FetchTV Pty Ltd v LemonStone Group Pty Ltd

[2014] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by FetchTV Pty Ltd to registration of trade mark applications 1449583(42) FETCH A NATURAL RESOURCE Logo, and 1452454(42) FETCH SEARCH SOLUTIONS - filed in the name of LemonStone Group Pty Ltd.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Gabriella Rubagotti of Counsel instructed by Cooper Mills, Lawyers

Applicant: Alan Nash of Counsel instructed by Baker & McKenzie

Decision:

2014 ATMO 2

s52 opposition: s44 – prior registrations owned by a person other than the Applicant - services of same description – closely related goods – technological convergence – consumer expectations – trade marks either substantially identical or deceptively similar.

Registration refused

Background

1. These matters are opposition proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’).  The proceedings concern opposition to the registration of the two trade marks which appear below which have been filed in the name of LemonStone Group Pty Ltd (‘the Applicant’):

   Application No: 1449583

   Priority Date:  21 September 2011

   Services:Class 42: Design and development of search engines; operating search engines; providing search engines for the internet; provision of search engine services

   Trade Mark:  

   
   

   Application No: 1452454

   Priority Date:  6 October 2011

   Services:Class 42: Design and development of search engines; operating search engines; providing search engines for the Internet; provision of search engine services; search engine feeder services

   Trade Mark:  FETCH SEARCH SOLUTIONS

2. I will refer to the above collectively as ‘the Opposed Applications’ and ‘the Opposed Trade Marks’.  Where I need to refer to the Opposed Trade Marks individually, I will term them ‘FETCH A NATURAL RESOURCE’ and ‘FETCH SEARCH SOLUTIONS’ and the services in respect of which registration is sought as being ‘the Applicant’s services’.  I note that the two specifications which constitute the Applicant’s services are, with the exception of ‘search engine feeder services’ which appears in the specification of 1452454, identical.

3. The Opposed Trade Marks were examined in compliance with section 31 of the Act, then accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 12 January 2012 and 2 February 2012 respectively.

4. On 9 February 2012 FetchTV Pty Ltd (‘the Opponent’) filed Notices of Opposition (‘the Notices’) to the registration of the Opposed Trade Marks. The Notices included reference to the grounds under sections 44 and 60 of the Act which were subsequently argued at a hearing of the matters.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 10 December 2013.  The Opponent was represented by Gabriella Rubagotti of Counsel instructed by Baker & Mackenzie.  Alan Nash of Counsel instructed by Cooper Mills, Lawyers represented the Applicant.

   Onus

6. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13] . and, more recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) per Bennett J at [13].

   Evidence

7. The evidence served in these matters comprises the following statutory declarations:

   ·    Scott Lorson dated 4 September 2012 (in support)

   ·    Ian Halson dated 8 March 2013 (in answer)

   ·    Sue Brenchley dated 4 September 2013 (in reply)

8. In addition, the Opponent filed various documents with the Registrar on 6 June 2013 in response to a Notice to Produce.

   Evidence

9. Mr Lorson is Chief Executive Officer of the Opponent.  He states that the Opponent uses the trade marks FETCH and FETCHTV in relation to satellite and cable television services:

   The Opponent was founded in Australia in 2008 by Simon Cathcart and Gary Walker. The Opponent is owned by Media Innovations (Pte) Ltd, a Singapore incorporated company, of which the majority shareholder is Astro All Asia Digital Networks Pte Ltd, a Malaysian company.

   The Opponent is an Australian wholesale subscription television ("TV") provider. Its subscription TV services are provided over the networks of Internet Service Providers via a broadband connection, with the ability to deliver to a range of devices, such as televisions, mobile devices, tablets and connected TVs. Currently, the service is delivered to a set top box for viewing on a television. Delivery of TV services in this manner is sometimes referred to as Internet Protocol TV ("IPTV"). As at 30 June 2012, there were 31,834 subscribers to the Opponent's services offered under the Trade Marks.

