DXC Technology Australia Pty Limited and Ent. Services Australia Pty Ltd v Specialisterne Centre Australia Limited

[2020] ATMO 49

TRADE MARKS ACT 1995

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

Re:Oppositions by DXC Technology Australia Pty Limited and Ent. Services Australia Pty Ltd to registration of trade mark application number 1878468 (classes 16, 35, 41 & 42) - DANDELION - in the name of Specialisterne Centre Australia Limited

Delegate:	Jock McDonagh
Representation:	Opponents: David Larish of Counsel instructed by Bird & Bird Applicant: Sonia Stewart of Counsel, instructed by Clayton Utz
Decision:	2020 ATMO 49 Trade Marks Act 1995 (Cth) – oppositions under section 52 – ss 42, 58, 60 and 62A considered – none established.

Background

1. This matter relates to oppositions under s52 of the Trade Marks Act 1995 ('the Act') to the registration of a trade mark filed by Specialisterne Centre Australia Limited ('the Applicant'). Relevant details of the opposed application are set out below.

Application No

1878468

Trade Mark                  

(Trade Mark')

DANDELION

Filing Date:

6.10.2017 (‘Priority Date’)

Goods & Services:

(‘specified goods & services’)

Class 16: Instructional materials (other than apparatus); teaching materials (except apparatus); teaching materials for education; booklets for use in conducting training workshops
Class 35: Business management; business project management; business administration; office functions; career advisory services (other than education and training advice); employment recruitment; personnel recruitment; personnel recruitment agency services; staff recruitment services; business recruitment consultancy; consultancy relating to personnel recruitment; staff recruitment consultancy services; interviewing services (for personnel recruitment); recruitment advertising; personnel recruitment advertising; job agency services; job placement services; labour exchange services; labour hire services; hire of temporary labour on a short term basis
Class 41: Education services; advisory services relating to education; consultancy services relating to education; provision of education courses; career advisory services (education or training advice); education information; management of education services; occupational health and safety services (education and training services); educational assessment services; arranging and conducting of workshops (training); charitable services, namely education and training; training; entertainment; sporting activities; cultural activities
Class 42: Scientific and technological services; providing information, including online, about scientific and technological services and research and design relating thereto; industrial analysis; industrial research; design and development of computer hardware (for others); design and development of computer software (for others)

1. The Trade Mark was examined in compliance with s31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 March 2018. The Application was opposed by the opponents, DXC Technology Australia Pty Ltd (‘DXC’) and Ent. Services Australia Pty Ltd (‘Ent’) (Collectively, ‘the Opponents’). Each of the Opponents filed a Notice of Intention to Oppose the Opposed Mark on 2 March and 1 May 2018 respectively. The Applicant filed Notices of Intention to Defend the Trade Mark on 25 May and 10 July 2018 respectively. The parties then filed evidence as provided by the Trade Mark Regulations 1995 ('the Regulations').

2. The parties were advised of their right to be heard or to make written submissions.  The parties elected to be heard, and also filed outlines of their submissions prior to the hearing.

3. I heard the matter by in Canberra on 17 June 2019 as a delegate of the Registrar of Trade Marks. The Opponents were represented at the hearing by David Larish of Counsel instructed by Bird & Bird. The Applicant was represented by Sonia Stewart of Counsel, instructed by Clayton Utz.

   Grounds of Opposition

4. The Opponents nominated the following grounds of opposition under the Act, all of which were pressed at the hearing:

   · Section 58: The applicant is not the owner of the trade mark;

   · Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia;

   · Section 42(b): Use of the Trade Mark would be contrary to law; and

   · Section 62A: The application was made in bad faith.

5. To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds on the 'balance of probabilities'. 

6. The time at which the grounds of opposition must be established is the Priority Date.

   Evidence

7. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Michael Fieldhouse (‘Fieldhouse 1’)	Ent Director of Emerging Business & Cyber Security and Dandelion Program Executive	31.08.2018	MF-1 to MF-21
George Majewski (‘Majewski’)	Director Global Mergers & Acquisitions and Corporate IP at DXC	30.08.2018	GM-1 to GM-14
Evidence in Answer
Thorkil Sonne (‘Sonne’)	Founder Specialisterne Foundation and Director of the Applicant	6.12.2018	TS-1 to TS-46
Robert Austin (‘Austin’)	Professor of Information Systems at Ivey Business School	6.12.2018	RA-001 to RA-007
Maurice John Craven (‘Craven’)	Chairman of the Applicant	7.12.2018	MJC-1 to MJC-12
Mitch Levy (‘Levy’)	Client Delivery Executive at Telstra Enterprise	7.12.2018	ML-1 to ML-6
Graeme Simsion (‘Simsion’)	Author	13.01.2019	GS-1 to GS-4
Catherine Cotter (‘Cotter’)	Solicitor employed by the Applicant’s legal representatives	23.01.2019	CMC-1 to CMC-5
Evidence in Reply
Michael Fieldhouse (‘Fieldhouse 2’)	Ent’s Director of Emerging Business & Cyber Security	18.02.2019	MF-22 to MF-49
Adam Easterbrook (‘Easterbrook’)	Ent Delivery Executive	18.02.2019	AE-1 to AE-6

1. In general terms, the evidence in support provides a chronology of the genesis and development of an Australian pilot program to build information technology skills and careers for individuals on the autism spectrum.

