Dimension Data (Proprietary) Ltd v Dimension Digital Pty Ltd

[2020] ATMO 53

TRADE MARKS ACT 1995

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

ReOppositions by Dimension Data (Proprietary) Limited to registration of trade mark applications 1907052 (35) DIMENSION DIGITAL (figurative) and 1907053 (35) DIMENSION DIGITAL both in the name of Dimension Digital Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Eric Ziehlke of Swaab Attorneys

Applicant: Madeleen Roussseau of Williams + Hughes Pty Ltd

Decision:                   2020 ATMO 53

Trade Marks Act 1995 (Cth) - Section 52 oppositions: s 44 established – honest concurrent use considered – registration refused in both cases

Background

1. This decision concerns two oppositions to registration filed by Dimension Data (Proprietary) Limited (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth). The opposed applications are in the name of Dimension Digital Pty Ltd (‘the Applicant’). Details of the applications are:

Application Number:

1907052

Filing Date:

14 February 2018

Services:

Class 35: Advertising services provided over the internet

(‘the Applicant’s Services’)

Trade Mark:

(‘the Applicant’s Logo Mark’)

Application Number:	1907053
Filing Date:	14 February 2018
Services:	Class 35: Advertising services provided over the internet
Trade Mark:	DIMENSION DIGITAL	(‘the Applicant’s Word Mark’)

2. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

3. On 5 July 2018 the applications’ acceptances for possible registration were advertised in the Australian Official Journal of Trade Marks. Notices of Intention to Oppose and Statements of Grounds and Particulars (‘SGPs’) were filed in respect of both applications. The SGPs are identical and nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. The Applicant filed Notices of Intention to Defend.

Evidence

4. The parties to the dispute filed the same evidence in respect of each opposition. The Opponent’s Evidence in Support (‘EIS’) consists of:

·Statutory Declaration made on 24 January 2019 by Grant Martin Campbell Bodley, the Chief Executive Officer (Dimension Data Middle East and Africa) with the Opponent, including Exhibits GB-1 to GB-11 (‘Bodley 1’).

5. The Applicant’s Evidence in Answer (‘EIA’) consists of:

·Declaration made on 30 April 2019 by Andrew James Gibson, the Managing Director of the Applicant, with Annexures AG-1 to AG-18 (‘the Gibson declaration’); and

·Declaration made on 30 April 2019 by Magdalena Rousseau, a legal practitioner with Williams + Hughes Pty Ltd, the representative of the Applicant, with Annexure MR-1 (‘the Rousseau declaration’).

6. The Opponent’s Evidence in Reply (‘EIR’) consists of:

·Statutory Declaration made on 29 July 2019 by Grant Martin Campbell Bodley, with Exhibit GMB-1 (‘Bodley 2’).

7. Once the time allowed for filing evidence had ended the parties requested to be heard. The matters were set down to be heard together on 12 February 2020. Prior to the hearing, the parties filed written summaries of the submissions they intended to rely on at the hearing. The Opponent’s submissions were prepared by Swaab Attorneys. The Applicant’s submissions were prepared by Williams + Hughes Pty Ltd. As a delegate of the Registrar of Trade Marks, I heard the parties’ oral submissions via teleconference on the scheduled date. Eric Ziehlke of Swaab Attorneys appeared on behalf of the Opponent. Madeleen Rousseau of Williams + Hughes Pty Ltd appeared on behalf of the Applicant. It was confirmed at the hearing that Ms Rousseau was the declarant of the Rousseau declaration notwithstanding the inconsistency in names.

The Opponent

8. According to Bodley 1:

The Opponent was founded in 1983 and is headquartered in Johannesburg, South Africa. The Opponent is a member of the NTT Group, comprising leading information, communication and technology companies. The Opponent currently has international annual revenue (confidential figure provided) and employs 28,000 people across 47 countries around the world.

