Creo Creatives Limited v CJ Dutton Pty Ltd

[2022] ATMO 54

TRADE MARKS ACT 1995

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

Re: Oppositions by Creo Creatives Limited to registration of trade mark application number 2042177– COINTELEGRAPH.COM.AU and 2044718 COINTELEGRAPH.COM.AU AUSTRALIA’S NUMBER ONE FOR CRYPTOCURRENCY figurative, both in Classes 36, 38, and 41, in the name of CJ Dutton Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd. Applicant: Gabriella Rubagotti of counsel, instructed by Cotters Patent and Trade Mark Attorneys.
Decision:	2022 ATMO 54 Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds of opposition pursued under ss 42(b), 43, 58, 60, and 62A – s 58 ground established for some services in respect of trade mark number 2042177, opportunity given to amend services - services amended, trade mark to proceed to registration; no grounds established for trade mark number 2044718– trade mark to proceed to registration.

Background

1.     This is a decision in the oppositions by Creo Creatives Limited (‘Opponent’) to trade mark application numbers 2042177 and 2044718 (‘Applications’) filed by CJ Dutton Pty Ltd (‘Applicant’) for the following trade marks:

Trade Mark Number: 2042177

Trade Mark:               COINTELEGRAPH.COM.AU (‘Word Mark’)

Trade Mark Number: 2044718

Trade Mark:                (‘Composite Mark’)

2.     Both of the Applications were filed for the following services:

Class 36: Providing financial information via a web site; Financial information; Financial analysis; Financial research; Provision of online currency exchange calculators; Quotation of stock exchange prices; Provision of information relating to financial services

Class 38: News agencies; News broadcasting; Providing online forums; Providing user access to a global computer network and online sites containing information on a wide range of topics; Transmission of data; Podcasting services; Providing access to online computer databases; Webcasting (broadcasting over a global computer network)

Class 41: Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; News reporters services; Publication of multimedia material online; Educational seminars; Publication of news

(‘Applicant’s Services’)

3.     The Applications were examined, accepted, and subsequently advertised for opposition.  The Opponent filed notices of intention to oppose on 7 May 2020, followed by statements of grounds and particulars (‘SGPs’) on 5 June 2020. The Applicant filed notices of intention to defend on 20 July 2020.

4.     The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 23 October 2020. The Applicant filed Evidence in Answer (‘EIA’) on 21 January 2021. The Opponent filed Evidence in Reply (‘EIR’) on 26 March 2021.

[1]   Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5.     The parties were given the opportunity to request an oral hearing or a hearing by written submissions only. Both parties requested an oral hearing and prior to the hearing also filed an outline of written submissions. The matter was heard before a delegate of the Registrar on 25 January 2022. The Opponent was represented by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys. The Applicant was represented by Gabriella Rubagotti of counsel, instructed by Erin Cassidy of Cotters Patent and Trade Mark Attorneys. The matter has subsequently been allocated to me, another delegate of the Registrar, for a decision. I make my decision based on the particulars in the SGPs, the evidence and written submissions of the parties, and the oral submissions recorded at the hearing.

Grounds and onus

6.     The SGPs nominate grounds of opposition under ss 42(b), 43, 58, 60, and 62A.

7.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8.     The rights of the parties are assessed as at the filing dates of the Applications,[3] being 11 October 2019 (2042177) and 18 October 2019 (2044718). I note that there is a difference of seven days between the filing dates of the Applications. This difference has no bearing on my finding in either opposition. As such, I will refer to the two filing dates collectively as the ‘Relevant Date’.

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

9.     The following evidence was filed:

EIS

Declaration of Ms Maria Elia, acting director of Opponent, made on 21 October 2020, with Exhibits ME-1 to ME-22.

EIA

Declaration of Mr Chris Dutton, director of Applicant, made on 20 January 2021, with Exhibit CD-1 (encompassing Tabs 1 to 9).

EIR

Declaration of Ms Maria Elia, made on 26 March 2021, with Exhibits ME-1 to ME-3.

