eBay Inc v Dean William Hawkins
[2014] ATMO 54
•14 June 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by eBay Inc. to registration of trade mark application 1490777(35) – IWANTBAY (Graphics) - filed in the name of Dean William Hawkins.
Delegate: | Iain Campbell Thompson |
Representation: | Opponent: Cate Nagy, Senior Associate, King & Wood Mallesons Applicant: Madhu Jogias, Patent & Trade Mark Attorney of Jogias Patent & Trade Mark Attorneys |
Decision: | 2014 ATMO 54 S52 opposition to registration; application to file further evidence – application refused; s60 – reputation of Opponent’s eBay trade mark; commonality of distinctive suffix ‘Bay’ likely to lead people to wonder as to connection in the course of trade; use of opposed trade mark likely to confuse or deceive. Registration refused. |
THE ORIGINAL OF THIS DECISION IS IN COLOUR.
Background
This matter is an opposition to the registration of a trade mark (‘the Trade Mark’) filed under the Trade Marks Act 1995 (‘the Act’) by Dean William Hawkins (‘the Applicant’). Relevant details of the application are:
Application No: 1490777
Priority Date: 15 May 2012
Services: Class 35: Retailing of goods (by any means)
Trade Mark:
(‘the Application’)
The individual letters of the Trade Mark are each in a different colour from the adjacent letter(s).
The Application was examined as mandated by section 31 of the Act and advertised in the Australian Journal of Trade Marks as accepted for possible registration on 16 August 2012.
On 7 February 2014 eBay Inc. (‘the Opponent’ or ‘eBay’)) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice canvasses the available grounds of opposition to the registration of a standard trade mark and thus includes the section 60 ground under which I will decide this matter.
The parties have served evidence in support and evidence in answer as further discussed below.
The matter was subject to a hearing in Canberra on 19 May 2014 before me as a delegate of the Registrar of Trade Marks. Ms Cate Nagy, Senior Associate of King & Wood Mallesons, represented the Opponent and Mr Madhu K Jogia, Principal of Jogias Patent and Trade Mark Attorneys represented the Applicant. The Applicant also attended the hearing.
Onus
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Evidence
The evidence in this matter comprises:
In support: statutory declaration of Amber B. Leavitt dated 16 May 2013.
In answer: statutory declaration by the Applicant dated 11 September 2013.
At the hearing Mr Jogia sought to make a statement saying how his client created the Trade Mark. When I indicated that I would view such a statement as informal information and would weight it accordingly, Mr Jogia asked that his client make a statement. I indicated that this would have to be regarded as oral evidence, it had not been foreshadowed and that the Applicant would need to be sworn, nor had the Opponent been put on notice that it may need to cross examine the Applicant. Therefore I advised the Applicant that I would entertain an application to file this information as further evidence and set a timeframe for Mr Jogia to do so and for the Opponent to respond if it so wished.
Mr Jogia filed a declaration by the Applicant within the time allowed to do so. This was not accompanied by an application to file further evidence but, in the interests of costs and convenience to both parties, I indicated by email to the parties that I would not in any event accept such an application to file this further evidence and would formalise my reasons for so deciding in my decision.
In MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 at [52] the Registrar’s delegate implicitly agreed with the following:
The Removal Opponent also made submissions relating to “other matters”. These are that:
It would be open to the Removal Opponent to apply for leave to serve the Skrinos and Hayward declarations as further evidence under repealed further evidence provisions in regulation 5.15 (which continue to apply to oppositions that began prior to the commencement date of the RTB[2]).
[2] The Intellectual Property Laws Amendment Act 2012 (the Raising the Bar Act)
I agree that this is the effect of the provisions of the RTB and that, as this opposition was filed before the commencement date of the RTB, the further evidence provisions in regulation 5.15 continue to apply.
