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.