Bluekee Pty Limited v Bupa HI Pty Ltd

[2024] ATMO 162

TRADE MARKS ACT 1995

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

Re:Opposition by Bluekee Pty Limited to registration of trade mark application numbers 2232049 BLUEKEY and 2232050 BLUEKEY (figurative) - both in class 45 - in the name of Bupa HI Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Robert Clark of Counsel, instructed by Silberstein & Associates Applicant: No appearance
Decision:	2024 ATMO 162 Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 ground of opposition pressed – ground not established – trade marks to proceed to registration

Background

1.     On 29 November 2021, Bupa HI Pty Ltd (‘Applicant’) filed applications for the trade marks detailed below:

Trade Mark Number (collectively ‘Applications’)	Trade Mark (collectively ‘Trade Marks’)	Services
2232049	BLUEKEY	Class 45: Digital identity access rights management; verification of customer's digital identity; identity verification; personal information access rights management; providing authentication of personal identification information (‘Applicant’s Services’)
2232050

2. The Applications were examined in accordance with s 31 of the Trade Marks Act 1995 (Cth)[1] and accepted for registration.  Following the advertisement of acceptance of the Applications, Bluekee Pty Limited (‘Opponent’) opposed registration of the Trade Marks pursuant to s 52, filing a Notice of Intention to Oppose in each case on 27 June 2022 followed by its Statements of Grounds and Particulars (‘SGPs’) on 27 July 2022.  On 18 August 2022, the Applicant filed a Notice of Intention to Defend each of the oppositions.

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.     The Opponent filed its evidence in support of the oppositions (‘EIS’) on 21 November 2021. In each case, the Opponent’s EIS consists of a declaration of Dr Philip Bos, co-founder and CEO of the Opponent, made on 21 November 2022 with Exhibits A-G.  These declarations are identical but for the particulars of the opposed mark and will herein after be referred to as ‘Bos’.  No other evidence was filed.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  The Opponent requested an oral hearing and the Applicant did not ask to be heard.  I heard this matter as a delegate of the Registrar of Trade Marks on 26 July 2024 via video conference.  Prior to the hearing, the Opponent filed a written summary of its submissions and at the hearing, Mr Robert Clark of Counsel, instructed by Robert Silberstein and Mina Hyun of Silberstein & Associates, made oral submissions on the Opponent’s behalf.  I make this decision based on the aforementioned materials and oral and written submissions of the Opponent.

Grounds of opposition, onus and standard of proof

5.     In its SGPs, the Opponent nominated grounds of opposition under ss 42(b), 43 and 58.  In the Opponent’s written submissions and at the hearing, the Opponent advised it was only pursuing the opposition under s 58.  I treat the grounds of opposition under ss 42(b) and 43 as abandoned.

6.     The Opponent bears the onus of establishing its ground of opposition.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 29 November 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Marks.

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

[3] Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

Summary of Opponent’s evidence

7.     In 2020, Dr Bos’ friend and colleague (and ultimately co-founder of the Opponent), Mr Balint, was the subject of cyber security fraud.  Dr Bos had a long career as a security professional and the two men commenced discussions about developing a new product/service to combat cyber fraud.  In mid-2020, Dr Bos and Mr Balint engaged Deloitte to advise on the market and needs surrounding cyber security fraud.

8.     By November 2020, Dr Bos and Mr Balint had adopted the name BlueKee for their proposed cyber fraud business (‘BlueKee Project’) although variations such as BluKee and composite marks were also used.  They started approaching people about their BlueKee Project to attract ‘human and cash capital’.  In particular, Mr Balint and Dr Bos discussed the BlueKee Project and held meetings in late 2020 with Mr Neill Miller, a ‘sophisticated investor and mentor for start-up companies, with 40 years’ experience growing companies including in the IT sector’.  Emails from November and December 2020 to/from Mr Miller referring to the ‘BluKee Project’ are provided.

9.     Following the meetings with Mr Miller, Dr Bos and Mr Balint started developing technology, having discussions and giving about 30 presentations on the BlueKee Project to raise capital and garner feedback.  By mid-2021, Bos attests that capital had been raised in exchange for equity and product development had advanced considerably.

