Circle Internet Financial Limited v Stiftung Concordium
[2024] ATMO 69
•19 April 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Circle Internet Financial Limited to extension of protection of trade mark application number 2289747 (International Registration Number 1675019) (classes 9, 16, 36, 41 and 42) - (figurative device) - in the name of Stiftung Concordium.
Delegate:
Nicole Worth
Representation:
Opponent: IP Gateway Patent & Trade Mark Attorneys Pty Ltd
Holder: none
Decision:
2024 ATMO 69
Trade Marks Act 1995 (Cth) – opposition under reg 17A.33 – grounds of opposition under ss 44, 58, 60 and 42(b) – no grounds established – extension of protection granted.
Background
1. This decision concerns an opposition under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) brought by Circle Internet Financial Limited (‘Opponent’) to the extension of protection to Australia of the following International Registration Designating Australia (‘IRDA’).
Trade Mark: (‘Trade Mark’)
Australian application no.: 2289747
Holder: Stiftung Concordium (‘Holder’)
Priority Date: 8 December 2021
Filing Date: 17 May 2022
Goods and Services: Classes 9, 16, 36, 41 and 42. The full specification is at Appendix A of this decision.
2. The IRDA was examined and accepted for possible extension of protection. The acceptance was advertised on 2 August 2022. On 4 October 2022 the Opponent filed a Notice of Intention to Oppose the extension of protection, followed by a Statement of Grounds and Particulars (‘SGP’) on 3 November 2022. The Holder filed a Notice of Intention to Defend the IRDA on 9 January 2023.
3. The Opponent filed evidence in support of its opposition on 19 April 2023, and in the absence of any evidence in answer from the Holder, requested that the matter be heard by way of written submissions. It filed its written submissions on 17 January 2024. The Holder elected not to file submissions.
4. The opposition to extension of protection has now been allocated to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I do so on the basis of the documents identified above.
5. In this decision all references to a section or regulation are references to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise stated.
Grounds of Opposition, Onus and Relevant Date
6. Regulation 17A.34 provides that extension of protection may be opposed on any of the grounds on which an International Registration Designating Australia may be rejected, and on the grounds set out in sections 58 to 61 and 62A of the Act.
7. The SGP nominates grounds of opposition under ss 42, 44, 58 and 60. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is the ordinary civil standards of the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the filing date of the application, being here 17 May 2022.[3] The Holder has also claimed a Convention Priority Date pursuant to the Madrid Protocol, being 8 December 2021 – this is the priority date for the grounds of opposition pursuant to ss 44 and 60.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Evidence
8. The evidence filed in this opposition comprises a single declaration by Flavia Naves, General Counsel of the Opponent, with exhibits 1 to 13, dated 13 April 2023 (‘Naves’).
9. Of the Opponent, Naves states:
Circle Internet Financial Limited (Circle) was founded in 2013 and has as its mission to increase global economic prosperity through the frictionless exchange of financial value. Circle intends to connect the world more deeply than it is currently by building a new global economic system on the foundation of the internet, and to facilitate the creation of a world where everyone, everywhere can share value as easily as we can today share information, content, and communications on the internet. Circle is one of the first digital asset-native commercial financial institutions built on public blockchain ecosystems and decentralized finance protocols.[4]
[4] Naves, [8].
10. The Opponent is a global digital financial services entity which issues a digital currency, USD Coin. As at 2021 the value of USD Coin in circulation and the value of transactions supported by USD Coin are in the order of billions.[5] Along with issuing the currency the Opponent operates the underlying financial infrastructure for using that currency, including redemption of USD Coin, treasury and liquidity management, and management of the assets that back USD Coin in circulation. The Opponent also provides a range of services including access to investment using USD Coin and access to various application program interfaces (such as to allow for automation of payments and storage of digital assets).
[5] Naves, [23].
11. Nave states that the core brand of the Opponent is CIRCLE (‘Opponent’s Word Mark’) and the main logo associated with the Opponent’s Word Mark is that shown below.
(‘Opponent’s Device Mark’)
12. In Australia the Opponent’s Device Mark is registered and the Opponent has applied for registration of the Opponent’s Word Mark. Worldwide, the Opponent has registered or applied for the registration of a number of trade marks, shown below.[6]
[6] Naves, [41].
