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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2020] ATMO 53
Decision Date: 14 April 2020

CaseChat Overview and Summary

Dimension Data (Proprietary) Ltd (the applicant) sought an interlocutory injunction against Dimension Digital Pty Ltd (the respondent) to restrain the respondent from using the name "Dimension Digital" and from engaging in conduct that might mislead or deceive the public into believing that the respondent was associated with the applicant. The applicant alleged that the respondent's name and business activities infringed its trade mark and constituted misleading and deceptive conduct under the *Trade Practices Act 1974* (Cth) and the *Copyright Act 1968* (Cth). The application was heard in the Federal Court of Australia.

The primary legal issues before the court were whether the applicant had established a strong prima facie case of infringement of its trade mark and misleading or deceptive conduct, and whether the balance of convenience favoured the grant of an interlocutory injunction. Specifically, the court had to consider the likelihood of confusion between the two entities in the marketplace, the potential for damage to the applicant's reputation and goodwill, and the potential prejudice to the respondent if the injunction were granted.

Justice Robert Wilson considered the evidence presented by both parties regarding the similarity of the names, the nature of their respective businesses, and the potential for consumer confusion. His Honour applied the principles governing interlocutory injunctions, requiring the applicant to demonstrate a serious question to be tried and that damages would not be an adequate remedy. The court also considered the strength of the applicant's trade mark and the likelihood of success on the merits of the claims of misleading and deceptive conduct.

The court ultimately granted the interlocutory injunction, finding that the applicant had established a strong prima facie case and that the balance of convenience favoured the grant of the injunction. The respondent was restrained from using the name "Dimension Digital" and from engaging in conduct likely to mislead or deceive the public into believing an association with the applicant pending the final determination of the proceedings.

Orders