Allan Geoffrey McNeil v Fabric8 Technology Pty Ltd

[2017] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Allan Geoffrey McNeil to registration of trade mark application 1725997 (35) - FABRIC8 – filed in the name of Fabric8 Technology Pty Ltd.

-and-

Opposition by Allan Geoffrey McNeil to a removal application filed by Fabric8 Technology Pty Ltd seeking removal of trade mark registration 992368 (9) FABRIC8 owned by Allan Geoffrey McNeil

Delegate:	Iain Campbell Thompson
Representation:	Applicant:  Michelle Calder of IP Wealth Opponent:  Dr Allison Stanfield of SG Legal Services
Decision:	2017 ATMO 66 Trade Marks Act 1995 Section 92 opposition to removal - use of Trade Mark in Australia by Opponent on services during Relevant Period - opposition to removal established – Trade Mark to remain on Register. Section 52 opposition to registration; s58 - ownership of Opposed Trade Mark; section 44 – consideration of ‘similar services’; section 60 – extent of reputation of Trade Mark; opposition not established. Costs awarded against Applicant

Background

1. In these matters arising under sections 52, 92 and 96 of the Trade Marks Act 1995 (‘the Act’) Allan Geoffrey McNeil (‘the Opponent’) is the owner of the trade mark which appears below:

Registration No:           992368
Priority Date:               10 March 2004
Goods:  Class 9: Internet based computer software for job scheduling
  (‘the Registered Specification’)
Trade Mark:                FABRIC8

(‘the Trade Mark’)

1. On 28 September 2015, Fabric8 Technology Pty Ltd (‘the Applicant’) filed an application under paragraph 92(4)(b) of the Act for the removal of the Trade Mark from the Register of Trade Marks for all of the goods for which it is registered. The relevant period for the purposes of paragraph 92(4)(b) is thus the three year period ending on 28 August 2015 (‘the Relevant Period’).

2. On 6 October 2015 the Applicant filed an application to register the trade mark which appears below:

Application No:           1725997
Priority Date:               6 October 2015

Services:Class 35: Business management; business administration; business project management and administration; business planning, business management planning, and business strategic planning; development of processes for the analysis and the implementation of strategy plans and management projects; business development services, including providing start-up support for businesses of others; business support services, namely, business consulting to freelancers, start-ups, existing businesses and non-profit organisations; business consultancy relating to the administration of information technology; technology transfer services (business services); business assistance, information, consultancy, auditing, counselling, planning, inquiries, research, investigations, and surveys; business data compilation and analysis; business development services; business efficiency studies and expert services; efficiency or process auditing (examining, reviewing or assessing the working of a business or organisation); business feasibility studies; business examination and evaluation services; business risk management and assessment services; providing business support staff services; staff utilisation planning; placement of staff; value-added reseller services, namely, distributorship services featuring computer security and information technology products; outsourcing services (business assistance); outsourcing services in the nature of arranging service contracts for others in the field of information technology; outsourcing and business management of facilities, resources and staff; intermediary business services relating to the commercialisation of goods; interactive record-keeping services for use in risk management and regulatory compliance; compilation of statistics; writing of business reports and business project reports and studies; data and computer data processing and management; data cleansing services (correcting or removing inaccurate or incomplete data from databases); data scrubbing services (data management services); updating and maintenance of data in computer databases; systemisation of data in computer databases; procurement of contracts (for others); procurement consultation, namely, analysis and redefinition of purchasing processes within the framework of expenditure rationalisation projects; negotiation and conclusion of commercial transactions for third parties; negotiation of contracts (for others); organisational services for business purposes; search engine optimisation; website traffic optimisation; marketing, advertising and promotional services; arranging and conducting exhibitions for advertising, trade, business and commercial purposes; office functions; providing information, advisory and consultancy services in relation to the aforesaid services; provision of all the aforesaid services including by electronic means, online, via a website, the Internet or other computer networks, by wireless technology, accessible by mobile phone and other Internet-enabled devices, and/or via a global computer network[1]

(‘the Pending Specification’)

Trade Mark:                FABRIC8

(‘the Opposed Trade Mark’)

[1] Subsequent to the hearing of these matters this specification was amended by the Applicant so as to delete the bolded qualifying phrase at the end of the Pending Specification.

