Bytedance Ltd v TicToc Online Pty Ltd
[2023] ATMO 16
•10 February 2023
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 the registration on 14 May 2021.
Thereafter the parties filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘Regulations’).
Once time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 15 November 2022, by way of video conference. John Hennessy of Senior Counsel instructed by Baker & McKenzie, appeared for the Opponent. Ben Gardiner of Counsel instructed by Piper Alderman Lawyers, appeared for the Applicant. Oral submissions were supplemented by the parties’ written submission filed prior to the hearing.
Grounds of Opposition, Relevant Date and Onus
In the SGP the Opponent nominated grounds of opposition under ss 42, 44, 58, 58A, 59, 60, 62 and 62A of the Act. In the Opponent’s written submissions it only pressed the grounds under ss 44, 58, 58A, 59 and 60. The Opponent did not pursue the grounds of opposition under ss 42, 62A and 62, which I treat as abandoned and have not considered.
The date at which the rights of the parties are to be determined is the filing date 6 September 2019 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.
The Opponent bears the onus of establishing at least one of the grounds of opposition.0F1F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F2F[2]
[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, [132] (Besanko, Jagot and Edelman JJ).
Evidence
Evidence in Support
Declaration of He Huang, Legal Counsel of the Opponent, made on 10 August 2021 with Annexures 1 to 9 (‘Huang’).
Declaration of Shannon Fati, Counsel and registered Australian Trade Marks Attorney at Spruson & Ferguson for the Opponent, made on 12 August 2021 with Annexures SF-1 to SF-5 (‘Fati 1’).
Evidence in Answer
Statutory Declaration of Anthony James Baum, Director and Chief Executive Officer of the Applicant, made on 12 November 2021 with Annexures AJB-1 to AJB-14 (‘Baum 1’). Annexure AJB-2 is the Statutory Declaration of Laura Osti, Marketing and Communications Head of the Applicant, made on 22 December 2020, with Annexures LO-1 to LO-13 (‘Osti’).
Evidence in Reply
Declaration of Shannon Fati, made on 13 December 2021, with Annexures SF-A to SF-I (‘Fati 2’).
Preliminary Issue – Late Filed Evidence
On 21 October 2022 after the close of the evidence stages and less than a month before the hearing, the Opponent filed further evidence being a Supplementary Declaration by He Huang along with submissions supporting the request that the Opponent be permitted to rely upon it at the hearing. On 24 October 2022 the then delegate responded to the request and declined to exercise his discretion under regs 21.15(4) or 21.19 to have regard to the Supplementary Declaration by He Huang.
On 26 October 2022 after the closure of the evidence stages and less than a month before the hearing, the Applicant filed further evidence being a Statutory Declaration by Anthony James Baum, made on 23 September 2022, with Annexures AJB-15 (‘Baum 2’). Baum 2 was filed in the absence of any submissions from the Applicant and at the hearing the Applicant requested that this further evidence be considered pursuant to regs 21.15(4) and 21.19 of the Regulations.
Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter before the Registrar in a way that the Registrar reasonably believes to be appropriate. Under reg 21.19, the Registrar may propose to take into account information that is relevant to the proceedings. If the Registrar has reason to believe that the information that she intends to take into account is not known to a party, the Registrar must provide the information to the party and give the party a reasonable opportunity to make representations.
The Applicant’s written submissions argue that Baum 2 seeks to clarify one issue that is addressed in Baum 1, in particular it provides documentary and earlier evidence of the Applicant’s use of the Trade Mark. At the hearing the Opponent objected to the Applicant’s request and pointed to the letter from IP Australia which notified the parties of Baum 2 and stated that the then delegate did not intend to have regard to Baum 2. The Opponent also noted that its late filed evidence being the Supplementary Declaration of He Huang which was filed with a submission had also been considered by the then delegate and was not allowed.
