Australian Curriculum, Assessment and Reporting Authority v Ogawie Pty Ltd

[2013] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Curriculum, Assessment and Reporting Authority to registration of trade mark application 1310510(9, 42) - NAPLAN ONLINE and DEVICE - filed in the name of Ogawie Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Sophie Goddard SC and with her Shauna Ross of counsel, instructed by Australian Government Solicitor

Applicant: No appearance or submissions

Decision:

2013 ATMO 14

Section 52 opposition: sections 42(b), 43, 44, 60, 62 and 62A pressed – s 60 ground of opposition established - no requirement to consider other grounds.

Background

1. Ogawie Pty Ltd (‘the Applicant’) filed application number 1310510 on 20 July 2009 in classes 9 and 42 of the International Classification of Goods and Services. Details of the application are as follows:

Trade mark:        

Trade mark application:

1310510

Filing Date:

20 July 2009

Specification:

Class: 9 Application software; computer programmes (programs) and recorded software distributed online; computer programs (downloadable software); computer software; computer software (programs); computer software (recorded); computer software downloaded from the Internet; computer software for analysing market information; computer software for business purposes; computer software for processing market information; computer software for the analysis of defects; computer software for time control; computer software packages; computer software products; computer software programs; computer software programs for database management; computer software programs for spreadsheet management; data processing software; data processing software for graphic representations; education software; integrated software packages; interactive computer software; packaged software; personal computer application software

Class: 42 Advisory services relating to computer software; computer software consultancy; computer software design; computer software development; computer software engineering; computer software programming services; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); consultancy in the field of computer software; design and development of computer software (for others); design of computer software; development of computer software; development of computer software application solutions; development of software; diagnosis of faults in computer software; hosting of software as a service (SaaS); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation and maintenance of computer software; installation of computer software; installation of middleware (software); installation, repair and maintenance of middleware (software); maintenance of computer software; online provision of web-based software; providing information, including online, about design and development of computer hardware and software; rental of computer software; rental of games software; repair of computer software; software creation; software engineering; updating of computer software; upgrading of computer software; writing of computer software

1. The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 19 November 2009.

2. The Australian Curriculum, Assessment and Reporting Authority. (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 19 February 2010. Thereafter the Opponent served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The Applicant did not serve or file any evidence.

3. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 28 November 2012. Ms Sophie Goddard of Senior Counsel, and with her Shauna Ross of counsel, instructed by the Australian Government Solicitor, represented the opponent. The applicant did not attend the hearing or provide written submissions.

Grounds of Opposition

1. The Notice nominated 13 grounds of opposition available under the Trade Marks Act 1995 (“the Act”). At the hearing, Ms Goddard advised me that the following seven grounds were pressed by the Opponent:

• Contrary to law (Section 42(b))
• Connotation (Section 43)
• Prior substantially identical or deceptively similar trade mark (Section 44)
• Applicant not the owner of the opposed trade mark (Section 58)
• Applicant not intending to use the opposed trade mark (Section 59)
• Reputation (Section 60)
• Bad faith (Section 62A)

1. To succeed in its opposition the Opponent bears the onus of establishing at least one of these seven grounds. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considered relevant in proceedings before the Court. I note that each of the remaining grounds pressed had considerable merit and that they were well argued by counsel.

2. None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Evidence

1. The evidence in this matter consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Peter David Adams (Adams 1)	Acting General Manager Australian Curriculum, Assessment and Reporting Authority	21.02.11	PDA-1 to PDA-68
Heather Francis Woods	Senior Manager Strategic Advice, Education Services Australia	17.05.11	HFW-1 to HFW-4
Peter Michael Garrigan	Senior Project Officer, Northern Territory Council of Government School Organisations	17.05.11
Peter David Adams (Adams 2)	As above	18.05.11	PDA-1 to PDA-3
Hayley Louise Dibley	Classroom teacher at Northern Beaches Secondary College, Balgowlah Boys Campus	18.05.11
Helen Margaret Walton	President of Federation of Parents and Citizens’ Associations of NSW	18.05.11
Dianne Christine Giblin	Chief Executive Officer of the Australian Council of State School Organisations	19.05.11	DCG-1

1. As previously notes, the Applicant did not file or serve any evidence in these proceedings.

2. In Adams 1, at Annexures PDA-3 and PDA-4, it is established that the Opponent is the owner of the following trade mark:

Trade mark:        

NAPLAN

Trade mark registration:

1256426

Priority Date:

12 August 2008

Specification:

Class: 16 Educational materials (other than apparatus) for use in teaching; educational materials in printed form; printed matter for educational purposes; printed tests

Class: 41 Design of educational courses, examinations and qualifications; dissemination of educational material; educational assessment services; educational examination; educational services; management of educational events; provision of educational examinations; publication of educational materials; publication of educational texts

Class: 42 Development of testing methods

1. NAPLAN is an acronym for the ‘National Assessment Program – Literacy and Numeracy’. However, this program is most commonly referred to as NAPLAN by teachers, the media, students, government and the public (see Woods, paragraph 37).