EIS

10.     Ms Elia declares that the Opponent commenced use of the trade mark COINTELEGRAPH (‘Opponent’s Mark’) in around October 2013 when the domain name (‘Opponent’s Website’) was registered. Ms Elia declares that the Opponent’s Website contains information and articles on blockchain technology, crypto assets, and emerging fintech trends, and that published articles deliver news, in-depth analytics, cryptocurrency price charts, opinion pieces, and regular reports on the social transformation brought by digital currencies and assets (‘Opponent’s Services’). Ms Elia annexes Internet Archive Wayback Machine extracts of the Opponent’s Website, which demonstrate use of the Opponent’s Mark and the slight variation, THE COIN TELEGRAPH, since 2013. The extracts confirm that the content of the Opponent’s Website is information, analysis, articles, news, and indexes regarding digital currencies and related subjects.

11.     Ms Elia declares that the first use of the Opponent’s Mark in Australia was on 29 November 2013. Ms Elia annexes new user statistics which indicate that between November 2013 and December 2014, the Opponent’s Website attracted approximately 14,000 new Australian users. Ms Elia also annexes charts of global and local statistics of the traffic ranking relating to the Opponent’s Website. The documents indicate a significant number of visitors to the website between 27 April 2020 and 27 May 2020, and between 1 November 2019 and 30 November 2019. Both of these periods are after the Relevant Date. Further, Ms Elia annexes App Store analytics indicating the download statistics for the Opponent’s app (which can be used to access the Opponent’s Website). The information indicates that the Opponent’s app has been downloaded approximately 2,500 times by Australian users over the course of 2018 and 2019 (out of total worldwide download figures of around 78,000).

12.     Ms Elia declares that from time to time articles are published on the Opponent’s Website that are specifically directed to Australian consumers. Ms Elia annexes numerous articles relating to Australia published prior to and after the Relevant Date. Further, Ms Elia declares that there are articles published on the Opponent’s Website that are authored by Australians.

13.     Ms Elia declares that the Opponent promotes the Opponent’s Services under the Opponent’s Mark on social media, including Facebook (700,000 followers), Twitter (540,000 followers), Instagram (82,000 followers), and YouTube (74,000 subscribers). Each social media account has the name ‘cointelegraph’. The Facebook page indicates that it was first created in November 2013.

14.     Ms Elia declares that the Opponent organises and promotes one of the biggest international events in the blockchain crypto industry, being the ‘Blockshow’. Ms Elia annexes an Internet Archive Wayback Machine extract indicating that the event was held in Europe in 2017 and had approximately 550 attendees. Events also appear to have been held in Asia in 2019 and 2020.  

15.     Ms Elia declares that the Opponent sells apparel merchandise associated with the Opponent’s Mark, and that such merchandise has been available for purchase from Amazon Australia since 24 September 2018.

16.     Ms Elia provides confidential revenue figures for the value of services provided in Australia. The amount over a 2 year period is modest and it is unclear what services were actually provided to generate this revenue.  

17.     Ms Elia states that the Opponent has local language versions of its website in multiple countries. Further, the Opponent has also registered the Opponent’s Mark in various overseas jurisdictions including the United States of America, China, Hong Kong, and the European Union.

EIA

18.     Mr Dutton declares that he decided to merge the words COIN and TELEGRAPH to use in the Applicant’s trade marks for an online magazine and news source, given his belief that people relate to the term ‘Telegraph’ as a news media source and Bitcoin is a digital currency. Mr Dutton annexes a Wikipedia extract which indicates that the word ‘Telegraph’ forms part of the name of newspapers in several countries.

19.     Mr Dutton declares that on 8 October 2019 he filed via his attorneys a Trade Mark Headstart Assessment request for the Word Mark. The Headstart Assessment indicated that the Word Mark would meet the requirements for acceptance. Mr Dutton subsequently filed a Trade Mark Headstart Assessment request for the Composite Mark on 17 October 2019, which resulted in the same outcome. Mr Dutton states that at the time of creating each of the trade marks, he was not aware of the Opponent’s Mark, and if he had been aware that the Opponent owned a prior application or registration for the Opponent’s Mark in Australia, he would not have proceeded to use the Word Mark or Composite Mark or apply for their registration.

