ASUSTEK COMPUTER INCORPORATION

[2019] ATMO 146

TRADE MARKS ACT 1995

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

ReTrade Mark application number 1890038 (9) – ROG STRIX– in the name of ASUSTEK COMPUTER INCORPORATION

Delegate:

Nicholas Smith

Representation:

Applicant: Brian Elkington of Adams Pluck

Decision:

2019 ATMO 146

Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to ground for rejection under section 44 of the Act – trade mark to be accepted for possible registration

Background

1.  On 29 November 2017, AUSTEK COMPUTER INCORPORATION (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:

1890038

Priority Date:

27 November 2017

Goods:

Class 9: Motherboards; Mouse (computer peripheral); Mouse pads; Computer keyboards; Graphics cards; Monitors (computer hardware); LCDs (liquid crystal displays); Display screens; Network routers; Computers; Desktop computers; Notebook computers; Computer hardware; Computer peripheral devices; Computer software, recorded; Computer programs (downloadable software); Computer programmes (programs), recorded; Computer operating programs, recorded; Earphones; Headphones; Headsets; Sound cards; Microphones

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)[1]

[1] The Trade Mark is technically a mark sought to be registered in a ‘fancy’ font however given the font appears to be entirely plain, for the purposes of comparison between the marks decision the Trade Mark will be treated as a word mark.

2. The Trade Mark was duly examined under s 31 of the Act and a ground for rejection was identified by the examiner under s 44 of the Act. The examiner identified the prior trade mark set out below (the ‘StrixOS Mark’) as closely resembling the Trade Mark and as being registered for goods of the same description.  The StrixOS mark is registered to TRIP Holdings Pty Ltd.

Number	Trade Mark	Priority Date	Goods and Services
1761262	StrixOS	29 Mar 2016	Class 9: Computer software; near real-time operating systems; soft real-time operating systems; computer operating systems programs; operating systems programs; computer software for image processing; computer software for video processing; computer software for digital signal processing; computer software for RADAR processing; computer software for LIDAR processing; computer software for spectroscopy data processing; computer software for biometric data processing; computer software for positional data processing; computer software for telecommunications data processing and/or networking; application software; computer software for hand-held devices; computer software for portable devices; computer software for embedded devices; computer software for wearable computing; downloadable electronic publications including electronic instructional manuals, training manuals, product information sheets, brochures and advertisements Class 16: Printed matter; publications; printed matter including user manuals, instruction manuals, marketing materials, newsletters, magazines; training, instructional, educational and promotional materials all in printed form (all being printed matter), stationery Class 42: Advisory services relating to computer hardware; computer support services (computer hardware, software and peripherals advisory and information services); information technology services (computer hardware, software and peripherals advisory and information services); computer services for observation, monitoring, security, surveillance, measurement and/or recording of images, sounds and data; computer hardware and software consulting services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems; computer services, namely, installation, maintenance and technical support services for computer software; computer services, namely technical support services for computer hardware

3.  The Applicant subsequently provided submissions in response to the examiner (‘Applicant’s Submissions’) supported by a statutory declaration of Tsung-Tang Shih, Chairman of the Applicant, with Annexures A-L, made on 22 April 2019 (‘Shih Declaration’) which gave evidence as to the use of the Trade Mark by the Applicant. The examiner was not convinced by the Applicant’s Submissions and issued a second adverse examination report, maintaining a ground for rejection pursuant to s 44 of the Act (‘Second Report’). In the Second Report the examiner noted the similarity between the Trade Mark and the StrixOS Mark and commented that the evidence of use of the Trade Mark contained in the Shih Declaration did not pre-date the priority date of the StrixOS Mark, being 29 March 2016 and in any case was not in the Australian market.

4. On 2 July 2019, the Applicant requested to be heard by the Registrar of Trade Marks under s 33 of the Act. As a delegate of the Registrar of Trade Marks I heard this matter on 4 September 2019. Brian Elkington, representing the Applicant, made oral submissions after having earlier provided me with an outline of written submissions in accordance with the pre-hearing directions I had given.

5.  I mention that the purpose here is not a review of the examiner’s decision but rather a fresh consideration of the ground for rejection.  I have relied on the material identified above in the file as well as the oral submissions made on 4 September 2019.

6. On 5 September 2019 the Applicant sought to provide further evidence in this matter, being a further declaration of Tsung-Tang Shih as to the lack of confusion between the respective marks. Given my finding under s 44(1) of the Act meant that I did not need to consider the issue of honest concurrent use, it was not necessary to consider this additional material.

