E2Interactive v Cabcharge Australia Limited
[2017] ATMO 62
•26 June 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by e2Interactive Inc. to registration of trade mark application 1416896 (16, 36, 39) - CABCHARGE FASTCARD - in the name of Cabcharge Australia Limited.
| Delegate: | Katrina Brown |
| Representation: | Opponent: Mr. Scott La Rocca of HWL Ebsworth Lawyers Applicant: Mr. Stephen Rebikoff of Counsel instructed by Davies Collison Cave |
| Decision: | 2017 ATMO 62 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 58, 59 and 60 – none established – trade mark to proceed to registration. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by e2Interactive Inc. (‘the Opponent’) to the registration of the following trade mark:
| Trade Mark No: | 1416896 |
| Trade Mark: | CABCHARGE FASTCARD (‘the Trade Mark’) |
| Applicant: | Cabcharge Australia Limited (‘the Applicant’) |
| Filing Date: | 29 March 2011 |
| Specification: | Class 16: Printed matter and publications, including printed cards, pamphlets, brochures, tickets, receipts, coupons relating to taxi transportation services and the payment of such services by electronic funds transfer and/or token exchange; credit/debit cards; tokens of exchange (‘the designated goods and services’) |
The trade mark application was examined as required under s 31 of the Act. No grounds for rejection were identified during examination and acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 21 July 2011.
The Opponent filed a Notice of Opposition on 18 October 2011. This was before the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and those amendments do not apply to this matter.
In due course, the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.
The matter came before me, a delegate of the Registrar of Trade Marks on 26 April 2016. Mr. Scott La Rocca of HWL Ebsworth Lawyers made submissions on behalf of the Opponent. Mr. Stephen Rebikoff of Counsel instructed by Davies Collison Cave made submissions on behalf of the Applicant.
Grounds of opposition and onus
In the Notice of Opposition, the Opponent nominated most of the grounds of opposition available under the Act. In written submissions prepared for the hearing, the Opponent confirmed that it would only be pursuing grounds of opposition under ss 58, 59 and 60 of the Act. For completeness I find that the remaining grounds are abandoned.
The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132]-[133].
The relevant date at which the rights of the parties are to be determined is 29 March 2011 (‘the relevant date’) being the filing date of the trade mark application.[3]
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
Declaration of Mark Singer (Company Director of InComm Australia & New Zealand Pty Ltd) made on 17 September 2012 with Exhibits MS1 to MS24 (‘Singer 1’).
Evidence in answer
Declaration of Lena Janaki Balakrishnan (Davies Collison Cave) made on 11 April 2014 with Exhibits A to G (‘Balakrishnan Declaration’).
Evidence in reply
Declaration of Scott La Rocca made on 13 July 2015 with Exhibits SLR-1 to SLR-3 (‘La Rocca Declaration’).
Singer 1 contains a clause to the effect that all of the evidence in support of the opposition is confidential. It is not clear to me how I could decide this matter without discussing the evidence that the Opponent has filed to support its opposition, particularly given that the onus is on the Opponent to establish a ground of opposition. In this regard I note the following from Source Homeloans Pty Ltd v Coles Group Ltd:
[T]he opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[4]
[4] [2008] ATMO 17 [5]-[6].
There are arguably sensitive commercial matters in the evidence in support which I will not discuss in any detail in my reasoning. However I will discuss the evidence to the degree necessary to provide sensible reasons for the decision.
The Opponent’s evidence
Singer 1 is made by Mr. Mark Singer who is the Director of InComm Australia & New Zealand Pty Ltd (‘InComm’). InComm is a member of the InComm Group; a group of companies which includes the Opponent, e2Interactive Inc.[5]
[5] Singer 1[4].
The InComm Group develops, designs and manufactures prepaid cards for third parties (‘card partners’). The cards can be redeemed for the card partners’ goods and services such as downloadable music and games. The InComm Group also distributes the cards to retailers to sell to the end-consumer.[6]
[6] Ibid 2[10].
Singer 1 states that the InComm Group and or its predecessors have used FASTCARD in connection with prepaid cards for more than two decades.[7] Exhibit MS1 is a list of registrations and applications for FASTCARD in international jurisdictions. The Opponent has a total of 16 international registrations for FASTCARD including registrations in the USA, Canada and Mexico.[8] The filing date of the earliest registration is 13 September 1996.[9]
[7] Ibid 3[11].
[8] Ibid Exhibit MS1.
[9] Ibid.