20.     Mr Dutton declares that he commenced use of the Word Mark on 27 October 2019 and the Composite Mark on 28 November 2019. Mr Dutton declares that both marks have been used on the Applicant’s website (‘Applicant’s Website’), on which the Applicant commenced publishing articles in February 2020. Mr Dutton annexes website statistics since 23 October 2019, including, surprisingly, a list comprising approximately 1,000 pages of IP addresses which I assume represent individual visitors to the Applicant’s Website. Given the Applicant’s Website was launched after the Relevant Date, the website statistics are of little relevance to this opposition. Further, even if the website statistics related to a period prior to the Relevant Date, the evidential value of the list of IP addresses (which constitutes a considerable majority of the total volume of evidence) is questionable.    

EIR

21.     Ms Elia in her second declaration opines that the filing of the Trade Mark Headstart Assessment requests by the Applicant would not have provided the Applicant with an insight into any common law use of a deceptively similar trade mark in the Australian market.

22.     Ms Elia refers to correspondence sent by the Opponent to the Applicant in February 2020 asking Mr Dutton whether the Applicant’s Website was connected with him, which Mr Dutton subsequently confirmed. Ms Elia also refers to various YouTube videos that appeared on the Opponent’s Website that also subsequently appeared on the Applicant’s Website. Ms Elia also annexes two cease and desist letters sent by the Opponent to the Applicant in March 2020.

Discussion

Section 58

1. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the trade marks of the Applications,[4] and which has been used for goods or services that are the ‘same kind of thing’ as the Applicant’s Services.[5] The trade mark/s relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Applicant’s trade marks, whichever is earlier.

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

   [5] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

2. I note that the use of a trade mark on a foreign website is not by itself sufficient to constitute use of that trade mark in Australia. In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J held:

   In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.[6]

   [6] [2005] FCA 471, [43].

3. The Applicant also criticised the Opponent’s evidence on the basis that the SGPs particularised the s 58 ground as being reliant on the Opponent’s Mark (being a plain word mark), whereas the Opponent’s evidence demonstrates the use of composite marks. I agree with the Applicant that the Opponent often uses the Opponent’s Mark in combination with device elements. However, it is debatable whether the various uses of the words COIN TELEGRAPH and device elements are as composite marks, or whether the words and devices are independent marks used in close proximity to each other. The line between composite and complimentary marks is often a fine one. However, nothing ultimately turns on this for the reasons given below.

4. I am satisfied that the Opponent has used the Opponent’s Mark in Australia prior to the Relevant Date in relation to the Opponent’s Services. While the Opponent’s Mark is used on a foreign website, the fact that there are articles concerning Australian specific subjects which would primarily interest an Australian audience indicate that there is a specific targeting of the Australian market. The statistics provided for the Opponent’s Website also indicate that Australian consumers are visiting the website and viewing the content.  

5. In relation to the question of whether the Opponent had used the Opponent’s Mark, or whether use was merely of various composite marks, in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd (‘Goodman’), Burley J held that use of the domain constituted use of the registered trade mark LA FAMIGLIA, as the addition of the prefix ‘www’ and the suffix ‘.com.au’ did not substantially affect the identity of the trade mark.[7] In this case, I consider the Opponent’s domain name is substantially identical to the Opponent’s Mark (and as such, use of one can constitute use of the other). I also consider that the use of the domain name is use ‘as a trade mark’, particularly given that the Opponent’s business is entirely web based and therefore the domain name performs a key distinguishing function for the Opponent’s Services.

   [7] [2020] FCA 1808, [140].

6. As I consider that there has been use of the Opponent’s Mark in Australia, I must now decide whether the Word Mark and/or Composite Mark are substantially identical to the Opponent’s Mark. The test for whether two trade marks are substantially identical is narrower than the test for whether two trade marks are deceptively similar. For this reason, a ground of opposition under s 58 relying on an earlier unregistered trade mark can often be significantly weaker than a ground of opposition based on an earlier pending or registered mark under s 44, or an opposition based on reputation in an earlier registered or unregistered trade mark under s 60. Both s 44 and s 60 rely on an Opponent establishing a ‘likelihood of confusion’ which takes into account concepts such as imperfect recollection and the associated perception of the two trade marks by ordinary consumers. Conversely, the test for whether two marks are substantially identical requires that they 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.[8]

   [8] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

7. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd, the court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements[9]. The court went on to find that the following two trade marks were substantially identical, based on the common presence of the words INSIGHT and a similar device:

   [9] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

8. However, more recently in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[10] the court determined that the following two trade marks were not substantially identical, having regard to the stylised tail appearing on the last letter of the first mark, and the font and block characteristics of the second mark:

   [10] [2021] FCAFC 128, [160]-[162] (Jagot, Nicholas, Burley JJ).

