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Customer Supplied Documents

Document

Sequence

Document Type Document File Name Physical

Media

1 Other SFIT002AU - Exam Response

Letter.pdf

No

2 Other SFIT002AU Signed Declaration.pdf No

3 Other SFIT002AU_Signed Exhibit VJT-1 -

Tabs 1 to 6 - For Lodgement.pdf

No



No



No



No

Patent & Trade Mark Attorneys ABN 34 291 651 910

Telephone. + 61 2 9247 8000 Facsimile. + 61 2 8324 6426

GPO Box 469 Level 4, 1 Alfred Street Sydney NSW 2001 Australia

www.cotters.com.au

31 July 2015

SFIT002AU - Exam Response Letter.docx

IP Australia – Registrar of Trade Marks Our Ref: SFIT002AU PO Box 200 Woden ACT 2606 Australia

Re: Australian Trade Mark Application No 1682058 SAVVY in Class 36 In the name of Quantum Savvy Pty Ltd

Response to Examination Report

We refer to the Examiner’s report dated 30 April 2015 in respect of the above matter in which a number of citation objections were raised in respect of this application.

Evidence of Use

We attach a declaration made on behalf of the Applicant comprising evidence which establishes grounds to accept the above application on the basis of prior continuous use under section 44(4) and honest concurrent use under section 44(3)(a) of the Trade Marks Act 1995 (Cth).

1. Prior Continuous Use

The Applicant first started using the subject mark in Australia in 2011 (having commenced preparations for the use of the mark in 2010) and has used the subject trade mark extensively throughout all of Australia since then, in respect of the claimed financial and insurance services.

As such, the evidence overcomes the citation objections based on Trade Mark Numbers 1637708, 1645207, 1645404, 1648297, 1648612, 1655150, 1655204, 1604195 and 1610777 on the basis of prior continuous use, under section 44(4).

This leaves only cited Registration Numbers 1136365 and 1165358 to be overcome on the basis of honest concurrent use, as discussed below.

2. Honest Concurrent Use

The following discussion relates to the remaining citation objections based on Registration Numbers 1136365 and 1165358. The attached evidence shows that:

a. The Applicant first started using the subject mark in Australia in 2011 (having commenced preparations for the use of the mark in 2010) and has used the subject trade mark extensively throughout all of Australia since then, in respect of financial and insurance services.

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b. The Applicant’s sales figures for services sold under the subject trade mark since 2011 have been substantial.

c. The Applicant enjoys a strong reputation and goodwill in the trade mark in Australia as a result of the fact that:

i. the Applicant has extensively advertised its services under the trade mark on its website, on numerous other websites and on-line forums and in other ways;

ii. the Applicant has also spent a considerable amount of money on advertising and promoting its services under the trade mark in Australia; and

iii. there has been extensive use of the subject trade mark by the Applicant in terms of duration, area and volume.

d. The Applicant’s adoption and use of the subject trade mark has been honest. In this respect, the Applicant was not aware of cited Registration Numbers 1136365 and 1165358 when it adopted and started using the subject mark. In fact, the Applicant is certain that it was the first business in Australia to use the subject mark in Australia in respect of the claimed services and was still not aware of any use of the cited marks as at the time the subject application was filed.

e. The Applicant is not aware of any instances of confusion that have arisen between the subject trade mark in Australia and either of the cited marks covered by Registration Numbers 1136365 and 1165358.

f. The Applicant would be extremely inconvenienced by a refusal to register the subject trade mark which it has been using extensively in Australia since 2011. Given that the Applicant was certain that no other organisation traded under the SAVVY brand in Australia in respect of its services when it began trading under the mark in 2011, and given that the owners of the cited marks have not at any time since 2011 objected to the Applicant’s use of the subject mark, the Applicant does not consider that they would be as inconvenienced by the registration of the mark as the Applicant would be by a refusal to register it. Further:

i. the Applicant notes that the current owner of cited Registration No. 1136365 only acquired the registration in November 2014, some years after the Applicant started using the subject mark trade mark (based on the history of the registration recorded on ATMOSS) and the Applicant is not aware that the original owner of the mark ever used it; and

ii. as at the date of filing the subject application, the Applicant had still not come across any use of the mark that is the subject of Registration No. 1165358.

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The Applicant submits that the enclosed evidence satisfies all of the criteria set out in John Fitton & Company Limited’s application for a trade mark (1949) 66 RPC 147, as summarised in paragraph 2 of Part 28 of the Examiner’s Manual. Accordingly, the Applicant respectfully requests the withdrawal of the citation objections based on Registration Numbers 1136365 and 1165358 under section 44(3)(a) of the Trade Marks Act 1995 (Cth).

