Dingo Software Pty Ltd

[2016] ATMO 29

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1703655 (35, 37, 42) - DINGO and ANIMAL HEAD SILHOUETTE DEVICE - in the name of Dingo Software Pty Ltd.

Delegate:

Cristy Condon

Representation:

Applicant: King & Wood Mallesons

Decision:

2016 ATMO 29

Section 38– Proposal to Revoke Acceptance of Trade Mark - Trade Mark will not be revoked

Background

1. This decision is made in relation to whether or not to apply section 38 of the Trade Marks Act 1995 (‘the Act’) to revoke the acceptance of Australian trade mark number 1703655, the details of which are extracted below:

   Trade Mark No.: 1703655

   Trade Mark: (‘the Trade Mark’)

   Filing Date: 29 June 2015

   Owner: Dingo Software Pty Ltd (‘the Applicant’)

   Specification of services:

   Class 35:

   Remote storage being the electronic storage of data; presentation of data; retailing and wholesaling of computer software and hardware and of scientific and technological equipment; business consultation advice relating to plant and equipment; business advice and assistance in relation to business assets; business advice and assistance in the reporting and communication of information concerning business assets; business and management advice, consultancy and information; maintenance of asset registers (for others)

   
   
   Class 37:

   Repair and maintenance consultancy services; repair and maintenance advisory services; plant and equipment repair and maintenance

   
   
   Class 42:

   Rental of computer software; computer programming and software design; analysis of data; consultancy services in the field of computer technology and maintenance management; software implementation and industrial analysis and research services; updating and development of computer systems and software; consultancy services and technical research in the field of computer technology; rental of computer hardware

2. Following the examination of the Trade Mark the application was accepted.  However shortly after acceptance the Registrar became aware that a similar trade mark with an earlier priority date had been filed.  On 11 November 2015 the Registrar of Trade Marks (‘the Registrar’) sent a Notification of Proposal to Revoke Acceptance of the Trade Mark (‘the Notification’).  Relevant details of the Notification are extracted below:

   Trade mark application 1703655 will be advertised as accepted in the Official Journal of Trade Marks shortly. However, it has now come to my attention that the trade mark should not have been accepted.

   IP Australia has recently received a similar application as an International Registration Designating Australia.

   Trade Mark 1719019 was not available to the examiner during the process of accepting your application.

   This Trade Mark, DINGO is deceptively similar to your application, contains similar claims in class 37 and has an earlier priority date. As such revocation of your application is appropriate.

   Your trade mark contains claims in class 37 for Repair & Maintenance Services in class 37. These would include the class 37 services of maintenance and installation in relation to vehicles, weapons, technical apparatus and equipment.

   Therefore, having taken into account all the circumstances that existed when the application was accepted, it is considered reasonable to revoke the acceptance, (section 38 of the Trade Marks Act 1995).

   You have one month from the date of this letter to apply to be heard on this matter, to submit a request for a decision on the written record or You may –

   * Delete Class 37

   * Provide evidence of use or other circumstances

3. The Applicant requested a hearing based on written submissions and this was delegated to me, as a delegate of the Registrar.  The Applicant was represented by King & Wood Mallesons legal firm.

   Relevant legislation

   Section 38

   Section 38 of the Act provides:

   38  Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)If the Registrar revokes the acceptance:

   (a)the application is taken to have never been accepted; and

   (b)the Registrar must examine, and report on, the application as necessary under section 31; and

   (c)sections 33 and 34 again apply in relation to the application

   Regulation 4.15A

4. Regulation 4.15A relevantly provides:

   4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (2) For section 189A of the Act, and subject to subregulations (3) and (5), 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)  the applicant’s trade mark is substantially identical with, or deceptively similar           to:

   (i)  a protected international trade mark; or

   (ii)  a trade mark in respect of which the Registrar has received   notification of an IRDA;

   held by another person in respect of similar services or closely related   goods; 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 other trade mark              in respect of the similar services or closely related goods.

   Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

   (a) may be inconsistent with the Act; and

   (b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

   Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

   (3)  If, in a case mentioned in subregulation (1) or (2), the Registrar 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.

