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 April 2022.
The parties entered into a cooling off period, following which the Opponent filed its evidence in support of the opposition on 7 August 2023. The Holder did not file any evidence in answer and the parties were given the opportunity to request a hearing. Both parties asked to be heard by way of written submissions. The Opponent filed its written submissions on 9 September 2024 and the Holder filed its written submissions on 16 September 2024.
This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. I make my decision based on the aforementioned materials.
Grounds, onus and relevant date
The SGP nominated grounds of opposition under ss 42(b), 44, 58A, 58, 60 and 62A. In the Opponent’s Written Submissions, the Opponent presses only the grounds of opposition under ss 44, 60 and 42(b) and I treat the other grounds as abandoned.
The Opponent bears the onus of establishing at least one of the grounds of opposition[3] on the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).
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.
In February 2021, the Opponent’s website at (‘Opponent’s Website’), which is available in 35 languages, became the most visited website and most popular domain globally. Similarweb, a website analytics provider, found that as of July 2022, the Opponent’s Website was the 19^th most popular website worldwide in all categories. Extracts of the Opponent’s Website from 2018-2021 obtained used the Wayback Machine are provided as well as articles corroborating the claims about the popularity of the Opponent’s Website.
The Opponent promotes its TIKTOK app on social media. At the time of the Dong Statement, the Opponent’s TIKTOK Facebook account had over 29 million followers, its Instagram account had 26 million followers, and its YouTube account had over 270,000 subscribers and over 10 million views. Extracts from these Facebook and Instagram accounts are exhibited to the Dong Statement.
Baddeley 2 attests to the incorporation of TikTok Australia Pty Ltd (‘TikTok Australia’) on 26 November 2019. The Opponent is the ultimate holding company of TikTok Australia. Annexed to Baddeley 2 is a copy of the 2021 Annual Report for TikTok Australia showing substantial revenue, selling and marketing expenses for November 2019-31 December 2020 and the 2021 calendar year. Also annexed are various new articles about TIKTOK, many of which relate to Australia and include reference to Australian creators featured in the TIKTOK Food Festival in May 2021, nearly 2.5 million Australian users of TIKTOK by October 2020 with over 50% increase in the first half of 2020, TIKTOK Trending on iHeartRadio in April 2021 and Australians spending more time on TIKTOK than on YouTube.
Baddeley 3 annexes an extract of the Holder’s LinkedIn profile and a Corporate Compliance and Financial Profile for the Holder issued by the Singapore Accounting and Regulatory Authority. The LinkedIn Profile refers to the Applicant as being a short video app ‘Make in India (sic)’ for India.
Discussion
Section 44
Section 44 relevantly provides:
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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (the 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.
To successfully oppose the IRDA pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Holder satisfies the following requirements:
i.it is in the name of a person other than the Holder and has a priority date which is earlier than the priority date of the Trade Mark (‘First Requirement’);
ii.it is substantially identical with, or deceptively similar to, the Trade Mark (‘Second Requirement’); and
iii.it is in respect of services and/or goods which are either similar and/or closely related to the Holder’s Goods and Services (‘Third Requirement’).
In its SGP, the Opponent identifies the following registrations for TikTok (‘Opponent’s Mark’) on which it relies:

19.     Number

20.     Priority Date

21.     Classes

22.     1949117

23.     17 August 2018

24.     9, 38 & 41

25.     2050470

26.     13 November 2019

27.     35, 42 & 45

28.     2157460

29.     13 November 2017

30.     35 & 45

Each of the above satisfies the First Requirement in that the marks are in the name of someone other than the Holder and have an earlier priority date than the Trade Mark.
I turn now to a consideration of the Second Requirement namely whether the Opponent’s Mark is substantially identical or deceptively similar to the Trade Mark. Neither party submitted arguments that the marks in question are substantially identical although the Holder states that they are not. The test for whether two marks are substantially identical was set out in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’), where his Honour stated:
31.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.[5]
[5] [1963] HCA 66; (1963) 109 CLR 407, 414 (Windeyer J).
The marks to be compared in the present case are shown below:

32.     Opponent’s Mark

33.     Trade Mark

34.     TikTok

35.