Conclusion

In light of the above arguments and the enclosed Declaration, the Applicant respectfully submits that there has been sufficient honest concurrent use and prior continuous use of the subject mark SAVVY to overcome the citation objections.

Accordingly, the Applicant respectfully requests that the application to register the SAVVY trade mark be favourably reconsidered and looks forward to receiving notification of acceptance.

We look forward to receiving the results of further examination in due course.

Yours faithfully,

Patent & Trade Mark Attorneys

Nicky Shanks

Head of Trade Marks

Marcus Dalton

Partner

Level 1, 145 The Parade, Norwood SA 5067 * Telephone 1300 974 066 | Fax 08 8426 9940 | Web www.savvy.com.au

Galbraith Ave Toronto NSW 2283

Dear Guy, Thank you for becoming a Savvy customer. We sincerely value your business and hope you will enjoy your vehicle. If you need any assistance with your account or would like to discuss other finance requirements please feel free to give me a call at any time. I would like to take this opportunity to let you know that we have access to some market leading financial products including:

Home Loan Here at Savvy we compare over 40 lenders to find you the best loan to suit your needs. Products of the month Variable Rate – 4.34%, (Comparison Rate 4.35%) no ongoing fees 3 Year Fixed Rate – 3.99%, (Comparison Rate 4.84%) no ongoing fees Rates are correct as of 23/04/2015, lender criteria & conditions apply. Specialist Products Available Home Loans for persons with defaults 95% Lend Home Loans with no genuine savings needed Please ring Savvy for all your Home Loan needs on 08 84269928, we aim to save you money & put that money back into your pocket! Our Home Loan service is 100% free.

Insurance Plant and Equipment Finance Personal/Boat/Bike/Caravan Loans

As our business relies on referrals, if you have any friends or family who you think may benefit from our financial services, it would be appreciated if you could pass on my details to them. Yours faithfully

Chris Muldoon Savvy Finance + Insurance Phone: 1300 974 066 Fax: 1300 978 066 Email: [email protected]

Savvy Finance + Insurance Level 1, 145 The Parade, Norwood, SA 5067

Level 1, 145 The Parade Norwood SA 5067 Freecall: 1300 974 066 Fax: 1300 978 066 Email: [email protected]

Savvy Finance + Insurance Level 1, 145 The Parade, Norwood, SA 5067

Level 1, 145 The Parade Norwood SA 5067 Freecall: 1300 974 066 Fax: 1300 978 066 Email: [email protected]

Verbal Privacy Consent

This notice must be read to EACH applicant over the phone and consent obtained from EACH applicant. Customer’s Full Name…………………………………………………………………. STATEMENT TO BE MADE TO EACH APPLICANT: “Before I take down personal information about you, I need to inform you how Savvy Finance treats that information. Savvy Finance will use the personal information it collects about you, to assess your application for a loan. We will also use this information for administration purposes, such as to contact you about your application for a loan. If you do not provide Savvy Finance with all the information it requests, it may be unable to assess your application. Savvy Finance may disclose some of the personal information it collects about you to credit reporting agencies, other financial institutions and credit providers. Savvy Finance needs your consent so that it can obtain from, or provide to, a consumer or commercial credit reporting agency or another credit provider, information about you for the purpose of assessing your application. Do you agree to Savvy Finance using your personal information in this way?” Yes _ No_ (If customer answers “no”, do not proceed further with the application) Signed……………………………………………… Name Phil Goedecke (Savvy Finance Officer/Broker) Date………………………………………………… Time…………………………………………………… Statement to be read to customer if proposed guarantor(s) are involved Guarantor’s full name…………………………………………………… “Before you give Savvy Finance details of any person who has agreed to act as your guarantor, has this person consented to you giving personal details about themselves to Savvy Finance?” Yes _ No _ (If customers answer ‘yes’ proceed as follows – If ‘no’ don’t proceed to take information from the guarantor) Savvy Finance will use the personal information about the guarantor:

To assess whether to accept them as guarantor by obtaining a credit report from the credit reporting agencies, and; In considering their financial position, whether to accept your application for finance.

