Automatepro Limited
[2023] ATMO 212
•15 December 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia numbers 2323895 (International Registration number 1703598) – AUTOMATEPRO – and 2324026 (International Registration number 1703907) – AUTOMATEPRO (Figurative) – (classes 9, 41 and 42) both in the name of Automatepro Limited
Delegate:
Sheona Robertson
Representation:
Holder: Kate Duckworth of Kate Duckworth Intellectual Property Limited
Decision:
2023 ATMO 212
Trade Marks Regulations 1995 (Cth) – Regulation 17A.24 – consideration of sections 41 and 44 of the Trade Marks Act 1995 (Cth) – ground(s) for rejecting the IRDAs exist – IRDA 2323895 rejected, IRDA 2324026 rejected in respect of all goods and some services
Background
1. This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) involving applications for extension of protection to Australia of the following International Registrations Designating Australia (together, ‘Trade Marks’):
International Registration Designating Australia (‘IRDA’) No.
2323895
2324026
International Registration (‘IR’) No.
1703598
1703907
Trade Mark:
AUTOMATEPRO
(‘Word Trade Mark’)
(‘Figurative Trade Mark’)
Filing Date:
21 September 2022
21 September 2022
Priority Date:
6 September 2022
21 September 2022
Holder:
Automatepro Limited (‘Holder’)
Goods and Services:
(together, ‘Holder’s Goods and Services’)
Class 9: Computer software; downloadable electronic publications; computer databases; computer programs, computer software development tools; downloadable computer software implementation tools; parts and fittings for all the aforesaid goods included in this Class.
Class 41: The provision of training, provision of information in the field of training; training courses; instructional and teaching services; arranging and organising of seminars, courses, conferences, exhibitions, demonstrations, lectures, educational and instructional events; publication of electronic instructional material, electronic books or journals online or via a global computer network; training and practical demonstrations; tuition, arranging and conducting of workshops; providing sound, video or media recordings online or via a global computer network; educational information services provided online from a computer database or the internet; digital media provided online from a computer database or the internet; providing certification training; all the aforesaid provided via online databases in connection with all the aforesaid services;[1] advice, information and consultancy services relating to all the aforesaid services.
Class 42: The development and updating of software; design and development of computer software; providing temporary use of on-line non-downloadable software for database management; hosting of websites; creating websites; design and development of websites; providing temporary use of non-downloadable computer programs; providing temporary use of non-downloadable computer software; providing temporary use of non-downloadable computer software development tools for others; computer software maintenance; infrastructure services featuring computer software platforms for creating, managing and deploying cloud computing infrastructure services; platform-as- a-service (PaaS) services; software as a service (SaaS) services; application service provider (ASP) services; cloud-hosting provider services; information technology integration services; providing information in the field of information technology via a website; computer aided scientific research services provided from computer systems and the internet; designing, developing, configuring, customizing, testing, assessing, implementing and maintaining computer software and systems for others; advice, information and consultancy services in relation to all the aforesaid services.
[1] Emphasis added; the italicised phrase is only claimed in respect of IRDA 2323895 (IR:1703598).
2. The applications for the Trade Marks were examined and Notifications of Provisional Refusals were issued in respect of all of the Holder’s Goods and Services, raising grounds for rejection under the provisions of s 44 of the Trade Marks Act 1995 (Cth) (‘Act’). The Notification of Provisional Refusal in respect of the Word Trade Mark raised an additional ground of rejection under the provisions of s 41(4) of the Act. This ground of rejection was not raised in respect of the Figurative Trade Mark.
3. The Holder filed submissions in response to the grounds for rejection but the examiner was not persuaded. Following receipt of further Notifications of Provisional Refusals dated 6 June 2023 and 7 June 2023 respectively, the Holder requested to be heard.
4. These matters were allocated to me as a delegate of the Registrar of Trade Marks and were heard by video conference on 17 October 2023. Kate Duckworth of Kate Duckworth Intellectual Property Limited presented submissions on the Holder’s behalf.