However, the further evidence (if properly filed) would be very late, it concerns facts which were known to the Applicant at the outset of proceedings and the further evidence does not, in my assessment, make any difference one way or another to the outcome of this matter. While the Applicant’s reason for adopting the Trade Mark might go to considerations under subparagraph 44(3)(a), there is no evidence of the use of the Trade Mark before me and consequently (if the ground under section 44(2) were to be established) subparagraph 44(3)(a) is not available to the Applicant. It is therefore neither in the public interest nor in the private interests of the parties to allow this further evidence: Oxon Italia SpA’s Application [1981] FSR 408 at 409 and Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858 as applied in, for example, Virgin Enterprises Ltd v V Group Pty Ltd [2012] ATMO 24.
The Applicant’s compliance with the formalities of fees and applications for extensions of time would therefore not assist in putting the further evidence in order to be accepted into evidence and would constitute expenditure of time and money for no good purpose.
Put briefly, the evidence shows that the Opponent uses the trade mark shown immediately below in relation to Internet auctions and sales of a vast range of goods in many countries of the world including in Australia:
(‘the Opponent’s Trade Mark’)
The operations under the Opponent’s Trade Mark include both auction and retail sales by many traders and/or individuals, some of whose entire business is based upon trading through websites carrying the Opponent’s Trade Mark. The Opponent regulates the activities of both sellers and buyers, provides facilities for payment and retains some fee for the provision of same.
The Opponent had, as at 26 May 2013, over 10 million registered users in Australia; as at 30 April 2013 the Opponent’s Australian website was the sixth most visited Australian website and in 2011 alone the total value of all items bought by people in Australia under the Opponent’s Trade Mark on its websites approached $US4 billion.
The Opponent’s trade mark is registered in Australia for a wide range of goods and services.
The Applicant’s declaration consists of arguments which seek to rebut the principal grounds of opposition.
Section 60
Section 60 of the Act provides:
60Trade 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.
Note:For priority date see section 12.
In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
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.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?
and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1 said[3] that the reputation required to be demonstrated was:
one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[3] Albeit in relation to subparagraph 28(2) of the Trade Marks Act 1955 which was analogous in the circumstances of that matter as it also required reputation to be established.
In my consideration the Opponent’s Trade Mark has a reputation which approaches notoriety. Most, if not practically all, Australians must be aware of the Opponent’s Trade Mark and the evidence shows that (at or near the priority date) over 10 million Australians, well over a third of the population, had purchased through a website bearing the Opponent’s Trade Mark. I note in this regard the decision of the Registrar’s Delegate in eBay Inc v Tradiebay Pty Limited [2013] ATMO 58 in which it was found that the Opponent “has a substantial, established and indeed overwhelming reputation in Australia in respect of its EBAY trade marks”.
In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 French J at [50] stated of the assessment of the likelihood of deception and confusion:[4]
(i) … it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
[4] As section 60 no longer contains a requirement that the trade marks in question be deceptively similar, I have deleted reference to ‘deceptive similarity’.
In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
Thus the question is not only whether consumers will be deceived into believing that the Trade Mark signifies that the Applicant’s services emanate from the Opponent: the question is also whether consumers might wonder if that might be the case, or that the similarity of the trade marks might (in the light of the reputation of the Opponent’s Trade Mark) signify some other connection in trade between the Applicant and the Opponent.
The Opponent argues that:
Based on the following considerations, the Opponent submits that this test would be made out in the present circumstances and the opposition should succeed on the ground of s 60 of the Act:
(a) the Applicant’s Mark is deceptively similar to the Opponent’s Class 35 EBAY Marks (although we note that this is no longer a requirement for section 60);
(b) the Applicant’s Mark relates to similar services to those in respect of which the Opponent has used the Class 35 EBAY Marks;
(c) the essential element of the Applicant’s Mark is identical to the essential element of the Opponent’s Class 35 EBAY Marks and other EBAY trade marks, namely the distinctive “-BAY” suffix;
(d) there is a real, tangible risk that persons within the relevant market, who are aware of the Opponent’s extensive reputation in the Class 35 EBAY Marks and its “family” of EBAY trade marks (including its trade mark), will regard services offered under the mark (particularly those offered online) as being services offered by, or as otherwise having the licence, sponsorship or approval of, the Opponent. At the very least, such persons would be caused to wonder, or left in doubt, as to whether such products and services come from the same source; and
(e) the risk of confusion is particularly strong insofar as the Applicant’s Mark will be used in relation to online retailing services, which the Applicant will be entitled to do if the trade mark is registered.