Have you spoken to the guarantor to seek their agreement to the use of their personal information for these purposes? Yes _ No _ (If the answer is ‘yes’ proceed – if ‘no’ don’t proceed to take the information form the guarantor) Signed……………………………………………… Name Phil Goedecke (Savvy Finance officer/broker) Date………………………………………………… Time……………………………………………………

Redacted Tab 12

11 pages

Exclusive Savvy Finance proposal• Trading Post would like to offer Savvy Finance an exclusive finance display package on Trading

Post online and mobile, designed to give Savvy Finance maximum exposure to TP’s audience of active car buyers at a very attractive rate.

• Every person searching for a car on Trading Post travels through the search results pages to research possible purchases and refine to the vehicles they are interested in.

• By appearing 3 times on the online search results pages you are significantly increasing the exposure of your offer to potential customers.

• The finance calculator involves the customer and gives them the chance to calculate the affordability of their chosen vehicle, making Savvy Finance part of the process.

• The seller tile and leader boards, combined with the finance calculator will give you a very strong presence on every used car search results page.

• The new Trading Post mobile site is growing rapidly and is bringing a new audience to our advertisers. With over 500,000 search results pages viewed in used cars each month, mobile offers a significant potential market.

• This proposal offers Savvy Finance unbeatable exposure on 100% of the used car search results pages. This means that every time a potential customer is searching for a car on Trading Post across Australia, they will see Savvy Finance.

Advertising Rates per monthPosition Category SOV Est imps (mth) Eff CPM rate Total cost Inc GST

Per month

Middle Leader board Used Car Search Results 100% 1,300,000 $2.25 $2,925

Seller Tile Used Car Search Results 100% 1,300,000 $2.25 $2,925

Calculator below Refine Panel

Used Car Search Results 100% 1,300,000 $2.25 $2,925

Mobile Banner Used Car Search Results 100% 500,000 $2.25 $1,125

Total 4,400,000 $2.25 $9,900

Customer Supplied Documents

Document

Sequence

Document Type Document File Name Physical

Media

1 Other SFIT002AU - Exam Response Letter

No 2.pdf

No

Patent & Trade Mark Attorneys ABN 34 291 651 910

Telephone. + 61 2 9247 8000 Facsimile. + 61 2 8324 6426

GPO Box 469 Level 4, 1 Alfred Street Sydney NSW 2001 Australia

www.cotters.com.au

16 September 2015

SFIT002AU - Exam Response Letter No 2.docx

IP Australia – Registrar of Trade Marks Our Ref: SFIT002AU PO Box 200 Woden ACT 2606 Australia

Re: Australian Trade Mark Application No 1682058 SAVVY in Class 36 In the name of Quantum Savvy Pty Ltd

Response to Examination Report

We refer to the Examiner’s second report dated 24 August 2015 in respect of the above matter.

The Examiner has requested further information about when the subject trade mark was first used by the Applicant, in order to apply the provisions of section 44(3)(a) in respect of cited Registration Numbers 1136365 and 1165358. The Applicant submits that this information is contained within the evidence which was filed with the Trade Marks Office on 31 July 2015 and responds to the Examiner’s request, and the examples given by the Examiner, as set out below.

The references in this letter to “evidence” and the “Declaration” relate to the Declaration of Vasilios James Tsouvalas, dated 28 July 2015, and the Exhibit attached to that Declaration, which were filed with the Trade Marks Office on 31 July 2015.

1. The Trade Marks Office’s examination manual states that evidence of honest concurrent use should show the “year, and if possible, the month” when the relevant trade mark was first used in Australia to sell goods or services (at Annex A1 of Part 28). As such, the Applicant notes that it is not necessary to specify the exact date on which use commenced in order to establish honest concurrent use. As discussed below, the evidence previously filed in support of this application contained the required information about when the Applicant first started using the SAVVY trade mark in Australia in the course of trade.

2. In the interests of clarity, and as outlined in paragraphs 13 to 15 of the Declaration, the Applicant acquired the domain name <savvy.com.au> in 2010, then spent time developing a website at that domain name and then started using the SAVVY trade mark in the course of trade (i.e. on the website and elsewhere) in early 2011.

3. The Applicant notes that paragraphs 7, 13 and 15 of the Declaration specifically stated that the Applicant started using the SAVVY trade mark in Australia at the “beginning of 2011”. This claim is corroborated by screen captures from the

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Applicant’s website which show that the Applicant was using the trade mark, in the course of trade, upon its website, by 19 February 2011 (please see Tab 7 of Exhibit VJT-1). Although the Applicant has been unable to specify the actual date on which its website went live, the evidence shows that the mark was being used at least as early as 19 February 2011. In view of the Trade Marks Office’s guidelines, discussed in paragraph 1 above, the Applicant submits that this is sufficient evidence to show that the use of the mark commenced early in 2011, as stated in the Declaration.