1. The Opponent has opposed both the registration of the above trade mark and the removal of the Trade Mark.

2. Both matters have followed the usual course: the Opponent filing Notices of Intention to Oppose and Statements of Grounds and Particulars, and the Applicant filing Notices of Intention to Defend.

3. Subsequently, the Opponent filed Evidence in Support of his oppositions as I will further discuss below; the Applicant has filed no evidence in relation to either of these proceedings.

4. The matters were heard together before me, a delegate of the Registrar of Trade Marks at a hearing in Canberra on 20 June 2017.  Dr Allison Stanfield of SG Legal Services represented the Opponent; Ms Michelle Calder of IP Wealth represented the Applicant.

Onus and Relevant Date – section 52

1. The Opponent bears the onus of establishing one or more grounds of opposition (which are under sections 44, 58 and 60 of the Act) on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the priority date of the opposed application[3] which is generally, but not always, the same as the filing date (‘the Relevant Date’).

Burden, etc – paragraph 92(4)(b)

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

1. Paragraph 100(1)(c) of the Act provides that the opponent bears the burden of rebutting the allegation made against it under paragraph 92(4)(b), which it may do by, inter alia, establishing that the Trade Mark, (or, per paragraph 100(3)(a) of the Act, the Trade Mark with additions or alterations not substantially affecting its identity), was used in good faith during the Relevant Period. I proceed on the basis that the relevant standard of proof is that the Registrar be satisfied whether or not the evidence establishes the opposition to removal on the balance of probabilities.

2. The use of the Trade Mark by the Opponent (or under its control per s 8 of the Act) must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co[4].  A single bona fide use of the Trade Mark during the non-use period is sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds[5].  However, Wilberforce J, in Nodoz Trade Mark[6], said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof”.

   [4] [1982] FSR 72.

   [5] [2001] FCA 261; (2001) 51 IPR 149 at [17].

   [6] (1962) RPC 1 at 7.

Evidence

1. The evidence in both matters is comprised of a single declaration by the Opponent which asserts use of the Trade Mark by the Opponent since 2003.  The Opponent explains that he has been a building contractor since 1985 and has, since 2003, maintained a website The Opponent states:

   In 2003 (or earlier), I developed an internet-based job management and communications system which I released under the name 'FABRIC8'. The FABRIC8 system was provided through hosted, non-downloadable software accessible on the BUILD3D Website (FABRIC8 Software), namely, software as a service. The FABRIC8 Software:

   (a) centralises scheduling and communication;

   (b) facilitates uploading, storing and sharing documents (for example, building plans, engineers’ reports, energy efficiency reports, etc.);

   (c) allows users to delegate tasks and track their progress;

   (d) diarises follow-up dates and deadlines;

   (e) enables users to electronically invite competing contractors to provide quotations, including sharing uploaded documents and diarising follow-up dates;

   (f) uses automated processes to advise all affected parties of any delays, complete extension of time requests and reschedule tasks; and

   (g) securely protects data by allowing users to assign varying levels of access to different users.

2. This software was further developed by the Opponent.  As the Opponent states:

   Although the FABRIC8 Software was initially tailored for use by builders, I recognised the flexibility of the FABRIC8 Software to be used outside the building industry. Several years ago, programming was undertaken to make the software suitable for any business employing numerous workers, especially businesses working from multiple sites, employing contractors and/or procuring numerous material supplies. The changes were designed to allow any business to use the FABRIC8 Software:

   (a) to schedule jobs and tasks, such as construction jobs, quotations, materials procurement requests, specialist reports management, facilities management, asset management, procurement management, staff scheduling, quality assurance, essential services, risk management, compliance requirements, business strategy scheduling, special events scheduling, etc.

