Daniel Wilson & Chelsea Peters, Spruson & Ferguson v Andrew Petale, Y Intellectual Property
[2022] ATMO 164
•23 September 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Outsystems - Software EM Rede SA to registration of trade mark application number 1910500 (classes 9, 35 & 42) - OUTSYSTEMS - in the name of OutSystems Pty Ltd
Delegate: Katrina Brown Representation: Opponent: Daniel Wilson & Chelsea Peters, Spruson & Ferguson
Applicant: Andrew Petale, Y Intellectual PropertyDecision: 2022 ATMO 164
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds considered under ss 43, 44 and 58A – s 44 established in respect of some goods and services – s 44(4) applied in respect of some goods and services – no other grounds established - applicant given opportunity to amend specification – specification amended – registration to proceed for amended specificationBackground
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Outsystems - Software EM Rede SA (‘Opponent’) to the registration of the following trade mark:
Trade mark no: 1910500
Trade mark: OUTSYSTEMS (‘Trade Mark’)
Applicant: OutSystems Pty Ltd (‘Applicant’)
Filing date: 1 March 2018
Specification: Class 9 - Computer software; computer software for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); computer software for fault or status reporting; computer software for privilege-based access security systems; computer software for employee award interpretation; electro-mechanical locks; magnetic locks; electronic keys; handheld electronic hardware for receiving, controlling, storing, manipulating, displaying and transmitting data and for operating electronic locks; electronic access cards and readers and encoders therefor; magnetic access cards and readers and encoders therefor; smart access cards and readers and encoders therefor; proximity cards and readers and encoders therefor; key fobs being readers and encoders therefor; bar code access cards and readers, encoders and printers therefor; access keypad; radio frequency tracking tags; tracking and control systems comprising one or more identification tags, transceivers, and sensors used to determine and monitor the location and movement of tangible assets, inventory and individuals; infrared sensors; computer software for facilities management and controlling facility access systems and components therefor, namely, control panels, access card readers, and equipment and systems for video imaging, access control, alarm monitoring and security; computer software and hardware for controlling and operating security and access systems comprising locks, doors, access devices and security enclosures in the nature of boxes for securing keys; surveillance equipment sold individually as components or together as a system comprising one or more surveillance cameras, covert cameras, close circuit television cameras, camera housings, camera mounts, camera lenses, video monitors, video recorders, digital recorders, video storage media, video switches, control panels, keypad controllers, joystick controllers, interface apparatus for alarms and access control equipment, transceivers, receivers, transmitters, signal processors, multiplexers, matrix switchers, controllers, switches, splitters, coaxial cables, connectors, motion detectors, microphones, and speakers; computer user interface software and control software for managing surveillance equipment and systems; fiber-optic data transmission hardware, namely, fiber-optic cable, transmitters, receivers, transceivers, multiplexers, signal processors, matrix switchers switches, and user interface and control software used together therewith; security and access control equipment sold individually as components or together as a system comprising one or more sensors, detectors, monitors, alarms, control panels, control panel housing, keypads, transceivers, transmitters, signal receivers, alarm switches, switch housing, wireless communicators, electrical power supply units, transformers, and diagnostic testing, and service apparatus and parts for the foregoing equipment; software for computers and computer networks, including, applications and programs for enterprises including applications for portals, transactional systems, workflows, database centric applications, integration systems, containing web, email and mobile interfaces, that may be downloaded from a global computer network; computer software and computer networks, including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; apparatus which include integrated circuits, magnetic strips and memory chips; CD ROMS, discs and tapes; computer software including computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable digital applications and apps; computer programs including interactive computer programs; pre-recorded media, including videos; electronic newsletters; electronic magazines; electronic publications; electronic publications (downloadable); electronic publications including those sold and distributed online; printed publications in electronically readable form; printed publications in machine readable form; publications in computer readable form; publications in machine readable form; publications downloaded in electronic form from the internet; electrical apparatus, appliances, equipment and instruments in this class; all of the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 35 - Retail and wholesale of computer software, hardware, programs and applications; promotional services and sales promotion services in relation to computer programs and applications; retail and wholesale services; business consultancy; business consultancy services relating to data processing; consultancy relating to data processing; data management consultancy; business research; computerised business research; business information; collecting business information; collecting business information; compilation of business information; computer assisted business information; computer assisted business