4. The sales and advertising figures in paragraphs 36 and 37 of the Declaration contain references to 2010 simply because they are financial year figures (i.e. they cover the financial year 1 July 2010 to 30 June 2011). The Applicant wishes to clarify that:

a. the sales figure for the financial year 2010/2011 cover sales made during the period between first use in early 2011 and 30 June 2011; and

b. as explained in paragraph 36 of the Declaration, the expenses incurred in 2010 ($16,500) related to the acquisition of the domain name <savvy.com.au> and work conducted to commence developing the Applicant’s website in 2010 (i.e. expenses incurred in preparations by the Applicant to use the mark). The remaining expenses for that financial year were incurred in 2011 (prior to the end of that financial year on 30 June 2011).

5. With regard to the Domain Tools report for the <savvy.com.au> domain name (at Tab 6 of Exhibit VJT1) to which the Examiner has referred, the Applicant advises that the report:

a. is a computer generated report which shows the history of the domain name from 2005;

b. shows that between 2005 and at least April 2010, the domain name was owned by several different entities (see pages 15 to 21 of the report) and that by 30 July 2010, it had been acquired by the Applicant and has been registered by the Applicant ever since (see pages 6 to 14 of the report). This corroborates the statements made in paragraphs 15 and 20 of the Declaration that the Applicant acquired the domain name in 2010;

c. contains screen captures showing use of the Applicant’s SAVVY mark upon the Applicant’s website on 2 March 2011, 23 June 2012, 23 May 2013, 19 December 2013 and 19 December 2014 (see page 23 of the report), also corroborating the claim that the Applicant has used the mark upon its website since the beginning of 2011.

6. The Applicant advises that the screen captures in the Domain Tools report from 2009, and the 2007 Whois record, to which the Examiner has referred, are irrelevant. The Applicant does not claim to have been the registrant for the relevant domain name in 2007 or 2009 or to have used the subject mark in 2007 or 2009. Instead, as stated in the Declaration, the Applicant acquired the relevant domain name in 2010 and

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commenced using the SAVVY trade mark in the course of trade in Australia at the beginning of 2011.

7. Although the letter in Tab 4 is undated, it was provided as a recent example of how the Applicant uses the SAVVY trademark upon the correspondence which it sends to customers, prospective customers and lenders. Paragraph 17 of the Declaration specifically confirms that the Applicant has always used the SAVVY trade mark upon these sorts of materials since 2011.

8. The Applicant notes that in addition to containing recent examples of use of the SAVVY trade mark, the evidence contained numerous dated examples of use of the mark by the Applicant between February 2011 and 2015. For example, the evidence showed use of the mark shown on:

a. Numerous screenshots from the Applicant’s website from dates between February 2011 and November 2014, namely screenshots captured from the following dates:

19 February 2011

2 March 2011

3 March 2011

15 April 2011

27 December 2011

21 February 2012

23 June 2012

12 July 2012

23 May 2013

29 November 2013

19 December 2013

2 July 2014

3 November 2014

19 December 2014

(see Tabs 6 and 7).

b. Information on the Applicant’s Facebook profile showing that its Facebook page was established in January 2012 (see Tab 14).

c. An example of a newsletter sent by the Applicant in August 2013. Although this newsletter is not dated, it refers to a competition which ended in September 2013 (see Tab 11).

d. Advertising on other third party websites in 2013 (see Tab 18 and paragraph 34).

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e. Booking orders for advertising on third party websites in 2014 and 2015, and an example of such advertising (see Tabs 12 and 13).

9. Accordingly, the Applicant submits that the evidence contains numerous different examples of use and advertising of the trade mark in Australia between February 2011 and 2015 (including extensive online advertising, advertising on the Applicant’s website, advertising on social media, advertising on signage and in correspondence and newsletters), and that the extent to which the mark has been used in terms of duration, area and volume is sufficient to allow the acceptance of the mark on the basis of honest concurrent use. The Applicant also requests the Examiner to refer to the submissions made in our response of 31 July 2015 when assessing the criteria for acceptance under section 44(3)(a).

10. In light of the points outlined above, the Applicant respectfully submits that the evidence previously submitted already contained the information requested in the Examiner’s Report No. 2 and that it should not therefore be necessary for the Applicant to submit a supplementary declaration as requested by the Examiner.

