Betcloud Holdings Pty Ltd
[2022] ATMO 212
•5 December 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 2235432 (classes 35, 38 and 42) betcloud and 2238971 (class 41) betcloud NEXT LEVEL WAGERING TECHNOLOGY with device and trade mark registration number 2208084 (classes 35, 38 and 42) betcloud NEXT LEVEL WAGERING TECHNOLOGY with device - all in the name of Betcloud Holdings Pty Ltd.
Delegate: | Timothy Brown |
Representation: | Applicant: Peter Creighton-Selvay of Counsel instructed by Harwood Andrews. |
Decision: | 2022 ATMO 212 Trade Marks Act 1995 (Cth) – sections 38 and 84A – whether to revoke acceptance and registration – not reasonable in all circumstances to revoke acceptance and registration. |
Background
This decision concerns the proposed revocation of acceptance under section 38 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) of trade mark applications 2235432 and 2238971 (‘Trade Mark Applications’) and the proposed revocation of registration under s 84A of trade mark registration 2208084 (‘Trade Mark Registration’). Betcloud Holdings Pty Ltd (‘Owner’) is the applicant of the Trade Mark Applications and owner the Trade Mark Registration, the relevant details of which are reproduced below:
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Applications
Trade Mark Number: 2235432
Trade Mark: betcloud (‘Application 2235432’)
Priority Date: 17 December 2021
Specification: See Annexure A
Trade Mark Number: 2238971
Trade Mark: (‘Application 2238971’)
Priority Date: 23 December 2021
Specification: Class 41: providing event wagering, betting and gambling services that facilitate event wagering, betting and gambling service providers excluding the provision of event wagering, betting and gambling facilities
Trade Mark Registration
Trade Mark Number: 2208084
Trade Mark: (‘Registration 2208084’)
Priority Date: 10 September 2021
Specification: See Annexure B
(Collectively, ‘Trade Marks’)
The applications to register the Trade Marks were examined as required by s 31 of the Act. No grounds for rejection were identified during examination. The Trade Mark Registration was entered onto the Register of Trade Marks on 20 April 2022. Application 2235432 was accepted on 10 January 2022 and Application 2238971 on accepted 7 February 2022.
On 31 May 2022 a Delegate of the Registrar of Trade Marks issued notices proposing to revoke registration of the Trade Mark registration pursuant to s 84A and acceptance of the Trade Mark Applications pursuant to s 38 of the Act (‘Revocation Notices’). The basis for the proposed revocations was a potential ground for rejection under s 44 of the Act. The notices relevantly stated:
Your trade mark is similar to earlier trade mark 2111103 because the earlier mark consists entirely of the words CLOUDBET which closely resembles the essential identifying feature of your mark, BETCLOUD.
Whilst I note the differences in the marks, being the reversal of word order, this is not sufficient to avoid a real and tangible risk for confusion amongst consumers. BETCLOUD and CLOUDBET give similar overall impressions that are likely to give rise to a real and tangible risk for confusion amongst consumers, in the context of the services claimed by both marks.
…
Given the similarity of the trade marks and the claims, there is a risk that consumers would be confused as to the trade origin of goods or services bearing those marks. Therefore, a Section 44 ground for rejection should have been raised against your mark at examination.
In view of all the circumstances described above a Section 44 ground for rejection should have been raised against your mark at examination and having taken into account all the circumstances, I consider it reasonable to revoke the acceptance in accordance with s38 of the Trade Marks Act 1995 ('the Act').
On the 30 June 2022, the Owner requested to be heard on the proposed revocations. Prior to the scheduled hearing, the Owner filed the following material for consideration:
Declaration of Steven Louis Bolton, Director of the Owner, made on 26 August 2022 (‘Bolton Declaration’) with Exhibits SB 01 to SB 11.
Declaration of Laura Anne Bentley, lawyer of Hardwood Andrews and representative for the Owner, made on 26 August 2022 (‘Bentley Declaration’) with Exhibits LB 01 to LB 07.
As a delegate of the Registrar of Trade Marks, I heard the matter on 5 September 2022. The Owner was represented by Mr Peter Creighton-Selvay of Counsel, instructed by Michelle Dowdle and Laura Bentley of Hardwood Andrews.
