A new decision from the Australian Administrative Appeals Tribunal has further confused businesses on issues of similarities around business names. I have written twice previously in this blog about the importance of business names in Australia – a compulsory form of consumer protection quite separate from trade mark registration, which can lead to substantial fines for non-compliance.
B & L Whittaker Pty Ltd (Whittaker) had been conducting business related to concrete pumping under the registered business name ‘Cairns Concrete Pumping’ since May 1999. Recently a competitor, M & M Concrete Pumping Pty Lt (M & M) has set up a similar business. M & M made an online application to the Australian Securities and Investments Commission last February 2013 in an effort to register the business name ‘Cairnscrete Pumping.’
The Commission registered the name Cairnscrete Pumping last April 18, 2013, but the registration was allowed without any human intervention – the decision to register the name was made by the application of a computer programme. Whittaker eventually learned of the Cairnscrete Pumping name being registered, and sought a review of the Commission’s decision on September 18, 2013.
A month later, on October 2013, the Commission (this time with a real person making the decision) affirmed the registration for the name Cairnscrete Pumping. Whittaker was not satisfied with that decision and appealed.
The business names “Cairns Concrete Pumping” and “Cairnscrete Pumping” are very similar and obviously could lead to confusion, which is one of the things that legislation seeks to address by not allowing identical or nearly identical business names to be registered.
The Business Names Registration Act 2011 (Cth) (BNR Act) and the Business Names Registration (Availability of Names) Determination 2012 (Determination) determine whether the two registered business names are identical, notably the instruction to disregard spaces between characters “used in one or both names,” and the case of letters. Additionally, Schedule 1 of the BNR Act outlines a number of items or words that will be taken to be the same as each other word in the group, with item 212 listing “concrete pumping, concreting, crete, formwork” as the same.
ASIC submitted that the application of the rules involved a comparison of the content of each business name, by virtue of elimination of identical parts; if all identical elements have been removed and some part of one or the other of the names remain, then by definition the two names are not identical or nearly identical. For this case, the Commission presented the following comparison of the two business names in question:
1. The word “Cairns” is removed since it is present in both names
2. As per sch 1, item 212 of the BNR Act, the expression “concrete pumping” is removed from Cairns Concrete Pumping while “crete” is removed from Cairnscrete Pumping.
3. Nothing is left from Cairns Concrete Pumping, but the word Pumping is left from Cairnscrete Pumping.
4. Therefore, the Commission believes that the names are not identical or nearly identical.
5. The Commission also argues that a lack of identity can be demonstrated by substituting words that are taken to be identical or nearly identical. For example, with Crete being identical to concrete pumping as per item 212 of the BNR Act, substituting concrete pumping for crete results in M & M’s business name being read as Cairns Concrete Pumping Pumping.
Whittaker argued that “crete” is a derivative form of concrete, and that on any sensible test, Cairns Concrete Pumping and Cairnscrete Pumping was nearly identical. Given the arguments presented by the parties involved, the Deputy President formed the view that the decision was, in his own words, “absurd” and “likely to produce confusion in the mind of consumers,” but nonetheless felt that he was bound by the Determination.
It was then upheld that both Cairns Concrete Pumping and Cairnscrete Pumping can both be on the register, although the Deputy President’s final words were: “Given the results of the two cases that so far have reached the Tribunal, it is highly desirable that further attention be given urgently” to legislative reform. Trade mark law has a very substantial body of judicial consideration around similarity between brands. This has not been imported into the business name legislative regime for reasons which are not apparent.