information; computerised business information services; computerised business information services; provision of business information; provision of business information; collection of commercial information; company data information services; computerised business information retrieval; provision of business management information; provision of business statistical information; provision of commercial information; systemisation of information into computer databases; data capture (keyboarding); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42 - Online provision of web-based software (non-downloadable); provision of online non-downloadable software (application service provider); software as a service (SaaS); providing online non-downloadable software platforms for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); providing online non-downloadable software platforms for fault or status reporting; providing online non-downloadable software platforms for privilege-based access security systems; providing online non-downloadable software platforms for employee award interpretation; design, installation and maintenance of computer software; installation of firmware; advisory services relating to computer software; computer software consultancy; computer software design; computer software development; development of computer software application solutions; computer software engineering; computer software programming services; diagnosis of faults in computer software; computer software support services (programming and software installation, repair and maintenance services); providing information, including online, about design and development of computer hardware and software; advisory services relating to computer hardware; advisory services relating to computer programming; advisory services relating to computer systems analysis; advisory services relating to computer systems design; analytical services relating to computers; computer consultancy; computer support services (programming and software installation, repair and maintenance services); computer support services (computer hardware, software and peripherals advisory and information services); computer system design; computer systems analysis; design and development of computer codes; design and development of computer databases; design and development of computer software; design and development of computer systems; design of telecommunications installations; design consultancy; technological consultation services; provision of technical information in relation to computers; rental of computer programs; rental of computer software; repair of computer software; testing of computer installations; testing of computer programs; online provision of web-based applications; consultancy in the field of software design, analysis, implementation and programming of computer software for enterprise applications; technical research in the field of applications development, maintenance and change management, applications deployment and operations; data conversion for computer programs and other software; creation and maintenance of enterprise applications including, websites, web applications, transactional applications, workflow applications and mobile applications for third parties; hosting computer sites (web sites); creating and maintaining web sites for others; project management (design); cloud computing; benchmarking (technical testing); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); technical consultation and support services for hardware and software used in connection with security and access systems; technical consultation and support services for surveillance cameras; custom design services for others in the fields of security systems, access systems, and tangible asset and inventory monitoring systems; website design; internet portal services (designing or hosting); web portal services (designing or hosting); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes; computerised business information storage
(‘Applicant’s Goods and Services’)
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.[1]
[1] This is the incorrect endorsement. The examiner applied the provisions of s 44(4) of the Act and accepted the Trade Mark.
The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 15 August 2019.
The Opponent filed a Notice of Intention to Oppose on 15 October 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 November 2019.
The Applicant filed a Notice of Intention to Defend on 17 January 2020.
The Opponent filed the following declarations as evidence in this opposition:
·Declaration of André Guerreiro Rodrigues (Legal representative of the Opponent) made on 20 April 2020 with Exhibits 1 to 11 (‘Rodrigues Declaration’); and
·Declaration of Rui Pedro Folgado Brás Pereira (Director of Opponent) made on 25 November 2020 with Exhibit A (‘Pereira Declaration’).
The Applicant filed the following declaration as evidence in this opposition:
·Declaration of Kyle Lange (CEO and Director of Applicant) made on 30 June 2020 with Annexures KL-1 to KL-3 (‘Lange Declaration’).
Once the time allowed for filing evidence ended, an oral hearing was requested. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 15 June 2022. The Opponent was represented by Chelsea Peters and Daniel Wilson of Spruson & Ferguson. The Applicant was represented by Andrew Petale of Y Intellectual Property.
Grounds of opposition, onus, and relevant date
In the SGP, the Opponent particularised grounds of opposition under ss 43, 44 and 58A of the Act.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 1 March 2018 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.
Section 44
Section 44 of the Act relevantly provides:
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. …
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Subject to ss 44(3) and 44(4), the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods, similar services, or closely related goods or services.
