Banjo Inc v FundIT Technology Pty Ltd

[2017] ATMO 129

TRADE MARKS ACT 1995

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

Re:Opposition by Banjo, Inc to registration of trade mark applications 1726623 (36) banjo & device and 1727084 (9) banjoscore & device in the name of FundIT Technology Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: David Larish of Counsel instructed by Bill Ladas of King & Wood Mallesons. Applicant:  Peter Creighton-Selvay of Counsel instructed by Madgwicks.
Decision:	2017 ATMO 129 Oppositions under s 52 of the Trade Marks Act 1995 – ss 42(b) and 60 considered but neither established; registration allowed.

Background

1. This matter concerns oppositions brought by Banjo, Inc (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade marks the subject of the applications detailed below in the name of FundIT Technology Pty Ltd (“the Applicant”):

Application Number:        1726623

Filing Date:  8 October 2015

Services:Class 36: Financing of personal loans; Guaranteed loans; Loans (financing); Loans against securities; Provision of commercial loans; Provision of loans; Provision of secured loans; Secured loans; Financial credit services; Provision of credit        (“the Services”)

Trade Mark:  (“the Banjo Mark”)

Application Number:        1727084

Filing Date:  9 October 2015

Goods:Class 9: Computer Programs      (“the Goods”)

Trade Mark:   (“the Banjoscore Mark”)

1. Acceptance of the trade marks for possible registration was advertised in the Australian Official Journal of Trade Marks on 3 March 2016.  The Opponent filed Notices of Intention to Oppose on 5 April 2016, followed by Statements of Grounds and Particulars (“SGPs”) on 14 April 2016.  The Applicant filed Notices of Intention to Defend the applications on 19 May 2016.

2. The parties filed evidence, described below, in accordance with the Trade Marks Regulations 1995 (“the Regulations”) and requested to be heard.   I heard the matter as a delegate of the Registrar of Trade Marks on 7 September 2017 in Canberra.  David Larish of Counsel, instructed by Bill Ladas of King & Wood Mallesons, both appeared in person for the Opponent.  Peter Creighton-Selvay of Counsel, instructed by Madgwicks, appeared by video-conferencing facilities for the Applicant.  Counsels’ oral submissions were supplemented by written submissions filed prior to the hearing in accordance with my directions.

Grounds of Opposition, Onus and Standard of Proof

1. The SGPs list grounds corresponding to ss 42(b), 59, 60 and 62A of the Act but only the s 42(b) and s 60 grounds were pressed at the hearing. To succeed the Opponent bears the onus of establishing one of these grounds. The standard of proof required is the civil standard based on the balance of probabilities.[1] 

   [1] See Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

2. In relation to ss 42(b)[2] and 60,[3] the rights of the parties are to be determined as at the priority dates of the applications.   In this case the respective priority dates and the filing dates are the same calendar dates, namely, 8 October 2015 (#1726623) and 9 October 2015 (#1727084), (“the Relevant Dates”).

   [2] See Time Warner v Stepsam (2003) 59 IPR 343 at [46]-[47] per Wilcox J; Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313 at [16] per Jagot J.

   [3] Section 60 refers only to the priority date.

The Evidence

1. The parties rely on the declarations described below, made pursuant to reg. 21.6 of the Regulations:

Evidence in Support

▪ Rish Mehta, Vice-President of Technology of the Opponent, made 24 August 2016 (“Mehta”)

▪ Bill Ladas, partner of King & Wood Mallesons, solicitors for the Opponent, made 25 August 2016 (“Ladas 1”)

Evidence in Answer

▪ Andrew Colliver, director of the Applicant, made 22 November 2016 (“Colliver”)

Evidence in Reply

▪ Bill Ladas made 6 February 2017 (“Ladas 2”)

Overview of the Evidence

1. Colliver describes the Applicant as an online provider of unsecured lending to small and medium sized businesses in Australia.[4]  It owns the following trade mark registrations:

• number 1663547 for BANJO in class 36 in respect of “financing of personal loans; guaranteed loans; loans (financing); loans against securities; provision of commercial loans; provision of loans; provision of secured loans; secured loans; financial credit services; provision of credit”, registered with effect from 15 December 2014; and

• number 1669617 for BANJOSCORE in class 9 in respect of “computer programs”, registered with effect from 19 January 2015.