2. The program was initiated in June 2014 by Hewlett-Packard Australia Pty Ltd (‘HP’) with the collaboration of the Australian Government Department of Human Services and the Specialisterne Foundation (‘Specialisterne’). HP’s enterprise services division devolved into entities including Ent[1].  Specialisterne is the parent company based in Denmark of the Applicant.  Consequently, any trade mark use by Specialisterne can be considered use by the Applicant.

   [1] Fieldhouse 1, at [8].

3. In about January 2015, the program became known as the ‘Dandelion Program’. In Fieldhouse 1, [15] to [19], Mr Fieldhouse states that he was inspired by a novel by Graeme Simsion, ‘The Rosie Project’, about a man with autism who sets up a project to find a life partner. Therefore, he states, that he wished to use a flower-related word to describe the project. He further states that he decided to use the dandelion flower because it has been known to have therapeutic and restorative properties and was relevant to the aims of the program.

4. On 3 April 2017, DXC Technology Company became the ultimate parent company of Ent and DXC[2], the Opponents in this matter.

   [2] iBID

5. Majewski repeats the chronology of the Dandelion Program from its inception and adds relevant chronology from DXC’s provision of services under licence from Ent. It provides material evidencing use of ‘Dandelion Program’ and ‘DXC Dandelion Program’ from 2015 and prior to the Priority Date.

6. Both declarations deal with business agreements with the Applicant regarding the Applicant’s provision of services in support of the ‘Dandelion Program’. I will refer to specific details of the agreements, where relevant under specific grounds of opposition.

7. In Sonne, Thorkil Sonne details the genesis and development of his foundation – Specialisterne Foundation – and of subsidiary organisations that includes the Applicant. Mr Sonne explained that his son had earlier been diagnosed with autism spectrum disorder (‘ASD’). Observing his son, Mr Sonne felt that a number of characteristics of people with ASD would be extremely valuable in the workplace.

8. Sonne states that Mr Sonne started his own company Specialisterne (from the Danish for ‘Specialists’) that offered information technology software testing services. The intention was to employ people with ASD as software testers.

9. Sonne explains that during the establishment of Specialisterne Mr Sonne developed a symbol that was a metaphor for his foundation’s services: the dandelion. He explains that in a garden the dandelion is considered a weed; however, if cultivated it can be used to make beer, wine and salads and is also recognised for its nutritional, healing and medicinal properties.

10. The metaphor was that as a weed, a dandelion was not welcome in certain environments, but if taken to a place where its virtues are wanted it becomes a herb that can be employed for positive things. To link the metaphor to the services, Specialisterne developed the following logo:

11. Paragraphs [18] to [20] of Sonne explain that the yellow ‘I’ in the word represents the colour of a mature dandelion and links to the device element that represents a dandelion seed superimposed on blue, representing the open sky of opportunities.

12. Sonne states at [21] that the logo has been registered as a trade mark in the European Union since 2012 and has been registered as an international registration that designates Australia, Switzerland, China, Japan, Norway, Russia, Singapore, the United States, and Vietnam. In Australia it has been registered as Australian Trade Mark 1488636.

13. At [26] Sonne lists a number of subsidiary companies established internationally outside Denmark during the period 2012 to 2018 (with Australia in 2015). Such companies work with people with autism to assist them securing employment in the IT realms of both corporate and public sectors.

14. In general terms Sonne concurs with Majewski and Fieldhouse regarding the involvement of Specialisterne in partnership with HP (as predecessor of the Opponents) and the Department of Human Services for the identification and recruitment of people with ASD and training them for employment in software testing roles. The partnership essentially involved the following phases:

    ·     attracting potential candidates – search and selection;

    ·     assessing potential candidates;

    ·     recruiting potential candidates;

    ·     supporting the performance and retention of those candidates as employees during a three-year program; and

    ·     assisting candidates to exit a workplace.

15. The Applicant was responsible for the second, third, and fourth phases.

16. Sonne also concurs with Majewski and Fieldhouse about the combined initiative to be called the ‘Dandelion Program’.

17. Craven provides details of the Applicant’s activities as the Australian subsidiary of Specialisterne and the Applicant’s and Specialisterne’s dealings with HP and the Opponents.

