Case Note: Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719

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Background

The parties to this case are:

  • Sensis Pty Ltd (“the Applicant”), who are a direct marketing and data processing business in Australia, and who is the registered owner of the following Australian Trade Marks (“the Sensis marks”):
  • Senses Direct Mail and Fulfillment Pty Ltd (“the Respondent”) who provides direct mail services under or by reference to one or more of the following marks (“the Senses marks”):
    • SENSES DIRECT
    • SENSES DATA

In February 2016, the Respondent applied to register the following trade mark for a range of services including marketing services and business marketing consulting in Class 35:

The Applicant alleges that the SENSES marks are deceptively similar to the SENSIS mark, and that by using the SENSES marks, the Respondent has infringed the Applicants rights under s120(1) of the Trade Marks Act 1995 (Cth)

The Respondent denied the infringement claim in relation to the SENSIS DIRECT trademark. However, they did not contest the claims relating to the SENSES DATA trademark.

The Respondent also cross-claimed against the Applicant for the removal of certain services from their registrations for non-use.

Are the marks deceptively similar?

The first issue to be considered in this case is whether the marks are deceptively similar.

This issue is a question of the impression that persons of ordinary intelligence and memory would have of the mark SENSES DIRECT based on their recollection of the applicant’s mark SENSIS.

It is also important to note that the deceptive similarity analysis in the context of trade mark infringement can only be undertaken by reference to actual instances of use of SENSES DIRECT by the Respondent.

The Judge in this case was sufficiently satisfied that the SENSES DIRECT mark is deceptively similar to the SENSIS marks. In reaching this decision, he noted the following:

  • There is a considerable visual and aural similarity between the words ‘SENSIS’ and ‘SENSES’;
  • The additional word ‘DIRECT’ is merely descriptive, and does not add a distinctiveness to the mark taken as a whole;
  • There was evidence of many misspellings of ‘SENSES DIRECT’ as ‘SENSIS DIRECT’ amongst consumers;
  • There were instances of actual confusion by consumers.

Does the Respondent have a defence to Infringement?

One defence to infringement in Australia is where the Court is of the opinion that the infringer would obtain registration of the relevant trade mark in his or her name if the person were to apply for it (s 122(1)(fa) of the Trade Marks Act 1995).

The Respondent argued that if their use did amount to infringement, they could use this defence on the basis that they could establish honest concurrent use i.e. that they adopted their marks honestly and that they had used their marks for a significant period of time, without any instances of confusion arising.

However, a big issue in this case was the question of when this defence is to be assessed.

The Respondent believed that it should be assessed as at the date of filing its actual application (which was 2 February 2016). If this was not accepted, they argued the following alternate dates:

  • The date on which the Respondent filed its defence (which was 11 August 2016); or
  • As at the date of the hearing in April/May 2018.

In contrast, the Applicant argued that the defence is to be assessed as at May 2013, which is when the first alleged infringing conduct occurred.

Both parties submitted arguments in support of their case. However, the Judge agreed with the Applicant and held that the assessment is to take place at the date on which the first alleged infringing conduct occurred.

In any event, it was held that the Respondent would not have succeeded in establishing honest concurrent use of the mark. While the judge accepted that the Respondent adopted the SENSES marks honestly, he decided not to exercise his discretion to register the mark, primarily due to the high degree of confusion that was likely and the inconvenience to each of the parties.

Did the Applicant have a sufficient reputation to preclude registration of the SENSES DIRECT trade mark?

The Applicant asserted that even if the Respondent could establish honest concurrent use, that they should still not obtain a registration of their SENSES DIRECT mark due to the significant reputation the Applicant has obtained in Australia.

To succeed on this ground the Applicant had to establish:

  • That it had acquired a reputation in Australia in the SENSIS marks, before the priority date of the SENSES DIRECT application;

  • That because of this reputation, the use of the SENSES DIRECT mark will cause deception or confusion; and
  • That the likelihood of deception or confusion is real and tangible.