Conclusion

In light of the above submissions, and the submissions and evidence previously filed, the Applicant respectfully submits that there has been sufficient honest concurrent use to overcome the remaining citation objections based on Registration Numbers 1136365 and 1165358.

Accordingly, the Applicant respectfully requests that the application to register the SAVVY trade mark be favourably reconsidered and looks forward to receiving notification of acceptance.

We look forward to receiving the results of further examination in due course.

Yours faithfully,

Patent & Trade Mark Attorneys

Nicky Shanks Head of Trade Marks

Marcus Dalton Partner

EVIDENCE SUMMARY SHEET s44(3)(a)

Honest Concurrent Use

Application Number: 1682058

Application Filing Date: 26 March 2015

Citation(s): Filing date:

1136365 29 September 2006

1165358 9 March 2007

1604195 5 February 2014

1637708 30 July 2014

1645207 4 September 2014

1645404 5 September 2014

1648297 22 September 2014

1648612 23 September 2014

1655150 29 October 2014

1655204 29 October 2014

Evidence Summary

Comment on the following:1. Degree of likely confusion:

This is high as the marks are identical and the services are similar. Additionally, the nature of the online business of the applicant means that there is also a geographical reason why confusion may occur.

2. Has confusion occurred:

The applicant states that they are not aware of any instances of confusion occurring (Declaration 15). The trade mark has been promoted on the internet since 2011 and continuously since then (Declaration 19)

3. Honesty of concurrent use:

The trade mark, SAVVY, was chosen as the applicant considered the mark to reflect the culture for the business, being a smart online business (Declaration 15). The applicant was not aware of the cited marks at the time of adopting this mark (Declaration 14).

4. Extent of use prior to filing (duration, area, volume, etc):

Evidence of first use is on the applicant's website in 2011 (TAB 6 and 7), which demonstrates that the services being claimed in the application were available continuously since then. The applicant indicated that the primary means of advertising are through its own website. The traffic to the applicant's website is not significant as the waybackmachine indicates only 175 (TAB 7). A facebook page has also been active since 2012 with a post reach of approximately 30K (TAB 14).

The applicant indicated that they promote the mark through Google Adwords, however there are no figures in the evidence to demonstrate the traffic generated by these ads or the amount spent on this advertising. The mark is also promoted on 3rd party websites such as

however all these agreements are for 2014/2015 (TAB 12).

Use of the trade mark on the applicants places of business and internal documentation has been provided (TAB 2-5). The applicant indicates that advertising has been purchased on facebook, however no details have been provided (declaration 29). No examples from smh.com.au or ninemsn.com.au have been provided except to say that online display and banner ads would appear on these websites (declaration 30). Details of an article were included in TAB 16, however the distributorship was not provided. 3rd party advertisements on fyple.biz, nationaldirectory.com.au and zoominfo.com are not dated and there is no indication as to the traffic generated by these ads.

5. Relative inconvenience to respective parties:

The cited marks have been registered since 2006 and 2007 respectively. The relative inconvenience to these parties is high considering the duration of their registration prior to this application (5 and 6 years respectively).

EXAMINER’S RECOMMENDATION s44(3)(a)

Not applied

EXAMINER’S REASONS:

The applicant has shown that the mark was applied for honestly and that it has also been used on the services being claimed since its inception, however there is no evidence of the extent of use being broad enough for actual instances of confusion to occur prior to 2014. The advertising figures prior to this date suggest that the mark was being promoted, however demonstrated use appears to be for 2014/2015. There is not sufficient information about the advertising / promotional activities prior to this in order to determine the extent to which the mark was being promoted. The revenue is also moderate for what is a large business market, this supports the view that the market share is not considerable and in the face of the already registered trade mark is not capable of demonstrating that this mark has overcome the s44 objections in relation to the earliest cited marks 1136365 and 1165358. Please note that 1610777 has lapsed and is no longer a citation.

S44(3)(a) could be applied under the following conditions:

At this stage not apply the provisions of s44(3)(a) as the evidence has not been sufficient to overcome the s44 objection.

Examiner : Rachel GentlesDate: 20 August 2015

Team Leader Review

I agree with this assessment

Team Leader: Shellie MayDate: 20 August 2015

REMINDERS: - Add Endorsement- Send "ss44 Letter(s)" to cited owner(s) [except where there is no Australian address for

service]- Acceptance (or any conditional offer of) under the provisions of subsection 44(3)(a)

/ Regulation 4.15A(3)(a) should be discussed with your Team Leader