Prior to the hearing, on 10 October 2023, the Holder filed written submissions (‘Submissions’) together with an affidavit of Paul Howard Chorley (‘Mr Chorley’), Chief Executive Officer of the Holder, sworn on 2 October 2023 (‘Affidavit’).
I note that the applications for the Trade Marks are subject to a presumption of registrability. Pursuant to reg 17A.24, I must accept the applications for the Trade Marks unless satisfied, on the balance of probabilities, that there are grounds under the Act for rejecting them. I must consider the grounds for rejection under ss 41 and 44 of the Act afresh. While I may consider the reasoning of the examiner in these matters, I am not bound by the examiner’s findings.
The Affidavit
7. It is declared in the Affidavit that the brand name ‘AUTOMATEPRO’ was selected as it is easy to say and remember and has vague references to the nature of the Holder’s business, and that it has been used by the Holder since 2 September 2020.
8. The Affidavit sets out the use that the Holder has made of the Trade Marks. The Trade Marks are featured prominently on the Holder’s website, (‘Holder’s Website’), which has been in operation since around November 2017.
9. It is declared that the Holder currently provides the Holder’s Goods and Services in six countries, namely the United Kingdom, the United States of America, Canada, Singapore, Switzerland and Belgium. It is Mr Chorley’s belief that the Trade Marks have strong customer recognition in these markets. The Holder has registered the Trade Marks in the United Kingdom, the European Union and New Zealand.
10. As at the date of the Affidavit, the Holder had made only one sale in Australia, being a product licence in October 2019 for the ‘AutoTestPro’ product. However, it is declared that the Holder’s Website regularly receives hits from Australian IP addresses and the Holder has received enquiries from Australian businesses. No documentary evidence has been provided in support of this statement. It is also declared that the Holder hopes to provide more products and services in the Australian market under the Trade Marks.
11. Mr Chorley is not aware of any confusion or deception with other brands.
Discussion
12. The grounds for rejecting IRDAs are set out in reg 17A.28 which relevantly provides:
17A.28 Grounds for rejecting IRDA
(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).
(2)Sections 39 to 44 apply in relation to an IRDA as if:
(a) a reference in those sections:
(i) to an application for the registration of a trade mark were a reference to the IRDA; and
(ii) to an applicant were a reference to the holder of the IRDA; and
(b) the reference in paragraph 41(3)(b) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and…
13. As regards the ground for rejection under s 41 of the Act, the examiner considers the Word Trade Mark has a limited inherent capacity to distinguish the Holder’s Goods and Services from those of other traders because ‘AUTOMATE is defined by the Macquarie Dictionary as ‘to apply the principles of automation to (a mechanical process); to operate or control by automation’ and PRO simply stands for ‘professional’’. It is the examiner’s view that the Word Trade Mark merely indicates that the Holder’s Goods and Services are used to automate processes in a professional manner.
14. With regard to the s 44 ground for rejection, the examiner cited the following prior trade marks (collectively, ‘Cited Marks’) in respect of both the Word Trade Mark and the Figurative Trade Mark:
Trade Mark No.
1415744
1633679
1857460
Trade Mark:
Automate
(‘Cited Mark 1’)
(‘Cited Mark 2’)
AUTOMATE
(‘Cited Mark 3’)
Priority date:
23 March 2011
10 July 2014
7 July 2017
Owner:
Accounts Payable Systems Pty Ltd
AUTOMATE TRAINING PTY. LTD.
Rollease Acmeda, Inc.
