Cisco Technology Inc v Commonwealth Scientific and Industrial Research Organisation

[2015] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by CISCO Technology Inc to registration of trade mark application 1470262(1,2,4,5,6,7,8,9,10,11,16,17,18,19,25,28,31,25,27,28,29,40,41,42) - CSIRO Logo and Device - in the name of Commonwealth Scientific and Industrial Research Organisation

Delegate:	Iain Campbell Thompson
Representation:	Opponent: David Kell, of Counsel, instructed by Baker & McKenzie Applicant: Michael Hall, SC, instructed by King & Wood Mallesons
Decision:	2015 ATMO 26 S52 opposition s44 comparison of trade marks, trade marks not deceptively similar – notoriety of element of the Trade Mark – ground not established; sections 60 and 42 – grounds not established.

Background

1. Commonwealth Scientific and Industrial Research Organisation (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark details of which appear below insofar as they are relevant to this matter:[1]

   [1] The registration of the Trade Mark is opposed only in relation to the goods and services defined as ‘the Goods and Services’.

Application No:         1470262
Priority Date:             23 January 2012 (‘the Relevant Date’)

Goods/Services:         Class 9: Scientific apparatus and instruments; computer software

Class 16: Printed publications; stationery; instructional and teaching materials (except apparatus); office requisites (except furniture)
Class 38: Telecommunications
Class 41: Arranging and conducting of conferences, seminars; scientific educational services and information; organisation of exhibitions; library services, publication of texts
Class 42

: Scientific and industrial research; analysis for oil field exploration; bacteriological research; calibration; chemical analysis; chemical research; chemistry services; computer programming; computer software design; scientific consulting; industrial design; engineering; geological research; research relating to horticulture;
material testing; mechanical research; physics; research and development

(‘the Goods and Services’)

Trade Mark:               

(‘the Trade Mark’)

1. The application was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 May 2012.

2. On 17 November 2012, after seeking and receiving an extension of time in which to do so, CISCO Technology Inc (‘the Opponent’) filed Notice of Opposition to the registration of the Trade Mark. The Notice embraces all available grounds to oppose a standard trade mark application and thus includes those under sections 44, 60, and 42 subsequently argued at a hearing of the matter.

3. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 13 February 2015.  The Opponent was represented by David Kell of Counsel, instructed by Baker & McKenzie.  The Applicant was represented by Michael Hall, SC, instructed by King & Wood Mallesons.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]  The relevant date at which the grounds must be considered is the filing date of the application.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, , Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence filed in this matter comprises declarations by:

   Evidence in Support

   Angela Stark made on 27 August 2013 together with Annexures AS-1 to AS-53.

   Evidence in Answer

   Oona Sunniva Nielssen made on 7 March 2014 together with Annexures OSN-1 to OSN-76

   Melissa Anne Miller made on 13 March 2014 together with Annexures MAM-1 to MAM-7

   Evidence in Reply

   Erin Cassidy made on 12 June 2014 together with Annexures EC-1 to EC-2.

2. Ms Stark’s declaration brings into evidence details of the Opponent’s trade mark registrations – most notably that immediately below:

Registration No:  1134789
Priority Date:  12 September 2006
Convention Claim:                 17 August 2006 – 78954940 – United States of America

Goods/Services:  Class 9: Electrical and scientific apparatus; computer hardware and software for interconnecting, managing, securing and operating local and wide area networks and telephony systems; telephones, telephone headsets; electronic communication devices, namely, personal digital assistants, pagers, and mobile telephones; wireless communications devices, namely, wireless LAN hardware and software for the transmission of voice, data, audio, and video; call processing software for the transmission of data, video, and voice traffic; downloadable instructional materials, namely, manuals, guides, test materials, and magazines in the fields of network communications, and managing, operating and using local, wide and global networks, and cable television systems; televisions; stereos; DVD players; CD players; consumer electronics; routers; gateways; switches; network access range expanders; Internet video cameras; print servers; communication terminals comprising computer hardware and/or software for providing video, audio, data, video game, and telephone communications and/or transmissions; network storage devices, comprised of computer hardware and/or software; interfaces for interconnecting computers, projectors, stereo systems, game consoles, home appliances and/or other electronic devices; devices for recording, organizing, transmitting, and reviewing audio files; computer hardware; network interface cards; network cables; computer network adapters; servers; computer hardware containing network security functionality, including firewalls, data encryption, and/or interoperability with network security protocols; computer software and hardware for sending, storing, managing, integrating and accessing text and voice messages via telephone, electronic mail, pagers, personal digital assistants, and internal and global computer networks; digital video recorders; set-top boxes; cable television units; hardware and software for us in cable television systems, content distribution systems, and communication systems

