Epic Games, Inc v Unreil Pty Ltd
[2024] ATMO 230
•26 November 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Epic Games, Inc to registration of trade mark application number 2317802 (classes 35 and 41) – UNREIL STUDIOS - in the name of Unreil Pty Ltd
Delegate:
Anne Makrigiorgos
Representation:
Opponent: Spruson & Ferguson
Applicant: Meyer West IP
Decision:
2024 ATMO 230
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 44, 60 and 62A – s 44 established in respect of a subset of the services – amendment made deleting the subset services and additional services – no other grounds established – trade mark to proceed to registration
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Epic Games, Inc (‘Opponent’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).
Trade mark number: 2317802 (‘Application’)
Trade mark: UNREIL STUDIOS (‘Trade Mark’)
Applicant: Unreil Pty Ltd (‘Applicant’)
Filing date: 29 November 2022 (‘Relevant Date’)
Specification: Class 35: Development of advertising plans; Development of marketing plans; Organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes; Organisation and management of customer loyalty programmes; Organisation and management of discount card loyalty schemes; Organisation and management of incentive programmes; Organisation, operation and supervision of an incentive scheme; Organisation, operation and supervision of customer loyalty schemes; Organisational services for business purposes; Organising of business competitions; Organising of prize draws for advertising purposes; Organising of trade competitions; Organising of prize draws for promotional purposes; Promotion (advertising) of business; Promotion (advertising) of travel; Promotion of entertainment events; Promotion of fairs for trade purposes; Promotional marketing; Promotional services; Arranging and conducting promotional and marketing events; Demonstration of goods for promotional purposes; Organisation and management of incentive and sales promotion programmes (frequent buyer programmes); Sales promotion (for others); Sales promotion services; Sales promotions by issuing redeemable coupons (for others); Direct mail advertising; Direct market advertising; Direct marketing; Online retail services; Retail services; Retail services for goods (by any means); Discount store services (retail, wholesale, or sales promotion services); Conducting of commercial events; Preparation of mailing lists; Preparing of advertisements; Providing business information via a website
Class 41: Music arranging services; Music concert services; Musical concert services; Musical education services; Live music services; Musical performance services; Arranging of music performances; Music recording studio services; Hire of recording studios; Provision of recording studio facilities; Recording studio services; Hire of sound recording apparatus; Hire of sound reproducing apparatus; Prize draws (Lotteries); Live show production services
(‘Applicant’s Services’)
2. The Trade Mark was examined and advertised as accepted for possible registration on 30 April 2023.
3. On 30 June 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 31 July 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 12 September 2023.
4. The Opponent filed Evidence in Support (‘EIS’) on 21 December 2023. The Applicant did not file Evidence in Answer.
5. On 1 February 2024 the Applicant requested an amendment to the scope of the class 41 services and on 26 February 2024, the following services were deleted from the Application:
Organisation of games; Organisation of lotteries; Organisation of recreational activities; Arranging group recreational activities; Provision of recreational activities; Recreation services; Recreational services;; Organisation of competitions (education or entertainment); Organisation of contests (entertainment); Organisation of entertainment events; Organising events for entertainment purposes; Entertainer services; Entertainment; Live entertainment production services; Conducting lotteries; Game services provided online from a computer network; Game shows; Lottery services; Providing online electronic publications, not downloadable; Publishing by electronic means; Publishing of stories
6. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by written submissions, the Opponent filing written submissions on 10 October 2024 drafted by Megan Evetts of Counsel instructed by Spruson & Ferguson and the Applicant filing written submissions on 23 October 2024 drafted by André Meyer of Meyer West IP. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written submissions of the parties.
Grounds and onus
7. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A. The Opponent advised in the Opponent’s Submissions that it was not pressing the ss 58 and 58A grounds of opposition. I therefore treat these grounds as abandoned.
8. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’)
Evidence
9. The following EIS was filed:
Declaration of Jodie Anderson, Vice President, Marketing of the Opponent, made on 20 December 2023 with Exhibits A to Z and AA to II (‘Anderson’).
Summary of EIS
10. Anderson states the Opponent is a leading developer of video games and other entertainment software, a game engine, and a suite of content creation tools used in the production of video games, films, television programs, and other visual media and entertainment software throughout the world, including Australia.
11. Anderson states that the Opponent is known worldwide as the creator of the Unreal series of video games (first published in 1988) including Unreal II, Unreal Championship and Unreal Tournament as well as other games including virtual reality games and that these games are available for purchase on the Opponent’s website at (‘Opponent’s Website’) and from the Microsoft Store.
12. Anderson claims that currently the Opponent’s most popular video game is Fortnite, which was released in 2017 and has become a global cultural phenomenon topping 500 million registered accounts. Fortnite may be downloaded for free from the online Epic Games Store (‘Store’) website at located at Anderson attests that every time players launch the Fortnite game in any game mode, they see the Unreal Engine mark on the start screen.
13. Anderson claims that worldwide, over 700 million users have signed up to play the Opponent’s games, and each day 30 to 40 million individuals log into a game of the Opponent.
14. Anderson declares that Fortnite and the Unreal series of games were built on the Opponent’s Unreal Engine game developing software (‘Unreal Engine Software’), which was published in the 1990s. Anderson describes the software as a kind of toolbox for the development of video games, among other things, which is distributed along with other Unreal suites of technology tools. Anderson states that these Unreal technology tools including Unreal Engine Software allow developers to create two- and three-dimensional and immersive digital content for use in creating and experiencing games, movies, television, architecture, art, virtual reality, immersive experiences, and other applications. Anderson exhibits printouts from:
·the Opponent’s Website where I note reference to the Unreal Engine Software dated 2020 and the following:
·a post from the Opponent’s X page and an article from the website both dated in 2021 and both referencing the mark Unreal Engine.