   [The Opponent] markets and distributes its subscription TV services via partnerships with leading Australian Internet Service Providers ("ISPs"), including iiNet, Netspace, Westnet, Internode, Optus, Adam Internet, mytelecom and TransACT (Victoria) (the "ISP Partners"). The Opponent's services are made available to customers of the ISP Partners who receive their broadband from that ISP Partner. In the case of Optus, the Opponent's services are also available to customers of Optus who receive their broadband from other ISP Partners (the so-called "OTT delivery").

10. Concerning the scope of the Opponent’s services, Mr Lorson says:

    The Trade Marks are used in relation to all of the Opponent's subscription TV services. These include the provision of access to digital free to air TV channels, subscription TV channels, video on demand ("VOD") and pay per view content, and other interactive content (collectively, the "Services"). The interactive content consists of several games, and applications that allow subscribers to access key features of popular websites (such as Facebook, Twitter and YouTube) via their TV. Subscribers are provided with a Set Top Box ("STB") and remote control which are used to access, control and interact with the Services. The STB also contains a Personal Video Recorder ("PVR") that can be used to record free to air programming.

11. As this decision is one under section 44 of the Act, further discussion of the use of the Opponent’s trade marks is not necessary.

12. The registrations on which the Opponent relies are:

    Registration No:              1287104

    Priority Date:  25 February 2009

    Goods/Services:              Class 9: Apparatus for recording, transmission or reproduction of sound or images; computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; televisions apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, adaptors, couplings, cables, parts and accessories; equipment for receiving digital television program signals and interactive broadcasting services; personal digital recorders; personal video recorders; hard drives; magnetic data carriers; video cassettes, tapes and discs; audio cassettes, tapes and discs; CD-ROMs and DVD-ROMs

    Class 38: Telecommunication services; audio and visual broadcasting services; transmission of television and interactive audio and video services; broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable, satellite and/or multipoint distribution systems and/or networks (including the Internet); providing telecommunications links to the Internet; webcasting and datacasting; interactive broadcasting services; interactive audio services; providing music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; providing interactive access to music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; leasing access time to computer global networks; providing access to a digital path via wired or wireless or broadcast or electronic telecommunications transmission network; providing on-line computer services and access thereto

    Class 41: Entertainment services; provision of education, entertainment, sporting and cultural activities; personalized and interactive entertainment services in the nature of providing personalized television programming and interactive television programming and games; entertainment services being the digital recording of television programs for delayed, interactive and personalised viewing; provision of information concerning entertainment, news and current affairs, including such services provided via a global communication network (including the Internet and/or a interactive broadband delivery system); computer and digital imaging services; digital image processing services; post production services in relation to film, television, advertisements and other audio visual media

    Trade Mark:  FETCH

    Endorsements:                Provisions of paragraph 44(3)(b) and/or Reg 4.15(3)(b) applied.

    Registration No:              1304234

    Priority Date:  12 June 2009

    Goods/Services:              Class 9: Apparatus for recording, transmission or reproduction of sound or images; computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; televisions apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, adaptors, couplings, cables, parts and accessories; equipment for receiving digital television program signals and interactive broadcasting services; personal digital recorders; personal video recorders; hard drives; magnetic data carriers; video cassettes, tapes and discs; audio cassettes, tapes and discs; CD-ROMs and DVD-ROMs 

    Class 38: Telecommunication services; audio and visual broadcasting services; transmission of television and interactive audio and video services; broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable, satellite and/or multipoint distribution systems and/or networks (including the Internet); providing telecommunications links to the Internet; webcasting and datacasting; interactive broadcasting services; interactive audio services; providing music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; providing interactive access to music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; leasing access time to computer global networks; providing access to a digital path via wired or wireless or broadcast or electronic telecommunications transmission network; providing on-line computer services and access thereto 