Class 16: Books and manuals regarding the interconnecting, managing and operating of local and wide area networks; computer manuals for computer networking; printed instructional materials, namely books, manuals, guides, test materials, and magazines in the fields of network communications, managing, operating and using local, wide and global networks, and cable television systems; technical manuals; packaging; labels
Class 36: Financing services for the lease or purchase of computer hardware and computer software
Class 38: Telecommunication services; on line services, namely, providing information via local and global computer networks in the field of telecommunications and telephony; broadcasting programs via computer networks; providing telephone conferencing services; providing video conferencing services; electronic voice messaging, namely, the recording and subsequent transmission of voice messages; providing telecommunications services, namely, web conferencing services; telephony services
Class 41: Educational services, namely, conferences, training courses, testing, workshops, and distributing course materials in connection therewith, all in the fields of computer networking, broadband networks, computer systems, telecommunication systems, IP telephony, cable television systems, security and storage
Class 42: Customer support services in connection with computer hardware and software for use in interconnecting, managing and operating local and wide area networks, namely, computer network design, computer consultation services, updating of computer software, computer systems analysis, cable television systems, and engineering services; providing technical consultation in connection with computer hardware, computer software, computer networking equipment, telephony systems, telecommunications equipment, IP telephony, and telecommunication systems, computer network design, storage design, security of networks, and voice and wireless communications; application service provider (ASP), namely, hosting the software applications of others; computer consulting services; computer network design for others; on line services, namely, providing information via computer networks in the fields of computer networks, computer systems, cable television systems, on-line commerce, technical consultation and research, and systems design; application service provider (ASP) featuring software in the fields of audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; computer consulting; on line services, namely, providing information via computer networks in the field of computer networking; on line services, namely, providing information via computer networks in the field of computer and network security
Class 45: Monitoring of computer systems and computer networks for security purposes

Trade Mark:  

(‘the Opponent’s Logo Trade Mark’)

1. Ms Stark also refers to the trade mark which appears below which is (as relates to this matter) registered for a generally similar range of goods and services as the Opponent’s Logo Trade Mark:

Registration No:  1453311
Priority Date:  12 October 2011
Trade Mark:  

(‘the Opponent’s Device Trade Mark’)

1. Ms Stark explains:

   The Opponent is a wholly owned subsidiary of Cisco Systems, Inc., which, together with its other affiliated entities, including, Cisco Systems Australia Pty Ltd, the Australian subsidiary of Cisco Systems, Inc., are hereafter [in Ms Stark’s Declaration] collectively referred to as “Cisco”.

   Cisco was founded in December 1984 in Menlo Park, California USA by a husband and wife team from Stanford University: Leonard Bosack (“Bosack”) and Sandra Lerner (“Lerner”). Bosack was the manager of the computer science department’s laboratory, and Lerner oversaw the computers at the graduate school of business. While at Stanford University, Bosack devised a technology called “internetworking router” to connect the two local area networks in the respective departments where he and his wife worked. This technology served as the foundation for Cisco’s eventual success in pioneering and advancing the commercialization of networking and communications equipment and technology.

   Cisco is currently headquartered in San Jose, California, USA, and operates in over 160 countries with over 400 offices worldwide, including in Australia. As of the 2^nd quarter of fiscal year 2013 Cisco had nearly 70,000 employees worldwide and annual revenue of $USD 12.1billion.

2. The goods and services produced/provided by the Opponent are, Ms Stark states:

   … a wide range of networking, video, collaboration and communications products and services, which include, among others, networking and computer hardware and software, IP telephony, web and video conferencing products, video and content delivery and sharing platforms, energy management products, mobility and security products and services. Cisco also offers industry leading customer technology support services, technology consulting and design services, education, training and technology certification services.

3. The ‘product segments’ in which the goods are sold, states Ms Stark, include: routing: edge/core/access, telepresence, wireless LAN, switching: modular/fixed, voice, web conferencing and security.

4. Ms Stark continues:

   [The] range of customers and markets (which is also the range of Cisco’s customers and markets in Australia) include:

   (a) Enterprise - enterprise businesses which include regional, national and global organisations with multiple locations or branch offices and typically employ 1000 or more employees. These businesses have IT, collaboration, and networking needs within a multi vendor environment. Cisco sells products through a network of third party application and technology vendors and channel partners, as well as selling directly to these customers.

   (b) Service Providers - service providers offer data, voice, video and mobile/wireless services to businesses, governments, utilities and consumers worldwide. They include regional, national, and international wireline carriers, as well as Internet, cable, and wireless providers. Media, broadcast and content providers are grouped within this market. Service providers use a variety of Cisco’s routing, switching, optical, security, video, mobility and network management products, systems and services for their own networks.