It is also stated that the InComm Group has been using the following logo (‘Powered by Fastcard logo’) in relation to their international business for five years.[10]
The Powered by Fastcard logo is the subject of Australian trade mark application number 1446021. That application is currently being opposed by the Applicant.
[10] Ibid 3[13].
Singer 1 states that InComm began approaching card partners as early as June 2010 in relation to manufacturing cards bearing the Powered by Fastcard logo to be sold in Australia.[11] To support this statement, the Opponent has provided a purchase order from a card partner dated 29 June 2010 along with the approved artwork for the cards.[12] The artwork shows the Powered by Fastcard logo on the back of the cards.
[11] Ibid 4[18].
[12] Ibid Exhibit MS6.
The Opponent states that InComm has 19 card partners relating to the Australian market.[13] The name of each of the 19 card partners has been provided as has the date that each of the respective card partner agreements was executed.[14] The declarant states that each of these agreements is in relation to the Fastcard brand and or technology.[15]
[13] Ibid 5[18](e).
[14] Ibid Exhibit MS7.
[15] Ibid 5[18](e).
It is declared that in May 2010 InComm began approaching retailers in relation to providing prepaid cards to the Australian market.[16] Exhibit MS2 contains presentations titled InComm Executive Overview and InComm Overview which were made to two retailers in May 2010. Also included in Exhibit MS2 are the 2010 and 2011 versions of the presentation Content Range Australia and New Zealand. It is declared that this presentation was developed in 2010 and has been presented to every retailer approached by InComm.[17] Each of the presentations in Exhibit MS2 contains images of prepaid cards which have the Powered by Fastcard logo on them. The two presentations given in May 2010 also make a single reference to Fastcard technology.
[16] Ibid 3[16].
[17] Ibid 3[17](iii).
The Opponent has also provided copies of emails between InComm and two Australian retailers dated August 2010.[18] Images of prepaid cards, some of which contain the Powered by Fastcard logo, were sent as attachments to these emails.
[18] Ibid Exhibit MS2.
It is declared that the first cards bearing the Powered by Fastcard logo were delivered to an Australian retailer on 22 September 2010.[19] Exhibit MS10 is an email from that Australian retailer acknowledging delivery of stock. The email gives no indication as to whether the stock received contained cards bearing the Powered by Fastcard logo.
[19] Ibid 5[19](c).
InComm currently has agreements with 8 national retailers in Australia[20] and distributes 31 different prepaid cards through this network.[21] Singer 1 states that each of the 31 cards, except for the Apple cards, bears the Powered by Fastcard logo.[22] From the information before me, it is not clear precisely how many of the 31 cards are Apple cards or how many have the Powered by Fastcard logo on them.
[20] Ibid 4[17](c).
[21] Ibid 5[19].
[22] Ibid.
Singer 1 states that Australian retailers have sold massive volumes of cards[23] and that the current annual turnover for goods or services bearing the Powered by Fastcard logo is significant and growing at a rapid rate.[24] I note that these statements have not been supported by the provision of sales or revenue figures relating to the Australian market. Exhibit SLR-1 to the La Rocca Declaration contains a second declaration by Mr. Singer (‘Singer 2’). Singer 2 was made in relation to the Opponent’s application to register the Powered by Fastcard logo as a trade mark. It would seem that Confidential Exhibit A to Singer 2 contained sales figures pertinent to the Australian market[25] however none of the exhibits to Singer 2 have been provided as part of this opposition matter.
[23] Ibid 5[19](e).
[24] Ibid 7[27].
[25] Singer 2, 5[19](a).
Goods and services bearing the Powered by Fastcard logo have been promoted in the following ways:
a.Print advertisements – Exhibit MS16 consists of advertisements of cards that appeared in the store catalogue of a specific retailer in April, May and September of 2011. Each of the advertisements shows images of cards, some of which bear the Powered by Fastcard logo in the top left hand corner. For example:
Exhibit MS11 is a copy of a full page advertisement that the declarant states appeared in the Xbox 360 Magazine and the GameInformer Magazine in December 2010. The advertisement contains images of seven prepaid cards, three of which bear the Powered by Fastcard logo in the top left hand corner.
b.Exhibits at gaming and retailer conferences – Exhibit MS12 is a copy of a presentation given at the EB Games Conference 2010. The presentation references Fastcard technology and contains images of cards bearing the Powered by Fastcard logo in the top left hand corner. Similar images of cards were also used on a banner at the EB Games Expo 2011 in October 2011 and in November 2011 at the 7-Eleven Australia 1st Choice National Conference.[26]
c.Advertising on websites – Exhibit MS14 consists of printouts from the website ‘ dated 10 January 2012. These printouts show use of the Powered by Fastcard logo and also references to Fastcard technology. Exhibit MS15 consists of printouts from the following card partner websites: ‘ ‘ ‘ ‘ The printouts are dated 19 March 2012, with the exception of the printout from ‘ncmall.neopets.com’ which is undated. The printouts contain images of cards bearing the Powered by Fastcard logo in the same manner as the examples reproduced at [23](a) of this decision.