·screenshots dated 2023 referencing the virtual reality game Robo Recall from the Opponent’s Website where I note reference to the following on multiple pages:
.
15. Anderson declares that Unreal Engine can be downloaded for free from the Opponent’s website (‘Unreal Website’) for non-commercial purposes and for developers the Opponent typically collects a 5% royalty on revenue generated after the developer reaches $1 million (USD) in gross sales. Alternatively, developers can negotiate custom or royalty-free licenses with the Opponent. Anderson states the Unreal Engine community is made up of millions of licensees worldwide, including over 450,000 licensees in Australia.
16. Anderson states that a significant portion of all published video games are based on Unreal Engine and provides the names of examples of third party video games that are based on Unreal Engine and the names of some of the 160 major motion pictures and television show productions where Unreal Engine was used in their creation. These productions include productions in the Star Wars saga (Rogue One: A Star Wars Story and The Mandalorian), War for the Planet of the Apes and Ford v Ferrari.
17. Anderson claims the Opponent has received a number of awards for Unreal Engine and lists these awards from 2014 to 2023 including:
· the most successful video game engine of all time by Guinness World Records in 2014.
· Emmy Awards for exceptional technical development in 2019 for 3DEngine Software for the Production of Animation and 2020 for Outstanding Achievement in Engineering Development.
· Develop Industry Excellence Awards’ Best Game Engine award in 2009, 2010, 2011, 2013, 2016, 2017, and 2018.
· TIME Best Inventions for Entertainment and Gaming in 2022.
· Hollywood Professional Association Engineering Excellence Award in 2019.
· British Academy of Film and Television Arts Special Award in 2019.
In support, Anderson exhibits printouts from the Guiness World Records website and the Unreal Website which lists 66 awards from 2004 to 2023.
18. Anderson attests that the Opponent released Unreal Editor for Fortnite in March 2023 which permits the use of Unreal Engine’s tools in Fortnite to allow for designing, developing, and publishing games and experiences directly into Fortnite.
19. Anderson declares that in March 2018, the Opponent released Unreal Studio, a suite of tools designed to help creatives bring 3D scenes and CAD models into Unreal Engine and exhibits screenshots dated 2023 from the Opponent’s Website. Anderson claims that in the first six months after its release, over 100,000 developers and content creators registered for Unreal Studio. Anderson also claims that from March 2018 - August 2018 the Opponent offered free online video courses designed to help Unreal Studio users get the most from the software tools. No supporting evidence is provided for these claims.
20. Anderson states that since 2014 the Opponent has hosted Unreal Engine Marketplace, an e-commerce platform through which developers can create and sell, for example, digital assets, artwork, and animation for use in Unreal Engine projects and exhibits printouts from the Unreal Website dated 2023.
21. Anderson claims that Unreal Engine is also used in other areas, such as the automotive and aerospace sectors, as well as in the medical field stating that:
·Audi and Ford have used Unreal Engine for automotive design and development, as well as for the development of digital showrooms where customers can configure their vehicles with high-fidelity visualizations, among other applications.
·NASA and Boeing use Unreal Engine to train astronauts using virtual reality.
·Gulfstream uses Unreal Engine to visualize jets for employees and customers.
·Unreal Engine is used to configure training for neurosurgeons by enabling detailed real-time digital simulations of human anatomy.
22. Anderson provides details of the Opponent’s numerous trade mark applications and registrations (or extensions of protection) for UNREAL, UNREAL ENGINE, and other UNREAL-formative marks, including UNREAL STUDIO, in connection with goods and services such as computer software, video game software, game engine software, software development tools, and virtual and augmented reality software, throughout the world. Anderson also provides copies of certificates of registrations for many of these trade mark registrations.
23. Anderson attests that the Opponent has licensed its Unreal technology software suite to companies and individual users throughout the Asia-Pacific region including in Australia and that Unreal Engine has generated tens of millions of dollars in royalties from these licensees.
24. Anderson declares that worldwide sales of games built on Unreal Engine have generated billions of dollars and that sales of third-party created content through the Unreal Engine Marketplace have generated millions of dollars in royalties for the Opponent. Anderson claims the Opponent’s annual revenue in Australia for Unreal-related goods and services was over USD $1.9 million for each of 2021 and 2022.
25. Anderson states that the Opponent and Unreal Engine are frequently mentioned in reports by independent news sources around the world, exhibiting excerpts taken from a small sample of sources in Australia dated 2022 and 2023. One source dated in March 2022 states:
and one in December 2022 states:
26. Anderson claims that the Opponent continuously and consistently markets itself and its goods and services through its marketing materials, game covers, social media, the Opponent’s Website and the Unreal Website. Users can download Unreal Engine, purchase and play video games created by the Opponent and other developers and keep up to date on the Opponent’s projects and other activities via these websites. Anderson claims the trade mark Unreal Engine is prominently displayed on these website and exhibits printouts from these websites dated in 2023 where I note use of:
and numerous other references to Unreal Engine on the Unreal Website. I also note a list of uses on the Unreal Website includes:
27. Anderson declares the Opponent spent over $140,000 (USD) in 2022 on marketing in Australia.
28. Anderson attests that the Opponent uses social media to interact with consumers around the world and in 2023 has the following social media presence:
Epic Games
Followers
Subscribers
Views
X (joined March 2010)
5 million
1.3 million
5.9 million
YouTube (joined March 2009)
450,000
over 81 million
Fortnite
Followers
Subscribers
Views
YouTube (joined January 2014)
11.9 million
2.5 billion
Unreal Engine
Followers
Subscribers
Views
X (joined July 2010)
585,000
993,000
YouTube (joined February 2011)
over 1 million
over 167 million
29. Anderson exhibits screenshots from the Unreal Engine YouTube channel showing 3 videos dated 2014, 2020 and 2021 were viewed over 18 million times, 8 million times and 2 million times respectively.
