FEDERAL COURT OF AUSTRALIA

GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519

ORDERS

THE COURT ORDERS THAT:

1.    The parties are to confer in relation to the proposed orders set out at [200] of the reasons for judgment of Markovic J published on 16 May 2017 and, if alternative or additional orders are sought:

(a)    provide draft consent orders setting out the alternative or additional orders sought to give effect to those reasons by 4.00 pm on 23 May 2017; or

(b)    if the parties cannot agree, each party is to provide draft orders setting out the alternative or additional orders proposed by that party to give effect to those reasons together with a submission, not exceeding 2 pages in length, explaining why those orders should be made by 4.00 pm on 23 May 2017.

2.    If the parties do not provide alternative or additional orders in accordance with Order 1 then orders will be made on 24 May 2017 in accordance with the proposed orders set out at [200] of the reasons for judgment of Markovic J published on 16 May 2017.

3.    If the parties provide alternative or additional orders in accordance with Order 1 then the proceeding will be listed before Markovic J on 24 May 2017 at 9.30 am.

4.    The parties are to file and serve submissions, not exceeding 5 pages in length, on the issue of costs of the appeal and to indicate in those submissions whether that issue can be dealt with on the papers by 30 May 2017.

5.    If an oral hearing is required on the question of costs then the matter will be listed on a date convenient to the parties and the Court for that purpose.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

MARKOVIC J:

introduction

1    On 9 November 2010 Gain Capital UK Limited (formerly City Index Limited) (Gain) applied for registration of two trade marks:

    the first trade mark, the subject of application number 1393370 (CITYINDEX Mark), is:

Registration was sought for the CITYINDEX Mark in respect of services in Class 36, including “[f]inancial services; providing general financial services advice for derivative and foreign exchange contracts”; and

    the second trade mark, the subject of application number 1393371 (IFX Mark), is:

Registration was sought for the IFX Mark in respect of the same class of services as the CITYINDEX Mark, also including “[f]inancial services; providing general financial services advice for derivative and foreign exchange contracts”.

2    The priority date for the purposes of the CITYINDEX Mark and the IFX Mark (collectively, Gain Marks) is 9 November 2010 (Priority Date).

3    Citigroup Inc (Citigroup), the respondent to this proceeding, opposed registration of the Gain Marks before the Registrar of Trade Marks (Registrar) pursuant to ss 44, 59 and 60 of the Trade Marks Act 1995 (Cth) (TM Act). On 6 May 2014 the Registrar, by her delegate, found the s 60 ground of opposition to be made out and refused to register the Gain Marks on that basis.

Grounds of appeal and opposition

4    By its amended notice of appeal filed on 15 March 2016 Gain appeals the Registrar’s decision pursuant to s 56 of the TM Act. Its appeal is limited to the Registrar’s refusal to register the Gain Marks in respect of a narrower description of services than that originally sought, namely “[f]inancial services, being trading services for retail, over the counter derivatives provided through a user online software program or provided electronically or via other communicative means” (Designated Services).

5    In its further amended statement of grounds relied upon in this proceeding Citigroup relies on ss 44, 59 and 60 of the TM Act as grounds of opposition to registration of each of the Gain Marks. In summary, Citigroup contends that registration of the Gain Marks should be refused because:

(1)    they are substantially identical with, or deceptively similar to, trade marks registered by Citigroup in respect of similar services or closely related goods which have an earlier priority date (s 44(2) of the TM Act) and they are not otherwise entitled to be registered under s 44(3) of the TM Act;

(2)    trade marks registered by Citigroup had acquired a reputation in Australia before the Priority Date and because of that reputation the use of the Gain Marks would be likely to deceive or cause confusion (s 60 of the TM Act); and

(3)    Gain did not, as at the Priority Date or alternatively as at 8 November 2011, the date on which Citigroup opposed the registration of the Gain Marks, intend to use or authorise the use of the Gain Marks in Australia or assign the Gain Marks to a body corporate for use in Australia in relation to the Designated Services (s 59 of the TM Act).

Citigroup’s trade marks in Australia

6    Citigroup, as at 10 April 2015, was the proprietor of 122 Australian trade mark registrations and pending applications, 100 of which feature the word “Citi”. They relevantly include the following trade marks registered in Citigroup’s name in Australia for the goods and services specified below (collectively, Citigroup Marks), which Citigroup relies on for the purpose of its grounds of opposition:

RELEVANT facts

7    A significant amount of evidence was tendered at the hearing. Much of it went to describing the nature of the business operated by each of Gain and Citigroup, including the range of services they provided. Citigroup’s evidence also focused on its reputation in the Citigroup Marks.

8    It is convenient to identify those witnesses relied on by each of Gain and Citigroup and their respective roles.

9    Gain relied on the following witnesses:

    Nigel Rose, its Chief Financial Officer since March 2010;

    Alexis Webster, Senior Vice President, Strategy at Gain since September 2011. Mr Webster was also the Executive Director, Commercial Development in the period January 2004 to April 2009 at the City Index Group, which was subsequently acquired by Gain as explained at [14] below; and

    Sarah Dixon, a solicitor in the employ of Gain’s solicitors.

10    Citigroup relied on the following witnesses:

    Ashley Cole, Head of Branches, Retail Distribution for Citigroup Pty Ltd (Citi Australia), an Australian subsidiary of Citigroup;

    Eileen Kennedy, a Managing Director of Citigroup and General Counsel in Citigroup’s Operations and Technology and Intellectual Property Law Group;

    Thomas Klaffky, a Managing Director and President of Citigroup Index LLC (Citigroup Index);

    Adam Lavis, a Co-Head – Equities of Citigroup Global Markets Australia Pty Ltd (CGMA), an Australian subsidiary of Citigroup;

    David Zammit, Head of Banking and Wealth Management Distribution for Citi Australia;

    Mungo McCall, a Business Development Manager in Ebiquity Plc;

    Fiona Smedley, a partner in the Financial Services group at Herbert Smith Freehills;

    Cara Gerace, a solicitor in the employ of Citigroup’s solicitors; and

    Edward Irving, another solicitor in the employ of Citigroup’s solicitors.

11    Only Messrs Rose, Webster and Zammit were cross-examined.

12    What follows is a summary of the relevant evidence as it relates to Gain or Citigroup.

Gain

13    In order to understand Gain’s trading history in Australia it is necessary to set out the history of City Index Limited. That company was established in 1983 in the United Kingdom. It was a wholly owned subsidiary of City Index Group, a company registered in England and Wales. In 2001 City Index Limited launched contracts for difference (CFD) trading in the United Kingdom.

14    After undertaking an analysis of the Australian market in 2005 Mr Webster decided that it was best for City Index Limited to enter the Australian market via acquisition rather than organically. In late 2006 City Index Limited acquired IFX Markets PLC, the parent company of a business in Australia then named GreenCFDs. In early 2007 the GreenCFDs business was rebranded as “City Index” and since that time has provided trading services for retail over the counter (OTC) derivatives in Australia under the CITYINDEX Mark (City Index Australia business).

15    From 2007 until February 2010 the City Index Australia business operated as a branch of IFX Markets Ltd, which was part of the City Index group of companies. In February 2010 City Index Australia Pty Ltd was incorporated in Australia to run that business. In or about April 2015 Gain acquired the City Index group of companies and in or about May 2015 City Index Australia Pty Ltd was renamed Gain Capital Australia Pty Ltd.

16    Mr Webster explained the nature of a derivative contract and the Designated Services in the following terms:

(1)    a derivative is a contract that derives its value from the performance of an underlying entity, for example, a share, index or exchange rate. Derivatives can be either OTC or traded on an exchange. For exchange traded derivatives, features such as pricing, maturity, frequency and quantity of a derivative are standardised. When dealing in exchange traded derivatives, the clearing house, which is the financial institution that provides clearing and settlement services for financial and commodities derivatives and securities transactions, guarantees that the parties to a transaction perform their obligations. That is, it assumes all contingent default risk so that each party does not need to know about the other’s credit quality;

(2)    OTC derivatives are not traded on a formal exchange but in some other context, generally via a dealer network. For OTC derivatives, features such as their pricing, maturity, frequency and quantity are customisable and, when trading them, the absence of an exchange means that there is no clearing house to guarantee performance. That is, performance is based on a contractual agreement and there is credit risk for both parties;

(3)    within the OTC derivative space there is a distinction between providers of retail OTC derivatives and providers of institutional OTC derivatives, based on the distinction between retail and institutional traders. Retail traders buy or sell derivatives for personal accounts. Institutional traders buy and sell derivatives for accounts they manage for a group or institution or they can be professional investors; and

(4)    given the differences in the type of trade and in the different regulatory environments for retail and institutional traders, it is common for providers of OTC derivatives to only provide trading services in respect of either, but not both, retail or institutional OTC derivatives. Since 2007 the business operated in Australia by Gain and its predecessors has provided trading services in respect only of retail OTC derivatives.

17    Mr Webster also explained the regulatory environment for the Designated Services and some of the general practices adopted by providers of the Designated Services. In particular he gave evidence that:

(1)    since around the early 2000s each provider of the Designated Services in Australia has been required by Australian corporations law to hold an Australian Financial Services Licence (AFSL) and to provide its clients with a financial services guide and product disclosure statement (PDS) for each relevant financial product issued by it;

(2)    the financial services guide and PDS are required to include the Designated Services provider’s name. In Mr Webster’s experience, it is standard practice for the Designated Services provider to include at least one of its trade marks on those documents. For the City Index Australia business:

(a)    its Combined Financial Services Guide and PDS for CFDs and Binary Options prepared on 21 December 2006 features the CITYINDEX Mark on its front and back pages;

(b)    its Combined Financial Services Guide and PDS for CFDs and Binary Options prepared on 10 September 2007 features the CITYINDEX Mark on its front and back pages;

(c)    its Financial Services Guide dated 13 April 2010 and a revised version of that document dated 25 June 2010 features the CITYINDEX Mark on each page of those documents; and

(d)    its PDS and Customer Agreement for Margin Foreign Exchange, Bullion and CFDs dated 29 October 2010 features the IFX Mark on the front page, in the bottom right hand corner of each page of the PDS and in the top right hand corner of each page of the customer agreement;

(3)    based on his experience, it is general practice for Designated Services providers to ensure that when a potential client applies to receive the Designated Services the client is provided with the relevant PDS and financial services guide. The potential client is required to acknowledge that he or she has read and understood those documents before he or she can be accepted as a client and receive the Designated Services;

(4)    as a general practice, before a Designated Services provider accepts any funds from a potential client or provides any of the Designated Services, the Designated Services provider will require the potential client to enter into a client agreement for the provision of the Designated Services. The Designated Services provider will use application forms to gather relevant information in relation to potential clients. The forms also act as a mechanism through which clients become bound to specified terms and conditions. Those client agreements and application forms usually feature the name and trade mark of the Designated Services provider. In evidence is a City Index Australia Customer Agreement for CFDs and Binary Options with the application forms, which features the CITYINDEX Mark on its front and back page;

(5)    as a general practice, in addition to the risk warnings included in the applicable financial services guide and PDS, Designated Services providers display risk warnings in their marketing material and other communications provided to potential customers. This is done to ensure that customers are aware of the risks of investing in OTC derivatives. For example, the home page of the City Index Australia business website in or around July 2007 included the following statement:

Derivatives can be highly leveraged; they can carry a high level of risk, and are not suitable for all investors. Engaging in trading CFDs can carry a high risk. The extent of this risk can be inflated if credit, including credit cards, is used to facilitate the transactions.

(6)    as a general practice, Designated Services providers offer training courses to potential clients to teach them how to trade OTC derivatives and as a way to market the services they offer. Those training courses are, in Mr Webster’s experience, offered under and by reference to the name and trade mark of the Designated Services provider. For example, from in or around 2007 the City Index Australia business offered various training courses. Advertisements for such courses from late 2008 and early 2009 feature the CITYINDEX Mark. Mr Webster’s experience is that many clients of the City Index Australia business who opt to receive the Designated Services do so after attending a training course; and

(7)    as a general practice, Designated Services providers publish a platform guide which details the functionality of the trading platform on which clients receive the Designated Services. In Mr Webster’s experience, the platform guide is often provided by the Designated Services provider to a potential client before the client has entered into a client agreement and is otherwise available on the Designated Services provider’s website. The platform guide usually features the Designated Services provider’s name and trade mark. According to Mr Webster many potential clients of Designated Services providers choose to read or browse the platform guide before acquiring the Designated Services because it enables the potential client to determine how the Designated Services provider functions, its technological capabilities and the ease of using its trading platform. It also enables the potential client to compare the trading platforms of Designated Services providers. In evidence is the City Index Australia business’ trading platform guide for 2008, which features the CITYINDEX Mark on each page.