   (c) Commercial - commercial businesses are companies with fewer than 1000 employees. These customers are served by a combination of Cisco’s direct sales force and channel partners. These customers require information technologies and communication products that are easy to configure, install and maintain.

   (d) Public Sector - public sector entities include federal governments, state and local governments as well as educational institution customers. Cisco sells to public sector entities through a network of third-party application and technology vendors and channel partners, as well as selling directly to these customers.

   (e) The home - individuals or families who have IT and networking requirements.

5. Ms Stark further explains that the Opponent’s trade marks, at [7] and [8] above, are the result of a rebranding by the Opponent in 2006.  Prior to the rebranding, the Opponent’s trade mark was that immediately below:

6. Me Stark states that the rebranding was because, “Cisco’s products were becoming increasingly visible to people in the workplace, and these people were the ones encouraging the technology decisions at their work, as well as in the home. For example, Cisco’s IP phones and computer hardware products bearing the [Opponent’s Logo Trade Mark] now sit on the desks of millions of office workers around the world, including in Australia.”  Indeed, as Mr Kell observed during the hearing, there was such a phone bearing the Opponent’s Logo Trade Mark in the hearing room.

7. Ms Stark further states that the Opponent’s Logo Trade Mark was first used at least as early as October 2006 in the United States, and worldwide at least as early as January 2007.

8. Concerning the reputation of the Opponent’s Logo Trade Mark, Ms Stark says:

   Apart from Cisco’s outstanding products and technology solutions, the [Opponent’s Logo Trade Mark] is a valuable asset to Cisco, and is considered one of the most valuable brands in the world. Cisco has consistently maintained a top twenty position in the “100 Best Global Brands” ranking issued by InterBrand, an international branding consultancy company, since the rankings inception in 2001. The current ranking for the year 2012 ranks the [Opponent’s Logo Trade Mark] at number 14 of the 100 Best Global Brands.

9. The Opponent has over 1500 employees in Australia and over 2000 authorised resellers and “channel partners”.  The Opponent has five Australian distributors that supply those resellers and “channel partners”.

10. Ms Stark also details the Opponent’s extensive educational, advertising and promotional activities involving Opponent’s Logo Trade Mark including those within Australia.  While Mr Hall observed that it is not obvious that all of these activities occurred in Australia, I am satisfied that many of them did and that others (which may not occur in Australia) are of the nature within their marketplace that they contribute to the reputation of the Opponent’s Logo Trade Mark within Australia[4].  Purchasers in the major markets of the Opponent – those, for example, in businesses, educational establishments, government departments and hospitals – are likely to keep themselves well informed about the field in which they work.

    [4] Conagra Inc v Mccain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193; (1992) AIPC 90-892; (1992) 106 ALR 465; (1992) 33 FCR 302

11. Ms Nielssen is General Manager Communication of the Applicant.  Ms Nielssen explains:

    The Applicant is Australia’s national science agency, a statutory corporation established as the Commonwealth Scientific and Industrial Research Organisation under the Science and Industry Research Act 1949 (Cwlth) (the “CSIRO Act”). “CSIRO” is the acronym for the “Commonwealth Scientific and Industrial Research Organisation” and the name by which the Applicant has been known since as early as 1949. The Applicant’s functions are set out in section 9 of the CSIRO Act and include: to carry out scientific research to assist Australian industry, further the interests of the Australian community, contribute to the achievement of national objectives and international responsibilities of the Commonwealth; to facilitate the utilisation of the results of its research; to carry out services and make facilities available in relation to science; to liaise between Australia and other countries in matters connected with scientific research; to train research workers in the field of science; to establish award fellowships for research; to publish scientific and technical reports, periodicals and papers and other secondary functions.

    The Applicant traces its origins to 1916 when the Australian Government established the Advisory Council of Science and Industry. The Applicant’s predecessor body, the Council for Scientific and Industrial Research (the “CSIR”) was then established in 1926 by the Science and Industry Research Act 1926 (Cwlth) to carry out scientific research to assist primary and secondary industries in Australia.

    In the 1930’s and 1940’s the Council conducted research in the fields of animal and plant pests and diseases, fuel problems, preservation of foodstuffs and forest products. With the onset of World War II in 1939 the Council expanded its research to assist the Australian Defence Forces. Following World War II, the Council broadened the scope of its research to include building materials, wool textiles, coal, atmospheric physics, physical metallurgy and the assessment of land resources.

    In 1949, with the passing of the CSIRO Act, the Commonwealth Scientific and Industrial Research Organisation was established.

    The Applicant is regarded as one of the largest and most diverse research agencies in the world, with its research delivering solutions for agribusiness, energy and transport, environment and natural resources, health, information technology, telecommunications, manufacturing and mineral resources. The Applicant now conducts research in most fields of primary, secondary and tertiary industry as further discussed below, as well as emerging sectors such as information and communication technologies, gene technology and nanotechnology.