  [4] Colliver at [8].

1. The applications for those registrations were not opposed.  I observe that the resulting registrations are for the Goods and Services of the applied-for trade marks in these proceedings.

2. The Applicant has used the trade marks in Australia for some time.

3. The Opponent is based in California[5] and is the developer of data tracking software applications (“apps”).  In June 2011 it launched a social media app that allowed users to connect with others by way of geo-location.  In January 2014 the Opponent launched an app aggregating breaking news and events.[6]

   [5] Mehta at Exhibit RM-04.

   [6] Mehta at [15] and [16].

4. The unregistered trade mark BANJO (“Opponent’s Mark”) is used in connection with the apps which are downloadable, free, via Apple’s “App Store” (for iPhone users) and via the “Google Play” store (for Android users).

5. Since 2011 the Opponent has maintained a website at which currently promotes the apps and offers for download from there “Banjo Discovery”, described as a web-based version of the news aggregation app, directed towards use by media organisations.[7]

   [7] Mehta at [36], [45] and [46].

6. The Opponent’s Mark has been used in word form and as part of various logos but I make the finding now that, for all intents and purposes so far as ss 42(b) and 60 are concerned, the uses can be regarded as use of the word mark BANJO.

Discussion

1. The Opponent states that:

   As to s 42(b), the Opponent contends that use of the Opposed Marks would involve a contravention of ss 18(1) of the Australian Consumer Law and passing off. Given that Office practice is to treat ss 60 and 42(b) as one and the same, these grounds are not separately addressed in these submissions. However, the Opponent reserves the right to address them separately, in oral submissions, if necessary.

2. Accordingly, I have first considered the section 60 ground of opposition which is essentially determinative of the outcome of the oppositions in this case.

Section 60

1. Section 60 of the Act is reproduced below:

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

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.

Note: For priority date see section 12.

1. In the case of Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[8] the Registrar’s delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [8] [2012] ATMO 124.

Reputation

1. The Opponent’s submission is that before the Relevant Dates the Opponent’s Mark had acquired a reputation in Australia.  Mr Larish asked me to think progressively when making my assessment of that submission.  In particular, he advanced the principle that a trade mark “may acquire a reputation in Australia even in the absence of any sales – for instance, through marketing, or because the mark has a reputation in another country which can be shown to have extended to Australia.”[9]  Mr Larish reminded me of the Full Federal Court’s observations in ConAgra Inc v McCain Foods (Aust) Pty Ltd (“Conagra”):

   Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines, reaches people in many countries of the world… This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They… [can be] well known… because of the sophistication of communications which are increasingly less limited by national boundaries.[10]

   [9] Citing, Tivo Inc v Vivo International Corporation PtyLtd [2012] FCA 252 at [336], amongst other cases.

   [10] (1992) 33 FCR 302 at 342-3 per Lockhart J.

2. Mr Larish also drew my attention to the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (“Pham”) where a differently constituted Full Federal Court said:

   Conagra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of IR’s case is unsound… [T]he reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation… [IR’s] approach resonates with sentimental notions of pre or early Federation train track gauge differences.[11]

   [11] [2017] FCAFC 83 at [81] (with redactions by Mr Larish, discussed later).

3. Based on these authorities I was petitioned to evaluate the reputation in the Opponent’s Mark “taking into account ‘ubiquitous’ aspects of modern life: technology, internationalisation and the information revolution.”

4. Further, it was put to me that the Opponent’s apps “are computer software and, by their function, are ‘software as a service’.”

