Fitzpatrick v Lethborg Services Pty Ltd

[2022] ATMO 69

TRADE MARKS ACT 1995

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

Re:Opposition by Bentley Systems, Incorporated to registration of trade mark application number 1970111 (class 42) - AssetWise - in the name of Lethborg Services Pty Ltd

Delegate:	Tracey Berger
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: Self-represented
Decision:	2022 ATMO 69 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 58, 59 and 60 – s 60 considered and established – registration refused.

Background

1. This is a decision on the opposition by Bentley Systems, Incorporated (‘Opponent’) to the registration of trade mark application number 1970111 (‘Application’) in the name of Lethborg Services Pty Ltd (‘Applicant’) filed on 22 November 2018 (‘Relevant Date’), for the trade mark AssetWise (Trade Mark’) in class 42 for “database design” (‘Services’). 

2. As required by the Trade Marks Act 1995 (Cth)[1], the Trade Mark was examined and accepted for registration.  Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 6 June 2019.

   [1]  Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. The Opponent filed a Notice of Intention to Oppose on 6 August 2019, followed by a Statement of Grounds and Particulars (‘SGP’) on 6 September 2019.  The Applicant filed a Notice of Intention to Defend on 22 October 2019.

4. The parties had the opportunity to file evidence in accordance with reg 5.14.  The Opponent filed evidence in support on 22 January 2020, the Applicant filed evidence in answer on 20 April 2020 and the Opponent filed its evidence in reply on 23 September 2020.

5. On 22 October 2020, the Opponent requested an amendment to the SGP to include s 59 as a ground of opposition.  This amendment was granted and the parties were given an opportunity to file evidence relating to this ground.  The Opponent did not file any evidence and the Applicant filed evidence on 28 July 2021 being the same declaration as that filed as evidence in answer. 

6. The Opponent requested that the matter be decided without a hearing and paid the relevant fee.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade marks based on the material filed during the proceedings.

   Grounds and Onus

7. The SGP, as amended, nominated grounds of opposition under ss 42(b), 58, 59 and 60.

8. The Opponent bears the onus of establishing one or more of the grounds of opposition[2] on the balance of probabilities[3].  The rights of the parties are assessed as at the Relevant Date.

   [2]  Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [3]  Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).

   Evidence

9. The following evidence was filed:

   Evidence in Support (‘EIS’)

   ·Declaration of Carey Mann, Chief Marketing Officer of the Opponent, made on 21 January 2020 with Annexures CM-1 to CM-10, Confidential Annexure CM-11, and CM-12 to CM-20 (‘Mann 1 Declaration’).

   • Declaration of Malcolm Neil Bell, attorney for the Opponent, made on 22 January 2020 (‘Bell Declaration’).
     
     

   Evidence in Answer (‘EIA’)

   • Declaration of Richard Michael Lethborg, director of the Applicant, made on 20 April 2020 with Appendixes 1-3[4] (‘Lethborg Declaration’).

   Evidence in Reply (‘EIR’)

   • Declaration of Carey Mann made on 21 September 2020 with Annexures XX-1 to XX-11 (‘Mann 2 Declaration’).

   [4]  This declaration was refiled as evidence in relation to the s 59 ground of opposition as outlined at para 5.

   Opponent’s Evidence

10. Mr Mann attests that the Opponent was founded in 1984 in Pennsylvania, USA with offices in more than 40 countries including an Australian subsidiary, Bentley Systems Pty Ltd, with an office in Melbourne.  The Mann 1 Declaration refers to the Opponent’s website which states that the Opponent “employs more than 3,500 colleagues, generates annual revenues of $700 million in 170 countries and has invested more than $1 billion in research, development and acquisitions since 2014”.

11. The Opponent develops, manufactures, licenses, sells and supports software and services for the design, construction and operation of infrastructure.  The Opponent’s software is used by its customers to design, engineer, build and operate large constructed assets such as railways, roadways, bridges, buildings, industrial plants, power plants and utility networks.

12. The trade mark AssetWise (‘Opponent’s Mark’) is used by the Opponent for infrastructure asset performance software and associated services including its AssetWise asset lifecycle information management (ALIM) software (‘Opponent’s Goods and Services’).  The AssetWise ALIM software provides a database-centric system that allows customers to create, collect, manage and control data about infrastructure assets.  The Opponent’s Goods and Services offered under the Trade Mark were announced globally on 9 February 2010 and the first significant contract in Australia was entered into with the Queensland Gas Company in June 2011.  Details of other significant contracts for the Opponent’s Goods and Services provided under the Trade Mark in WA, SA, QLD and Tasmania have been provided together with details of Australian sales revenue for 2014-2019 for the Opponent’s Goods and Services provided under the Trade Mark, details of advertising and other media exposure.

