Cisco Technology, Inc v Rob Fairway

[2012] ATMO 112

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 1335052(25) - scisco - filed in the name of ROB FAIRWAY.

Delegate:	Heath Wilson
Representation:	Opponent: Trevor Stephens of Davies Collison Cave, Patent and Trade Mark Attorneys. Applicant: No appearance.
Decision:	2012 ATMO 112 Section 52 opposition – sections 58, 59, 60 and 62A of the Act not established – Trade Mark to proceed to registration.

Background

1. This is an opposition to the registration of a trade mark under section 52 of the Trade Marks Act 1995 (‘the Act’). The application to register the trade mark under opposition was filed on 4 December 2009 and its details are as follows:

   Trade Mark application no: 1335052

   Trade Mark:

scisco

(‘the Trade Mark’)

Specification of Goods: Class 25: Apparel (clothing, footwear, headgear)

Owner: Rob Fairway (‘the Applicant’)

1. The Trade Mark was duly examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 April 2010. A notice of opposition was subsequently filed on 30 June 2010 by Cisco Technology, Inc. (‘the Opponent’) nominating the majority of the grounds of opposition available under the Act.

2. As evidence in support of the opposition, the Opponent filed the first statutory declaration of Dawn Logan Keeffe (attorney with Davies Collison Cave the Opponent’s legal representatives), made 17 October 2011 with exhibits DLK-1 to DLK-3 (“Keeffe 1”). The other statutory declaration filed as evidence in support was that of Cheryl Sawyer (Director of Global Brand Strategy and Governance for Cisco Systems, Inc) made on 22 December 2011 with exhibits numbered CS-1 to CS-10. The Opponent is described in Ms Sawyer’s declaration as an “affiliated entity of Cisco Systems, Inc.”

3. No evidence in answer or evidence in reply was filed or served. Written submissions were filed by the Opponent who relied on the grounds of opposition under sections 58, 59, 60 and 62A of the Act and I heard the matter as a delegate of the Registrar of Trade Marks in Sydney on 17 October 2012.

4. Trevor Stephens of Davies Collison Cave, Patent and Trade Marks Attorneys, appeared for the Opponent accompanied by Dawn Logan Keeffe. There was no appearance or representation by the Applicant. At the hearing, Mr Stephens sought to rely on further evidence which comprised further examples of the Opponent’s website. I indicated that the Applicant should, as a matter of fairness, have the opportunity to comment on this new material and directed that an application for further evidence should be filed.

5. Following the hearing and after receiving the application for further evidence, I indicated in writing to both parties that I intended to allow the request. After being allowed an opportunity to do so, the Applicant did not make any representations in this regard and I now provide the following reasons taking into account the two further statutory declarations of Dawn Logan Keeffe sworn on 19 October 2012 each containing an exhibit marked DLK-1.

   Reasons

6. The Opponent bears the onus of establishing a ground of opposition and it must do so on the balance of probabilities.[1] Mr Stephens primarily argued that the ground of opposition under section 60 had been made out. I will also address the other grounds relied upon, being ss 58, 59 and 62A of the Act. For completeness, I find that the remaining nominated grounds which were not pressed have been abandoned.

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also 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] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

   Section 58

7. Section 58 of the Act provides:

   Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

8. For the Opponent to prove that the Applicant is not the owner of the Trade Mark, it must establish that a party other than the Applicant first used a ‘substantially identical’[2] trade mark in Australia on goods that are the ‘same kind of thing’[3] as the Applicant’s goods.

   [2] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; 31 IPR 375.

   [3] Re Hicks Trade Mark (1897) 22 VLR 636.

9. The Opponent is relying on its prior use of the trade mark CISCO in Australia. The declaration of Cheryl Sawyer demonstrates use of the trade mark CISCO which began when the parent company was founded in San Jose, California in 1984. Since that time, the Opponent has become a multinational global corporation offering a range of products and services including those for networking and computer hardware and software, telephones, video phones, and inter alia home networking and security products. In 1992, the company Cisco Systems Australia Pty Ltd was formed and began supplying goods and services to the Australian marketplace. According to the declaration, the Opponent sold apparel bearing the CISCO trade mark in September 2001 and its clothing products have been available online to Australian consumers since that date.