5. Mehta declares that by November 2012, the geo-location app had 3 million users[12] and that by March 2014 the news aggregation app had 6 million users[13].  By April 2016, it is said that 25,000 of those users were located in Australia.[14]

   [12] Mehta at [15].

   [13] Mehta at [18].

   [14] Mehta at [38].

6. With references omitted, the Opponent’s written submissions include the following passages:

   [T]he Opponent: (1) before the Priority Dates, spent over US$1.5 million on advertising, marketing and promoting the goods and services it provides under the [Opponent’s] Mark (2) maintains Facebook, Twitter, LinkedIn and Instagram accounts and a YouTube channel, each of which prominently feature the [Opponent’s] Mark; (3) before the Priority Dates, attended 15 conferences, primarily in the US; and (4) collaborated with Samsung Galaxy Gear Smartwatch to ensure that the [news aggregation] App was one of the first apps available for download for that watch, resulting in substantial media exposure for the [Opponent’s] Mark.

   Many global magazine articles have included the [Opponent’s] Mark in their title, eg: (1) two articles in the Wall Street Journal, titled “Las Vegas Startup Banjo Raises $16M to Become ‘Tivo for Social Media’” and “Banjo Raises $100 Million to Detect World Events in Real Time”, dated 13 March 2014 and 6 May 2015 respectively; (2) two articles in Fortune magazine, titled “Why Social Media Startup Banjo Will Strike a Chord With Marketers” and “Banjo Raises $100 million but the Pressure to Perform Comes From Within”, dated 2 April and 7 May 2015 respectively; (3) an article in Forbes Magazine “Banjo App Connects With the Nearby Social World” dated 22 June 2011.

7. Mr Creighton-Selvay referred me to cases including Austin, Nichols and Co Inc v Lodestar Anstalt where the Full Federal Court stated that reputation meant “recognition of the mark by the public generally”[15] and underscored that a s 60 reputation required recognition of the Opponent’s Mark by a significant or substantial number of potential customers.[16] His response was that there is no direct evidence of consumer recognition of the Opponent’s Mark in Australia and nothing of substance upon which an Australian reputation might be inferred.

   [15] [2012] FCAFC 8 at [45].

   [16] Citing Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657 at [75] per Moore, Tamberlin and Goldberg JJ; Television Food Network, G P v Food Channel Network Pty Ltd (No 2) (2009) 90 IPR 314 at [160] per Collier J.; Tivo Inc v Vivo International Corporation Pty Ltd (Tivo) [2012] FCA 252 at [309] per Dodds-Streeton J.

8. Notwithstanding those criticisms I think that it would be wrong to find that the Opponent’s Mark had no reputation in Australia at the Relevant Dates, but I find that reputation quite pale.  A relatively low number of Australians have downloaded[17] the apps.  The evidence does not show any substantial promotion of the apps in Australia which might somehow bolster the claim to an international recognition of the Opponent’s Mark.  The evidence of so-called “spillover” reputation is transparently thin, even when I take into account the “ubiquitous” aspects of modern life, as Mr Larish put it.  My mind is open to the ways in which an interconnected world audience is more receptive to new brand names than in times past and to the sentiments of the general kind made in Pham. However I observe that the Federal Court was already satisfied (as had been the trial judge) that Insight Clinical Imaging Pty Ltd had a reputation in Western Australia and the Court was only concerned about whether that reputation existed in New South Wales, two critical facts in that case which Mr Larish omitted from the judgment as it was reproduced in his submissions at [18] above. Indeed, at another place in their judgment in Pham, the Full Federal Court described Insight Clinical Imaging Pty Ltd’s Australian business as a “fundamental point” of distinction from the facts in Conagra.[18]

   [17] Downloading being, on the evidence, the claim to “use”.

   [18] Pham at [79].