18    According to Mr Rose, customers for financial services have an awareness of brands for the product types and services that include Gain’s services because their finance may be at risk. They have a relatively high level of brand awareness, including a relatively high level of financial risk awareness. Mr Rose’s view is that these customers typically have some knowledge of the markets and would not typically comprise “mum and dad” investors.

The City Index Australia Business’ use of the CITYINDEX Mark

19    Messrs Webster and Rose gave evidence about use by the City Index Australia business of the CITYINDEX Mark.

20    First, the reports and financial statements for the City Index Australia business for the years ended 31 March 2008, 31 March 2009, 31 March 2010 and 31 March 2011 feature the CITYINDEX Mark. Those reports include the value of the commissions and fees made by the City Index Australia business from its clients’ trading but not the actual amounts traded by its clients in those periods. The value of the commissions and fees, which Mr Webster explained would only have been a small proportion of the total volume traded, was:

21    Secondly, from early 2007 until the Priority Date the City Index Australia business used the CITYINDEX Mark on its:

    website;

    PDSs;

    financial services guides;

    marketing and training material;

    trading platform, on various screens navigated by clients who were trading;

    trading platform guide;

    reports and financial statements; and

    communications with clients, including newsletters, emails and account statements.

22    Mr Webster says that each client who paid commissions or fees to the City Index Australia business was repeatedly exposed to the CITYINDEX Mark via the media set out above. Each potential client of the City Index Australia business was also exposed to the CITYINDEX Mark via a subset of those media, namely the PDSs, financial services guides, marketing and training material, trading platform guide and reports and financial statements.

23    According to a media release dated 24 August 2010 and issued by Investment Trends, a company which, among other things, provides reports on the CFD market, as at May 2010 there were 39,000 CFD traders of which 11% (approximately 4,400 traders) held accounts with the City Index Australia business.

24    Thirdly, in 2007 City Index Australia Pty Ltd sponsored a yacht named “City Index Leopard” in the Sydney to Hobart yacht race which placed second, attracting national media attention. In evidence is an advertisement run at that time, which includes the CITYINDEX Mark and an image of the yacht with the name “CITYINDEX.com Leopard” prominently displayed on its hull.

25    Fourthly, since in or about 2007 Gain has advertised in Australian newspapers and magazines. These advertisements have included the CITYINDEX Mark. For example:

    an advertisement appearing in The Australian newspaper on 14 March 2007 includes the CITYINDEX Mark and the words “City Index”;

    an advertisement appearing in the 20-26 September 2008 edition of Business Review Weekly includes the CITYINDEX Mark and the words “City Index”;

    a full-page advertisement appearing in the December 2008/January 2009 issue of Money magazine includes the CITYINDEX Mark and the words “City Index”;

    an advertisement appearing in the March 2009 issue of Money magazine includes the CITYINDEX Mark and the words “City Index”;

    an advertisement appearing in the August 2010 edition of the Australian Financial Review’s Smart Investor Magazine includes the CITYINDEX Mark and the words “City Index”; and

    an advertisement appearing in the October 2010 edition of the Australian Financial Review’s Smart Investor Magazine includes the CITYINDEX Mark and the words “City Index”.

26    Fifthly, Gain created a YouTube channel in or about 2010. Printouts from the channel dating from 2014 include the CITYINDEX Mark and the words “CityIndex”, including in relation to videos dating from “4 years ago”.

The City Index Australia business’ use of the IFX Mark

27    The City Index Australia business commenced using the IFX Mark in relation to the provision of the Designated Services where those services involved retail OTC foreign exchange derivatives from in or around late October 2010. In evidence are a City Index Australia business PDS, Financial Services Guide and Customer Agreement, each dated 29 October 2010 and each featuring the IFX Mark. Those documents were distributed to potential clients from in or about November 2010.

28    The IFX Mark has also been used in advertising the City Index Australia business. By way of example, Mr Webster says that in 2011 the City Index Australia business entered into a partnership with Porsche Cars Australia under which it became the title partner of the Porsche Carrera Cup Australia. A flyer promoting that partnership shows a photograph of a Porsche car with the IFX Mark clearly displayed on parts of the car. A press release issued by Porsche concerning the partnership includes the IFX Mark and refers to the securing of major sponsorship with IFX, which is described as a “new Australian FX trading company” that is part of City Index, “a global leader in online derivatives trading”.

Citigroup

29    Citigroup is a global financial services corporation. It has a long history dating back to 1812 when it was founded in New York as the City Bank of New York. By the early 1900s Citigroup had expanded its operations outside the US. It carried on business throughout Europe, the Americas and Asia. In 1967, when new banking regulations came into place in the US, Citigroup formed a holding company called First National City Corporation, which was renamed Citicorp in 1974. By the 1980s Citicorp was the largest financial services corporation in the world and Citibank was the largest bank in the US and the largest non-government owned bank in the world. In 1998 Citicorp and Travelers Group merged to become Citigroup.

30    It is apt to describe Citigroup as a global financial services giant. According to its 2010 annual report Citigroup’s profits globally were USD10.6 billion on revenue of USD86.6 billion and, in the Asia Pacific region, it employed more than 50,000 people in 19 markets including Australia.

31    Citigroup has had a permanent presence in Australia since the 1960s. In 1971 Citigroup acquired 21.7% of the Industrial Acceptance Corporation in Australia and in 1977 it acquired the remainder of that company and formed Citicorp Australia Holdings. Citigroup has held a banking license in Australia since 1985.

32    The business of Citigroup in Australia is divided into two main divisions: the institutional corporate client banking division and the consumer banking division. Citi Australia was incorporated in 1954 and operates Citigroup’s consumer banking division in Australia. It has changed its name several times since incorporation, taking its current name in December 2005. Since 1978 each version of Citi Australia’s name has included the prefix “Citi”. CGMA operates Citigroup’s institutional client division in Australia.

The institutional client banking division

33    The institutional client banking division is the wholesale arm of the Citigroup Australian business. Mr Lavis gave evidence about the nature of its business. It is a business with consolidated gross operating revenue fluctuating between approximately AUD730 million in 2005 and approximately AUD130 million in 2010, hitting a peak of approximately AUD1,200 million in 2007.

34    The institutional client banking division’s services are focused on large corporate accounts, international business relationships and investment research. Many of its clients trade across international borders on a daily basis and thus require the services of a global bank. The institutional client banking division also assists companies who are preparing for initial public offerings or other funding operations. It is split into a number of different businesses:

    capital markets origination, which provides financial advisory and capital raising services for institutional clients;

    corporate and investment banking, which includes mergers and acquisitions, equity and related financing solutions, funds management and corporate banking and finance services; and

    markets and security services, which includes custody and clearing, sales and trading and distribution and research.

35    Since at least 2007 the institutional client banking division has been branded with the Stylised Citi Mark. Prior to that time it was branded as Citigroup using the following mark (Citigroup Umbrella Mark):

36    Since at least 2007 the institutional client division, under the Stylised Citi Mark and other trade marks containing the word Citi, has offered a wide range of financial products and services including:

    capitalisation services to companies looking to launch a public float of their company;

    assisting multinational companies with global corporate transactions including foreign exchange transactions;

    stock broking activities on behalf of institutional clients;

    investment research on companies and markets, including under the brand CITI RESEARCH;

    a range of warrants which have been offered under the CITIWARRANTS, CITIFIRST or CITIGROUP trade marks or the Stylised Citi Mark. The warrants offered by Citi Australia under the CITIFIRST and Stylised Citi Mark as at May 2015 were trading products such as MINIs, GSL MINIs, turbo warrants and trading warrants. It also offered investment products such as instalment MINIs, instalments, self-funding instalments, structured products and funds. Mr Lavis said that most of the warrants have been offered by Citigroup in Australia for many years. The MINI warrant is Citigroup’s newest type of warrant, first offered in Australia in or about March 2011; and

    trading equities and derivatives, including warrants and options, based on various underlying assets including shares, commodities, foreign exchange and indices.

37    It is useful at this point to set out the nature of a warrant, being the main retail product offered by the institutional client banking division. Mr Lavis explains warrants and options, which he says are similar, in the following way:

    warrants are issued by companies while options are issued by stock exchanges. Mr Lavis describes a warrant as a securitised option and describes an option as a right to do something in the future or a “forward transaction”;

    there are two broad styles of warrants in Australia: trading warrants, which give the holder of the warrant the right to buy or sell an underlying share at a specified price on a pre-determined date; and investment warrants, which give the holder a medium- to long-term beneficial ownership in a product, by which they receive some of the benefits of the underlying asset (such as dividends, franking credits and capital appreciation) without owning the asset outright for a smaller initial capital outlay than if they had purchased the asset outright;

    the type of warrant will vary according to its features, including: the underlying asset, such as an index, stocks, commodities or a foreign exchange rate; exposure to a rising or falling market; the exercise price specified for the asset in the future; and the expiry date, which is the last date on which the option can be exercised and the underlying asset bought or sold at the specified price;

    warrants and options can be bought or sold. The initial outlay, which is less than the specified future price of the underlying asset, is called the “premium”. A warrant or option may be traded many times over its life;

    the advantage of buying warrants or options rather than buying the underlying asset is that the investor can profit from a rising or falling market for only a small portion of the price of buying the asset itself with only limited exposure to variations in the value of the underlying asset. That is, in the case of a call option, if the value of an underlying asset drops unexpectedly or does not reach the specified price by the expiry date, the investor’s loss will be limited only to the premium paid for the warrant or option. The investor cannot lose more than he or she initially paid for the warrant or option; and

    the purchaser of a warrant or option does not have any ownership rights in the underlying asset but only has a right to do something in the future.

38    The institutional client banking division uses a range of promotional material and methods for its products and services including:

    since 2001, issuing PDSs and brochures for products and services under branding including the Stylised Citi Mark and the CITIGROUP, CITIFIRST, CITIWARRANTS and CITI INSTALMENTS branding;

    the website operated by Citi Australia, www.citi.com.au, which provides information about its institutional client banking division. The Stylised Citi Mark appears on that website together with other marks featuring the word “Citi”;

    since at least 2007, by way of contribution to newsletters sent out to various Citigroup customers, providing information on the markets and investment research. Those newsletters have been and continue to be branded with the Stylised Citi Mark and other marks containing the word “Citi”;

    since at least 2004, hosting the annual Citi Australia and New Zealand Investment Conference in London with speakers selected from a range of Australian and New Zealand businesses. The marketing material for the conference is branded with the Stylised Citi Mark;

    since 2009, running the Citi Australian Investment Conference in Australia, which is only open to a select number of institutional clients. Promotional material for the conference and material distributed to attendees is branded with the Stylised Citi Mark and the word “Citi” features in the conference name;

    from time to time, presenting or promoting its products and services at other seminars or conferences within the financial services sector in Australia;

    its executives or employees being regularly invited to comment on financial matters in the Australian media, including in print media, on television and radio and in online publications; and

    from time to time, placing advertisements for employment vacancies online and in print media. Some of those advertisements are branded with the Stylised Citi Mark.

The consumer banking division

39    The consumer banking division is the retail arm of Citigroup’s Australian business and is operated by Citi Australia. Citigroup’s global consumer banking division has and continues to be co-branded with its global mark and a sub-brand to designate the consumer banking aspect of its business. Over time that branding has changed but since 2003 it has been as follows:

40    Mr Cole gave evidence about the consumer banking division. Generally, the services and products provided by it include credit cards, mortgages, personal loans, banking and wealth management, distribution of consumer insurance products and advisory services related to each of those products.

41    The retail aspects of Citi Australia’s consumer banking business are offered through a variety of channels including:

(1)    retail branches;

(2)    automatic teller machines (ATMs);

(3)    credit cards;

(4)    the Australian Citibank website, www.citibank.com.au (Citibank Australia website);

(5)    CITIPHONE, Citi Australia’s call centre;

(6)    CITIBANK ONLINE, Citi Australia’s secure internet banking system (accessible through its website);

(7)    CITIBANK and CITIGOLD client functions and information sessions;

(8)    third party mortgage brokers; and

(9)    the CITI AT WORK programme, where corporate clients are signed up to offer Citigroup retail products to their staff as a benefit.