13. The main website of the Opponent is at ‘ which Naves states ‘is, and always has been, accessible from Australia by Australian organisations and customers’. Screenshots of the website, both current and historical,[7] are provided. They show use of the word CIRCLE since 2014 and variations of the logo as shown below:
[7] Historical screenshots were obtained via the Internet Archive’s Wayback Machine and date from 2014.
From 2014
From approx. 2015 to approx. 2020
From approx. 2020 to present
14. Confidential website data[8] shows the number of ‘New Users’ and ‘Sessions’ in each year from 2013 to 2023 (part year), for both Australia and globally. In respect of Australia, the figures are low to modest but show growth overall.
[8] Naves, Confidential Exhibit 8.
15. Other than on the website, the ‘CIRCLE brand’ is promoted in advertisements (it is not stated where or when these advertisements appeared); by participation of the Opponent’s senior personnel in major events such as the World Economic Forum (‘WEF’) in Davos, Switzerland; by temporary signage at the Promenade in Davos during the 2022 WEF; and via social media channels each of which has a moderate amount of followers.
Section 44
16. It is convenient to begin with the discussion of s 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 (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.
17. Subsections (3) and (4), referred to above, are provisions under which an applicant may obtain registration of a trade mark despite the existence of a prior similar registered trade mark. The Holder has not filed any evidence or made submissions in respect of the application of sub-ss (3) and (4), and so I have not considered those provisions in this decision. The establishment of the ground therefore rests upon whether either or both of sub-ss 44(1) and/or (2) are established.
18. In order to establish the ground under s 44, the Opponent must identify a trade mark which is registered or pending registration, in the name of someone other than the Holder, which (a) has an earlier priority date than that of the Trade Mark; (b) is substantially identical or deceptively similar to the Trade Mark; and (c) is registered in respect of at least some goods or services which are similar to at some of the Holder’s goods or services. In this respect the Opponent relies upon the Opponent’s Device Mark and the Opponent’s Word Mark (collectively ‘the Opponent’s Trade Marks’), shown below along with their registration details.
CIRCLE
Priority Date: 16 November 2021 Priority Date: 16 November 2021 Status: Registered Status: Under examination Class 36: Financial transaction services, namely, providing electronic transfer of virtual currency; financial transaction services, namely, virtual currency transaction services for transferrable electronic cash equivalents; electronic funds transfer, namely, electronic transmission of digital currency via electronic communications networks and electronic devices; providing electronic processing of electronic payments via a global computer network; electronic transfers of money; cryptocurrency investment services; cryptocurrency brokerage services; financial services, namely, cryptocurrency portfolio management services; electronic credit and debit transactions, namely, providing electronic processing of cryptocurrencies; Cryptocurrency payment processing
Class 42: Platform as a service featuring computer software platforms for managing investments, purchasing and selling of blockchain-based technologies in the nature of cryptocurrency; platform as a service featuring computer software platforms for account to account transfers of cryptocurrency; providing technological information in the field of cryptocurrency; electronic storage of cryptocurrency for others; providing user authentication services using blockchain-based software technology for cryptocurrency transactions; application service provider featuring application programming interface (API) software for blockchain-based cryptocurrency transactions and uses
Class 36: Financial transaction services, namely, providing electronic transfer of virtual currency; financial transaction services, namely, virtual currency transaction services for transferrable electronic cash equivalents; electronic funds transfer, namely, electronic transmission of digital currency via electronic communications networks and electronic devices; providing electronic processing of electronic payments via a global computer network; electronic transfers of money; cryptocurrency investment services; cryptocurrency brokerage services; financial services, namely, cryptocurrency portfolio management services; electronic credit and debit transactions, namely, providing electronic processing of cryptocurrencies; Cryptocurrency payment processing
Class 42: Platform as a service featuring computer software platforms for managing investments, purchasing and selling of blockchain-based technologies in the nature of cryptocurrency; platform as a service featuring computer software platforms for account to account transfers of cryptocurrency; providing technological information in the field of cryptocurrency; electronic storage of cryptocurrency for others; providing user authentication services using blockchain-based software technology for cryptocurrency transactions; application service provider featuring application programming interface (API) software for blockchain-based cryptocurrency transactions and uses
19. It is straightforward that the priority date of the Opponent’s Trade Marks is earlier than the priority date of the Trade Mark, by approximately three weeks. Accordingly, I must decide if the Trade Mark is substantially identical or deceptively similar to one or both of the Opponent’s Trade Marks, and if so, whether the Holder’s goods are closely related to the Opponent’s services and/or whether the Holder’s services are similar to those of the Opponent.
20. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J articulated the test for determining substantial identity as follows:
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.[9]
[9] (‘Shell’) [1963] HCA 66, [12].
21. The Trade Mark is reproduced side by side with the Opponent’s Trade Marks below.
CIRCLE
The Trade Mark
The Opponent’s Device Mark
The Opponent’s Word Mark
22. It is immediately apparent that none of the trade marks are identical. Nor do I consider they are substantially so. The Trade Mark appears primarily as an incomplete target or bullseye, wherein the outer circle is missing two sections. It might also appear to some as a stylised letter ‘C’ partially enclosing a solid disc and with an additional short arc on the same trajectory as the ‘C’, although without some other feature to bring this to mind it is considerably less likely to be interpreted so. On the other hand, the Opponent’s Device Mark is comprised of two sections of concentric circles, each section being open at one end and closed at the other. It is not particularly reminiscent of a target or bullseye, and without some other feature to bring it to mind, is unlikely to be interpreted as letters ‘C’.
23. The Opponent contends that the Trade Mark and the Opponent’s Device Mark each share the same essential features, namely both marks are circular overall and presented in black on a white background, both marks are made up of an outer circle portion and inner circle portion, in both marks the outer circle portion and the inner circle portion are separated by a curved white space, and in both marks there are gaps in the outer circle portion such that they join the white spaces in between and outside the circle portions. The Opponent contends that given both marks contain these ‘dominant cognitive cues’, and there are no other significant visual (or other) elements to differentiate them, a total impression of similarity emerges and the marks are therefore substantially identical. However, whilst the features of the trade marks may be described in such a similar manner (although it is not the only way to describe the features), the differences between the two trade marks are immediately apparent when inspected visually.
24. As for the Opponent’s Word Mark, the word CIRCLE is neither conceptually, visually or aurally substantially identical to the Trade Mark. The Trade Mark is not merely a circle, such that the word equates to the Trade Mark.[10]
[10] In the sense found in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69], wherein the High Court found that the addition of an image of a bare foot did not substantially affect the identity of the word BAREFOOT and that another trade would be precluded from registering the device alone whilst the word remained on the Register, because the device was an illustration of the word.
25. Contrary to the Opponent’s assertions, I consider that the differences between the parties’ marks immediately strike the eye, such that in a side-by-side comparison a total impression of resemblance does not emerge. I am therefore not persuaded that the Trade Mark is substantially identical to either of the Opponent’s Trade Marks.
26. As to deceptive similarity, Windeyer J continued in Shell to say that:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[11]
[11] Shell (n 8) [13].
27. The recollection of the prior mark by persons of ordinary intelligence and memory may be imperfect. This notion was discussed by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd as follows (references omitted):
[T]he notional buyer's imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity. The test assumes that the notional buyer has an imperfect recollection of the mark as registered. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used). As has been explained by the Full Federal Court, "[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor's statutory monopoly to its full extent".[12]
[12] 2023 HCA 8, [29].
28. The Opponent asserts that the presence in each mark of same elements described in paragraph [23] of this decision means that the Trade Mark and the Opponent’s Device Mark must be found to be deceptively similar. The Opponent also points out that the goods and services of the parties are largely the same or substantially overlapping, are provided to the same kinds of customers, marketed in the same ways and provided through the same channels. In support of its case the Opponent refers to Clarendon Lawyers Pty Ltd v Cornwalls Lawyers Pty Ltd (‘Clarendon’)’[13] In Clarendon the first two of the trade marks below were found to be deceptively similar to the third trade mark.
[13] [2020] ATMO 192 (Hearing Officer Smith).
29. I consider that the impression of the Opponent’s Device Mark is different to that of the Trade Mark. In my estimation the impression of the Opponent’s Device Mark is that of two concentric circles divided diagonally. It does not bring to mind any known item or object (with the exception perhaps of a Poké Ball, although not likely for the relevant demographic). The precise manner in which the circles are divided or the lines are connected may not be recalled. However, I consider it quite unlikely they would be recalled in such a manner that the Opponent’s Device Mark would be confused with the Trade Mark. Unlike the Opponent’s Device Mark, the Trade Mark does bring to mind a known item or object, being an incomplete target. Even if it did not, I consider that the specific rendering of the two devices quite distinct, their only common essential feature being concentric circles. It is additionally unsurprising that both entities have adopted circular devices. I am aware from my own knowledge that circular devices are not unusual for digital currencies, likely on account of being reminiscent of coins.
