Au Domain Administration Ltd v Network.com.au Pty Ltd - [2004] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by .au Domain Administration Ltd to registration of trade mark application 898376(35, 42) - and device- filed in the name of Network.com.au Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Robert Gregory, solicitor, of Maddocks Lawyers

Applicant: no appearance

Decision:

1. Section 52 opposition. Grounds of opposition under sections 42, 43, 58 and 59 - sections 42 and 43 grounds established -registration refused

2. Costs awarded against applicant

Background

Network.com.au Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	898376
Priority date:	17 December 2001
Goods:	Class 35: Online marketing, Internet advertising and marketing sales; Internet shopping via network marketing Class 42: Consulting services in relation to website design, optimisation and implementation, Internet strategies and technology advice; website design, optimisation and implementation
Trade Mark:
Advertised:	18 July 2002

On 18 October 2002, .au Domain Administration Ltd (“the opponent”) filed notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice was later amended to include a further ground of opposition. The notice, as amended, specified four grounds of opposition, pursuant to sections s42, 43, 58 and 59 of the Act.

Evidence

The evidence comprises the following declarations:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
Christopher Leonard Disspain	CEO of Opponent Disspain’s First declaration	11.12.2002	CD-1 to CD-4
Evidence in Answer
Phillip John Wright	Director & secretary of Applicant Wright declaration	25.06.2003	PJW-1 to PJW-10
Evidence in Reply
Christopher Leonard Disspain	CEO of Opponent Disspain’s Second declaration	7.01.2004

Ground 1: section 58 - Applicant not owner of the trade mark

The opponent submitted that the essential element of the trade mark is the sign " (“Domain Name”) which is commonly and immediately recognisable by most if not all of the Australian public as an internet domain name.
The opponent stated that in Disspain's First Declaration, the applicant is shown not to be the registered licensee of this domain name.
It was further submitted that the right to use a domain name is granted by way of a licence which lasts, in respect of .com.au domain names, for not more than 2 years and at the end of which the registrant must remain qualified to hold the licence in order to renew registration for a further period.
Accordingly, the opponent contended that as the applicant is not the registrant of the Domain Name, which comprises the essential element of the trade mark, it is not the owner of the trade mark at all.
Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods or services: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.
The opponent has not satisfied the test for this ground of opposition. Accordingly I dismiss this ground of opposition.

Ground 2: section 59 - Applicant does not intend to use or authorise the use of the trade mark in Australia

The opponent submitted that as the applicant is not the registrant of the Domain Name, use by the applicant of the trade mark or authorising the use of the trade mark by another person will have the inevitable effect of directing internet traffic to an internet website not owned by the applicant (or its authorised user). Accordingly, submitted the opponent, use of the trade mark by the applicant will not distinguish goods or services dealt with by it in the course of trade, but rather have the opposite effect.
The opponent further submitted that, whilst it is not the registrant of the Domain Name, the applicant is commercially most unlikely to use the mark if it does not have the effect of directing persons seeing the mark to an internet website operated by it.
The opponent contended that as this ground of objection was raised by the opponent in its notice of objection and the evidentiary basis for it specified in Disspain's First Declaration, the opponent has established a prima facie case, which the applicant has the onus to disprove: Philip Morris Products SA v Sean Ngu [2002] ATMO 96.
The applicant’s filing of its application was an original claim to the requisite intention. In the Wright declaration Exhibit PJW-5 is correspondence from the applicant to the opponent clearly using the device as its letterhead and as a trade mark. The opponent would be aware of much of such use of the mark in the correspondence between the parties and this office.
I am satisfied that the applicant intended, indeed intends, to use the trade mark. I dismiss this ground of opposition.

Ground 3: section 42 - Use of the trade mark would be contrary to law

Following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, the Registrar is obliged, when assessing whether use would be contrary to law under s.42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995. Here, the opponent alleges that use of the trade mark would contravene ss.52 and 53 of the Trade Practices Act 1975 (TPA) on the basis that use of the trade mark by the applicant in connection with the services in respect of which its registration is sought as a trade mark would constitute representations that the applicant is the registrant of the Domain Name, the internet website operated under that domain name is the applicant's or its operation is authorised by the applicant.
In the Advantage Rent-A-Car case, Madgwick J confirmed that the test to be satisfied was that use would, rather than could, be contrary to law. Therefore, I am to determine, on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark on clothing would cause, or be likely to cause consumers to be misled or deceived. The relevant standard to be applied is that there must be a "real or not remote chance or possibility" of a reasonably significant number of people being misled or deceived: see for instance Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431
The opponent submitted that in fact, as stated in paragraph 14 of Dispain's First Declaration the registrant of the Domain Name is another company, Comaxes Corporation Pty Ltd. It was stated that there is no legal or commercial relationship between the applicant and Comaxes Corporation Pty Ltd, and this is clear from the dispute between them referred to in paragraph 3(g)(xv) of Wright's Declaration and the correspondence exhibited at "PJW-8".
I am satisfied that use of the trade mark by the applicant as a trade mark would constitute conduct in trade or commerce, which is misleading or deceptive or likely to mislead or deceive, in breach of section 52 of the TPA, or a representation that the applicant has an approval or affiliation by Comaxes Corporation Pty Ltd (or any subsequent registrant of the mark) that it does not have.
Therefore use of the mark would be contrary to law and its registration must be rejected under section 44 of the Act.

Ground 4: section 43 - Use of the trade mark is likely to deceive or cause confusion

The opponent submitted that the applicant’s trade mark contains a sign, being the Domain Name. The opponent further submitted that the sign has a connotation that the Domain Name is a domain name and that the applicant is the registrant of the Domain Name or that the applicant operates the internet website at the Domain Name, which is not the case.
In Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5, Deputy Registrar Hardie observed that the operation of section 43 does not depend upon the existence of a conflicting trade mark. In relation to the phrase "likely to deceive or cause confusion" in section 43 Deputy Registrar Hardie quoted French J in Registrar of Trade Marks v Woolworths [1999] FCA 100 (Full Federal Court) with whom Tamberlin J agreed:
"The use of the word 'likely' in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a 'real tangible danger of its occurring' – Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-595 per Kitto J."
In Twentieth Century Fox Deputy Registrar Hardie found that the use of the trade mark bravehart the musical by the applicant for its registration:
"dominated as it is by the name bravehart, will connote the celebrated bravehart film [the producer of which was the opponent] and therefore give rise to expectations that the theatre musical production and the T-shirts and caps are associated with the maker of the bravehart film."
In this case, I am satisfied that the use of the trade mark by the applicant in respect of the services in which it is sought to be registered, will connote that the applicant is the registrant of the Domain Name or the operator of an internet website under the Domain Name, which would be likely to deceive or, at the very least, be likely to cause confusion.
Accordingly, I find that this ground of opposition has been established.

Decision and Costs

The opponent has established grounds of opposition on which it relied so that the opposition as a whole has been successful. Pursuant to section 55, I refuse to register Application No. 898376 >
The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

29 June 2004