    Class 41: Entertainment services; provision of education, entertainment, sporting and cultural activities; personalized and interactive entertainment services in the nature of providing personalized television programming and interactive television programming and games; entertainment services being the digital recording of television programs for delayed, interactive and personalised viewing; provision of information concerning entertainment, news and current affairs, including such services provided via a global communication network (including the Internet and/or a interactive broadband delivery system); computer and digital imaging services; digital image processing services; post production services in relation to film, television, advertisements and other audio visual media 

    Trade Mark:  FETCHTV

    Registration No:              1304238

    Priority Date:  12 June 2009

    Goods/Services:              Class 38 Telecommunication services; audio and visual broadcasting services; transmission of television and interactive audio and video services; broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable, satellite and/or multipoint distribution systems and/or networks (including the Internet); providing telecommunications links to the Internet; webcasting and datacasting; interactive broadcasting services; interactive audio services; providing music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; providing interactive access to music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; leasing access time to computer global networks; providing access to a digital path via wired or wireless or broadcast or electronic telecommunications transmission network; providing on-line computer services and access thereto 

    Class 41: Entertainment services; provision of education, entertainment, sporting and cultural activities; personalized and interactive entertainment services in the nature of providing personalized television programming and interactive television programming and games; entertainment services being the digital recording of television programs for delayed, interactive and personalised viewing; provision of information concerning entertainment, news and current affairs, including such services provided via a global communication network (including the Internet and/or a interactive broadband delivery system); computer and digital imaging services; digital image processing services; post production services in relation to film, television, advertisements and other audio visual media 

    Trade Mark:  GOFETCH

    Registration No:              1321489

    Priority Date:  12 June 2009 (Divisional of 1304238)

    Goods:Class 9: Apparatus for recording, transmission or reproduction of sound or images; computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; televisions apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, adaptors, couplings, cables, parts and accessories; equipment for receiving digital television program signals and interactive broadcasting services; personal digital recorders; personal video recorders; hard drives; magnetic data carriers; video cassettes, tapes and discs; audio cassettes, tapes and discs; CD-ROMs and DVD-ROMs 

    Trade Mark:  GOFETCH

13. Ian Halson is a director of the Applicant.  Mr Halson explains:

    Since 1998, the Applicant (and its predecessor) has been in the business of developing software. In particular, the Applicant has developed proprietary search engine software for use in conducting searches of a website or network of websites.

    The Applicant's past clients have included, for example, Biota Pharmaceutical, Lemame Corporation, Victorian Canine Association and the Applicant's proprietary search engine software was been deployed on those clients' websites.

    The Applicant's search engine software is currently being used by Jetpets Animal Transport (and has been since around 2005), online gift retailer OzGifts (and has been since 1998) as well as on one of Australia's largest network of pet and animal related websites (and has been since around 1998).

    On 4 December 2008, the Applicant registered the domain name <fetch.com.au> (the Domain Name). The Domain Name and the applied-for trade marks are to be used in connection with a general internet search engine that the Applicant has been developing.

    At the time of registering the Domain Name the Applicant had no knowledge of the Opponent or the Opponent's business and, in any event, the Opponent was not known as FetchTV at that time.

14. Mr Halson’s declaration leaves a number of significant questions unanswered: for example, the more relevant dates as far as the Opposed Applications are concerned are the dates on which the Opposed Trade Marks were first used, rather than the date on which the domain name was registered.  And, at the time of adopting the Opposed Trade Marks, what is more significant than Mr Halson’s knowledge of the Opponent’s name is knowledge of the Opponent’s trade marks.

    Section 44

15. Absent evidence which addresses the provisions of subsections 44(3) or 44(4) subsection, 44 of the Act relevantly provides:

    44Identical 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.

    Note 1:For deceptively similar see section 10.

    Note 2:For similar services see subsection 14(2).