13. The Bell Declaration provides information about the publications featuring the third party articles, referred to in the Mann 1 Declaration, about the Opponent, its AssetWise software and projects utilising that software.

14. In the Mann 2 Declaration, Mr Mann outlines the overlap of the Opponent and Applicant’s client bases, and products and services.

    Applicant’s Evidence

15. Mr Lethborg declares that the Applicant is a small Australian business specializing in accounting and management consulting and database construction.  He attests that the Trade Mark was first used in relation to the installation of a database at Herberton Shire Council completed on 22 June 2022.  This installation, and the second installation of an AssetWise database at Whitsundays Shire Council, were undertaken by “R M Lethborg Services” in a joint venture with Property Wise Qld Pty Ltd (‘Property Wise’) before “transferring to the Opponent” in August 2002.  A summary of the dealings with Property Wise is included in the EIA.

16. Mr Lethborg attests that the Trade Mark is used in relation to an asset recording and management system for local government.  There is also a small business version developed in 2008 that separately calculates accounting and tax depreciation. 

17. Mr Lethborg states that the Trade Mark has been continuously used since 2002 in Tasmania and Queensland but that use is expanding due to a joint venture with the Queensland Government. 

18. Sometime after 2016, there was a major review, upgrade and rewrite of the Applicant’s AssetWise product.  In late 2017, a pilot program of converting data and installing the Applicant’s Database commenced with Cherbourg Aboriginal Shire Council which was completed in August 2018.  This pilot program is to be rolled out to another 19 Councils.  Once this pilot program is completed, the Applicant in conjunction with the Queensland Government will offer the Applicant’s database to other regional Queensland and Northern Territory Councils.

19. Mr Lethborg provides a list of 13 current and previous clients.  Two invoices are provided as evidence dated 31 October 2016 and 8 November 2019.

20. Mr Lethborg acknowledges that the database offered under the Trade Mark has not been widely marketed but has been promoted to some degree over the years on the websites of agents, by direct marketing and at conferences.  More recent marketing is by word of mouth.

21. Mr Lethborg also acknowledges that there has been confusion in the last few years between its use of the Trade Mark and the Opponent’s use of the same mark.

    Discussion

    Section 60 

22. Section 60 provides:

    60  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.

23. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

24. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[5] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[6]

    [5]  See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

    [6]  ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77].

25. The reputation of a trade mark my be demonstrated in a variety of ways.  For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[7] or inferred from a high volume of sales,[8] advertising expenditure or other promotion.[9]

    [7] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

    [8] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

    [9] Ibid.

26. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J 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...[10]

    [10] [2019] FCA 923, [83].

27. In the SGP, the Opponent relies on the particulars provided in support of the s42(b) ground of opposition which state that the use of the Trade Mark will contravene the Australian Consumer Law given the prior use and reputation in Opponent’s Mark by the Opponent before the priority date of the Trade Mark because:

    “The Opponent is one of the world’s premier software development companies, providing software products and services particularly directed towards infrastructure applications.  In or about 9 February 2010 the Opponent launched a new asset management platform called ASSETWISE. Since its launch, and before the priority date of the Opposed Trade mark the Opponent’s ASSETWISE platform has become widely known in Australia and internationally and has been purchased and employed in a number of major Australian infrastructure projects.”

28. The EIS demonstrates the extensive use of the Opponent’s Trade Mark for the Opponent’s Goods and Services internationally since 2010.  The Opponent has global sales revenue in the hundreds of millions of dollars and operates in 170 countries. 

29. In the Mann 1 Declaration, Mr Mann explains that ‘database design’ is the organization of data according to a database model.  This definition is not contradicted by the Applicant and based on my research is an accurate description.  Accordingly, it seems that when a customer purchases a database from the Opponent, the customer also receives database design services in working with the Opponent to determine what data must be stored and how the data elements interrelate so that the data can be fitted to the database model.  Whilst the Opponent’s evidence often refers to its ASSETWISE software, I accept that this necessarily also involves the supply of the Opponent’s Services.  

30. In Australia, the Opponent’s revenue under the Trade Mark is commercially appreciable. Some of the Opponent’s major customers who have purchased the Opponent’s Goods and Services provided under the Trade Mark include:

    ·Queensland Gas Company to consolidate more than 20 million pieces of data regarding its equipment in June 2011.

    ·Since 2013, Territory and Municipal Services (TAMS) of the Australian Capital Territory Government to organize and manage asset data relating to the roads and storm water networks it manages.

