Box Inc v Macquarie Telecom Pty Limited

[2017] ATMO 136

TRADE MARKS ACT 1995

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

ReOpposition by Box Inc to registration of trade mark application 1713786 (9, 42) – SIGBOX - in the name of Macquarie Telecom Pty Limited

Delegate:  Robert Wilson

Representation:                  Opponent: Relied on written submissions by AJ Park Intellectual Property

Applicant: Brian Elkington of Adams Pluck Intellectual Property Attorneys

Decision:  2017 ATMO 136

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 60 considered – neither ground established – trade mark to proceed to registration

Background

1.     This decision concerns an opposition brought by Box Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Macquarie Telecom Pty Limited (‘the Applicant’):

Application Number:	1713786
Filing Date:	18 August 2015
Goods and Services:	Class 9: Communication software; Computer software; Computer software (programs); Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Data communications software; Apparatus for controlling the storage of data; Apparatus for data collection; Apparatus for data storage; Apparatus for input of data; Apparatus for the storage of data; Computer apparatus for the storage of data; Computer data storage apparatus; Computer databases; Computer installations for the storage of data; Data banks; Data files; Data programmes; Data recorded in electronic form; Data recording materials; Data storage apparatus; Data storage devices; Database programs; Databases; Electrical devices for storage of data Class 42: Advisory services relating to computer software; Computer software advisory services; Computer software consultancy; Hosting of software as a service (SaaS); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Installation of computer software; Software as a service (SaaS); Back-up (copying) of computer data; Computer database consultancy services; Computerised data storage services; Electronic data storage; Hosting of databases; Server hosting; Cloud computing (‘the Applicant’s Goods and Services’)
Trade Mark:	SIGBOX	(‘the Applicant’s Trade Mark’)

2.     On 14 January 2016 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 14 March 2013 and a Statement of Grounds and Particulars (‘the SGP’) on 14 April 2016. The Applicant filed a Notice of Intention to Defend on 6 May 2016. The SGP nominated grounds of opposition under ss 42, 44 and 60 of the Act.

Evidence

3.     The Opponent filed Evidence in Support (‘EIS’) of its opposition consisting of:

·Statutory Declaration made on 13 July 2016 by Duo Chen, the Director of Intellectual Property of the Opponent, with Exhibit DC1 (‘Chen 1’);

·Statutory Declaration made on 13 July 2016 by Duo Chen with Exhibits DC1 and DC2 (‘Chen 2’). This declaration is marked ‘Confidential and Commercially Sensitive’;

·Declaration made on 2 September 2013 by Duo Chen with Exhibits DC1 and DC2 (‘Chen 3’);

·Declaration made on 2 September 2016 by Duo Chen. This declaration is marked ‘Confidential’;

·Declaration made on 22 August 2016 by Samantha Louise Carr, Legal Assistant employed by the Opponent’s attorneys, with Exhibits SLC‑1 to SLC-15;

·Declaration made on 22 August 2016 by Samantha Louise Carr with Exhibits SLC‑16 to SLC-21. This declaration is marked ‘Confidential and Commercially Sensitive’; and

·Declaration made on 5 September 2016 by Samantha Louise Carr with Exhibit SLC‑22. This declaration is marked ‘Confidential and Commercially Sensitive’.

Chen 1 and Chen 2 were originally filed in support of a number of trade mark applications made by the Opponent.

4.     The Applicant filed Evidence in Answer which consists of:

·Statutory Declaration made on 16 December 2016 by Paul Christensen, the General Manager, Data Centre and Government Operations of the Applicant, with Annexures A to D (‘the Christensen declaration’); and

·Statutory Declaration made on 22 December 2016 by Brian Elkington an attorney at Adams Pluck Intellectual Property Attorneys, the representative of the Applicant, with Annexure A (‘the Elkington declaration’).

5.     The Opponent did not file any Evidence in Reply.

6.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Both parties requested to be heard; however, in the end the Opponent chose to rely on written submissions and did not appear at the hearing.