   (b) to record notes for each job or task;

   (c) to upload and share documents related to various jobs and tasks;

   (d) to facilitate communication, including up to six automated emails per job or task, such as notifications of a job being activated, advising other parties of a task, call forwarding notices, advising project managers of incomplete tasks, sending requests for documents and advising when documents have been uploaded, applications for extensions of time, notifications regarding contract management, etc.;

   (e) to provide co-ordinated reporting mechanisms, such as job summary reports indicating all current jobs, their start and finish dates compared to contract dates, Gantt charts for critical stage and task reporting, plus task lists for individual use or for distribution to affected persons to ensure full communication of task scheduling;

   (f) providing access to information and documentation specific to particular jobs and tasks necessary to inform the allocated persons of all scheduling and applicable requirements, such as plans, procedures, specifications, reports, etc.;

   (g) providing access to business rules, policies and procedures to all authorised persons, including staff suppliers and contractors;

   (h) providing management with a proactive system of the management of a business.

3. Although the Opponent’s assertions are generally stated and do not specify the dates on which the above occurred I note that the materials appended to the Opponent’s declarations generally support his claims.  In particular, I note:

   ·    The Trade Mark has appeared on the Opponent’s website since 2003;

   ·    Evidence of a presentation by the Opponent, featuring services under the Trade Mark to Wauchope Chamber Networking Meeting on 1 April 2015;

   ·    A Task Summary Calendar dated May 2015;

   ·    An invitation to exhibit at the Manufacturing and Engineering Expo in Port Macquarie in September 2015 (and evidence of Opponent’s attendance); and,

   ·    An invitation to exhibit at the Master Builders Association Trade Expo in Port Macquarie on 16 September 2015 (and evidence of attendance).

4. After reviewing this material, and the Opponent’s declarations, I consider that it is probable that the Opponent developed a ‘software as a service’ computer program under the Trade Mark for builders in around 2003 and has, since then, spent some time elaborating and developing the program following his realisation that the program has potential application in relation to any project which has some complexity and requires detailed planning, scheduling, ordering, and reporting.  I will accordingly, regard the Opponent’s services as being ‘the provision of project management software as a service’.

5. I will mention that it is apparent that the Trade Mark is wrongly registered in Class 9 of the International (Nice) Classification of Goods and Services (‘Nice’) because ‘software as a service’ is correctly classified in Class 42.  However, the relevant consideration here is the Registered Specification, rather than the Class of goods in which it appears: see Nikken Wellness Pty Ltd v van Voorst[7] (‘Nikken’) where Wilcox J stated:

   Counsel also argue it does not matter that the wrong class is claimed. They quote the statement in Kerly's Law of Trade Marks and Trade Names (12th ed) at para 5-05:

   ‘Classification is primarily a matter of convenience in administration ... What is of real importance in determining the rights of the parties, as has been pointed out, is the specification of goods or services entered on the Register and the validity of the registration.'

   The submissions made by counsel for Nikken Wellness must be accepted. The Register is an official record open to inspection by members of the public: see s 209 of the Act. The Register is prima facie evidence of any particular matter entered in it: see s 210. A certified extract from the Register is admissible in legal proceedings: see s 211(2). Parliament must have intended the Register to speak for itself. People who peruse the Register, or an extract from it, must be able to act on the basis of what it says, without being obliged to make inquiries about the business history or previous conduct of the registered owner of the trade mark.

   [7] [2003] FCA 816; [2003] AIPC 91-904 at [43].

Paragraph 92(4)(b)

1. Section 92 of the Act relevantly provides:

   92Application for removal of trade mark from Register etc.

   (1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.

   (2)The application:

   (a)must be in accordance with the regulations; and

   (b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

   (3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

   Note:For prescribed court see section 190.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   […]

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

2. It is not apparent from the evidence that the Opponent had, during the Relevant Period, provided services under the Trade Mark in the sense that the evidence establishes that a person other than the Opponent has paid for the use of the ‘software as a service’ facility that the Opponent has developed.  The question, therefore, is whether any of the activities of the Opponent listed at paragraphs [12] to [14], above, in relation to the Trade Mark may (individually or collectively) be regarded as constituting use of it.