There must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence. In this case the evidence in Baum 2 operates to clarify an issue addressed in Baum 1, however it could have been filed as part of the evidence in answer in this matter. I also note that caution issued by the delegate in Fed Square Pty Ltd v Federation IP Pty Ltd:
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account. In the current matter and for the reasons set out earlier I am satisfied that they have been in this case.[3]
[3] [2015] ATMO 42, [55] (Hearing Officer Wilson).
The mere fact that the material included in Baum 2 provides direct evidence of offers to provide the Applicant’s Goods and Services, is not, without more, a circumstance entitling it to file additional evidence, regardless of its relevance, shortly before a hearing. Were I to allow the late filed evidence of the Applicant then I would be obliged to allow all relevant late filed evidence in this matter.
I do not exercise my discretion under regs 21.15(4) or 21.19 to have regard to Baum 2.
Discussion
Section 58
Section 58 of the Act provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In the SGP the Opponent particularises the s 58 ground of opposition as follows:
The Opponent is the proprietor of the TikTok trade mark in Australia by virtue of first use of the trade mark TikTok since at least May 2017 in relation to computer software and entertainment services in the field of video and musical entertainment, content creation, content sharing, content editing, social networking, and online competitions.
To establish this ground, the Opponent must establish the following requirements:
that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[4]
that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods or services for which the trade mark(s) relied upon by the Opponent was used;[5] and
that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark(s) relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[6]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
I will now consider whether the Trade Mark is identical or substantially identical to the Opponent’s trade mark.
The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.
[7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).
The Opponent relies on its TikTok trade mark as the basis for this ground. For the purposes of comparison, I have reproduced the respective trade marks below:
Trade Mark
Opponent’s trade mark
TIC:TOC
TikTok
On a side by side comparison there are clear differences between the trade marks. While the words in both trade marks start with the letters TI and TO, the Trade Mark is for the words TIC and TOC, with both words ending in the letter C and separated by a colon. In comparison the Opponent’s trade mark contains the words TIK and TOK, with the letter K used in place of the letter C of the Trade Mark. The letter C in the Trade Mark along with the use of the colon which is generally used as an expression of time and the letter K in the Opponent’s trade mark, are unlikely to go unnoticed on a side by side comparison. For these reasons, I find that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of resemblance.
Therefore, I find the Trade Mark and the Opponent’s trade mark are not identical or substantially identical. Given all three requirements must be satisfied in order to establish this ground of opposition, it is not necessary to consider the remaining requirements.
The Opponent has not established the ground of opposition under s 58 of the Act.
Section 44
Section 44 of the Act 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 (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.
(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.
(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.
In the SGP the Opponent particularises the s 44 ground of opposition as follows
The Opponent relies on registered trade mark no. 1949117 for TikTok in classes 9, 38, and 41.
I have reproduced details of the TikTok trade mark relied on by Opponent below:
Trade Mark Number: 1949117
Trade Mark: TikTok
Priority Date: 17 August 2018
Specification: Class 9: Application software; Application software for smart phone; Downloadable computer software applications; Downloadable smart phone application (software); Covers and protective cases for smart phone; Holders adapted for smart phone; Other accessories in this class designed for smart phone; none of the aforesaid being in relation to personal safety or personal tracking
Class 38: Transmission of text/photo/video via the smart phone application; Transmission of information via applications for smart phones; Transmission, broadcasting and reception of audio, video, still and moving images, text and data; Transfer of data via on-line services; Peer-to-peer (P2P) sharing services; Providing access to a video sharing portal; Providing internet services for communications; SMS/application message sending services; Transmission of application information via internet; Search engine user access services via smart phone applications; Communication via virtual private networks (VPN); Electronic delivery of images and photographs via a global computer network; Data transmission and telecommunication services; Telecommunications services for providing access to data/sound or images
Class 41: Presentation of music videos via mobile device online; Providing of on-line electronic publications (not downloadable) via mobile devices; Multimedia publishing of printed matter, books, magazines, journals, newspapers, newsletters, tutorials, maps, graphics, photographs, videos, music and electronic publications; Electronic publication of information on a wide range of topics on-line; Entertainment and amusement information via internet online
To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods and/or services or goods and/or services which are closely related to the Applicant’s Goods and Services.