    ·Rio Tinto Iron Ore’s contractor CADS Group since at least 2014 to implement a standardised sentry guarding system at Rio Tinto’s mine and port facilities.

    ·Since at least 2014, QGC used the Opponent’s Goods and Services in relation to the Queensland Curtis LNG Project (one of Australia’s largest capital infrastructure projects) to create an engineering data warehouse.

    ·South Australia Water, since 2015, to manage and apply analytics techniques to data describing its assets.

    ·Roy Hill Iron Ore to assist in developing an AUD$10 million mining operation in WA at least as early as 2016.

    ·Sydney Airport to map assets of its airport facilities.

    ·RMIT University Melbourne for conducting urban capture of its Brunswick campus.

    ·Arcadis- WSP/PB joint venture for widening Melbourne’s Tullamarine Freeway.

    ·Other customers listed in the Mann 2 Declaration include NSW Asset Standards Authority (part of Transport for NSW), Estate & Infrastructure Group of Australian Department of Defence, Australian Rail Track Corporation, Australian Capital Territory Government, Metro Trains Melbourne, Port Authority of NSW, Main Roads Western Australia, Roads and Maritime Services Agency (prior to dissolution in December 2019), Queensland Department of Transport and Main Roads, Sydney Trains, Transport Canberra and Transport for NSW.  

31. The Opponent has promoted the Opponent’s Goods and Services offered under the Opponent’s Mark on its website since at least 2012, on third party websites, in print magazines including Australian publications, at industry conferences including Australian events.  At these events, the Opponent also distributes materials about the Opponent’s Goods and Services offered under the Opponent’s Mark including at the AMPEK Asset Management Conference in Hobart in 2018, the Digital Utilities Conference in Melbourne in April 2018 and the 2018 Electric Energy Society of Australia conference in Brisbane.

32. Media coverage of the Opponent’s Goods and Services offered under the Opponent’s Mark has been widespread.  The Opponent has provided a list of over 30 articles and the Bell Declaration indicates that many of these publications are directed to the Australian marketplace and/or are industry leading publications.

33. Based on the Opponent’s evidence, I am satisfied that the Opponent had developed a reputation in the Opponent’s Mark for the Opponent’s Goods and Services at the Relevant Date. 

34. The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the Opponent’s Mark and the likelihood of confusion caused by use of the Trade Mark.  In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:

    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.[11]

    [11] [2010] ATMO 5, [39].

35. Accepting that the Opponent has a reputation in the Opponent’s Mark for the Opponent’s Goods and Services, the question is whether as a result of this reputation, use of the Trade Mark for the Services is likely to deceive or cause confusion. 

36. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether its services derive from the same trade source as another trade mark. 

37. Whilst reputation is a required element of s60 and a factor that informs the likelihood of confusion or deception under s60(b), other relevant factors include the similarity of the trade marks and the connection between the relevant goods and services.

38. In the present case, the Trade Mark and the Opponent’s Mark are identical.  The Opponent’s Goods and Services are the same or closely related to the Services.  Further, there is significant overlap in the customer bases targeted by the parties with both primarily targeting governments, government agencies and entities otherwise connected to government.

39. Evidence of actual confusion is not necessary[12] but may be probative[13].  The Applicant has acknowledged that there has been confusion with the Opponent’s Mark[14] and this is despite its lack of promotion and fairly minimal use of the Trade Mark before the Relevant Date.  The Applicant’s proposed expansion of its use of the Trade Mark is only likely to increase the amount of confusion given the marks are identical and the parties operate competing businesses directed to the same class of consumers.  I am satisfied that there is a real tangible danger of people being caused to wonder whether a connection exists between the Trade Mark and the Opponent’s mark or the Opponent.

    [12] Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 234 FCR 549, [62] (Branson, Weinberg and Dowsett JJ); NEC Corp v Punch Video (S) Pte Ltd [2005] FCA 1126, [37] (Branson J).

    [13] Australian Woollen Mills Limited v F S Walton & Co Limited (1937) 58 CLR 641, 659; Australian Broadcasting Corporation v Commercial Radio Australia Ltd 88 IPR 376, [2010] ATMO 46, [46] (Delegate H. Wilson).

    [14] Appendix 2, Lethborg Declaration.

40. The s60 ground of opposition is established.

    Decision

41. The Opponent has established a ground of opposition under s 60.  Accordingly, I refuse to register trade mark number 1970111.  Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal.  If an appeal is filed, the disposition of this opposition will be for the court. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

    Tracey Berger
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    4 May 2022