Advanced New Technologies Co Ltd v Flying Bitmaintech Tech Pte Ltd

[2022] ATMO 75

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Advanced New Technologies Co Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 1945782 (International Registration number 1416089) (6, 36, 42) – ANTMINER and device - in the name of Flying Bitmaintech Tech Pte. Ltd.

Delegate:	Louise Tuohy
Representation:	Opponent: Ashurst Australia Holder: not represented
Decision:	2022 ATMO 75 Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – trade marks deceptively similar – ground under section 44 established – no evidence filed – extension of protection refused

Background

1. Flying Bitmaintech Tech Pte. Ltd. (‘Holder’) has applied for the extension of protection in Australia of International Registration 1416089 (‘IRDA’) under the provisions of the Trade Marks Act 1995 (Cth) (‘Act’) and Trade Marks Regulations 1995 (Cth) (‘Regulations’). Relevant details of the IRDA are set out below:

   Trade Mark:   (‘Trade Mark’)

   Australian Trade Mark Number:       1945782

   Filing Date:  11 May 2018

   Priority Date:  11 April 2018[1]

   Specification:  Class 9: Computer hardware, namely cryptocurrency mining machines and their components; blank integrated circuit cards; computer peripheral devices for crypto currency mining machines; computers in the form of cryptocurrency mining machines; data processing equipment, namely couplers for cryptocurrency mining machines; electronic chips for manufacturing integrated circuits; integrated circuits; printed circuit boards; printed circuits; silicon chips

   Class 36: Financial affairs in the field of cryptocurrency mining

   Class 42: Industrial analysis and research services; design and development of computers and software in the field of cryptocurrency mining; software as a service (SaaS) for cryptocurrency mining; computer programming in the field of cryptocurrency mining; computer software design services in the field of cryptocurrency mining; software rental

   (‘Goods and Services’)

   [1] Priority claim from Switzerland trade mark application number 715705.

2. The IRDA was advertised as accepted for possible protection on 18 February 2020. Advanced New Technologies Co Ltd (‘Opponent’) filed a Notice of Intention to Oppose on 20 April 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 May 2020. The Holder filed a Notice of Intention to Defend on 3 August 2020.

3. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14 of the Regulations. The Opponent filed Evidence in Support on 5 November 2020. The Holder did not file Evidence in Answer.

4. The parties were given an opportunity to request a hearing. The Opponent requested to be heard by written submissions only. The Holder did not request a hearing or file written submissions. I have decided this matter based on the particulars outlined in the SGP, the evidence filed, and written submissions of the Holder.

   Evidence

   Evidence in Support

   ·Declaration of Lim Chiew Hwa, Senior Legal Counsel of Ant Group Co Ltd, the parent company of the Opponent, made on 5 November 2020 with Annexures LH-1 to LH-16 (‘Lim declaration’).

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 44 and 60 of the Act.

6. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7. The rights of the parties will be determined as at the priority date of the IRDA,[4] 11 April 2018 (‘Relevant Date’).

   [4]  Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Legislative Background and Reasoning

8. Section 44 of the Act provides:

   44  Identical etc. trade marks

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

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

   (ii)  a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   (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.

   […]

9. In the SGP the Opponent particularises the ground of opposition under s 44 as follows:

   (a) The Opponent is the owner of the ANT Trade Marks numbered 1 to 9 [in the table at Annexure A] which consist of or contain, the word ANT, Chinese language versions of "ANT" and/or visual depictions of an ant (Ant Devices), all of which have a priority date earlier than the Priority Date of the Opposed Mark.

   (b) The Opposed Mark is deceptively similar and/or substantially identical to the ANT Trade Marks numbered 1 to 9 [in the table at Annexure A].

   (c) The Opposed Mark covers goods and services which are the same as or similar to the goods and services covered by the ANT Trade Marks numbered 1 to 9 [in the table at Annexure A], including but not limited to the following:       

   (d) The goods and services covered by the Opponent's ANT Trade Marks numbered 1 to 9 [in the table at Annexure A] are not limited to a particular field, industry or application but include goods and services that are offered in the field of cryptocurrency mining. The Opponent's wording of the claims of the Opposed mark as being "in the field of cryptocurrency mining" or "namely cryptocurrency mining machines and their components" does not remove this overlap.

10. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Holder, and in respect of similar goods and/or services or goods and/or services which are closely related to the Goods and Services.

11. In the SGP the Opponent nominated nine trade marks which I have set out in Annexure A. The trade marks listed are all registered by a person other than the Holder and have a priority date earlier than the Relevant Date.

    Substantially identical

12. The test for substantial identity requires that trade marks be considered side by side having regard to the essential features of the trade marks.[5] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

    [5] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

13. For the purposes of comparison, I have reproduced the respective trade marks side by side:

Trade Mark

Opponent’s trade marks

1601088        ANT

1875108        ANT

1601096       

1658509       

1875116       

1658520      

1658521      

1661959       ANT FINANCIAL

1875114       ANT FINANCIAL

1. On a side by side comparison there are clear differences between the respective trade marks. The Trade Mark contains the words ANT and MINER and a stylised ant’s head device. In comparison the Opponent’s trade marks 1601088 and 1875108 are the word ANT solus, trade mark 1601096 contains Chinese characters, trade marks 1658509 and 1875116 contain Chinese characters and the words ANT FINANCIAL, trade mark 1658520 contains a stylised device of a full length ant, trade mark 1658521 is a colour series with each trade mark depicting a stylised ant from the waist upwards, and trade marks 1661959 and 1875114 contain the words ANT FINANCIAL. Whilst some of the Opponent’s trade marks share a common element with the Trade Mark, there are additional different elements that create clear visual differences between the respective trade marks. For these reasons, I find that none of the Opponent’s trade marks are substantially identical with the Trade Mark. The total impression emerging from a side by side comparison is not one of similarity.

