Bytedance Ltd v TicToc Online Pty Ltd - [2023] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Bytedance Ltd to registration of trade mark application number 2035451 (9, 42) – TIC:TOC – in the name of TicToc Online Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: John Hennessy of Senior Counsel instructed by Baker & McKenzie

Applicant: Ben Gardiner of Counsel instructed by Piper Alderman Lawyers

Decision:

2023 ATMO 16

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds considered under ss 44, 58, 58A, 59 and 60 – s 44 established in respect of some goods and services – s44(4) applied in respect of some goods and services – no other grounds established – applicant given opportunity to amend specification – specification amended – registration to proceed for amended specification

Background

This matter concerns an opposition by Bytedance Ltd (‘Opponent’) under s 52 of the Trade Marks Act1995 (Cth) (‘Act’) to the registration of the following trade mark application (‘Application’) in the name of TicToc Online Pty Ltd (‘Applicant’):
Trade Mark Number:     2035451
Trade Mark:  TIC:TOC (‘Trade Mark’)
Filing Date:  6 September 2019
Specification:  Class 9: Application software; Computer software; Computer software (programs); Computer software applications (downloadable); Computer software for business purposes; Computer software products; Computer software programs; Downloadable software applications (apps); Computer hardware
Class 42: Advisory services relating to computer software; Computer security services (design and development of secure computer hardware, software and systems); Computer software advisory services; Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Computer support services (computer hardware, software and peripherals advisory and information services); Design and development of computer software (for others); Design of computer software; Development of computer software; Development of computer software application solutions; Hosting of software as a service (SaaS); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Online provision of web-based software (non-downloadable); Providing information, including online, about design and development of computer hardware and software; Software as a service (SaaS); Software creation; Software engineering; Writing of computer software; Design and development of computer hardware (for others); Scientific and technological services; Scientific research into the development of new products; Research and development of new products for others; Research and development of products; Advisory services relating to computer systems design; Computer design; Computer system design; Providing information, including online, about scientific and technological services and research and design relating thereto
(‘Goods and Services’)
Endorsement:                  Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied; Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The Application was examined as required by s 31 of the Act and advertised as accepted for possible registration on 12 January 2021.
On 4 March 2021, the Opponent filed its Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 30 March 2021. The Applicant filed a Notice of Intention to Defend…

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.

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Details

Case: [2023] ATMO 16
Decision Date: 10 February 2023

CaseChat Overview and Summary

This decision concerns an application by Bytedance Ltd for registration of a trade mark, opposed by Tic Toc Online Pty Ltd. The matter came before the Registrar of Trade Marks, Louise Tuohy.

The Registrar was required to determine whether to register the trade mark, having regard to the grounds of opposition raised by Tic Toc Online Pty Ltd. Specifically, the Registrar had to consider the extent to which any of those grounds had been established.

The Registrar found that Tic Toc Online Pty Ltd had established a ground of opposition under section 44 of the Act in relation to some of the goods and services specified in Bytedance Ltd's application. However, none of the other grounds of opposition were established. Following this finding, the Registrar indicated an intention to refuse registration unless the specification of goods and services was amended. Bytedance Ltd subsequently amended the specification, and an endorsement was added that provisions of paragraph 44(4) applied. The Registrar then determined that the trade mark could proceed to registration one month from the date of the decision, subject to any appeal. As both parties had achieved some success, the Registrar declined to award costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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. The Opponent has established a ground of opposition under s 44 of the Act in respect of some of the Applicant’s Goods and Services. None of the other grounds of opposition have been established. On 27 January 2023 I informed the Applicant that it was my intention to refuse to register the Trade Mark unless the specification was amended to: On 10 February 2023 the Applicant availed itself of the opportunity and the specification has been amended accordingly and the following endorsement has been added: Provisions of paragraph 44(4) applied. The Trade Mark may now proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction. Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.

Ratio Decidendi

Legal Principle Established

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