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

1. 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’)

2. 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).

3. The Opponent filed a Notice of Intention to Oppose on 23 January 2023.

4. On 7 February 2023 this Office wrote to the Opponent finding no circumstances engaging s 38 and refused to revoke the Application.

5. 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.  .

6. 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.

7. 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

8. 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 of those grounds.[1]  The standard of proof is the civil standard of the balance of probabilities[2]  and the date at which the rights of the parties are to be determined is 21 June 2022, being both the filing date and priority date of the Trade Mark (‘Relevant Date’).

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Section 44

9. Section 44(1) of the Act 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.

10. The SGP cites trade mark registration 2154715 (‘Registration’) as the basis for s 44, details of which follow:

Trade mark no.	Trade mark	Specification	Priority date
2154715	Class 9: Software for playing video, computer and online games; applications for mobile phones, tablet computers and smart phones in the form of downloadable video games; downloadable digital recordings and DVDs containing recordings of television shows and movies; downloadable software featuring music and motion pictures sound tracks; protective covers adapted for mobile phones; protective covers adapted for laptops; downloadable ring tones and graphics for mobile phones Class 41: Entertainment services, namely, providing online video games; multimedia publishing of entertainment software for third parties; organizing, conducting and operating video game competitions and tournaments; providing multimedia entertainment programs by television, broadband, wireless and on-line services; entertainment services, namely, providing online and non- downloadable video games; online video gaming services; organization of exhibitions in the field of entertainment, namely in the field of video games; providing online non-downloadable mobile applications for playing games on mobile telephones, handheld computers and tablet computers; providing entertainment and information videos via a website in the field of video games Class 42: Video games development services; computer software development pertaining to entertainment software for third parties; consultation and development services related to data analysis, gamification and/or game design thinking	10 February 2021

1. 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.

2. 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 are

   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

3. I find the Applicant’s Goods to be similar in terms of s 14.

4. 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].

5. The compared marks are:

   Behaviol

6. 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.

7. 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.

8. 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).

9. The Opponent advanced a number of reasons why the marks should be considered deceptively similar, in particular:

   ·that the idea of the marks was the same because the Trade Mark “is clearly a riff on the word ‘BEHAVIOUR’ and contains the root of this word ‘BEHAVE’”;

   ·that although the marks are not identical, they share the common essential feature "BEHAVIO" likely to be recalled by consumers as having a connection with, or being allusion to, the word "BEHAVIOUR";

   ·the marks sound similar given the recognized tendency of persons using the English language to slur the termination of words[10]; and

   ·imperfect recollection.

   [10] London Lubricants (1924) 42 RPC 264 at [279].

10. In my assessment, the stylization of the mark of the Registration will not be relevant in all presentations to a consumer.  However, to the extent that the terms BEHAVIOUR and BEHAVIOL show differences in spelling and length, the stylization tends to distract the eye from those differences.  The key issue here is imperfect recollection of terms having no meaning, either at all, or in connection with the common goods.  This is not a case where the search for an essential and distinguishing feature of the Trade Mark is illuminating.  Nonetheless, some weight must be placed on the common, formative, letters and their impact on the mind and memory of a consumer which in this case is drawn from a broad, non-specialist market. I find that there is a real and tangible danger of confusion and for that reason find deceptive similarity.

11. Finally, having regard to the evidence and in particular the Jayasuriya Declaration, there is nothing to indicate that either of s 44(3) or (4) should apply since there is no evidence of concurrent or other use of the Trade Mark by the Applicant.

12. 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

13. 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.

14. 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

15. 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 Lyons

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    25 September 2024