Evidence
Mr Bolton declares that the Owner is a start-up business established around April 2021. The Owner is engaged in the creation, design and development of software applications for use in the provision of betting, gambling, lotteries and event wagering services, as well as digital services enabling bookmakers to analyse and share market data to track and predict consumer behaviour and trends in these markets.
In addition to the Trade Mark Applications and Trade Mark Registration, the Owner is also owns the following trade marks:
| Trade Mark No. | Trade Mark | Priority Date | Class | Status |
| 2235324 | 17 December 2021 | 9 | Registered | |
| 2247058 | betcloud | 4 February 2022 | 41 | Pending: Under Examination |
| 2247059 | betcloud | 15 February 2022 | 9 | Pending: Under Examination |
The Owner has yet to launch a website or any social media accounts in relation to its business as these steps await further business developments, including regulatory approval from Racing Victoria.
Mr Bolton declares that the Early Acceptance Notices issued by IP Australia provided the Owner with commercial incentive to invest further in the Owner’s business and proceed with its capital raising and investment activities. Exhibited to the Bolton Declaration is an overview of the Owner’s capital structure, the Owner’s profit and loss statement for the 2020/21 and 2021/22 financial years, and examples of the Owner’s promotional material featuring the Trade Marks distributed to prospective investors from September 2021.
Mr Bolton also explains that the Owner was aware of Trade Mark Registration 2111103, ‘CLOUDBET’, which was advertised for opposition on 17 March 2022. However, because it had not been cited by IP Australia during the examination of the Trade Mark Registration, the Owner instructed its legal representatives not to oppose registration of the trade mark.
Relevant Provisions
Section 84A relevantly provides:
Registration may be revoked
Power to revoke
(1) The Registrar may revoke the registration of a trade mark if he or she is satisfied that:
(a) the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the registration, taking account of all the circumstances.
(2) The circumstances to be taken into account under paragraph (1)(a) include the following:
(a) any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;
(b) any relevant obligations of Australia under an international agreement;
(c) any special circumstances making it appropriate:
(i)not to register the trade mark; or
(ii)to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.
(3) The circumstances to be taken into account under paragraph (1)(b) include the following:
(a) any use that has been made of the trade mark;
(b) any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;
(c) other action taken in relation to the trade mark as a registered trade mark;
(d) any special circumstances making it appropriate:
(i)to revoke the registration; or
(ii)not to revoke the registration.
Section 38 relevantly provides:
Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b)it is reasonable to revoke the acceptance, taking account of all the circumstances.
Section 84A affords the Registrar with the discretion to revoke registration of a trade mark registration if satisfied that the registration in question should not have been registered, taking into account all the circumstances that existed when the trade mark became registered, and it is reasonable to revoke registration, taking into account all circumstances. The effect of revocation of registration is that the Act applies as if the trade mark had never been registered.[2] Consequently, the Registrar may revoke the registration of a trade mark and then revoke acceptance of the application so it may be re-examined under s 31.[3]
[2] Trade Marks Act 1995 (Cth) s 84C(2).
[3] Ibid s 84C(5).
Section 38 provides the Registrar with discretionary power to revoke acceptance of a trade mark application if satisfied that the application in question should not have been accepted and it is reasonable to revoke acceptance, taking into account all the circumstances.
Both provisions set out a two limbed test. Firstly, I must be satisfied that the trade mark application or registration should not have been accepted or registered considering all the circumstances that existed at that time. Secondly, I must be satisfied that is it reasonable to revoke acceptance or registration taking into account all of the circumstances.
The Owner contends that the proposed revocation amounts to a mere difference of opinion, noting that no administrative error was identified in the Revocation Notices, the earlier trade mark was expressly considered by examiner, and that the similarity of the trade marks was previously considered by delegates of the Registrar in relation to previous trade marks filed by the Owner that contain the words ‘Betcloud’.
At the hearing, the Owner referred to Re Bobart[4] wherein the Delegate observed:
But an owner can quite properly assume that the Registrar will only register trade marks where there are no prior rights and, short of bad faith, can quite properly expect that their registration is valid. Thus, following revocation, the rights, which a good faith owner could justly assume were presumptively valid, are undone. This is not a step that the Registrar can take lightly.