In the event that each of these requirements is satisfied it may still be possible for me to accept the application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The trade mark relied on by the Opponent is a registration held by a person other than the Applicant and has a priority date earlier than the Relevant Date.
At paragraph [21] of this decision, I found that the respective trade marks are not substantially identical. Therefore, I turn now to the question of whether they are deceptively similar.
The expression ‘deceptively similar’ is defined by s 10 of the Act:
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.
In the case of Australian Woollen Mills v F. S. Walton and Company Ltd, Dixon and McTiernan JJ provided the relevant test for comparison:
[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 be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[8]
[8] [1937] HCA 51; (1937) 58 CLR 641, [658].
The Opponent argues that the trade marks are aurally identical, visually similar, and that conceptually both trade marks imitate the ticking sound of a clock.
I agree with the Opponent’s assessment and find that the Trade Mark is deceptively similar to the TikTok trade mark. The Applicant did not contest this and accepts that the two trade marks are deceptively similar.
I now turn to a comparison of the Applicant’s Goods and Services and the Opponent’s goods and services. Pursuant to s 14(1) of the Act ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[9] Pursuant to s 14(2) of the Act, ‘similar services’ are services that are the same or of the same description. The test for determining similar services has been equated with the principles applicable to determining similar goods.[10]
[9] Jellinek’s Application (1946) 63 RPC 59 (Romer J); Beck, Koller & Company’s Application (1947) 64 RPC 76.
[10] MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
In applying these principles, I consider that the following goods in class 9 to be the same or similar:
Applicant’s class 9 Goods
Opponent’s class 9 goods
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)
(‘Conflicting Goods’)
Application software; Application software for smart phone; Downloadable computer software applications; Downloadable smart phone application (software)
I do not consider that any of the Applicant’s Services are the same or similar to the Opponent’s services.
However, the Applicant’s Services contain claims which I consider to be closely related to the Opponent’s goods. The concept of ‘closely related’ concerns the relationship between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J said:
The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.[11]
[11] [1999] FCA 1020, [38].
In applying these principles I consider the following to be closely related goods or services:
Applicant’s class 42 Services
Opponent’s class 9 goods
Advisory services relating to computer software; Computer security services (design and development of secure computer…software…); Computer software advisory services; Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Computer support services (computer…software … 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…software…design and technical consultancy); Online provision of web-based software (non-downloadable); Providing information, including online, about design and development of computer …software; Software as a service (SaaS); Software creation; Software engineering; Writing of computer software
(‘Conflicting Services’)
Application software; Application software for smart phone; Downloadable computer software applications; Downloadable smart phone application (software)
I do not consider that the remainder of the Applicant’s Goods and Services which I have reproduced below are the same or similar or closely related to the Opponent’s goods and services:
Applicant’s class 9 Goods
Computer hardware
Applicant’s class 42 Services
Computer security services (design and development of secure computer hardware…and systems); Computer support services (computer hardware…and peripherals advisory and information services); Information technology (IT) services (computer hardware…and peripherals design and technical consultancy); Providing information, including online, about design and development of computer hardware…; 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
The Opponent has in principle established its ground of opposition based on ss 44(1) and 44(2) of the Act in respect of the Conflicting Goods and the Conflicting Services. However, this is not the end of the matter. During the examination stage of the application, the Applicant was successful in overcoming a ground for rejection raised against the Trade Mark based on the Opponent’s trade mark by providing evidence of prior and continuous use under s 44(4) of the Act.
Pursuant to s 44(4) of the Act, I may not reject the Trade Mark if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the Conflicting Goods and Conflicting Services, before the priority date of the Opponent’s trade mark.
In Baum 1, Mr Baum states that the Applicant is a FinTech company and that he came up with the Trade Mark for use with the Applicant’s Goods and Services in May 2015. One of the drivers behind the Applicant’s product development process was to speed the loan application process up and hence the proposition of “time” lead to the brand name TIC:TOC.