    The Applicant undertakes over 500 research activities each year in over 80 countries.

    The Applicant works in partnership with approximately 1600 Australian companies and 375 multi-national corporations each year, including Boeing, GE, Bayer, Origin, IBM, BHP Billiton, NASA, NBN Co, iiNet and Orica.

    The Applicant is in the top 1% of global research institutions in 14 of 22 research fields and in the top 0.1% in four research fields, namely Agricultural Sciences, Environment/Ecology, Geosciences and Plant & Animal Science.

1. As the extent of the Applicant’s research activities are central to one arm of the Applicant’s arguments, it is necessary to further detail them.  The evidence shows that the research activities of the Applicant are widely spread – Ms Nielssen says:

   The Applicant presently operates 11 research divisions, the functions of which are briefly described below:

   (a)   Animal, Food and Health Sciences - assisting the food industry in bringing foods with substantiated and functional health benefits to the market, protecting and increasing the efficiency of livestock and food production systems to assure the safety, quality and sustainability of Australian foods, and detecting and controlling infectious diseases to protect the health of Australia’s people, animals, environment and trade;

   (b)  Astronomy and Space Science - operating the astronomy observatories in Narrabri, Coonabarabran and Parkes collectively known as the Australian Telescope National Facility to support research in radio astronomy, building the Australian Square Kilometer Array Pathfinder telescope to contribute to the development of an international telescope, operating the Canberra Deep Space Communication Complex (a NASA facility which provides continuous two-way radio contact with spacecraft currently supporting more than 40 missions, including the Cassini spacecraft at Saturn, Mars Exploration Rovers, Messenger spacecraft to Mercury, New Horizons spacecraft to Pluto and Voyager 1 and 2 which have been in space for over 30 years) and coordinating space research, industry engagement and outreach activities;

   (c)   Computational Informatics - developing autonomous systems to monitor the environment and infrastructure to improve the safety and efficiency of mining manufacturing and agricultural industries (including inventing Starbug, the autonomous miniature submarine), technologies for future mobile and wireless communication networks, developing imaging and sensing systems for medical and industrial applications and researching computational and mathematical modelling for projects such as monitoring water quality in Queensland, estimating whale numbers in the Southern Ocean and investigating the interaction between monsoon systems in Australia and China;

   (d)  Earth Science and Resource Engineering - developing mineral system discovery techniques, mining automation, researching mining geoscience, improving mining equipment, design and procedures (including longwall mining technology) to increase safety, reduce costs and improve sustainability, and researching petroleum engineering technologies and petroleum geosciences;

   (e)   Ecosystem Sciences - researching urban systems to enable sustainable cities, researching agricultural systems to balance food production with environmental and socioeconomic outcomes, improving the management of landscapes, ecosystems and biodiversity through the Ecology Program, enhancing environmental performance of Australian industries through the Evolutionary Biology Program, and finding solutions to natural resource management and sustainability challenges;

   (f)    Energy Technology- researching renewable energy technologies including solar power, storage of renewable energy, geothermal energy and biofuels, developing low-carbon and energy efficient systems for households, industries and cities (such as solar cooling, secure grids, smart fridges, the zero emissions house and the virtual power station), developing low-emission coal technologies for energy generation, carbon dioxide capture and storage, advocating to lower Australia’s greenhouse gas emissions by publishing the CSIRO Home Energy Saving Handbook for households and launching the Energymark program;

   (g)   Land and Water - operating the Soil and Landscape program to improve productivity and soil quality, implementing the Surface Water Hydrology research program and Groundwater Hydrology program, researching catchment biogeochemistry and aquatic ecology for sustainable waterway management, running the Contaminant Chemistry and Ecotoxicology Program to predict the impact of biota in aquatic and terrestrial ecosystems, providing expertise in water reuse and urban water systems engineering;

   (h)  Marine and Atmospheric Research - investigating aquaculture genetics and marine farming, measuring and modelling carbon and nutrient cycling in estuarine, coastal and ocean systems to understand the effects of human activities, advising on marine environmental management and conservation planning, partnering with the Bureau of Meteorology to predict Australia’s air quality, weather and climactic events and developing the climate model the Australian Community Climate and Earth System Simulator;

   (i)Materials Science and Engineering - researching human diseases and biosciences, promoting a sustainable fibrous structure industry, designing and synthesising novel polymer compositions, developing devices and systems through applied physics and engineering, researching surfaces and nanosciences and implementing RAFT technology processing for developing better polymers;

   (j)    Plant Industry - researching and investigating the sustainable production of wheat, barley and rice varieties, helping to build a sustainable cotton industry (with over 95% of Australia’s cotton crop being based on the Applicant’s varieties), improving the production, processing and marketing of grapes, developing drought-tolerant, disease-resistant and nutrient-rich oilseeds and legumes and producing better sugarcane varieties to increase industry profitability; and

   (k)  Process Science and Engineering - increasing recovery rates through high temperature processing of metals, researching hydrometallurgy alumina, metals and ceramics, researching mineral processing and agglomeration to improve profitability, maximising the returns from hydrometallurgical processing of precious and base metals, and implementing online analysis and control tools.