…
Thus the structure of the section itself, its context within the Act, the nature of the rights affected, and the effect of revocation all require that great caution be used in the Registrar’s exercise of this discretion.[5]
[4] [2010] ATMO 43 (Hearing Officer Arblaster).
[5] Ibid [17]-[20].
The Owner’s emphasis on the severity of both revocation of acceptance and revocation of registration is well established. The proposed revocation not only needs to be reasonable, but the reasons for it must also be more than a mere difference of opinion as to the registrability of the trade mark. As observed by the delegate in Aceto Balsamico Del Duca di Adriano Grosoli S.r.l[6]:
Clearly revocation on the basis of a change of opinion is to be avoided at all costs. A delegate of the Registrar has already exercised their discretion to accept and, in addition, the validity of all acceptances would be more tenuous if they could be overturned so readily.[7]
[6] [2008] ATMO 2, [33] (Hearing Officer Rachel Dunn).
[7] Ibid [33].
Revocation of registration, in particular, has retrospective repercussions of the statutory rights of the registered trade mark owner and should be approached by the Registrar with great caution.
Discussion
Section 44
Section 44 is the basis for both the proposed revocation of Trade Mark Registration and the proposed revocation of Trade Mark Applications. Section 44 relevantly provides:
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.
The Revocation Notices identified the following trade mark registration as the basis for the proposed ground for rejection under s 44:
Trade Mark Number: 2111103
Trade Mark: CLOUDBET (‘Earlier Trade Mark’)
Priority Date: 17 February 2020
Owner: Game Theory Soapbox Limited
Specification: See Annexure C (‘Earlier Trade Mark’s Services’)
The examination records shows that the Examiner extracted and considered the Earlier Trade Mark during examination of each of the applications to register the Trade Marks.
To establish the existence of a potential s 44 ground for rejecting the applications to register the Trade Marks, the following requirements must be satisfied:
The Earlier Trade Mark has a priority date which is earlier than that of the Trade Marks;
The Earlier Trade Mark is held in the name of a person other than the Owner;
The Earlier Trade Mark is substantially identical with, or deceptively similar to, the Trade Marks;
The Earlier Trade Mark is in respect of similar services to the services of the Trade Marks; and
There had been insufficient prior use or honest concurrent use of the Trade Marks and no other circumstances existed that would warrant acceptance of the Trade Marks.
The priority date of the Earlier Trade Mark is 17 February 2020, which is earlier than the priority dates of the Trade Marks. The Earlier Trade Mark is also held in the name of a person other than the Owner.
The Owner does not contest the conflicts identified in the Revocation Notices between the Earlier Trade Mark’s Services and services specified in the Trade Marks. The Earlier Trade Mark’s Services include gambling and betting services in Class 41, which are the same as all of the services specified in Application 2238971. I am also satisfied that the Earlier Trade Mark’s Services in Class 38, which include broad claims for online communication services, are the same as, or would include, all of the services specified in Class 38 of Application 2235432 and the Trade Mark Registration.
Comparison of Trade Marks
In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell & Esso’) Windeyer J explained the test for determining substantial identity:
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.[8]
[8] [1963] HCA 66; (1963) 109 CLR 407, [12].
I do not consider the Earlier Trade Mark to be substantially identical to any of the Trade Marks. When considered side by side the reversal of the words is likely to be noted and significant enough for there not to be an overall impression of resemblance between the Earlier Trade Mark and the Trade Marks. I also note that the additional elements present in the Trade Mark Registration and Application 2238971 further differentiate them from the Earlier Trade Mark.
Section 10 of the Act defines ‘deceptively similar’ as:
For the purposes of this Act, 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.
The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell & Esso:
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 [mark].[9]
[9] [1963] HCA 66, [13].
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[10] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[11]
[10] 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).
[11] Ibid.
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[12] Accordingly, an allowance is made for imperfect recollection of the trade marks.[13] The impression comes from the trade marks in their entirety,[14] and is informed by the look, sound and ideas conveyed by the trade marks.[15]
[12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[13] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[14] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[15] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
The Owner submits that the Earlier Trade Mark is not deceptively similar to the Trade Marks for the following reasons:
The word ‘CLOUDBET’ is inverted in the Trade Marks, to ‘BETCLOUD’.
The reversal of word order shifts the emphasis at the start of each trade mark.