16. The priority dates of the Opponent’s registrations are earlier than those of the Opposed Applications.  Accordingly, it remains for me to decide whether the Applicant’s Services are similar to those of the Opponent’s registrations or closely related to the goods in respect of which the Opponent’s trade mark is registered and whether the trade marks of the parties are either substantially identical or deceptively similar.

17. In Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) French J said at [39]:

    The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

    "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

18. The assessment of the likelihood of deception or confusion is informed by the factors referred to in Woolworths by French J who said at [50]:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

1. The principle at item (v), above, and the words of Mason J in the Bali Bra case in particular, apply with equal facility to both the Applicant’s services and the Opponent’s goods and services.

2. Thus, in considering these initial questions of the similarity of the goods and services of the parties, I am to consider the specifications of goods or services of the parties at their widest.  Such considerations are not to be fanciful or extreme but are to apply normally and fairly to all of Applicant’s services or Opponent’s goods and services and (with one exception which does not apply here)[2] I am to disregard any knowledge of the goods or services on which the trade marks under consideration are in fact used.

   [2] That exception is if the trade mark relied upon by the Opponent is ‘notorious’ C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 [52]

3. Again in Woolworths French J said of this principle at [88]:

   It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

4. Accordingly, while Mr Nash argued at the hearing that the parties’ specifications of goods and services should be narrowly construed, I do not agree.  Similarly, while he was critical of the Opponent’s evidence which might go to the range of technical know-how which lies behind the Opponent’s specifications of goods and services (which he stated to be relevant to the assessment of the similarity of the parties’ services and the ‘relatedness’ of the Opponent’s goods to the Applicant’s services), I am not persuaded that this is a relevant factor since what I am to consider is the notional use of the trade marks in relation to all of the goods and services claimed as opposed to the actual range of goods and services on which the trade marks are used.  Since the goods as described in the relevant specifications are to be notionally considered, the technical complexity of the goods on which the Applicant actually uses its trade marks are not a primary consideration although, conversely, evidence of actual use might in some cases be illustrative of any alleged similarity.

5. In addition, the Applicant’s services on the face of it includes the design and operation of all search engines – including search engines which search sounds,[3] images,[4] video,[5] television programmes[6] and movies[7].  The postulation of such search engines is not fanciful – these search engines already exist as illustrated by the footnoted examples.

   [3] www soundjax.com/‎

   [4] video.search.yahoo.com/‎; >

   A search engine is a piece of computer software which is designed to find and retrieve information from a data set which might be as small as that within a laptop or PDA or as large as that within the publically available Internet[8].  Wikipedia® gives the definition:

   A web search engine is a software system that is designed to search for information on the World Wide Web. The search results are generally presented in a line of results often referred to as search engine results pages (SERPs). The information may be a specialist in web pages, images, information and other types of files. Some search engines also mine data available in databases or open directories. Unlike web directories, which are maintained only by human editors, search engines also maintain real-time information by running an algorithm on a web crawler.

   [8] At 13 December 2013 the size of the Internet was 2.01 billion pages: >

   Oxford Dictionaries[9] defines ‘search engine’ as:

   Computing

   a program that searches for and identifies items in a database that correspond to keywords or characters specified by the user, used especially for finding particular sites on the World Wide Web.

   [9]

6. The closest that the Opponent’s services come to those of the Applicant in my estimation are those described as:

   broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable, satellite and/or multipoint distribution systems and/or networks (including the Internet); providing telecommunications links to the Internet; webcasting and datacasting; interactive broadcasting services; interactive audio services; providing music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission; providing interactive access to music, video, data and information in various fields by means of wired or wireless broadcast or electronic transmission;

7. Are the above services (‘the Opponent’s services’) similar services to the Applicant’s services?

8. The expression ‘similar services’ is defined within section 14 of the Act:

   14Definition of similar goods and similar services

   […]

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

9. What may constitute services of the same description was discussed in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39,051 by Burchett, Sackville and Lehane JJ (at IPR 567):

   Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID 's mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 ALJ 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) ("TM Act 1955 "), although the expression "services of the same description as [services in respect of which the trade mark is registered]" was used in the earlier legislation: see TM Act 1955 , ss 33(2), 36(1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

   "There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek's Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...'. "

   Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) [‘Polo’] Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

   "In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase `goods of the same description' ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

   We accept that these principles, subject to any necessary modification, apply in relation to services.

