Epiq Systems, Inc v Documatics Australia Pty Ltd

[2013] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Epiq Sytems, Inc to registration of trade mark application 1259930(9, 35) - DOCUMATICS - filed in the name of Documatics Australia Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Fiona Brittain of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant: No representation or written submissions

Decision:

76 ATMO 2013

Section 52 opposition to registration – ss 42(b) and 60 grounds pressed - neither ground of opposition established – application to proceed to registration

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Documatics Australia Pty Ltd (‘the Applicant’) details of which appear below:

Application No:  1259930

Priority Date:  1 September 2008

Services:Class 9: Computer software, including computer software for use in document management, time management, billing and document generation

Class 35: Business management, including business management in the field of document management; business administration

Trade Mark:  DOCUMATICS (‘the Trade Mark’)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 15 January 2009.

2. Having been granted an extension of time to do so, on 14 July 2009, Epiq Sytems, Inc (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 41, 42(b), 58, 59, 60 and 62A of the Act. However, only the section 42(b) and section 60 grounds were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have not been established and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.

3. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]

   [1] See 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] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

4. The date at which a ground of opposition must be established is the date of filing of the application for registration, 1 September 2008: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 28 June 2013.  Fiona Brittain of Davies Collison Cave, Patent and Trade Mark Attorneys, represented the Opponent by telephone.  The Applicant was not represented at the hearing and did not file any written submissions. David Boland of the Applicant attended the hearing as an observer.

1. The following evidence was filed and served in accordance with relevant legislation:

8.     Declarant	9.     Position	10.   Date Made	11.   Exhibits
Evidence in Support
Jayne Rothman (“Rothman”)	Corporate Counsel of Opponent	13.04.10	JR-1 to JR-11
Evidence in Answer
Darren Kelly (“Kelly”)	Director of Applicant	04.01.11	OT-AU01-01 to OT-AU01-09
Evidence in Reply
Fiona Mary Brittain (“Brittain”)	Solicitor of Attorneys for Opponent	06.05.11	FMB-1 to FMB-5

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

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

60. 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.

1. To satisfy section 60 the Opponent must establish:

• that another trade mark had, before 1 September 2008, acquired a reputation in Australia in respect of particular goods/services; and

• because of the reputation of that other trade mark, the use of the Applicant’s trade mark would be likely to deceive or cause confusion.

1. The Opponent relies upon its trade mark DOCUMATRIX, which it uses in connection with software in the field of electronic discovery, litigation, and document management [see Rothman, at paragraph 2]. The DOCUMATRIX trade mark was not registered in Australia as at 1 September 2008.

2. Ms Brittain submitted that 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;

• 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.

1. Therefore, I should first determine if the opponent has acquired a reputation in Australia for its DOCUMATRIX trade mark. This is more than merely indicating prior use; the opponent’s trade mark needs to be “associated in the minds of the Australian public”[2].

   [2] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

2. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

1. At 129 Kenny J continues:

   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: …

2. In assessing the degree of reputation, I take into account the specialist nature of the market for software in the field of electronic discovery, litigation, and document management.

3. I am satisfied that the Opponent and its predecessor (NMatrix Ltd) developed and marketed software in the field of electronic discovery, litigation, and document management since 1996 in the United States, United Kingdom, Brussels and Hong Kong (Rothman at [2]). Such software is used by law firms, corporate legal departments, trustees, government agencies (Rothman at [3]).

4. During the period 2004 to 2006 NMatrix Ltd operated an office in Melbourne (Rothman at [7]). During this time, NMatrix engaged an Australian company, Exa Business Technology, to construct an integrated website solution, which was to be easy to use by non-IT professionals and optimized its recognition by search engines, for NMatrix in Australia. (Rothman at [9], Exhibit JR-5).

5. In 2005, the Opponent acquired NMatrix and changed its name to Epiq Systems Ltd in 2007. The Australian subsidiary based in Melbourne was dissolved in 2008 (Rothman at [1]).

6. The Opponent exhibited at JR-3 a selection of web pages from 1999 to 2010 used by the Opponent as NMatrix and Epiq Systems. Webpages from 2005 and 2006 indicate Melbourne as one of the company’s offices.