30. In respect of Clarendon, I am not persuaded that the trade marks at issue here share the same degree of similarity as the trade marks at issue there. In Clarendon both parties’ marks comprised incomplete circles made up of multiple thin concentric lines, and shared a conceptual similarity wherein the lines terminated such that the resulting shape could be interpreted as a letter ‘C’ (which indeed both were meant to represent, each party’s composite marks containing the names Cornwalls and Clarendon respectively). These factors tipped the balance in favour of deceptive similarity, despite the noted difference of the number of concentric lines and the ways in which the circles terminated. Here, however, there are both conceptual and visual differences which differentiate the marks.
31. The Opponent has also submitted that all of the below trade marks were found to be deceptively similar.[14] However, as with Clarendon all of these examples involve a conceptual nexus that is absent in the subject opposition.
[14] Taken from the Opponent’s written submissions at paragraph [71].
32. Bearing the above considerations in mind, I am not satisfied that the Trade Mark and the Opponent’s Device Mark are deceptively similar.
33. As to the Opponent’s Word Mark, the Opponent refers to decisions of the Registrar wherein words have been found to be deceptively similar to their pictorial equivalents (or vice versa).[15] However the primary difference between those cases and this is that the images involved were clearly a depiction of the word with which they were being compared – for example the delegate in Teraglow Pty Ltd stated (emphasis added):
I therefore do not consider it an impermissible extension of the principle in Jafferjee to find that a word and its pictorial equivalent are deceptively similar and it is open to me to make such a finding here.
I am satisfied that the image comprising the Trade Mark bears the hallmarks of a samurai, and that is how the Trade Mark will be perceived and recalled…[16]
[15] In particular, Teraglow Pty Ltd [2016] ATMO 32 (‘Teraglow’); Constellation Australia Limited v Littore Family Wines Pty Ltd [2011] ATMO 47; and Carlton and United Breweries Ltd v Lion Nathan Limited [1999] ATMO 84.
[16] Teraglow (n 14) [33]-[34].
34. The Trade Mark is not simply a circle and is unlikely to be perceived and recalled as such. For that reason, I do not find the cited decisions of the Registrar persuasive. On the contrary, I consider that the Trade Mark is not deceptively similar to the Opponent’s Word Mark on account of the conceptual and visual differences between them.
35. Given that the Trade Mark is not deceptively similar to either of the Opponent’s Trade Marks, the ground of opposition under s 44 fails.
Section 58
36. Section 58 provides:
58 Applicant not the 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.
37. The term ‘owner’ is not defined in the Act, nonetheless there are numerous court decisions which have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods and/or services is taken to be the first person to use it in respect of those goods and/or services, or apply for its registration in respect of those goods and/or services, whichever is the earlier. The courts have established three factors that must be satisfied by an opponent to prove that an applicant is not the owner of the trade mark it seeks to register. In the context of the subject opposition, they are that:
· The Trade Mark must be substantially identical to the trade mark(s) relied upon by the Opponent;[17]
· The Holder’s goods or services must be the ‘same kind of thing’ as the goods or services for which the trade mark(s) relied upon by the Opponent are used;[18] and
· Use of the trade mark(s) relied upon by the Opponent must have commenced in Australia prior to whichever is the earlier of: (a) the application to register the Trade Mark, or (b) any use of the Trade Mark in Australia by the Holder.[19]
[17] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936 (Gummow J).
[18] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[19] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (McGarvie J).
38. The three trade marks relied upon by the Opponent are shown below, being the various devices it has used since 2014, alongside the Trade Mark for comparison.
39. As will become apparent it is appropriate to begin with an analysis of whether any of these trade marks are substantially identical to the Trade Mark. For largely the same reasons as canvassed in the discussion of s 44, I am not satisfied that they are. None are conceptually or visually similar to a degree that rises to substantial identity.
40. The first trade mark shares the common element of concentric circles and an incomplete circle enclosing a solid disc. However, the first trade mark appears more as a letter ‘C’ enclosing a disc, or perhaps simply an incomplete circle enclosing a disc. It appears less as a target given the width of the concentric circles is not equidistant, although such an interpretation is not altogether inconceivable. However, even if it was interpreted as a target, the breaks in the outer circumferences are significantly different – one being a small gap and the other being two sections which appear as overlaid corners. The second trade mark is perhaps the least similar to the Trade Mark. Its sole point of similarity is that it is comprised of concentric circles, however they are of significantly different width, are connected by two diagonal lines, and have no breaks or gaps in them. The third trade mark, being the Opponent’s Device Mark, is not substantially identical for the reasons already stated in the previous section.