10. A further factor which is at work here is ‘convergence’ – this factor results in both the blurring of consumer categories and a widening of consumer expectations.  This phenomenon was referred to in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 by Bennett J at [196]-[200][10]:

    “Convergence” combines the benefits of one particular product and the technology associated with that product with another product in order to expand the applications of the original product and produce a superior consumer offering. Computer manufacturers have, since the early 1980s, incorporated audio and visual functions into computers. This has been in parallel with the transition in the perception and use of computers from business tools to more consumer oriented devices, as a result of the incorporation of entertainment features and enhancement of the functions of computers. One example is the ability to download images from digital cameras and music. Pioneer KK says that, at least by the end of the relevant period, computers have been regarded by consumers as tools for home entertainment, information gathering and communication.

    Pioneer KK does not dispute that computers are a recognisable class of products but relies on the fact that different types of equipment can contain the same information. Pioneer KK’s witnesses describe this as a “blurring” of categorisation.

    Pioneer KK relies on articles that have appeared from 1994 to 2007 in various publications, including newspapers and computer journals such as Computer Reseller News. These are not relied upon for the truth of their content but it is not in dispute that such comments were made in Australia. For example, in an article published in The Sydney Morning Herald in January 2000, comments are made as to the likely connections between television on the one hand and the Internet and video games on the other and the use of televisions as ‘a central one-stop shop for information and interaction’. The distinction is drawn between the content of television as a medium and the use to which television sets will be put. The prediction is made that (in 2000) the trend is towards the use of a single television screen for watching television and also using the Internet and accessing data services. This was termed “convergence”.

    Convergence was also discussed in an article in The Australian on 21 October 2003 on “home entertainment”. Convergence technology can be described, as it was in The Courier Mail on 28 April 2007, as a situation where one unit has several purposes. This can be achieved by putting personal computer (PC) components into a television, or by using laptop personal computers in the customisation of entertainment and information hardware. Mr Blanket, a lecturer in advertising and marketing at the Macquarie Graduate School of Management, describes convergence as a ‘product/technical concept that overtime “blends” or combines the benefits of one particular product (and the technology associated with that product) with another product in order to expand the applications of the original product and produce a superior consumer offering’.

    Digital technology enables the transfer of data, images and sound across different types of equipment. Home entertainment systems reproduce sounds and images but this does not represent the extent of their use. As Mr Bartlett explains, 10 to 20 years ago computers were sold and used as business devices whereas audio-visual products were considered to be for entertainment. This has changed. Today, computers are more oriented to entertainment. Media centres function as computers but are built to look like audio-visual equipment for use in the home and can be used for storage of data including sounds and images. Data that can be stored in a computer can also be stored on a CD or DVD.

    [10] Albeit in relation to the exercise of the Registrar’s discretion in terms of subsection 101(3) of the Act.

11. With regard to consumer expectations and perceptions, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 Moore, Edmonds and Gilmour JJ stated at [71]:

    It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of  Burchett  J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark: …

12. The Court went on to quote the passage from Polo which appears at paragraph 29, above.

13. Accordingly, in considering whether the services of the parties are services of the same description, I am to consider the factors referred to in Southern Cross, above: the nature and characteristics of the services, their origin, their purpose, whether they are usually offered by one and the same trader or distributed via the same person, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.  In addition, I am to consider the issue from the point of view of the likely consumer of the services and whether they are likely to be led to believe that the services offered by the Applicant are in fact the services of the Opponent.

