Doteasy Technology Inc v Dot Easy Australia Pty. Ltd - [2011] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Dot Easy Australia Pty Ltd to registration of trade mark application 1081907(42) – DOTEASY – filed in the name of Doteasy Technology Inc.
and
Opposition by Doteasy Technology Inc. to registration of trade mark application 1082189(42) - DotEasyAustralia - filed in the name of Dot Easy Australia Pty Ltd.

Delegate:

Nicole Worth

Representation:

Doteasy Technology Inc: Rohan Singh of Spruson & Ferguson attorneys.

Dot Easy Australia Pty Ltd: no appearance or submissions.

Decision:

2011 ATMO 88

S52 opposition: 1. 1081907 – grounds under sections 58, 59 and 60 not established. Application to proceed to registration.

2. 1082189 – grounds under sections 42(b), 44, 58, 58A, 59, 60 and 62A pursued. Section 58 established. Application refused.

3. Costs awarded against Dot Easy Australia Pty Ltd.

Background

This decision relates to cross oppositions between Doteasy Technology Inc. (“DTI”) and Dot Easy Australia Pty Ltd (“DEA”). It is convenient to issue a single decision relating to both applications, numbered 1081907 and 1082189, as the matters were argued before me during a single hearing.
DTI has opposed the possible registration of DEA’s application 1082189 and DEA has opposed the possible registration of DTI’s application 1081907. Current details of the applications are shown in the following table:

TM Application No. 1081907	TM Application No. 1082189
DOTEASY
Priority Date: 22 Oct 2005. Acceptance advertised: 3 August 2006.	Priority Date: 25 Oct 2005. Accepted 24 January 2008 under the provisions of subsection 44(4).
Class: 42 Computer network address management services, namely providing services enabling entities to reserve and secure computer network addresses and to access, add, modify, or delete information relating to their computer network addresses; providing information about web site development; hosting the web sites of others on a computer server for a global computer network	Class: 42 Creating and designing web pages for others; creating and maintaining web sites for others; hosting computer sites (web sites); maintaining (creating and) web sites for others; on-line provision of web-based applications; on-line provision of web-based software; web portal services (designing or hosting)

Following the advertisements of acceptance for the applications, the relevant opponents filed notices of opposition. DEA’s notice of opposition in respect of 1081907 cited grounds of opposition under sections 58, 59 and 60 of the Trade Marks Act 1995 (“the Act”). DTI’s notice of opposition in respect of 1082189 cited grounds of opposition under sections 39, 41, 42, 43, 44, 58, 58A, 59, 60, 62 and 62A of the Act.

Evidence

The evidence in relation to the opposition to 1081907 comprises:
Evidence in support: statutory declaration of Sean Emmet McGuire, solicitor for DEA, dated 15 June 2007 with exhibits 1 to 37 (‘McGuire’).
Evidence in answer: statutory declaration of Johnny Tam, Director of Corporate Affairs for DTI, dated 16 September 2008 with exhibits 1 to 33 (‘Tam 1’); and statutory declaration of David Woroch, Vice President of Tucows Inc. dated 18 September 2008.
Evidence in reply

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: [2011] ATMO 88
Decision Date: 6 September 2011

CaseChat Overview and Summary

This matter concerned an opposition by Doteasy Technology Inc. (DTI) to the registration of a trade mark by Dot Easy Australia Pty. Ltd. (DEA). The decision was made by Nicole Worth, acting as a delegate of the Registrar of Trade Marks, following a hearing in Canberra on 11 May 2011. DTI was represented at the hearing, while DEA did not attend or provide written submissions. The onus rested with DTI, as the opponent, to establish at least one ground of opposition on the balance of probabilities.

The primary legal issues before the delegate were to determine the validity of DTI's opposition to DEA's trade mark application, considering the evidence presented by both parties. This involved assessing the weight to be given to various forms of evidence, including statutory declarations and archived internet material, and determining whether DTI had discharged its onus of proof. The delegate also had to consider the admissibility and relevance of evidence, noting that the Registrar is not bound by strict rules of evidence but must act with procedural propriety and fairness.

The delegate noted that much of the evidence submitted by both parties contained significant portions of opinion and inference, which generally carried little weight. Particular attention was given to evidence obtained from the Internet Archive Wayback Machine, which was accepted as prima facie evidence of the existence and form of web pages at certain dates, but a lack of archived material was not conclusive proof of non-existence. The delegate also addressed submissions regarding the weight of hearsay evidence, affirming that while the Registrar is not bound by formal rules of evidence, all relevant material must be considered to ensure procedural fairness.

The delegate's decision and final orders are not detailed in the provided text.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence in relation to the opposition to 1082189 comprises:Evidence in support: statutory declaration of Johnny Tam (‘Tam 2’) dated 7 November 2008 with exhibits 1 to 31. Evidence in answer: statutory declaration of Michael Makras (‘Makras 2’) dated 24 September 2009 with exhibits MM-01 to MM-19. Evidence in reply: statutory declaration of Johnny Tam (‘Tam 3’) dated 24 June 2010 with exhibits JT-32 to JT-38. The evidence from both parties is problematic because it contains significant portions of opinion and inference, rather than facts. For the most part it is not possible to give significant weight to this kind of evidence, however where further discussion is merited I have made comment. In particular, both parties rely to varying degrees upon archived material obtained from the Internet Archive Wayback Machine[1] (‘Wayback Machine’) in an attempt to show if, and in what form, each other’s websites existed at certain points in time. Although material obtained from the Wayback Machine may be accepted as prima facie (though rebuttable) evidence of the existence and form of a web page at a certain date, a lack of archived material does not necessarily mean a certain page did not exist at that time[2]. I am therefore not prepared to accept that the Wayback Machine evidence from either party establishes non-existence of the other’s website at particular points in time.[1] CSL Limited v Capital Securitisation (Holdings) Pty. Limited [2010] ATMO 42, paragraphs 12-15. In addition Mr. Singh, attorney for DTI, submits that I should give reduced weight to the McGuire declaration on the basis that it is hearsay. Under Regulation 21.15(8) of the Trade Mark Regulations 1995 the Registrar is not bound by the rules of evidence but may inform herself on any matter before her in any way she reasonably believes to be appropriate. As observed by Finkelstein J in Malibu Boats West Inc v Catanese[3]:The only question that arises in relation to the rejection of evidence is whether the decision-maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question. A brief chronology of the relevant events is: Once the evidence of both parties had been filed and served, the parties requested to be heard and agreed prior to the hearing that both oppositions be dealt with in a single hearing. The matters came before me in my capacity as a delegate of the Registrar of Trade Marks in Canberra on 11 May 2011. At the hearing, DTI was represented by Rohan Singh of Spruson & Ferguson attorneys who attended by telephone. DEA did not attend the hearing nor provide any written submissions for it. The onus in an opposition rests with the opponent, who is required to establish at least one of the grounds of opposition on the balance of probabilities[11].[11] Pfizer Products v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, 22-27.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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