9. The Opponent’s prospect of success under s 60 does not depend on a requirement of a common field of activity between the parties[19], but in the overall assessment of the impact of the reputation of the Opponent’s Mark, I am mindful of Jessup J’s reasoning in Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd:

   What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.[20] (emphasis added)

   [19] See, for example, ABC v Commercial Radio Australia (2010) 88 IPR 376 at [42].

   [20] [2015] FCA 1065; (2015) 115 IPR 82 at [27].

10. For the Applicant, Mr Creighton-Selvay submitted that:

    Given the particular sphere of operation of [the Opponent], if the [Opponent’s Mark] had acquired any reputation in Australia at all by the priority dates (which it had not), it would be confined to goods and services that are quite different to those that are the subject of the [applied-for trade marks]. That reputation would be confined to social media tracking and news aggregation.

1. On the other hand, Mr Larish argued that:

   … as a result of the history and development of the Banjo Range – from social media, to events and information ‘on the ground’, to news for large media organisations – and as has been recognised in the media articles, the [Opponent’s Mark] is perceived as an adaptable and self-evolving brand that is positioned at the forefront of 21st century information and e-commerce revolution.

2. The Opponent’s evidence provides a limited foundation for Mr Larish’s hyperbole.  Mehta exhibits a June 22, 2011 article from Forbes entitled “Banjo App Connects with the Nearby Social World”[21] which describes the Opponent as “a new start-up … launching today” a geo-locational app having two major uses: “First, it’s designed for finding out what is going on in a particular place. You can see all the activity around your current location, for example, plotted on a map. … The other use of Banjo is to find all the updates of your friends, organized by location.”

   [21] Mehta, Ex. RM-1.

3. Mehta states that “[i]n January 2014, the Opponent reviewed its business model and released a new version [of the app which] is a news and event signal tracking software application for the purposes of harnessing data about events and breaking news and delivery it to users in real time”.[22]

   [22] Mehta at [16].

4. The “Banjo Discovery” web based platform followed two months later[23] and Mehta exhibits more than one interview with the founder of the Opponent, Damien Patton, wherein Mr Patton refers to the Opponent’s business as having “pivoted” twice, an Americanism which as best I understand it from the general context of the Opponent’s evidence means that the business has changed direction, somehow carrying in the new direction its pre-existing brand recognition whatever that may have previously been.

   [23] Mehta at [17].

5. Based essentially on the release of these products, Mehta states that the Opponent’s Mark had by the Relevant Dates been used for the following goods – namely, computer software and downloadable software applications, and services – namely, “software as a service” and “computer services for creating a geography-based on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking with users in the same geographical area”.[24]

   [24] Mehta at [8].

6. It is clear that the Opponent’s Mark has been used in connection with two apps.  Mehta states that Mr Patton established the Opponent “ostensibly for the purposes of developing software”.[25]  I do not properly understand why the word “ostensibly” was used.  I would think that a business in the development of apps is a software development business.  That is not to say that I think the evidence would in any way support a claim that the Opponent is a company which either develops software for others or has a reputation for making software for a variety of purposes. I make these observations since trade mark law is replete with cases which have found software suited or designed for different purposes not to be “goods” similar to one another under the Act. For the purposes of this s 60 analysis, it is for me to make the simple common sense finding that before the Relevant Dates the Opponent’s Mark had been used in respect of certain goods, being geo-locational sensing and news and event aggregation apps for mobile phones.

   [25] Mehta at [14].

7. Assessment of use of the Opponent’s Mark for services is limited by my ability to give sense to the expression: “software as a service”.  Without assistance from counsel, it seems no more than a shorthand expression for what is also claimed as a service: “computer services for creating a geography-based on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking with users in the same geographical area”.  That said, I do not regard those “services” to exist separately from the goods.  It is not apparent that, as described, they are services provided by the Opponent; it seems to me more a description of what users might themselves achieve with the app.