Legislative framework

7. Under s 33(1)(b) of the Act, the Registrar must accept the application for registration of a trade mark unless satisfied there exists a ground under the Act for rejecting it. The Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise an application will be presumed registrable.[2] Regarding the present application, the only ground for rejection identified is under s 44 of the Act.

[2] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [16].

8. The relevant provisions of s 44 of the Act are:

Section 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)it 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

(2)…

(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.

Section 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.

1. In order for s 44 of the Act to apply the requirements of s 44(1) must be satisfied i.e. that the StrixOS Mark, being the mark identified by the examiner:

   ·     is registered by another person and has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the StrixOS Mark.

   11.       The StrixOS Mark has a priority date that is earlier than the priority date of the Trade Mark and is registered to a different entity.  It is registered for goods including ‘computer software’, which is similar to the Applicant’s Goods such as ‘Computer software, recorded; Computer programs (downloadable software); Computer programmes (programs), recorded; Computer operating programs, recorded’.  The first and third requirements are satisfied. 

   Substantially identical or deceptively similar

   12.       I will now consider whether the Trade Mark is substantially identical to the StrixOS Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[3]

   [3] (1963) 109 CLR 407, [12].

   13.     The Trade Mark and the StrixOS Mark are set out below:

   StrixOS

   14.     While I consider the stylization of the Trade Mark to be de minimus, on a side by side comparison there is a clear difference between the respective trade marks, being the addition of ‘ROG’ to the Trade Mark and ‘OS’ to the StrixOS Mark.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and StrixOS Mark are deceptively similar.

   15.       The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] Ibid [13].

   16.       Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[5] at [49]; Australian Woollen Mills[6] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[7] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[8] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[9]

   [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [6] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [9] [2012] FCA 1022, [38]-[46].

   17.       Each of the marks shares the word ‘strix’ but differ by the presence of the first word ‘ROG’ (for the Trade Mark) and the suffix ‘OS’ (in the StrixOS Mark).  I note that in the context of the Goods and Services for which the StrixOS Mark is registered, the capitalised letters ‘OS’ may be read as an abbreviation for ‘operating system’ and as such may be partially discounted when considering the conceptual similarity between the respective marks  (although it remains relevant when considering the visual and aural differences between the mark).  I note that there is no evidence before me of ‘strix’ having any descriptive meaning (strix being a word in ancient mythology referring to a particular, owl-like bird) so I will treat that word as distinctive.  Equally, to the extent that ‘rog’ has any meaning it may operate as a reference to ‘Republic of Gamers’, a group started by the Applicant.

   18.       When comparing the marks as a whole, even noting the shared element ‘strix’ there are significant differences in the marks that mean that confusion is unlikely.  The Trade Mark consists of two words, one of which is the distinctive and coined word/acronym ‘ROG’, while the StrixOS mark is one word, which includes the suffix ‘OS’.  The marks are aurally and visually distinct since the Trade Mark contains the distinctive first word/syllable ‘ROG’ and the addition of the ‘OS’ suffix results in the StrixOS mark having a very different final syllable(s).  The respective marks are also conceptually different.  The StrixOS mark can either be seen as the made up word ‘strixos’ or as ‘strix operating system’.  The Trade Mark either means ‘Republic of Gamers Strix’ or would be regarded as two coined words being ‘rog’ and ‘strix’, neither of which has a clear meaning. 

   19. While the element ‘Strix’ is a significant feature in both marks, care must be taken in characterising it as an ‘essential feature’ such that any mark incorporating ‘strix’ may cause a tangible danger of deception or confusion with the StrixOS Mark. In the present case the Trade Mark consists of two equally important and distinctive words. The element Strix is more important in the StrixOS Mark, given that the ‘OS’ could be somewhat discounted as descriptive but it remains important to consider the overall impression of each mark as a whole. I consider that, on balance, I am satisfied that the visual, aural and conceptual distinctions between the marks are sufficient that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the StrixOS Mark. As such, I do not need to consider any evidence of honest concurrent or prior use, and I find that the ground for rejection under s 44 of the Act has not been established.

   Decision

   20. Section 33 of the Act relevantly provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   (2)The Registrar may accept the application subject to conditions or limitations.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   21. As I am not satisfied that there is a ground for rejection under s 44 of the Act, I accept the application to register the Trade Mark.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   9 October 2019