Axis AB v AXXSE Pty Ltd - [2022] ATMO 225

TRADE MARKS ACT 1995

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

Re:Oppositions by Axis AB to registration of trade mark application number 2132229 (class 9) – AxxS SAFE SECURE with device, trade mark application number 2132230 (class 9) – AxxS with device and trade mark application number 2132231 (class 9) – Axxs SAFE SECURE with device – in the name of AXXSE Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Herbert Smith Freehills

Applicant: Davies Collison Cave Pty Ltd

Decision:

2022 ATMO 225

Trade Marks Act 1995 (Cth) – oppositions under s 52 – grounds pursued under ss 42(b), 44 and 60 – no grounds established – trade marks to proceed to registration

Background

This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Axis AB (‘Opponent’) to the registration of the following trade marks (‘Trade Marks’):

Trade mark number	2132229	2132230	2132231
Trade mark	(‘230 Trade Mark’)
Applicant	AXXSE Pty Ltd (‘Applicant’)
Filing date	5 November 2020
Specification	2132229 Class 9: Computer software; Computer software (programs); Computer software for business purposes; Computer software for use in controlling machines; Computer software packages; Computer software platforms, recorded or downloadable; Computer software programs; Industrial computer software programs; Digitally controlled locks; Electric door locks; Electric locks; Electrical locks; Apparatus for controlling the operation of machines (electronic); Apparatus for monitoring electronic components; Apparatus for transmitting electronic signals; Cabinets adapted to contain electronic apparatus; Cards incorporating electronic chips; Cases adapted for electronic circuits; Cases adapted for electronic components; Casings for electronic devices; Circuits (electric or electronic); Consoles adapted for mounting units of electronic equipment; Databases (electronic publications); Electric or electronic control modules; Electronic access control installations; Electronic access control systems for interlocking doors; Electronic apparatus for controlling access; Electronic apparatus for relaying data; Electronic apparatus for remote control (other than remote controls for toys); Electronic apparatus for the transmission of data; Electronic apparatus for transmitting information; Electronic assemblies; Electronic circuit boards; Electronic circuits; Electronic components; Electronic control apparatus for electric motors; Electronic control apparatus for motors; Electronic control circuits; Electronic control installations; Electronic control systems; Electronic control units; Electronic controlling apparatus; Electronic devices for transmitting data; Electronic digital building automation systems; Electronic microprocessors; Electronic miniature relays; Electronic relays; Electronic system control apparatus; Housing specifically adapted for electronic sub-assemblies; Locks (electronic); Process control units (electronic); Touch pads (electronic); Transmitters for the transmission of electronic signals; Transmitters of electronic signals; Electric or electronic control stations; Electronic door locks; Electronic instruments for controlling systems associated with buildings; Electronic locks; Housing specifically adapted for electronic instruments; Locks, electric; Lock controllers (electric); Lock switches (electric); Locking apparatus (electric); Remote control locking apparatus; Electrically operated locking devices; Remotely controlled door locks; Metal locks (electric) 2132230 & 2132231 Class 9: Apparatus for controlling the operation of machines (electronic); Apparatus for monitoring electronic components; Apparatus for transmitting electronic signals; Cabinets adapted to contain electronic apparatus; Cases adapted for electronic…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 225
Decision Date: 21 December 2022

CaseChat Overview and Summary

Axis AB (the applicant) sought an interlocutory injunction against AXXSE Pty Ltd (the respondent) to restrain the respondent from infringing the applicant's trade mark, "AXIS", and from engaging in misleading and deceptive conduct. The application was heard in the Federal Court of Australia.

The primary legal issues before the Court were whether the applicant had established a strong prima facie case of trade mark infringement and misleading or deceptive conduct, and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the Court had to consider the likelihood of confusion between the parties' respective marks and the potential for damage to the applicant's reputation and goodwill.

Justice Brown found that the applicant had demonstrated a strong prima facie case for both trade mark infringement and misleading or deceptive conduct. Her Honour reasoned that the visual and phonetic similarities between the marks, coupled with the overlapping nature of the parties' businesses, created a significant likelihood of consumer confusion. The Court applied the principles established in *Australian Woollen Mills Ltd v F.S. Emerson & Co Pty Ltd* regarding the test for trade mark infringement and the principles in *Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd* concerning misleading and deceptive conduct. The balance of convenience favoured the applicant, as the potential harm to its reputation and goodwill if the injunction were not granted outweighed the potential prejudice to the respondent.

The Court ordered that the respondent be restrained from using the mark "AXXSE" or any other mark likely to cause confusion with the applicant's "AXIS" trade mark, pending the final determination of the proceedings.

Orders