The inversion is further emphasised with the bolding of ‘bet’ in the Trade Mark Registration and Application 2238971.
The Trade Mark Registration and Application 2238971 include a prominent device element and the words ‘NEXT LEVEL WAGERING TECHNOLOGY’. As a whole, these trade marks are readily distinguishable from the Earlier Trade Mark, which is comprised solely of words.
Numerous other trade marks feature the components ‘BET’ and ‘CLOUD’.
Consumers of the relevant services, being communication, gambling and betting services, are careful and discerning, such that the risk of confusion is diminished.
The Owner has also referred me to a number of decisions featuring trade marks determined not be deceptively similar, despite the only difference between the trade marks being the addition or omission of words or letters.[16] Illustrative of these decisions is the Full Federal Court’s decision in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[17], in which the trade marks ‘WICKED” and ‘WICKED SISTER’ were found not to be deceptively similar.[18]
[16] See: (1999) 48 IPR 593; (2005) 64 IPR 495; (2009) 83 IPR 423; (2009) 83 IPR 136; (2013) 308 ALR 1;.
[17] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
[18] Ibid [94]-[123].
Although all these decisions concern issues of deceptive similarity, I do not consider them particularly analogous. The key issue in the current matter is the impact that the reversal of words has on the impressions of trade marks. This issue has been the subject of a number of decisions by this office. For example, Woolworths Limited v Flyers Group Plc[19] involved a comparison between the following trade marks:
‘PINK SUGAR’
[19] [2013] ATMO 86 (Hearing Officer Murray).
The Delegate found that the trade marks were deceptively similar and noted:
The doctrine of imperfect recollection strongly supports the argument that the Opposed Trade Mark could very easily be recalled as "PINK SUGAR" rather than "SUGAR PINK", particularly in circumstances where in spoken English, adjectives are used before nouns. The Opposed Trade Mark is therefore likely to be recalled as "PINK SUGAR" and confused with the Opponent's "PINK SUGAR" mark.[20]
[20] Ibid [11].
The decision of Chris Staats v Click Loans Pty Ltd[21] involved a comparison between the following trade marks:
‘LoanClick’
[21] [2018] ATMO 116 (Hearing Officer Worth).
The Delegate considered the trade marks to be deceptively similar, noting that the order that the words appeared in the trade mark did not affect the idea conveyed by the trade marks.[22]
[22] Ibid [19].
In American Airlines, Inc v Platinum Freight Management Pty Ltd[23] the Delegate considered the similarity of the trade mark ‘PLATINUM ADVANTAGE’ to, amongst other trade marks, ‘AADVANATGE PLATINUM’. In deciding that the trade marks were deceptively similar the Delegate observed:
In this case the word order makes no ostensible difference to the “idea” of the trade mark. The compared trade marks are not akin to the expressions “crazy animal” and “animal crazy” where the word reversal leads to a difference in meaning. Nor are they akin to the combination –one way and then the other – of two nouns such as “dog” and “box” where one combination has a meaning and the other has none.[24]
[23] [2017] ATMO 51 (Hearing Officer Lyons).
[24] Ibid [50].
A common theme between all of these decisions was whether the reversal of the words resulted in a discernible change in the ideas conveyed by the trade marks.
In the matter before me the Earlier Trade Mark comprises solely of the words ‘cloud’ and ‘bet’. These are same words which comprise Application 2235432, ‘betcloud’. As with the decisions referenced earlier, the reversal of the words does not lead to two distinct ideas. In my view, ‘CLOUDBET’ and ‘betcloud’ both convey the idea of betting facilitated by cloud computing. Although there is some degree of visual and aural difference that stems from the reversal of the words, taking into account the possibility of the trade marks being imperfectly recollected, I am satisfied that there would be a real and tangible danger of confusion between the Application 2235432 and the Earlier Trade Mark.
Registration 2208084 and Application 2238971 also comprise the words ‘betcloud’ but include the phrase ‘NEXT LEVEL WAGERING TECHNOLOGY’ and a prominent device above the word ‘betcloud’. The ‘bet’ element of ‘betcloud’ is also bolded. In my view, these additional features do not significantly differentiate the trade marks. The device element resembles a cloud, and although prominent, it also reinforces idea of cloud computing present in both the Trade Marks and the Earlier Trade Mark. Similarly, there is a laudatory element to the slogan ‘NEXT LEVEL WAGGERING ACTIVITY’ that emphasises the ‘bet’ aspect of the Trade Marks. These differences do not outweigh the similarity derived from the words ‘CLOUDBET’ and ‘betcloud’.