41. Given that none of the trade marks relied upon by the Opponent in respect of s 58 are substantially identical to the Trade Mark, this ground of opposition fails.
Section 60
42. Seton 60 of the Act provides:
Section 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 a ground of opposition under s 60 the Opponent must demonstrate that as at the priority date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of ‘reputation’ was considered by Kenny J in McCormick & Co Inc v McCormick, wherein her Honour consulted the Macquarie Dictionary and on the basis of that definition concluded that it was ‘the recognition of the [trade mark] by the public generally’.[20] This is to be tempered by a recognition the size of the relevant market must be considered:
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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[21]
Here, the size of the relevant market is the whole population of corporations and institutions in Australia (Naves explains that to access and use USD Coin, corporations and institutions can enrol in a ‘Circle Account’ to transfer funds to and from it[22]). I note further that the relevant market is possibly broader, by virtue of Naves’ statement that the Opponent’s aim is to ‘facilitate the creation of a world where everyone, everywhere can share value as easily as we can today share information, content, and communications on the internet’.[23]
[20] [2000] FCA 1335, [81].
[21] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
[22] Naves [21].
[23] Ibid [9].
In considering use of a trade mark by an overseas owner Lockhart J observed in Re Conagra Inc v McCain Foods (Aust) Pty Ltd that:
[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 …[24]
[24] [1992] FCA 159, [118].
47. I bear in mind that television, radio, magazines and newspapers are no longer the most prominent forms of promotion, and the internet and social media are utilised to a much greater degree. Nonetheless the principle of demonstrating reputation within the jurisdiction remains – mere use upon a website based overseas, without more, will not establish use in Australia.[25]
[25] Taylor v Killer Queen, LLC [2023] FCA 364, [283]-[284] (Markovic J), citing with approval Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471. [43] (Merkel J).
48. To establish the ground of opposition under s 60 the Opponent appears to rely upon its entire range of trade marks that it has used over time. These include the Opponent’s Word Mark and the following:
and
Used from 2014
Used from approx. 2015 to approx. 2020
Used from approx. 2020 to present
49. At the outset I observe that there is no evidence of any use at all of a number of the word marks and composite marks identified in the first table. Nonetheless as will become clear, it is not necessary to address each of these trade marks in detail because the evidence does not show sufficient use of any of them in Australia or that Australian consumers have engaged sufficiently with the Opponent’s goods or services to establish a reputation here.
50. The Opponent relies in part upon its use and promotion of its trade marks on its website at ‘ Recent and historic screenshots of the Opponent’s website are in evidence, showing captured pages in each year dating back to 2014.[26] They demonstrate consistent use of the word CIRCLE along with the various devices shown in the second table above (the devices in the screenshots changing generally in accordance with the noted dates of use above). The most frequently appearing device is that comprised of the three thin concentric circles connected by two thin diagonal lines.
[26] Naves, Exhibits 4 and 5. I note that pages were apparently also captured in 2013, however screenshots of them are not in evidence.
51. Nonetheless, regardless of which of the Opponent’s trade marks was used and with what degree of frequency, the data[27] showing the number of Australian visitors to the website and the number of ‘sessions’ they engaged in is at best modest. This is particularly so when the data relating to the period after the priority date is discounted (that data being more than double any of the previous years). Even though some engagement with Australian visitors is demonstrated, it is not sufficient to indicate that any of the Opponent’s trade marks used upon the website would have attained a reputation in Australia at the priority date, given the size of the relevant market.
[27] Ibid Confidential Exhibit 8.
52. The use of the Opponent’s trade marks upon its social media channels does not support the existence of a reputation in Australia at the priority date either. Whilst it can be seen that a number of accounts were created prior to the priority date, the number of followers, likes or views are given as at April 2023, well after the priority date. Additionally, the numbers of followers, likes or views are not particularly high such that some recognition might be inferred.
53. Other forms of promotion include a number of articles about the Opponent’s participation in the World Economic Forum. However, there is no evidence that these articles appeared on any Australian websites or that there were any Australian readers of them (aside from the articles appearing on the Opponent’s own website, which may have had Australian readers but judging from the data in Confidential Exhibit 8 are likely to have been relatively few). Similarly, the fact of the Opponent’s participation itself in the World Economic Forum may have entered into the consciousness of Australian consumers, but there is no information upon which to evaluate how many consumers that may have been.
