Bytedance Ltd v DOL Technology Pte Ltd - [2024] ATMO 181

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Bytedance Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2207374 (International Registration number 1611254) (classes 9, 35, 38, 41 & 45) – Tiki (composite) - in the name of DOL Technology Pte Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Wrays Pty Ltd

Holder: Michael Buck IP

Decision:

2024 ATMO 181

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – grounds of opposition under ss 42(b), 44 and 60 considered Trade Marks Act 1995 (Cth) considered – no ground established – extension of protection granted

Background

This decision concerns an opposition filed by Bytedamce Ltd (‘Opponent’) under regulation 17A.29 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection to Australia of the trade mark detailed below which is the subject of an International Registration Designating Australia (‘IRDA’) filed by DOL Technology Pte Ltd (‘Holder).
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Number:                   2207374 (IR 1611254)
Trade Mark:                (‘Trade Mark’)
Filing Date:                23 June 2021
Priority Date:            28 May 2021
Specification:[2]          Class 9: (including) computer software, downloadable applications for mobile devices, downloadable electronic publications, playing devices for sound and image carriers etc
Class 35: (including) advertising, indexing for commercial or advertising purposes; business management and organization consultancy; compilation of information into computer databases; providing business information via a website etc
Class 38: (including) providing internet chatrooms; computer aided transmission of messages and images; video-on-demand transmission; videoconferencing services; streaming of data; news agency services for electronic transmission; broadcasting programs via a global computer network; providing access to databases; transmission of digital files; providing telecommunications connections to a global computer network; providing information in the field of telecommunications; communications by cellular phones etc
Class 41: (including) entertainment services; production of radio and television programs; publishing of electronic publications; organization of exhibitions for cultural or educational purposes; arranging and conducting of workshops (training); ticket agency services (entertainment); health club services (health and fitness training); modelling for artists etc
Class 42: Licensing of computer software [legal services]; legal services relating to the exploitation of broadcasting rights; copyright management; on-line social networking services; dating services; licensing [legal services] in the framework of software publishing; alternative dispute resolution services; licensing of intellectual property; marriage counseling; personal background investigations.
(‘Holder’s Goods and Services’)
[2] The full specification is shown in Annexure A to this decision.
The IRDA was examined as required by reg 17A.12 and acceptance of the IRDA was advertised on 29 October 2021. The Opponent filed a Notice of Intention to Oppose the IRDA on 23 December 2021 followed by its Statement of Grounds and Particulars (‘SGP’) on 24 January 2022. The Holder filed a Notice of Intention to Defend the opposition on 22…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Bytedance Ltd v DOL Technology Pte Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2024] ATMO 181
Decision Date: 27 September 2024

CaseChat Overview and Summary

This decision concerns an opposition filed by Bytedance Ltd (the Opponent) against an application for an International Registration Designating Australia (IRDA) by DOL Technology Pte Ltd (the Holder). The dispute centred on whether the Holder's proposed trade mark should be registered in Australia, with the Opponent arguing against its registration. The matter was heard by Tracey Berger.

The court was required to determine whether the Opponent had established any of the nominated grounds of opposition, specifically under section 42(b) of the relevant legislation. This section typically relates to grounds such as the mark being deceptive or misleading, or contrary to law. The Opponent sought to rely on evidence, including declarations from a trade marks attorney and a witness statement from an in-house lawyer at TikTok, detailing the extensive use and global reach of the TIKTOK platform and associated services.

The court found that the Opponent had failed to establish any of the grounds of opposition it had nominated. The reasoning applied by the court led to the conclusion that the evidence presented did not satisfy the requirements for opposition under section 42(b). Consequently, the court ordered that the extension of protection for the IRDA could proceed, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. The court also awarded costs against the Opponent.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The relevant date for determining the rights of the parties is 28 May 2021 (‘Relevant Date’) being the priority date of the IRDA. Evidence The Opponent filed the following declarations as evidence in support of the opposition:· Declaration of Richard Hiram Baddeley, Australian trade marks attorney for the Opponent, made on 4 August 2023 with Annexures RHB-1 and RHB-2 (Baddeley 1);· Declaration of Richard Baddeley made on 4 August 2023 with Annexures RHB-3 to RHB-8 (‘Baddeley 2’); and· Declaration of Richard Baddeley made on 4 August 2023 with Annexures RHB-9 and RHB-10 (‘Baddeley 3’). Baddeley 1 attests to an opposition by TikTok Information Technologies UK Limited (‘TikTok’) to the Holder’s corresponding application for the Trade Mark in the United Kingdom and annexes details of that application. Also annexed is a witness statement of Yan Dong, inhouse lawyer at TikTok dated 20 March 2023 filed in the UK opposition (‘Dong Statement’). The Dong Statement is primarily focussed on the Opponent’s use of TIKTOK in the UK and Europe, but relevant information contained in this statement is summarised below. The Dong Statement declares that the Opponent is the owner of the TIKTOK social media video sharing platform which was launched internationally in September 2017. In November 2017, the Opponent purchased Musical.ly, one of the world’s biggest short-form video mobile applications (‘app’) with more than 100 million active users and integrated this business into a new TIKTOK platform. By the first quarter of 2018, TIKTOK had 150 million daily active users globally and over 45 million downloads. By 2019, there had been over 1 billion downloads globally of the TIKTOK app and over 2 billion downloads worldwide by 2020. In 2020, TIKTOK became one of the most downloaded mobile apps worldwide surpassing Facebook’s position. At the time of the Dong Statement, TIKTOK was available in over 150 countries with over 1 billion users globally and over 3 billion downloads on Apple’s App Store and Google Play. Copies of articles confirming the number of downloads of the TIKTOK app are provided. The Opponent’s TIKTOK goods and services are provided through its mobile app which is available on the Apple App Store, Google Play and Amazon Appstore. There are also TIKTOK desktop and web browser versions for use on computers. In addition to its ‘video sharing, entertainment and social goods and services’, TIKTOK is used as a marketing tool by businesses to promote their brands, products and services either directly to consumers, paid advertisements through social media influencers or placed advertisements. Given the use of TIKTOK by businesses, TikTok launched the following initiatives:· on 25 June 2020, TikTok announced the introduction of a global platform ‘TikTok for Business’ to provide marketing solutions and opportunities for businesses worldwide;· by the second quarter of 2021, TikTok began trialling TIKTOK Shop in the UK and Europe for businesses to showcase and sell products directly on TIKTOK; and· in March 2021, TikTok launched a Creator Fund in Europe which allows content creators to monetise their views on TIKTOK.

Decision

Reasons for decision

The Opponent has not established a ground of opposition under s 42(b).Decision I find that the Opponent has failed to establish any of the nominated grounds of opposition and accordingly, extension of protection of the Trade Mark which is the subject of the IRDA may proceed not less than one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that extension of protection of the IRDA shall not occur until either the appeal is withdrawn or discontinued, Otherwise, the disposition of the IRDA shall be in accordance with the Court’s order or direction. Both parties sought an award of costs. Costs generally follow the event and therefore, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.