30. Anderson states the Opponent promotes and encourages the use of its Unreal Engine technologies through:
· an Unreal Dev Grants program, established in February 2015 to provide financial support for teams and individuals doing impressive work in and around Unreal Engine 4 exhibiting a copy of an article from the Opponent’s Website dated in 2018 and 2019 where I note there was an Australian winner in each year, one for a video game and the other an animated series and the categories for the grants extend beyond games to film, media and entertainment.
· Epic MegaGrants, in 2019, a grant initiative for game developers, artists, students, educators, and those developing tools for other creators using Unreal Engine exhibiting a copy of articles from the Unreal Website dated in 2022 and 2023 and a copy of a news article from in 2020. The website printouts show that over 1,800 grants have been awarded to developers all around the world, including four to Australians for video games, four for film, TV and live events, two for tools and open source and two for non-games. The printouts also refer to categories such as film, TV and live events and other non-game verticals including architecture, automotive and manufacturing.
31. Anderson claims the Opponent offers a number of resources to game developers through Unreal Indies. Unreal Indies provides guidance, organizes meetups, offers a marketplace of Unreal Engine goods and services, and assists game developers with their projects and the use of the Opponent’s Unreal technology. Anderson exhibits printouts from the Unreal Website dated 18 December 2023.
32. The Opponent also hosts and participates in game and development programs, and conventions throughout the Asia-Pacific region and Europe, naming three which were held in Korea, one in Singapore and Unreal Fest Europe. No indication of Australian participants is provided.
33. Anderson states that the Opponent hosted the sold out Unreal Fest Gold Coast for Unreal Engine developers in Australia, New Zealand, and Southeast Asia in June 2023 exhibiting printouts from the Unreal Website and other online sites referring to the fest.
34. Anderson attests that in November 2020, the Opponent hosted Unreal Build: Virtual Production, a free half-day virtual event featuring presentations from virtual production industry experts discussing virtual production and Unreal Engine. Anderson exhibits an article from the Unreal Website dated 2020. No indication of Australian participants is provided.
35. Anderson states that the Opponent hosted the Unreal Engine Short Film Challenge for creatives in 2020 and in 2022, extended the challenge to include participants in Australia and New Zealand. Participants received free online Unreal Engine 5 animation training and winners received funding for their short films and the exclusive opportunity to showcase their work to major studio executives. Anderson exhibits printouts from the Unreal Website dated 2020 and 2022 referring to the challenge. I note Australian entrants included Curtin University, UTS Animal Logic Academy and Griffith Film School and the event was held in conjunction with the governments of Tasmania, Victoria and New South Wales and the government bodies Screen Tasmania, Screen Queensland, Screenwest, Screen Victoria, South Australian Film Corporation and Screen Canberra.
Discussion and Reasons
Section 44
36. Section 44 relevantly provides (notes omitted):
Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
37. The SGP nominates thirteen trade mark registrations in support of this ground (‘Opponent’s Registrations’), brief particulars of which appear below:
Number
Mark
Class
Priority Date
780094
UNREAL
9
3 December 1998
941309
9, 16, 28
28 January 2003
941314
UNREAL
9, 16, 28
28 January 2003
952481
UNREAL CHAMPIONSHIP
9, 16, 28
1 May 2003
988249
UNREAL
41
9 February 2004
988250
UNREAL CHAMPIONSHIP
41
9 February 2004
1182048
UNREAL TOURNAMENT
9, 16, 25, 28
13 June 2007
1201767
9, 16
27 September 2007
1948846
UNREAL STUDIO
9
6 March 2018
1950311
UNREAL
9
5 December 2017
1953424
UNREAL ENGINE
9, 25
5 December 2017
2110616
EPIC STUDIO
41
19 August 2020
2122694
UNREAL
9, 35
18 April 2019
38. However, for the purposes of the s 44 ground, the Opponent refers to the following subset of the Opponent’s Registrations (‘Subset Marks’):
Number
Mark
Goods and services
941314
UNREAL
Class 9: Computer games; interactive computer software, CD-ROM, prerecorded video tapes, laser discs, CDs, DVDs featuring music, characters, scenes and events relating to a motion picture or theatrical production and other media in this class for the transmission of sound and images
Class 16: Printed materials, namely novelization books featuring scenes, events and characters based on video games; comic books
Class 28: Toy action figures
988249
UNREAL
Class 41: Entertainment services namely providing on-line computer games
1948846
UNREAL STUDIO
Class 9: Computer software, namely, software development tools for the creation of computer-generated imagery and graphics for the production of content for virtual worlds and 3D platforms; computer software, namely, software development tools for the creation of computer-generated imagery and graphics for the production of motion pictures, television shows, videos, 3D animations, 3D simulations, 3D visualizations, virtual reality motion pictures, and virtual reality television shows; virtual reality software for creating multimedia content; downloadable software for use in film production, television production, video production, and 3D animations, simulations, and visualizations; computer software, namely, software development tools for the creation of computer-generated imagery and graphics for use in architecture, product design, and manufacturing; downloadable software for the creation of fully immersive and interactive animations, simulations, and visualizations for use in architecture, product design, and manufacturing.