7. Exhibit JR-4 to Rothman again shows the Opponent’s 2004 and 2006 website, which again indicates that NMatrix operated in Melbourne. The banner to the website includes a distinctive rendition of the company name:

8. The software products offered on the website were:

• DocuMatrix

• eDataMatrix

• CaseMatrix

1. In Exhibit JR-2, undated promotional material for the Opponent shows at page 10, its “overview” page, a “LegalMatrix product suite” comprising:

• ClaimsMatrix

• DebtorMatrix

• DocuMatrix

• eDataMatrix

1. The Opponent’s evidence indicates that the Opponent is a United States software company that provides its goods and services to United States clients, some of which are said to operate offices in Australia.

2. Although it is clear that the Opponent operated an office in Melbourne, and Exhibit JR-5 does establish trade mark use in Australia in 2004, the evidence does not demonstrate any measurable level of use of the DOCUMATRIX trade in Australia.

3. For example, while the Opponent accepted Exa Business Technology’s quote to establish the website development in Australia, there is no evidence of any further business activity as a result of the quote. For example, one would expect invoices to have been created, web statistics, and content such as press releases and articles published on the website. Apart from invoices, the other items are all detailed as being part of the services provided by Exa.

4. Exhibits JR-7 to JR-9 demonstrate that the Opponent has sold DOCUMATRIX products to US clients that have international offices, including Australia. There is no evidence of such sales occurring in Australia, nor is there evidence of sales to Australian law firms or similar Australian clients.

5. I am not satisfied that the DOCUMATRIX trade mark had, before 1 September 2008, acquired a reputation in Australia in respect of its goods and services. Consequently, this ground of opposition has not been established.

Discussion – section 42(b) ground of opposition

1. Section 42 of the Act relevantly provides:

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

   (a) …
   (b) its use would be contrary to law.

2. The Opponent submitted that use of the Trade Marks would constitute misleading and deceptive conduct in contravention of section 18 of the Australian Consumer Law (“ACL”), false representations as to sponsorship, approval or affiliation in contravention of section 29(1)(a) of the ACL, and passing off.

3. Following the decision in Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (‘Advantage’)[3] delegates of the Registrar of Trade Marks have considered grounds under subparagraph 42(b) where use of an opposed trade mark is alleged to be contrary to laws other than the Act.

   [3] [2001] FCA 683.

4. The ACL came into effect on 1 January 2011. As this date is after the priority date this act is not applicable to this opposition. Section 52 and ss 53(c) and (d) are the corresponding sections of the Trade Practices Act 1974 (‘the TPA’) in force at the priority date. I will, therefore, consider the ground of opposition under s 42(b) in respect of those provisions. The Opponent has also submitted that use of the Applicant’s Trade Mark would be contrary to law because it would amount to passing off of the Applicant’s goods. As will be seen below, a failure to show a sufficient reputation for the purposes of s 60 of the Act means that the Opponent’s ground of opposition under s 42(b) fails also.

5. I will consider firstly s 52 of the TPA which prohibits conduct by a corporation that is misleading or deceptive or is likely to mislead or deceive. In Re Equity Access Pty Limited v Westpac Banking Corporation, Hill J discussed the relevance of reputation in considering misleading and deceptive conduct for the purpose of s 52. His Honour stated:[4]

   In a case such as the present [the Opponent] must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of [the Opponent’s] business in a particular country or geographical area.

It is clear from this quote that the establishment of a sufficient reputation in respect of a trade mark is necessary for a finding of misleading or deceptive conduct under s 52 of the TPA. In the present matter the Opponent has failed to establish a reputation for the purposes of s 60 of the Act. For the same reasons as discussed in respect of s 60 I am not satisfied that the Opponent has established a reputation sufficient for the purposes of s 52 of the TPA. I now turn to ss 53(c) and (d) of the TPA.

[4] [1989] FCA 506, [41].

1. Where a trade mark does not run afoul of s 52 of the TPA, neither will it run afoul of s 53 nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[5] Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that

   [t]he 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.

   [5] [2003] FCA 104, [107].

2. For these reasons I am not satisfied that use of the Applicant’s trade mark would be contrary to law for the purposes of s 42(b).

Decision

1. Section 55(1) of the Act provides:

   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.

2. I have found the opposition to be unsuccessful on any of the grounds raised. The trade mark application may then proceed to registration 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 the appeal has been decided or discontinued.

Costs

1. In the event that the Opponent’s prevailed, Ms Brittain sought an award of costs in the Opponent’s favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against Opponent the in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

20 September 2013