7.     I heard the matter in Canberra on 5 September 2017 as a delegate of the Registrar of Trade Marks. Brian Elkington of Adams Pluck Intellectual Property Attorneys appeared by telephone for the Applicant. Mr Elkington’s oral submissions were supplemented by written submissions filed with IP Australia on 25 August 2017 (‘the Applicant’s submissions’). The Opponent’s written submissions were prepared by Matthew Hayes of AJ Park Intellectual Property and were filed on 18 August 2017 (‘the Opponent’s original submissions’), with further submissions in reply to the Applicant’s submissions filed on 4 September 2017 (‘the Opponent’s reply submissions’). Both representatives’ written submissions were filed in accordance with my directions.

The Opponent

8.     According to Chen 3 the Opponent:

·was, in 2005, founded as a cloud computing business and incorporated in the US state of Washington.

·was reincorporated in the state of Delaware in March 2008.

·is headquartered in California and has international offices in London, Paris, Amsterdam, Stockholm and Tokyo.

·‘provides a secure cloud-based file sharing and content management software platform and collaboration service that aims to assist teams and organisations across a range of industries to easily share, manage, and collaborate on their information via “the cloud”’.

·since 2009, has made its services available to Australian customers under and by reference to the trade mark BOX.

·since 2014, has made its services available through its partnership with Telstra Australia and several other Australian technology distributors.

9.     The Opponent is the owner of, amongst others, the trade marks detailed below (‘the Opponent’s Trade Marks’). Full specifications of the goods and services appear in Annexure A to this decision.

Trade Mark number	Trade Mark	Priority Date	Classes
1486631	19 October 2011	9, 42
1487765	7 November 2011	9, 42
1526261	BOXWORKS	16 November 2012	9, 35, 38, 41, 42
1547939	13 March 2013	9, 38, 41, 42
1553962	11 March 2011	9, 38, 42
1647706	BOX VIEW	6 December 2013	9, 42
1663849	BOXWORLDTOUR	17 February 2014	41
1682516	BOX DEV	28 January 2014	41

10.   The goods in class 9, where present, for the Opponent’s Trade Marks typically include: computer software for online management of business content in the field of cloud computing services and computer software for cloud content management. The services in Class 42, where present, typically include computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information and computer services for synchronizing local computer files, folders, data and information with a cloud storage platform.

The Applicant

11.   There is no information before me regarding the background of the Applicant. However, the Christensen declaration states that during a technology forum hosted by the Applicant in April 2014 ‘government CIOs[1] … highlighted the need for a secure document sharing facility, or drop-box, that could be used by agencies’. Following that forum:

[T]he Applicant began investigating developing or sourcing a product to meet the need identified at the CIO forum. It evaluated a number of third party products and in mid-2014 began negotiations with Covata Australia Pty Limited (Covata) for distribution of its product (‘the Product’). …

In August 2014, the Applicant began discussions with several government agencies who were interested in conducting proofs of concept for the Applicant’s secure document sharing facility. …

In November 2014, the Applicant settled on the name SIGBox as the brand it would use for the Product. … At that time, the Applicant already offered a secure internet connection for government users, known as SIG, and it was proposed that this connection would be the means of accessing SIGBox.

On 11 February 2015, the Applicant entered into an agreement with Covata authorising the Applicant to resell Safe Share and distribute its user documentation under the Applicant’s own brand.

[1] This term is defined in the Christensen declaration as ‘heads of technology’.

Grounds of Opposition, Onus and Standard of Proof

12. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42, 44 and 60. In its submissions the Opponent indicated it was not pressing the ground under s 42. The onus of proof in an opposition rests upon the Opponent.[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 18 August 2015, being the filing date of the application (‘the Relevant Date’).[4] There is a general presumption of registrability in favour of the Applicant.[5]

Discussion

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

[5] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519, [26]-[27] and the authorities cited therein.

Section 44

13. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)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.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)              the similar goods or closely related services; or

(ii)             the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

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.

14. In the SGP the Opponent nominated the Opponent’s Trade Marks (detailed at para 8, above) in respect of s 44. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish that at least one of the Opponent’s Trade Marks:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·     is registered in respect of at least some goods or services which are similar or closely related to at least some of the Applicant’s Goods and Services. (‘the second requirement’); and

·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

15.   All of the Opponent’s Trade Marks have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement. I shall now consider the remaining two requirements.

Comparison of the goods/services

16.   The Applicant has claims in Class 9 which include the broad claim computer software (programs). This claim encompasses the more specific software goods in Class 9 of many of the Opponent’s Trade Marks, including those in trade mark 1487765. The Applicant also has a claim in Class 42 for cloud computing. This unqualified claim is similar to many of the more specific cloud computing services in Class 42 of many of the Opponent’s Trade Marks including those, again, in trade mark 1487765. The second requirement is therefore satisfied in respect of at least trade mark 1487765.