[26] Singer 1, 6[21](b); Exhibit MS13.
In Singer 1, the declarant attests to their belief that the Australian public identifies the Powered by Fastcard logo as being exclusively associated with InComm or the InComm Group.[27] To substantiate this statement, the Opponent has provided printouts of online content generated or able to be viewed by Australian users referring to InComm’s cards by the name Fastcard.[28]
[27] Ibid 8[29];
[28] Ibid Exhibit MS17.
The Opponent has provided information in relation to the use of the Powered by Fastcard logo in other jurisdictions. Photographs of instore displays from 8 retailers in the United Kingdom have been provided.[29] The photographs show an array of prepaid cards however it is difficult to determine whether any of them bear the Powered by Fastcard logo. It is also not evident when the photographs were taken. Figures relating to the sales of InComm products in Europe, Japan and Mexico have also been provided.[30]
[29] Ibid Exhibit MS18.
[30] Ibid Exhibits MS20, MS21 and MS22.
The Applicant’s evidence
The Applicant was established in 1976 as a financial services provider for the taxi industry in Australia.[31] It develops and implements technology, equipment and services relating to payment systems used in taxis. Approximately 97% of Australian taxis have a Cabcharge electronic payment system.[32]
[31] Balakrishnan Declaration 2[4].
[32] Ibid Exhibit A.
The Applicant is the owner of several trade mark registrations that contain the word ‘Cabcharge’. Extracts for 12 of these registrations have been provided from the Australian Trade Mark Online Search System.[33] I note that none of the extracts contain the word ‘Fastcard’.
[33] Ibid Exhibit C.
It is declared that the Fastcard trade mark was first created by the Applicant in 2010.[34] In 2011, the Applicant began rolling out cards bearing the Trade Mark to its existing customers. Exhibit F is a copy of a mail-out dated May 2011. From the content of the mail-out it seems that it accompanied the cards being sent to existing customers. The mail-out contains references to Fastcard and also to the Trade Mark.
[34] Ibid 4[12].
The Applicant used radio, magazine and direct promotions and advertising to inform new customers about the product bearing the Trade Mark.[35] The Applicant has provided an advertisement from the Network News Driver and Operator Newsletter dated June 2011.[36] The words ‘Cabcharge Fastcard’ and the visual representation of the card reproduced at [30] of this decision, are used within the advertisement.
[35] Ibid 4[15].
[36] Ibid Exhibit G.
The declarant states that the Applicant uses the word ‘Fastcard’ in three different ways - on its own, in close proximity to the word ‘Cabcharge’ or as the Trade Mark - in relation to goods or services that enable customers to pay for taxis.[37] Exhibit B to the Balakrishnan Declaration is a printout from the website ‘ dated 11 April 2014. It shows a selection of the Applicant’s products and includes the following information relating to the Trade Mark:[38]
[37] Ibid 4[11].
[38] Ibid Exhibit B.
At the time that the Applicant’s 2012 Annual Report was issued, there had been 125,000 cards issued bearing the Trade Mark.[39]
[39] Ibid 4[15].
Revenue figures have been provided for 2010 through to 2013.[40] These figures are substantial however they relate to the Applicant’s revenue generally. They are not specific to the revenue attributable to the Trade Mark. The declarant also states that Cabcharge branded card turnover increased by 5.8% from 2010 to 2011.[41] It is not clear what portion of this increase is attributable to the Trade Mark.
[40] Ibid 5[16].
[41] Ibid 5[17].
Section 58
Section 58 of the Act provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To establish this ground, the Opponent must prove that it first used the Trade Mark, or a substantially identical trade mark,[42] in Australia in relation to the designated goods and services, or for goods and services considered to be ‘the same kind of thing’.[43] The use must have taken place before the filing date of the trade mark application, or before the Applicant’s first use of the Trade Mark in relation to the designated goods and services, whichever is the earlier.
[42] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.