10. In relation to the threshold consideration, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4] (“Shell”) set out the following test for trade marks that are said to be ‘substantially identical’: 

    [the trade marks] 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

    [4] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415.

11. The obvious (and sole) difference between the trade marks is the letter ‘S’ appearing at the beginning of the Trade Mark.[5] Depending on the nature of the additional or substitute lettering such an alteration may in some circumstances be sufficient to preclude a finding of substantial identity.[6]

    [5] The fact that the Trade Mark was applied for in lower case letters is of no consequence. See Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 per Jenkins LJ at 149-150.

    [6] See, for example, “KOOLMATE’ and ‘COOLMATE’ (Coleman Company Inc v Igloo Products Corporation (1999) 48 IPR 158); ‘MEDISON’ and ‘MEDICON’ (Medicon EG Chirurgiemechaniker-Genossenschaft v Medison Co Ltd (2000) 48 IPR 397); ‘JOVAN’ and ‘JOVANI’ (Quintessence Inc v Jovani Enterprises Pty Ltd (1994) 28 IPR 365); ‘FORTEX’ and ‘FOREX’ (Lonza Ltd v Kantfield Pty Ltd (t/as Martogg Co) (1995) 33 IPR 396).

12. While it is likely to be the case that the Applicant’s and the Opponent’s trade marks are pronounced in a similar fashion, the wording used by Justice Windeyer in Shell is crucial here. The difference between SCISCO and CISCO may be overlooked if the trade marks were not placed side by side and compared. However, if they are compared side by side (as they must be for the purposes of substantial identity) the visual difference is evident. The inescapable conclusion for the purposes of this ground is that the essential features of these two (apparently) invented words are different. I find that the trade marks are not substantially identical and the section 58 ground of opposition fails on this threshold.

13. Furthermore, one of the few pieces of evidence submitted by the Opponent in relation to clothing bearing the CISCO trade mark are examples of the trade mark from the Opponent’s website shown in exhibit CS-10 to the declaration of Cheryl Sawyer. Those examples are undated and Ms Sawyer has not clearly stated whether those examples are an accurate reflection of the website as it appeared before 4 December 2009. Neither does the further evidence assist in this regard, as the examples therein are not use of the Opponent’s trade mark on the ‘same kind of thing’ as the Applicant’s goods. For example, exhibit DLK-1 to Keeffe 2 are printouts from the Opponent’s website dated 30 January 2009, but they do not demonstrate use of the CISCO trade mark on clothing. Exhibit DLK-1 to Keeffe 3 comprises articles dated from 2011 concerning the Opponent’s “CISCO StyleMe” product. That product is a new piece of software technology functioning as a virtual mirror enabling consumers to virtually try on clothing. In addition to the fact that the articles are dated well after the priority date, that product could not be described as the ‘same kind of thing’ as clothing, despite some level of association with the goods. 

14. While a small amount of trade mark use may be sufficient to establish prior use in the course of trade, I am not satisfied that a general assertion accompanied by evidence dated after the priority date, or with only an oblique connection to the relevant goods, accomplishes that task. This tends to confirm my finding that the ground of opposition under section 58 of the Act has not been established.

    Section 59

15. Section 59 of the Act provides:

    Applicant not intending to use trade mark

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a) to use, or authorise the use of, the trade mark in Australia; or

    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

    Note:  For applicant see section 6.

16. The relevant date for assessing the intention to use the Trade Mark is the time of filing (4 December 2009) although circumstances arising after that date may be pertinent for drawing inferences as to the intention of the Applicant as at the relevant date.[7] An assessment of a ground of opposition under section 59 begins with the assumption arising from the act of filing the trade mark that an applicant intends to use the trade mark on or in relation to the goods specified in its application.[8] That prima facie assumption may be rebutted by slight evidence[9] from the Opponent. 

    [7] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437 [at 74].

    [8] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605.

    [9] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 51; (1967) 116 CLR 254.