Substantially identical or deceptively similar?

17.   In assessing this issue it is sufficient to consider only the Opponent’s trade mark number 1487765. There is no other trade mark which the Opponent has nominated in the SGP that is more likely to be found to be substantially identical or deceptively similar to the Applicant’s Trade Mark. The respective trade marks are shown below for ease of reference.

Trade mark 1487765

(‘the 7765 Trade Mark’)

The Applicant’s Trade Mark

SIGBOX

18.   I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the 7765 Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  Windeyer J said:

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.[6]

[6] [1963] HCA 66, [12].

19.   The Opponent submitted that the 7765 Trade Mark is substantially identical to the Applicant’s Trade Mark and that a side by side comparison of the trade marks ‘illustrates a high degree of visual similarity … Specifically, the word ‘BOX’ is the dominant part of each mark. The Opponent also submitted:

The key difference between the marks is the presence of the acronym SIG as the prefix in [the Applicant’s Trade Mark]. However, this does not detract from the high degree of substantial similarity between the marks.

20.   The Opponent submitted that the SIG element is descriptive: an assertion it says is supported by the following statement in Chen 3 that:

‘SIG’ is a well-known an [sic] acronym for ‘secure internet gateway’. A secure internet gateway provides a secure connection to the internet that protects internal IT systems, websites and networks from cyber threats. Providing cloud based file sharing and content management offering [sic] with a secure internet gateway is nothing new or distinctive and is also part of the products and services that [the Opponent] offers to its customers in Australia, and elsewhere under [the Opponent’s Trade Marks]. [The Opponent’s] concern is that consumers will know is [sic] that 'SIG' is descriptive and they are likely to believe that the distinctive part of [the Applicant’s Trade Mark] is the word BOX.

21.   The Opponent further submitted:

In addition to this strong visual similarity, [the 7765 Trade Mark] and [the Applicant’s Trade Mark] will leave a person with a general overall impression of the sound ‘BOX’. The aural difference between the initial sound ‘SIG' is also likely to be ignored or misheard when the mark is read or heard aloud given its descriptive nature.

When taken as a whole, the key element of [the 7765 Trade Mark] is the word ‘BOX’ which is the clear and dominant feature of [the mark]. This too is the dominant feature of [the Applicant’s Trade Mark].

The total impression that emerges from the comparison is that [the Applicant’s Trade Mark] is substantially identical to [the 7765 Trade Mark] because it uses the word ‘BOX’.

22.   In respect of substantial identity the Applicant has submitted that:

[The Applicant’s Trade Mark] is quite different – both aurally and visually – from [the 7765 Trade Mark]. The mere fact that the marks have the element BOX in common is certainly not sufficient to render them substantially identical. When … examined side-by-side with [the Applicant’s Trade Mark], it becomes readily apparent that there are very large differences between them. Therefore it is the Applicant’s contention that [the Applicant’s Trade Mark] is not substantially identical to [the 7765 Trade Mark].

23.   In respect of the SIG prefix of the Applicant’s Trade Mark, the Applicant referred to the Christensen declaration where Mr Christensen described how the Applicant arrived at the Applicant’s Trade Mark. Mr Christensen stated:

In November 2014, the Applicant settled on the name SIGbox as the brand it would use for [its product]. This name was proposed by … the Applicant’s Group Executive responsible for Cloud Services, in November 2014, after availability searches for various other trade marks were unsuccessful. At that time, the Applicant already offered a secure internet connection for government users, known as SIG, and it was proposed that this connection would be the means of accessing SIGBox.

24.   The Applicant submitted that in the context of the Applicant’s Trade Mark it is not clear SIG stands for ‘Secure Internet Gateway’. The Applicant noted that the SIG acronym has many different meanings and submitted that consumers are not likely when considering the Applicant’s Trade Mark to attribute to those letters the meaning asserted by the Opponent.