1. Therefore, insofar as s 60 requires me to take account of not only the extent, but the content of the asserted reputation in the Opponent’s Mark, I restate my conclusion that before the Relevant Dates the Opponent made certain geo-locational sensing and news and event aggregation apps for mobile phones and that accordingly what reputation the mark in question may claim must be assessed bearing this in mind.

2. It remains to say something of Mr Larish’s claim (made within the context of the “likelihood of confusion” aspect of s 60 to which I will come shortly) that the Opponent’s Mark is perceived as “an adaptable and self-evolving brand.” Exhibit RM-9 to Mehta includes a May 7, 2015 Fortune.com article entitled “Banjo raises $100 million, but the pressure to perform comes from within” which quotes Mr Patton as stating: “Banjo will become the world’s premier real-time data platform.  Our technology will fuel other organizations and entire ecosytems.”  That same month Wire magazine reported: “This month … marks the end of stealth mode for Patton’s new enterprise software, Banjo, an ‘event-detection engine’ poised to disrupt industries all over the world.”  The article goes on to explain that Mr Patton:

   …thinks of Banjo not as a simple consumer product but as a platform, an underlying intelligence that others will come along and tap into, build on.  And he’s right that the implications of Banjo’s technology are almost incalculable for businesses as diverse as financial services, marketing, insurance, news and media, public health, and beyond.

3. These aspirational goals are, so far as I can see from the evidence, the high water mark in support of the claim that the Opponent’s Mark was, at the relevant times, perceived as an adaptable and self-evolving brand.  Certainly, nothing goes further than this in terms of any link between the Opponent’s Mark and financial services.

Comparison of the trade marks

1. I am not required to decide whether the compared marks are deceptively similar, only to assess their degree of similarity. The Opponent’s submissions spent some time comparing the trade marks of the parties and examining the ways in which they are used in practice. Some discussion is devoted to the alleged similarities in trade dress, but since the s 62A ground listed in the Notices of Opposition was not pursued I will read nothing more into those submissions. Having regard to the weight I have apportioned to other factors, it is enough for me to say that for the purposes of comparison I find the Banjo Mark essentially identical to the Opponent’s Mark and I find the Banjoscore Mark similar to the Opponent’s Mark.

Likelihood of confusion or deception

1. In the case of Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd Jacobson J 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[26] at [49]; Australian Woollen Mills[27] 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[28] 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[29] 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].[30]

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

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

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

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

   [30] [2012] FCA 1022, [38]-[46].

2. In connection with the seventh factor outlined above, I add here that in taking account of the notional use of the opposed trade marks, the actual use to which they have been put is also relevant as it is to be regarded “as illustrative of what would be normal and fair”.[31]  In that regard I have no reason to take issue with the description by Colliver of the Applicant as an online provider of unsecured lending to small and medium sized businesses.

   [31] Electrocoin v Coinworld [2004] EWHC 1498 at [21]; Hot Tuna IP Ltd v Select GmbH Unternehmen fur Zeitarbeit (2014) 107 IPR 585 at [30]-[32].

3. Mr Larish concedes that loan services have not been offered under the Opponent’s Mark but goes on to argue that:

   …there is a substantial nexus between those services and the goods/services for which the [Opponent’s Mark] has a reputation. … Colliver Dec paras 64 to 75 is instructive: (1) Potential customers of the Loan Services “typically” commence the application process “online using their mobile phones”. Registration is required using an email address and mobile phone number: Colliver Dec para 64(a). The [Opponent’s apps] also involve users obtaining services and engaging with the Banjo brand online on their mobile. (2) The Loan Services involve an electronic application process. Communication with the customer is by electronic means – no face to face contact is required: Colliver Dec paras 64 to 72. This is the same as for the Banjo Range. (3) It can take as little as 3 hours for the application for the Loan Services to be completed and accepted, and funds can then be deposited into the bank account of the client within 24 hours: Colliver Dec para 73 to 75. As such, it is apparent that the Loan Services involve the use of technology to enable the user to receive funds as expeditiously as possible.  Similarly the Banjo Range is associated with the swift provision of information to users ‘on the run’.