17. In terms of putting the Applicant on notice that section 59 would be an arguable ground of opposition, Mr Stephens relied on the fact that the ground was nominated in the notice. He also highlighted the fact the Applicant did not file any evidence of use or intention to use the trade mark, nor did he take any part in the hearing. These factors, he argued, shift the onus to the Applicant to demonstrate an intention to use the Trade Mark in relation to Apparel (clothing, footwear, headgear).  

18. There are a number of reasons why the above arguments should be given little weight. It is true that the notice of opposition did nominate the section 59 ground, but it is common for opponents to nominate all available grounds. Here (as is often the case) the Opponent also nominated a number of other grounds of opposition that were not pursued at all. Nothing in the Opponent’s evidence raises an inference of a lack of intention to use the trade mark on the Applicant’s part. In the event that the Applicant had decided to file evidence in answer, that evidence would have been unlikely to address a ground that was not mentioned or alluded to in the evidence in support.

19. In addition to the above, non-use of a trade mark does not by itself imply a lack of intention to use it,[10] and there may be sound commercial reasons for not commencing use of a trade mark until it has been registered.[11] I am not satisfied that the onus has shifted to the Applicant purely on the factors identified by Mr Stephens. The Opponent has not discharged its onus under section 59 of the Act and that ground has accordingly not been established.

    [10] Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (at 207) per Dodds-Streeton J; Torrag Pty Ltd v PAH Pty Ltd (2006) 70 IPR 349; [2006] ATMO 59.

    [11] See, for example, Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1921.

    Section 60

20. Section 60 of the Act provides:

    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.

21. As mentioned previously, the ground of opposition under section 60 was the primary ground of opposition relied upon by the Opponent. The Opponent must demonstrate that a reputation in the trade mark CISCO existed on 4 December 2009 such that use of the Trade Mark in relation to apparel would be likely to deceive or cause confusion in the Australian marketplace. An assessment of the nature and extent of the Opponent’s reputation in the CISCO trade mark will be the first consideration.

22. Since 1992, according to Ms Sawyer, the Australian subsidiary of the Opponent has used the trade mark in relation to unspecified goods and services (which I assume are not related to apparel as the first Trade Mark use in Australia for those goods is declared to be 12 September 2001). The Australian subsidiary operates out of a head office in North Sydney but Ms Sawyer declares that the Opponent also has branch offices in every Australian state.

23. The Opponent owns a number of trade mark registrations similar to the CISCO trade mark filed in Australia in classes 9, 16, 35, 36, 38, 41, 42 and 45 that pre-date the filing of the Trade Mark. However, the goods and services covered by these trade mark registrations are not similar to or closely related to the goods covered by the Trade Mark. In any event, the mere existence of trade mark registrations does not assist in demonstrating the reputation of a trade mark in Australia.  

24. At paragraph 13 of her declaration Ms Sawyer indicates the estimated revenue arising from sales of the Opponent’s products and services bearing the CISCO trade mark in the form of an estimated figure from the Asia Pacific region. The figure is for the 2010/2011 financial year, well after the Trade Mark was filed. Even so, that figure provided is so substantial that if sales from Australia represent only a portion of it, it would still be significant. Exhibit CS-2 to the declaration shows the Opponent’s annual reports from 2008 to 2010 and financial highlights of the company from 2001, 2003 and 2004. While an impressive figure for net sales appears in these reports, there is no explanation of which goods or services generated the income or whether the sales are from Australia, the United States or represent global sales. I find it likely to be in relation to business and telecommunications products and services rather than clothing.

25. The Opponent’s trade mark CISCO ranks highly on ‘Interbrand’s Best Global Brand Report’ from 2008 (17^th in the world), 2009 (14^th), 2010 (14^th) and 2011 (13^th)[12]. The Opponent does not explain the significance of Interbrand’s reports but they do indicate that the Opponent’s trade mark is well-known in the field of business services.

    [12] Statutory declaration of Cheryl Sawyer, exhibits CS-3 to CS-6.

26. In ConAgra Inc v McCain Foods (Aust) Pty Ltd[13], Lockhart J commented that:

    But reputation 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 …

    [13] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234.