For its part, the Applicant argues that as the Opponent relies on the reputation of its trade mark, the Applicant … :
… therefore submits that as such, this “brand recognition” of the various trademarks which the Opponent ebay relies upon would make it highly unlikely that Applicant’s stylized mark would be confused with the opponent’s well established and recognized marks, following Ebay Incorporated v Ubay Pty Ltd [2009] ATMO 105 (21 December 2009). In particular, the Hearing officer concluded that the brand recognition of “eBay” reduces the likelihood of confusion.[5]
Similarly, Applicant submits that the brand recognition of eBay reduces the likelihood of confusion between the eBay and iWantBay marks.
In the decision of Deputy Registrar Hardie in McDonald’s Corporation v Bowditch (1999) 48 IPR 433 the Deputy Registrar found that the reputation of the opponent McDonalds resulted in a high level of recognition of its mark and use, such that consumers would be unlikely to think that the opponent would use a modified or varied version of its mark. Similarly, customers would be unlikely to think that the opponent would use a modified or varied version of its ebay mark and substitute that mark for iWantBay.
Therefore, Applicant submits that because of the reputation of the ebay marks, the use of the iWantBay mark is NOT likely to deceive or cause confusion. The brand recognition of the ebay marks reduces the likelihood of confusion.
[5] I note that the decision of the Registrar’s Delegate was appealed to the Federal Court and settled by the deletion of services in Class 35 from the specification.
In practical terms section 60 requires the decision maker to consider the reputation of an opponent’s trade mark and assess the likelihood of deception or confusion which is likely to result from the combined effects of the reputation and any similarity between the trade marks and any nexus between the goods and/or services. In a particular case a trade mark which does not have a comparatively strong reputation but is very similar to an opposed trade mark and is for the same goods or services might be lead to a conclusion of deception or confusion whereas in another case a trade mark which has a particularly strong reputation and which is very similar to an opposed trade mark might not succeed because of the unlikelihood, for example, that the public would conclude that a trader who has so far made only potato crisps would start providing automotive repair services.
Here, the services of the parties are, to all intents, the same. The services for which the Applicant seeks registration of the Trade Mark are ‘Retailing of goods (by any means)’ which the Opponent provides under its well-known trade mark as well as its on-line auction services. That said, there is also, in my estimation, a connection seen in the minds of many people between on-line retail services and on-line auction services. This connection may be because of the activities of the Opponent who provides facilities for both. Often the items for sale on the Opponent’s website have an option to either bid for them or purchase them immediately.
It is no longer a requirement under section 60 that the trade marks under consideration be deceptively similar; however, in my consideration the Trade Mark and the Opponent’s Trade Mark share a number of strong similarities. Both end in the distinctive suffix ‘bay’. The word ‘bay’ has no signification in relation to the Opponent’s services apart from being the distinctive part of its very well-known trade mark.
The expression ‘I want’ within the Trade Mark, far from altering the meaning or signification of the word ‘Bay’ which is common to the parties’ trade marks, in fact focusses attention upon it because the word ‘bay is the object of the sentence ‘I Want Bay’. This, combined with the fact that the element ‘Bay’ is the distinctive part (or essential feature) of the Opponent’s trade mark, functions to set the Trade Mark apart from the principle enunciated by Sargant J in London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 (at 279):
The only similarity in the word “Tripcastroid” to “Castrol” is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
In my estimation the above similarities are such that the concurrent use of the trade marks would confuse or deceive. I do not consider it is an answer to say that the Opponent’s Trade Mark is so well known that confusion is unlikely for the following reasons. In Citygroup Inc v City Index Limited [2014] ATMO 36 the Registrar’s Delegate said at [44] that:
With respect to visual interpretation of the respective trade marks the Applicant has submitted that:
[T]he opponent’s mark CITI is arguably so well known that no one would be confused into believing that a mark including the correct spelling of the word City was associated with the Opponent.