In the SGP, the Opponent nominated trade mark number 1767596 (‘Opponent’s Registration’) as the basis for this ground of opposition. The details of the Opponent’s Registration are as follows:
Trade mark:
Priority date: 28 April 2016
Registered owner: Opponent
Specification: Class 9 - Computer software and computer networks, including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; apparatus which include integrated circuits, magnetic strips and memory chips; CD ROMS, discs and tapes
Class 35 - Promotional services and sales promotion services in relation to computer programs and applications; retail and wholesale of computer programs and applications
Class 41 - Technical and general training in information technologies, development of computer programs, tools and methodology
Class 42 - rental of computer apparatus, equipment and hardware; rental of computer software; software consulting; software analysis, implementation and programing; study of technical projects; software installation and maintenance; data conversion for computer programs and other software; conception and maintenance services for third parties relating to internet pages, office applications, internet applications and mobile applications
Class 45 - Licensing of computer software, including its reproduction and distribution to clients and partners
(‘Opponent’s Goods and Services’)
From the information set out above, it is evident that the Opponent’s Registration is held in a name other than that of the Applicant and has an earlier priority date than the Relevant Date. In determining the remaining issues under this ground of opposition, I note that they are matters that should not necessarily be considered in isolation. As articulated by French J in Registrar of Trade Marks v Woolworths (‘Woolworths’), the correct approach is to make one practical judgment.[4]
[4] [1999] FCA 1020 [40] (‘Woolworths’).
The Applicant concedes (and I agree) that on applying the well-established tests,[5] the Trade Mark and the Opponent’s Registration are at least deceptively similar.
[5] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] – [13] (Windeyer J).
I now turn to a comparison of the Applicant’s Goods and Services and the Opponent’s Goods and Services. Pursuant to s 14(1) of the Act ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[6] Pursuant to s 14(2) of the Act, ‘similar services’ are services that are the same or of the same description. The test for determining similar services has generally been equated with the principles applicable to determining similar goods.[7]
[6] Jellinek’s Application (1946) 63 RPC 59 (Romer J); Beck, Koller & Company’s Application (1947) 64 RPC 76.
[7] MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
Applying these principles, it is evident that the majority of the Applicant’s Goods and Services are similar to the Opponent’s Goods and Services. For example, I consider the following to be similar goods or similar services:
Applicant’s Goods and Services
Opponent’s Goods and Services
Class 9: Various claims for computer software; electro-mechanical locks; magnetic locks; electronic keys; handheld electronic hardware for receiving, controlling, storing, manipulating, displaying and transmitting data and for operating electronic locks, electronic access cards and readers and encoders therefor; magnetic access cards and readers and encoders therefor; smart access cards and readers and encoders therefor; proximity cards and readers and encoders therefor; key fobs being readers and encoders therefor; bar code access cards and readers, encoders and printers therefor; access keypad; radio frequency tracking tags; tracking and control systems comprising one or more identification tags, transceivers, and sensors used to determine and monitor the location and movement of tangible assets, inventory and individuals; infrared sensors; surveillance equipment; fibre-optic data transmission hardware; security and access control equipment; apparatus which include integrated circuits, magnetic strips and memory chips; electrical apparatus, appliances, equipment and instruments in this class; CD ROMS, discs and tapes; pre-recorded media, including videos; all of the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 9: Computer software; apparatus which include integrated circuits, magnetic strips and memory chips; CD ROMS, discs and tapes
Class 35: Retail and wholesale of computer software, programs and applications; promotional services and sales promotion services in relation to computer programs and applications; retail and wholesale services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and key safes
Class 35: Promotional services and sales promotion services in relation to computer programs and applications; retail and wholesale of computer programs and applications
Class 42: Design, installation and maintenance of computer software; installation of firmware; advisory services relating to computer software; computer software consultancy; computer software design; computer software development; development of computer software application solutions; computer software programming services; diagnosis of faults in computer software; various computer support services; computer consultancy; rental of computer programs; rental of computer software; repair of computer software; testing of computer installations; data conversion for computer programs and other software; creation and maintenance of enterprise applications; information technology services; technical consultation and support services for hardware and software used in connection with security and access systems; Technical research in the field of maintenance and change management; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42: Rental of computer apparatus, equipment and hardware; rental of computer software; software consulting; software analysis, implementation and programing; study of technical projects; software installation and maintenance; data conversion for computer programs and other software; conception and maintenance services for third parties relating to internet pages, office applications, internet applications and mobile applications; study of technical projects
The Applicant’s Goods and Services also contain claims which I consider to be closely related to the Opponent’s Goods and Services. The concept of ‘closely related’ concerns the relationship between goods and services. In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:
It will be an exercise of the Registrar’s judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.[8]
[8] F J Smith, ‘The Trade Marks Amendment Act 1978’ (1979) 53 Australian Law Journal 118, 120.