54. The Opponent also asserts that:
One important consequence of the evolution of the well-known device mark associated with the Opponent’s CIRCLE brand … is that circular logos and devices (i.e. logos and devices having a shape and appearance like the various versions and evolutions of the Opponent’s device mark) have become well known and associated with the Opponent, Circle, and the products and services it provides. The commercial and financial notoriety and success the Opponent has achieved also reinforces this: Naves [51].
As a result, if/when services like (i.e. similar to, or products closely related to) those that the Opponent provides are provided or promoted under or with reference to any circular logo or device that looks even somewhat similar to any of the various versions/evolutions of the Opponent’s device mark shown above (as the Applicant is doing), consumers and organisations would naturally and automatically assume that those products or services are provided by the Opponent, Circle, even if that is not that case: Naves [52].[28]
[28] Opponent’s written submissions, [100]-[101].
55. Aside from finding that the Opponent’s evidence does not establish that its trade marks had a reputation in Australia as at the priority date, I note that there are a number of circular logos and devices registered in the names of other traders in respect of goods and services related to cryptocurrencies in Australia, as indicated by the sample below.[29] The coexistence of numerous circular logos and devices in respect of goods and services similar to those of the Opponent contradicts the Opponent’s assertion.
[29] I take note of the Register of Trade Marks as public information which may reasonably be foreseen to be considered.
56. Given the Opponent has not established a reputation in any of its trade marks in Australia at the priority date, the ground of opposition under s 60 cannot succeed.
Section 42
57. Section 42 of the Act relevantly provides:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:…
(b) its use would be contrary to law.
58. The Opponent must satisfy the Registrar that use of the Trade Mark would, not could, be contrary to law.[30] It asserts the ground on the basis that use of the Trade Mark would be misleading or deceiving such that it would contravene ss 18 and 29 of the ACL and/or constitute the common law tort of passing off.
[30] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
59. The relevant provisions of the ACL require that I be satisfied that it is likely consumers would be misled or deceived into believing that the Holder’s goods and services have a connection with the Opponent’s goods and services. The threshold for this is higher than that in relation to s 60, which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that s 60 is established, it follows that, on the stricter test posited by the ACL, I am not satisfied that the use of the Trade Mark is likely to mislead or deceive under the ACL.
60. For similar reasons I am not satisfied that use of the Trade Mark amounts 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 ss 18 and 29 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.[31]
[31] [1989] FCA 506, [40] (citations omitted).
61. Given that contravention of ss 18 and 29 of the ACL is not established, the ground based on passing off likewise fails.
Decision and Costs
62. Regulation 17A.34N relevantly provides:
17A.34N 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 the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
63. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Extension of protection to Australia may be granted to trade mark application number 2289747 (IRDA number 1675019) not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
64. The Opponent sought an award of costs in its favour. However, it has not succeeded in its opposition. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
19 April 2024
APPENDIX A
Class 9: Computer software applications for block chain platforms, namely software platforms for distributed applications and software using a consensus engine incorporating block chain technology to secure data with cryptographic information; software platforms for the development and construction of distributed software applications and distributed computing platforms; computer software platforms for block chain; downloadable cryptographic keys for receiving and spending cryptocurrency; decentralized finance software and applications.
Class 16: Instructional or teaching material (except apparatus) for supporting conferences, workshops, retreats, camps and field trips in the field of blockchains and distributed computing platforms.
Class 36: Crypto currency services, namely provision of a digital currency or a digital token for use by members of an online community via a global computer network; cryptocurrency services, namely, providing a digital currency or digital token incorporating cryptographic protocols, used for operating and building applications and blockchains on a decentralized computing platform and as a means of payment for goods and services; financial trading of virtual currencies; Financial transactions via blockchain; financial services relating to digital currencies; digital currency (cryptocurrency) asset management services.
Class 41: Arranging, organizing and conducting educational and commercial conferences; educational services, namely, arranging, organizing and conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of blockchains and distributed computing platforms.
Class 42: Software development services; design, development and implementation of software for distributed computing platforms; design, development and implementation of software in the field of block chains; research and development of software; advice in software development and product development in the field of distributed computing platforms; advice in software development and product development in the field of block chains.
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