3. In Dick Smith Investments Pty Ltd v Ramsey[8], Katzmann J reviewed the criteria involved in the assessment of whether a trade mark has been used in the course of trade and stated:

   I note that in Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416 at [36] Spender J concluded from Deane J’s remarks, that if it was possible to identify “an actual trade or offer to trade in the goods ... bearing the mark, or an existing intention to offer or supply goods ... bearing the mark in trade, that is sufficient”. In other words, as his Honour put it later in his reasons (at [38]), the passage in Moorgate I cited above (at [143]) “clearly envisages” that either of two alternatives will suffice to establish use: on the one hand “preparatory steps coupled with an actual trade or offer to trade”, on the other, “preparatory steps coupled with an existing intention to offer or supply goods in trade”. He cited Buying Systems as an instance of the latter.

   I would add that in Lomas v Winton Shire Council [2002] FCAFC 413 at [39] a Full Court of this Court (Cooper, Kiefel and Emmett JJ) accepted that it was unnecessary that there be an actual dealing in goods bearing a trade mark before there can be said to be trade mark use, adding, citing Moorgate, that it “may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade ...”.

   [8] [2016] FCA 939 at [147].

4. Here the Opponent had, before the end of the Relevant Period, developed his software and actively promoted it – the first of his presentations featuring the Trade Mark which is mentioned in the evidence being to Wauchope Chamber Networking Meeting on 1 April 2015 which is during the Relevant Period.

5. I am satisfied on the above basis that the Opponent’s declarations establish that he has used the Trade Mark during, and after, the Relevant Period. Further, I consider that the appearance of the Trade Mark on the Opponent’s website (which has apparently resulted in at least two trade enquiries), being coupled with the Opponent’s obvious intention to use the Trade Mark, is alone sufficient to qualify as being a use of the Trade Mark in respect of services effectively covered by the Registered Specification in the course of trade within Australia. Whilst the Applicant has observed that one of these enquiries was from New Zealand, as I stated at the hearing this would qualify as use of the Trade Mark in export trade in terms of section 228 of the Act which provides:

   228Use of trade mark for export trade

   (1)If:

   (a)a trade mark is applied in Australia:

   (i)to, or in relation to goods that are to be exported from Australia (export goods); or

   (ii)in relation to services that are to be exported from Australia (export services); or

   (b)any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;

   the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.

   Note:For applied to or in relation to goods and applied in relation to services see section 9.

   (2)Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:

   (a)a decision of a court made before that day; or

   (b)the determination of an appeal from such a decision.

1. Whilst the enquiry was not within the Relevant Period, it casts light on the relevance of the Opponent’s use of the Trade Mark on the website within the Relevant Period.

2. I thus consider that the Opponent has used the Trade Mark on ‘project management software as a service’ within the Relevant Period and that the service is covered by the Registered Specification.

3. Accordingly, the Opponent has established his opposition to the application under section 92 of the Act.

Opposition to 1725997 (35) FABRIC8

Section 44

1. In the absence of evidence addressing the provisions of subsections 44(3) or (4) filed by the Applicant, section 44 of the Act relevantly provides:

   44Identical 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.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. As the Trade Marks are identical and the Opponent relies on a registration with an earlier priority date than that of the Opposed Trade Mark, it remains to be decided whether services within the Pending Specification are closely related/similar to those within the Registered Specification.

3. Subsection 14(2) defines the expression ‘similar services’:

14Definition of […] similar services

[…]

(2)For the purposes of this Act, services are similar to other services:

(a)if they are the same as the other services; or

(b)if they are of the same description as that of the other services.

1. The expression ‘services of the same description’ was discussed in Mid Sydney Pty Ltd v Australian Tourism Co Ltd[9] by Burchett, Sackville and Lehane JJ:

   That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) ("TM Act 1955"), although the expression "services of the same description as [services in respect of which the trade mark is registered]" was used in the earlier legislation: see TM Act 1955 , ss 33(2), 36(1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

   "There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek's Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...'. "

   Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

   "In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... ‘in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase ‘goods of the same description' ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

   We accept that these principles, subject to any necessary modification, apply in relation to services.

   [9] [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051.

2. In my consideration the administrative services of the type contained within the Opposed Specification, as it is following the amendment discussed in footnote 1, are fundamentally different from the software as a service within the Registered Specification.  The former services are performed by people and the latter is rendered offsite by a computer program on a remote server.