14. Thus the context of the consideration is one where desktop computers may be used as television sets and television sets may be used as computers or web browsers, and where there is also convergence between the services offered by Internet based entertainment companies and satellite or cable television services.  It is likely, in my consideration, that services which include the broadcasting or provision of software,[11] which software may include search engines, (particularly if offered by a cable television company a part of whose services are already Internet based), are of the same description as the provision of search engines particularly those which are designed to find sounds, pictures, television programs, films, or the like.  It is natural, I consider, that a person seeing Internet search engines and the Opponent’s services both provided as services under the same or a very similar trade mark either via an interactive cable television service or via the Internet (either of which may be assessed through the same set) would assume that the search engine had a common origin – particularly if the search engine were designed for the same purpose.

    [11] Included within the Opponent’s specification  ‘transmission of television and interactive audio and video services; broadcasting and reception of television programmes, radio, cable television, computer programmes and signals (digital and/or analogue) by means of cable,’

15. Accordingly, I consider that the Opponent’s services are services of the same description as ‘operating search engines; providing search engines for the Internet.’

16. I turn now to the question whether the Applicant’s services are closely related to the Opponent’s goods, in particular the goods described as ‘computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; television apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, adaptors, couplings, cables, parts and accessories; equipment for receiving digital television program signals and interactive broadcasting services; personal digital recorders; personal video recorders; hard drives’ (‘the Opponent’s goods’).

17. In Re Aussat Pty Ltd [1993] ATMO 55; 27 IPR 309; [1993] AIPC 39-440, (‘Aussat’) I referred to a number of factors which may be of relevance in assessing whether goods and services are closely related:

    Just how the question of closely related goods and services is to be assessed has not been the subject of detailed analysis by the courts. Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 145; (1983) 1 IPR 265 is one case that has been before the courts. Lockart J. in his decision suggested some examples of 'closely related' goods and services but did not suggest any unifying tests. In American Express Co v N.V. Amev (1985) AIPC 90-258, the Hearing Officer found that travel services are 'closely related' to printed magazines because the 'free' magazines by which travel agencies promote their business have the look of travel magazines. Finally, in Rowntree PLC v Rollbits Pty Ltd (1988) 10 IPR 539, Needham J. stated that, as Rollbits' goods were 'goods of the same description' as Rowntree's goods, the restaurant and retail food services that Rollbits performed in relation to their goods were 'closely related' to Rowntree's goods.

    I believe that the tests must lie in the adoption of criteria similar to those oft quoted from John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369 at 372 , adopted by the High Court in Reckitt and Colman (Aust) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94. I believe that these criteria should include:

    . are the services performed directly upon or by means of the goods? if so,

    . are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?

    In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:

    . are the goods and services of matching technical complexity?

    . is the technical training of the people who make the goods or provide the services the same?

    . do the people who make the goods or provide the services belong to the same unions or associations?

    . are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services? (For example, in "vehicle hire services" and the goods "cars", there are the ancillary personnel common to both, such as car detailers, mechanics, salespersons, credit checkers, and so on which give both the same flavour).

    . do the goods usually have this service as a related service agreement or package? For instance, it would be most unusual for a person buying a very expensive piece of machinery not to enter some sort of service agreement. Conversely, are the goods usually offered as part of a service agreement?

    . is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? (Such as "transportation services" and "vehicles"; or, "vehicle hire services" and "vehicles"; or "restaurant and take-away food services" and "food").

    . does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements? (Such as "curtains and furnishings" and "the sewing of furnishings"). It must be observed that the person doing the service of sewing the furnishings is also exercising the same or very similar skills as were involved in making the curtains. Also, the installers of domestic and industrial equipment are often employed either directly or indirectly by the manufacturer.

    . are the goods and services commonly offered by the one company or organisation? (For example, "retail sales" and the equivalent "goods"; or, "telephone communication services" and "telephones").