2122694
UNREAL
Class 9: Downloadable software for providing access to an online multimedia virtual environment; recorded software for providing access to an online multimedia virtual environment; downloadable computer software for use in creating, manipulating, and participating in virtual environments; recorded computer software for use in creating, manipulating, and participating in virtual environments; downloadable computer software for providing access to an online virtual environment; recorded computer software for providing access to an online virtual environment; downloadable software for use in creating, manipulating and participating in virtual environments; recorded software for use in creating, manipulating and participating in virtual environments; downloadable virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, emotes and gestures for use in virtual environments created for entertainment purposes; recorded virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, emotes and gestures for use in virtual environments created for entertainment purposes; downloadable virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, emotes and gestures for use in online virtual worlds; recorded virtual goods, namely, computer programs featuring avatars, clothing, pets, vehicles, weapons, tools, toys, emotes and gestures for use in online virtual worlds.
Class 35: Online retail store services featuring virtual goods, namely, avatars, characters, environments, structures, props, furniture, vehicles, weapons, tools, toys, emotes, and gestures for use in online virtual worlds.
39. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
·at least one of the Subset Marks has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);
·the Applicant’s Services are similar or closely related to the goods and services of at least one of the Subset Marks that also satisfies the first requirement (‘the second requirement’); and
·the Trade Mark is substantially identical with or deceptively similar to at least one of the Subset Marks that also satisfies the first and second requirements (‘the third requirement’).
40. I am satisfied that the priority date of each of the Subset Marks is earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.
41. The next consideration is whether the Applicant’s Services are similar to the services, or closely related to the goods, of at least one of the Subset Marks.
42. Services are ‘similar to other services’ if they are the same or of the same description as the other services.[5] Services of the same description may be services that one might expect to be provided by one trader under the same trade mark or those whose providers consider that they belong to the same trade.
[5] Section 14(2).
43. The Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd said the following factors were relevant in relation to considering whether certain services might be services of the ‘same description’ as services for which a trade mark is registered:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386; [2009] FCAFC 27, per Moore, Edmonds and Gilmour JJ at [71]–[73].[6]
[6] (2017) 124 IPR 264, [339] (Greenwood, Besanko and Katzmann JJ).
44. The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[7] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[8] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[9]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38] (‘Woolworths’).
[8] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
[9] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
45. In considering the Applicant’s Services and the goods and services of the Subset Marks (‘Opponent’s Goods and Services’), I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade. I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[10] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[11]
[10] Southern Cross (n 4), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).
[11] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, 240 (Burchett J).
46. The Applicant’s Services can broadly be categorised into five groups:
·Group 1 - advertising, marketing and promotional services including services related to customer loyalty
·Group 2 - organising business competitions and commercial events
·Group 3 - live show production services
·Group 4 - a variety of music related services
·Group 5 - retail services including online and discount services which are provided by retail, wholesale and sales promotion
47. The Subset Goods and Services can broadly be categorised into six groups:
·Group A - computer software including computer games software, interactive computer software and computer software providing access to online multimedia virtual environments and creating, manipulating, and participating in virtual environments
·Group B - media for the transmission of sounds and images including pre recorded CD-ROMs, video tapes, laser discs, CDs and DVDs featuring music, characters, scenes and events relating to a motion picture or theatrical production
·Group C - printed materials
·Group D - toys action figures
·Group E – providing on-line computer games
·Group F - online retail store services featuring virtual goods
Comparison of the Opponent’s Services and the Applicant’s Services
48. The Opponent submits that the Opponent’s online retail services (Group F) of trade mark registration 2122694 (‘694 Registration’) fall within, and are therefore, the same services or at the very least services of the same description, as the Applicant’s retail services and online retail services (Group 5). I agree with the Opponent. While I consider the claim to ‘online retail store services featuring virtual goods’ limits the retail services to goods which are virtual, the Applicant’s broad claim to retailing services includes online retailing services in respect of any goods including virtual goods.
49. In respect of the Applicant’s claim to ‘discount store services (retail, wholesale, sales promotion)’ in Group 5, I consider this claim covers discount store services which are provided by retail, wholesale or sales promotion means including online. The Opponent submits that the discount and sales promotion services are also services of the same description as the online retail services featuring virtual goods of the 694 Registration as it is very common for providers of online retail services to also provide discount and sales promotion services under and by reference to the same or similar trade marks in the course of trade. I agree that retail discount store services which are not limited to any goods would include retail discount store services of virtual goods. A discount store is still a retail store. Therefore, I am satisfied that retail discount store services are similar to online retail services featuring virtual goods of the 694 Registration.
50. I have a different opinion concerning wholesale and sales promotion discount store services. By definition retail and wholesale services generally have different customers and involve the sale of small quantities of commodities for retail and large quantities for wholesale, which is usually to retailers. While I agree that it is common for providers of retail services to also provide discount and sales promotion services under and by reference to the same or similar trade marks in the course of trade for some goods e.g. clothing and food, I do not find this to be the case for all and any type of good, particularly virtual goods. There is no evidence that discount wholesalers are likely to be one of the outlets from which retailers or other purchasers of virtual goods acquire these goods.
51. The Opponent has not provided evidence to satisfy me that the inherent character of wholesale and sales promotion discount store services are similar or the same as online retail services of virtual goods or that the services are offered to the same customers or have the same origin or method of communication to their relevant target audience. The Opponent has also not provided any evidence that these discount and sales promotion services are typically provided online.
52. Therefore, I am not satisfied that ‘discount store services (wholesale or sales promotion services)’ are similar to the Opponent’s Services.