25.   I accept that SIG is an acronym meaning ‘secure internet gateway’. I accept also that there is the potential for SIG to be seen as a descriptive element in the Applicant’s Trade Mark. However, in the absence of sufficient evidence to support the view I am not satisfied that a significant number of consumers of the Applicant’s Goods and Services are likely to see the SIG element in that fashion. Rather the Applicant’s Trade Mark is likely to be considered as a single invented word, namely SIGBOX. When considered in this manner in a side by side comparison with the 7765 Trade Mark there are sufficient visual and phonetic differences to satisfy me that the respective trade marks are not substantially identical. I move then to consider whether the trade marks are deceptively similar.

26.   Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[7]

[7] [1963] HCA 66, [13].

27.   It is necessary that the Opponent establish that there is a real and tangible danger of deception or confusion occurring. A mere possibility is not sufficient.[8] It is necessary also that all surrounding circumstances be taken into consideration.[9] In respect of deceptive similarity, the Opponent essentially repeated the submissions it made in respect of substantial identity and further noted that the general circumstances within which the parties’ respective goods/services are provided are similar if not identical.

[8] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50].

[9] Ibid.

28.   The Applicant made responses similar to those it made in respect of substantial identity, and referred also to the Elkington declaration. The declaration brings into evidence the results of searches of the Trade Marks Register which were conducted by Mr Elkington in July and November 2016. The searches were declared to be for ‘registered or accepted trade marks which contain the word BOX and cover computer hardware or software or similar goods in class 9, or related services’. The results show some 150 trade marks. Some particularly relevant examples are: DROPBOX, GEMBOX, PAINTBOX, CATCHBOX, BLUEBOX, TREEBOX, FYREBOX, GEARBOX, VELLBOX, RECORDBOX, WEATHERBOX, PENNYBOX, VATBOX, MIIPBOX, FREEDOMBOX, VECTOR BOX, JUICEBOX, WITBOX, AGENTBOX, ROBOX, BRIEFBOX, RATINGBOX, DOMYBOX and JOURNEYBOX: all of which have third parties as the registered owners.

29. In the Opponent’s original submissions it was submitted that the Elkington declaration is not relevant and should be disregarded in the context of the legal tests and considerations that the Registrar must apply under the grounds of opposition in sections 44 and 60 of the Act. The reason for this assertion was elaborated upon in the Opponent’s reply submissions where it was submitted, ‘One does not take account of other marks on the register for which there is no evidence of actual use in the market before the Hearing Officer’. The Opponent cited the case of Harrods Ltd’s Application[10] to support this proposition. In that case the Comptroller-General stated:

Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.[11]

[10] (1935) 52 RPC 65.

[11] Ibid 70.

30.   In response the Applicant noted the Opponent’s agreement with the proposition that in assessing deceptive similarity all surrounding circumstances have to be taken into consideration. The Applicant submitted that the over 150 trade marks, owned by many different entities, which appeared in Mr Elkington’s search results (‘the BOX marks’) constituted one of the surrounding circumstances. The Applicant contended that it can be inferred from this evidence that consumers of the types of goods and services with which we are concerned in this matter would be aware that ‘there are a lot of BOX marks out there’. The Applicant submitted that this particular circumstance was a crucial consideration and noted the absence in the Opponent’s evidence of any examples of confusion amongst consumers between any of the BOX marks.

31.   There is no evidence before me that any of the Box marks are in use. However, in the face of such a large number of registered trade marks I find myself unable to proceed on an assumption that none of those trade marks are actually being used. Rather a more reasonable approach, in my view, is to assume that a significant number are in use, and to afford appropriate weight to that assumption. In affording appropriate weight to the evidence I have taken note of the goods and/or services for which the various trade marks are registered. In many instances the specifications are quite broad. Any assumption I have made as to which particular goods and/or services a particular trade mark has been used in connection with has taken account of this fact.

32.   On balance, I am satisfied that there are a significant number of trade marks of the form [element]BOX in use in the marketplace such that consumers of the particular goods and services of concern in this matter are likely to be accustomed to the BOX element being used by a number of different traders of those goods and services. As discussed, above, in connection with substantial identity, I am not satisfied that a significant number of relevant consumers would see the SIG element of the Applicant’s trade mark as a descriptive acronym and as a consequence interpret the BOX element as the effective indicator of trade source. For these reasons I am satisfied that the Applicant’s Trade Mark is sufficiently different from the 7765 trade mark that deception or confusion is unlikely. By extension, given they are even further removed from the Applicant’s Trade Mark, I am satisfied that deception or confusion is also unlikely in respect of the remainder of the Opponent’s Trade Marks. The third requirement is therefore not satisfied. Consequently, the Opponent has failed to establish this ground of opposition.