9. The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Classes
711055	20 June 1996	9, 37, 38, 42
711056	DIMENSION DATA	20 June 1996	9, 37, 38, 42
1816089	21 December 2016	9, 37, 38, 42

10.     The goods and services for which the Opponent’s Trade Marks are registered are similar, although not identical, in each case. The following is an indication of the types of goods and services the registrations cover:

·Class 9: Computer equipment, parts and accessories therefor in this class.

·Class 37: Maintenance, repair and installation services for computer equipment and allied goods.

·Class 38: Telecommunication of information; electronic mail services; provision of telecommunication access and links to computer database and the internet; rental of telecommunication equipment (1816089 only).

·Class 42: Miscellaneous services in this class relating to communication networks and systems, computer software and hardware; retail, wholesale and supply services; marketing services connected to retail, wholesale and supply of [a number of computer related goods] (711055 and 711056 only).

The Applicant

11.     According to the Gibson declaration:

[The Applicant] was registered as a company on 10 October 2015. …

[The Applicant’s] business model is providing the services of an advertising agency over the internet. …

[The Applicant’s] physical office is based in Western Australia but the vast majority of its services are promoted and provided online.

[The Applicant] presently promotes its [services] throughout Western Australia and provides ongoing monthly services to more than 100 active customers involved in various different businesses. Whilst the majority of our clients are based within Western Australia, we have provided [our services] to clients throughout Australia and intend to continue to do so in the future.

[The applied for trade marks] have been used prominently and consistently in relation to [the Applicant’s Services] since October 2015.

Grounds of Opposition, Onus and Standard of Proof

12.     As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A and 60. At the hearing, the Opponent did not press the s 58 ground. To successfully oppose the applications, the Opponent need establish only one of the nominated grounds.

13.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 14 February 2018, being the filing date of the applications (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of s 44.

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

14.     Relevant provisions of the Act with respect to the s 44 ground are reproduced below:  

Section 44 - Identical etc. trade marks

(1)…  

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)            a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)           a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

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

(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. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.
…

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

15.     In the SGP the Opponent nominated the Opponent’s Trade Marks in respect of s 44.

16.     Subject to ss 44(3) and 44(4), to successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that one or more of the Opponent’s Trade Marks:

·     is registered by a person other than the Applicant (‘the first requirement’); and

·     has a priority date which is earlier than the Relevant Date (‘the second requirement’); and

·     is registered in respect of at least some goods/services which are similar/closely related to at least some of the Applicant’s Services (‘the third requirement’); and

·     is substantially identical with or deceptively similar to the Applicant’s Trade Marks (‘the fourth requirement’).

17.     The first and second requirements are satisfied by all of the Opponent’s Trade Marks.

The third requirement

18.     Of the Opponent’s Trade Marks, 711055 and 711056 include marketing services connected to the retail, wholesale and supply of [a number of computing related goods] in Class 42. Marketing is defined by the Macquarie Dictionary to mean, inter alia:

The total process whereby goods and services are put on the market, usually encompassing market research, advertising and promotion.

It is clear from the above definition that the Opponent’s marketing services in Class 42 encompass advertising services, which, in turn, encompass the Applicant’s Services in Class 35. As an aside, I note that marketing services are now classified in Class 35. I am satisfied that at least some of the services for which trade marks 711055 and 711056 are registered encompass services which are identical to the Applicant’s Services. The third requirement is thus satisfied.  

The fourth requirement

19.     The Opponent has not pressed that the relevant trade marks are substantially identical so I will move directly to the consideration of deceptively similarity. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

[4] [1963] HCA 66, [13].

20.     I need consider only the Opponent’s trade mark 711056, DIMENSION DATA, here as it is the most similar to the Applicant’s Trade Marks. If the Opponent establishes the requirements of s 44(2) in respect of this trade mark it is unnecessary that any other trade mark be considered. If the Opponent fails to establish the requirements of s 44(2) in respect of this trade mark nor will it establish it with respect to any other of its trade marks.