Mr Baum states that the Applicant’s product – the TIC:TOC platform – is an online fully automated home loan assessment and decision software platform. The Applicant utilises its platform for its own product TIC:TOC Home Loans. In addition the Applicant offers white label software as a service to third parties by reference to its Trade Mark.
Annexure LO-2 to Osti, comprises a press release issued by the Applicant regarding the launch of its TIC:TOC platform on 11 July 2017 and articles by numerous paper and internet press outlets around Australia which published the press release.
Annexure LO-7 to Osti comprises articles from paper and internet press outlets around Australia dated October 2017 to March 2019. The publications promote the Applicant’s TIC:TOC branded home loan software technology which underpins the Software as a Service solution and discuss the Applicant’s white label partnerships with financial institutions which allows them to use its proprietary technology under their own brands, accelerated with TIC:TOC branded technology.
Annexure LO-8 to Osti comprises articles referring to the industry awards received by the Applicant between 2017 to 2020 for its Fintech services under the Trade Mark.
Ms Osti declares that since 2017 the Applicant has promoted its home loan platform under the Trade Mark via its website, social media accounts and signage, as well as through third party websites, search engines, publications and television programs. Annexures LO-5 to LO-6 and LO-9 to LO-12 to Osti comprises examples of the Applicant’s signage, pages from the Applicant’s website and social media accounts, and examples of advertising and promotion via third party forums.
In Osti, Ms Osti has provided the Applicant’s confidential income and financial data along with advertising expenditure for the period July 2017 to December 2020.
The examples of use of the Trade Mark, show use in relation to the Applicant’s software platform used in the provision of home loans, since 11 July 2017.
Therefore, on the balance of probabilities, I am satisfied that the Applicant has established prior continuous use of the Trade Mark. However, the Applicant’s Conflicting Goods and Conflicting Services cover a broad range of activities, and the evidence only demonstrates prior use of the Trade Mark exclusively in relation to software goods and services to enable applications for and the assessment approval and fulfillment of home loans.
The evidence supports applying the provisions of paragraph 44(4) in relation to the following:
Class 9 Goods
Computer software and programs, namely computer software and programs to enable applications for and the assessment approval and fulfillment of home loans
Class 42 Services
Class 42: Advisory services relating to computer software to enable applications for and the assessment approval and fulfillment of home loans; Computer security services (design and development of secure computer…software to enable applications for and the assessment approval and fulfillment of home loans …); Computer software advisory services to enable applications for and the assessment approval and fulfillment of home loans; Computer software consultancy to enable applications for and the assessment approval and fulfillment of home loans; Computer software design to enable applications for and the assessment approval and fulfillment of home loans; Computer software development to enable applications for and the assessment approval and fulfillment of home loans; Computer software engineering to enable applications for and the assessment approval and fulfillment of home loans; Computer support services (computer…software to enable applications for and the assessment approval and fulfillment of home loans … advisory and information services); Design and development of computer software (for others) to enable applications for and the assessment approval and fulfillment of home loans; Design of computer software to enable applications for and the assessment approval and fulfillment of home loans; Development of computer software to enable applications for and the assessment approval and fulfillment of home loans; Development of computer software application solutions to enable applications for and the assessment approval and fulfillment of home loans; Hosting of software as a service (SaaS) to enable applications for and the assessment approval and fulfillment of home loans; Information technology (IT) services (computer…software to enable applications for and the assessment approval and fulfillment of home loans …design and technical consultancy); Online provision of web-based software (non-downloadable) to enable applications for and the assessment approval and fulfillment of home loans; Providing information, including online, about design and development of computer …software to enable applications for and the assessment approval and fulfillment of home loans; Software as a service (SaaS) to enable applications for and the assessment approval and fulfillment of home loans; Software creation to enable applications for and the assessment approval and fulfillment of home loans; Software engineering to enable applications for and the assessment approval and fulfillment of home loans; Writing of computer software to enable applications for and the assessment approval and fulfillment of home loans
The material before me is not sufficient to apply the provisions of paragraph 44(4) in respect of the remaining Conflicting Goods and Services. Section 44(3) of the Act provides the Registrar to accept the Trade Mark on the basis of honest concurrent use or other circumstances.