2. Ms Nielssen goes on to detail the National Research Flagship Program operated by the Applicant which she says was launched in 2003 to address major national challenges and deliver benefits to Australia through large-scale multidisciplinary research partnerships with Australian Universities, publicly funded research institutions, the private sector and other international organisations.  In 2012-2013, the Applicant’s investment in such projects through the Flagship Collaboration Fund reached $124 million.  These Flagship Research projects are:

   (a) Biosecurity Flagship to protect Australia from biosecurity threats and risks posed by exotic and endemic pests and diseases;

   (b) Digital Productivity and Services Flagship to deliver more efficient and innovative services for Australia;

   (c) Climate Adaptation Flagship to equip policy makers, industries and communities with practical and effective adaptation options to climate change;

   (d) Energy Flagship to pioneer Australia’s low carbon alternative energy and transport future;

   (e) Food Futures Flagship to transform the international competitiveness of the Australian agrifood sector by applying frontier technologies to high potential industries;

   (f) Minerals Down Under Flagship to grow Australia’s resource base and increase the productivity of the minerals industry;

   (g) Sustainable Agriculture Flagship to secure Australian agriculture and forest industries by increasing productivity, reducing carbon emissions intensity and enhancing the resources base;

   (h) Future Manufacturing Flagship to develop cleaner, advanced materials and manufacturing technologies to ensure productivity and prosperity;

   (i) Preventative Health Flagship to improve the health and wellbeing of Australians through research into prevention and early detection of common chronic diseases;

   (j) Water for a Healthy Country Flagship to develop science and technologies to improve the social, economic and environmental outcomes from water; and

   (k) Wealth from Oceans Flagship to provide Australians with social, environmental and economic wealth from the ocean.

3. Ms Nielssen states that the Applicant is responsible for a number of the world’s most innovative and important scientific discoveries and inventions, including:

   (a) Relenza Flu treatment - the determination of the three dimensional structure of the neuraminidase protein by Peter Colman and his colleagues at CSIRO in the 1980s, and its use in the development of the anti-influenza drug zanamavir (Relenza®) was a landmark medical discovery. Relenza® and the closely related oseltamivir (Tamiflu™) subsequently developed by the US-based company Gilead Sciences in collaboration with Roche, were both designed on the CSIRO neuraminidase structure;

   (b) atomic absorption spectroscopy- this concept was developed by CSIRO scientist Alan Walsh in the 1950’s and has since been labelled one of the most significant achievements in chemical analysis. The invention, routinely used in medicine, manufacturing, mining, environmental monitoring and laboratories around the world has saved lives and led to the birth of the scientific instrument industry in Australia worth more than $1 billion a year;

   (c) plastic banknotes - Australia’s introduction of plastic banknotes with optically variable devices was the world’s first. The Applicant worked with the Reserve Bank of Australia to develop a scientific solution to combat forgeries using a see-through panel and hologram embedded in the note, which was also more durable, hygienic and environmentally friendly. The research began in 1968 and culminated with the release of the first polymer banknotes in 1988. There are now more than 3 billion polymer notes in circulation in 25 different countries;

   (d) extended wear contact lenses - the research, led by the Applicant with other Australian and international collaboration from the USA and Switzerland in 1991, resulted in the development of CIBA Vision’s Focus Night & Day lenses which are suitable for safe continuous 30 day and night wear;

   (e) Aerogard insect repellent- developed by a CSIRO scientist to protect allied troops from the mosquitoes during World War II, the repellent was passed on for free to Mortein in 1963 and developed into the famous product “Aerogard”;

   (f) the CSIRO Total Wellbeing Diet- the original diet book was published in 2005 and became a worldwide best-seller, it has since sold over 700,000 copies. It was based on several of the largest studies showing that higher protein dietary patterns for weight management have metabolic advantages over high carbohydrate patterns in overweight people;

   (g) BARLEYmax - this natural wholegrain contains twice the dietary fibre of regular grains, four times the resistant starch and a low glycaemic index. It was developed by the CSIRO in about 1999-2000 and has been manufactured into food products including cereals, porridges, wraps, bars, bread and rice blends by Goodness Superfoods, Plus Nutrition and SunRice under licence arrangements;