It is immediately apparent on a side by side comparison that the Trade Mark is not substantially identical to the Opponent’s Mark. There are clear visual and aural differences between the marks. I do not consider there to be a total impression of resemblance between the marks. Accordingly, I turn to the question of whether the marks are deceptively similar.
The test for deceptive similarity is broader and was outlined in Australian Woollen Mills v F.S. Walton and Company Ltd as follow:
36.[T]he marks ought not...be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same...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.[6]
[6] [1937] HCA 51; (1937) 58 CLR 641, [658] (Dixon and McTiernan JJ).
In determining deceptive similarity, I am guided by the following principles:
·    there must be a real, tangible danger of confusion, not just a mere possibility.[7]
·     a likelihood of confusion can be established if a number of consumers would be caused to wonder whether the Holder’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[8]
·     the impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[9] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[10]
·     consumers may retain an imperfect recollection of a mark or its essential features.[11]
·     it may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[12]
·     the impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[13]
·     it must be considered how the goods or services are ordinarily sold or provided.[14]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J)
[8] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
[9] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).
[10] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).
[12] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).
[13] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[14] Ibid.
The Opponent argues that the Trade Mark is ‘highly similar’ to the Opponent’s Mark as both marks have ‘TIK’ as the ‘leading element’ and this element forms a significant part of each of the marks. Further, the Opponent contends the final letter ‘i’ in the Trade Mark could easily be overlooked by the average consumer. Accordingly, it is the Opponent’s submission that the marks are visually similar.
The Opponent also submits that aurally the two marks are similar because the second syllable of ‘Tiki’ is short and consumers may consider it a mispronunciation of TIK. Alternatively, consumers may pronounce the ‘t’ in the device element so the Trade Mark would be ‘ticky tee’ or ‘tick tee’ which the Opponent says evokes the aural rendition of the Opponent’s Mark ‘tick tock’.
I do not agree with the Opponent’s submissions but rather concur with the Holder that visually and aurally the Opponent’s Mark and Trade Mark are different. As the Holder notes, the Trade Mark is a composite mark comprised of the word ‘Tiki’ and a larger design element of a ‘play button with a stylised ‘t’ on top. The device element is a prominent feature of the Trade Mark which consumers are unlikely to overlook. In my view, ‘Tik’ is not an essential element of the Trade Mark. In terms of pronunciation, the word element of the Trade Mark will most likely be pronounced ‘TEE-KEE’ which is not similar to the Opponent’s Mark. Furthermore, the Holder notes there are conceptual differences between the Opponent’s Mark which I regard as an obvious misspelling of ‘tick-tock’ being the sound of a watch or clock whereas the word ‘Tiki’ is likely to be perceived by Australian consumers as either an invented word or recognised as the word for a Māori or Polynesian cultural object or carving which represents human form.
Given the overall differences in the marks, I am not satisfied that even making allowances for imperfect recollection, that there is a real likelihood of confusion between the Trade Mark and the Holder’s Mark. In my opinion, the Trade Mark is not deceptively similar to the Opponent’s Mark and therefore, the s 44 ground of opposition is unsuccessful.
Section 60
Section 60 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.