10.     In around July 2021, Dr Bos and Mr Balint received Deloitte’s ‘White Paper’ on cyber security and the needs to combat cyber fraud.  A summary of this White Pater was included in Dr Bos and Mr Balint’s BlueKee presentations from 4 August 2021, a copy of which is annexed to Bos.

11.     On 17 August 2021, the Opponent was incorporated and the following ‘bluekee’ domain names were registered throughout 2021 before the Relevant Date:

·     bluekee.me (registered 30/01/2021)

·     bluekee.io (registered 8/02/2021)

·     bluekee.tech (registered 6/09/2021)

·     bluekee.net (registered 6/09/2021)

·     bluekee.online (registered 6/09/2021)

·     bluekey.com (registered 6/09/2021)

·     bluekey.net (registered 6/09/2021) 

·     bluekey.com.au (registered 6/09/2021)   

12.     On 6 February 2022, the Opponent launched a website at In August 2022, the Opponent secured its first customer, Securcey and attended the ASIAL Security Exhibition and Conference where they exhibited with Securcey.  At the time of Bos, the Opponent was in advanced discussions with 21 other potential customers and expected at least 10 of those customers to adopt its BlueKee offering in the next 3-6 months.

13.     In around September 2022, the Opponent’s BlueKee application software (‘app’) became available on the AppStore and Google Play.  Exhibit A to Bos describes the app as protecting customers and businesses from fraud and scammers by verifying the identity of legitimate parties.

Discussion

Section 58

14.     Section 58 provides that registration of a trade mark may be opposed on the grounds that the applicant is not the owner of the mark.

15.     To succeed on this ground of opposition, the Opponent must establish that:

i.the mark/s relied on by the Opponent are identical or substantially identical to the Trade Marks;[4]

ii.the respective services for which the trade marks have been or are to be used are the ‘same kind of thing’;[5] and

iii.the Opponent (or another party) has the earlier claim to ownership based on authorship and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.[6]

[4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J).

[5] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).

[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

16.     In its SGPs, the Opponent claims it has continuously used the mark BLUEKEE and versions of it in word or logo form (shown below) since at least mid-November 2020 in respect of the same or similar services to the Applicant’s Services.

Opponent’s Marks

(‘BlueKee Marks’)

17.            

18.     The Opponent acknowledges that it was not offering goods or services under its BLUEKEE Marks before the Relevant Date but submits that it had nevertheless used the BLUEKEE Marks for digital identity management and verification services, which are  services that are the same (or at least the same kind of thing) as the Applicant’s Services since at least mid-November 2020. 

19.     In the circumstances, it is appropriate to first consider whether the activities undertaken by the Opponent before the Relevant Date constitute use of a trade mark in the course of trade.

Use as a trade mark before the Relevant Date

20.     In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2):

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[7]

[7] [1984] HCA 73, (1984) 156 CLR 414, 432-433.

21.     The Opponent notes that the use as a trade mark need not be substantial and even a single use will be sufficient.[8]  Further, a sign may be used as a trade mark in the course of trade prior to the goods being in existence or services being offered to customers provided that there is an existing intention to offer to supply goods or services.[9]  In New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd, Gummow J explained that the phrase ‘in the course of trade’ is ‘ wide enough to cover steps necessary for the production of goods, as well as the actual placement of goods on the market’.[10]   The Opponent also refers to Gummow J’s decision in Buying Systems (Australia) Pty Ltd v Studio SRL[11] (‘Buying Systems’) where obtaining business cards, printing letterhead, arranging advertisements and distributing a promotional brochure about a new magazine were found to be sufficient use of the mark STUDIO for fashion and hairdressing magazines.

[8] Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592, 610 (Jacobs J).

[9] Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939, [117]-[118] and [125] (Katzmann J).

[10] [1989] FCA 124, [58] in the context of a non-use application under s 23 of the Trade Marks Act 1955 (Cth).

[11] (1995) 30 IPR 517; see also Mini Menus Australia Pty Ltd v Mini Menus Pty Ltd [2006] ATMO 17 (Hearing Officer Nancarrow).

22.     The activities of the Opponent before the Relevant Date may be summarised as follows:

i.Engagement of Deloitte to advise on the cyber security market and needs;

ii.Interactions with Mr Miller and other unnamed persons;

iii.Presentations of BlueKee Project;

iv.Raising of capital in mid-2021; and

v.Incorporation of the Opponent in August 2021 and registering domain names.