In this case, the evidence of use of the Trade Mark put forward by the Applicant does not allow the acceptance of the Trade Mark for the remaining Conflicting Goods or Services. In such circumstances and based on the evidence, it is not appropriate to apply the provisions of paragraph 44(3)(a) or paragraph 44(3)(b).
Section 58A
Section 58A of the Act provides:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
In the SGP the Opponent particularises the s 58A ground of opposition as follows:
To the extent that the Applicant may seek to rely on the provisions of subsection 44(4) to overcome grounds of opposition under Section 44, the Opponent relies on prior use in Australia of the trade mark TikTok since at least May 2017 in relation to computer software and entertainment services in the field of video and musical entertainment, content creation, content sharing, content editing, social networking, and online competitions.
The earliest first use of the Trade Mark by the Applicant is 11 July 2017. Therefore, to establish this ground of opposition, the Opponent needs to demonstrate that it continuously used its TikTok trade mark in relation to the same, similar or closely related goods and services, since before 11 July 2017.
The Opponent is a Chinese multinational internet technology company headquartered in Beijing. The Opponent offers an extensive product range, available in over 150 markets worldwide and has offices in 126 cities. The Opponent’s TikTok trade mark features on one of its products, a social media platform offering short form videos (‘TikTok platform’).
In Huang, Mr Huang declares that the TikTok platform is available on its website and downloadable as an application on Google Play and Apple Store. Mr Huang declares that the TikTok platform was released internationally on 12 May 2017, including in Australia, on Google Play. The release of the TikTok platform on Apple Store occurred on 2 August 2018.
Annexure SF-H from Fati 1, is an extract of a report from the AppAnnie platform, which lists the worldwide release date of the TikTok platform as 7 May 2017.
Annexure SF-2 to Fati 1, is an article by BackLinko dated 4 November 2020. The article states the Opponent’s international launch of the TikTok platform was in September 2017.
Confidential Annexure 9 in Huang 1 comprises the Opponent’s advertising expenditure and revenue in Australia for the periods 2020 to June 2021 and 2019 to June 2021 respectively.
Annexure SF-I to Fati 2 is an extract from the AppAnnie platform in Chinese Characters with key information translated into English by the Opponent. The data shows the Android downloads of the TikTok platform in Australia for the period 4 June 2017 to 10 June 2017.
Evidence of the Opponent’s promotion in Australia is found in Annexure AJB-8 to Baum 1 and comprises articles published by techAU dated 23 May 2019 and Girl.com.au. The articles refer to the recent official launch of TikTok platform in Australia.
On the evidence before me I am not satisfied that the Opponent was first to use its TikTok trade mark in Australia. The Opponent’s platform featuring the TikTok trade mark was released and available for download on Google Play either on 7 May 2017 or 12 May 2017. However, the international launch of the TikTok platform was not held until September 2017. In Australia, no official marketing and/or advertising push took place until the TikTok platform was officially launched in May 2019. I also note that the Opponent’s confidential figures for advertising expenditure and revenue only support the Opponent advertising in Australia from 2020 and revenue generated in Australia since 2019. In Ward Group Pty Ltd v Bodie & Stone Plc, Merkel J stated:
…use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.[12]
[12] [2005] FCA 471, [43].
In these circumstances, I find that use of the Opponent’s TikTok trade mark in Australia was not specifically directed or targeted at Australian consumers until the official launch of the TikTok platform in Australia in or around 23 May 2019. As such I cannot be satisfied that the Opponent continuously used its TikTok trade mark in Australia since before the earliest first use of the Trade Mark by the Applicant on 11 July 2017.
