Behaviour Interactive Inc v Behaviol Pty Ltd - [2024] ATMO 178

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Behaviour Interactive Inc to registration of trade mark application number 2278251(class 9) – Behaviol – in the name of Behaviol Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: K&L Gates

Applicant: HWL Ebsworth Lawyers

Decision:

2024 ATMO 178

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pressed – s 44 established – trade mark refused registration

Background

This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Behaviour Interactive Inc (‘Opponent’) to registration of the following trade mark:
Trade mark no: 2278251
Trade mark: Behaviol (‘Trade Mark’)
Applicant:Behaviol Pty Ltd (‘Applicant’)
Filing date:21 June 2022
Specification: Class 9: Virtual reality game software; Augmented reality game software; Software for blockchain; software for creating blockchains; Electronic game software; Electronic game software in the nature of video games, computer games, interactive multimedia games, and virtual, augmented, and mixed reality games; Computer game programs; Computer game software, downloadable; Computer programs for playing games; Computer programs for video games; Games software; Video game computer programs
(‘Applicant’s Goods’)
The Trade Mark was examined as required by s 31 of the Act and accepted. On 19 January 2023, the Opponent’s attorneys wrote to this Office requesting revocation of acceptance under s 38. That request cited s 44 and an Australian trade mark registration owned by the Opponent (discussed later).
The Opponent filed a Notice of Intention to Oppose on 23 January 2023.
On 7 February 2023 this Office wrote to the Opponent finding no circumstances engaging s 38 and refused to revoke the Application.
On 23 February 2023 the Opponent filed a Statement of Grounds and Particulars (‘SGP’) after which the Applicant filed a Notice of Intention to Defend on 5 April 2023. .
The parties then filed evidence in accordance with the Trade Mark Regulations 1995 (Cth) (‘Regulations’) as follows:
Evidence in support
Declaration of Pete Knowles, lawyer for the Opponent, made 6 July 2023.
Evidence in answer
Declaration of Dr Dinuk Sanjaya Jayasuriya, Executive Director of the Applicant, made 4 October 2023 (‘Jayasuriya Declaration’)
Evidence in reply
Declaration of Julie Carpentier, Director of Contracts & Business Affairs of the Opponent, made 6 December 2023.
The parties requested a hearing by written submissions. Only the Opponent filed submissions. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide which I do based on the SGP, the evidence described above and any other material of relevance being part of the official records of this Office pertaining to acceptance of the Trade Mark.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. The Opponent bears the onus of establishing at least one…

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.

Keep reading for free

Create a free CaseChat account to read Behaviour Interactive Inc v Behaviol Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2024] ATMO 178
Decision Date: 25 September 2024

CaseChat Overview and Summary

Behaviour Interactive Inc (the Applicant) opposed the registration of a trade mark by Behaviol Pty Ltd (the Opponent). The Opponent relied on its registered trade mark, which covered "software for playing video, computer and online games," and argued that the Applicant's goods, including virtual reality game software, augmented reality game software, and electronic game software, were similar. The core of the dispute concerned whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's earlier registered mark, a requirement for success under section 44(1) of the relevant Act.

The court was required to determine whether the Applicant's goods were similar to the goods covered by the Opponent's registered trade mark, and if so, whether the Applicant's trade mark was substantially identical with or deceptively similar to the Opponent's registered trade mark. The court also had to consider whether any exceptions under sections 44(3) or (4) of the Act applied, although the provided text focuses on the primary s 44(1) ground.

The court found that the Applicant's goods were similar to those covered by the Opponent's registration, satisfying the first limb of section 44(1). In assessing substantial identity, the court applied the principle of comparing the marks side-by-side, noting similarities and differences to assess the total impression of resemblance. The court found no substantial identity. Regarding deceptive similarity, the court applied the test that a trade mark is deceptively similar if it nearly resembles another mark such that it is likely to deceive or cause confusion, requiring a real and tangible danger of confusion as to the trade source, allowing for imperfect recollection. On a side-by-side comparison, the court found clear differences and that a total impression of resemblance did not emerge, leading to the conclusion that the marks were not deceptively similar.

Despite the finding of no deceptive similarity, the provided text concludes that "the final requirement of s 44 is satisfied and the ground of opposition is therefore successful." This appears to be a contradiction within the provided text, as the reasoning detailed above would typically lead to the opposition failing on the deceptive similarity ground. However, based on the explicit statement of success, the court decided to refuse the Applicant's trade mark application and awarded costs against the Applicant.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Accordingly, the final requirement of s 44 is satisfied and the ground of opposition is therefore successful. It is not necessary to consider the other grounds in the SGP.Decision Section 55 of the Act relevantly provides:(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. The Opponent has established a ground of opposition. Accordingly, I decide that application number 2278251 should be refused. If the Registrar is served with a notice of appeal the disposition of the application should otherwise be in accordance with the Court’s order or direction. Costs The Opponent sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle in this case. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.Debrett LyonsHearing OfficerOppositions and HearingsTrade Marks and Designs25 September 2024

Ratio Decidendi

Legal Principle Established

The SGP cites trade mark registration 2154715 (‘Registration’) as the basis for s 44, details of which follow: To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services, and that neither of s 44(3) or (4) applies. The Registration is owned by the Opponent and has a priority date earlier than the Relevant Date. Section 14(1) of the Act states that goods are similar if they are the same or of the same description as other goods. The Registration covers “software for playing video, computer and online games”. The Applicant’s Goods areVirtual reality game software; Augmented reality game software; Software for blockchain; software for creating blockchains; Electronic game software; Electronic game software in the nature of video games, computer games, interactive multimedia games, and virtual, augmented, and mixed reality games; Computer game programs; Computer game software, downloadable; Computer programs for playing games; Computer programs for video games; Games software; Video game computer programs I find the Applicant’s Goods to be similar in terms of s 14. The remaining question for the purposes of s 44(1) is whether the Trade Mark is substantially identical with, or deceptively similar to, the mark of the Registration. There is no submission of substantial identity but for the sake of completeness I note that in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (“Shell”) the test for substantial identity was set out as follows:[the marks] 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.[3][3] [1963] HCA 66, [12]. The compared marks are:Behaviol On a side-by-side comparison there are clear differences between the trade marks. I find that a total impression of resemblance does not emerge from a comparison made in that manner. Section 10 of the Act defines a ‘deceptively similar’ trade mark 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. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[4] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[5] In other words, the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer is likely to lead to confusion as to the origin of the goods.[6] Accordingly, an allowance is made for imperfect recollection of the trade marks.[7] The impression comes from the trade marks in their entirety,[8] and is informed by the look, sound and ideas conveyed by the trade marks.[9][4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J). [5] Ibid.[6] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).[7] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).[8] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).[9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).