   (h) RAFT technology - a pioneering technology for creating innovative multi-functional polymers which can be tailored with unprecedented control over composition and architecture to improve performance. RAFT was invented by CSIRO and developed in partnership with DuPont in the late 1990s. It has been commercialised in a range of industries including biomedical, industrial chemicals, personal care, agriculture and energy;

   (i) Self-twisting yarn - a new technology for spinning wool into yarn was developed by the Applicant in the 1960s and was commercialised into the Repco self-twist spinner in conjunction with the Australian company Repco. This technique made yarn production 15 times faster. The subsequent process called Sirospun reduced the cost of production by up to 40% in factories around the world;

   (j) Softly washing liquid - developed by CSIRO’s scientist Tom Pressley in the 1960’s to soften woollen blankets which had become stiff and rough as a result of washing at high temperatures, this detergent was successfully produced and marketed by Unilever since the 1960’s and is sold worldwide under the name “Softly”;

   (k) the Hendra Virus Vaccine - the virus which kills horses and humans was identified by CSIRO scientists in 1994. Diagnostic procedures were developed and the carrier species of flying fox was also identified by the CSIRO team. CSIRO scientists at CSIRO’s Australian Animal Health Laboratory recently developed a prototype vaccine which was later made available by Pfizer Animal Health as Equivac® HeV to accredited veterinarians; and

   (l) Wireless Local Area Networks - the high speed wireless local area network or “WLAN” which underpins the international standard in internet and wireless communications was developed by the Applicant and granted a US patent in 1996, with corresponding patents in 18 other countries. CSIRO’s WLAN technology is estimated to be in more than three billion devices worldwide.

4. Ms Nielssen states that the Trade Mark is the result of a re-branding exercise by the Applicant and that the iteration of the Applicant’s trade mark immediately before the re-branding was that appearing hereunder:

5. Concerning the reputation of the Applicant and the recognition of the acronym CSIRO by the Australian public, Ms Nielssen states:

   The August 2010 report by Ogilvy Illumination, contained in Exhibit OSN-14, concluded that the Applicant is the single most commonly nominated organisation top of mind conducting science research in Australia. Results showed that the Applicant is the first mentioned organisation doing science and research in Australia for 73% of respondents and promoted awareness of the Applicant is 96% among all Australians.

   The researchers noted that: “CSIRO is clearly the dominant player in the mental landscape that Australians have when it comes to organisations doing science and research in Australia - it is far and away the most mentally accessible when Australians think about organisations doing science and research.”

   Public awareness of CSIRO and recognition of the CSIRO Mark[5] has been confirmed in subsequent research commissioned by the Applicant, including a follow-up report which was conducted in October 2011. This report confirmed that the Applicant is an organisation held in high regard across the community with respondents having positive impressions of the Applicant and pride in the work it does. The research reported that prompted awareness of CSIRO was 94% (ie 94% of people surveyed responded YES to the question “Have you heard of CSIRO”) and concluded that the Applicant is the most trusted organisation undertaking research into science and technology. […]

   In the most recent study conducted by the Applicant in August 2013, results showed that 67% of Australians agreed that CSIRO stands for the advancement of Australian know-how and the initiative to explore.

   The researchers noted that: “CSIRO is the best-known research institution in Australia – a position it has enjoyed over the four-year span of this research. Seven out of ten Australians (69%) name it spontaneously and prompted awareness is 91%. Negative news stories earlier in the year appear to have little apparent lasting impact on CSIRO’s reputation within the Australian community and CSIRO’s reputation has largely returned to levels seen in earlier community research. Two thirds of Australians (64%) hold a positive overall impression of CSIRO and 3% hold a negative image - these results are stable compared with earlier years.”

   [5] I take this as a reference to the unadorned trade mark CSIRO

6. Ms Miller’s declaration sets out the various trade mark registrations of the parties and what amounts to a chronology of the development of these trade marks and the ways and colours in which they are used. To an extent the distinctions which might be inferred from this declaration tend to evaporate in the light of section 70 of the Act which provides:

   70Colours in registered trade marks

   (1)A trade mark may be registered with limitations as to colour.

   (2)The limitations may be in respect of the whole, or a part, of the trade mark.

   (3)To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

   Note:For limitations see section 6.

7. Ms Cassidy, in her declaration, details the large number of registered trade marks which have a circular border or disc device as a background.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical 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.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. In the circumstances of this matter there is no dispute that the Opponent’s registrations have priority dates which precede the Relevant Date or that the goods and services involved are not similar and closely related.  The dispute lies only in whether the trade marks of the parties are deceptively similar.

Deceptively Similar

1. Section 10 provides:

   10Definition 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.

2. There is considerable guidance from the Courts about the expression ‘likely to deceive or cause confusion’ and its assessment.