In Woolworths, French J stated the ‘relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[9] Applying these principles I consider the following to be closely related goods or services:
[9] [1999] FCA 1020, [38].
Applicant’s Goods and Services
Opponent’s Goods and Services
Class 42: Online provision of web-based software (non-downloadable); provision of online non-downloadable software (application service provider); software as a service (SaaS); providing online non-downloadable software platforms; design and development of computer software; testing of computer programs
Class 9: Computer software and computer programs
Considering the high degree of resemblance between the Trade Mark and the Opponent’s Registration, and the similarity (or closeness of the relationship) between the goods and services, I consider that there is a real and tangible danger of deception in relation to all of the Applicant’s Goods and Services except for:
Class 9 – Electronic newsletters; electronic magazines; electronic publications; electronic publications (downloadable); electronic publications including those sold and distributed online; printed publications in electronically readable form; printed publications in machine readable form; publications in computer readable form; publications in machine readable form; publications downloaded in electronic form from the internet; all the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 35 – Business consultancy; business consultancy services relating to data processing; consultancy relating to data processing; data management consultancy; business research; computerised business research; business information; collecting business information; collecting business information; compilation of business information; computer assisted business information; computer assisted business information; computerised business information services; computerised business information services; provision of business information; provision of business information; collection of commercial information; company data information services; computerised business information retrieval; provision of business management information; provision of business statistical information; provision of commercial information; systemisation of information into computer databases; data capture (keyboarding); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42 – Project management (design); all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes; computerised business information storage
The Opponent has in principle established its ground of opposition based on ss 44(1) and 44(2) of the Act in respect of some of the Applicant’s Goods and Services. For ease of reference, I will refer to the Applicant’s Goods and Services for which the s 44 ground has been established as the Conflicting Goods and Services.
However, ss 44(1) and 44(2) are subject to ss 44(3) and 44(4), which deal with honest concurrent use or other circumstances, and prior continuous use, respectively. The onus of establishing ss 44(3) or 44(4) lies with the Applicant.
Prior continuous use
Pursuant to s 44(4) of the Act, I may not reject the Trade Mark if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the Conflicting Goods and Services beginning before the 28 April 2016, being the priority date of the Opponent’s Registration.
Confidential Annexure KL-2 to the Lange Declaration consists of a declaration of Kyle Lange made on 15 October 2018 with Exhibits KL-1 to KL-7 (‘Second Lange Declaration’). Arguably there are sensitive commercial matters in the Second Lange Declaration which I will not discuss in any detail. However, I will discuss the Second Lange Declaration to the degree necessary to provide sensible reasons for my decision.
It is declared in the Second Lange Declaration that the Trade Mark was first used by the Applicant as early as July 2005. Exhibit KL-4 to the Second Lange Declaration contains a capture of the Applicant’s website ‘ sourced from an internet archiving service. The capture shows that on 10 September 2009 the Applicant’s website featured the Trade Mark (or the Trade Mark with additions or alterations that do not substantially affect its identity) in respect of ‘workplace management systems’. This is the earliest dated example of use of the Trade Mark provided in the Applicant’s evidence and is approximately 6 years before the priority date of the Opponent’s Registration.
The Second Lange Declaration states that the Trade Mark has been used continuously for ‘some 15 years plus’. In support of this statement, the Applicant has provided yearly advertising expenditure from 2005 to 2017, and yearly revenue for goods and services provided under or by reference to the Trade Mark from 2009 to 2018. Additionally, the evidence contains invoices for services provided under the Trade Mark dated 2009, 2010, 2013 and 2015.