33.   Given the potential for SIG to be seen as a descriptive element, I accept my determination of the deceptive similarity issue may be considered somewhat ‘borderline’. In making my finding, however, I have been guided the presumption of registrability which is to be applied in favour of the Applicant.

34. I note that in addition to the Opponent’s Trade Marks the Opponent is also the owner of trade mark registration 1553964. This trade mark is for the plain word ‘BOX’, has a priority date which is earlier than the Relevant Date and covers relevant goods and services. Possibly it was an oversight that this trade mark was not included in the trade marks which were detailed in Schedule A of the SGP. I note further that the plain word BOX is referred to in the SGP in the particulars for s 60. For the sake of completeness, I would have arrived at the same conclusion in respect of registration 1553964 as I did in respect of the 7765 trade mark.

Section 60

35. Section 60 of the Act is reproduced below:

Section 60 - 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.

36. To establish a ground of opposition under s 60 an opponent must demonstrate that at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. In the SGP the Opponent stated all of the Opponent’s Trade Marks plus the plain word BOX have acquired such a reputation in respect of all of the goods and services for which they are registered.

37.   In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[12] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[13]

[12] [2000] FCA 1335, [81].

[13] [1992] FCA 159, [118].

38.   On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

[14] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

39. As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under the provisions of s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[15] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[16]

[15] [2000] FCA 1587.

[16] Ibid [91]. It is to be noted that Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.

40.   The Opponent submitted that:

Ms Chen’s evidence covers use of the trade mark BOX and [the Opponent’s Trade Marks]. The evidence establishes use of the word mark BOX by the Opponent in Australia for cloud computing services and associated goods. Ms Carr’s evidence confirms Ms Chen’s statements and provides extensive examples of the kind of use the Opponent has made of the trade mark BOX in Australia. The evidence also establishes extensive use of [the Opponent’s Trade Marks]. …

There is a real and tangible likelihood of deception or confusion by reason of the use of [the Applicant’s Trade Mark] for the Applicant’s Goods and/or Services, due to the Opponent’s combined reputation in both the trade mark BOX and [the Opponent’s Trade Marks].

41.   The EIS demonstrates principally use of the trade mark shown below in respect of cloud computing services.

42. The combination of the level of sales—which is somewhat modest in trade mark terms—and the advertising expenditure shown indicate that the trade mark is likely to have acquired some reputation. Nevertheless, it is not sufficient that the Opponent merely establishes that its trade mark has a significant reputation I must also be satisfied that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to the consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[17]

[17] (1937) 58 CLR 641, 658.

43.   The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[18]

[18] [1979] RPC 410, 423 (citations omitted).

44. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[19]

[19] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are applicable to s 60 of the Act.

45.   In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[20]

[20] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

46. I discussed, above, the differences between the parties’ trade marks and the likelihood of deception or confusion in connection with the unsuccessful s 44 ground of opposition. In its submissions, the Opponent has provided no reasons why, when the s 44 ground was unsuccessful, the possibility of deception or confusion with the identical trade marks is more likely due to the acquisition of a reputation. With nothing before me to persuade me otherwise, even were I to accept that the trade mark BOX, the Opponent’s Trade Marks, and the trade mark for which some reputation has been demonstrated had each acquired a significant reputation of the nature asserted by the Opponent, I would not be satisfied that as a result of any of those reputations the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Consequently, the Opponent has failed to establish this ground of opposition.

Decision

47.   The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1713786 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

48. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson

Hearing Officer

Hearings and Oppositions

7 November 2017

Annexure A

Opponent’s Trade Marks

1486631

Class 9: Computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer software for synchronizing computer files, folders, data and information within a collaborative work environment; computer software for use in data storage and file synchronization

Class 42: Computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing computer files, folders, data and information within a collaborative work environment; cloud computing featuring software as a service for use in data storage and file synchronization

Convention priority date based on United States of America #85450679.