18. At [6] Craven states that Mr Sonne ‘visited Australia in 2009 to introduce the Specialisterne “Dandelion Model” for the employment of autistic talent as a keynote speaker at the 2009 Asia Pacific Autism Conference in Brisbane.’

19. At [15] Craven describes the role of HP, namely that ‘the program was managed by HP who were responsible for the negotiation of agreements with DHS’ (Department of Human Services), ‘the employment of the selected candidates and the operation of the service delivery (testing services). HP also ‘managed external communications and publicity.’

20. In general terms, the Evidence in Reply of Fieldhouse 2 and Easterbrook seeks to repudiate any suggestion of pre knowledge of any trade marks rights of the Applicant regarding ‘DANDELION PROGRAM’ and discusses various contractual differences that arose in the joint venture.

21. I shall discuss, where appropriate, specific evidential matters under the various grounds of opposition. However, I think it appropriate to make some general observations regarding the parties’ positions in these proceedings.

22. I am satisfied that in 2003 the Applicant’s founder, Mr Sonne, independently conceived of the idea that a dandelion can be considered to be either a weed or a useful herb depending on how it is managed. This idea was thought to be applicable metaphorically as to the training and employment of people, such as those with ASD, who have abilities not recognised by society at large. He, through Specialisterne, has used the dandelion to identify his work regarding people with ASD.

23. I am further satisfied that the Applicant has used a dandelion seed device as part of its various international trade mark registrations and Australian Trade Mark 1488636. As the Australian subsidiary of Specialisterne, the Applicant can rely on the prior use of Specialisterne’s intellectual property.

24. I do not discount that Mr Fieldhouse was inspired by a novel by Graeme Simsion, ‘The Rosie Project’ when considering HP’s program for people with ASD in Australia. It is possible that his adoption of the dandelion as a name for the program is coincidental to the program inviting Specialisterne to provide the identification and assessment of suitable people with ASD to be employed by the HP/Opponents’ program.

    Section 60

25. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

26. To establish a ground of opposition under section 60 the Opponents must demonstrate that as at the Priority Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

27. While I have reservations that the DANDELION PROGRAM has actually been used as a trade mark, I will leave that aside for the moment while I discuss the other limbs of this ground of opposition.

28. It is clear from the evidence[3] that HP and the Opponents were aware that the Applicant’s parent entity was renowned for its DANDELION methodology for increasing employment opportunities of people with ASD, particularly since Mr Sonne had been referring to DANDELION in all his literature and presentations internationally and in Australia, and a dandelion seed is part of Specialisterne’s international registrations and Australian Trade Mark 1488636.

    [3] For example Sonne at [24(c)], [33], [34], [35], [36], and Annexures TS-24, TS-34, TS37 and TS-38.

29. While HP and the Opponents might have expended significant sums in marketing their program, a significant part of the marketing was highlighting Specialisterne’s DANDELION methodology and approach to identification and observation of the talents autistic individuals can offer in the workplace. I am not convinced that, even if the DANDELION PROGRAM is a trade mark, any reputation it has derived excluded the reputation of the Applicant.

30. Given that HP’s and the Opponents’ DANDELION PROGRAM utilised the DANDELION model for the DANDELION PROGRAM, any consumers considering a link between the Trade Mark and the DANDELION PROGRAM would not actually be deceived or misled, because there was in fact such a link.

31. I am not satisfied that because of the reputation of the DANDELION PROGRAM, the use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponents have failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 42

32. Section 42 of the Act is reproduced below:

    42 Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a) the trade mark contains or consists of scandalous matter; or

    (b) its use would be contrary to law.

33. The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[4]  The relevant time for assessing whether an application is contrary to law is at the priority date but ‘looking forward to prospective conduct after registration’.[5]

    [4] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [5] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd; 59 IPR 343, 353.

34. The ground of opposition pursuant to section 42 of the Act was particularised in the SGP as follows:

    (1) Use of the Applicant's Mark in respect of the applied for goods and services would be misleading or deceptive and/or likely to mislead or deceive, as it would be apt to lead consumers into erroneously believing that the goods and services of the Applicant are those of the Opponent or licensed or affiliated with the Opponent, taking into account:

    • the Opponent's (and its related entity's) reputation in the DANDELION Trade Marks in Australia, as particularised under the Section 60 ground above; and
    • the overall substantial identity between the DANDELION Trade Marks and Applicant's Mark, as particularised under the Section 58 ground above, or in the alternative, the overall deceptive similarity between the Applicant's Mark and the DANDELION Trade Marks.