Retail branches

42    Citi Australia has operated retail branches in Australia since about 1985. In November 2010 there were 10 retail banking outlets operating in New South Wales, Victoria, Western Australia and Queensland. By 2014 there were 13 retail branches in Australia.

43    Citi Australia’s retail branches are designed and fitted out according to Citigroup’s global branding guidelines, which include information about which of its trade marks are to appear on signage at the branch and how those signs are to be positioned. The guidelines also prescribe layout, furniture, colour scheme and artwork, much of which is from Citigroup’s global history. The reason for adopting this approach is to ensure that customers walking into a retail branch will immediately recognise it as being connected with Citigroup.

44    Citi Australia’s retail branches are branded with Citigroup’s trade marks both inside and out. Since at least 2003 the Citigroup Umbrella Mark and the Citibank Mark have been used on signage at Citi Australia’s retail outlets, appearing both externally and internally at the branches and on materials inside the branches, including product brochures, business cards, pens, stationery and document wallets.

45    The types of products offered at the retail branches are:

(1)    personal and business transaction accounts. Since 2007 those accounts have been co-branded with the Stylised Citi Mark and the Citibank Mark. Prior to 2007 they were co-branded with the Citibank Mark and the Citigroup Umbrella Mark;

(2)    savings accounts under various names but always with the word “Citibank” appearing at the start. Like the transaction accounts, since 2007 those accounts have been co-branded with the Stylised Citi Mark and the Citibank Mark. Between at least January 2006 and 2007 they were co-branded with the Citibank Mark and the Citigroup Umbrella Mark;

(3)    debit cards, which since 2007 have been co-branded with the Stylised Citi Mark and the Citibank Mark and between January 2006 and 2007 were co-branded with the Citibank Mark and the Citigroup Umbrella Mark;

(4)    cheque books, which since 2007 have been branded with the Stylised Citi Mark and/or the Citibank Mark and between at least January 2006 and 2007 were branded with the Citibank Mark and/or the Citigroup Umbrella Mark;

(5)    unsecured loans offered under various names but always with the word “Citibank” appearing at the start. Since 2007 those accounts have been co-branded with the Stylised Citi Mark and the Citibank Mark and between at least January 2006 and 2007 they were co-branded with the Citibank Mark and the Citigroup Umbrella Mark;

(6)    home loan products offered under various names but always with the word “Citibank” appearing at the start. Since 2007 those accounts have been co-branded with the Stylised Citi Mark and the Citibank Mark. Promotional material for the home loan products at various points in time also included the tag lines: “Citi never sleeps” and “Powered by Citi”. Between at least January 2006 and 2007 the home loan products were co-branded with the Citibank Mark and the Citigroup Umbrella Mark;

(7)    unsecured credit products, including credit cards, which are further described below;

(8)    treasury products, including foreign exchange transaction and multi-currency accounts, have been offered since at least January 2006. Since 2007 Citi Australia’s treasury products have been branded with the Citibank Mark and/or the Stylised Citi Mark and the word Citibank appears at the start of each product name;

(9)    investments, including Citi-branded products, which are further described below and third party products; and

(10)    insurance services comprising its own insurance products, the promotional materials for which are co-branded with the Stylised Citi Mark and the Citibank Mark, and those of third parties.

ATMs

46    As at 2010 there were approximately 150 Citi Australia ATMs operating in Australia. Since at least January 2006 those ATMs have been branded with the Stylised Citi Mark or a mark containing the word “Citi” such as the Citibank Mark.

Credit cards

47    In 2008 Citi Australia was one of the five largest issuers of credit cards in Australia. Prior to 2007 Citi Australia’s credit cards were branded with the Citibank Mark, the Stylised Citi Mark and/or the Citigroup Umbrella Mark. Since 2007 they have been branded with the Stylised Citi Mark and the Citibank Mark. Copies of Citi Australia’s credit cards from in or about 2009 were in evidence before me. The Stylised Citi Mark was prominently displayed on the cards.

48    The total revenue from Citi Australia’s credit card business between 2006 and 2010 exceeded AUD2.5 billion. Between 2010 and 2014 over 270,000 Citi Australia credit cards were issued in Australia. I would infer from the annual revenue figures for Citi Australia’s credit card business, which were admitted into evidence on a confidential basis, that a considerable number of credit cards were issued prior to November 2010.

49    In addition to Citi Australia’s own branded credit card business it has since at least 2000 operated a credit card business in partnership with third party brands in Australia. That business takes several forms:

(1)    “white label” distribution arrangements whereby Citi Australia issues credit cards under a third party’s brand and provides its credit card technology platform and portfolio management capabilities. The name “Citigroup Pty Limited” is printed in plain text on the back of the credit cards;

(2)    “co-brand” partnerships by which Citi Australia issues credit cards that are co-branded with the Citibank Mark and that of a partner company; and

(3)    “jointly branded” credit cards whereby Citi Australia partners with a third party company to offer credit card services. The partnering company’s brand is featured as the lead brand on the credit card but Citi Australia’s branding also appears in some promotional and marketing material. An example is the alliance formed between Virgin Money and Citi Australia in 2009 where the products are branded with the Virgin Money brand but supplied under Citi Australia’s Australian banking licence and the Citibank Mark appears on the back of the card.

Citibank Dining Program

50    Since at least 2009 Citi Australia has operated the Citibank Dining Program as a tie-in to its credit card business. The program entitles all Citibank credit card holders to a free bottle of wine when they dine at a participating restaurant in Australia and present their Citibank credit card. As at October 2010 approximately 100 Australian restaurants located in Victoria, New South Wales, Queensland, Western Australia and South Australia had entered into an agreement with Citi Australia to participate in the program.

51    Since 2009 the Citibank Dining Program has been co-branded with the Stylised Citi Mark and the Citibank Mark. It is and has been promoted through a number of different media including its own website since at least 2011 and other Citi Australia websites; brochures distributed and posters displayed at Citibank retail branches and promotional events; print, television, radio and online advertising; signage at participating restaurants; and videos and postings on Citi Australia’s Facebook, Twitter and YouTube accounts.

Citi Australia’s websites

52    Citi Australia’s principal website for consumer banking is the Citibank Australia website, which has since at least January 2006 provided information about the various products and services offered under the “Citibank” brand in Australia and the various Citibank retail branches located in Australia. Since at least 2007 the information on the Citibank Australia website has been co-branded with the Stylised Citi Mark and the Citibank Mark. According to Mr Cole, prior to 2007 the information on the Citibank Australia website was co-branded with the Citigroup Umbrella Mark and the Stylised Citi Mark, although given the evidence in the table at [39] above the use of the Stylised Citi Mark at that time is unlikely. Other Citigroup trade marks, such as CITIGOLD and CITI REWARDS also appear on the Citibank Australia website.

53    Citi Australia also operates other websites, including:

(1)    www.citi.com.au, which provides information about Citigroup’s global business and Citi Australia’s institutional client group. Since at least 2007 this website has been branded with the Stylised Citi Mark;

(2)    www.citigroup.com.au, which prior to 2007 operated as a standalone website and provided information about the global Citigroup business and Citi Australia’s institutional client group. It was branded with the Citigroup Umbrella Mark. Since at least 2007, when the Citigroup global business underwent its rebranding, that website has redirected to the website at www.citi.com.au;

(3)    www.citifinancial.com.au, which in about January 2006 provided information about Citi Australia’s business which was operated under the CitiFinancial brand name. That brand was withdrawn from Citi Australia’s business in around 2007. Since at least 2007 the website at www.citifinancial.com.au has displayed a redirection message branded with the CitiFinancial logo and has redirected the user to the Citibank Australia website;

(4)    www.citicorp.com.au, which since at least January 2006 has redirected to Citigroup’s US website. The US website is currently co-branded with the Stylised Citi Mark and the Citibank Mark; and

(5)    www.citibankdining.com.au, which has operated since mid-2013 and which provides information about the Citibank Dining Program in Australia. It is co-branded with the Stylised Citi Mark, the Citibank Mark and the “CITIBANK DINING PROGRAM” mark.

CITIPHONE call centre

54    Since at least January 2006 Citi Australia has operated a telephone call centre, branded as CITIPHONE, which manages inbound and outbound telephone calls to provide Australian Citibank customers with telephone banking services and access to further products. The services available through the call centre include activating credit and debit cards, reporting lost or stolen credit and debit cards, retrieving account balances, redeeming reward points, transferring funds, paying bills, inquiring about the status of a cheque, requesting a new cheque book, applying for additional products, retrieving online authorisation codes, registering the customer’s tax file number with Citi Australia and inquiring about or applying for new products.

55    Since at least 2007 Citi Australia’s telephone banking services have been branded with the Stylised Citi Mark and/or the Citibank Mark. Prior to that they were co-branded with the Citibank Mark, Citigroup Umbrella Mark and the CITIPHONE mark.

56    As at late 2010 Citi Australia was receiving more than 200,000 calls to its CITIPHONE system each month.

Online banking

57    Since at least 2006 Citi Australia has operated an online banking service branded as CITIBANK ONLINE which provides Australian customers with online banking services. In addition to many of the services available through the CITIPHONE call centre, customers can undertake a range of banking activities including receipt of electronic bank statements, communicating electronically with Citi Australia, applying for increases in credit limits, applying for loans and viewing details of current interest rates for various products.

58    Since 2007 CITIBANK ONLINE has been branded with the Citibank Mark and the Stylised Citi Mark. Prior to 2007 the online banking service was co-branded with the Citibank Mark and the Citigroup Umbrella Mark.

59    In 2010 the CITIBANK ONLINE system received over 8 million daily unique visitors to the website.

60    In addition, since at least 2010 the CITI MOBILE smartphone app has been available for download in Australia for use on Apple and Android smartphones and tablets and Blackberry devices. It provides smartphone access to a streamlined version of the CITIBANK ONLINE system. These apps are co-branded with the Stylised Citi Mark and the Citibank Mark. In 2010 the CITI MOBILE smartphone app, at that stage only designed for the Apple iPhone, was downloaded in Australia more than 14,500 times.

Investment products offered by Citi Australia

61    Since at least January 2006 Citi Australia has offered investment products and advisory services. The types of investment products offered included structured investments, managed funds, and bonds and annuities.

62    According to Mr Zammit the investment products offered by Citigroup in Australia since at least November 2010 have included investment products that derive their value, at least in part, from the performance or movement of an underlying asset. Those products include:

(1)    market linked investment products, which have been offered by Citi Australia through CGMA to retail and wholesale clients since at least 2004. A market linked investment is an investment product that derives its value from the performance of a particular market. It can be based on any market or asset, such as an equity, an index or a commodity. Different market linked investment products involve different types of returns. A growth-based market linked investment may result in a return for an investor if the market rises, while an income-based market linked investment usually involves a fixed return but may risk some or all of the invested capital if the market falls during the term of the investment. According to Mr Zammit, because market linked investment products can contain options, which are derivatives, market linked investment products can contain derivatives. But Mr Zammit could not say and did not know if each of the market linked investment products offered by Citi Australia were classified, technically, as derivatives. In evidence are examples of documents issued before and after the Priority Date relating to market linked investment products which show that they were branded with the Stylised Citi Mark and/or with CitiFirst;

(2)    instalments, which have been offered by Citi Australia through CGMA to retail and wholesale clients since at least 2001. An instalment is a type of warrant which allows an investor to borrow for investment whilst offering a degree of protection to the investor. It is a bundle of investment products including gearing (leverage), options and the underlying asset. Its value is based on the performance of the underlying asset, typically shares. An instalment comprises two instalment payments and a loan. The first payment is the purchase price of the instalment, essentially being a portion of the upfront cost of the underlying asset upon which the instalment is based; the loan component of the instalment covers the remaining cost of the underlying share plus interest and a borrowing fee; and the final instalment is the repayment of the loan. During the term of the instalment the investor receives the benefits of share ownership for a small portion of the usual upfront cost of buying a share. In cross-examination Mr Zammit said that he would not expect margin calls to be made on instalments and that an investor in instalments could not lose more than the initial amount of his or her investment. In evidence are examples of documents relating to or referring to instalments up to the Priority Date which were branded with the Stylised Citi Mark, the Citibank Mark and/or the word Citi with a suffix, for example, “CitiWarrants”, “Citi Instalments” and “Citi Reset Instalments”. In some cases the documents also bear the Citigroup Umbrella Mark; and

(3)    trading warrants, turbo warrants and MINIs, which have been offered by Citi Australia through CGMA to retail and wholesale clients since at least 2012. According to Mr Zammit, warrants and MINIs would not be subject to margin calls and an investor in such products could not lose more than the initial amount of his or her investment in the product.