3. In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J said at [50]:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. Further, the words ‘deception’ and ‘confusion’ refer to different mental states - in Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265, at 174, Lord Denning said of the differences between ‘confusion’ and ‘deception’:

   Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. 

2. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423 Richardson J said in the New Zealand Court of Appeal:

   Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

3. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’:

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

The Comparison

1. Concerning the comparison of trade marks in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said at [13]:

   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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to 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” (1937) 58 CLR, at p 658

2. All of the surrounding circumstances are to be considered including the marketplace in which the goods or sold or services provided.  Parker J said In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (‘Pianotist’) in the following passage:

   “You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.”

3. The Applicant here argues that two of the surrounding circumstances are both the notoriety of the element CSIRO within the trade mark and the familiarity of the public with the map of Australia.  In Woolworths, on appeal from Woolworths Ltd v Registrar of Trade Marks [1998] FCA 1268, French J said:

   His Honour’s reference to the familiarity of the name “Woolworths” in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.

4. In C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 the Court quoted the above and stated:

   Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.

5. Mr Kell, for the Opponent, submitted that the element CSIRO within the Trade Mark is not, to paraphrase a phrase within the above quotation, ‘in use in relation to particular goods or services and [the notoriety] is not, therefore, a relevant consideration.’  He argues that, in effect, the Applicant is only a research organization and provides no goods or services.

6. I note, however, that the Opponent does not put this submission as high as pursuing a ground of opposition under section 59.

7. For its part, the Applicant’s evidence addresses this concern by detailing companies which have arisen and goods or services, processes and systems that have been developed, as a result of the Applicant’s research and activities.  For example:

   Benitec Biopharma Limited (gene silencing technology), Phoslock Water Solutions Limited (modified bentonite clay used to reduce phosphorus in water), Nautilus Limited (discovery by CSIRO scientists of rich mineral deposits on the ocean floor leading to the granting of what are believed to be the world’s first deep sea exploration titles), T-Mag Pty Ltd (magnesium casting technology), PolyActiva Pty Ltd (drug-polymer conjugate technology to enable site specific drug delivery from medical device components), PolyNovo Biomaterials Pty Ltd (biodegradable polymers for biomedical devices), UltraBattery (invented in 2003), Atlas of Living Australia (released in 2010), Landtem (developed in the 1990’s, a magnetometer, detects deeply buried, highly conducting ore bodies and is made under license by the Australian company, Outer Rim Exploration Pty Ltd), Align 3D software late 1990s/2000, for planning of rail & road routes (marketed by Quantm Ltd), Dymex modelling software (2005, Hearne Software), and Air Cargo Scanner (2008; commercialised and further developed with Nuctech Company Limited, 2012).

8. The Applicant has also licensed its inventions and new technologies to a range of companies – amongst these in Ms Nielssen’s declaration are:

   The BARLEYmax technology has been licensed to various licensees since July 2009.  Longwall mining technology developed by the Applicant as part of a research project which commenced in 1999 to improve safety and productivity in coal mines is now used in more than half of Australia’s underground longwall mining operations. The Applicant has commercialised this automation technology and licensed it to five global companies, including to Inbye Mining Services in 2008.  UltraBattery technology (invented in 2003) is licensed for use in vehicles, renewable energy storage devices, remote area power supplies and emergency power backup systems. This technology is used under licence for various applications by two of the world’s leading battery manufacturers, Furukawa Battery Company in Japan (in 2005) and East Penn Manufacturing in the United States (in 2008). East Penn is now also the owner of the original spin out company for this technology, Ecoult. Ecoult was established in 2007 and acquired by East Penn Manufacturing Company Inc. in 2010. Ecoult is also licensed to use the technology for certain stationary applications. The first commercial installation of the UltraBattery in a hybrid vehicle is in the 2014 model of the Honda Odyssey, which I believe was to be on sale in Australia from February 2014.  OptiCOOL is another technology developed by the Applicant over a period of years prior to 2009, which was exclusively licensed for certain applications to BuildingIQ in 2009. This innovation has won numerous awards including the Sustainable Engineering Association Award for Excellence in Innovation, the EcoGen award for Most Outstanding Clean Energy Technology Innovation and the Bloomberg 2013 New Energy Pioneers award. The Applicant’s technology is being used around the world, including in the Rockefeller Centre in New York, in hotels and casinos in Las Vegas and other buildings across the United States.

9. Accordingly, while the Applicant may not itself produce goods or provide services, its licensees and partners do.  Additionally, while the element CSIRO may or may not be currently in use in relation to particular goods or services, it is closely associated in the minds of the public with those goods and services to the extent that it would confuse or deceive if a person other than the Applicant used the element CSIRO in relation to the Goods and Services.  It also follows that under these circumstances the Applicant wishes to control the use of the Trade Mark.