The Opponent has not established the ground of opposition under s 58A of the Act.
Section 60
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.
In the SGP the Opponent particularises the s 60 ground of opposition as follows:
Use of the Opposed Mark in Australia by the Applicant is likely to deceive or cause confusion due to the reputation of the Opponent in the TikTok trade mark in Australia, which has arisen due to first use of the trade mark TikTok in Australia and internationally since at least May 2017 in relation to computer software and entertainment services in the field of video and musical entertainment, content creation, content sharing, content editing, social networking, and online competitions.
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 be likely to deceive or cause confusion.
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[13] 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[14]
[13] [2000] FCA 1335, [81].
[14] [1992] FCA 159, [118].
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[15]
[15] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
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[16]
[16] [2000] FCA 1587, [91].
The Opponent submits that its TikTok trade mark had acquired a reputation at the Relevant Date based on the combination of its use in Australia and internationally.
The international launch of the Opponent’s TikTok platform was in September 2017. Annexure SF-1 in Fati 1 comprises an article by SEJ Search Engine Journal dated 26 August 2020. The article provides global figures for active users on TikTok platform in January 2018, December 2018 and December 2019. Annexure SF-2 to Fati 1, comprises an article published by BackLinko dated 4 November 2020. The article provides extensive metrics and figures such as the global number of TikTok platform users, downloads, growth rates, rankings, demographics and revenue. Annexure 7 in Huang comprises examples of the Opponent’s advertising on YouTube between 2018 to 2019.
The Australian launch of the Opponent’s TikTok platform was in May 2019. Annexure SF-4 to Fati 1 comprises an article by Roy Morgan dated 14 October 2020. The article sets out the metrics for Australians visiting the Opponent’s TikTok website from July to December 2019 by gender and generation. Annexure ABJ-8 to Baum 1 comprises an article by Adnews dated 13 June 2019. The article discusses how Australian brands are starting to take notice of the TikTok platform. Confidential Annexure 9 in Huang provides the Opponent’s confidential revenue figures for Australia in 2019.
Overall, the Opponent’s numbers for yearly growth of its platform featuring the TikTok trade mark since 2017 are impressive. The Opponent’s significant global revenue doubled between 2018 and 2019 and by 2019 the TikTok platform was ranked 7th in the social media applications of the decade.
The Opponent officially launched the TikTok platform in Australia in May 2019. By June 2019 Australian brand owners were taking notice of the popularity of the TikTok platform. Between July 2019 to December 2019 there was significant consumer adoption and usage of the TikTok platform in Australia and the Opponent’s revenue for 2019 was respectable.
Considering the extraordinary rise of the Opponent’s TikTok platform in the global market and the rapid uptake of the Opponent’s platform featuring the TikTok trade mark by Australian consumers, I am satisfied that the Opponent’s TikTok trade mark had a limited reputation in Australia in relation to its goods and services at the Relevant Date.
It is not sufficient that the Opponent merely establishes that its TikTok trade mark has a reputation, the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to 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[17] 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.
[17] [2010] ATMO 5, [39]-[40].
In this case, the trade marks have a high degree of similarity. The trade marks are aurally identical, visually similar, and conceptually both convey the idea of the ticking sound of a clock.
While the goods and services are not required to be similar, I find the goods and services to be to be so different that it significantly reduces the potential for confusion. Both parties include software in their respective specifications. However, the Applicant’s software goods and services are in relation to a platform offering home loans and the Opponent’s software goods and services are in relation to a social media platform offering short form videos.
Having regard to the limited reputation in the Opponent’s TikTok trade mark at the Relevant Date, and the distinct markets within which each party operate and focus, I am not satisfied that there is real tangible likelihood that consumers would be caused to wonder whether there is some connection between the TikTok trade mark and the Trade Mark.
The Opponent has not established the ground of opposition under s 60 of the Act.
Section 59
Section 59 of the Act provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
In the SGP the Opponent paricularises the s 59 ground of opposition as follows:
The Opponent’s research indicates that the Applicant is in the business of providing home loans.