Citi Australia’s marketing

63    Citi Australia spends a significant amount on marketing. For the years 2005 to 2008 its marketing expenditure and rewards expenditure, the latter of which relates to Citi Australia’s customers redeeming reward points from its credit cards, was as follows, with rewards expenditure making up at least half of the combined amount:

64    In each of 2009 and 2010 Citi Australia spent approximately AUD70 million on marketing expenditure alone.

65    Citi Australia markets its business and products across a wide range of different media types including print, television, radio, online advertising, social media, sponsorships and outdoor advertising. While most of its advertising is targeted at the cities in which it has retail branches, some also reaches regions in Australia in which Citibank retail branches are not located. This includes some of Citi Australia’s print advertising, for example in major metropolitan newspapers which also circulate in rural and regional areas, its online advertising and its sponsorship activities, including sponsorship of sporting teams, events and cultural activities.

66    Examples of Citi Australia’s print advertising dating back to 1989 were before the Court. They included advertisements showing the Citibank Mark; bearing the tag line “CITI never sleeps” in combination with the Citibank Mark; and including the word “Citi” and using the tag line “Powered by Citi”, which was part of an advertising campaign which ran from about 2010 to 2012.

67    Citi Australia’s outdoor advertising was branded with the Citigroup Umbrella Mark and/or the Citibank Mark in the period from at least 2003 to 2007 and after that time with the Stylised Citi Mark and/or the Citibank Mark.

68    Citi Australia has been involved in a number of sponsorship activities in Australia since at least the late 1990s, relevantly including:

    the NSW Waratahs rugby union team from 1999 to 2001. This sponsorship gave Citi Australia naming rights so that the team was renamed the “Citibank Waratahs”. “CITIBANK” was featured on the team’s jerseys and on advertising at the team’s home stadium;

    the Australian Wallabies rugby union team from 2000 to 2004. “CITI” signage was displayed at stadiums and, in 2003, during the Rugby World Cup, the team captain featured in a Citi Australia advertisement displayed on a large billboard at the Citigroup Centre building in the Sydney CBD;

    the Sydney Swans AFL team from 2005 to date. This has included promotional events at Citibank branches and other venues, corporate lunches and offering private corporate boxes and/or corporate suites at each of the team’s home games. Since the 2005 season, the Stylised Citi Mark has been displayed on the back of the team jersey and, as of several years ago, has appeared on the sleeve of the coaches’ and players’ training shirts. A replica of the coaches’ and players’ training shirts, along with other items of team merchandise which include the Stylised Citi Mark, have also been available for sale to the public. The Citibank Mark and the Stylised Citi Mark have been displayed on signage throughout the team’s home ground in Sydney and, since 2005, on the screen that appears in the background of most of the team’s press conferences and post-match interviews. Electronic hoardings featuring the Stylised Citi Mark are also located on the pitch side of the oval. Citi Australia’s television advertisements are played on large screens at the team’s home games during intervals and also during televised broadcasts of the games. A miniature blimp, which includes the Citibank Mark, flies over the ground during home games. Citi Australia operates a stand at all of the team’s home games and its branding appears in some of the half-time crowd activities;

    the “Good Food Month” festival in Sydney from 2008 to date. As part of this sponsorship the Stylised Citi Mark, the Citibank Mark and the “CITIBANK DINING PROGRAM” mark appears on promotional material for the event, including on the website www.goodfoodmonth.com; on the Citibank Australia website and www.citibankdining.com.au; on billboards, flyers and the event program; and on flags, banners, signage and outdoor furniture at the festival. Citi Australia also places Citi-branded ATM kiosks at the night noodle markets and runs other stands and activities;

    the Mortgage Finance Association of Australia’s annual conference from 2006 to date. Representatives from Citi Australia attend the conference, staff a stand at the conference and present awards or introduce speakers; and

    the Citi Journalism Awards for Excellence since 1993. These awards have been sponsored by Citigroup globally, with the local awards aimed at encouraging and rewarding excellence in business and financial reporting in print, broadcast and online media in Australia and New Zealand.

69    Citi Australia has also won a number of awards in the financial services industry including Asiamoney first and second rankings between 2009 and 2013 in various polls; Australian Financial Review Smart Investor Magazine awards for Citibank products in 2010, 2011 and 2014; East Coles Best Brokers Survey Top Analyst awards in 2002, 2003 and 2011; Euromoney FX Survey rankings in 2010 and 2012; FinanceAsia Achievement awards between 1997 and 2014; and The Asset awards, including various Triple A Country awards, Triple A Regional awards, Triple A Investment awards and Securities & Fund Services awards between 2003 and 2014.

The Citigroup Centre Building, Sydney

70    Citi Australia’s head office has been, since around 2000, and continues to be located in the Citigroup Centre building at 2 Park Street, Sydney. The building, which comprises 41 floors of office space and four floors of retail space, covers the width of a street block and fronts three busy CBD streets: Park Street, Pitt Street and George Street. On the Park Street and George Street fronts there are signs featuring the Citibank Mark. The Citigroup name appears above the entrances to the building. There is a Citibank retail branch on the ground level of the building.

71    Since at least 2007 the Stylised Citi Mark has been displayed in large, prominent lettering on each side of the top of the Citigroup Centre building and has been visible in the Sydney CBD skyline. Prior to 2007, the Citigroup Umbrella Mark was displayed on each side of the top of the Citigroup Centre building.

Citigroup Index LLC

72    Citigroup Index, a wholly owned subsidiary of Citigroup, was formed in July 2003 to continue the activities of its predecessor organisations of developing, managing, marketing, distributing and supporting Citigroup’s range of fixed income indices. Citigroup Index distributes index data to approximately 300 institutional customers globally, including many of the largest investment managers, banks and pension funds. The customer base also includes redistributors that provide Citigroup Index’s data to other customers.

73    According to Mr Cole, an index, in the sense used in the financial services industry, means a summary of data that points to directional trends and historical values. Citigroup Index designs, develops, maintains and publishes fixed income indices which may be used as benchmarks for fixed income markets, providing portfolio managers with a point of reference for the evaluation of their portfolio’s performance. They are also used to provide investors with exposure to certain markets through derivatives, structured products and exchange traded funds. Citigroup Index can also customise indices to meet particular client needs.

74    Citigroup Index produces a document titled “Index Guide”, which is described in the January 2015 edition as “[a] comprehensive overview of Citi’s range of fixed income indices”. Each of the Citigroup Index Guides is made available online, including in Australia, on or about the dates which they bear. An earlier edition of the guide, issued in August 2006, is titled “Citigroup Global Fixed-Income Index Catalogue – 2006 Edition” and bears the Citigroup Umbrella Mark.

75    Citigroup Index engages in various forms of marketing including:

    together with Yield Book, maintaining a website at www.yieldbook.com/citi-indices which provides information about Citigroup Index and its services;

    producing promotional material including fact sheets, index guides and press releases;

    its representatives attending industry conferences; and

    its representatives engaging in direct sales and marketing efforts globally, including from its offices in Hong Kong, Taipei, Tokyo and New York to cover accounts in Australia.

76    Citigroup Index licences index data and information regarding its indices to a number of large Australian institutions. In addition, a number of global entities which have offices in Australia and other global financial institutions have subscribed to, or have been given access to, Citigroup Index’s indices.

Other activities of Citi Australia relating to indices

77    There was evidence that the following products or services have been offered by Citigroup in Australia by reference to the words “Citi” and “Index”:

(1)    the Citibank Retirement Index, a survey conducted between about 2005 and 2008 and reported every six months of Australian consumers aged over 55 years in relation to Australian consumers’ retirement plans;

(2)    the Citi Trade Finance Index, a regular survey of importers and exporters which has been run by the institutional client division since around 2012; and

(3)    commencing in July 2013, the Citi Australian Inflation-Linked Securities Index, which is an example of an index created by Citigroup. It is listed on the Blomberg digital financial platform for Citi Australia’s customers who have purchased the relevant subscription or service relating to that index.

nature of the appeal

78    Gain’s appeal is an exercise of the original jurisdiction of the Court: Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 (Woolworths) at [32] (per French J, as his Honour then was). The powers of the Court on an appeal against a decision of the Registrar are set out in s 197 of the TM Act. It must determine the matter afresh but give due weight to the decision of the Registrar as an experienced and skilled person: Woolworths at [32].

Standard of proof

79    Leaving s 44(3) of the TM Act to one side, the onus lies on Citigroup to establish at least one of its grounds of opposition. But there is a divergence of opinion between the parties as to the standard of proof which an opponent to registration must meet. That divergence is reflected in the authorities, which are divided on the question of whether the applicable standard is the balance of probabilities or the more onerous standard of should “clearly not be registered”: see the discussion in Davison MJ, Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, Thomson Reuters, 2016) at pp 397-401.

80    In Lomas v Winton Shire Council [2002] FCAFC 413 (Lomas) a Full Court of this Court (Cooper, Kiefel and Emmett JJ) noted at [17] that, while no submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the TM Act, the presence of s 195(2) of the TM Act suggested that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth) (Patents Act). On that basis the Full Court held that on an appeal under s 56 the Court should consider whether the trade mark should clearly not be registered. That approach was adopted in a series of cases commencing with Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 132 FCR 326 (Torpedoes) at [16]-[22].

81    In Kowa Company Ltd v N V Organon [2005] FCA 1282; (2005) 223 ALR 27; 66 IPR 131 Lander J considered a submission that Lomas, Torpedoes and the judgments which had followed them were wrong because they impermissibly drew parallels with procedures under the Patents Act. After setting out the decisions which had considered submissions similar to those put to him, his Honour observed at [135] that the respondent’s arguments were not easily rejected. At [137] his Honour said that he shared the same doubts as had been expressed by those judges who had previously considered the issue. But his Honour concluded at [139]-[140] that:

139    Both Registrar of Trademarks v Woolworths and Lomas stand for the proposition that the Court as well as the Registrar should approach the question of registration with the presumption of registrability in mind and when on appeal to this Court the Court should consider whether the trade mark should clearly not be registered.

140    I think I am bound to follow Woolworths and Lomas, and I should as a matter of comity follow Torpedoes because it has been followed by other judges of this Court.

82    A separate line of authority arose commencing with the judgment in Pfizer Products Inc v Karam (2006) 219 FCR 585 (Pfizer), where Gyles J observed at [26] that he was faced with “the clear words of the statute, on one hand, and the opinions of various judges, on the other” and that there was no binding Full Court authority. His Honour concluded that he would approach the matter “on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in summary fashion or otherwise”.

83    Subsequent decisions have followed the approach of Gyles J in Pfizer. In Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Kenny J said the following at [38]-[39]:

38    In Chocolaterie Guylian 180 FCR 60 [26], Sundberg J stated that he preferred the approach of Gyles J. Sundberg J said (at [26]) that, in his view, “there [was] nothing in the relevant provisions that support[ed] the imposition of a higher standard, even at the acceptance stage”. In the same paragraph, Sundberg J went on to say:

The “presumption of registrability” arises from s 33 of the Act: Woolworths 93 FCR 365 at [24]; Kenman Kandy 122 FCR 494 at [50]. Section 33 does not speak of being “clearly satisfied”; it mandates acceptance of an application unless the Registrar “is satisfied that ... there are grounds for rejecting it”. On this point, I prefer the views expressed by Gyles J and in particular his Honour’s observations that an acceptance that there is a presumption of registrability “says nothing as to the standard of proof” and does not import a higher threshold than the conventional balance of probabilities: see Pfizer ... at [18]. The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths 93 FCR 365 and Kenman Kandy 122 FCR 494 (both acceptance stage cases) there [was] no suggestion that any special higher standard was applicable.

(Emphasis in original.)

39    Given the state of the authorities, the interests of comity favour neither side. For the reasons stated by Sundberg J in Chocolaterie Guylian 180 FCR 60 at [26] and by Gyles J in Pfizer Products 237 ALR 787 at [18], I too am of the view that, where the opponent bears the onus, that onus is to be discharged in the ordinary way. That is, there is no requirement for an opponent to show that the trade mark is clearly not to be registered. Sections 55 and 56 do not warrant the introduction of this standard, and no other statutory provision supports it. The contrary argument relies heavily on the word “extent” in the expression “the extent (if any) to which any ground ... has been established” in s 55 of the Act. In my view, the word cannot bear the weight and I reject the argument.