The examples of use of the Trade Mark, namely the Applicant’s website and invoices, show use in relation to consultancy and ‘workplace management systems’. The Second Lange Declaration provides additional context in respect of ‘workplace management systems’ stating that the Trade Mark is used in relation to ‘workplace management systems via software solutions and business/IT consultancy’.
Accordingly, on the balance of probabilities, I am satisfied that the Applicant has established prior continuous use of the Trade Mark in relation to the following Conflicting Goods and Services:
Class 9 - Computer software; computer software for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); computer software for fault or status reporting; computer software for privilege-based access security systems; computer software for employee award interpretation; computer software for facilities management and controlling facility access systems and components therefor, namely, control panels, access card readers, and equipment and systems for video imaging, access control, alarm monitoring and security; computer software for controlling and operating security and access systems comprising locks, doors, access devices and security enclosures in the nature of boxes for securing keys; computer user interface software and control software for managing surveillance equipment and systems; software for computers and computer networks, including, applications and programs for enterprises including applications for portals, transactional systems, workflows, database centric applications, integration systems, containing web, email and mobile interfaces, that may be downloaded from a global computer network; computer software including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; computer software including computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable digital applications and apps; computer programs including interactive computer programs; all of the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42 - Online provision of web-based software (non-downloadable); provision of online non-downloadable software (application service provider); software as a service (SaaS); providing online non-downloadable software platforms for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); providing online non-downloadable software platforms for fault or status reporting; providing online non-downloadable software platforms for privilege-based access security systems; providing online non-downloadable software platforms for employee award interpretation; computer software consultancy; online provision of web-based applications; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
The material before me is not sufficient to apply the provisions of s 44(4) in respect of any of the other Conflicting Goods and Services.
Honest concurrent use or other circumstances
Section 44(3) of the Act provides the Registrar with a discretion to accept the Trade Mark on the basis of honest concurrent use or other circumstances.
In this matter, the evidence of use of the Trade Mark put forward by the Applicant is minimal. I have already applied the provisions of s 44(4) in respect of the Conflicting Goods and Services for which the Applicant’s evidence substantiates use. Furthermore, considering the high degree of resemblance between the Trade Mark and the Opponent’s Registration combined with the level of similarity between the Conflicting Goods and Services and the Opponent’s Goods and Services, the risk of confusion amongst potential consumers is on the face of it significant. Additionally, there is no information before me about other circumstances that persuades me to allow the acceptance of the Trade Mark for goods or services other than those set out in [28] of this decision.
In such circumstances and based on the evidence before me, it is not appropriate to apply the provisions of s 44(3) of the Act.
Section 58A
Section 58A of the Act applies where the application for a trade mark has been accepted because of s 44(4). In this matter, the Trade Mark was accepted by the examiner on the basis of s 44(4), and as explained above in the discussion of the s 44 ground of opposition, I agree that it is appropriate to apply the provisions of s 44(4) albeit to a much narrower range of goods and services than those accepted by the examiner.
Section 58A of the Act relevantly provides:
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a)first used the similar trade mark in respect of:
(i)similar goods or closely related services;
(ii)similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
The earliest use of the Trade Mark by the Applicant, substantiated by a dated example, is 10 September 2009. Therefore, to establish this ground of opposition, the Opponent will need to demonstrate that it continuously used the Opponent’s Registration (or a trade mark with additions or alterations that do not substantially affect its identity) since before 10 September 2009.
The Pereira Declaration states that since at least 2002, OUTSYSTEMS has been used on the Opponent’s website ‘ which is accessible by Australian consumers. Exhibit A to the Pereira Declaration consists of a capture of the Opponent’s website dated 22 January 2002, sourced from an internet archiving service. It is arguable that the trade mark on the Opponent’s website in January 2002 has additions or alterations that substantially affect the identity of the Opponent’s Registration. However, it is not necessary for me to decide that issue because the Opponent’s evidence does not establish continuous use. At its highest, the Opponent’s evidence suggests that the Opponent’s Registration has been ‘used globally over a continuous period of time since 2010’[10] which is 8 years after the first use claimed by the Opponent and also after the first use demonstrated by the Applicant. With the exception of capture of the Opponent’s website from January 2002, the Opponent has not provided any dated examples of use of the Opponent’s Registration or any other information such as yearly revenue or advertising expenditure to demonstrate continuous use. In these circumstances, I cannot be satisfied that the Opponent’s Registration has in fact been continuously used as required by s 58A(2)(b) of the Act.