2. NAPLAN is a national educational initiative that includes specially developed testing materials and related education goods and services, including student reports and website material (see Adams 1, paragraph 14).

3. The NAPLAN tests assess standards of reading, writing, language conventions and numeracy for all Australian students in years 3, 5, 7 and 9 (see Adams 1, paragraph 20).

4. The Opponent (or its predecessor in title, Curriculum Corporation) has used and authorised use of the NAPLAN trade mark with respect to the Opponent’s goods and services arguably since November 2007, but at least since early 2008 (see Adams 1, paragraph 21).

5. The Opponent (or its predecessor in title) has authorised, and continues to authorise, third parties to 0ffer the Opponent’s goods and services pursuant to the Opponent’s trade mark, including for a fee. The third parties include the education departments (or equivalent) of the Australian states and territories and independent schools. (Adams 1, paragraphs 27 to 39).

6. Part of the Opponent’s goods and services include NAPLAN Tests, which have been administered in Australia and by reference to the NAPLAN trade mark since May 2008 when approximately 1,037,923 students sat those tests. (Adams 1, paragraphs 22 and 55, Annexes PDA-7 and PDA-23).

7. The results of the 2008 NAPLAN tests were published in a Summary Report and a National Report in September 2008 and December 2008 respectively, both under and by reference to the NAPLAN trade mark (Adams 1, paragraph 55 Annex PDA-23).

8. In each of 2009 and 2010, in excess of one million students sat the NAPLAN tests in Australia (Adams 1, paragraph 57).

9. The Opponent provided (Adams 1, Annexes PDA-62 and 63) details of the Applicant’s website (which is connected to the domain names naplanonline.com, naplanonline.net, naplanonline.net.au and naplanonline.org) as at July 2009 to June 2010, which stated the Applicant’s goods/services were:

   NAPLAN Online community – an online resource which aims to assist all Australian students and teachers to achieve excellent learning outcomes whilst preparing for the NAPLAN … tests … NAPLAN Online provides students with the ability to take NAPLAN tests online … Teachers and other education professionals are able to track its progress … Parents are supported by NAPLAN Online too by being able to easily gain snapshots of their child’s capabilities …

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. 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.

1. To satisfy section 60 the Opponent must establish:

• That the NAPLAN trade mark had, before the priority date of the Applicant’s trade mark, acquired a reputation in Australia in respect of particular goods/services; and

• Because of the reputation of the Opponent’s trade mark(s), the use of the Applicant’s trade mark would be likely to deceive or cause confusion.

1. It is now for me to determine if the opponent has acquired a reputation in Australia for its NAPLAN trade marks. This is more than merely indicating prior use; the opponent’s trade mark needs to be “associated in the minds of the Australian public”[2].

   [2] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

2. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Justice Kenny continues:

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: …

1. The Opponent has provided a great deal of evidence establishing the reputation of its NAPLAN trade marks in Australia. As well as declarations from relevant senior participants in the provision of education service in Australia, there were many newspaper articles and media releases that demonstrate that members of the public have been made aware of the NAPLAN trade mark and would associate the name NAPLAN with the Opponent or the relevant State and Territory education and training departments that administer the Opponent’s NAPLAN tests.

2. Further, I am satisfied that the NAPLAN trade mark has, as at the priority date, acquired a strong and valuable reputation in Australia in relation to its goods and services. The trade mark would be particularly well known to students and their parents and teachers, along with persons dealing with the education and training of children.

3. While the classes of goods and services applied for do not specify the education sector, the evidence discussed at paragraph 20, above, indicates the likely target market for the Applicant’s goods and services.

4. The Opponent has submitted that where a parent, teacher or student is exposed to the Opponent’s goods and services at school or work and conducts an internet search for the Opponent’s goods and services, such a search is likely to yield the Applicant’s website (as was shown in evidence) and suggest a connection to the Opponent’s goods and services.

5. I am satisfied that the Applicant’s trade mark is likely to cause instances of deception or confusion to occur in the minds of a significant section of the relevant Australian public who, on seeing the NAPLAN Online trade mark of the Applicant would be led erroneously to presume that there exists some connection, association or relationship with that mark and the Opponent when such is not the situation.

Decision

1. Section 55(1) of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1310510.

Costs

1. In the event that the Opponent’s prevailed, Ms Goddard sought an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

26 February 2013