   31.     Turning first to the Word Mark, this differs only from the Opponent’s Mark by the inclusion of the suffix ‘.com.au’ in the former. This suffix is purely descriptive and merely indicates that the Applicant’s Services are accessible via an Australian website. Relying on the authority in Goodman, I consider the essential elements of the Word Mark and Opponent’s Mark are the same and the presence of .com.au in the Word Mark does not suffice to eliminate the total impression of resemblance between the two marks. I consider that the Word Mark is substantially identical to the Opponent’s Mark.

9. Turning next to the Composite Mark, this contains the word COINTELEGRAPH as an essential element. However, the Composite Mark also contains the words ‘Australia’s Number One for Cryptocurrency’. While these words a descriptive, they cannot be ignored entirely. Further, the Composite Mark is also presented in a disc and contains a wavy line device. Considering the visual and aural differences between the respective marks, I do not consider that the total impression that emerges from a comparison between the Composite Mark and the Opponent’s Mark is one of resemblance. While I would have little hesitation in finding that the respective marks are deceptively similar, I am not satisfied they are substantially identical.

10. As I have found that the Word Mark is substantially identical to the Opponent’s Mark, I must now consider whether the Applicant’s Services are the same or the same kind of thing as the Opponent’s Services. The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[11] In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:

    [11] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

    The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[12]

    [12] Ibid, [89].

1. The Opponent’s Services are concerned with the provision online of information and articles relating to digital currencies and related financial and social topics. They encompass the provision of access to a website and downloadable app through which it is possible to obtain news, analysis, and information on current market data (such as cryptocurrency rates), policy issues, and social commentary on digital currency.  I consider that such services are inherently the same kind of thing as the following of the Applicant’s Services:

   Class 36: Providing financial information via a web site; Financial information; Financial analysis; Quotation of stock exchange prices; Provision of information relating to financial services

   Class 38: News agencies; Providing user access to a global computer network and online sites containing information on a wide range of topics; Transmission of data; Providing access to online computer databases;

   Class 41: Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; News reporters services; Publication of multimedia material online; Publication of news

   (‘Refused Word Mark Services’)

2. I do not consider that the following of the Applicant’s Services are the same kind of thing as the Opponent’s Services:

   Class 36:             Provision of online currency exchange calculators; Financial research;

   Class 38: News broadcasting; Webcasting (broadcasting over a global computer network); Podcasting services; Providing online forums

   Class 41:             Educational seminars

   (‘Remaining Word Mark Services’)

3. I am not satisfied based on the extracts of the Opponent’s Website that the Opponent provided online calculators, or that it broadcasts news or podcasts. The information published by the Opponent appears to be purely based on written articles with accompanying photographs or pictures. Similarly, the Opponent’s evidence does not indicate that it has ever provided educational seminars or undertaken financial research on behalf of others (any research its employees or agents have done in the course of preparing articles would be an internal business function, and not a service per se). While it is possible the Remaining Word Mark Services could be considered similar to the Opponent’s Services, I am not satisfied they fall within the narrow definition of ‘the same kind of thing’.

4. In reaching my finding, I note that the Refused Word Mark Services contain broad claims which could potentially be restricted or amended so as not to be the same kind of thing as the Opponent’s Services. However, the Applicant has not proposed any relevant amendment, and given that both parties are operating in an identical field, I do not consider it is appropriate to propose such an amendment.  