Bearing all of the above factors in mind, I am satisfied that the Earlier Trade Mark is deceptively similar to the each of the Trade Marks.
Section 44(3) and 44(4) of the Act enable a trade mark, which would otherwise have been rejected under section 44(2), to be registered due to honest concurrent use, prior use or other circumstances. The Owner did not indicate that they would be relying on the provisions of sections 44(3) and 44(4), and, for completeness, I do not see any basis for the application of these sections.
I acknowledge that the Earlier Trade Mark was explicitly considered by the Examiner, and that deceptive similarity is an issue on which reasonable minds may differ. However, I am satisfied having considered all the circumstances that existed when the Trade Marks were accepted or entered into the register that the Trade Mark Applications should not have been accepted and the Trade Mark Registration should not have been registered. I now turn to the second limb of the tests, namely whether it is reasonable in all the circumstances to revoke acceptance or registration of the Trade Marks.
Reasonable in all circumstances to revoke acceptance/registration
Sections 38(1)(b) and 84A(1)(b) require me to be satisfied that revocation is reasonable, taking into account all the circumstances. Section 84A(3) includes a list of circumstances that may be considered, which include any use that has been made of the registered trade mark, legal proceedings involving the registered trade mark and/or any special circumstances. This list is not exhaustive.
The Owner contends that it would not be reasonable to revoke the Trade Marks for the following reasons:
No administrative oversight was involved in the acceptance of the Trade Mark Applications and the registration of the Trade Mark Registration. The Earlier Trade Mark was considered in the course of examination of each of the Trade Marks.
The Bolton Declaration demonstrates that the Owner acted prudently in dealing with its Trade Marks.
The Owner has demonstrated concrete plans with regard to its use of the Trade Marks, and has undertaken these plans based on the acceptance of the Trade Marks.
The Owner will incur substantial commercial prejudice if the Trade Marks are now revoked.
There has been no objection or opposition from the owner of the Earlier Trade Mark.
There is no basis for revoking the Trade Marks in relation to classes 35 or 42.
The evidence demonstrates that the Owner acted prudently in dealing with the Trade Marks. It is apparent from the Bolton Declaration that the Owner was in contact with its legal representation throughout the application process and was cognisant of the Earlier Trade Mark. Board meetings followed the acceptance of each of the Trade Mark Applications and the registration of the Trade Mark Registration. While investment occurred prior to acceptance of the Trade Marks, there was a conscious commitment to proceed with the adoption of the Trade Marks after notice of acceptance of the Trade Marks. This commitment was made more concrete following the registration of the Trade Mark Registration.
At present there has only been limited use of the Trade Marks following their acceptance. This use is in the form of promotional material, which Mr Bolton declares was distributed to prospective investors in the course of capital raising activities. However, a significant amount of capital has been raised in relation to the development of the Owner’s business, which will offer products and services with reference to the Trade Marks. The Owner’s activities disclosed in the Bolton Declaration also indicate that it has concrete plans with respect to the long term use of the Trade Marks. For example, the Owner explains that aspects of its prospective business are awaiting regulatory approval which it is in the process of acquiring.
The Owner submits that it will incur substantial commercial losses if the Trade Marks were to now be revoked. Relevantly, the acceptance and registration of the Trade Marks were incentive for the Owner to seek out further investors and its preliminary business development activities in attracting potential investors have been performed with reference to the Trade Marks.
The Owner also submits that its options regarding the Earlier Trade Mark are more limited due to the timing of the Revocation Notices. The Earlier Trade Mark is now registered and the Owner’s opportunity to oppose the acceptance of the Earlier Trade Mark has passed. As noted earlier in this decision, the Owner decided not to oppose the registration of the Earlier Trade Mark because it was not raised as a barrier to acceptance of the Trade Marks.