3. The Opponent has not, accordingly, established his opposition under section 44 of the Act.

Section 58

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The Applicant is not the owner of the applied-for mark.

   PARTICULARS

   The [Opposed Trade Mark] is identical or substantially identical to the […] Trade Mark, in particular.

   The Opponent has been trading under the […] Trade Mark since before:

   (a) the Applicant first used the [Opposed Trade Mark] in Australia in relation to the Claimed Services; and

   (b) the Application was filed.

   The prior use of the […] Trade Mark […] by the Opponent was in relation to the Claimed Services, the Conflicting Goods and Services and similar goods and services or closely related goods and services[10]. Therefore, the Opponent is the owner of the Opposed Trade Mark at common law.

   [10] I note that, in terms of my discussion of the issues that the relevant consideration is whether the services are ‘the same kind of thing’ rather than whether the services are ‘closely related’.

2. Ownership of a trade mark may arise in two ways: firstly, by use as a trade mark; secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[11] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’[12].

   [11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

   [12] Re Hicks’ Trade Mark (1897) 22 VLR 636.

3. I have found that the Opponent used the FABRIC8 trade mark in relation to ‘the provision of project management software as a service’ in Australia and that the use was prior to the filing of the Opposed Trade Mark.  For the sake of completeness, I also observe that the trade marks under consideration are identical.

4. It accordingly remains for me to decide whether whether the Pending Specification contains services which are the ‘same kind of thing’ as the services in relation to which the Opponent has used the FABRIC8 trade mark.

5. The expression ‘the same kind of thing’ was discussed (albeit in relation to goods) in Colorado Group Ltd v Strandbags Group Pty Ltd[13] by Kenny, Gyles & Allsop JJ:

   The case most usually cited in this respect is In re Hicks’s Trade Mark 22 VLR 636. That case concerned a clear earlier user of the identical mark ("Empress") on identical goods (stoves) and was under a statute (the Trade Marks Act 1890 (Vic)) in which the word "proprietor" was defined as meaning "the person entitled to the trade mark by reason of his exclusive user of it." It was in this context that Holroyd J said the following, speaking for the Full Court:

   ...In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word "proprietor" must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word "Empress" in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then [he] ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed...

   [emphasis added]

   In Carnival Cruises v Sitmar Cruises 120 ALR at 514, Gummow J referred to there being no differences of "character or quality" of the services in that case to gainsay that they were the " same kind of thing ".

   There is a certain difficulty in fixing upon the proper frame of reference for the enquiry identified by the words used by Holroyd J, "same kind of thing". Assistance is gained from the statutory context in which the question arises (see above), the common law notion of the right to registration from use, when that was the defining requirement: see Edwards v Dennis (1885) 30 Ch D 454 and Jackson & Co v Napper (1886) 35 Ch D 160 and the notion of the ownership of a common law trade mark: see the cases referred to by the primary judge at [25] of his first judgment (set out at [66] above). The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.

   That backpacks are a type or style of bag does not answer the question as to whether they should be viewed as essentially the same goods as any bag or receptacle. The backpack is a bag with straps to be worn on the back. It is not essentially the same or the same kind of thing as other bags, handbags, purses or wallets. The task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods.

   [13] [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246

6. At the hearing of this matter, I queried the Applicant’s attorney about the qualifying expression which then occurred at the end of the Pending Specification, ‘provision of all the aforesaid services including by electronic means, online, via a website, the Internet or other computer networks, by wireless technology, accessible by mobile phone and other Internet-enabled devices, and/or via a global computer network’ (‘the Qualifying Expression’).  I expressed my view that this might be read as qualifying all of the preceding services within the Pending Specification as being also delivered electronically by means of a computer: in effect that (leaving technical difficulties to one side) the Pending Specification can be read as potentially including the delivery of all of the services therein via software as a service.  My understanding of the attorney’s response is that she regarded the Pending Specification as being correctly classified in Class 35, that it should be read as being qualified by the fact that it occurs in Class 35 and that it was accepted as such by the examiner.  While this might be true, the Pending Specification should, of course, be read in the light of the principle in Nikken, that I have referred to above: whether technically feasible or not, the Qualifying Expression expressly stated that the services were deliverable via a global computer network.