23.     The engagement of Deloitte in mid-2020 occurred prior to the adoption of the BlueKee Marks and there is no evidence that at that time, the Opponent made reference to its mark BlueKee.

24.     Bos declares that in late 2020, around the time the BlueKee mark was adopted in November 2020, he and Mr Balint started approaching people about their BlueKee Project.  Mr Miller is the only person specifically named as having been approached.  Bos exhibits various emails between Dr Bos and Mr Balint with Mr Miller between 21 November 2020 and 10 December 2020 referring to the ‘discussion of BluKee’.  Mr Balint’s email of 4 December 2020 to Mr Miller states that:

It was great to discuss the BluKee concept with you and get your valuable insights. 

We’ll be in touch as we explore it further. We think some of your contacts could be very helpful to discuss the feasibility of the product’.

25.     Dr Bos continues on 8 December 2020:

Michael and I will build a minimum working product and garner a significant customer or two. Only then will we re-present to you to further your engagement.

26.     It is apparent from these emails that the Opponent is still exploring the possibility of the ‘concept’ and viability of the BlueKee Project.  At this stage, the Opponent had not yet formed the intention to offer goods or services under any of the BlueKee Marks. 

27.     Bos attests that he and Mr Balint were encouraged by their discussions with Mr Miller and gave about 30 presentations on their BlueKee Project seeking feedback and capital.  There are no details provided about to whom these presentations were made, the nature of the discussions or whether any materials referencing the BlueKee Marks were provided.  The Opponent was raising capital and advancing its product but these activities were directed to prospective investors rather than prospective customers.  In my view, Dr Bos and Mr Balint were still in the preparatory stage of the business in seeking feedback and capital without which the project likely would not proceed.

28.     In July 2021, Dr Bos and Mr Balint received Deloitte’s White Paper on cyber security fraud which was incorporated into their BlueKee presentation in August 2021.  The copy of this presentation exhibited to Bos indicates that the product development had ‘advanced considerably’ as claimed by Bos but seems to still be in the preparatory stage in that the presentation refers to the need to test revenue sources with both the consumer and business markets.  There are no details about who received the BlueKee presentation nor whether the purpose of the presentation was still to solicit investment in the BlueKee Project.  It was not until after the Relevant Date that an external shareholder was recorded with the Australian Securities and Investments Commission. 

29.     The incorporation of the Opponent and registering of domain names does not constitute use of the variations of BlueKee as a trade mark.  Further a website was not established at any of the domains until February 2022, the first customer was not secured until August 2022 and the app was not available until September 2022.

30.     In my view, the present situation differs from that in Buying Systems. In that case, having decided on a need for a new magazine in Australia, the opponent had arranged the printing of business cards and letterheads. The opponent then approached potential advertisers with a view to obtaining subscriptions and placing advertisements in its publication. It was able to demonstrate that some potentially interested parties had been informed of the planned new fashion magazine before the relevant date by personal contacts, a business card bearing the mark, and a letter stating the launching date of the first edition of the magazine, which was to be preceded by an extensive promotion. Some of those potentially interested parties had booked advertising in the first edition of the magazine.  Taking into account all those activities, Gummow J found that the opponent had adequately established relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between it and the new magazine.  There had been public commercial use of the mark by introducing it to persons for the purpose of soliciting trade.  In the present case, on my assessment of the evidence, whilst the Opponent had established an intention to use the BlueKey Marks, it had not introduced the mark BlueKee to persons for the purpose of soliciting trade.  All of the steps undertaken by the Opponent prior to the Relevant Date seem to be for the purpose of obtaining investment and not soliciting customers to whom goods or services would be provided. 

31.     As a result of my considerations above, I am not satisfied on my assessment of the evidence that the Opponent has established its ground of opposition under s 58.

Decision and costs

1. The Opponent has not succeeded in establishing its ground of opposition and trade mark applications 2232049 and 2232050 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.

2. Both parties sought an award of costs. As costs generally follow the event, I award costs against the Opponent in respect of trade mark number 2232050 under s 221 in the applicable amounts set out in Schedule 8 of the Regulations. In respect of trade mark number 2232049, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[12]

   [12] [2001] ATMO 78 (Delegate T Williams).

   Tracey Berger
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   3 September 2024

   
   

and Edelman JJ).