The Applicant has applied to register the Opposed Mark for a broad range of software and technology related goods and services in class 9 and 42, with such goods and services not being limited to the field of home loans or any other specific field.
It can be inferred from the current business of the Applicant that the Applicant has no genuine intention to use the Opposed Mark in respect of goods or services other than those relating to the provision of home loans.
Applying for the registration of a trade mark carries a presumption that the Applicant intends to use the trade mark.[18] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. [19] If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the Trade Mark at the Relevant Date.[20]
[18] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[19] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).
[20] Suyen Corp v Americana International Ltd (n 18), [190].
In Health World Ltd v Shin-Sun Australia Pty Ltd, Jacobson J considered the nature of the intention in s 59:
In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[21]
[21] (2008) 75 IPR 478, 497 [160].
Justice Jacobson also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[22]
[22] Ibid [161] (citations omitted).
The Opponent argues that to the extent the Applicant has used the Trade Mark in respect of the Goods and Services, such use has been limited to computer software and related software services with respect to online home loan applications. To support this argument the Opponent submits that the evidence of internet searches for downloadable software bearing the Trade Mark performed by Ms Fati in 2021 for the which nil results were recorded.[23] As such, the Opponent argues that the evidence is consistent with the Applicant having no intention to use the Trade Mark in respect of the remainder of the Goods and Services for which it has sought registration.
[23] Fati 2 [18] to [22], [Annexures SF-E to SF-G].
I am not satisfied the Opponent has provided sufficient cogent evidence in support of this ground of opposition to shift the evidentiary onus, nor has the Opponent made submissions which would indicate that the Applicant would be incapable of providing, either alone or together with authorised commercial partners, the remainder of the Goods and Services of the opposed application and to use the Trade Mark across the scope of the specifications.
The Opponent has not established the ground of opposition under s 59 of the Act.
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:
Class 9 Goods
Computer software and programs, namely computer software and programs to enable applications for and the assessment approval and fulfillment of home loans; computer hardware
Class 42 Services
Advisory services relating to computer software to enable applications for and the assessment approval and fulfillment of home loans; Computer security services (design and development of secure computer hardware, software to enable applications for and the assessment approval and fulfillment of home loans and systems); Computer software advisory services to enable applications for and the assessment approval and fulfillment of home loans; Computer software consultancy to enable applications for and the assessment approval and fulfillment of home loans; Computer software design to enable applications for and the assessment approval and fulfillment of home loans; Computer software development to enable applications for and the assessment approval and fulfillment of home loans; Computer software engineering to enable applications for and the assessment approval and fulfillment of home loans; Computer support services (computer hardware, software to enable applications for and the assessment approval and fulfillment of home loans and peripherals advisory and information services); Design and development of computer software (for others) to enable applications for and the assessment approval and fulfillment of home loans; Design of computer software to enable applications for and the assessment approval and fulfillment of home loans; Development of computer software to enable applications for and the assessment approval and fulfillment of home loans; Development of computer software application solutions to enable applications for and the assessment approval and fulfillment of home loans; Hosting of software as a service (SaaS) to enable applications for and the assessment approval and fulfillment of home loans; Information technology (IT) services (computer hardware, software to enable applications for and the assessment approval and fulfillment of home loans and peripherals design and technical consultancy); Online provision of web-based software (non-downloadable) to enable applications for and the assessment approval and fulfillment of home loans; Providing information, including online, about design and development of computer hardware and software to enable applications for and the assessment approval and fulfillment of home loans; Software as a service (SaaS) to enable applications for and the assessment approval and fulfillment of home loans; Software creation to enable applications for and the assessment approval and fulfillment of home loans; Software engineering to enable applications for and the assessment approval and fulfillment of home loans; Writing of computer software to enable applications for and the assessment approval and fulfillment of home loans; 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
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.
Costs
Both parties sought an award of costs. As both parties have had some measure of success, I decline to award costs.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
10 February 2023
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