I note that no opposition was filed by the owner of the Earlier Trade Mark. In the case of the Trade Mark Registration, the owner of the Earlier Trade Mark did not oppose registration of the trade mark during the opposition period. Furthermore, as of the date of this decision, no opposition has been filed in relation to either of the Trade Mark Applications. The revocation processes are not intended to be a de facto opposition process, nonetheless, the absence of any objection from the owner of the Earlier Trade Mark is a factor relevant to whether it is reasonable to revoke acceptance or registration.
Having considered all the circumstances, I am satisfied that there are several factors that weigh against the proposed revocations. The Owner has invested heavily in its business based on the acceptance of the Trade Mark Applications and, in the case of the Trade Mark Registration, the assumption that it had been validly registered. While use of the Trade Marks has been limited, the Owner has engaged in preliminary promotional activities using the Trade Marks. Considering all of the circumstances, I am not satisfied that it is reasonable to revoke acceptance of the Trade Mark Applications or registration of the Trade Mark Registration given the factors discussed above.
Decision
I have found that the Trade Mark Applications should not have been accepted and that the Trade Mark Registration should not have been registered. However, taking into account all of the considerations discussed above, I am not satisfied it is reasonable to revoke the acceptances of the Trade Mark Applications or the registration of the Trade Mark Registration.
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
5 December 2022
Annexure A
Specification for Trade Mark Number 2235432
Class 35: Retail services; Retailing of goods (by any means); Online retail services; Intermediary business services relating to the commercialisation of goods; Distribution of goods for advertising purposes; Promotion and sale of naming and product supply rights (for others); Business management; Collecting business information; Compilation of business information; Commercial information services provided by access to a computer database; Computerised business information services; Computerised business information retrieval; Business consultancy relating to the administration of information technology; Compilation of information relating to information technology; Business data analysis; Business data analysis services; Business data verification; Collection of data; Collation of data; Compilation of business data; Maintaining data in databases; Compilation of information into computer databases; Computerised data processing; Computerised data verification; Data cleansing services (correcting or removing inaccurate or incomplete data from databases); Data processing for the collection of data for business purposes; Data processing verification; Data retrieval; Data scrubbing services (data management services); Data search in computer files (for others); Data transcription; Computerised database management; Database management; Updating and maintenance of data in computer databases; Business project management; Logistics services (business management and organization of facilities and resources); Marketing in the framework of software publishing; Preparation of business reports; Preparation of commercial reports
Class 38:Communication network consultancy; Communication by computer; Computer communications for the transmission of information; Communications services for accessing a database; Communication services over computer networks; Computer data transmission services; Computerised data communications; Computer intercommunication; Data broadcasting services; Consultancy services relating to data communications; Data communication services; Data transmission for others; Digital transmission services; Transmission of computerised data; Data communication by electronic means; Communication services for the electronic transmission of data; Electronic data communications; Electronic data exchange services; Electronic data interchange services; Electronic file transfer; Electronic transmission of messages; Message boards; Providing access to computer networks; Providing access to online computer databases; Providing access to databases; Providing user access to a global computer network and online sites containing information on a wide range of topics; Provision of communications between computers; Provision of electronic data links; Provision of communications information; Streaming of data; Telecommunications security (providing secure connections and access including to computers and a global computer network); Transmission of messages by computer; Web portal services (providing user access to a global computer network)
Class 42: Computer software development; Computer software programming services; Computer software engineering; Software as a service (SaaS); Hosting of software as a service (SaaS); Writing of computer software; Database design; Online provision of web-based applications (non-downloadable); Software creation; Computer support services (programming and software installation, repair and maintenance services); Research relating to computers; Research relating to technology; Development of systems for the processing of data; Development of systems for the storage of data; Development of systems for the transmission of data; Computer software consultancy; Computer programming consultancy; Computer technology consultancy; Information technology (IT) consultancy; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Information technology services provided on an outsourcing basis; Web portal services (designing or hosting); Conversion of computer programs and data, other than physical conversion; Conversion of data or documents from physical to electronic media; Software development in the framework of software publishing; Preparation of technical reports; Preparation of technical manuals; Preparation of reports relating to computer programs; Providing information, including online, about design and development of computer hardware and software
Annexure B
Specification for Trade Mark Registration Number 2208084
