Amazon Technologies Inc v Pulbrook Family Consolidated Pte Ltd

[2022] ATMO 208

TRADE MARKS ACT 1995

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

Re:Opposition by Amazon Technologies Inc to registration of trade mark application number 2057243 (class 42) - BLINK - in the name of Pulbrook Family Consolidated Pte Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: King & Wood Mallesons

Applicant: Blinkit Pty Ltd

Decision:

2022 ATMO 208

Trade Marks Act 1995 (Cth) – opposition under section 52 – section 44 considered – section 44 established – registration refused

Background

1. This decision concerns an opposition brought by Amazon Technologies Inc (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below.

2. On 18 December 2019 Pulbrook Family Consolidated Pte Ltd (‘Applicant’) filed an application to register the following trade mark ('Trade Mark’):

   Trade Mark:  

   Application No: 2057243

   Filing Date:   18 December 2019 (‘Priority Date’)

   Goods & Services:           Class 42: User authentication services using technology for e-commerce transactions (‘Applicant’s Services’)

3. After examination under s 31 of the Trade Marks Act 1995 (Cth) (‘Act’),[1] the Trade Mark was accepted and advertised for opposition on 19 May 2020. The opponent filed a Notice of Intention to Oppose the registration of the Trade Mark on 20 July 2020 and a Statement of Grounds and Particulars (‘SGP’) on 20 August 2020. The Applicant filed a Notice of Intention to the Defend on 6 November 2020.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

4. The parties were afforded the usual opportunity to file evidence in accordance with Part 5 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’). The Opponent filed Evidence in Support (‘EIS’) on 25 October 2021. The Applicant filed no Evidence in Answer (‘EIA’).

5. The Opponent requested a hearing by written submissions and a nominal hearing date was set for 29 August 2022.

6. The Opponent filed its submissions on 15 August 2022. The matter was later allocated to me to decide as a delegate of the Registrar of Trade Marks.

Onus and grounds

1. The SGP nominated grounds of opposition under ss 42, 43, 44, 58 and 60. The onus is on the Opponent to demonstrate that, on the balance of probabilities, any of these grounds are established.[2] The Opponent need establish only a single ground for the opposition to succeed.

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

2. The rights of the parties are to be assessed as they were on the Priority Date.[3]

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

The Evidence

1. The Opponent has provided EIS being a declaration by Timothy Robin Craven, lawyer of King and Wood Mallesons, dated 25 October 2021. It incorporates an exhibit with various material, primarily concerning how the Opponent and its predecessors in title came to adopt and use a number of its trade marks. The exhibit also contains material concerning the similarity and close relationship of goods and services at issue in this proceeding.

2. The Opponent owns a number of the trade marks, the most relevant of which I consider to be trade mark application 1934145, which includes a claim for BLINK for ‘security and anti-theft software applications’ in class 42, with a convention priority date of 19 December 2017 (‘Opponent’s Mark’).[4] The Opponent also owns trade mark application 1937972 for AMAZON BLINK in classes 9, 11, 12, 35 and trade mark application 1903053 for AMAZON BLINK in classes 9, 35, 38, 41, 42 and 45.

   [4] The Opponent’s Mark also has an additional convention claim in respect of various other goods and services in classes 9, 11, 35 and 42 with a priority date of 18 August 2018. The Opponent also claims other goods and services in classes 9, 11, 12, 35, 38, 41, 42, and 45 in the Opponent’s Mark for 19 December 2017. However, to decide this matter I need only consider the Opponent’s claims in class 42 for ‘security and anti-theft software applications’, which is the subject of the convention claim of 19 December 2017.

Section 44

1. Section 44, as relevant to the issues, is extracted below:

   44  Identical etc. trade marks

   (1)  …

   (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.

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

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

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

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

   Note:          For limitations see section 6.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:       For predecessor in title see section 6.

   Note 3:       For priority date see section 12.

2. For this Opposition, the Opponent primarily relies upon the Opponent’s Mark (as described in paragraph 10 above).

3. To establish a ground of opposition under s 44, the Opponent must demonstrate that:

   • the Opponent's Mark has a priority date earlier than that of the Trade Mark;
   • the Opponent’s Mark is in the name of a person other than the Applicant;
   • the Trade Mark is substantially identical with, or deceptively similar to the Opponent’s Mark; and
   • the services of the Trade Mark are with similar to, or closely related to those of the Opponent’s Mark.

4. The Opponent’s Mark plainly satisfies two of the requirements above. It is in a name other than that of the Applicant and it has an earlier priority date than the Trade Mark.[5]

Comparison of the trade marks

[5] See ss 12 and 72.