[10] Rodrigues Declaration [2].
The s 58A ground of opposition has not been established.
Section 43
Section 43 of the Act provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To succeed under this ground of opposition, the Opponent must establish that there is a connotation within the Trade Mark and, because of that connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
This ground of opposition is particularised in the SGP as follows:
The conflicting marks present significant similarities which evidently preclude them from peacefully coexisting in the market…there is a clear likelihood of confusion between the confronted marks due to: a) the contested application identifies both identical and similar goods and services to those covered by the earlier mark, b) the signs in dispute are similar to a high degree and c) the signs share the same distinctive and dominant element “OUTSYSTEMS”. In this sense, it is undisputable that the marks in dispute, sharing the same distinctive and dominant element, are likely to be mistaken between them.
This particularisation is misconceived. Section 43 of the Act is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion resulting from similarities between the Trade Mark and another trade mark.[11] As such, any deception or confusion resulting from the similarity of the Trade Mark and any of the Opponent’s trade marks is outside the scope of s 43 of the Act.
[11] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).
The Opponent has not identified a connotation inherent in the Trade Mark, nor is one readily apparent. Consequently, the s 43 ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
(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.
The Opponent has established a ground of opposition under s 44 of the Act in respect of some of the Applicant’s Goods and Services. None of the other grounds of opposition have been established.
Consequently, I informed the Applicant that it was my intention to refuse to register the Trade Mark unless the specification was amended to:
Class 9 – Computer software; computer software for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); computer software for fault or status reporting; computer software for privilege-based access security systems; computer software for employee award interpretation; computer software for facilities management and controlling facility access systems and components therefor, namely, control panels, access card readers, and equipment and systems for video imaging, access control, alarm monitoring and security; computer software for controlling and operating security and access systems comprising locks, doors, access devices and security enclosures in the nature of boxes for securing keys; computer user interface software and control software for managing surveillance equipment and systems; software for computers and computer networks, including, applications and programs for enterprises including applications for portals, transactional systems, workflows, database centric applications, integration systems, containing web, email and mobile interfaces, that may be downloaded from a global computer network; computer software including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; computer software including computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable digital applications and apps; computer programs including interactive computer programs; electronic newsletters; electronic magazines; electronic publications; electronic publications (downloadable); electronic publications including those sold and distributed online; printed publications in electronically readable form; printed publications in machine readable form; publications in computer readable form; publications in machine readable form; publications downloaded in electronic form from the internet; all the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 35 – Business consultancy; business consultancy services relating to data processing; consultancy relating to data processing; data management consultancy; business research; computerised business research; business information; collecting business information; compilation of business information; computer assisted business information; computerised business information services; provision of business information; collection of commercial information; company data information services; computerised business information retrieval; provision of business management information; provision of business statistical information; provision of commercial information; systemisation of information into computer databases; data capture (keyboarding); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42 – Online provision of web-based software (non-downloadable); provision of online non-downloadable software (application service provider); software as a service (SaaS); providing online non-downloadable software platforms for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); providing online non-downloadable software platforms for fault or status reporting; providing online non-downloadable software platforms for privilege-based access security systems; providing online non-downloadable software platforms for employee award interpretation; computer software consultancy; online provision of web-based applications; project management (design); all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes; computerised business information storage.
The Applicant availed itself of the opportunity and the specification has been amended accordingly and the following endorsement has been added: Provisions of paragraph 44(4) applied.
The Trade Mark may now proceed to registration one month from the date of this decision. If the Registrar is 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 should otherwise be in accordance with the Court’s order or direction.
Costs
The parties sought costs. As both parties have had a degree of success, I decline to award costs.
Katrina Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
23 September 2022
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