53. The Opponent also submits that the Applicant’s customer loyalty services (Group 1) are services of the same description as the Opponent’s online retail services of the 694 Registration (Group F) on the basis that it is very common for providers of online retail services to also provide such customer loyalty services. These services are offered to the same customers, as part of the provision of online retail services and originate from the same trade source. I disagree with the Opponent. While many retailers, including online retailers, have customer loyalty programs in place, these services are provided by the retailer ultimately for the benefit of retailer and not by the retailer for the benefit of other retailers. For example, a David Jones loyalty card is provided to David Jones’ customers for use at David Jones but David Jones does not assist other retailers in organising and managing their customer loyalty programmes. Likewise, if the Opponent had a customer loyalty program, it would be created for the benefit of the Opponent and there is no evidence that the Opponent creates or provides customer loyalty services for others.
54. Further, the Opponent’s submissions and evidence do not assist in the determination of whether ‘customer loyalty services’ are of the same description as online retailing of virtual goods. There is no evidence that the public would see ‘customer loyalty services’ as part of the business of a retailer of online virtual goods.
55. In conclusion, there is not enough evidence before me to establish a sufficient link between the Opponent’s online retail store services featuring virtual goods in the 694 Registration and ‘discount store services (wholesale, sales promotion)’ or ‘customer loyalty services’. I find the Opponent has failed to discharge the onus upon it to convince me that the ‘discount store services (wholesale, sales promotion)’ or ‘customer loyalty services’ are similar to the online retail store services featuring virtual goods of the 694 Registration.
56. I consider the natures, uses and trade channels of the remaining services in the Applicant’s Groups 1 to 4 (‘Remaining Services’) differ from the Opponent’s Services in the 694 Registration and trade mark registration 988249 (‘249 Registration’). The Opponent’s Services are narrowly defined as retail store services of virtual goods and providing on-line computer games. These services have clear natures and uses which do not overlap with those of the Remaining Services. Further, the trade channels of the Remaining Services would be specialist organisations such as advertising agencies, competition organisers, event organisers, concert organisers, musical studios and other musical related professionals who have expertise in their field and provide these services to third parties. These are not the same trade channels as the Opponent’s Services in the 694 and 249 Registrations.
57. In conclusion, on the basis of business realities and common sense, I consider the following services claimed by the Applicant directly conflict with and are the same or similar services as the Opponent’s Services in the 694 Registration:
Online retail services; Retail services; Retail services for goods (by any means); Discount store services (retail)
(‘Conflicting Services’)
and the Remaining Services claimed by the Applicant do not have a similar nature, use or trade channel to the Opponent’s Services in either the 694 or 249 Registrations.
Comparison of Opponent’s Goods and the Applicant’s Services
58. The Opponent submits that the Applicant Services are closely related to the Opponent’s Goods given the extreme breadth of the services of the Application. For example, the Application includes organisational services for business purposes generally, providing business information via a website generally, organisation, advertising services generally etc. Given such a wide scope, the Applicant’s Services will necessarily involve the use or sale of the Opponent’s Goods and confusion would be likely to arise. The Opponent does not elaborate on these submissions nor provide any evidence as to why or how the breadth of the services of the Application leads to a conclusion that the Applicant’s Services are closely related to the Opponent’s Goods. Nor does the Opponent elaborate on these submissions nor provide any evidence as to how or why the Applicant’s Services will necessarily involve the use or sale of the Opponent’s Goods.
59. As I have already concluded that there are Conflicting Services with the 694 Registration, I need only consider whether the Remaining Services are closely related to the Opponent’s Goods.
60. In so far as the Remaining Services are concerned, I disagree with the Opponent. I consider the natures, uses and trade channels of the Remaining Services differ and are not closely related to the Opponent’s Goods merely on the basis of the breadth of the Remaining Services. As stated above, the Opponent’s submissions and evidence do not assist in the determination of whether this group of services are closely related to the Opponent’s Goods. In particular, there is no evidence that the public would see the Remaining Services as being part of the business of an ordinary trader in computer software, media for the transmission of sounds and images, printed materials or toys.
61. There is not enough evidence before me to establish a sufficient link between the Opponent’s Goods and the Remaining Services. I find the Opponent has failed to discharge the onus upon it to convince me that the Remaining Services are closely related to the Opponent’s Goods.
62. In conclusion, I am not satisfied that the Applicant’s Services are similar or closely related to the Opponent’s Goods and Services other than the Conflicting Services and therefore, the second requirement is satisfied in respect of the Conflicting Services.
63. For the Conflicting Services, the next consideration is whether I am satisfied that the Trade Mark is substantially identical with or deceptively similar to the 694 Registration, being the only registration which claims ‘online retail store services featuring virtual goods’.
64. The Opponent’s submissions do not contend that the Trade Mark and the 694 Registration are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the 694 Registration. On a side by side comparison of the respective marks, there are obvious differences which mean that a total impression of dissimilarity emerges from this comparison.
65. I move then to consider whether the Trade Mark and the 694 Registration are deceptively similar.
66. Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.
67. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[12]
[12] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 416 (‘Shell’).
68. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[13] conveniently stated the relevant principles, which were summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[14] as follows:
[13] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[14] [2023] FCA 482, [55] (Jackman J).
·the resemblance between the two marks must be the cause of the likely deception or confusion;[15]
[15] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[16]
[16] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
·the marks should not be compared side by side;[17]
·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[18]
·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[19]
·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[20]
·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[21]
·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[22]
·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[23]
·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[24]
·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[25] and
·any intention to deceive or cause confusion may be a relevant consideration but is not required.[26]
[17] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[18] Ibid.
[19] Ibid.
[20] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[21] Shell (n 12) 415.
[22] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[23] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[24] Woolworths (n 7) [50(ii)] (French J) restating principles from Southern Cross (n 4) 594-595.
[25] Australian Woollen Mills (n 17).
[26] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 17) 657.
69. Distinctiveness of the compared trade marks is a factor that can legitimately be taken into account when considering deceptive similarity.[27]
[27] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).
