial services.  Those applications proceeded to registration.

Things became complicated when, in 2013, the applicant moved into the Suncorp building in Sydney’s CBD – the same building that the respondent subsidiary company occupied.  Although the subsidiary company traded under its own name, ACPA Pty Ltd, it described itself on signage in the lobby of the Suncorp building as “ACPA a subsidiary of Anchorage Capital Group LLC“.  After some discussion and debate between the parties, the reference to Anchorage Capital was removed after a few months.

This, however, did not resolve matters.

In the proceeding before Justice Perram, the applicant contended that the respondents’ use of the words ANCHORAGE CAPITAL in the building’s lobby, the use of email addresses in the form @anchoragecap.com and @acpa.anchoragecap.com, and other uses of ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP, in relation to the provision of financial services in Australia amounted to trade mark infringment pursuant to s 120(1) of the Trade Marks Act 1995 (Cth).

The applicant also alleged passing off and breach of the Australian Consumer Law.

The respondents cross-claimed to have the applicant’s trade marks removed from the register on the grounds that it was not the owner of those marks at the time of its application.

His Honour accepted that the words ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP were substantially identical or deceptively similar to the applicant’s registered marks;  as were email addresses in the form @anchoragecap.com.  Addresses in the form @acpa.anchoragecap.com, however, were not deceptively similar and nor was the phrase “ACPA Pty Ltd a subsidiary of Anchorage Capital Group LLC.”

These findings, however, were not sufficient to make out the applicant’s case.  Whilst the marks used by the respondents were deceptively similar to the applicant’s registered marks,  those marks had not been used by the respondents as trade marks in Australia since the priority date.

His Honour said:

There is simply no evidence that either respondent provided any of their funds management services to anyone in Australia after the priority date.  What they have done is trade in their own names.  This is not trade mark use.

Of course, it is both possible and common to use one’s own name as a trade mark.  There is a defence expressly provided for such use when it is in good faith.  Indeed, his Honour went on, in obiter, to say that had he concluded that the respondent parent company infringed the applicant’s marks, he would have considered that s 122(1)(a)(i) of the TMA (the own name defence) would have applied.

His Honour’s finding, however, was that no services had actually been provided by either of the respondents by reference to ANCHORAGE or its variants since the priority date.

His Honour had already found that the first respondent (ACPA Pty Ltd) used the names ANCHORAGE and ANCHORAGE CAPITAL after June 2011 (i.e. after the priority date).  This plainly was not use of its own name.  His Honour considered, however, that this use was to indicate the subsidiary’s connection with its parent and was not use as a trade mark.  It appears that his Honour considered that the subsidiary company was not actually providing any services to anyone in Australia.  The respondents’ contention that the subsidiary was doing nothing but providing advice to its parent was expressly rejected but his Honour noted that “the reality is that [the subsidiary] assisted [the parent] in its transactional work in AustraliaIn the course of doing so it used [ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP]

In obiter, Perram J said that if he had concluded that the respondent subsidiary company infringed the applicant’s marks, he would have considered that s 122(1)(b)(i) would have applied in relation to the use the phrase “ACPA a subsidiary of Anchorage Capital Group LLC” because that use was in good faith to indicate a characteristic of the first respondent’s services, namely, the relationship between those services and the second respondent.  That is, his Honour accepted that “being a subsidiary of another company can be correctly described as a characteristic” for the purposes of s 122(1)(b)(i) of the TMA.

The passing off and ACL claims were dismissed.

The cross-claim appears likely to succeed but is not finalised.  On the basis of a small amount of use of the marks ANCHORAGE and ANCHORAGE CAPITAL by the respondent parent company in Australia in 2007, his Honour accepted that the applicant was not the owner of its marks at the time it applied for registration and that the discretion to remove them from the register was enlivened.  His Honour considered himself bound by earlier Full Court authority to conclude that the power to remove was discretionary – although he preferred the view of an earlier single judge decision that it was not.  Submissions are to be filed on whether that discretion should be exercised and an decision on that issue will follow in due course.

It appears that no party raised the issue of whether ANCHORAGE being a geographic location presented a barrier to registration in the first place.

“…you know you’re in the largest state in the union
When you’re anchored down in Anchorage”

Case Notes

Lift Shop appeal fails to get up

Use “as a trade mark” for the purposes of s 120 of the Trade Marks Act 1995 (Cth) is conceptually difficult but absolutely critical to an understanding of trade mark infringement. Unless the respondent’s use of the impugned mark is “as a trade mark” it does not infringe the registered mark.

Two recent decisions of the Full Court of the Federal Court have considered this issue,  most recently in a decision published today in the case of Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75.  The Full Court in Lift Shop upheld the primary judge’s finding that the respondent’s use of the phrase “LIFT SHOP” was not use “as a trade mark” in the relevant sense.

The Court (Besanko, Yates & Mortimer JJ) applied the classic authorities on this issue (The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 and Coca Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107) as well as the other recent Full Court case (Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 272 ALR 487) before concluding:

“In the present case, the relevant question is whether the words “Lift Shop”, as used by the respondent in the title of its web page, functioned to distinguish its goods or services from those of others?  Objectively considered, the answer to that question is “no”. “

The following six principles for determining whether use was “as a trade mark” were set out by the Full Court in Nature’s Blend at [19] and affirmed by the Full Court in Lift Shop (citations omitted):

1. Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else;

2.   A mark may contain descriptive elements but still be a “badge of origin”;

3. The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand;

4.The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”;

5.Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words;

6.  In determining the nature and purpose of the impugned words, the Court must ask what a person looking at the label would see and take from it.