[43] Re Hicks’ Trade Mark (1897) 3 ALR 75.
The Opponent asserts that the Applicant is not the owner of the Trade Mark because the Opponent or InComm (an authorised user) had used the following three trade marks (‘Opponent’s Trade Marks’) in Australia prior to the relevant date:
1. FASTCARD
2. POWERED BY FASTCARD
3.
As stated above, for the Opponent to succeed under this ground the Opponent’s Trade Marks must be at least substantially identical to the Trade Mark and not merely deceptively similar.[44]
[44] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.
To determine whether trade marks are substantially identical, the trade marks are:
[C]ompared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[45]
[45] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415.
The Trade Mark and each of the Opponent’s Trade Marks contain the word ‘Fastcard’. However, when placed side by side, there are clear differences between the trade marks. The Opponent’s Trade Marks are comprised of the word ‘Fastcard’ or the phrase ‘Powered by Fastcard’. The third of the Opponent’s Trade Marks also has an elliptical device. The Trade Mark is comprised of the two words ‘Cabcharge’ and ‘Fastcard’.
In my opinion, the presence of the word ‘Cabcharge’ in the Trade Mark creates a material distinction between the trade marks. The additional words ‘Powered by Fastcard’ in the second and third of the Opponent’s Trade Marks and the elliptical device are further points of difference.
I am not persuaded that there is a total impression of resemblance between the trade marks. In my opinion, the Trade Mark is not substantially identical to any of the Opponent’s Trade Marks.
The s 58 ground of opposition has not been established.
Section 59
Section 59 of the Act provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
The act of applying for registration brings with it a presumption of an intention to use a trade mark.[46] The onus is on an opponent to demonstrate an applicant’s lack of intention to use a trade mark in respect of the designated goods and services.[47] If an opponent makes out a prima facie case of a lack of intention, the evidentiary onus may shift onto an applicant to show its intention to use the trade mark at the relevant date.[48]
[46] Suyen Corp v Americana International Ltd (2010) 187 FCR 169, 199 [197].
[47] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401.
[48] Ibid 198 [190].
The Opponent argues that at the time of filing the trade mark application, the Applicant did not intend to use the Trade Mark in relation to all of the designated goods and services. In support of its position, the Opponent highlights that no evidence has been adduced to suggest that the Applicant intends to use the Trade Mark in relation to: printed matter and publications for others; credit/debit cards made from paper or cardboard (as opposed to magnetic or encoded cards); electronic funds transfers other than in relation to payments for taxi services; or the provision of taxi transportation services.[49]
[49] Opponent’s Hearing Submissions 8[35].
In Intel Corporation v Magnatex International Pty Ltd, Hearing Officer Homann said:
It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgement of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.[50]
[50] (1998) 41 IPR 406, 412.
The Opponent has not led any evidence showing the Applicant’s lack of intention. Asserting that the requisite intention is lacking because the Applicant’s own evidence does not show use in relation to all of the designated goods and services is speculative and at best amounts to an inference of non-use. Non-use of a trade mark does not by itself imply a lack of intention to use it.[51]
[51] Suyen Corporation v Americana International Limited [2010] FCA 638.
The Opponent has not made out a prima facie case of a lack of intention and therefore the onus has not shifted to the Applicant to establish its intention to use the Trade Mark.
The s 59 ground of opposition has not been established.
Section 60
Section 60 of the Act provides:
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.
To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the relevant date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[52]
[52] [2000] FCA 1335 [81] (‘McCormick’).
The reputation in the other trade mark must be amongst a significant or substantial number of people.[53] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[54] In McCormick Kenny J stated:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[55]
[53] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.
[54] ConAgra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
[55] [2000] FCA 1335 [86].
The Opponent contends that before the relevant date it had established a significant reputation in the word ‘Fastcard’ and the Powered by Fastcard logo through use in Australia and from spillover reputation from use in other jurisdictions. In my opinion, the evidence before me does not prove this contention.
The Opponent has approximately 10 months of use in Australia (including preparatory steps to enter the Australian market) prior to the relevant date. Singer 1 indicates that in May 2010 InComm began approaching retailers in relation to providing prepaid cards to the Australian market.[56] Copies of the presentation given to two retailers in May 2010 have been provided. The presentation contains images of prepaid cards which have the Powered by Fastcard logo on them and also a single reference to Fastcard technology. Ten months is a short period of time in which to establish the type of reputation contemplated by s 60 of the Act.
[56] Ibid 3[16].
