Cameron Arthur Nicol v Erento Gmbh

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Cameron Arthur Nicol to protection of International Registration Designating Australia 1212583(35, 38, 42) (International Registration 911073) - erento - filed in the name of erento Gmbh.

Delegate: Iain Thompson

Representation:
Opponent: Peter Madigan of Counsel instructed by Chrysiliou Law

Holder:..Middletons – not present at hearing and did not make written submissions

Decision: 2011 ATMO 40
Regulation 17A29 opposition – section 44, similar services, identical trade marks, opposition established – protection refused
Background

erento GmbH (‘the holder’) of Berlin, Germany, has requested protection in Australia for an International Registration Designating Australia (‘IRDA’)[1] current details of which appear below:
[1] Regulation 17A.1 provides:
Application No:           1212583
Int Regn No:                911073
Priority Date:               8 November 2007
ServicesClass 35: Procuring and invoicing of customers (online shopping) in computer networks and/or by means of other sales channels; online procuring of contracts both by the purchasing of goods and by the operation of an electronic market in the Internet; procurement, conclusion and execution of contracts for the leasing of goods of all kinds through the operation of an Internet platform; procuring and concluding of commercial transactions in the context of an electronic emporium; recruitment of office staff, included in this class; running and organizing of trade fairs; rental of vending machines;
Class 38: Telecommunications; operating and rental of facilities for telecommunications; rental of devices for the transmission of information; providing of telephonic services; teletext services; e-mail data services (electronic post); paging services; services rendered by an Internet service provider (ISP), namely the providing, installing, servicing and maintaining of Internet access and dial-in nodes; services rendered by an online provider through the providing of an Internet forum for e-commerce and the concluding of leasing contracts, and through the compilation, provision, delivery, promotion and transmission of all kinds of information and data in sound, text and images; electronic receipt of orders for goods; Internet related services, namely the providing of access to texts, graphics, audiovisual and multimedia information, documents, databases and computer programs; running and organizing of video conferences
Class 42: Developing and providing of programs for data processing; services in the field of data processing and programming, namely the producing and processing of texts, images, and audio and visual signals for third parties; evolving, designing, producing and programming of network pages (web sites) for online and offline presentations; generation of programs for the solution of branch-specific problems in the Internet, in particular for the leasing of goods of all kinds; services rendered by a network operator, information broker and provider, namely the rental of web servers and the providing and the rental of access time to data networks and computer databases, in particular in the Internet; rental of computer software, data processing appliances; information processing through the compilation, processing and delivery of data; managing and generating web sites; placing of web sites on the Internet for third parties; projecting and planning of facilities for telecommunications; exploiting of industrial trademarks; awarding of licenses; technical developing of communication concepts for electronic media (eg; CD-Roms, (Internet, concepts (eg; advertising slogans, product descriptions, corporate profiles) and their realization in text, sound and images
Trade Mark:                erento
(‘the opposed trade mark’)
The IRDA was advertised for possible opposition in the Australian Official Journal of Trade Marks on 8 May 2008. On 7 August 2008, Cameron Nicol, (‘the opponent’) filed Notice of Opposition (‘NOO’) to the extension of protection to the IRDA. The NOO includes the ground which was argued before me at a hearing of the matter – that ground is:
The Opposed Trade Mark is substantially identical with or deceptively similar to a trade mark registered by the Opponent under Australian Trade Mark Registration No. 1118742 “erento”, covering “rental of advertising space on the Internet” in class 35, in respect of similar goods and/or closely related services or similar services and/or closely related goods and the priority date of the Opposed Trade Mark is not earlier than the priority date for Registration No. 1118742. Accordingly, the registration of the opposed Trade Mark must be refused pursuant to the provisions of Section 44 of the Act.
The matter came before me as a delegate of the Registrar of Trade Marks to be heard in Canberra on 11 October 2010. Peter Madigan of Counsel instructed by Michelle Gorton of Chrysiliou Law represented the opponent. Although Middletons represent the holder, the holder elected neither to appear at the hearing nor to rely on written submissions.
Evidence
Since the outcome of these proceedings is straightforward and does not bear overmuch discussion, I will discuss the evidence briefly.
The parties have filed evidence in support (‘EIS’) of the opposition, evidence in answer (‘EIA’), and evidence in reply (‘EIR’). This comprises:
oEIS: declaration by Cameron Arthur Nicol
oEIA: declaration by Christian Moller
oEIR: declarations by Angela Bohlmann, Michelle Gai Gorton, Gabrielle Hegerty.
Relevantly, in his evidence, Mr Nicol attests to the registration of his trade mark on which he relies under the section 44 ground of opposition:
Registration No:           1118742
Priority Date:               14 June 2006
Services:  Class 35: Rental of advertising space on the Internet
Trade Mark:                erento
In his evidence, Mr Moller attests to the nature of the services proposed to be offered under the opposed IRDA (and hence provides an illustration of what the rather opaque descriptions of some of the services proposed to be offered under the trade mark might mean). Mr Moller says:
The Applicant is a broker of rental contracts through various websites all linked under the central domain address located at (erento Website). Essentially, the erento Website offers a platform through which hire companies can offer almost any type of product or service for hire to consumers to hire through the erento Website. The opportunity to display a company's goods or services on a widely accessible global platform is the main service offered by the Applicant.
The operation of the erento Website works by enabling hire companies to pay the Applicant a fixed amount per item per month to display goods or services for hire on the erento Website. In addition, the hire companies pay to erento a commission based on the net price of each rental agreement that is conducted through the erento Website. The Applicant provides a website on which companies can place an offer for a fee. Consumers who access the erento Website can then decide to rent the goods or services of rental companies who offer their rental items or services on the erento Website.