70. Justice French expressed the view in Woolworths[28] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is ‘logically antecedent to’ assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[29]
[28] Woolworths (n 7) [39].
[29] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
It is also relevant to take into account whether elements of the rival marks have a descriptive character’.[30] Whilst this does not preclude a finding of deceptive similarity,[31] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:
[30] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).
[31] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).
It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[32]
[32] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).
72. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the 694 Registration. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the 694 Registration are used and the circumstances in which the goods and services are and will be sold.
73. The Opponent submits that the addition of STUDIO does not distinguish UNREIL STUDIO as STUDIO is descriptive and secondary. UNREIL STUDIO is also descriptive of at least some of the services of the Application (in particular, music recording studio services). In the circumstances, consumers would simply consider UNREIL STUDIO to be a sub-brand of the UNREAL mark.
74. The Applicant submits that UNREIL STUDIO is not deceptively similar for the following reasons:
·UNREIL STUDIOS has 6 syllables and includes the invented word UNREIL whereas UNREAL has 3 syllables.
·UNREIL is visually different to UNREAL.
·the overall idea conveyed by UNREIL STUDIOS is that of rooms or places where an artist may work. The artist’s rooms are described by the adjective ‘unreal’ which is spelt as UNREIL.
·UNREAL conveys the abstract idea of something not being realistic or imaginary.[33]
[33] I note that the Macquarie Dictionary Online also defines ‘unreal’ as colloquially ‘unbelievably awful and unbelievably wonderful’.
75. In my opinion the 694 Registration is highly distinctive in respect of the Opponent’s Goods and Services. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the 694 Registration will be the distinctive word UNREAL. This element is the only component of the 694 Registration. A phonetically identical and visually very similar element, namely the word ‘UNREIL’, appears in the Trade Mark at the beginning of the mark. I consider consumers would view the UNREAL and UNREIL elements in the same way and the minor difference in spelling of UNREIL has little effect on the visual and aural identity of the UNREAL/UNREIL element and is likely to be discounted by consumers.
The Macquarie Dictionary Online has a number of definitions for the word studio including ‘a room or place in which some other form of art is pursued: a music studio; a room or set of rooms specially equipped for broadcasting radio or television programs or making recordings’. I consider that there is little difference between an artist who paints, sculpts, writes or performs music, and one who is involved in the creation of video games. Video game creation involves the skills or artists who work on designing e.g. artwork for the surrounding game world or people that inhabit the game world. I am also personally aware that the word studio has made its way into the retail sector particularly in the fashion and art world. It seems to me that the word studio is apt to describe retail services of many goods which involve artist in some way including virtual goods, and therefore, the word studio has a low level of distinctiveness.
Further the Applicant itself submits that the overall idea conveyed by the UNREIL STUDIOS mark is that of rooms or places wherein an artist may work.[34]
[34] Opponent’s Submissions [29(c)].
78. Given the low level of distinctiveness of the word STUDIO, the UNREIL element does not lose its identity in the Trade Mark and is the more striking and memorable feature. It seems to me that adding the word STUDIO does not give the Trade Mark an immediate and obvious meaning that avoids any prospect of confusion.
79. In Starr Partners Pty Ltd v Dev Prem Pty Ltd, the Full Court of the Federal Court said in relation to the comparison of marks:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[35]
[35] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).
80. The UNREIL element is a key visual, aural and conceptual feature of the Trade Mark. It is highly likely that consumers with an imperfect recollection of the 694 Registration would immediately link the Trade Mark to a memory of association with the essential element UNREIL/UNREAL.
81. In conclusion, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider the trade marks are likely to be mistaken one for the other. Thus, as a matter of impression and common sense, I believe that a person of ordinary intelligence would be likely to be confused or deceived by the Trade Mark.
82. I am satisfied that there is ‘a real, tangible danger’ that a consumer ‘might be caused to wonder’ whether the Conflicting Services originate from the same source. I therefore find that the Trade Mark is deceptively similar to the 694 Registration and that the Opponent has made out the ground of opposition under s 44 for the Conflicting Services.
83. Nevertheless, it remains possible for the application to be accepted for the Conflicting Services under the provisions of ss 44(3) and/or 44(4) which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. However, as the Applicant has not filed any evidence in this opposition, the provisions of ss 44(3) and/or 44(4) do not apply.
Section 60
84. The provisions of s 60 are reproduced below:
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.
Note: For priority date see section 12.
85. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
86. The SGP identifies the UNREAL, UNREAL STUDIO, and other UNREAL formative trade marks as the trade marks supporting this ground of opposition. The Opponent’s submissions expand on the trade marks supporting this ground of opposition to include UNREAL ENGINE, UNREAL, UNREAL II, UNREAL CHAMPIONSHIP, UNREAL TOURNAMENT, UNREAL EDITOR FOR FORTNITE and UNREAL INDIES (‘Unreal Marks’).
Reputation
87. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[36]
[36] [2000] FCA 1335, [81] (‘McCormick’).
88. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[37]
[37] Ibid [86].
89. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[38] Here the nature of the Opponent’s goods are video game software, virtual and augmented reality software, game engine software and software development tools (‘Used Goods and Services’). I consider the relevant market based on the Used Goods and Services alone is likely to include many Australian households given the popularity of video games in this country and many businesses involved in entertainment and gaming, amongst others. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[39]
[38] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[39] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57].
90. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[40]
[40] [2019] 142 IPR 275, [83] (O’Bryan J).
91. While the Opponent bases the s 60 ground on the Unreal Marks, notably, each is considered a separate trade mark for the purposes of s 60.[41]
[41] Ibid [89]; Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas’).
