Bybord IP S.a.r.l v FRDM Group Limited

[2022] ATMO 194

TRADE MARKS ACT 1995

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

Re:Opposition by Bybord IP S.a.r.l. to registration of trade mark application number 2115425 (45) - DATEJASMIN - in the name of FRDM Group Limited

Delegate:

Louise Tuohy

Representation:

Opponent: Simon Kneebone of Banki Haddock Fiora

Applicant: Not represented

Decision:

2022 ATMO 194

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 pressed – ground under s 60 established – registration refused

Background

1. This matter concerns an opposition by Bybord IP S.a.r.l (‘Opponent’), formerly known as Docler IP S.a.r.l (‘Docler’), under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application in the name of FRDM Group Limited (‘Applicant’):

   Application Number:   2115425

   Trade Mark:  DATEJASMIN (‘Trade Mark’)

   Filing Date:  27 August 2020

   Specification:  Class 45:  Computer dating services; Dating and social introduction services provided via online personal advertisements; Dating services (‘Services’)

1. The trade mark application was examined as required by s 31 of the Act and advertised as accepted for possible registration on 28 January 2021.

1. On 15 March 2021, the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 29 March 2021. The Applicant filed a Notice of Intention to Defend the registration on 16 May 2021.

2. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) as follows:

Evidence in Support

• Declaration by Kolos Kaszaly, Class A Manager at Docler, made on 7 July 2021 with Exhibits KK-1 to KK-14 (‘Kaszaly 1’).

Evidence in Answer

• Declaration of Anton Poltiev, Attorney acting under a Power of Attorney issued by the Applicant, made on 7 October 2021 with Annexures 1 to 4 (‘Poltiev declaration’).

Evidence in Reply

• Declaration of Kolos Kaszaly, made on 7 December 2021.

• Declaration of Vina Ngo, solicitor at Banki Haddock Fiora, made on 10 November 2021 with Exhibits VN-1 to VN-2.

1. Once time for filing evidence had ended, the Opponent requested to be heard via video conference. The Applicant did not request to be heard and did not file written submissions.  I heard the matter on 20 October 2022 and Simon Kneebone of Banki Haddock Fiora appeared for the Opponent.

The Opponent

1. The Opponent is a company registered in Luxembourg and through its websites livejasmin.com and jasmin.com offers online entertainment for adults comprising adult themed content including instant two-way interaction between adults, interactive live camera viewing, live chat and theme shows.  

The Applicant

1. The Applicant is a company registered in Cyprus and through its website datejasmin.com offers online dating services for adults by providing opportunities to users to find a soulmate within an exclusive base of Slavic beauties.  

Grounds of Opposition, Relevant Dates and Onus

1. In the SGP, the Opponent nominated grounds under ss 42(b), 44 and 60 of the Act. In the hearing the Opponent pressed the grounds under ss 44 and 60. I have only found it necessary to discuss the ground under s 60. Should the decision be appealed, then it would be open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

2. The date at which the rights of the parties are to be determined is 27 August 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]

Legislative Background and Reasoning

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

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

Section 60

1. Section 60 of the Act provides:

   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.

1. In the SGP, the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent has adopted, is the owner of and has used, either by itself or through its subsidiaries, affiliates, or licensees, or by a predecessor or predecessors in business, the trade marks JASMIN and LIVEJASMIN in Australia in relation to, inter alia, online entertainment for adults comprising adult-themed content including instant two-way interaction between adults, interactive live-cam viewing, live chat, and theme shows (Opponent’s Services) including on the websites at livejasmin.com since at least 2004 and jasmin.com since at least 2013.

   The Opponent has used the trade marks JASMIN and LIVEJASMIN in Australia in relation to the Opponent’s Services since well before the priority date of the opposed Trade Mark. The reputation held by the Opponent in the Opponent’s trade marks JASMIN and LIVEJASMIN is such that the use of the opposed Trade Mark by the Applicant in relation to the services of the Application is likely to deceive or cause confusion among consumers in the marketplace.

1. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would deceive or cause confusion.

2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[3] and quoted with approval the following words of Lockhart J in 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…13F10F[4]

   [3] [2000] FCA 1335, [81].

   [4] [1992] FCA 159, [118].

3. Justice Kenny 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 sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.14F11F[5]

   [5] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

4. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided 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 …15F12F[6]

   [6] [2000] FCA 1587, [91].

5. In the SGP, the Opponent relies on its LIVEJASMIN and JASMIN trade marks. For the purposes of the Act, each trade mark is separate when considering the operation of s 60 and it is appropriate to consider the use to which they have been put.

6. Turning to the evidence in Kaszaly 1, Mr Kaszaly states that the Opponent has used the LIVEJASMIN and JASMIN trade marks in Australia in relation to online entertainment for adults comprising adult themed content including instant two way interaction between adults, interactive live camera viewing, live chat, and theme shows (‘Opponent’s services’).

7. In Kaszaly 1, Mr Kaszaly declares the Opponent’s services have been available to Australian customers via the websites livejasmin.com since 2004 and jasmin.com since 2013.