Goods/Services:
Class 9: Business software, workflow software; computer software for business purposes; computer software for workflow solutions and document management; application software for workflow solutions and document management; computer software programs for database management for workflow solutions and document management; document management systems and workflow solutions being computer hardware and software for workflow solutions and document management
Class 35: Business process management services to facilitate, manage, streamline and automate everyday business processes
Class 9: Training guides in electronic format
Class 41: Technical training; Training
Class 7: Motors for shades and blinds, and components and parts therefor; electric motors for use with windows (other than land vehicle windows); motors for use in the automatic operation of window shutters
Class 9: Monitoring and control software and apparatus for communication between remote control devices and blind or shade motors
Section 41 ground for rejection
15. Section 41 of the Act relevantly provides:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
The capacity of the Word Trade Mark to distinguish the Holder’s Goods and Services must be assessed at 21 September 2022, being the date of the IR[2] (‘Relevant Date’). However, evidence of use after this date may be relevant to the extent that such evidence can illustrate factors in place at the Relevant Date.[3]
The inherent adaptation of a trade mark to distinguish is to be tested having regard to two considerations:
(i)the ‘ordinary signification’ or ordinary meaning of the words contained in the trade mark;[4]
(ii)the likelihood that other traders, in the ordinary course of their business and without improper motive,[5] would desire to use the words for the sake of their ordinary signification.[6]
If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood as having a directly descriptive meaning in relation to the relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word.[7]
[2] Regulations regs 17A.2, 17A.28.
[3] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [32] (Finn J).
[4] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [70] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’), with regard to the principles stated in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, 513-515 (Kitto J) (‘Clark Equipment’); Mark Foy'sLtd v Davies Coop & Co Ltd (1956) 95 CLR 190, 194-195 (Dixon CJ); F H Faulding & Co Ltd v Imperial Chemical Industries Ltd (1965) 112 CLR 537, 554-556 (Kitto J) (‘Faulding’); Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, 424-425 (Gibbs J).
[5] Faulding (n 4) 555.
[6] Clark Equipment (n 4) 514; Cantarella (n 4) [71].
[7] Cantarella (n 4) [71].
The Word Trade Mark consists of the combined term “AUTOMATEPRO” in plain text. I consider, and the Holder does not dispute, that an ordinary consumer is likely to read, comprehend and pronounce the Word Trade Mark as a combination of two words, being “AUTOMATE” and “PRO”.
Ordinary signification
20. The Holder submits that the words “AUTOMATE” and “PRO” may be known words individually, but they are not a known or usual combination of words nor a natural way of referring to the Holder’s Goods and Services. It is true that the term “AUTOMATEPRO” does not have a dictionary definition. However, this does not mean that “AUTOMATEPRO” does not carry a sufficiently precise meaning in respect of the Holder’s Goods and Services for an ordinary signification to be established.
21. The word “AUTOMATE” is a common English word that is well understood to mean the development and implementation of processes that reduce the need for human input in repetitive or routine tasks, primarily through the use of machinery such as computers. In my view, the ordinary consumer would associate the word “AUTOMATE” with a function of the Holder’s Goods and Services, namely, that they create or utilise processes that improve the ease or efficiency with which goods or services are provided. The goods or services that may be impacted by automation are broad in scope, and I consider the entirety of the Holder’s Goods and Services would fall within this category.
22. The Holder submits that since “AUTOMATE” is a verb it requires additional words, such as the preposition “to”, in order to discern, in a grammatical sense, the meaning ascribed by the examiner. I am not persuaded by this submission. It is common practice for traders to adopt terms in their trade marks that are clearly intended to operate as verbs, without the inclusion of the preposition “to” or a similar qualifying word. While technically such trade marks are grammatically anomalous, they are nevertheless readily capable of conveying a clear meaning to consumers.
23. “PRO” is a commonly used word or abbreviation in Australian English. It is accepted as an abbreviation for the word “professional”, or as a word meaning ‘being in favour of something’.[8] It is the Holder’s submission that the word “professional” is used to describe someone who is adept in a particular field or who has a certain career, and as such, the word is to be applied to persons, as opposed to goods or services. I do not find this submission compelling. I consider the word “professional” is not limited to an individual person but can refer to the manner in which goods or services are presented or provided. In my view, the ordinary consumer would find the word “professional” applicable to all manner of goods and services.
[8] Caterpillar Inc v Puma SE [2021] FCA 1014, [39] (O’Bryan J) (‘Caterpillar’).
24. It is the Holder’s position that the connection between the Word Trade Mark and the Holder’s Goods and Services is nebulous. For the reasons discussed above in relation to the words “AUTOMATE” and “PRO”, I find that these words, both separately and in combination, are sufficiently connected to the Holder’s Goods and Services.