1487765

Class 9: Computer software for online management of business content in the field of cloud computing services; computer software, namely, downloadable programs and mobile device software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; computer software for cloud content management; computer software for providing access to, providing information to, and obtaining information from computer networks for cloud content management; computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer software for synchronizing computer files, folders, data and information within a collaborative work environment; computer software for use in data storage and file synchronization

Class 42: Computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; application service provider of cloud computing services, namely, hosting web based applications for cloud content management of business content; computer services for synchronizing local computer files, folders, data and information with a cloud storage platform; computer services for synchronizing computer files, folders, data and information within a collaborative work environment; cloud computing featuring software as a service for use in data storage and file synchronization; electronic storage of remote computer data

Convention priority date based on United States of America #85466608.

1526261

Class 9: Computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer software for synchronizing computer files, folders, data and information within a collaborative work environment; computer software for use in data storage and file synchronization; computer software for providing access to a hardware and software infrastructure distributed across global and enterprise computer networks; computer software for analyzing network traffic, computer user information, namely computer IP, browser and operating system; computer software for performing analytics to determine a route into a cloud storage and application provider; computer software for operating a content delivery network; computer software for performing analytics related to a content delivery network; computer software providing solutions for delivering Web content to end-users and for online and enterprise application acceleration; computer hardware, namely, computer servers for hosting cloud computing solutions; computer software, namely, software development tools for content management in a cloud; computer software for tracking changes and modifications to software and for managing software development projects; computer software, namely, application interfaces, plugins, and protocol interfaces and computer software development tools for design and development of open-source and proprietary software programs; computer software for cloud content management; computer programs for running development programs and application programs in a common development environment; computer software for use as a tool for automating, personalizing, designing and updating web sites, website templates, web site graphics, text and animation for a global computer network, internal and external computer networks, and/or local and/or wide area computer networks; computer software for providing access to, providing information to, and obtaining information from computer networks for cloud content management; computer hardware

Class 35: Conducting business conferences; business consulting services, namely, providing a turnkey solution for reviewing product and service documentation and workflow, managing projects for business purposes, tracking user satisfaction, and running usability studies for business purposes; advertising the goods and services of others

Class 38: Providing on-line chat rooms and electronic bulletin boards for transmission of messages among computer users concerning computers, computer software, document management, workgroups, business communications, business management and advertising, and small business issues; delivery of data via electronic transmission, namely, delivering third party content, namely, HTML source, rich- embedded media, streaming media, computer applications, and dynamic web content from a content delivery network; content delivery network for delivering data via electronic transmission

Class 41: Weblog services being publication of on-line journals and blogs discussing business, technology, cloud computing, online collaboration and file sharing; educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of business development, technology, cloud computing, online collaboration and file sharing

Class 42: Computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing computer files, folders, data and information within a collaborative work environment; computer services, namely, providing customized on-line web pages featuring user-defined information; application service provider, namely, providing non-downloadable computer programs for running development programs and application programs in a common development environment; data conversion of computer network data or information, namely, integrating third party web content, streaming media and computer applications for delivery from a content delivery network; providing computerized digital rights management, namely a system for protecting the copyrights of digital content that is distributed online; Web site traffic analysis, namely, providing web site content providers with information identifying the geographic and network point-of-origin of Web site requests; providing global traffic management services to content providers who operate mirrored Web sites, namely, tracking changing conditions on the Internet and directing users to the distributed sites that are optimal for them; providing Web site traffic monitoring and reporting services; providing on-line customer support featuring reporting tools, personalized technical support and troubleshooting, and information and news about the computer industry; application service provider, namely, operating for third party e-businesses a hardware and software infrastructure distributed across third party computer networks for enabling the third party e-businesses to integrate and deliver application services from the services platform; application service provider, namely, operating for third party e-businesses a hardware and software infrastructure distributed across third party computer networks for enabling the third party e-businesses to access a cloud computing and storage platform

1547939

Class 9: Computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer software for synchronizing computer files, folders, data and information within a collaborative work environment; computer software for use in data storage and file synchronization of computer software for online management of business content in the field of cloud computing services; computer software, namely, downloadable programs and mobile device software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; computer software for cloud content management; computer programs for running development programs and application programs in a common development environment; computer software for providing access to, providing information to, and obtaining information from computer networks for cloud content management; computer software and firmware for recognizing and running local applications and services to manage remote data; computer software that provides web-based access to applications and services through a web operating system or portal interface; computer software and HTML5-based widgets, namely, computer software for embedding in websites and computer platforms of others that provide cloud computing and data services