5. In determining the first element of section 38(1), being whether the application should not have been accepted taking account of all the circumstances that existed at the time, the Notification listed an earlier International Registration Designating Australia (‘IRDA’) with Australian application number 1719019. The details of this IRDA are extracted below:

   IRDA No.: 1263063

   IRDA: DINGO

   Priority date: 5 May 2014

   Holder: Krauss-Maffei Wegmann GmbH & Co. KG

   Specification of goods:

   Class 13:

   Ammunition; anti-aircraft weapons; artillery guns; ballistic weapons; breeches of firearms; cannons; cartridges; detonators; firearm sights; firearms; firing platforms; gun carriages; guns; howitzers; loading devices for projectiles and propellants for heavy weapons; machine guns; mines; mortars (firearms); motorized weapons; projectiles; rifles; rocket launchers; rockets; shells (projectiles); sights, other than, telescopic sights, for firearms; sights, other than telescopic sights, for guns; tanks; track tanks; trunnions for heavy weapons; weapons; weapon systems; weapon systems for combat vehicles; mechanical and remote controlled weapon stations; parts, fittings and accessories of aforesaid goods

   
   
   Class 37:

   Interference suppression in electrical apparatus; vehicle maintenance; installation, maintenance and repair of vehicle and weapon simulators; installation, maintenance, servicing, retrofitting and repair of vehicles and vehicle components; installation, maintenance, servicing, retrofitting and repair of weapons and weapon components; installation, maintenance, servicing, retrofitting and repair of weapon systems and weapon systems components; installation, maintenance, servicing, retrofitting and repair of technical apparatus and equipment; retreading of tires [tyres]

   6.     Whether this IRDA is deceptively similar or substantially identical to the Trade Mark, and is in respect of similar services or closely related goods, will inform the question of whether the application should not have been accepted (albeit the Registrar was not aware of the existence of this circumstance at the time).

   7.     Substantial Identity was discussed in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (Shell)[1]  In a side-by-side comparison, I am satisfied that the Trade Mark is substantially identical to the IRDA. Each of the trade marks are for the word “DINGO”.  I note that the Trade Mark includes the silhouette of an animal head (likely to represent a dingo) but I decide that despite this additional element the presence of the word DINGO in each of the trade marks is sufficient to find a total impression of resemblance between the trade marks[2]. Or, if I am wrong in this, then I am satisfied that the Trade Mark and the IRDA are deceptively similar. ‘Deceptive similar’ is an expression defined in section 10 of the Act:

   [1] (1961) 109 CLR 407 (at 414-415) by Windeyer J

   [2] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (Shell) (1961) 109 CLR 407 (at 414-415) by Windeyer J

   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

   8.     The test as to whether trade marks are deceptively similar is explained in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[3].  Dixon and McTiernan JJ stated:

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   9.     For brevity, the trade marks of concern are, or contain, the word “DINGO” as the common memorable element.  I am therefore satisfied that they are at least deceptively similar.

   10.   What I am most interested in is whether the class: 37 services claimed by each of the trade marks are similar and I will discuss this in more depth below. It is appropriate at this stage to address the Applicant’s written submissions.

   Written Submissions

   11.   The Applicant’s written submissions draw my attention to another of the Applicant’s trade marks which is extracted below (relevant details only):

   Trade Mark Number: 1221946

   Trade Mark: DINGO

   Filing Date: 31 January 2008

   Specification of Services:

   Class 35: Business consultation advice relating to plant and equipment; business advice and assistance in relation to business assets; business advice and assistance in the reporting and communication of information concerning business assets; business and management advice, consultancy and information; maintenance of asset registers (for others)

   
   Class 37: Repair and maintenance consultancy services; repair and maintenance advisory services; plant and equipment repair and maintenance

   12.   Trade mark 1221946 is owned by Dingo Software Pty Ltd and it has a priority date of 31 January 2008.  This predates the date of the IRDA.  I am satisfied that trade mark 1221946 is the plain word “DINGO” (‘the Dingo trade mark’) which is at least deceptively similar[4] to the Trade Mark and it is registered for similar services.  However, I note that neither the Trade Mark, the IRDA or trade mark 1221946 include unlimited claims of repair and maintenance services (they are all in relation to specific things), and whilst the Application does contain unlimited claims of ‘repair and maintenance consultancy services’ and ‘repair and maintenance advisory services’, I argue that they are not similar services to those class: 37 services claimed in the IRDA.

   [4] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

   13.   However, if I am wrong in this, the Applicant’s rights to the Dingo trade mark, as applied to the conflicting services, are undeniably broader in its earlier trade mark than in its current application for a trade mark (in terms of the fact that trade mark 1221946 is registered for the plain word trade mark Dingo).

   14. Moreover, the IRDA is not accepted. It has the Applicant’s prior registration raised as a barrier to its acceptance. I note also that there is a passage of time of about 7 years between the Applicant’s prior registration and its subject application, but I don’t consider this sufficiently material on its own to evoke section 38.

   15.   I am satisfied that it is not reasonable in the circumstances to revoke the trade mark.

   Decision

   16. The Applicant already has monopoly statutory rights in the services under the Dingo trade mark and, as such, I am satisfied that my reasoning above accords with the requirements under section 38. Accordingly, I am not revoking the Trade Mark.

   Cristy Condon

   Hearing Officer and Trade Mark Attorney

   Trade Marks Hearings

   12 May 2016