25. For the above reasons, when the word “AUTOMATE” is used in combination with the word “PRO”, it carries a ‘familiar or identifiable meaning to ordinary Australian consumers’,[9] namely, that of automating processes in a professional manner. The term “AUTOMATEPRO” may not convey the full picture of the Holder’s Goods and Services but it does describe aspects of those goods and services.
[9] Ibid [102].
26. The next question is whether other traders might legitimately need to use the Word Trade Mark to indicate that their own software or services involve the automation of particular processes in a professional manner.
Other traders
27. The Holder submits that the process of ascribing a meaning to the Word Trade Mark is akin to ‘mental gymnastics’[10] that goes beyond the process that a consumer would likely undertake, and as such it is not a mark that is likely to be needed by other traders.
[10] Submissions, [31].
28. The Word Trade Mark describes aspects of the Holder’s Goods and Services, namely their function and quality. Given the ordinary signification of the Word Trade Mark and its descriptive meaning, I am satisfied that other traders are likely to wish to use the mark, or some mark nearly resembling it,[11] in relation to their own goods or services.
[11] Registrar of Trade Marks v W. and G du Cros Ltd [1913] 30 RPC 660, 672 (Lord Parker).
29. Having considered the presumption of registrability, the ordinary signification of the Word Trade Mark and the legitimate desire of other traders to use the Word Trade Mark or some mark nearly resembling it in connection with their own goods or services, I am satisfied that the Word Trade Mark is to some extent, but not sufficiently inherently adapted to distinguish the Holder’s Goods and Services.
30. In view of this, I must now consider whether the Word Trade Mark should be rejected having regard to the matters set out in s 41(4)(b) of the Act, namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Word Trade Mark and any other circumstances.
Evidence of use, intended use and other circumstances
31. The Holder submits that the Affidavit establishes that the Word Trade Mark does and will distinguish the Holder’s Goods and Services, having regard to the Holder’s use of the Trade Marks overseas, the Holder’s intended use of the Trade Marks in Australia, and other circumstances.
32. The Holder allegedly commenced use of the Word Trade Mark in September 2020, being two years before the Relevant Date. The Affidavit does not contain any sales or revenue data, or any information regarding marketing efforts or promotional expenditure relating to either of the Trade Marks.
33. I consider the screenshots of the Holder’s Website demonstrate use of both the Word Trade Mark and the Figurative Trade Mark. However, no metrics have been provided to quantify the exposure of the Holder’s Website in Australia, or overseas jurisdictions. In any event, the screenshots are insufficient, on their own, to establish that the Word Trade Mark does or will distinguish the Holder’s Goods and Services.
34. The Affidavit references overseas registrations for the Trade Marks, though details of these registrations have not been provided. Although evidence of trade mark registrations in foreign jurisdictions are not entirely irrelevant, assessments of Australian trade mark applications are made in accordance with Australian legislation, which may differ substantially in substance and application from foreign jurisdictions. As such, the existence of overseas registrations for the Trade Marks has limited relevance in this matter.
35. The Affidavit contains a statement to the effect that the Holder plans to provide the Holder’s Goods and Services in Australia under the Trade Marks. No detail regarding plans or preparatory activities undertaken to advance this intention has been provided. As such, the information contained in the Affidavit is of little assistance in demonstrating an intention to use the Word Trade Mark in Australia.
36. When I weigh the evidence before me together with the extent that the Word Trade Mark is inherently adapted to distinguish, the combined effect is not sufficient to satisfy me that the Word Trade Mark does or will distinguish the Holder’s Goods and Services.
37. Accordingly, I am satisfied that there is a ground for rejection under s 41 of the Act in respect of the Word Trade Mark.
Section 44 ground for rejection
38. Section 44 of the Act relevantly provides:
(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) the applicant’s trade mark 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…
(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…
39. The Trade Marks must be rejected if, subject to subsections (3) and (4), the Cited Marks:
(i)are in the name of a person other than the Holder;
(ii)have a priority date which is earlier than the priority dates of the Trade Marks;
(iii)are substantially identical with, or deceptively similar to, the Trade Marks; and
(iv)are in respect of goods or services which are similar, or closely related, to the Holder’s Goods and Services.