   38.     For the reasons given above, I am satisfied that the ground of opposition is made out under s 58 in relation to the Word Mark for the Refused Word Mark Services. However, I am not satisfied that the ground of opposition under s 58 is made out in relation to the Word Mark for the Remaining Word Mark Services, or the Composite Mark for any of the Applicant’s Services. As such, I must now consider whether the Opponent has established one of the remaining grounds of opposition in relation to either the Word Mark (for the Remaining Word Mark Services) and/or the Composite Mark.  

   Section 60

   39.     To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. The Opponent must then prove that because of this reputation, use of the opposed trade marks is likely to deceive or cause confusion.

   40.     The Opponent relies on evidence of reputation in the Opponent’s Mark. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[13] Reputation can be demonstrated in several ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[14] The length of use of a trade mark in the Australian market is also relevant in determining the existence of reputation and its extent. However, it is possible for a trade mark to accrue reputation in a relatively short period of time, particularly given the capacity of the Internet and social media to bring immediate and widespread attention to new products and brands.

   [13] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

   [14] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

   41.     Given the nature of the Opponent’s business, I consider that the most cogent evidence of reputation would be that which demonstrates a significant level of engagement by Australian Internet users with the Opponent’s Website or content that is available via the Opponent’s downloadable app. The evidence filed by the Opponent indicates that the Opponent’s Website has been accessible to Australian consumers for a reasonable period of time and it is directed to some extent towards the Australian market. However, the information regarding the level of engagement prior to the Relevant Date is relatively modest, particularly given that there was at the Relevant Date significant interest in cryptocurrency in Australia and therefore the market for the Opponent’s Services was potentially very broad. Similarly, download figures for the Opponent’s app are not particularly high and indicate a small niche following at most. Further, while the Opponent’s Mark would likely have attracted some publicity by exposure to Australian attendees at the overseas Blockshow Events, there is no information or even estimates as to how many Australians are likely to have attended. Finally, I can infer that some of the Opponent’s appreciable social media following originates from Australia. However, it is not possible to reliably estimate the size of that following given that the Opponent’s Services are targeted globally. Overall, I am not satisfied that the evidence is sufficient to establish reputation in the Opponent’s Mark in the Australian market.

   42.     As the Opponent has not established a reputation in a relevant trade mark in Australia, the ground under s 60 is not established.  

   Section 42(b)

5. The Opponent under s 42(b) alleges consumers would likely be misled or deceived by use of the Word Mark or Composite Mark based on the reputation in the Opponent’s Mark, and use of the Word Mark or Composite Mark would therefore constitute a breach of the Australian Consumer Law (‘ACL’), or the tort of passing off.

6. I have decided that the ground under s 60 has not been established, as the Opponent’s evidence does not establish reputation in the Opponent’s Mark in Australia. The existence of reputation also forms the basis for alleged breaches of the ACL, and the tort of passing off. As I am not satisfied that reputation exists in the Opponent’s Mark in Australia, there is no basis for finding that use of the Word Mark or Composite Mark would constitute a breach of the ACL, or passing off.

7. The Opponent also submitted that the alleged copying of videos on the Opponent’s Website by the Applicant constituted a copyright infringement with respect to those videos. However, this allegation relates to alleged conduct that is not directly relevant to the use of the Word Mark or Composite Mark, and as such, is not a basis for the ground under s 42(b).  

8. As the Opponent has not established reputation in the Opponent’s Mark in Australia, or any other conduct that would render the use of the Word Mark or the Composite Mark as being contrary to law, the ground under s 42(b) is also not established.

   Section 43

   47.     To establish this ground, the Opponent must show that there is a connotation within the Word Mark or Composite Mark and, because of this connotation, the use of those marks would be likely to deceive or cause confusion.

9. In the SGPs, the Opponent particularised the ground s 43 by alleging that use of the Word Mark and Composite Mark would falsely suggest the services offered are those of the Opponent, or have some connection with the Opponent, due to reputation in the Opponent’s Mark.

10. Section 43 of the Act is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[15] As such, the fact that the Word Mark and Composite Mark may be similar to the Opponent’s Mark is not a relevant consideration for the purposes of s 43. In any event, I note that the evidence does not establish that reputation exists in the Opponent’s Mark in Australia.

    [15] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).