In this regard the Opponent referred me to the decision of the Delegate in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 where Hearing Officer Thompson stated:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
With respect to the Delegate’s reasoning Mr Hall averred:
Mr Thompson’s reasoning would apply equally to a case where reputation is strong and the nexus between the relevant services is very close. In such a case relatively dissimilar marks might nonetheless cause confusion.
Precedent on this issue is mixed. As stated by the Delegate in Flight Centre Pty Ltd v World Flight Centre Pty Ltd (‘Flight Centre’):
Reputation in a trade mark can thus be a double-edged sword and may either reinforce or mitigate the effect of differences.
In Ana Laboratories Ltd’s Application 1952) 69 RPC 146 (‘Ana Laboratories’) it was argued that in relation to petroleum jelly ‘Vaseline’ could be regarded almost as a household word, and that the extensive reputation which it enjoyed in this connection would prevent deception or confusion arising from any similarity to the mark ‘Vanildene’. The Assistant-Comptroller stated:
Upon this point, reference might well be made to the case of Smith Hayden & Coy. Ld’s Application (1946) 63 RPC 97. This was an appeal from a decision of the Registrar, and Counsel for the appellants (opponents) contended that the Registrar had partly based his decision upon what was in effect the proposition that the likelihood of a particular used mark being confused with another mark was in the inverse ratio to the reputation enjoyed by that particular mark. Evershed, J. (as he then was) found … that the Registrar had not so misdirected himself, thus implying that if he had advanced such a proposition in his decision, it would have been a misdirection upon his part. And in these proceedings, I am not prepared to take the view that, because of the extensive notoriety achieved by the mark ‘Vaseline’, deception or confusion is the less likely if a resembling mark should begin to be used in the same market.
The approach taken in Ana Laboratories can be contrasted with that taken in Flight Centre [2003] ATMO 60 where Mr Williams stated:
[I]t may be that the more widely the opponent is known, nationwide, as FLIGHT CENTRE, plain and simple, and the more widely recognised are those words seen to be its trade mark, the less likely is it that clearly different trade marks will be seen as denoting the same trade source.
I am also minded of the comments of the Full Bench of the Federal Court in C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 at [52]:
Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.
The Court plainly anticipates that even trade marks (or parts of trade marks) whose reputations are notorious may be imperfectly remembered.
However, while I consider that the use of the Trade Mark would deceive or confuse for the above reasons, the similarities between the trade marks go beyond those already discussed. Within the Trade Mark and the Opponent’s Trade Mark the words are both composed of letters which are differently coloured to the letters which adjoin them. Mr Jogias argued (and I agree) that no trader can claim exclusive rights in the colours and that when comparing the trade marks it can be seen that the colours and orders in which they occur are different. However, without the benefit of both trade marks before me to assess and compare, it is impossible to state exactly which colours occur in which trade mark let alone the order or arrangement they take. Taken in combination with the commonality of the word ‘Bay’ to the trade marks, the likelihood of deception or confusion is increased.
Additionally, and unusually, both the Trade Mark and the Opponent’s trade mark start with a lowercase letter immediately followed by an uppercase letter. Again, while the Opponent can hardly argue that such an arrangement is unique, it is unusual and taken in combination with the similarities of colour and the in-common occurrence of the word ‘Bay’ as a suffix in the trade marks this increases the likelihood of deception or confusion to almost a certainty.
It is very likely, in my estimation that a person seeing the Trade Mark will be caused to wonder if there is some form of connection with the services offered by the Opponent under its trade mark. It is possibly not likely that this wonderment will persist to the point of purchase – but this is not a requirement in order that section 60 be established: Keane CJ, Dowsett & Nicholas JJ said in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 at [115]:
Thirdly, a mark may be deceptively similar to another mark even if its use might not result in any deception or confusion that induces a sale or persists until the moment of sale.
The Opponent has established its opposition to the registration of the trade mark.
Decision
At the relevant date subsection 55(1) of the Act provided:
55Decision
(1)Unless the proceedings are discontinued or dismissed, 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.
As the ground under section 60 has been established, I refuse to register application 1490777.
Costs
Having been successful the Opponent is entitled to its costs which I order at the official scale against the Applicant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
14 June 2014
24
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