40. The details of the Trade Marks and the Cited Marks are set out at paragraph [1] and [14] of this decision. From that information, it is evident that each of the Cited Marks is registered in the name of persons other than the Holder and has a priority date which is earlier than the priority dates of the Trade Marks. Requirements (i) and (ii) are satisfied.
Substantially identical
41. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[12]
[12] [1963] HCA 66, [12] (Windeyer J).
42. It is apparent from a side-by-side comparison of the Trade Marks and the Cited Marks that they are visually and aurally different. While each of the marks share the word “AUTOMATE”, the Trade Marks contain the additional term “PRO” which is absent from the Cited Marks. The Figurative Trade Mark carries the further distinguishing feature of a stylised infinity symbol device. Having regard to these differences I am not satisfied that a total impression of resemblance emerges from a comparison between the Trade Marks and the Cited Marks.
Deceptively similar
43. Section 10 of the Act defines “deceptively similar” as:
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.
44. In Shell, Windeyer J provided the following insights on deceptive similarity:
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].[13]
[13] Ibid [13].
45. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J made the following comments regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[14]
[14] [1954] HCA 82, [4] (citations omitted).
46. What must be considered is the overall impression that a person of ordinary intelligence and memory would likely have of the Trade Marks and of the Cited Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection. Having regard to these factors, I consider the Trade Marks to be deceptively similar to the Cited Marks for the following reasons.
47. The Holder submits that the word “AUTOMATE”, being a word which carries a low level of distinctiveness, is not a word in which a single trader holds a monopoly. According to the Holder, this is reflected in the overcrowding of the Trade Marks Register (‘Register’) with trade marks that contain or consist of the word “AUTOMATE” (though notably, the Holder has not provided excerpts from the Register in support of this assertion). As such, the Holder submits that there is no added risk of confusion with the coexistence of the Trade Marks and the Cited Marks.
48. In my view, the Trade Marks are aurally, conceptually and visually similar to the Cited Marks. Notwithstanding the device element of the Figurative Trade Mark and the stylisation of Cited Mark 2, the word “AUTOMATE” comprises the essential element, or one of the essential elements, of the Cited Marks and each of the Trade Marks. Given “AUTOMATE” is the first word in each of the Trade Marks, it is, ‘as a rule, far the most important for the purpose of distinction’.[15] The Trade Marks and the Cited Marks convey similar concepts, namely that the respective goods or services assist with automation or are provided by way of automated processes. The addition of the word “PRO” in the Trade Marks extends this concept; it does not convey an entirely separate concept so as to differentiate the Trade Marks from the Cited Marks.
[15] Re London Lubricants(1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).
49. Having regard to imperfect recollection, the Trade Marks would be recalled primarily by the word “AUTOMATE”. Consumers are likely to view the word “PRO” in the Trade Marks as a qualifying term, of a descriptive character, to indicate a feature or quality of the Holder’s Goods and Services. It is conceivable that consumers would be confused as to whether the Holder’s Goods or Services provided under the Trade Marks are ‘a “professional” or high performance or otherwise special line’[16] of the goods or services of the owners of the Cited Marks.
[16] Caterpillar (n 8) [111].
50. Regarding the state of the Register, as already stated above, the Holder has not drawn my attention to specific trade marks in support of its assertion that there is significant coexistence of trade marks containing the word “AUTOMATE”. I note also that Cited Marks 1 and 3, being for the word “AUTOMATE” solus without stylisation, were accepted for registration on the basis of evidence of use or other circumstances. In any event, each case turns on its own facts. In the present circumstances there is little insight that can be gleaned from the existence of other trade marks on the Register containing or consisting of the word “AUTOMATE”.
51. In relation to Cited Mark 2, the Holder notes that the mark is stylised so as to emphasise separate components of the word “AUTOMATE”, being the words “AUTO” and “MATE”. It is submitted that a consumer would infer that the goods and services of the owner of Cited Mark 2 relate to a sort of “mate” for their “auto”, creating a different overall impression and meaning when compared to each of the Trade Marks.