    (2) Accordingly, use of the word DANDELION by the Applicant would:

    • be contrary to section 18 of the Australian Consumer Law contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL) in that its use is misleading or deceptive, or likely to mislead or deceive consumers into believing that the Applicant's services originated from or are affiliated with, the Opponent;
    • be contrary to subsections 29(1)(g) and (h) of the ACL in that its use constitutes a false and misleading representation that the goods and services provided under or by reference to the DANDELION mark originated from, are affiliated with or approved or sponsored by, the Opponent, or the services are an equivalent quality to the Opponent's services, or the Applicant is sponsored, approved or affiliated with the Opponent; and
    • constitute the common law tort of passing off.

35. As previously stated, the Opponents have failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[6] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [6] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

36. In the absence of any evidence capable of supporting the s 29 of the ACL particular, or any submissions as to how the Opponents say the breach of s 29 would arise, I do not consider that there has been a breach of s 29 of the ACL.

37. Where a trade mark does not contravene section 18 of the ACL, neither will it result in a finding of passing off. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between section 52 of the Trade Practices Act (1974) (Cth) and passing off.  His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[7]

    [7] [1989] FCA 506, [40] (citations omitted).

38. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 58 – Applicant not owner of trade mark

1. The ground based on s 58 of the Act as pleaded in the SGPs points to the use by the Opponents of ‘Dandelion Program’ and ‘DXC Dandelion Program’ from June 2014 and prior to both the Applicant’s entering into its collaboration with the Opponents and thePriority Date.

2. Section 58 of the Act provides that:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

3. It is well established law that, in order to succeed under this ground, the Opponent must identify a trade mark that:

   ·     is identical or substantially identical to the applied-for trade mark (Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 120 ALR 495);

   ·     has been used in respect of goods or services being the ‘same kind of thing’ as those in relation to which the applied-for trade mark has been filed or used (ReHicks’s Trade Mark (1897) 3 ALR 75); and

   ·     has been used by a person other than the applicant and that other person has the earlier claim to ownership based on use before the priority date or first use date of the applied-for trade mark (Settef SpA v Riv-Oland Marble Co (Vic.) Pty Limited (1987) 10 IPR 402 at 413 and Re:Hicks’s Trade Mark, supra.).

4. Therefore, to establish its s 58 ground the Opponents must show that they or some party other than the Applicant first used the Trade Mark (or one ‘substantially identical’ thereto) in Australia in connection with the ‘same kind of thing’ as the specified goods and services before 6 October 2017 or before the Applicant’s first use of the trade marks for the specified goods or services, whichever is the earlier.

5. I accept that the Opponent’s commenced using DANDELION PROGRAM in connection with for the identification and recruitment of people with ASD and training them for employment in software testing roles before the Priority Date, being from the period July 2015 to January 2015. However, I am satisfied that the Applicant’s parent entity and the Applicant have used DANDELION in connection with a methodology for the identification and recruitment of people with ASD in Australia in 2009 and prior to and during negotiations with the Opponents and HP prior to their adoption of DANDELION PROGRAM.

6. Therefore, I am satisfied that the Applicant is the owner of the Trade Mark. This ground of opposition has not been established.

   Section 62A

7. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

8. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

9. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[8]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[9]

   [8] [2004] EWCA Civ 1028; [2005] FSR 10.

   [9] [2012] FCA 81, [147].

10. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[10]

    [10] Ibid [165]-[166].

11. The Opponent has particularised this ground of opposition in the SGP as follows:

    ·At the time of filing the Applicant's Mark, the Applicant was aware of the Opponent's (and DXC Technology Australia's) use of and therefore rights in the DANDELION Trade Marks.

    ·Due to the former business relationship between the Applicant, Specialist People Foundation, HP Australia, DXC Technology Australia and the Opponent regarding the Program and the DANDELION mark, the Applicant's decision to seek registration of a substantially identical or deceptively similar trade mark in relation to the services claimed was made in bad faith.

12. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[11]  The mere knowledge, before the filing date, of another person’s trade mark, without more, does not alone constitute the basis for a finding of bad faith.[12] 

    [11] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

    [12] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 at [64].

13. The Applicant’s parent entity’s use of DANDELION in connection with harnessing the special characteristics and talents of people with ASD as a means to help them secure meaningful employment has been used internationally since 2003 and in Australia since 2009 all pre-date the Opponents’ use of DANDELION PROGRAM in 2014. I accept that the application for the Trade Mark is merely an extension into Australia of a trade mark already in use internationally by the Applicant and modification of its existing registrations. The application was clearly in good faith.

14. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

15. The Opponent has failed to establish any of the grounds of opposition.  Trade Mark application no. 1878468 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

16. In the event that the Applicant prevailed, the attorneys for the Applicant sought an award of costs. The general rule is that 'costs follow the event', such that a successful party has a reasonable expectation of being awarded costs against the unsuccessful party. As the successful party, the Applicant is therefore entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Regulations.

    Jock McDonagh
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    31 March 2020