8. Kaszaly 1 provides confidential sales figures for the Opponent’s services under the LIVEJASMIN trade mark for the years 2014 to 2020 and under the JASMIN trade mark for the year 2020.

9. Exhibit KK-4 in Kaszaly 1 is a table showing the monthly number of individual sessions by Australian customers for the Opponent’s services on the livejasmin.com and jasmin.com websites since 2018. Exhibit KK-5 in Kaszaly 1 is a table showing the number of daily, monthly, and yearly Australian members on the Opponent’s livejasmin.com website from January 2014 to December 2020 and on its jasmin.com websites since December 2019 to December 2020.

10. Exhibit KK-6 in Kaszaly 1 are copies of screenshots taken from the web archiving service Wayback Machine, of the livejasmin.com website, dated February 2018 to August 2020. Exhibit KK-7 in Kaszaly 1 are copies of screenshots taken from Wayback Machine, of the jasmin.com website, dated March 2019 to November 2019.  

11. Exhibit KK-8 in Kaszlay 1 are copies of 2018 press releases from the Opponent and AVN Media promoting the Opponent’s services under the LIVEJASMIN trade mark. The press releases also list the adult industry awards won by the Opponent in 2018. Exhibit KK-13 in Kaszaly 1 is a copy of a PRNewswire article dated 15 October 2018 announcing that LIVEJASMIN’s customers will be able to make crytpocurrency payments for the Opponent’s services. 

12. Exhibit KK-9 in Kaszlay 1 are copies of articles dated May 2020 to June 2020 highlighting Pamela Anderson’s promotion of the Opponent’s jasmin.com website, which enables the public to pay to interact with over 300 influencers and personalities via text, video chats, and direct messaging.    

13. In Kaszlay 1, Mr Kaszaly declares that in 2014 the Opponent launched JASMIN TV to provide a new platform for the Opponent’s services. Exhibit KK-10 is a copy of an article published by Paperjam magazine discussing the launch of the TV channel developed by the Opponent. Exhibit KK-11 in Kaszlay 1 are copies of screenshots from a YouTube video dated 4 April 2014 showing a Jasmin TV commercial.

14. In my assessment of the evidence the Opponent’s LIVEJASMIN trade mark had a substantial reputation in Australia in relation to its services. The promotion of the LIVEJASMIN trade mark is supported by the significant number of Australia members on its livejasmin.com website. Furthermore, the sales figures under the LIVEJASMIN trade mark are substantial and show significant year on year increases from 2016. However, a reputation in the Opponent’s JASMIN trade mark is not supported by the evidence as sales and individual sessions by Australian members are insignificant and only documented for the years 2019 and 2020.

15. Having regard to the Opponent’s substantial reputation in its LIVEJASMIN trade mark, I turn to whether the use of the Trade Mark would deceive or cause confusion. This is linked to how similar the respective trade marks are. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F[7] the delegate said:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

    What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

    [7] [2010] ATMO 5, [39]-[40].

1. In this case, the trade marks have a high degree of similarity. The Trade Mark and the Opponent’s LIVEJASMIN trade mark share the highly distinctive word JASMIN. While the Trade Mark contains the word DATE and the Opponent’s trade mark contains the word LIVE, it is the similarities which are most significant and these additional word elements do not effectively distinguish the Trade Mark as a whole from the LIVEJASMIN trade mark that the Opponent has a reputation in.

2. In relation to the services, the Opponent’s services are accessed via its livejasmin.com website which allows members to have exclusive online relationships with its models through a credit payment system. In comparison the Applicant’s Services are accessed via its datejasmin.com website which provides a ‘unique platform for single men who are looking for beautiful Slavic girls for communication, dating or marriage’.[8] The actual manner in which single men in Australia communicate with the Slavic girls who live outside of Australia is by messaging and video chats activated by purchasing credits.[9] In my estimation,  there is a high level of similarity in the services offered by the Opponent and Applicant. These services would attract the same clientele as they involve private online communications between adults via a website and paid for via a credit payment system.  

   [8] Poltiev declaration, [Annex 1].

   [9] Kaszaly 1, [Exhibit KK-14].

3. The similarities between the services are further highlighted by the results of an internal study conducted by the Opponent which revealed that a staggering 70% of webcam visitors to its livejasmin.com website were only having conversations with its models to alleviate loneliness, rather than engaging in sexual activity.[10]

   [10] Kaszaly 1, [Exhibit KK-9].

4. Having regard to the reputation in the Opponent’s LIVEJASMIN trade mark, and the similarity of the trade marks and services, I am satisfied there is a real and tangible likelihood that a significant number of consumers would be caused to wonder whether there is some connection between the LIVEJASMIN trade mark and the Trade Mark.

5. The Opponent has established its ground under s 60 of the Act.

Decision

1. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has established a ground of opposition pursuant to s 60 of the Act. Therefore, I refuse to register trade mark application number 2115425.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 of the Act in line with the amounts set out in Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

3 November 2022