52. I am not persuaded by this submission. The different emphasis applied to the letters “AUTO” and “MATE” in Cited Mark 2 does not alter the aural pronunciation of the mark. While it may be the case that the letters “AUTO” are differentiated in Cited Mark 2 so as to convey that the trade mark owner’s goods and services relate in some way to automobiles, the ordinary consumer is likely to view the close association of the letters “AUTO” and “MATE” as significant and interpret the mark as the known word “automate”. The stylisation of Cited Mark 2 is minimal and does not offer a significant degree of differentiation from the Trade Marks.
53. Considering the above, there is a real and tangible danger that, allowing for imperfect recollection, a significant number of consumers may perceive the Holder’s Goods and Services provided under the Trade Marks are a variant of, or are in some way related to, the goods or services provided under the Cited Marks.
54. I am satisfied that each of the Cited Marks is deceptively similar to the Trade Marks.
Comparison of goods and services
55. In relation to requirement (iv) in paragraph [39] of this decision, s 14 of the Act provides that goods are ‘similar’ to other goods, and services are ‘similar’ to other services, if they are the same, or of the same description, as the other goods or services.
56. The determination of whether goods are similar, or services are similar, involves the consideration of a number of factors including the nature, use and trade channels of the goods or services.[17] Applying these considerations I consider the following to be similar goods or similar services:
[17] Jellinek’s Application (1946) 63 RPC 59 (Romer J); MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
Holder’s Goods and Services
Goods or services of Cited Marks
Class 9: Computer software; computer databases; computer programs, computer software development tools; downloadable computer software implementation tools; parts and fittings for all the aforesaid goods included in this Class
Cited Mark 1
Class 9: Various software claims; document management systems and workflow solutions being computer hardware and software for workflow solutions and document management
Cited Mark 3
Class 9: Monitoring and control software and apparatus for communication between remote control devices and blind or shade motors
Class 9: Downloadable electronic publications
Cited Mark 2
Class 9: Training guides in electronic format
Class 41: The provision of training, provision of information in the field of training; training courses; instructional and teaching services; arranging and organising of seminars, courses, conferences, exhibitions, demonstrations, lectures, educational and instructional events; training and practical demonstrations; tuition, arranging and conducting of workshops; educational information services provided online from a computer database or the internet; providing certification training; all the aforesaid provided via online databases in connection with all the aforesaid services; advice, information and consultancy services relating to all the aforesaid services
Cited Mark 2
Class 41: Technical training; training
57. In reaching this conclusion, I have considered the Holder’s submissions that both the Holder’s Goods and Services and the goods and services of the Cited Marks are specialised and likely to be tailored to a consumer’s specific needs. In particular, the Holder submits that:
·both the Trade Marks and Cited Marks 1 and 3 claim computer software, which are highly specialised goods that are technical in nature, designed for a particular purpose, typically expensive and require compatibility with specific operating systems. Consumers would take care to ensure these goods are fit for purpose prior to purchase;
·the training services claimed in the Trade Marks as well as in Cited Mark 2 are for a particular purpose and consumers would exercise considerable care in identifying the right service and service provider for their needs; and
·the goods claimed in Cited Mark 3 relate to remote control devices and blind or shade motors. Given the narrow scope of the claimed goods, the Holder submits that consumers seeking such goods would exercise extreme care.
58. I do not find these submissions persuasive. Whilst the Cited Marks may have some claims which are confined to a particular purpose or need, the claims of the Trade Marks are broad and not limited to a particular purpose or need. The authorities make it clear that I must consider the normal and fair use for all of the goods or services covered by the trade mark application in question.[18] For example, in these matters, the Trade Marks have broad claims for computer software and computer programs, which would include use for the specific software for which Cited Mark 1 and Cited Mark 3 are registered.
[18] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J); Vivo International Corporation Pty Ltd v Tivo Vivo [2012] FCAFC 159, [114] (Nicholas J); Caterpillar Inc v Puma SE [2021] FCA 1014, [90] (O’Bryan J).