Revenue figures and expenditure in relation to promoting the Opponent’s Trade Marks in Australia has not been provided. The Opponent has provided examples of its promotional activities in Australia. The following are the only promotional activities referenced in Singer 1 which are clearly before the relevant date:
exhibitor at the EB Games Conference 2010 on 14-15 October 2010;
a full page advertisement in Xbox 360 Magazine in December 2010;
a full page advertisement in GameInformer Magazine in December 2010.
From the information provided, the EB Games Conference 2010 was attended by EB Games entire field management team including managers from over 400 stores across Australia and New Zealand.[57] However the conference was not open to the public[58] and therefore any reputation gained due to this event is somewhat limited.
[57] Singer 1 [21](b).
[58] Ibid [21](b)(iii).
Exhibit MS11 to Singer 1 contains a copy of the full page advertisement that was published in the December 2010 editions of Xbox 360 Magazine and GameInformer Magazine. The advertisement contains images of seven prepaid cards, three of which bear the Powered by Fastcard logo in the top left hand corner. It is not clear how much exposure these two advertisements had within the Australian market because circulation or readership figures have not been provided for the magazines.
The Opponent has provided excerpts from Internet forums and websites where users refer to the Opponent’s goods and services as ‘Fastcard’.[59] The Opponent asserts that this is evidence of its reputation amongst the Australian general public. The only excerpt that is dated before the relevant date is an entry from the user Koloblikin on 17 November 2010. The excerpt refers to ‘$10 prepaid cards made by Fastcard’. However, there is nothing in the excerpt that identifies the user as being in Australia and the website that it was posted on[60] does not have an ‘.au’ extension. Therefore it is unclear whether this content was generated in Australia or by an Australian user.
[59] Ibid Exhibit MS17.
[60] ‘
The Opponent also contends that its reputation from use of its trade marks in other jurisdictions has spilled over into Australia. The evidence demonstrates that cards bearing the Powered by Fastcard logo have been offered for sale in the USA, United Kingdom, Europe, Japan and Mexico.[61] Photographs have been provided of instore displays in the United Kingdom and of a vehicle bearing the Powered by Fastcard logo.[62] It is difficult to determine which of the cards in the instore displays bear the word ‘Fastcard’ or the Powered by Fastcard logo. I also note that the photographs are undated however it is stated in Singer 1 that some of them date back to 2010.
[61] Singer 1 8[31].
[62] Singer 1 Exhibit MS18; Exhibit MS19.
The Opponent has provided sales figures for products sold by the InComm Group in Europe, Japan and Mexico. The figures before the relevant date are considerable. However in relation to Europe, it is not clear which figures are attributable to products bearing the word ‘Fastcard’ or the Powered by Fastcard logo. On the evidence before me it is difficult to determine the extent of the Opponent’s international reputation.
Ultimately the question to be answered is how much of the reputation had transferred into the Australian consciousness at the relevant date. In this respect, the Opponent has provided printouts of Google search results for the words ‘Fastcard’ or ‘Powered by Fastcard’ in combination with ‘InComm’ or ‘E2Interactive’.[63] The search results are dated 16 September 2012, approximately 17 months after the relevant date. At best, these search results establish that there were numerous references to the Opponent’s ‘Fastcard’ or ‘Powered by Fastcard’ on the Internet on 16 September 2012. The results do not establish how many of these references were on the Internet at or before the relevant date. Nor do they establish how many people in Australia had accessed any of the websites at or before the relevant date.
[63] Ibid Exhibit MS23.
The Opponent has also provided data from the Australian Bureau of Statistics. This data establishes that a considerable number of people travelled from Australia to Europe, Asia, North, South and Central America from January 2001 to July 2012.[64] The most I can conclude from this data is that some people, who departed Australia for Europe, Asia, North, South and Central America prior to the relevant date, might have become aware of the Opponent’s Trade Marks whilst overseas. Whether it would be a small or large number of people is impossible for me to assess on the evidence before me.
[64] Ibid Exhibit MS24.
I am not satisfied, as a matter of fact, that there was a reputation in one of the Opponent’s Trade Marks amongst a significant number of people in Australia at the relevant date. As such, the first limb of the test for s 60 has not been met.
The s 60 ground of opposition has not been established.
Decision
Section 55(1) of the Act provides:
Decision
(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.
The Opponent has not established a ground of opposition.
Accordingly trade mark application 1416896 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The parties sought costs. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Trade Mark Hearings
26 June 2017
Key Legal Topics
Areas of Law
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Intellectual Property
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