   Deceptively similar

2. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hy-line Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.6F3F[6]

   [6] (1979) 96 RPC 410, 423 (citations omitted).

4. The state of the law regarding confusion was neatly summarised by the delegate of the Registrar of Trade Marks in Kicking Horse Coffee Co Ltd:

   In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’. Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’. Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source. 7F4F[7]

   [7] [2018] ATMO 193, [46] (Delegate Brown) (citations omitted).

5. When considering the concept of deceptive similarity ‘the marks are to be compared both visually and aurally’8F5F[8] and all the surrounding circumstances are relevant to the consideration:

   You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods.9F6F[9]

   [8] Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2010] FCA 1380, [111] (Yates J); see also Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823, [173] (Katzmann J).

   [9] Pianotist Co.’s Application (1906) 23 RPC 774, 777.

6. The approach to be adopted is not one of side by side comparison but rather one based on an allowance for imperfect recollection, as explained in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd, where Dixon and McTiernan JJ stated:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.10F7F[10]

   [10] (1937) 58 CLR 641, 658.

7. Turning to the assessment of deceptive similarity the SGP identified nine trade marks as underpinning this ground of opposition. For reasons that will become apparent, it is only necessary to consider trade marks 1601088 and 1875108.

8. The Opponent argues that the sole, most distinctive, and essential element of trade marks 1601088 and 1875108 is the word ANT. The word ANT in trade marks 1601088 and 1875108 is wholly encompassed in the Trade Mark and constitutes the first element. This creates significant visual, aural and conceptual similarities.

9. I agree with the Opponent, noting that what is important is the impression recalled by the average buyer of the Goods and Services. Consumers are far more likely to notice and remember the common element ANT because it is unusual and highly distinctive of the goods and Services. They are less likely to notice and remember the word MINER in the Trade Mark because this element is descriptive and common to traders engaged in digital currency. In addition, the ant head device in the Trade Mark reinforces the word ANT. Because consumers are more likely to recollect and focus on the common element ANT they are likely to be deceived or confused as to the trade source.

10. Having found that the Trade Mark is deceptively similar to trade marks 1601088 and 1875108, I must consider whether the Goods and Services are either the same or are of the same description and/or closely related the to the goods and services covered by trade marks 1601088 and 1875108 in classes 9, 36 and 42.

11. The test for determining whether goods or services are similar is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative.[11] The test for determining whether particular goods are closely related to services or vice versa, requires a different analysis. The relevant considerations and supporting authorities were recently reviewed and stated by Delegate Brown in Kicking Horse Coffee Co. Ltd:

    [11] Re Jellinek’s Application (1946) 63 RPC 59, 70.

    The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

    The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

    In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

    It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

    In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[12] 

    [12] [2018] ATMO 193, [19]-[21] (citations omitted).

12. In this matter I consider the Trade Mark’s claims for computer hardware, namely cryptocurrency mining machines and their components; blank integrated circuit cards; computer peripheral devices for crypto currency mining machines; computers in the form of cryptocurrency mining machines; data processing equipment, namely couplers for cryptocurrency mining machines; electronic chips for manufacturing integrated circuits; integrated circuits; printed circuit boards; printed circuits; silicon chips in class 9 are the same or of the same description as the broad and unqualified goods computer hardware; computer peripherals; computers; data processing equipment and encoded or magnetic bank credit, debit, cash and identification cards covered by trade mark 1875108 in class 9.

13. The Trade Mark’s claim for financial affairs in the field of cryptocurrency mining in class 36, is the same as the broad and unqualified service financial affairs in class 36 covered by trade mark 1875108.

14. With respect to the Services industrial analysis and research services in class 42 these are the same as the industrial analysis and research services in class 42 covered by trade mark 1601088.

15. The Services claimed in class 42 being design and development of computers and software in the field of cryptocurrency mining; software as a service (SaaS) for cryptocurrency mining; computer programming in the field of cryptocurrency mining; computer software design services in the field of cryptocurrency mining; software rental are the same or of the same description to the claims in trade mark 1601088 for design and development of computer hardware and rental of entertainment software the services and the services in trade mark 1875108 for the design and development of computer software; computer programming and hosting services.

16. I note that many of the Goods and Services claimed by the Trade Mark are qualified as being in relation to cryptocurrency in contrast to the goods and services covered by trade marks 1601088 and 1875108 which are broad and unqualified. However, the broad and unqualified manner in which the Opponent’s goods and services have been cast means that the qualifications to the Trade Mark’s Goods and Services clearly fall within the scope of the Opponent’s specifications. As such I am satisfied that all of the Goods and Services are either the same or of the same description as the Opponent’s goods and services.

17. I am also satisfied that the Trade Mark should not be registered under the provisions of ss 44(4) or 44(3). The Holder has not provided any evidence of prior and continuous use, honest concurrent use or other circumstances should the ground under s 44 apply, accordingly the ground for opposition under s 44 is established.

18. Given that the s 44 ground is established it is also not necessary for me to consider the other grounds of opposition.

    Decision

19. Regulation 17A.34N(1) of the Regulationsprovides the following:

    17A.34N Decision on opposition

    (1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

     (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

1. I find that the Opponent has met the onus upon it, in terms of the ground of opposition under s 44. Therefore, I refuse to extend protection in respect of all the Goods and Services listed in the IRDA. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

   Costs

2. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Holder in terms of Schedule 8 of the Regulations.

   Louise Tuohy
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   13 May 2022

   Annexure A