21.     The Opponent’s submissions in respect of deceptive similarity include the following:

The word DIMENSION is defined in the Cambridge Dictionary as a ‘measurement’ or ‘a part or feature of considering something’. It is submitted that in the context of electronic communication and advertising, the word DIMENSION is distinctive … The word DATA is defined in the Cambridge Dictionary as ‘facts or numbers collected, stored or used by a computer’. It is submitted that the word DATA is wholly descriptive in the context of electronic communication and advertising in the sense that it describes information which is stored, analysed or transmitted. As a consequence, it is submitted that the registration of the mark DIMENSION DATA effectively provides the Opponent with a monopoly in the single word DIMENSION on the basis that the word DATA is descriptive.

I concur that DIMENSION is distinctive in connection with advertising services. I am less persuaded by the Opponent’s other submissions.

22.     The Applicant submitted in respect of deceptively similarity that:

The word DIMENSION is the only element that is common to both the Applicant’s and the Opponent’s trade marks. The Applicant submits that consumers are familiar with this term, as it is a common English noun.

The state of the trade mark register reflects the fact that the word DIMENSION is contained in numerous trade marks and there are currently 131 trade mark registrations and applications that incorporate the exact word.

The Applicant further notes that, as dealt with in the Rousseau Declaration, the Opponent’s trade marks co-exist with various trade marks incorporating the word DIMENSION covering ‘advertising’ and related services in class 35.

23.     Annexure MR-1 to the Rousseau declaration contains the results of a search of the trade marks register as at 30 April 2019. The search returned 14 results. Of those, the vast majority have a structure which is quite different to the Applicant’s trade marks; these are signs such as:

PURPL ONE COVER, ONE COMPANY, SIX DIMENSIONS

STRATEGIC SALES DIMENSIONS

ADimension

ONDimension

THE OTHER DIMENSION

ID INTERACTIVE DIMENSION (logo)

EXTREME EXCELLENCE EXPERIENCE ITALIAN FOOD COMPANIES DIMENSION (logo)

3-DIMENSIONAL RECRUITMENT

24.     Of the 14 search results one only, Dimension Solutions, has a structure which is similar to that of DIMENSION DATA. The only useful conclusion which can be drawn from the above search is that there are a number, and a fairly small number, of trade marks which include DIMENSION as an element.

25.     The Applicant’s Word Mark is simply DIMENSION DIGITAL and these words are also the principal distinguishing feature of the Applicant’s Logo Mark. The decisive comparison to be made here is between DIMENSION DIGITAL and DIMENSION DATA. In determining deceptive similarity there are three usual comparisons to be made: visual similarity, aural similarity and conceptual similarity. Significant similarities are found when making all of these comparisons. The first element of the signs is a fairly long, distinctive, and shared word. The second words both start with a ‘D’ but are of differing lengths. Visually the signs are quite similar. A similar finding arises, for similar reasons, when an aural comparison is made; the signs are aurally similar. The second elements of the signs, DIGITAL and DATA, are very common words, especially in the current computer age, and they are conceptually closely related. Data is very often stored in a digital form. In fact, it is not uncommon to hear references to ‘digital data’. This results in the trade marks being, conceptually, very similar. It is my view that, overall, DIMENSION DATA and DIMENSION DIGITAL are similar enough that they are deceptively similar. This is particularly so when considered in the light of imperfect recollection of the trade marks.[5] The additional device element and stylisation in trade mark 1907052 is not sufficient to prevent it, too, from being deceptively similar to DIMENSION DATA. The fourth requirement of s 44(2) is therefore satisfied.

[5] Re an Application by Rysta Ltd (1943) 60 RPC 87, 108 (MacKinnon LJ).

26.     All four requirements of s 44(2) have been satisfied; however, that is not the end of the matter. In the event of this finding the Applicant sought to rely on s 44(3).

Honest concurrent use

27.     Where the requirements of s 44(2) have been satisfied it is open to the Applicant to rely on s 44(3)(a). Under those provisions, the Registrar may accept the applications despite that the requirements of s 44(2) are satisfied, provided she is satisfied that there has been honest concurrent use of the relevant trade marks. The Applicant submits that there is such honest concurrent use.