The declarations in reply by Ms Bohlmann, Ms Gorton and Ms Hegerty go to the opponent’s perceptions of the similarity of services offered under the trade marks of the parties.
Submissions
Mr Madigan’s submissions, as I have previously intimated, go to section 44 of the Act and concentrate mainly on the opponent’s perceptions of the similarity of the services offered, or proposed to be offered, under the trade marks of the parties.
Section 44
Section 44 of the Act relevantly[2] provides:
[2] It is not alleged that the opposed trade mark has been used in Australia, so the provisions of subsections 44(3) and (4) are not relevant to this matter.
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Given that the trade marks in question are identical, and the trade mark registration on which the opponent relies has a priority date earlier than that of the opposed IRDA, the question remaining is whether the services in question are similar services.
The expression ‘similar services’ is defined by subsection 41(2) which provides:
14Definition of […] similar services
[…]
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The expression, ‘services of the same description’ was judicially considered in Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 by Burchett, Sackville and Lehane JJ. They said:
Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, “The Trade Marks Amendment Act 1978” (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (“TM Act 1955 “), although the expression “services of the same description as [services in respect of which the trade mark is registered]” was used in the earlier legislation: see TM Act 1955 , ss 33(2), 36(1A). The question whether two sets of goods are “of the same description” has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at 606 the High Court said this:
There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek's Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...’.
Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:
“In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase `goods of the same description' ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other.”
We accept that these principles, subject to any necessary modification, apply in relation to services.
I consider that it is most practical here to consider the services of the parties from the point of view of the person who would be availing themselves of those services – and not engage in an abstruse item-by-item analysis of the holder’s services relative to the opponent’s services. It is, after all, amongst the potential users of the services offered by the parties that deception or confusion might occur.
I repeat the evidence of Mr Moller concerning the nature of the services offered by the holder:
The Applicant is a broker of rental contracts through various websites all linked under the central domain address located at (erento Website). Essentially, the erento Website offers a platform through which hire companies can offer almost any type of product or service for hire to consumers to hire through the erento Website. The opportunity to display a company's goods or services on a widely accessible global platform is the main service offered by the Applicant.
The operation of the erento Website works by enabling hire companies to pay the Applicant a fixed amount per item per month to display goods or services for hire on the erento Website. In addition, the hire companies pay to erento a commission based on the net price of each rental agreement that is conducted through the erento Website. The Applicant provides a website on which companies can place an offer for a fee. Consumers who access the erento Website can then decide to rent the goods or services of rental companies who offer their rental items or services on the erento Website.
From the point of view of the user of the holder’s service, the holder’s service appears to be a service which advertises the service, or services, that the user offers in return for a fee and a percentage of the value of the hire contract which may ensue. In terms of Angela Bohlmann’s[3] declaration, (and from the point of view of the user of the service)[4] the holder in fact advertises services in much the same way that eBay or other internet auction sites advertise goods for sale. Thus, while the holder might regard itself as being a broker of services, the users of the service offered by the holder might equally accurately regard the service as being an advertisement of the services that the users offer or perform. Accordingly, the services offered under the opposed IRDA might also be accurately characterised as being an advertising service.
[3] Ms Bohlmann was employed for three years in eBay’s public relations department.
[4] And I note that these observations also hold true for the general public which may avail themselves of the services advertised on the holder’s website who may not be aware that a ‘brokerage fee’ is involved.
It is my assessment that the bulk of the services envisioned by the parties’ specifications of services in question are the same services and, if these particular services are not the same services, they are services of the same description. In terms of the holder’s description of its services, the entire suite of services listed therein appears that it might be a necessary part of the internet based advertising service that the holder performs. There is no argument to the contrary from the holder and I do not wish to appear to advocate for it.
The opponent has accordingly established his opposition to extension of protection to the opposed trade mark.
Decision
Regulation 17A.34 provides:
17A.34 Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2)The Registrar must tell the International Bureau of his or her decision.
I refuse protection in respect of all of the services listed in the IRDA. If there has been no appeal against this decision within the allowed period, I direct that (after the elapse of that time) the Hearing Support Staff write and inform the International Bureau of this decision.
Costs
The opponent is entitled to his costs which I award at the official scale against the holder.
Iain Thompson
Hearing Officer
Trade Marks Hearings
18 May 2011

international registration designating Australia, or IRDA, means a request, made under Article 3ter (1) or (2) of the Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark.

[2011] ATMO 40

18 May 2011

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Intellectual Property

Commercial Law

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Appeal

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