To establish this ground, the Opponent must establish:
(a) there was ‘another trade mark’;
(b) which had acquired a reputation in Australia before the priority date; and
(c) because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
Reputation
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[15] Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[16]
[15] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[16] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[17] or providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[18]
[17] Ibid [118].
[18] McCormick (n 15), [86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[19]
[19] [2019] FCA 923, [83] (O’Bryan J).
The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[20] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[21] In the present case, the relevant market is large being Australian individuals and businesses who are consumers of application software, social media, online videos, telecommunications services, advertising and social media etc.
[20] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[21] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
In its SGP, the Opponent claims that before the Relevant Date, it had acquired a substantial reputation in the Opponent’s Mark which mark is well known in Australia and internationally as a result of its extensive use and promotion particularly in relation to the Opponent’s TIKTOK platform. The Opponent alleges that in view of the reputation in the Opponent’s Mark and because of the similarity of the Trade Mark to the Opponent’s Mark, use of the Trade Mark particularly for short form video sharing platforms and related goods and services is likely to deceive or cause confusion.
The Opponent’s TikTok platform was launched in Australia in 2019 but had already acquired a significant following overseas as demonstrated by the Dong Statement which refers to the Opponent’s Website being the most popular domain globally in 2021 with the Opponent having significant assets which increased 545% in 2020. As a result of the success of the TIKTOK platform overseas, the Opponent’s Mark had received publicity in Australia and its revenue and promotional expenses in Australia were significant before the Relevant Date. Over 10% of the Australian population aged over 6 years were using TIKTOK by the end of the first half of 2020 and the Opponent was the fastest growing social media company in Australia in terms of user growth.
Despite the fact that use of the Opponent’s Mark is not particularly longstanding before the Relevant Date, I am satisfied that the Opponent had acquired a reputation in the Opponent’s Mark in Australia at the Relevant Date amongst a significant proportion of the Australian market for its TIKTOK platform. Accordingly, I must now consider whether given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion.
Likelihood of deception or confusion
Section 60(b) requires a causal connection between the reputation of the Opponent’s Mark and the likelihood that use of the Trade Mark will deceive or cause confusion.
The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd[22]:
‘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.[23]
[22] [1979] RPC 410
[23] Ibid, 423.
The likelihood of deception or confusion must be real and tangible.[24] Consumers need not think that the respective marks are the same. It is sufficient if consumers would have cause to wonder if the goods or services provided under the Trade Mark are being provided by the same person as the owner of the mark in which the reputation has been established.[25] A number of factors are relevant to this determination, including the strength of the reputation of the other trade mark, the similarity between the relevant goods or services, and the degree of similarity between the trade marks.[26]
[24] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 952, 595.
[25] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
[26] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
There is no requirement under s 60 that the marks in question be deceptively similar but it has been noted that:
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.[27]
[27] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original). See also Qantas Airways Ltd v Edwards [2016] 338 ALR 134, [142] (Yates J).
I have already found at [29] that the marks are not deceptively similar. In my view, there is a relatively low level of overall similarity between the Trade Mark and the Opponent’s Mark. Whilst both marks contain ‘TIK’, the overall visual and phonetic differences are such that the degree of similarity is fairly low.
In terms of the similarity of the respective goods and services, the reputation in the Opponent’s Mark for its TIKTOK platform resides in many of the same or similar goods and services to the Holder’s Goods and Services such as application software, advertising, transmission of text/photo and video, peer to peer sharing services, providing access to a video sharing portal and social media services.
I am of the opinion that despite the reputation in the Opponent’s Mark and similarity in a number of the respective goods and services of the Holder and those in which the Opponent’s Mark has a reputation, the shared element ‘Tik-’ is not sufficient to give rise to a likelihood of deception or confusion. Given the overall visual, phonetic and connotative differences between the Trade Mark and the Opponent’s Mark, I do not believe that the mere inclusion of the element ‘Tik’ in the Trade Mark will cause consumers to wonder if there is some connection between the Holder’s Goods and Services offered under the Trade Mark and those provided under the Opponent’s Mark.
I am not satisfied that there is a finite and non-trivial risk of deception or confusion likely to result from the use of the Trade Mark and hence the s 60 ground of opposition is not successful.
Section 42(b)
Section 42(b) provides that registration of a trade mark may be opposed on the basis that use of the mark would be contrary to law.
In its SGP, the Opponent particularised this ground as follows:
As set out above, the Opponent is the owner of the TikTok trade marks (see Annexure A for Australian trade marks) which have acquired a substantial reputation in Australia.
Use by the Applicant of the Opposed Trade Mark in relation to the Applied-for Goods and Services is likely to mislead or deceive consumers into thinking that the Applicant’s goods and services are those of, associated with, or endorsed or licensed by the Opponent or its subsidiary when they are not, and would constitute the common law tort of passing off, or misleading or deceptive conduct in breach of section 18 of the Australian Consumer Law.
Section 18 of the Australian Consumer Law (‘ACL’) concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[28]
[28] See e.g.: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ), Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Holder’s Goods and Services is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation in breach of the ACL.
In relation to the claim that use of the Trade Mark will amount to passing off, Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[29]
[29] [1989] FCA 506, [40] (citations omitted).
Accordingly, I am not satisfied that the use of the Trade Mark would involve passing off.
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.

Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
27 September 2024
ANNEXURE A – Holder’s Goods and Services
Class 9: Computer operating programs, recorded; computer software, recorded; computer software applications, downloadable; downloadable applications for use with mobile devices; computer game software, downloadable; downloadable music files; downloadable image files; computer programs for editing images, sound and video; computer software for controlling the operation of audio and video devices; downloadable e-wallets; electronic publications, downloadable; downloadable ring tones for mobile phones; animated cartoons; cinematographic film, exposed; video game cartridges; recording devices for sound and image carriers; playing devices for sound and image carriers; audio- and video-receivers; combination video players and recorders; electronic book readers; smartphones; eyeglasses; navigational instruments; camcorders; portable media players; projection apparatus; audiovisual teaching apparatus; video screens; remote control apparatus; anti-theft warning apparatus; batteries, electric.
Class 35: Advertising; advertising agency services; rental of advertising space; online advertising on a computer network; rental of advertising time on communication media; production of advertising films; pay per click advertising; web indexing for commercial or advertising purposes; business management and organization consultancy; compilation of information into computer databases; systemization of information into computer databases; presentation of goods on communication media, for retail purposes; marketing; search engine optimization for sales promotion; web site traffic optimisation; updating and maintenance of data in computer databases; providing business information via a web site; provision of an online marketplace for buyers and sellers of goods and services; commercial information and advice for consumers in the choice of products and services; provision of commercial and business contact information; import-export agency services; cost price analysis; procurement services for others [purchasing goods and services for other businesses].
Class 38: Providing on-line chat rooms for social networking; providing internet chatrooms; providing instant messaging services; computer aided transmission of messages and images; message sending; communications by computer terminals; providing on-line forums for transmission of messages among computer users; video-on-demand transmission; videoconferencing services; streaming of data; news agency services for electronic transmission; broadcasting programs via a global computer network; teleconferencing services; providing access to databases; transmission of digital files; transmission of podcasts; voice mail services; providing user access to global computer networks; providing telecommunications connections to a global computer network; telecommunications routing and junction services; providing telecommunication channels for teleshopping services; electronic bulletin board services (telecommunications services); providing information in the field of telecommunications; communications by cellular phones; radio broadcasting; television broadcasting; wireless broadcasting; rental of message sending apparatus; rental of modems; satellite transmission; rental of smartphones; rental of telecommunication equipment.
Class 41: Entertainment services; entertainment information; providing online videos, not downloadable; production of radio and television programmes; production of videos; providing on-line music, not downloadable; organization of games; organization of electronic game competitions; publishing of electronic publications; providing amusement arcade services; providing on-line computer games; electronic games services provided by means of the internet; organization of shows (impresario services); production of shows; arranging of beauty contests; dubbing; presentation of live performances; club services (entertainment or education); educational services; publication of electronic books and journals online; layout services, other than for advertising purposes; film production, other than advertising films; rental of motion pictures; videotape editing; music composition services; photography; news reporters services; translation; scriptwriting services for non-advertising purposes; organization of exhibitions for cultural or educational purposes; arranging and conducting of workshops (training); booking of seats for shows; ticket agency services (entertainment); health club services (health and fitness training); modelling for artists.
Class 45: 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.

19. Number	20. Priority Date	21. Classes
22. 1949117	23. 17 August 2018	24. 9, 38 & 41
25. 2050470	26. 13 November 2019	27. 35, 42 & 45
28. 2157460	29. 13 November 2017	30. 35 & 45