4. Mr Larish continued in his written submissions as follows:

   Brand extension is … important where, as here: (i) there is evidence as to the Opponent engaging in brand extension; (ii) there is brand extension in the industry; (iii) there is evidence of the perception of brand extension in the relevant area.

   …

   The Office is able to draw conclusions from known industry practices, even in the absence of evidence. In the present case, brand extension and convergence is important because of its frequency in the online and digital space. Consumers in this space recognise the “blurring” or “convergence” of digital technologies and the impracticality of drawing fine distinctions between product offerings. Without the physical impediments of more traditional brands, digital and online brands (eg Google, Amazon) are able to evolve and adapt based on trends or their own ideas, entering new goods and services markets with rapidity. A brand’s real value lies in the customer network it has built up, rather than the nature of its initial product/service offering.

1. I do not agree with Mr Larish that the concept of brand extension has application here.  Indeed, I do not find that any one of the propositions (i) – (iii) he lists above is made out in this case.  There is evidence of the Opponent “pivoting” but no evidence showing it to be the type of enterprise like Google or Amazon at the Relevant Dates.  Further, to claim that there is brand extension “in the industry” and evidence of the perception of brand extension “in the relevant area” invites the question of what that area might be and on my reading of the argument the only causal connection alleged by the Opponent is a shared use of modern technology and use of mobile communication devices.

2. Ladas 2 advances the idea that there has been actual confusion.  This rests on the claim that consumers have mistaken the parties’ LinkedIn pages.[32]  That evidence comprises screenshots of the Applicant’s LinkedIn pages which (in the Opponent’s words) :

   …in the ‘People Also Viewed’ section, contain a link (via the Opponent’s aqua ‘b’ logo) to the Opponent’s LinkedIn page, indicating that LinkedIn users have gone to both the Applicant’s and Opponent’s pages. The logical inference is that such users have perceived the brands as one and the same or consider that the Opponent has launched a sub-brand. Either way, this is a form of actual confusion.

   [32] Ladas 2 at Ex BL-5.

3. Mr Creighton-Selvay’s retort was that:

   At its highest, [the Applicant’s LinkedIn page] shows that some unknown number of people, at some unknown point in time, looked at the FundIT LinkedIn page and they also looked at the Banjo USA LinkedIn page. That evidence says nothing about whether any person was deceived or confused. Of course, the printouts relied upon were generated after the date of the oppositions - which means that there are any number of explanations for why people visiting LinkedIn viewed both pages. Indeed, it is open on the evidence to conclude that it was traffic generated by Banjo USA or its solicitors, which created that entry (i.e., they are the ‘People [Who] Also Viewed’ both LinkedIn pages).

4. Without entering into that argument, all that need be said is that I give this evidence very slight weight.

5. In short, I find there is no likelihood of confusion or deception. It follows that the Opponent has not established its ground of opposition under s 60.

Section 42(b)

1. This ground is that the use of the applied-for trade marks would be contrary to law and would amount to misleading and deceptive conduct, or the making of false representations, in contravention of the Australian Consumer Law, in particular, by falsely suggesting that the Goods and Services are those of the Opponent or are sponsored, approved, affiliated or licensed by the Opponent.  Further, that the Applicant’s use of the trade marks would amount to the tort of passing off.

2. I note what the Opponent had to say at [14] above and add only that it is well understood that this ground (so argued) can rise no higher than the argument as it has been presented under s 60 of the Act and for that reason it must also fail.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

1. A ground of opposition has not been established.  I order that the trade marks should proceed to registration.

Costs

1. As costs ordinarily follow the event, I award costs against the Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad [33].

   [33] (2001) 53 IPR 591.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
26 October 2017