84    More recently, in Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd (2015) 237 FCR 388 (Phone Directories) a Full Court of this Court (Besanko, Jagot and Edelman JJ) followed the line of authority that the standard of proof borne by an opponent to registration is proof on the balance of probabilities: at [133].

85    I will follow the approach of the Full Court in Phone Directories and proceed on the basis that the standard of proof borne by Citigroup in making out its grounds of opposition is proof on the balance of probabilities.

Ground 1: Section 44

86    Citigroup’s first ground of opposition relies on s 44(2) of the TM Act. It contends that the Gain Marks should not be registered because they are deceptively similar to the Citigroup Marks in relation to similar services. Citigroup does not contend that any of the Citigroup Marks is substantially identical to either of the Gain Marks, nor is there any issue between the parties as to whether or not the services are “similar services”. Gain did not press its initial position that the IFX Mark was not registered in respect of similar services and adopted the position that all of the Citigroup Marks were registered in respect of similar services to the Designated Services.

87    The issue to be determined is whether either of the CITYINDEX Mark or the IFX Mark is deceptively similar to any of the Citigroup Marks.

Legislative framework and relevant principles

88    Section 44 of the TM Act relevantly provides:

44     Identical etc. trade marks

….

(2)     Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)     it is substantially identical with, or deceptively similar to:

(i)     a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)     a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)     the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3)     If the Registrar in either case is satisfied:

(a)     that there has been honest concurrent use of the 2 trade marks; or

(b)     that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

…

89    The term “priority date” is defined in s 12 to mean:

The priority date for the registration of a trade mark in respect of particular goods or services is:

(a)     if the trade mark is registered—the date of registration of the trade mark in respect of those goods or services; or

(b)     if the registration of the trade mark is being sought—the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

90    The “date of registration” relevantly means the day from which registration of the trade mark in respect of the goods or services is taken to have had effect under s 72(1): s 6 of the TM Act. Section 72(1) provides that the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from and including the filing date of the application for registration.

91    A trade mark is deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion: s 10 of the TM Act. When a mark “is likely to cause confusion” has been considered by this Court on numerous occasions.

92    Actual confusion is not required. The use of the trade mark must be likely to confuse. Phonetic and visual similarity are both relevant. In Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353 Barwick CJ, with whom McTiernan J agreed, said at 355:

But the question whether a mark is likely to confuse is not limited to whether there has been actual confusion in the use of the mark. The question is whether its use is likely to confuse. In answering that question, the capacity of the respondent to apply its mark to merchandise of the same kind as that sold by the appellant must be borne in mind even though as yet it has not done so. The answer to the question cannot be confined to the circumstances of the trade presently obtaining. In this connexion, the appellant's case turns entirely, in my opinion, upon the phonetic similarity of the two words when pronounced in the ordinary course of the retail trade. There would be no likelihood of visual confusion between the two marks.

93    In a separate judgment Mason J, as his Honour then was, with whom Stephen J agreed, observed at 362:

The strength of the appellant's case is in the finding made by his Honour that the two marks are "phonetically alike" – the appellant's mark is commonly pronounced "Burley" and the respondent's mark is commonly pronounced "Barley". The respondent's mark includes the expression "BRA" which is descriptive of the goods to which it is applied. Its inclusion in the mark does not detract from the phonetic similarity between "BERLEI" and "BALI". …

…

Although the goods sold under the two marks are distinguishable, the appellant's brassieres being mass-produced and inexpensive, the respondent's being a specialty line and expensive, the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

…

… And in considering the likely reaction of a customer it is important to take into account, not the person whose knowledge of the two marks and the goods sold under them enables her to distinguish between them, but the person who lacks that knowledge. …

94    Deceptive similarity requires a real, tangible danger of confusion. In Woolworths a Full Court of this Court (French, Branson and Tamberlin JJ) considered s 44(2) of the TM Act. At [43] French J, as his Honour then was, said:

For there to be a deceptive similarity between a service mark and a mark in respect of closely related goods the degree of resemblance must be such that the service mark is “likely to deceive or cause confusion”. The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-595 per Kitto J.

95    At [50] French J set out a number of propositions which, in his opinion, applied to the issue of deceptive similarity under the TM Act:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i)    To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii)    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)    The rights of the parties are to be determined as at the date of the application.

(v)    The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

…

96    In Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 (Conde Nast) Burchett J considered whether the use of the respondent’s mark would be likely to “deceive or cause confusion” in the context of s 28(a) of the Trade Marks Act 1955 (Cth). In that case the applicant, Conde Nast Publications Pty Ltd, was the publisher of “Vogue” magazine in Australia and Singapore. It opposed the registration of a trade mark which combined a decorated double shield with the letters “EV” and the word “EUROVOGUE” in respect of ladies’ clothing and men’s casual wear. At 509-510 Burchett J observed that a conclusion as to whether there was a real, tangible danger of confusion occurring, taking into account the surrounding circumstances, including the reputation acquired by the name Vogue, required attention to be paid to the nature of the relevant trade. After considering the nature of the clothing trade, both at the wholesale and consumer level, his Honour said at 510:

… But the real point is that the most cursory sight of the opposed mark, and the most imperfect recollection of it afterwards, could hardly denude it of the two shields, the embellishments, and the added letters “EV” involved in it. It is not simply “Eurovogue”. This aspect of the matter seems to me to have greater importance in a case, such as the present, where the goods sold under a trade mark are goods likely to be subjected to a careful visual examination by any intending purchaser, or even by any person whose interest in them is at all aroused. The appearance of ladies’ clothing and men’s casual wear is very important. Consumers will not purchase these items over the telephone, or otherwise by a spoken reference to the mark, but will examine them and very often try them on in boutiques or shops. Recognition of the mark will be visual. Thus “the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods”, mentioned by Kitto J, are factors which, in the present case, place particular emphasis on the appearance of the opposed mark, and the great difference between its impression of ornateness and the simplicity of the applicant’s mark and title. …

At 511-512 his Honour continued:

At the same time, it should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.

97    In Crazy Ron’s Communications Pty Ltd & Ors v Mobileworld Communications Pty Ltd & Ors [2004] FCAFC 196; (2004) 209 ALR 1 a Full Court of this Court (Moore, Sackville and Emmett JJ) summarised the principles in relation to “deceptive similarity” in the context of an infringement claim at [72]-[90]:

    first, the question of deceptive similarity of marks is not to be judged by a side-by-side comparison: at [73];

    secondly, the question of deceptive similarity involves factual issues in relation to which similarities of sound may be important: at [75];

    thirdly, a tangible danger of deception or confusion must be shown, although it is enough if an ordinary person entertains a reasonable doubt: at [76];

    fourthly, a court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion: at [77]-[78]; and

    fifthly, the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word. If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. Further, the other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark: at [79].

98    In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934; (2008) 77 IPR 69 (E & J Gallo Winery) Flick J considered, in the context of a trade mark infringement case, whether the words “Barefoot” or “Barefoot Radler” used by Lion Nathan Australia were deceptively similar to E & J Gallo Winery’s registered trade mark, “Barefoot”. After referring to a number of authorities his Honour found that there was a deceptive similarity between the registered mark “Barefoot” and the words used by Lion Nathan Australia, a finding which was upheld by a Full Court of this Court (Moore, Edmonds and Gilmour JJ) on appeal: see E. & J. Gallo Winery v Lion Nathan Australia Pty Limited (2009) 175 FCR 386 at [75]). Flick J said at [57]-[58]:

57    The impression based on a recollection of the “sign” as used by Lion Nathan and a recollection of Gallo Winery’s trade mark, it is considered, would lead to a likelihood of deception or confusion.

58    It is considered that the impression which would be left on the mind of a person of ordinary intelligence would be that there was a deceptive similarity as between the mark used by Gallo Winery and that used by Lion Nathan and as pleaded in its amended defence. The similarity is such that persons would wonder whether the products came from the same source; an actual probability of deception need not be established: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; [1955] ALR 115; (1954) 1A IPR 465 (Southern Cross). Kitto J was there dealing with an application for registration of a trade mark and the statutory phrase “likely to deceive” and observed (at CLR 595; ALR 117; IPR 467):

… It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough — for there must be a real, tangible danger of its occurring … — it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt …

No intention to deceive or cause confusion is required and there is no element of culpability to be inferred from the word “deceive”: Coca-Cola at [39] per Black CJ, Sundberg and Finkelstein JJ.

99    In reaching his conclusion, Flick J relied on the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 (Polo). His Honour said at [60]-[63]:

60     In the present proceedings, the strong impression left on the mind of persons of ordinary intelligence by the use of the word “Barefoot” would not relevantly be affected by Lion Nathan’s use of the word “Radler” as well. The addition of that word is sufficient to preclude a finding that the two marks are “substantially identical”; but the addition of that word is not sufficient, it is considered, to preclude their being “deceptively similar”.

61    A distinction may be drawn as between the present case and that in Polo Textile — but that distinction does not lead to any different conclusion. Unlike the use of a bland word such as “Club” — as in the Polo Textile decision — the word “Radler” adds an additional and important distinguishing feature to the product. The word “Radler” is not an ordinary English word and its use, it is considered, adds an element of both distinction and curiosity, such that persons will query what that particular word means.

62    The word “Radler” is not a word having any meaning found in either the Macquarie or Shorter Oxford Dictionaries. It is a German word and, not being a word of everyday usage in the English language, its use would unquestionably leave an impression on the mind of a person. The word “Radler”, it is considered, would leave an impression on the mind of a person who knew what the word meant and would leave an even firmer impression upon the mind of a person who had no such knowledge. And it is a word given prominence in the Lion Nathan sign. But those factors either alone or in combination would not be such as to remove the likelihood of deception or confusion. Contrast: Crazy Ron’s.

63    An essential feature common to both the mark of Gallo Winery and the sign as pleaded by Lion Nathan remains the word “Barefoot” which, it is considered, would leave a considerable impression on the mind of a consumer of ordinary intelligence. Notwithstanding the distinctiveness which the word “Radler” brings to the sign of Lion Nathan, it would not be sufficient to remove the likelihood of deception otherwise arising.

The CITYINDEX Mark

100    Citigroup submitted that the CITYINDEX Mark is deceptively similar to the Citigroup Marks and especially to the Word Citi Mark for the following reasons:

    first, the words “CITI” and “CITY” represent the essential feature of each mark, “CITY” being the first part of the CITYINDEX Mark. Citigroup submitted that the CITYINDEX Mark and the Citigroup Marks are both visually and aurally similar;

    secondly, the CITYINDEX Mark is not heavily stylised. Both it and each of the Citi Marks commence with the same three letters: C, I and T. The fourth letter is either an I, in the case of the Citigroup Marks, or a Y, in the case of the CITYINDEX Mark. Those letters are often interchangeable in the English language in the sense that the letters “I” and “Y” can be phonetically identical. Citigroup also submitted that the letter “I” sometimes replaces the letter “Y” when a singular noun is converted to a plural, for example, “city” and “cities”. Citigroup noted that in the CITYINDEX Mark the words “CITY” and “INDEX” run together, with no space between them. Similarly, the Citigroup Marks (with the exception of the Stylised Citi Mark, the Word Citi Mark and the CITI INSTANTFX mark) run the first and second words together, with no space between them. Citigroup submitted that this has the effect that the fifth letter of the CITYINDEX Mark, I, appears visually very close to the letters C, I and T;

    thirdly, there are many cases where trade marks have been found to be deceptively similar where only the first part of the marks is the same;

    fourthly, aural use is important. Citigroup contended that the CITYINDEX Mark, when spoken, is pronounced “city index”; that Citigroup employees and other professionals in the financial services industry regularly abbreviate names such as “Citibank” and “Citigroup” to “Citi”; and that “Citi” and “city” are phonetically identical. For many years prior to the Priority Date, and continuing, Citigroup has offered its services to consumers over the telephone including through its call centre. Further, both Citigroup and Gain advertise their services via radio and television advertisements. In Citigroup’s radio advertisements the words Citibank and Citigroup are spoken and in its television advertisements the words Citi, Citibank and Citigroup are sometimes spoken; and

    fifthly, “index” is a term commonly used in financial services, particularly in relation to financial markets and investments and does not distinguish the CITYINDEX Mark. Citigroup contended that because of its descriptiveness and common use in financial services, the word “index” should be discounted in the consideration of whether the marks are deceptively similar.