11. In submissions, the Opponent also argued that the Word Mark and Composite Mark both contained a second level domain name, and that the Applicant had not provided any evidence that it is the registrant for that domain name. Consequently, the Opponent argues that consumers are likely to be deceived or confused that the Applicant is the registrant of the domain name.

12. This basis for the s 43 ground was not particularised by the Opponent in the SGP. As such, the Applicant was not put on notice that it would form part of the Opponent’s case. Further, no request to amend the SGPs was filed by the Opponent prior to the hearing. As such, I consider it would be amount to a breach of procedural fairness to allow the Opponent to rely on this particular basis for s 43, and I do not intend to consider it.

13. There is no evidence before me to establish that either the Word Mark or Composite Mark contain any connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground of opposition is not established.

    Section 62A

14. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Applications were filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Applications as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[16]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

    [16] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).

15. The Opponent in the SGPs alleges that at the Relevant Date, the Applicant was more likely than not aware of the Opponent’s reputation, Opponent’s Website, and Opponent’s Mark. The Opponent alleges that the filing of a trade mark to exploit the reputation of another trader’s product and services in these circumstances indicates that the trade mark was filed in bad faith. The Opponent also alleges that material from the Opponent’s Website was copied by the Applicant. The Opponent submits that while the alleged copying occurred after the Relevant Date, it does raise doubt regarding the honesty of the intentions of the Applicant.

16. Mr Dutton in the EIA explains his reasoning process in developing the Word Mark and Composite Mark. Mr Dutton also refers to the instructions he gave to his attorneys to file a Trade Mark Headstart Assessment request “in order to ensure that there were no prior trade mark applications or registrations existing on the Australian Trade Marks Register that would be obstacles to the Applicant’s use and registration of the trade mark, and to make sure that the Applicant did not encroach on the registered trade mark rights of any other company or person in Australia.” Mr Dutton declares that once he received the clear Trade Mark Headstart Assessment, he decided to proceed with an application for the Word Mark (and later, the Composite Mark). Mr Dutton does not state whether he personally conducted any enquiries, such as Google searches, which many business owners do prior to commencing use of or applying to register a new brand.

17. A Trade Mark Headstart Assessment is a service offered by IP Australia whereby potential applicants can request a non-binding preliminary assessment of the likelihood of a trade mark being accepted for registration if a subsequent trade mark application were to be filed with IP Australia. An examiner who assesses a Trade Mark Headstart Assessment request will, amongst other things, conduct a search to determine whether the trade mark is likely to be subject to grounds for rejection under s 44 based on the existence of a similar pending or registered trade mark. The examiner does not conduct any searches to determine whether use of a trade mark is likely to lead to conflict with another trader who may use a similar unregistered trade mark. Based on the results of the assessment, the potential applicant may then choose to pay an additional fee to proceed with a standard application. That application is later formally examined in accordance with the Act.

18. A Trade Mark Headstart Assessment is not the same as a clearance search undertaken by a professional advisor for the purposes of due diligence. A clearance search is intended to detect potential obstacles to use or registration of a trade mark, and to advise on avenues for mitigating or overcoming perceived risks. A clearance search, unlike a Trade Mark Headstart Assessment, will often involve an Internet search for potentially relevant unregistered trade marks, depending on the scope of the instructions given to the professional advisor. While a Trade Mark Headstart Assessment may often form part of the due diligence process (and can be helpful in confirming an advisor’s own views on the likelihood of conflict with particular pending or registered marks), it is not intended to be a substitute for a clearance search.

19. Mr Dutton’s declaration is carefully worded, referring to the instructions he gave to the Applicant’s attorneys, but not the advice he was given by them. This is the Applicant’s prerogative, as any such advice is subject to privilege.[17] It is therefore not clear whether a clearance search was undertaken which informed the Applicant of the existence of the Opponent’s Mark. However, given the Applicant is represented by a specialist trade mark and patent attorney firm, I consider it is likely that the Applicant was at the very least advised of the desirability of a clearance search and also that a Trade Mark Headstart Assessment was not a substitute for a clearance search. It would then be a business decision for the Applicant whether or not to proceed with a clearance search or rely merely on the results of the Trade Mark Headstart Assessments.

    [17] Trade Marks Act 1995 (Cth), s 229.