28.     There are five well-established criteria in relation to assessing whether an application should be accepted on the basis of honest concurrent use, they are:

·the honesty of the concurrent use;

·the extent of the use in duration, area and volume;

·the degree of confusion likely to ensue;

·whether any instances of confusion have in fact occurred;

·the relative inconvenience which would be caused to the respective parties;[6] and

[6] John Fitton & Co Ltd’s Application (1949) 66 RPC 110.

The list of criteria, above, is not exhaustive and ‘any relevant circumstance may, and indeed ought, to be considered’.[7] The date at which honest concurrent use is assessed is, here, the Relevant Date. Evidence of use must be from before the Relevant Date.[8]

Honesty of the concurrent use

[7] Electrix Ltd’s Application [1957] RPC 369, 379 (Wynn-Parry J).

[8] Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]–[164].

29.     The first of the criteria, the honesty of the concurrent use, is critical ‘for if it is not honest it is as nothing’.[9] The Applicant bears the onus of establishing that its adoption and use of its trade marks was honest. Important factors for consideration are the reasons the Applicant adopted its trade marks, whether the Applicant was aware of the Opponent’s Trade Marks, and, if so, the reasons for its decision to persist with the adoption of its trade marks in the face of the Opponent’s Trade Marks.

[9] Re Granada Trade Mark [1979] RPC 303, 313 (Myall).

30.     The Gibson declaration contains the following with respect to the adoption of the Applicant’s trade marks:

The descriptive word DIGITAL, meaning ‘involving a digital device’ and the word DIMENSION meaning ‘magnitude’ were chosen to convey the fact that [the Applicant] is operating in a ‘dimension which is digital’. …

At the time of adoption of the DIMENSION DIGITAL Trade Mark in 2015, [the Applicant] was not aware of any use of any trade marks incorporating the words DIMENSION DIGITAL by any other party unrelated to [the Applicant] including in relation to [the Applicant’s Services] or being used without the consent of Dimension Digital.

The Gibson declaration is silent, as is the Rousseau declaration, as to whether the Applicant was aware of the Opponent’s Trade Marks at the time it adopted its trade marks. I note the Applicant’s submission that ‘[t]he Applicant adopted each of the opposed trade marks honestly and without awareness of the Opponent’s trade marks or its business’. I am not inclined to accept the second half of this statement due to its absence from the Gibson and Rousseau declarations.

31.     In the present matter, it is unknown whether the Applicant was aware of the existence of the Opponent’s Trade Marks when it adopted its trade marks. If the Applicant was aware of the existence of the Opponent’s Trade Marks an explanation as to why it persisted with the adoption of its trade marks in the face of the Opponent’s Trade Marks should have been provided. Such an explanation is warranted because the Opponent’s Trade Marks are registered for services which include services identical to the Applicant’s Services and because of the high degree of similarity between the trade marks. If the Applicant was not aware of the existence of the Opponent’s Trade Marks it ought to have been. It was found in Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd that where the applicant in that matter failed to carry out adequate searches before adopting trade marks it could not be said that there had been ‘honest’ concurrent use of the trade marks in question.[10] A simple search of the Trade Marks Register would have revealed the existence of the Opponent’s Trade Marks. In the absence of an explicit statement that the Applicant was not aware of the Opponent’s Trade Marks, or an explanation as to why the Applicant persisted in adopting its trade marks in the face of the Opponent’s Trade Marks, I am not satisfied that any concurrent use was honest. I stress this is not a finding of dishonesty on the part of the Applicant, only that the Applicant has not discharged its burden of establishing honesty.

[10] [2016] FCA 14, [125] (Davies J).

32.     As the Applicant has failed to satisfy me that any concurrent use of its trade marks was honest, the applications cannot be accepted under the provisions of s 44(3)(a). The Opponent has, therefore, established this ground of opposition in respect of both applications.

Decision

33.     Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

34.     I have found the Opponent has established the grounds of opposition it raised pursuant to s 44. As the Delegate of the Registrar I accordingly refuse to register the Applicant’s trade marks.

Costs

35.     The Opponent sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[11]

[11] (2001) 53 IPR 591.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
14 April 2020