Class 38: Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the fields of business, technology, cloud computing, enterprise software development, online collaboration and file sharing

Class 41: Weblog services being publication of on-line journals and blogs discussing business, technology, cloud computing, online collaboration and file sharing; educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of business development, technology, cloud computing, online collaboration and file sharing; conducting business conferences

Class 42: Computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; computer services, namely, providing customized on-line web pages featuring user-defined information; application service provider of cloud computing services, namely, hosting web based applications for cloud content management of business content; application service provider, namely, providing non-downloadable computer programs for running development programs and application programs in a common development environment; computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing local computer files, folders, data and information with a cloud storage platform; computer services, namely, providing temporary use of on-line non-downloadable computer software for synchronizing computer files, folders, data and information within a collaborative work environment; cloud computing featuring software as a service for use in data storage and file synchronization; providing a web site that features information on computer technology and programming; computer programming, maintenance of computer programs, and software design; hosting an on-line community for and in support of computer programming, development of computer software, and development of enterprise software applications; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in business networking; innovation consulting services, namely, advising others in the areas of product development; hosting an on-line community for software and computer innovation; hosting an on-line community for the purpose of fostering innovation in software design and software applications for a cloud computing system; electronic storage of data

Convention priority date based on United States of America #85875504.

1553962

Class 9: Computer software for online management of business content in the fields of cloud computing services; computer software, downloadable programs and mobile device software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; computer software, software development tools for content management in a cloud; computer software for tracking changes and modifications to software and for managing software development projects; computer software, application interfaces, plugins, and protocol interfaces and computer software development tools for design and development of open-source and proprietary software programs; computer software for cloud content management; computer programs for running development programs and application programs in a common development environment; computer software for use as a tool for automating, personalizing, designing and updating web sites, website templates, web site graphics, text and animation for a global computer network, internal and external computer networks, and/or local and/or wide area computer networks; computer software for providing access to, providing information to, and obtaining information from computer networks for cloud content management; computer storage and storage devices, storage subsystems for storage and backup of electronic data including business content in a cloud environment; computer hardware for upload, retrieval, download, transmission and delivery of digital content in the field of cloud computing services; computer hardware, storage subsystems for storage and backup of electronic data either locally or via a telecommunications network for cloud content management, all of the above but for computer software for use with electronic games

Class 38: Providing on-line chat rooms for transmission of messages among computer users concerning computers, computer software, document management, workgroups, business communications, business management and advertising, and small business issues

Class 42: Computer services, cloud computing services acting as an application service provider in the field of knowledge management to host computer application software for the collecting, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; computer services, providing customized on-line web pages featuring user-defined information; application service provider of cloud computing services, hosting web based applications for cloud content management of business content; application service provider, providing non-downloadable computer programs for running development programs and application programs in a common development environment

Divisional priority date based on parent #1413879.

1647706

Class 9: Computer software development tools; computer software for enabling users to convert native document file formats to web-based file format, for embedding converted documents in web applications and to enable users to view, modify, and manage those documents collaboratively on line, for tracking changes and modifications to software and for managing software development projects; computer software for use as a tool for automating, personalizing, designing and updating web sites, website templates, web site graphics, text and animation for a global computer network, internal and external computer networks, and local and wide area computer networks, and providing access to, providing information to, and obtaining information from computer networks for cloud content management

Class 42: Cloud computing featuring software for use to convert native document file formats to web-based file format, to embed the converted documents in web applications, and to enable users to view, modify, and manage those documents collaboratively on line; cloud computing featuring software for use in providing customized on-line web pages featuring user-defined information; and cloud computing featuring software for use in providing non-downloadable computer programs for running development programs and application programs in a common development environment

Convention priority date based on United States of America #86137624.

1663849

Class 41: Educational services, namely, conducting classes, workshops, conferences, courses, and seminars in the fields of advertising, social networking, the internet, business development, technology, cloud computing, online collaboration, file sharing, and entrepeneurship and distribution of training materials in connection therewith

Convention priority date based on United States of America #86195434.

1682516

Class 41: Educational services, namely, conducting classes, workshops, conferences, courses, and seminars in the field of advertising, social networking, the internet, business development, technology, cloud computing, online collaboration, file sharing, and entrepeneurship; arranging and conducting business conferences

Convention priority date based on United States of America #86176928.