Based on the evidence lodged, it was found that the Applicant’s reputation did not extend to services beyond directory services. Accordingly, the decision was that s60 would not apply to preclude registration of the Respondent’s SENSES DIRECT mark. However, ultimately this finding was redundant, as the Respondent failed to establish honest concurrent use.

As a side note, the judge also had no hesitation in confirming the decision of Kenny J in McCormick & Company Inc v McCormick (2000) 51 IPR 102 that honest concurrent use is not a defence to grounds of opposition under section 60 (likelihood of confusion based on reputation). While the judge’s comments had no effect on the outcome of the case (section 60 not being made out in any event), it is interesting to see that this authority is still being challenged. 

Cross claim for non-use

The Respondent also cross claimed against the Applicant for removal of certain services from the SENSIS marks for non-use. In particular, the Respondent sought to have the following exclusion added the Applicant’s class 35 services (“the proposed excluded services”):

None of the aforesaid services in Class 35 including the planning, preparation and distribution of direct mail marketing materials through parcel and mail delivery services; and also not including the following services provided as part of the delivery of the planning, preparation and distribution of direct mail marketing materials through parcel and mail delivery services: mail delivery (electronically and with Australia Post); mail fulfilment; digital printing, folding and plastic wrapping of mail materials, intelligent inserting of mail into envelopes, targeting mailing lists, compilation of mailing lists, related SMS messaging; related electronic mail messaging.

To defeat the non-use action, the Applicant had to show that they had used the SENSIS marks between 11 July 2013 and 11 July 2016, in connection with the proposed excluded services.

The Applicant argued that they had sufficient use based on their evidence showing use in respect of services which facilitate the sending of direct mail marketing services through data validation and deduplication services known as MacroMatch offered by Sensis Data Solutions.  However, the Respondent argued that this use did not amount to use of the mark on the proposed excluded services and made the following comments in their closing submissions:

MacroMatch is necessarily agnostic as [to] the type or format of data it is washing, and the use to which it might be put.  The data could be used for “customer service and support”, “telemarketing campaigns”, “customer data projects” and “CRM Programs” as well as direct mail marketing.  Further, the applicant does not use the data after it has been “cleansed”; it returns it to the customer and swiftly deletes it.  Therefore, the applicant never makes use of the data to any particular end, it merely provides a service to cleanse data.  It is up to the customer to then use the data itself, or go to a third party provider to use the data.

Based on the information available, the Judge came to the conclusion that the differences submitted by the Respondent are immaterial because both services involve the provision of data processing services that enable a customer to undertake their marketing activities.

As such, the Judge ruled in the Applicant’s favour.

It was also found that the public interest favoured the exercise of discretion not to remove the proposed excluded services for the following reasons:

  • As at 2016 the Applicant had acquired a reputation in the SENSIS marks amongst the public generally with respect to advertising and marketing services;
  • The likelihood of confusion between the marks being heightened by the changes that have occurred in the market for advertising and marketing services over the past decade including the Respondent extending their direct marketing services to provide a wider variety of advertising and marketing services;
  • The instances of the misspellings of SENSES DIRECT as Sensis or Sensis Direct and the evidence of confusion.

Summary

A summary of the key points in this decision are:

  • The SENSES DIRECT marks are deceptively similar to the SENSIS marks;
  • The defence to infringement under s 122(1)(fa) is to be established at the date of the alleged infringing conduct;
  • The Respondent failed to establish a suitable defence to infringement via Honest Concurrent Use or ‘other circumstances’;
  • The Applicant successfully defended the cross claim for non-use;
  • The Respondent’s SENSES DIRECT mark was found to have infringed the SENSIS marks in Australia.

This case highlights the importance of conducting due-diligence prior to using or applying to register a trade mark in Australia, to minimise the risk of a dispute occurring once significant money has been invested in a brand.

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