59. In addition to similar goods and similar services, the Holder’s Goods and Services also contain claims which I consider to be closely related to the claims of the Cited Marks. The concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J stated:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
…The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them…[19]
[19] [1999] FCA 1020, [37]–[38].
60. Applying these principles, I consider the following to be closely related:
Holder’s Goods and Services
Goods or services of Cited Marks
Class 41: Publication of electronic instructional material, electronic books or journals online or via a global computer network; providing sound, video or media recordings online or via a global computer network; digital media provided online from a computer database or the internet
Cited Mark 2
Class 9: Training guides in electronic format
Class 42: The development and updating of software; design and development of computer software; providing temporary use of on-line non-downloadable software for database management; providing temporary use of non-downloadable computer programs; providing temporary use of non-downloadable computer software; providing temporary use of non-downloadable computer software development tools for others; computer software maintenance; infrastructure services featuring computer software platforms for creating, managing and deploying cloud computing infrastructure services; platform-as- a-service (PaaS) services; software as a service (SaaS) services; application service provider (ASP) services; information technology integration services; providing information in the field of information technology via a website; designing, developing, configuring, customizing, testing, assessing, implementing and maintaining computer software and systems for others; advice, information and consultancy services in relation to all the aforesaid services.
Cited Mark 1
Class 9: Various software claims; document management systems and workflow solutions being computer hardware and software for workflow solutions and document management
Cited Mark 3
Class 9: Monitoring and control software and apparatus for communication between remote control devices and blind or shade motors
61. In summary, I am satisfied that a ground for rejection for each of the Trade Marks exists under s 44 of the Act in respect of the Holder’s Goods and Services except for:
Class 42: Hosting of websites; creating websites; design and development of websites; cloud hosting provider services; computer aided scientific research services provided from computer systems and the internet.
Other circumstances
62. Sections 44(3) and 44(4) of the Act enable a trade mark to be accepted, which would otherwise be rejected under s 44(1) or 44(2), on the basis of honest concurrent use, other circumstances or continuous prior use.
63. The Holder submits that it is proper to accept the applications for the Trade Marks on the basis of “other circumstances”, having regard to the Affidavit. Under s 44(3)(b) of the Act the Registrar may accept applications if, because of “other circumstances”, it is proper to do so.
64. The Holder submits that the Affidavit demonstrates that the Trade Marks operate in a distinctive manner. The Holder notes that Mr Chorley is not aware of any instances of confusion or deception occurring with any other brands since the Holder’s adoption of the Trade Marks.
65. For the reasons discussed in paragraphs [31] to [35] of this decision in respect of the Word Trade Mark, the Holder’s claim to strong customer recognition of the Trade Marks is not substantiated by the limited evidence contained in the Affidavit. Additionally, it seems somewhat unsurprising that Mr Chorley is not aware of instances of confusion or deception, given that the Trade Marks had not been used in Australia at the priority dates. I also note that the Affidavit makes mention of registrations in other jurisdictions, but no details of those registrations are provided, and they are therefore of no assistance to the Holder.
66. I am not satisfied that it is proper to accept the applications for the Trade Marks on the basis of “other circumstances”. For the sake of completeness, I also confirm that the evidence before me is not sufficient to apply the provisions of prior use, or honest concurrent use.
Decision
67. Regulation 17A.24 provides:
17A.24 Final decision on examination
(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it.
(2) The Registrar may accept the IRDA subject to conditions or limitations.
(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:
(a) it is not in accordance with this Division; or
(b) there are grounds for rejecting it, in whole or in part.
68. Grounds for rejection exist under s 41(4) of the Act in respect of the Word Trade Mark and s 44 of the Act in respect of the Word Trade Mark and the Figurative Trade Mark. However, the s 44 ground for rejection is not established in respect of the following services:
Class 42: Hosting of websites; creating websites; design and development of websites; cloud hosting provider services; computer aided scientific research services provided from computer systems and the internet.
69. I therefore reject IRDA 2323895 in whole and reject IRDA 2324026 in part. IRDA 2324026 is accepted for the services in class 42, as set out in paragraph [68] of this decision.
Sheona Robertson
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
15 December 2023
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