20. I consider that had the Applicant undertaken more extensive due diligence, it would likely have been aware of the Opponent’s Mark. However, a lack of sufficient due diligence or even the knowledge of the existence of a trade mark of another trader located overseas is not sufficient in itself to constitute bad faith. While the ubiquitous presence of the Internet has to a large extent rendered national borders as being less relevant to international trade, trade mark rights are still protected on a national basis. As such, the adoption of an identical trade mark used by another person in another country will not always constitute bad faith. Section 62A is not intended to create a de-facto form of international proprietorship that effectively grants foreign traders rights in Australia by being the first to use a trade mark in any other country. In situations where a particular trade mark has an established reputation, it may be easier to find that bad faith exists by the filing of an identical or similar mark in Australia. Similarly, if an applicant has filed a trade mark with some demonstrated ulterior motive other than a genuine commercial intention to use the mark, or after some dealings with an overseas trade mark owner, then a finding of bad faith may also be appropriate.   

21. In this case, the evidence does not establish reputation in the Opponent’s Mark in Australia. While this in itself is not determinative of s 62A, the absence of an established reputation in Australia makes it harder to conclude that the Applicant was aware of the Opponent’s Mark and sought an unfair advantage by adopting the Word Mark and Composite Mark, or that the Applicant was otherwise acting in a way falling short of acceptable commercial standards.

22. I consider the circumstances at most indicate that the Applicant may have been aware of the Opponent’s Mark, or ought to have been aware. However, even so, the Applicant could have formed a view that the Opponent’s rights did not extend to Australia. If so, the Applicant subsequently assumed some risk in launching its business and filing the Applications. That risk might be mitigated to some extent by obtaining registered trade marks for the Word Mark and Composite Mark. Obviously, the filing of the Applications also came with the immediate risk that the Opponent may become aware of those Applications and oppose registration, which is what subsequently occurred. However, at the Relevant Date, the Applicant could reasonably have held the view that it at least had an arguable case that the Opponent’s rights in the Opponent’s Mark did not extend to Australia, and there was a possibility of successfully defending an opposition brought against the Applications.

23. On balance, while the filing of the Applications with possible knowledge of the Opponent’s Mark, or lack of sufficient due diligence, by the Applicant could perhaps be characterised as either sharp business practice or questionable judgement, and this course has ultimately resulted in the Applicant being found not to be the proprietor of the Word Mark in Australia for the Refused Word Mark Services, I am not satisfied that the filing of the Applications in the circumstances existing at the Relevant Date was conduct that constitutes bad faith.

24. In view of the above, the ground of opposition under s 62A is not established.

    Resolution of opposition

25. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[18]

    [18] [2014] FCA 1304, [232].

26. In circumstances where an opposition has been established in respect of some, but not all, of the Applicant’s Services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove services for which a ground of opposition has been established.

27. Given the opposition to the Word Mark was made out in relation to all of the Applicant’s Services except the Remaining Word Mark Services, on 11 March 2022, I offered the Applicant the opportunity to amend the specification to delete the Refused Word Mark Services

1. The Applicant agreed and the amendment has now been made.

   Decision and award of costs

   68.     Following the amendment referred to above, I find that the Opponent has failed to establish a ground of opposition to the Word Mark for the Remaining Word Mark Services, namely:

   Class 36:         Provision of online currency exchange calculators; financial research

   Class 38: News broadcasting; Webcasting (broadcasting over a global computer network); Podcasting services; Providing online forums

   Class 41:         Educational seminars

2. Trade mark number 2042177 may proceed to registration for the Remaining Word Mark Services not less than one month from the date of this decision.

3. The Opponent has not established any of the grounds of opposition in relation to the Composite Mark. As such, trade mark number 2044718 may proceed to registration not less than one month from the date of this decision.

4. If the Registrar is served with a notice of appeal in respect of either of the Applications, I direct that registration shall not occur until either the appeal/s is/are withdrawn or discontinued. Otherwise, the disposition of the opposition/s should be in accordance with the Court’s order or direction.

5. Both parties requested an award of costs. Costs usually follow the event. As both parties have had a measure of success, I decline to award costs.  

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   12 April 2022