27. In terms of the Opponent’s advertising, Ms Sawyer declares that products provided by the Opponent under the CISCO trade mark have appeared on a number of mainstream US television shows and in movies and gaming software, but there is little detail of how the Opponent’s trade mark appears in these forms of media and how noteworthy such appearances may be. The few references to a CISCO branded product in those examples related to a telecommunications product rather than apparel. In addition, the examples would have to have occurred before December 2009 to have relevance and this is difficult to determine in relation to the listing of television shows. A further notable deficiency in the Opponent’s evidence is the lack of information on advertising expenditure and the amount of advertising targeting the Australian consumer. For a trade mark that is argued to have a large reputation in Australia this omission is significant.

28. The examples supplied from the website at exhibit CS-8 are simply described as “printouts from the online Cisco retail store”. While apparel is clearly not the main item sold by the Opponent, it is mentioned in the undated website extracts. Exhibit CS-10 demonstrates that the Opponent offered clothing for sale at the time of making the declaration, but fails to indicate whether such goods were available for purchase by the Australian public before the priority date of the Trade Mark.

29. In summary, the use of the CISCO trade mark in relation to clothing could best be described as incidental to the principal products and services for which the trade mark is known, especially within Australia. So while Ms Sawyer declares the first sale of apparel bearing the CISCO trade mark in Australia was on 12 September 2001, there is no tangible evidence to support that statement. The Opponent’s evidence either post-dates the priority date or is undated and I am not satisfied that the use in relation to clothing occurred in Australia before the priority date, let alone that the CISCO trade mark had the kind of reputation in relation to such goods contemplated by section 60.

30. The consideration is therefore whether the reputation in Australia demonstrated by the Opponent of the CISCO trade mark in relation to business and telecommunication products and services was such that the SCISCO trade mark in relation to apparel was likely to deceive or confuse Australian consumers.

31. I refer to the submissions of Mr Stephens with the regard to spillover reputation from an apparently significant reputation enjoyed by the CISCO trade mark in the United States. As Justice Lockhart in Conagra Inc v McCain Foods (Australia) Pty Ltd[14] commented:

    It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on.  Goods and services are often preceded by their reputation abroad.  They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

    [14] Conagra Inc v McCain Foods (Australia) Pty Ltd (supra).

1. Despite this argument, the Opponent has provided little persuasive evidence to assist its position beyond the presence of a website, its offices trading in Australia and US media reaching Australian consumers.  

2. On balance, I am not convinced that the Opponent’s trade mark CISCO had attained such a reputation in Australia as at 4 December 2009 that, the differences in goods and services and the visual difference between the parties’ trade marks notwithstanding, deception or confusion would ensue amongst a significant number of purchasers. The ground of opposition under section 60 of the Act has not been established.

   Section 62A

3. Section 62A of the Act provides:

   Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

4. While judicial consideration of the ground of bad faith under section 62A of the Act has been rare, the ground was recently discussed by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports WarehouseInc[15], where her Honour said:

   Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.

   [15] Fry Consulting Pty Ltd v Sports WarehouseInc (No 2) [2012] FCA 81 (at 164-5).

5. Mr Stephens’ argument was that the Applicant must have been aware of the reputation of the Opponent and was seeking to gain a commercial benefit by applying for SCISCO in relation to clothing. That argument may have had more force if the trade marks were identical or the Applicant had applied for a class of goods that the Opponent had a clear and unambiguous reputation for. Such an argument is based solely on conjecture, and is not supported by the evidence. It is not sufficient to lead to a finding of bad faith, a finding which is generally accepted as one that should not be made lightly. In addition, I am not convinced that an inference can be drawn from the evidence that would require any form of response from the Applicant under this ground.

6. The ground of opposition under section 62A of the Act has not been established.

   Decision

7. Section 55 (1) of the Act provides:

   (1) Unless the proceedings are discontinued or dismissed, 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.

8. The Opponent has not established a ground of opposition in relation to trade mark application no. 1335052. I direct that trade mark application no. 1335052 may proceed to registration after one month from the date of this decision.

9. If the Registrar is served with a notice of appeal on or before that time, I direct that registration of trade mark no. 1348080 shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   16 November 2012