101    Gain submitted that the CITYINDEX Mark is not deceptively similar to any of the Citigroup Marks. It submitted that:

    first, the CITYINDEX Mark is a stylised mark comprising the words “CITY” and “INDEX” in block capitals, in a special font, in different colours and set against a differently coloured rectangular background. None of the Citigroup Marks resemble it. Further, Gain contended that certain of the Citigroup Marks are themselves stylised, involving the use of a distinctive curved font, lower case lettering and an arc over the “t” in the word “citi”. Gain submitted that this stylisation is radically different from that of the CITYINDEX Mark;

    secondly, in the CITYINDEX Mark the word “CITY” is spelt with a “Y” while in each of the Citigroup Marks the word “CITI” is spelt with an “I”. In other words, “CITI”, as it appears in the Citigroup Marks, is an invented word which is the dominant feature of the Citigroup Marks and is what makes each of them distinctive. Gain contended that that feature is wholly absent from the CITYINDEX Mark and that in a four letter word the final letter is critical, particularly where that letter distinguishes between a common word and an invented word;

    thirdly, “INDEX”, the other word in the CITYINDEX Mark, does not appear in any of the Citigroup Marks. Nor does any similar word appear in those marks;

    fourthly, the CITYINDEX Mark contains two words, unlike all but one of the Citigroup Marks. The only Citigroup Mark to contain two words is the CITI INSTANTFX Mark and “INSTANTFX” is nothing like “INDEX”;

    fifthly, in terms of any aural comparison, the CITYINDEX Mark does not sound anything like the Citigroup Marks;

    sixthly, any aural comparison must be made having regard to the context in which the relevant services are likely to be acquired and it is necessary to balance the relative importance of the aural use of the marks and their visual appearance. This is critical where, as here, potential acquirers of the Designated Services are likely to see the trade marks under which the services are offered. In particular, purchases will be considered with care; assisted by literature; are unlikely to take place over the telephone; and where the trade mark is not solely a word trade mark;

    seventhly, in considering deceptive similarity, particularly for the purposes of aural comparison in this case, it is relevant to have regard to: first, the distinctiveness of the part or parts of the trade marks under comparison; and, secondly, the commonality in the trade of those part or parts, both in terms of their registration and use. Gain submitted that the sound “city” is that of a common and non-distinctive English word and that other traders have registered and are using trade marks and names which include “city” in relation to financial services. Accordingly, consumers who happen to hear the sound “city” used as part of the CITYINDEX Mark in relation to the Designated Services are unlikely to be caused to wonder whether it refers to Citigroup; and

    eighthly, despite the CITYINDEX Mark having been used extensively in Australia, since early 2007 there is no evidence of actual confusion with the Citigroup Marks. The absence of evidence tells against Citigroup’s opposition to registration, in circumstances where the trade marks have been in concurrent use and confusion might have occurred if there were likely to be any. Gain further submitted that, even where there is evidence of actual confusion, that is not determinative of the deceptive similarity inquiry. Rather, in assessing what weight should be given to evidence of actual confusion “the court must evaluate the quality of the evidence by reference to its internal features, the other evidence and the court’s own knowledge of human affairs”: Vivo International Corporation Pty Ltd v TiVo Inc [2012] FCAFC 159; (2012) 294 ALR 661 (Vivo) at [137]. Gain submitted that, first, to the extent that Citigroup relies on newspaper articles where the name City Index had been misspelt as “Citi Index”, any confusion on the part of the readers of the articles is irrelevant because it would be based on the use of “Citi Index” in the newspaper articles rather than the use of the CITYINDEX Mark; and secondly, to be relevant, any actual confusion must arise from use of the mark for which registration is sought and there is nothing to suggest that the confusion of those responsible for the articles arose from use of the CITYINDEX Mark. Gain further submitted that there was no evidence which explains why those responsible for the articles were confused and that there is nothing to suggest that any confusion arose from factors relevant to the deceptive similarity inquiry.

102    The question for the Court is whether there is a real, tangible danger of deception or confusion occurring by reason of use of the CITYINDEX Mark. That is not to be judged by side-by-side comparison of the Citigroup Marks and the CITYINDEX Mark. Rather, the Court is required to consider all of the surrounding circumstances, including the circumstances in which the marks would be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods or services. Having considered those matters, in my opinion there is no real, tangible danger of deception or confusion occurring from use of the CITYINDEX Mark. The CITYINDEX Mark is not deceptively similar to the Citigroup Marks.

103    The CITYINDEX Mark and the Citigroup Marks are visually quite different. First, the Citigroup Marks are distinguished by their use of the invented word “CITI”. Visually, “CITI” would not be confused with the word “city”, as used in the CITYINDEX Mark.

104    Secondly, the CITYINDEX Mark has “INDEX” as its second word, which does not appear in any of the Citigroup Marks. Citigroup’s submissions that the letters “I” and “Y” are similar; that some nouns ending in “y” will change the “y” to “i” in plural form; and that the letters “T” and “I” in the CITYINDEX Mark are only separated by one letter, “Y”, are not persuasive. In my opinion, a person of ordinary intelligence and memory would not be likely to be deceived or confused by the visual appearance of the CITYINDEX Mark because of those factors. The letters “I” and “Y” bear no visual similarity; there is no issue of the CITYINDEX Mark taking on the plural form, the fact that the English language has a rule which changes a “y” to an “i” in some words when a plural is formed takes the matter nowhere; and the separation of the letters “T” and “I” in the CITYINDEX Mark in fact assists in the visual differentiation of that mark from the Citigroup Marks.

105    Thirdly, the CITYINDEX Mark is stylised. The words “CITYINDEX” appear in block capitals, in two colours and set against a differently coloured background, making the mark visually very different to the appearance of the Citigroup Marks. The two stylised Citigroup Marks are in lower case lettering and each have an arc over the “t”. The remaining marks are not stylised but appear in capital letters. In all cases the word “CITI” is an invented word ending with an “i”.

106    People of ordinary intelligence and memory who see the CITYINDEX Mark are likely to recall that it is made up of two ordinary English words: city and index; that both words were spelt correctly; and that the appearance of the words was in some way stylised with the words appearing in different colours. People of ordinary intelligence and memory who see the Citigroup Marks are likely to recall the word “citi”, uniquely spelt as it is, and in the case of the Stylised Citi Mark and the Citibank Mark the unique arc over the “t’. It is not the case that the Citigroup Marks and the CITYINDEX Mark are so similar that a person recollecting them would be left to wonder whether the Designated Services offered under the CITYINDEX Mark came from the same source as services offered under the Citigroup Marks.

107    Fourthly, neither the word “city” nor the word “index” take prominence in the CITYINDEX Mark. Contrary to Citigroup’s submission, I do not accept that the word “city” is the essential feature of the CITYINDEX Mark. In Coca-Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287; (2014) 322 ALR 505 (Coca-Cola) at [226] Besanko J, referring to a passage from Saville Perfumery Ltd v June Perfect Ltd (1939) 1B IPR 440; (1941) 58 RPC 147, said:

Lord Greene MR in Saville Perfumery at IPR 453; RPC 162, referred to the fact that traders’ customers often do not carry in their head the details of particular marks:

In such cases the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.

108    Where no component of a mark is “sufficiently prominent” a mark may not have any essential features: REA Group Ltd v Real Estate 1 Ltd (2013) 217 FCR 327 at [232]. In my opinion, the word “CITY” in the CITYINDEX Mark no more strikes the eye and fixes itself in recollection than the word “INDEX”. Both words are, as I have already observed, ordinary English words and neither can, in my opinion, be characterised as an essential feature of the mark.

109    Fifthly, because the CITYINDEX Mark and the Citigroup Marks are not visually the same, the circumstances of this case are different to those in Polo and the other judgments referred to by Citigroup in which the Court concluded that there was deceptive similarity where the first part of the marks was the same. By way of example, in Polo Burchett J held that “polo” was a distinctive word and its use was bound to cause confusion which the addition of a second word “club” would not dispel. His Honour said at 232 that:

… [B]earing in mind that the test requires consideration of the customer with an imperfect recollection of the mark, it is important that the distinctive impact of the word “Polo” is likely to affect the mind although the presence or absence of the blander word “Club” may escape notice.

110    In the present case, in contrast, the first word of the CITYINDEX Mark is an ordinary English word, city. It is not itself distinctive and is not the same as the invented word “citi’ which appears in the Citigroup Marks.

111    In E & J Gallo Winery the two marks shared the identical first word, “barefoot”. Flick J found that the word barefoot was an essential feature common to both marks; that it would leave a considerable impression on the mind of a consumer of ordinary intelligence; and that the word “RADLER”, despite its distinctiveness, would not be sufficient to remove the likelihood of deception otherwise arising. In contrast to the present case, the use of the word “barefoot” in each of the marks, which in the case of the registered mark was the only word, were uses of identical English words with no distinguishing features other than the proposed addition of a second word. The Court found that this was not sufficient to dissolve the likelihood of deception.

112    Turning then to aural similarity. The words “citi” and “city” are phonetically identical. But the word “index” is unique to the CITYINDEX Mark and is not found in any of the Citigroup Marks.

113    Citigroup submitted that because the word index is a term commonly used in financial services, particularly in relation to financial markets and investments, it does not serve to distinguish the CITYINDEX Mark. I accept that the word “index” has common usage in financial services as established by the uncontested evidence. But that does not mean that the word does not serve to distinguish the CITYINDEX Mark from the Citigroup Marks and that its presence should be discounted so that the focus is only on the word “city” in determining deceptive similarity.

114    The CITYINDEX Mark is made up of a combination of two words and, as I have already found, neither is an essential feature or carries more weight in the determination of whether the mark is deceptively similar to the Citigroup Marks. There can be no confusion between the CITYINDEX Mark and the Citigroup Marks when spoken and heard. Even accepting that names such as “Citibank” and “Citigroup” are often abbreviated to “Citi” does not change the position. There is no evidence that the CITYINDEX Mark or references to City Index are abbreviated in the same way.

115    As Citigroup submitted, the real confusion may lie in the fact that the various product and brand names used by Citigroup to sell its services in many cases bear the prefix “CITI” with a second word to differentiate the service or the product, for example, CITIBANK, CITIPHONE, CITIFX, and so on. Citigroup submitted that it had a pattern of using trade marks comprised of “CITI” followed by a suffix, usually descriptive of financial services. In those circumstances it is possible that upon hearing the words “City Index” a person of ordinary intelligence would be left with the impression that the “City Index” product was promoted by Citigroup. But my finding that there can be no confusion between the CITYINDEX Mark and the Citigroup Marks applies equally to this submission. The CITYINDEX Mark does not sound like any of the Citigroup Marks. Nor does the pattern of use adopted by Citigroup change that outcome.

116    I accept Gain’s submission that any aural comparison must be made having regard to the context in which the relevant services are likely to be acquired. It is necessary to balance the relative importance of the aural use of the marks and their visual appearance: see Torpedoes at [85]. Mr Webster’s evidence, set out at [22] above, is that the process by which a potential client can acquire the Designated Services involves a number of stages, throughout which the potential client is exposed to the CITYINDEX Mark. That is, the CITYINDEX Mark is displayed on the material relevant to acquiring the services. This process, dictated by the regulatory framework prescribed in the Corporations Act 2001 (Cth) (Corporations Act) and the risky nature of the investments, involves, in summary:

(1)    the provision to each potential client of a PDS and financial services guide, which the evidence shows bore the CITYINDEX Mark;

(2)    prior to acquiring the Designated Services, the prospective client acknowledging that he or she has read and understood the PDS and financial services guide. The material is provided in the expectation that it will be viewed, even if not thoroughly read. It clearly displays the CITYINDEX Mark, leaving no confusion in the mind of the prospective client about the identity of the provider of the Designated Services;

(3)    potential clients are required to complete an application form and enter into a client agreement for the provision of the Designated Services prior to acquiring those services. Those application forms and client agreements feature the CITYINDEX Mark; and

(4)    because of the risky nature of the Designated Services potential clients are likely to consider a proposed investment carefully. They therefore may consult not only the literature prescribed by the Corporations Act and referred to above but promotional and other literature such as training course materials and trading platform guides which relevantly bear the CITYINDEX Mark.

117    Citigroup submitted that a mark may be deceptively similar to another mark even if its use might not result in any confusion that “induces a sale or persists until the moment of sale”, relying on Vivo at [115]. But that is not the issue here. The Citigroup Marks and the CITYINDEX Mark are both aurally sufficiently different. I do not accept that any aural confusion would arise.