92. The Opponent submits that the reputation in the Unreal Marks extends to the Used Goods and Services, to computer software per se and to a variety of other services. Putting aside the UNREAL ENGINE mark, I acknowledge that the evidence demonstrates the Opponent has used some of the Unreal Marks before the Relevant Date as the name of a video game namely UNREAL CHAMPIONSHIP and UNREAL TOURNAMENT. However mere use of a trade mark does not demonstrate that a trade mark has garnered a reputation that may result in deception or confusion. On the basis of the Opponent’s evidence, I am not satisfied that either the UNREAL CHAMPIONSHIP or the UNREAL TOURNAMENT marks have a significant reputation in Australia before the Relevant Date.
93. I am also not satisfied that the evidence in respect of the following marks is sufficient to demonstrate that the trade marks has garnered a reputation:
·UNREAL EDITOR FOR FORTNITE and UNREAL INDIES as the evidence provided by the Opponent is dated after the Relevant Date and as such, it has limited probative value in assessing a reputation in these trade marks as at the Relevant Date.
·UNREAL and UNREAL II marks as there is no evidence of use of UNREAL II and scant evidence of use of UNREAL solus.
94. I will now consider the reputation of the UNREAL ENGINE mark.
95. The Applicant submits that:
- the claims of a substantial reputation in UNREAL ENGINE are unsubstantiated and lack credibility;
- the annual revenue in Australia for Unreal-related goods and services for each of 2021 and 2022 is relatively modest and hardly indicative of a mark with a reputation; and
- there is no reputation in UNREAL ENGINE.
96. While the Applicant submits that the annual revenue for Unreal-related goods and services is relatively modest and hardly indicative of a mark with a reputation, I refer to the comments of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where he said:
As regards a trade mark, its reputation derives from both the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the]owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra-deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[42]
[42] [1999] ATMO 23; 47 IPR 423, 436 (Hearing Officer Thompson).
97. I am satisfied that the Opponent’s evidence shows significant use of the UNREAL ENGINE mark and that this mark as a whole, and not the word UNREAL solus, had acquired a reputation in Australia amongst a significant number of consumers at the Relevant Date. The Opponent has not only shown quantitative dimensions such as quantum of sales, advertising and promotion but also qualitative dimensions. The fact that the Opponent has won industry awards for its UNREAL ENGINE software and the number of social media likes and views and media mentions show the esteem in which the UNREAL ENGINE mark is held by the public.
98. The Opponent submits that the reputation in the UNREAL ENGINE mark extends beyond the Used Goods and Services to online retail services in the form of an e-commerce platform, training and education services and computer software per se. The Opponent also submits that the reputation in the UNREAL ENGINE mark extends beyond the gaming industry to the film, media, entertainment, live events, automotive, aerospace, architecture, manufacturing, medical and music industries.
99. I find that the evidence does not support a reputation of the UNREAL ENGINE mark in respect of an e-commerce platform. The only evidence provided by the Opponent of an e-commerce platform is dated after the Relevant Date. I also find that the Opponent’s reputation does not extend to computer software per se. The Opponent’s reputation in UNREAL ENGINE is in respect of video game software, game engine software, software development tools and virtual and augmented reality software and not all types of software.
100. I am also not satisfied that the Opponent’s reputation in UNREAL ENGINE extends to training and education services. The evidence only shows that training and education was provided to 1800 Australian applicants of the Unreal Engine Short Film Challenge held in 2020. No figures are provided for 2022 and there is no evidence that the 2022 challenge occurred before the Relevant Date.
101. I agree with the Opponent that the reputation in the UNREAL ENGINE mark extends beyond the gaming industry to at least the film and television, architecture, automotive and transportation, broadcast events, live events and simulation industries.
102. In conclusion I am only satisfied that the UNREAL ENGINE mark had a reputation in Australia before the Relevant Date in respect of the Used Goods and Services in respect of a wide range of industries. Accordingly, pursuant to s 60(b), consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
103. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[43]
[43] [1979] RPC 410, 423 (citation omitted).
104. The likelihood of deception or confusion must be real and tangible.[44] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Services appearing in relation to the Trade Mark were being provided by the same person as the owner of the UNREAL ENGINE mark.[45] To this end, it has been observed that ‘the threshold for confusion is not high’[46] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[47]
[44] Southern Cross (n 4) 595.
[45] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).
[46] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[47] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
105. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark and the use to which the opposed mark has actually been put is of limited relevance. That is because it is the notional normal and fair use of the opposed mark in respect of each of the goods or services covered by the specification that is relevant, and the mark with the reputation might only have been used in relation to a very limited number of those goods or services. Here the relevant comparison is between the reputation of the UNREAL ENGINE mark derived from actual use of that mark, and a notional normal and fair use of the Trade Mark in respect of each of the Applicant’s Services.
106. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[48]
[48] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas (n 41) [142] (Yates J).
107. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the UNREAL ENGINE mark, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and services of the parties. Each of these is a variable.
108. The Opponent submits that there is a ‘real tangible danger’ of deception or confusion in relation to the use of the Trade Mark having regard to:
- the similarity of the Trade Mark to the UNREAL ENGINE mark; and
- the overlap in the Applicant’s Services and the Opponent’s Services.
109. In reply the Applicant submits that there is no real, tangible danger of a reasonable number of people being caused to wonder whether a trade connection exists between the Trade Mark and the Opponent.