    . are the goods a necessary adjunct to a particular service or the only tangible result of it? (For example, "advertising services" and "directories", or "publications"; or, "travel agency services" and "publications"; or "telephony services" and "directories").

    This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.

1. In a practical sense, the Opponent’s ‘computer … software for use in relation to the recording, transmission or reproduction of sound or images’ may be provided or distributed by the Internet and may include search engines which find and retrieve sound or images.  The search engines provided by the parties via the Internet may do exactly the same thing.  Further, it might not be obvious whether the purchase or use of either the Applicant’s goods or the Opponent’s service is in fact a use of goods or of services or a simultaneous use of both.  I do not consider that this is necessarily a question which would occur to the average consumer while sitting either in the lounge room before the television screen searching for a television program, musical recording or movie or at a desk before their computer performing a similar search.

2. In addressing the criteria in Aussat, the computer search engine services may be performed directly upon or by means of computer hardware and software for use in relation to the recording, transmission or reproduction of sound or images; communication devices; television apparatus and equipment; apparatus and equipment for use with televisions and television set top units and receivers; television and telecommunications receiving equipment, video and audio products and apparatus including set top units, equipment for receiving digital television program signals and interactive broadcasting services, (and in particular computer software for use in relation to the recording, transmission or reproduction of sound or images).  The goods and services (both being computer programs) are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry.  The goods of the Applicant and services of the Opponent are, or may be, delivered to the consumer via the exact same medium, as an adjunct to a satellite or cable television service via satellite and/or the Internet.

3. Under the above circumstances I consider that it is unrealistic to conclude other than that the public would consider that the Opponent’s goods and the Applicant’s services have a common trade origin.

4. Accordingly, I consider that the Opponent’s goods are closely related to the services ‘Design and development of search engines; operating search engines; providing search engines for the internet; provision of search engine services’ of the Applicant.  While the Applicant argued that the expression ‘the provision of search engine services’ has a technical meaning – that of the promotion of websites – I consider that I must also consider the expression on its plain English meaning.

5. I turn now to a consideration of the similarity of the trade marks of the parties.  For the sake of brevity I will consider only the Opponent’s trade marks 1287104 FETCH and 1304234 FETCHTV.

6. The classic test of substantial identity is stated in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 (‘Shell’) by Windeyer J. at [12]:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

7. Are the Applicant’s trade marks, FETCH A NATURAL RESOURCE and FETCH SEARCH SOLUTIONS, substantially identical to the Opponent’s trade marks FETCH and FETCHTV when compared side by side?

8. Mr Nash suggested that the trade mark FETCHTV is invented and thus ought not to be found to be substantially identical to either of the Applicant’s Trade Marks on the basis that it is thus readily distinguishable.  However, the formation of the trade mark FETCHTV results from a mere elision of a space or a conjoining of the words ‘fetch’ and ‘tv’ rather than invention[12] and, in my consideration, the word ‘fetch’ is the essential feature of the trade mark FETCHTV.  The elision or conjoining is not such that it alters the perception of either part of the trade mark such as it might with, for example, the words ‘in’ and ‘spire’ conjoined to form the putative trade mark INSPIRE.  Further, in relation to the Opponent’s goods and services, the abbreviation ‘TV’ so describes the goods and services as to be caught by the principle in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 where the trade marks CHOC CHILL and CHILL were, in effect, found to be substantially identical. The words ‘search solutions’ within the Applicant’s trade mark may be similarly heavily discounted.

   [12] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; (1956) 95 CLR 190; [1956] ALR 854; 1A IPR 470; Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) 72 CLR 175

9. Accordingly, I consider the Opponent’s trade marks FETCH and FETCHTV to be substantially identical to the Applicant’s trade mark FETCH SEARCH SOLUTIONS but not to the Applicant’s trade mark FETCH A NATURAL RESOURCE.  In the case of the latter of the Applicant’s two trade marks, the ‘paw prints’ which appear in the trade mark do not move it into the same category of trade marks as does the footprint in the BAREFOOT RADLER trade mark in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381, because the paw prints have a very indirect reference to the word ‘fetch’.