118    There was evidence before me of the use by other businesses of the word “city” in their business names. Gain relied on that evidence in support of a submission that the word “city” is a commonly used ordinary English word, not distinctive in any way and that other traders have registered and are using trade marks and names which include “city” in relation to financial services. Accordingly, people who hear the word “city” as part of the CITYINDEX Mark in relation to the Designated Services are unlikely to wonder whether it refers to Citigroup.

119    The evidence relied on by Gain included:

(1)    seven registered trade marks, all of which incorporated the word “city”. Five of those trade marks were registered for insurance and financial services or affairs, among other things, and the remaining two for business management services and the provision of commercial and news information respectively; and

(2)    five examples of unregistered trade marks featuring the word “city” in use before the Priority Date. It is fair to say that these related to relatively small businesses, two of which were engaged in foreign exchange, one of which appeared to be an insurance broker, another which provided “loans and cash solutions” and the last a franchisor of a small loans specialist business.

120    None of the registered trade marks or businesses carrying on business under the unregistered trade marks is, based on the available evidence, in the same category as either Citigroup or Gain in terms of the type or scale of their respective businesses. Those businesses are clearly much smaller and, based on the limited evidence available, operate in different markets. At its highest the evidence establishes that there are some businesses which seem to have some connection to foreign exchange services, financial advice or the provision of small loans and use the word “city” in their names but which do not operate in the same markets as Citigroup or Gain or provide the Designated Services. It is of limited utility in determining the issue before me.

121    Of more significance is whether, by its opposition to registration, Citigroup in effect seeks a monopoly over use of the common word “city”, or at least a monopoly over use of the word “city” as a prefix, in relation to financial services in circumstances where the Citigroup Marks only feature an invented homonym of the word “city”. In Cooper Engineering Company Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 (Cooper Engineering) the High Court (Dixon, Williams and Kitto JJ) considered whether the word “Rainmaster” so resembled the words “Rain King” as to be likely to deceive. The Court observed that the prefix of the two words was the same but that the suffix differed in appearance and in sound, making the two marks as a whole quite distinct. The Court considered that the words master and king were so unlike to the eye and the ear that counsel for the appellant was forced to rely on “the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article”. Their Honours said at 539:

But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

122    In the instant case, in contrast to the situation in Cooper Engineering, the word “city” is not descriptive of the services. That said, if the Court were to make a finding in favour of Citigroup there is a real danger that it would, in effect, be granting a monopoly to it over the use of the common word “city” as a prefix or in combination with other words in relation to financial services. As was noted by Burchett J in Conde Nast at 511-512, “[a] trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse”.

123    Finally, I turn to consider whether there has been any actual confusion. Such evidence may be of “great weight”: Australian Woollen Mills Ltd v F S Walton and Company Ltd (1937) 58 CLR 641 at 658.

124    Mr Webster gave evidence that he was not aware of anyone having been confused into thinking that the City Index Australia business, its services, the CITYINDEX Mark or the IFX Mark are associated in any way with any business related to Citigroup or any trade mark featuring "Citi".

125    The evidence of actual confusion relied on by Citigroup is seven articles appearing in various newspapers as follows:

    The Weekend Australian, published on 8-9 September 2007, an article titled “ASX allows you to play roulette with shares through CFDs” which included:

It is probably the main reason why existing CFD providers – which include CMC Markets, IG Markets, MF Global CITI Index – are big on educating existing clients.

    the Herald Sun, published on 26 March 2009, an article titled “Resources rebound” which included:

Citi Index market strategist Alex Douglas told BusinessDaily the outlook for commodities prices was brighter now than it was a few months ago.

    The Daily Telegraph, published on 15 September 2009, an article titled “Financials wallow in sea of red” which included:

Citi Index senior dealer James Persson attributed the market pullback to events in Japan rather than the lead from the US.

    The Australian Financial Review, published on 27 October 2010, an article titled “Brokers foresee access to Asia” which included:

Citi Index head of dealing for Asia Pacific, Michael McCarthy, said: “Ultimately, should the deal go through, we think it will result in a better product offering for mum-and-dad investors.

    The Courier Mail, published on 7 July 2011, an article titled “Steels rise but fears hold sway” which included:

On a brighter note, Citi Index chief market analyst Peter Esho expects the ASX 200 to add 200 points in July.

    The Advertiser, published on 7 July 2011, an article titled “ASX’s climb relies on strong US” which included:

Six big materials sector stocks, including BHP Billiton and Rio Tinto, are not expected to surprise the market because of their already well-telegraphed strong quarterly production reports, Citi Index chief market analyst Peter Esho said.

    The Saturday Age, published on 13 October 2012, an article titled “ASIC closes down scams but warns there are still masterminds at large” which included:

The seeds of what would become Operation Ark were planted on the afternoon of Friday, September 16, last year, when a legitimate contracts for difference operator realised someone was using their name to run a scam.

“We received a call from legal counsel from Citi Index Australia, which is a legitimate licensee,” ASIC’s head of enforcement, Tim Mullaly, said in a rare face-to-face interview.

“They had received a complaint from someone who had thought they had invested with that entity, but they had invested with Citi Index Australasia, which was a fraudulent financial services business.

126    In assessing what weight I should give to this evidence I have evaluated its quality having regard to “its internal features, the other evidence and the court’s own knowledge of human affairs”: Vivo at [137]. Here the only immediately relevant evidence before me is the articles.

127    In Vivo at [151] Nicholas J (with whom Dowsett J agreed) found that the evidence of actual confusion, given by a Mr Simons, suggested that there was some other factor at play that may explain why the staff with whom he spoke thought that the TiVo and Vivo products were from the same source. But more critically his Honour was not persuaded that, in the absence of evidence from the staff concerned or other evidence to explain why the staff thought as they did, Mr Simons’ evidence should be given any significant weight.

128    The same has occurred here. There are seven isolated incidents over a period of five years of journalists referring to City Index as “Citi Index”. But there is no evidence before me from the persons who, according to Citigroup, are confused. That is, there is no evidence of why the journalists who authored the articles and their sub-editors referred to City Index in that way and why they were confused. In addition there is no evidence that those journalists or their sub-editors are participants in the retail OTC derivatives market or any evidence that they were exposed, as actual participants in the market would be, to the surrounding circumstances in which the Designated Services are supplied and acquired. Nor is there any evidence to suggest that their confusion arose from the use of the CITYINDEX Mark. For the same reason, that is, because the articles include the words “Citi Index” and not the CITYINDEX Mark, any confusion on the part of readers would be irrelevant. In those circumstances the articles should be given only negligible weight and do not affect the conclusion I have reached on the question of deceptive similarity.

129    As further indicia of confusion Citigroup relied on evidence of search results using the Google search engine which were undertaken for the words “citi index”. According to the person undertaking the search, Ms Gerace, she was redirected to search results for “city index”. The first page of the results of that redirected search showed several results for Gain, including a display of a mark similar to the CITYINDEX Mark, and one result for Citibank, as well as a number of other results not connected to Gain or Citigroup. Refusing the redirection yielded a search result which, on the first page, included a significant number of results related to Citigroup entities and no results for Gain, but included an advertisement for cityindex.com.au. This evidence does not rise to the level of establishing actual confusion on the part of anyone, nor a real, tangible danger of confusion. The search results do not demonstrate what a potential acquirer of the Designated Services would do and whether any confusion would arise in that person’s mind. Nor do they in fact demonstrate any confusion arising from use of the CITYINDEX Mark.

The IFX Mark

130    Citigroup submitted that the IFX Mark is deceptively similar to the Citigroup Marks, especially the Word Citi Mark, the CITIFX Mark and the CITI INSTANTFX Mark. It submitted that the IFX Mark includes the text “IFX A CITYINDEX COMPANY”; that “FX” is a common descriptive word referring to foreign exchange services and commonly used in the context of those activities; that “I” is a common abbreviation for services offered electronically or online and is also the last letter in “CITI”; and that the combination “IFX” forms part of “CITIFX”.

131    Citigroup also submitted that the words “CITY INDEX” are an essential feature of the IFX Mark and that those words appear to identify the source of the services offered under that mark. Citigroup contended that the additional elements of the IFX Mark do not avoid the likelihood of confusion with the Citigroup Marks.

132    Gain submitted that the IFX Mark is not deceptively similar to any of the Citigroup Marks for the following reasons:

    first, the IFX Mark is a stylised mark, comprising the letters “IFX” in block capitals in a distinctive font, with the letter “I” in a different colour to the letters “FX” and the words “A City Index company” appearing underneath in much smaller font. Gain submitted that none of the Citigroup Marks bears even a remote resemblance to the IFX Mark;

    secondly, the dominant feature of the IFX Mark is the letters “IFX”, which do not form part of any of the Citigroup Marks;

    thirdly, the dominant feature of the Citigroup Marks is the word “CITI”, which does not appear in the IFX Mark. The word “City” is used in the IFX Mark in smaller font underneath the letters “IFX”, but that is use of the ordinary English word, not the invented word which features in the Citigroup Marks; and

    fourthly, in terms of aural comparison, the IFX Mark sounds nothing like any of the Citigroup Marks. It would most likely be represented aurally as “IFX”, without the sentence in small font appearing underneath those letters. However, even if that sentence were included in aural representations of the mark, the word “city” would form only a small part of the much larger whole. Gain also relied on its submissions in relation to aural comparison included at [101] above.

133    There is no similarity between the IFX Mark and the Citigroup Marks. Unlike the CITYINDEX Mark, the IFX Mark has a dominant feature that “strikes the eye” and “fixes itself in the recollection”, namely the letters “IFX”. Although the letters “IFX” are included in the CITIFX Mark, the dominant feature of the IFX Mark does not form any meaningful part of any of the Citigroup Marks. The word “city” appears in smaller font beneath the letters “IFX”. It is not, as Citigroup submitted, an essential feature of the IFX Mark but is descriptive of the ownership of IFX. Nor is it in the same form as the word “CITI” as it appears in the Citigroup Marks.

134    Further, there is no aural similarity between the IFX Mark and any of the Citigroup Marks. That is so even if the aural representation of the IFX Mark was not limited to the word “IFX” but included the sentence appearing beneath those letters: “A City Index company”.

135    In my opinion there is no real, tangible danger of confusion occurring in the minds of potential customers of ordinary intelligence and memory for the goods or services provided under the IFX Mark, even allowing for imperfect recollection. I do not think that there would be cause to wonder whether products or services offered under the IFX Mark were closely related to or came from the same source as products or services offered under the Citigroup Marks.

136    My comments and findings at [106] to [116] above apply equally to my consideration of the IFX Mark and the conclusions I have reached, particularly insofar as the IFX Mark includes the words “A City Index company”.

Section 44(3)

137    Because of the conclusions I have reached in relation to the s 44(2) ground of opposition the question of whether the Gain Marks should nevertheless be permitted to proceed to registration pursuant to s 44(3) does not arise.

Ground 2: section 60

138    Citigroup’s second ground of opposition to registration of the Gain Marks is made under s 60 of the TM Act. In order to succeed on this ground Citigroup must establish that:

(1)    before the Priority Date the Citigroup Marks had acquired a reputation in Australia; and

(2)    because of that reputation, the use of the Gain Marks in relation to the Designated Services would be likely to deceive or cause confusion.

139    Gain accepts that the Stylised Citi Mark had a reputation in Australia in respect of certain financial services, particularly banking services, at the Priority Date. At issue between the parties is whether the Word Citi Mark had a reputation in Australia prior to the Priority Date.

Legislative framework and relevant principles

140    Section  60 of the TM Act provides:

60     Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)     another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)     because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

141    In Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Dodds-Streeton J, in a part of her Honour’s judgment not overturned on appeal, considered s 60 of the TM Act, observing that the reported judicial consideration of s 60 in its present form, as amended by the Trade Marks Amendment Act 2006 (Cth), was “relatively sparse”. Her Honour said at [308]:

The focus of s 60 is protection of reputation in a trade mark, irrespective of whether it is registered. The opponent bears the onus of establishing that another trade mark, whether registered or not, has acquired a reputation in Australia, such that use of the opposed mark would be likely to deceive or cause confusion.

142    At [336] her Honour said about reputation that:

The authorities therefore recognise that even in the absence of sales or use, a mark may acquire a reputation in Australia by the means of direct preliminary marketing, direct advertising, indirect advertising, exposure in radio, film, newspapers and magazines or television, or because the mark has a reputation in another country which can be shown to have extended to Australia.