1. The established test for whether trade marks are substantially identical requires that I compare them side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[6] The essential feature here is the word BLINK. The Opponent’s Mark consists of nothing else. The Trade Mark’s apparent omission of the diacritic tittle above the letter ‘i’, and a dot placed under the second leg of the letter ‘n’ is a relatively unimportant contribution to the overall impression conveyed in a side by side comparison of the two marks.[7] This movement of the dot does not disturb the emergence of a total impression of resemblance.[8] Both trade marks read essentially as BLINK, and this provides the dominant cognitive cue for each. The placement of the dot under the ‘n’ and the fancy script of the Trade Mark appear as mere stylization of the commonplace English word BLINK. With these differences noted, considering the essential features I am satisfied that the Trade Mark is substantially identical with the Opponent’s Mark.

Similarity of services

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

[7] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6, [130] (Nicholas, Yates and Beach JJ).

[8] Cf for example, Bose Corporation v Heino Buse MX Import GmbH [2014] ATMO 110, [37] or Jaguar Land Rover Limited v Joseph Vogele AG [2021] ATMO 96, [28] where diacritical markers, in combination with other factors did make significant contributions to the impression in the context of assessing the separate issue of deceptive similarity.

1. As mentioned earlier, the Opponent must also demonstrate that the Applicant’s Services are similar to the services, or closely related to the goods, of the Opponent’s Mark.

2. The Opponent has emphasised several areas of similarity between the respective claims to services and close relationships between some of its claimed goods and the Applicant’s Services. However, the Opponent need only demonstrate that one of its goods or services is similar or closely related to the Applicant’s Services to satisfy this aspect of s 44. In this case (for the reasons explained below) I have found that the Applicant’s Services are similar to at least some of those of the Opponent. Therefore, full consideration of every single claim for possible similarity or close relationship is unnecessary.

3. Here, the analysis should begin with s 14(2): 

   14  Definition of similar goods and similar services

   (1)…

   (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.

4. In considering whether services are of the same description as other services, I must consider the respective nature, use and trade channels.[9] I must consider the parties respective claims as they appear in the specifications and consider how each of the trade marks might properly be used within the bounds of the claims.[10]

   [9] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 243-4 (Burchett, Sackville and Lehane JJ) (‘MID’).

   [10] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362 (Mason J).

5. The Opponent submits that the Applicant’s sole claim for ‘user authentication services using technology for e-commerce transactions’ is similar to the Opponent’s claim in class 42 for ‘security and anti-theft software applications’.

6. The word ‘security’ may relevantly be defined as, ‘protection from or measures taken against espionage, theft, infiltration, sabotage, or the like’.[11] I therefore would construe the bounds of the Opponent’s claim for ‘security and anti-theft software applications’ as including software applications aimed at the protection of physical premises and property, as well as of data, personal information, digital matter and electronic transactions; the software itself being a measure for such protection. Notionally, authentication services for e-commerce transactions involves authenticating that a transaction has been authorised, its completion by authorised persons or in accordance with certain conditions; it is also clear from the claim of the Applicant that this is performed ‘using technology’ which will almost invariably mean via software, possibly, though not always, in combination with hardware. There is nothing in the language of the claim of the Opponent that would limit the subject matter that it has secured. Furthermore, there are no submissions or evidence before me that suggest otherwise.

   [11] Macquarie Dictionary (online at 24 November 2022) ‘security’.

7. The Applicant’s Services have a similar purpose to the security and anti-theft related services of the Opponent. Specifically, the purpose of ensuring data, information and personal items are safe and secure; and that they are protected from interference or unauthorised access or otherwise dealt with outside conditions set by an owner. The nature and characteristics of the claims are similar in that security software applications will often filter the authorised from the unauthorised; it will often authenticate that a person or event is authorised or unauthorised, in relation to physical or digital subject matter. In doing this, the services or applications will ‘secure’ the funds, data, physical of digital subject matter, or, in this case, electronic transactions.

8. I find that the Applicant’s Services are similar to at least one of those of the Opponent, in particular the claim for ‘security and anti-theft software applications’ in class 42.

Conclusion on section 44

1. I note that there are no submissions or evidence regarding ss 44(3) and (4) made by the Applicant. Since the Opponent has satisfied me of all of the elements of s 44(2), the ground of opposition under s 44 is established.

Decision and costs

1. The Opponent has established a ground of opposition. As such, I refuse to register the Applicant’s trade mark.

2. The Opponent asked that costs be awarded. The usual rule is for costs to follow the event. I award costs against the Applicant in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.

Benjamin Goldsworthy

Hearing Officer

Delegate of the Registrar of Trade Marks

30 November 2022