10. Deceptive similarity is to be assessed according to the test in Shell at [13]:

    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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

11. Should I be wrong in my assessment of the substantial identity of the Applicant’s trade mark FETCH SEARCH SOLUTIONS to the trade marks of the Opponent, I include both of the Opposed Trade Marks in my consideration of deceptive similarity.

12. Mr Nash suggested that the word ‘fetch’ has some utility in relation to search engines and may be discounted to some extent in the comparison of the trade marks of the parties.  However, prima facie the word ‘fetch’ appears to constitute only a faint allusion to the goods and/or services of the parties and the presence of the device of dog’s paw prints in the trade mark FETCH A NATURAL RESOURCE suggests that this is the Applicant’s own view.  The Applicant has not provided evidence that the word ‘fetch’ lacks inherent adaptation to distinguish in relation to the Applicant’s services or the Opponent’s goods and services.

13. The word ‘fetch’ is the dominant feature in the Opponent’s trade mark FETCHTV and the sole feature of its trade mark FETCH.  The word ‘fetch’ is the first word which occurs in the Opposed Trade Marks.  In London Lubricants (1920) Ltd's Appn (1925) 42 RPC 264 at page 279 Sargant L J observed:

    The only similarity in the word "Tripcastroid" to "Castrol" is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

14. The first or most prominent inherently adapted word in a composite trade mark that the eye alights upon or is spoken to identify, or refer to, the goods or services is also the most important “for the purpose of distinction”.  The word ‘fetch’ is on the face of it inherently adapted to distinguish the goods and/or services in question (FETCH is registered in its own right for the Opponent’s goods and services and was not rejected for lack of inherent adaptation).  The word ‘fetch’ is the feature of the trade marks of the parties which is likely to be remembered and recalled as uniquely indicating the goods and/or services.

15. I therefore consider that the Opponent’s trade marks FETCH and FETCHTV, if not substantially identical to the Applicant’s trade mark FETCH SEARCH SOLUTIONS, are deceptively similar to it.  I further consider that the Opponent’s trade marks FETCH and FETCHTV are deceptively similar to the Applicant’s trade mark FETCH A NATURAL RESOURCE.

    Conclusion

16. I have found that the Applicant’s services, namely those described as ‘operating search engines; providing search engines for the Internet; provision of search engine services’ are similar to the Opponent’s services and that the Applicant’s services are closely related to the Opponent’s goods.  I have also found that that the Opponent’s trade marks FETCH and FETCHTV are substantially identical to the Applicant’s trade mark FETCH SEARCH SOLUTIONS and additionally that, should I be wrong in that assessment, the Opponent’s trade marks FETCH and FETCHTV are deceptively similar to both of the Opposed Trade Marks.

17. Accordingly, Opponent has established its opposition in terms of subsection 44(2) of the Act.

18. The Applicant’s evidence inasmuch as it may address the use of the Opposed Trade Marks does not expressly address the provisions of subsections 44(3) or 44(4) of the Act.

    Decision

19. At the relevant date, subsection 55(1) of the Act provided:

    55 Decision

    (1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note: For limitations see section 6.

20. Having regard to the extent to which the ground under section 44 has been established, and (in terms of subparagraph 55(1)(a)) there being no condition or limitation which would permit registration of the Opposed Trade Marks in relation to the services now specified in the Opposed Applications, I refuse to register applications 1449583 and 1452454.

    Costs

21. The Opponent, having established its opposition, is entitled to its costs which I award against the Applicant at the official scale.

    Hearing Officer

    Iain Campbell Thompson

    Trade Marks Hearings

    10 January 2014