110. The UNREAL ENGINE mark is inherently distinctive and its reputation is strong. With respect to the degree of similarity between the trade marks, UNREIL STUDIO and UNREAL ENGINE share a degree of both similarity and dissimilarity as described below:
·both marks contain two words, the first word in each mark being aurally identical and visually very similar namely UNREAL and UNREIL;
·the second word is very different aurally and visually and the meanings of the individual words STUDIO and ENGINE are very different;[49]
[49] The Macquarie Dictionary Online defines ‘engine’ as, inter alia, ‘any mechanical contrivance’ (def 3) and ‘a driving force’ (def 5).
·there is some commonality of connotation as UNREIL STUDIO connotes a place where creatives of advertisements, music, programs, artists etc create and UNREAL ENGINE in the gaming world, connotes a development environment that provides tools such as software, and frameworks to create video games. The commonality is a benefit to the creative mind;
·ENGINE has low distinctiveness in respect of the Used Goods and Services; and
·STUDIO has low distinctiveness in respect of many of the Applicant’s Services.
111. In light of the above, I consider there is a relatively equal degree of similarity and dissimilarity between the Trade Mark and UNREAL ENGINE.
112. With respect to the services to which the Trade Mark will be used, the Applicant’s Services are wide ranging including advertising, marketing and promotional services, organising business competitions and commercial events, retail services, live show production services and a variety of music related services.
113. I have found that the UNREAL ENGINE mark has a reputation in respect of the Used Goods and Services which is not limited to the gaming industry as it can and has been used in a number of other industries such as film and television, architecture, simulation etc. However, I consider that the Applicant’s Services are not services to which the reputation of the UNREAL ENGINE mark extends. Nor are they services which have a particular nexus to the Used Goods and Services. Although s 60 does not require the UNREAL ENGINE mark to have acquired a reputation relevant to the specific services of the Trade Mark, the differences between the Used Goods and Services for which there is a reputation, and the Applicant’s Services is one factor to consider when deciding whether confusion is likely.[50]
[50] GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519, [148] and [169] (Markovic J), citing Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [208] (Lander J). See also, Monster Energy Company v Mixi Inc [2020] FCA 1398 (Stewart J) (‘Monster’) and Qantas (n 41) [142].
114. I am not satisfied that there is a close nexus between the Applicant’s Services and the Used Goods and Services associated with the reputation of the UNREAL ENGINE mark and while this may not be a determinative factor, the risk of confusion is less than it may have been if there was a close nexus.
115. I do not believe there is a real and tangible risk of consumers of the Applicant’s Services, knowing of the UNREAL ENGINE mark, being induced, left in doubt or caused to wonder whether the Applicant’s Services have the same origin or are connected in some way to the Used Goods and Services. In reaching this conclusion I have taken into account that the distinctiveness of the UNREAL ENGINE mark, the nature of the Used Goods and Services in which the UNREAL ENGINE mark has a reputation, the nexus of these goods and services with the Applicant’s Services and the degree of similarity between the UNREAL ENGINE mark and the Trade Mark.
116. As I am not satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers, the s 60 ground of opposition has not been established.
Section 42(b)
117. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
118. In its SGP, the Opponent lists breach of the Australian Consumer Law (‘ACL’) and passing-off
119. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[51]
[51] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster (n 49) [33].
120. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
121. Justice Hill in ReEquity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) 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.[52]
[52] [1989] FCA 506, [40] (citations omitted).
122. For the s 42(b) ground of opposition, the Opponent seeks to rely on the reputation in the Unreal Marks which I have already discussed in relation to the s 60 ground of opposition. Further, as already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for the Applicant’s Services is likely to cause deception or confusion. It follows that on the stricter test of the ACL,[53] I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading representation under ss 18 and 29 of the ACL. As I am not satisfied that ss 18 and 29 of the ACL would be contravened, it also follows that I am not satisfied that use of the Trade Mark would amount to passing off.[54] Therefore, use of the Trade Mark would not be contrary law under the ACL or by the common law of passing off.
[53] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).
[54] ReEquity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
123. I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has not established the ground of opposition under s 42(b).
Section 62A
124. Section 62A provides:
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.
125. In summary, the SGP claims that as a result of Opponent’s extensive use of its Unreal Marks, the Applicant would have been aware of these marks at the time of filing the Application and has, therefore, acted in bad faith.
126. For this ground of opposition, I am required to decide what the Applicant knew at the time of filing the Application and then, in the light of that knowledge, whether the act of filing the Application fell short of acceptable commercial behaviour.
127. There is nothing in the Opponent’s evidence that might support an argument that the Applicant filed the Application in bad faith. There is no evidence that the Applicant was aware of the Unreal Marks at the time of filing. Even if I were to accept that the Applicant was aware, this alone does not provide a sufficient basis to conclude that the Application was made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[55]
[55] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
128. As such, I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Resolution of Opposition
129. In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[56]
[56] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
Given the breadth of goods and services claimed in the Application, I considered it appropriate to offer the Applicant the opportunity to amend the Applicant’s Services to delete the Conflicting Services. However, while the s 44 ground was only successful in respect of the Conflicting Services, I considered that the only way that the Conflicting Services can functionally be excised is to also delete ‘discount store services (wholesale or sales promotion services)’ (‘Additional Services’) from class 35. Therefore, for the Application to proceed, these Additional Services also required removal from the Application.
132. On 22 November 2024 I provided the Applicant with an opportunity to amend its application for Trade Mark No. 2317802 to remove the Conflicting Services and the Additional Services, being the following services in class 35:
Online retail services; Retail services; Retail services for goods (by any means); Discount store services (retail, wholesale, or sales promotion services)
which it did on 24 November 2024.
133. The amendment has now been made. On that basis, trade mark application 2317802 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 Applications should be in accordance with the Court’s order or direction.
Costs
134. Both parties have sought its costs in this matter but as both parties have had a degree of success, I decline to award costs.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 November 2024
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
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Statutory Interpretation
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