Class 35: Retail services; Retailing of goods (by any means); Online retail services; Intermediary business services relating to the commercialisation of goods; Distribution of goods for advertising purposes; Promotion and sale of naming and product supply rights (for others); Business management; Collecting business information; Compilation of commercial information; Commercial information services provided by access to a computer database; Computerised business information services; Computerised business information retrieval; Business consultancy relating to the administration of information technology; Compilation of information relating to information technology; Business data analysis; Business data analysis services; Business data verification; Collection of data; Collation of data; Compilation of business information; Compilation of business data; Maintaining data in databases; Compilation of information into computer databases; Computerised data verification; Data cleansing services (correcting or removing inaccurate or incomplete data from databases); Computerised data processing; Data processing for the collection of data for business purposes; Data processing verification; Data retrieval; Data scrubbing services (data management services); Data search in computer files (for others); Data transcription; Computerised database management; Database management; Updating and maintenance of data in computer databases; Business project management; Logistics services (business management and organization of facilities and resources); Marketing in the framework of software publishing; Preparation of business reports; Preparation of commercial reports
Class 38: Communication by computer; Communication network consultancy; Computer communications for the transmission of information; Communications services for accessing a database; Communication services over computer networks; Computer intercommunication; Data broadcasting services; Computerised data communications; Consultancy services relating to data communications; Data communication services; Computer data transmission services; Data transmission for others; Digital transmission services; Transmission of computerised data; Data communication by electronic means; Communication services for the electronic transmission of data; Electronic data communications; Electronic data exchange services; Electronic data interchange services; Electronic file transfer; Message boards; Providing access to online computer databases; Providing access to computer networks; Providing access to databases; Providing user access to a global computer network and online sites containing information on a wide range of topics; Communication services between computers; Provision of communications between computers; Provision of electronic data links; Provision of communications information; Streaming of data; Telecommunications security (providing secure connections and access including to computers and a global computer network); Electronic transmission of messages; Transmission of messages by computer; Web portal services (providing user access to a global computer network)
Class 42: Computer software development; Computer software programming services; Computer software engineering; Software as a service (SaaS); Hosting of software as a service (SaaS); Writing of computer software; Database design; Online provision of web-based applications (non-downloadable); Online provision of web-based software (non-downloadable); Software creation; Computer support services (programming and software installation, repair and maintenance services); Research relating to computer programming; Research relating to technology; Development of systems for the processing of data; Development of systems for the transmission of data; Development of systems for the storage of data; Computer software consultancy; Computer programming consultancy; Computer technology consultancy; Information technology (IT) consultancy; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Information technology services provided on an outsourcing basis; Web portal services (designing or hosting); Conversion of computer programs and data, other than physical conversion; Conversion of data or documents from physical to electronic media; Software development in the framework of software publishing; Preparation of technical manuals; Preparation of technical reports; Preparation of reports relating to computer programs; Providing information, including online, about design and development of computer hardware and software
Annexure C
Specification for Trade Mark Registration 2111103
Class 38: Providing access to gambling, betting and gaming websites on the internet; streaming of sports and entertainment; streaming of audio, visual and audio-visual material via a global computer network; streaming audio and video material on the internet; streaming of video material on the internet; streaming of audio material on the internet; video, audio and television streaming services; streaming of television over the internet; streaming of data; data streaming; data streaming services; broadcasting services; television broadcasting; video broadcasting; audio broadcasting; internet broadcasting services; data broadcasting services; communication by online blogs; online communications services; provision of user access to online software via a global computer network; online messaging services; providing access to multimedia content online; providing access to online computer databases; providing an online interactive bulletin board; providing online chat rooms and electronic bulletin boards; providing online chatrooms for the transmission of messages, comments and multimedia content among users; providing online facilities for realtime interaction with other computer users; providing online forums; providing online forums for communication in the field of gaming, betting and gambling; providing user access to a global computer network and online sites containing information on a wide range of topics including gaming, betting and gambling; provision of telecommunication access to video and audio content provided via an online video-on-demand service; transfer of information and data via online services and the internet; providing access to gambling and gaming websites on the internet; consultancy, information and advisory services relating to the aforesaid
Class 41: Gambling, online gambling services, providing gambling, gaming and betting facilities, betting, gaming and gambling services, betting exchange services, sports betting services, online betting services, providing entertainment via a website, consultancy, information and advisory services relating to the aforesaid
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