143    In Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; (2015)115 IPR 82 Jessup J considered an opposition to registration of a trade mark pursuant to s 60 of the TM Act. At [24] his Honour referred to the Explanatory Memorandum to the 2006 amendment to the TM Act, observing that:

Although the Explanatory Memorandum for s 60 as introduced, for the first time, in 1995 was quite unhelpful in understanding why the provision was introduced, the Explanatory Memorandum for the 2006 amendment supplied that deficiency:

1.    The intention of section 60 of the Act is to implement Australia’s obligations to protect well-known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The provisions have not been written so as to establish a new class of trade marks (“well-known” marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks. The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion …

…

3.    There have been a number of instances where a trade mark has an established reputation in Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion, even though the subsequent trade mark is not substantially identical with, or deceptively similar to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it is not possible to currently use this provision to prevent registration of a mark which fails the tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion or deception in relation to a well-known mark. The tests for deception and confusion are all well established in judicial authority, and hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks. By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark.

4.    Under the amended provisions the consideration of oppositions would take into account the extent of the reputation of the opposing mark at the time the opposed mark was applied for, and the likelihood of deception and confusion occurring in the marketplace because of this.

(emphasis added)

144    At [27] Jessup J said:

In the result, I would hold that, in a case in which the “other” mark is registered, the only respect in which s 60 requires an exercise different from that arising under so much of s 44 as relates to deceptive similarity is that the reputation in Australia of the “other” mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion. What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.

145    The requirement that the use of the applied for mark would be likely to deceive or cause confusion corresponds to the language of s 10 of the TM Act and, thus, in order to meet the requirements of s 60(b), there must be a real, tangible danger of confusion caused by the reputation of the registered mark acquired before the priority date.

146    In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102 (McCormick) at [81] Kenny J considered the meaning of the word “reputation” in s 60. After referring to the definition in the Macquarie Dictionary, her Honour said that “reputation” is “apt to refer to ‘the recognition of the McCormick & Co marks by the public generally’”. Her Honour continued at [83]:

I accept, as counsel for Mary McCormick said, that this is not an issue that attracts s 144 of the Evidence Act 1995 (Cth). Whether the McCormick marks have a reputation in Australia is not a matter “that is not reasonably open to question”. In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

In this case McCormick & Co relied on the following evidence to establish the reputation of its marks:

(1)    an order, made in 1984 under s 26(3) of the Trade Marks Act 1955 (the 1955 Act), that certain McCormick marks were distinctive;

(2)    extensive sales under the marks;

(3)    considerable expenditure on advertising; and

(4)    the use of promotional material.

(emphasis in original)

147    Kenny J observed at [86] that “[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product”. Her Honour noted at [87] that the evidence before her did not establish what proportion of sales was made under or by reference to any particular mark; that there was little or no evidence of the effect of advertising on consumers; that there were no consumer surveys in evidence nor evidence about the marketing of McCormick & Co’s products; and that there was no evidence to connect whatever international reputation McCormick & Co might have had with the reputation of that company’s marks in Australia. However, her Honour found at [88] that none of those factors were essential requirements for a finding of reputation under s 60 and that the sales and advertising of the order and magnitude involved in the case were a sufficient basis for establishing reputation.

148    Where an opponent has a reputation in particular goods or services but that reputation does not encompass the goods or services for which registration is sought, that may be a basis for finding that s 60 is not made out. In Hills Industries Ltd v Bitek Pty Ltd (2011) 214 FCR 396 Lander J considered a ground of opposition under s 60 as it appeared prior to the 2006 amendments. His Honour had found that there was no reputation in Hills’ mark prior to the priority date but, in any event, went on to consider whether the use of the trade mark sought to be registered would be likely to deceive or cause confusion. His Honour observed at [208] that:

Assuming, contrary to my opinion, that the Hills’ mark had acquired a reputation, it had only acquired, at the priority date, a reputation in respect of set-top boxes. Hills did not contend for any other reputation. If that was the case, the use of the Bitek mark in respect of its goods was not likely to deceive or cause confusion because the goods were unrelated to a set-top box. Bitek’s goods specifically excluded set-top boxes. A consumer wishing to acquire a TV installation accessory or external antenna bearing the Bitek brand would not in my opinion be likely to be confused or deceived as to the origin or provenance of those products because of Hills’ mark’s reputation in set-top boxes. For that further reason, Hills could not rely upon s 60 to defeat Bitek’s application for registration.

The parties’ submissions

149    Citigroup submitted that the Citigroup Marks had, before the Priority Date, acquired a reputation in Australia and because of that reputation the use of the Gain marks would be likely to deceive or cause confusion.

150    Citigroup submitted that there could be no doubt that the Word Citi Mark enjoyed an extraordinarily broad reputation and that it, in effect, operated as a “badge of origin”. Citigroup further submitted that:

(1)    in some circumstances “CITI” will not be used as a trade mark. But in other cases the Word Citi Mark may be used instead of the business’ actual name because people will know to what it refers. The use of the Word Citi Mark to identify the company in that way proves that reputation subsists in that trade mark;

(2)    the Stylised Citi Mark is use of the Word Citi Mark. The latter could not be removed from the register for non-use if it were only used in its stylised form;

(3)    the reputation in the Word Citi Mark has been further developed and reinforced by the continued use of “CITI” with various suffixes; and

(4)    commercial reality is that logos change and that the purpose of registration in plain form is to maintain brand identity. Citigroup’s brand identity has evolved but the constant aspect has been and is use of the word “Citi”. For example, use of “Citi” as part of CitiFirst demonstrates the reputation in the Word Citi Mark because such usage identifies CitiFirst as a service of Citigroup.

151    As noted above, Gain accepts that Citigroup is a large and well-known financial institution; that the Stylised Citi Mark, including the unique spelling, curved font, lower case lettering and arc over the “t”, had a reputation in Australia in respect of certain financial services, particularly banking services, at the Priority Date; and that the reputation in that mark was reinforced by the consistency adopted by Citigroup in its branding. But Gain submitted that that reputation cannot be divorced from the unique spelling and stylisation of the Stylised Citi Mark and that the reputation does not attach to the word “City”.

152    Gain submitted that it was necessary to establish the reputation of the Word Citi Mark. It submitted that much of the evidence led by Citigroup did not show use of that mark as a trade mark but rather featured “Citi” as a word in text. By way of example, Gain referred to the document titled “CitiFirst Protection Market Linked Investment” issued in 2009 in which:

    the company Citigroup Global Markets Australia Pty Limited is defined as “Citi” so that any reference in the document to “Citi” is in fact a reference to that company;

    the reader is asked to “contact Citi” on a nominated phone number if he or she has any queries about the content of the document, which is not trade mark use of the Word Citi Mark; and

    the trade mark which appears in the document is the Stylised Citi Mark.

153    Gain submitted that Citigroup’s submission that the use of “Citi” with various suffixes demonstrates use of the Word Citi Mark could not be correct, but that those composite words are uses of different trade marks. In support of that submission Gain relied on s 7(1) of the TM Act, which concerns use of a trade mark with additions or alterations. It further submitted that to accept Citigroup’s submission would require the Court to conclude that such composite marks were uses of the Word Citi Mark and that the addition of the suffix did not substantially affect the identity of the trade mark, as required by s 7(1) of the TM Act.

Consideration

154    The terms of s 60(a) require that another trade mark, the opponent’s trade mark, has acquired a reputation prior to the priority date. It is the trade mark which must acquire the reputation. In McCormick at [82] Kenny J posed the relevant question for her to consider as whether the evidence established that in Australia prior to the priority date the relevant marks in that case were recognised by the public generally. The same question arises for me. That is, does the evidence establish that in Australia prior to 9 November 2010 the Citigroup Marks were recognised by the public generally?

155    That issue is not contested by Gain for the Stylised Citi Mark. Gain accepts that that trade mark had a considerable reputation in Australia prior to the Priority Date. The issue of reputation is contested for the Word Citi Mark.

156    Citigroup led a considerable amount of evidence going to the issue of reputation. That evidence spanned a number of years and included evidence post-dating the Priority Date. I accept Citigroup’s submission that evidence of use of a trade mark after the Priority Date may be relevant as “later events may cast light upon the true position at an earlier date”: Conde Nast at 509.

157    In my opinion Citigroup has established that it had a significant reputation in the Word Citi Mark at the Priority Date. The evidence of use of the Citigroup Marks, including the Word Citi Mark, is summarised at [29] to [77] above. It is clear from that evidence that there was use of the Word Citi Mark as a trade mark in a range of material published by Citigroup that was available in Australia. For example:

(1)    Ms Kennedy gives evidence that she believes that the first use by Citigroup of the mark “CITI” was as a cable address in the late 1800s. At that time Citigroup was called “The National City Bank of New York” The cable address shown in a copy of a letter dated 1897 is “CITIBANK”;

(2)    again according to Ms Kennedy, Citigroup’s earliest trade mark registration for a mark including the word CITI was US Trade Mark number 691815 for the mark CITIBANK, dating from 2 February 1959 and with use from that date. However, Ms Kennedy believes that the word “Citi” was used to refer to Citigroup from much earlier than 1959 and probably dates back to the late 1800s. Citigroup’s oldest trade mark registration for just the mark “CITI” dates from 1979 with first use claimed from 30 January 1979;

(3)    in 2007 Citigroup implemented a corporate branding change that united all of its trading activities under the single name “Citi”. According to Ms Kennedy, advertisements relating to this change were made in Australia on 6 May 2007. In a press release dated 13 February 2007 Citigroup announced that it would unite its business under the “well-known ‘Citi’ name and its recognizable red arc design”. The release said that:

“Citi is already among the most recognized and respected brands in global financial services. Our extensive global research and analysis also confirmed Citi is a highly effective brand across many languages, markets and technology platforms. It is how most of our clients think about us already” Prince said. “Now, through a unified brand, we will leverage this symbol to represent our commitment to providing our clients with best-in-class advice, products and service”;

(4)    specifically, in Australia, Citigroup has had a relatively long history as summarised at [31] to [32] above. A publication titled “Citi in Australia – A Business History” outlines Citigroup’s “[e]ngagement” with Australia since 1916. While its logos and branding have changed over that time, there has been a common theme of use of “Citi” as part of that branding at least since the 1970s;

(5)    the websites operated by Citigroup are described at [52] to [53] above. A printout from the www.citibank.com.au website from about 2010 shows use of the tag line “Powered by Citi”; includes the Citibank Mark; and includes a statement “No ATM fees at Citi … ATMs around Australia”;

(6)    a printout from the Citi Australia Facebook page, albeit dated in 2015, refers to “Citi Australia”, incorporating the Word Citi Mark, and includes the Stylised Citi Mark;

(7)    a printout from the Citi Australia Twitter account shows that it joined in August 2010. That printout is again dated from 2015 but it includes the Stylised Citi Mark and the Word Citi Mark in the phrase Citi Australia;

(8)    a printout from the Citi Australia YouTube account shows that it joined YouTube in April 2010. The printout, which dates from 2015, includes the Stylised Citi Mark and the Word Citi Mark;

(9)    promotional material for “Citibank Plus” dated 1 September 2010 includes the Stylised Citi Mark, the Citibank Mark, the Word Citi Mark in the tag line “Powered by Citi” and refers in the conditions to the fact that there are no ATM fees at Citi ATMs;

(10)    an advertisement for the “Citibank Ultimate Saver” account and brochures for the “Citibank Online Saver” dated from 2008 and onwards include the Citibank Mark and the tag line “Citi never sleeps”, which incorporates the Word Citi Mark;

(11)    promotional material for home loans offered by Citigroup Australia dating from 2008 and onwards variously include the Citibank Mark and the tag line “Citi never sleeps” or the tag line “Powered by Citi”, both of which incorporate the Word Citi Mark. Some of those brochures also refer to the “Citi Platinum Credit Card”, described by reference to the Word Citi Mark;

(12)    promotional material from 1997 and 1999 for the Citibank credit card includes the tag line “The Citi never sleeps”, which incorporates the Word Citi Mark;

(13)    general promotional material from 2007 includes: “Together, these resources add up to one Citi, with one goal”, “Today is Someday. Citi. Let’s get it done” and the Stylised Citi Mark; and

(14)    the Citigroup 2010 annual report titled “Citi 2010 Annual Report”, with Citigroup referred to as Citi in the extract provided.

158    Citigroup also relied on television and radio commercials which pre-dated the Priority Date, commencing with a commercial from 1986, which reinforces Citigroup’s relatively lengthy history of operating in Australia. In later advertisements, the tag lines “Citi never sleeps” and “Powered by Citi” are used.