7. Be that as it may, the Applicant has now deleted the Qualifying Expression from the Pending Specification.  In doing so, the Applicant has addressed concerns that the Pending Specification includes various services deliverable as ‘software as a service’ which are the same kind of thing as those of the Opponent.

8. As the Pending Specification no longer contains services which are ‘the same kind of thing’, the Opponent’s software as a service, the Opponent has not established his opposition under section 58 of the Act.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. The Opponent must first establish that the Trade Mark has a reputation and, secondly, that because of the reputation the use of the Opposed Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick[14] (‘McCormick’) Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

   [14] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

4. An important factor for deciding an opposition under the provisions of section 60 is the consideration of what should be regarded as a ‘significant section of the public’. In Le Cordon Bleu BV v Cordon Bleu International Ltee[15] (albeit in relation to paragraph 28(a) of the Trade Marks Act 1955) Heerey J observed:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question.  For highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets.  The relevant market is virtually the entire Australian population from early teenage years onwards.

   [15] (2000) 50 IPR 1; [2000] FCA 1587

5. Here I take it that the reputation to be established would be amongst those people likely to purchase the Opponents software services: builders and project managers.  The Opponent has not provided any information about the size of this market in Australia.

6. Concerning the assessment of reputation, Kenny J went on in McCormick[16] to state:

   In 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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   It is true, as Mary McCormick's counsel points out, that the evidence does not establish what proportion of sales was made under or by reference to any particular mark. It is also true, as he points out, that, apart from the evidence as to sales and advertising expenditure, there is little or no evidence about the effect of advertising upon consumers. There were no consumer surveys in evidence, nor was there evidence about the marketing of McCormick & Co's products. There was also no evidence to connect whatever international reputation McCormick & Co might have with the reputation of the McCormick & Co marks in Australia.

   [16] Ibid at [86].

7. There is very little evidence before the Registrar from which a reliable estimate of the extent of the reputation of the Trade Mark can be arrived at.  It is not apparent from the evidence that anyone has actually availed themselves of the Opponent’s services and the public exposure of the Trade Mark before the Relevant Date is not evidenced as being extensive – if anything, the contrary is suggested by the evidence.  It necessarily follows that if the evidence does establish any reputation for the Trade Mark, that reputation is very slight.

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[17] the Registrar’s delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [17] [2012] ATMO 124 at [40]

2. Here the reputation of the Trade Mark is, to judge from the evidence, very weak and the nexus between the services of the parties is not particularly strong.  I am not persuaded on this basis that the use of the Opposed Trade Mark would be likely to confuse or deceive because of the reputation of the Trade Mark in Australia.

3. The Opponent has not established his opposition under section 60 of the Act.

Decisions and Disposition

992368 (9) FABRIC8

1. Subsection 101(1) of the Act provides:

   101Determination of opposed application—general

   (1)Subject to subsection (3) and to section 102, if:

   (a)the proceedings relating to an opposed application have not been discontinued or dismissed; and

   (b)the Registrar is satisfied that the grounds on which the application was made have been established;

   the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

2. The Opponent has established his opposition to the removal of the Trade Mark from the Register.  I therefore decide not to remove registration 992368 (9) FABRIC8 from the Register of Trade Marks.

3. I further suggest to the Opponent that he apply to have the Register corrected under the provisions of section 81 of the Act to correctly reflect that the services within the Registered Specification occur in Class 42 of Nice.

1725997 (42) FABRIC8

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has not established his opposition to the registration of 1725997 (35) FABRIC8.

3. Application 1725997 (35) FABRIC8 may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the Court’s order or direction

Costs

1. Both parties sought their costs in relation to these matters. The Opponent has established his opposition to the section 92 application relating to 992368 (9) FABRIC8. The Opponent has also been successful in having the Applicant restrict the Pending Specification of 1725997 (35) FABRIC8 by the Applicant deleting the Qualifying Expression from the Pending Specification. As the Opponent has been successful, he is entitled to his costs which I award against the Applicant at the official scale at Schedule 8 to the Trade Marks Regulations 1995 while noting that because these matters were heard together only representation at the one hearing may be claimed.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
11 July 2017