10. There is also before me extensive evidence of the great reputation of the Opponent’s Logo Trade Mark.  As I remarked in the hearing, this could be regarded as a double-edged sword as, in terms of the words of French J in Woolworths, “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.”  (Stress added)  While the Opponent is claiming a particularly strong reputation in the Opponent’s Logo Trade Mark, it could be artificial to entirely discount the viewer’s perception of it.

Discussion

1. The other element of the Trade Mark is a series of vertical stripes of various lengths which forms a map of Australia.  In my consideration, this element is likely to be recognized by virtually all Australians as a stylized rendition of the outline of the continent in which they live.  Similarly, the device component of the Opponent’s Logo Trade Mark bears a marked resemblance to the Golden Gate Bridge in San FranCISCO.  That bridge is of iconic status and as such is likely to be recognized by many Australians.

2. Set against these considerations are certain similarities between the trade marks of the parties.  The ‘words’ within the trade marks, CISCO and CSIRO, begin and end with the same letters and have other letters in common.  The device element of the trade marks are both formed of vertical stripes and both may be used in the same colour.

3. However, in my consideration, it is most unlikely that the similarities between the Trade Mark and the Opponent’s Logo Trade Mark would give rise to confusion.  The word ‘Cisco’ is immediately recognisable as a short-form for the words ‘San Francisco’.[6]  The juxtaposition within the Opponent’s Logo Trade Mark of the word ‘Cisco’ with the abstract rendering of the Golden Gate Bridge lends reinforcement to the significance and denotation of the other and is likely to be perceived as such.

   [6] The word ‘Cisco’ will also be immediately recognized by older television viewers as the name of the O Henry character, the Cisco Kid from the 1950s through to the 1970s within the eponymous television series: >

   Thus, on a prima facie comparison of the parties’ trade marks, they are composed of elements which are unlikely to be mistaken for each other and, while they have similarities, are unlikely to be confused.

4. Additionally, in the Trade Mark, the element CSIRO is (the evidence shows) instantly recognizable and notorious to most Australians as would be, in my view, the abstract map of Australia.  Considered in the light of these factors, any similarities between the trade marks are incidental to the manner in which they are likely to be seen and recognized by most Australians.

5. In considering the marketplace for the goods and services involved in terms of Pianotist, above, the potential purchasers within the marketplace are also likely to be relatively sophisticated – the goods and services are not akin to those purchased casually as might be coffee or soap powder in a supermarket.[7]

   [7] Compare Re: Stuart Alexander and Co. (Interstate) Pty. Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel N.V. and Blenders Pty. Limited [1981] FCA 152; (1981) 53 FLR 307 with LANCER- Trade Mark Application [1987] RPC 303.

6. This is a fortiori true of the Opponent’s Device Trade Mark on which the Opponent also relies.

7. As a consequence, there is no significant likelihood of confusion and deception and the Opponent has not established its ground under section 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. The “other trade mark” relied upon is the Opponent’s Logo Trade Mark.  To found this ground, the Opponent must establish both that the Opponent’s Logo Trade Mark had a reputation at the Relevant Date and that because of that reputation the use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Concerning the assessment of reputation, in McCormick Kenny J also said at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s mark over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

5. While the Opponent has established the reputation at the Relevant Date in Australia of the Opponent’s Logo Trade Mark (but not of the Opponent’s Device Trade Mark, solus), it has not, for similar reasons to those given under the heading Section 44, established that the use of the Trade Mark would be likely to deceive or confuse when used in relation to the Goods and Services.

1. While there is an abstract resemblance between the trade marks in question, this resemblance does not, in my consideration, approach that where, because of the combined effects of the reputation and similarity, the use of the Trade Mark would be likely to deceive or cause confusion.

Section 42

1. Relevant to this matter, section 42 provides:

   Trade mark scandalous or its use contrary to law

   42. An application for the registration of a trade mark must be rejected if:

   …

   (b) its use would be contrary to law.

2. The Opponent’s grounds here are that contrary to section 42 of the Act, use of the Trade Mark would constitute misleading and deceptive conduct pursuant to the Competition and Consumer Act 2010 (‘the CCA’) and would also constitute passing off at common law.

3. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the CCA (or at common law), which is a higher standard. In this regard the relevant section of the CCA effectively replaced section 52 of the now repealed Trade Practices Act 1974 and in Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, Gibbs C.J. said of the repealed legislation (at page 6):

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

In the same case Mason J. said (at page 15):

“. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

1. The opposition under subparagraph 42(b) is not established.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   Note:For limitations see section 6.

2. The Opponent has not established any of the grounds of opposition.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been 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 be in accordance with the Court’s order or direction

Costs

1. The Applicant, having been successful in this matter, is entitled to its costs which I award against the Opponent at the scale in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
13 March 2015