Foxtel Management Pty Limited v National Research Group, Inc

[2024] ATMO 243

TRADE MARKS ACT 1995

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

Re:Opposition by Foxtel Management Pty Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2273998 (International Registration number 1663726) (class 35) - OIQ and 2272695 (International Registration number 1610260) (class 35) - ORIGINALS IQ - both in the name of National Research Group, Inc

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Miriam Stiel and Ye Rin Yoo of Allens Patent & Trade Mark Attorneys

Holder: Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 243

Trade Marks Regulations 1995 (Cth) – oppositions to extensions of protection under regulation 17A.33 – joint hearing – grounds of opposition under ss 42(b), 44 and 60 of the Trade Marks Act 1995 (Cth) – s 60 established for 2272695, extension refused – no grounds established for 2273998, extension of protection to follow

Background

1. This proceeding concerns oppositions made under reg 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’)[1] by Foxtel Management Pty Limited (‘Opponent’) to the extension of protection for International Registrations Designating Australia (‘IRDAs’), the details of which I reproduce below:

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   International registration number: 1663726

   Trade mark number:      2273998

   Trade mark:   OIQ (‘2273998’)

   Holder:   National Research Group, Inc (‘Holder’)

   Filing date:   4 May 2022

   Priority date:       17 November 2021         

   Services:  Class 35: Business monitoring and consulting services, namely, tracking and measuring pre-release campaign effectiveness for content to be streamed; business monitoring and consulting services, namely, tracking and measuring post-release content management of streamed content; business monitoring and consulting services, namely, tracking and measuring post-release performance of streamed content; business information and data compiling and analyzing relating to the marketing and performance of streamed content for series and films; business and consulting services, namely, providing business enhancement data and business process improvement data to content providers; business data analysis of the competitive landscape for content providers; business consulting services related to monitoring and evaluating performance of content in series and films across multiple platforms; business consulting services related to monitoring and evaluating content performance within over-the-top ecosystems; periodic statistical reporting of performance of streamed content. (‘Holder’s Services’)

   Convention details: Date: 17 November 2021 Number: 97129348 Country: UNITED STATES OF AMERICA

   ---

   International registration number: 1610260

   Trade mark number: 2272695

   Trade mark: ORIGINALS IQ (‘2272695’)

   Holder: National Research Group, Inc

   Filing date: 4 May 2022

   Priority date:     4 May 2022  

   Services: Holder’s Services

2. The IRDAs were examined, and their acceptance was advertised. Within the relevant period, the Opponent filed its Notice of Intention to Oppose for each of the IRDAs. The Opponent filed its Statement of Grounds and Particulars for each of the oppositions in the relevant periods. The Holder filed its Notices of Intention to Defend in the relevant periods.

3. The Opponent filed the following declarations (‘EIS’):

• A declaration of Cameron Stewart, Senior Legal Counsel at the Opponent, dated 4 May 2023, with Exhibit CS-1 and Confidential Exhibit CS-2 for 2272695.

• A declaration of Cameron Stewart dated 22 December 2022, with Exhibit CS-1 and Confidential Exhibit CS-2 for 2273998.

1. The contents and exhibits of these are materially the same. Therefore, I refer to them collectively as ‘Stewart’.

2. The Holder filed the following declarations (‘EIA’):

• A declaration of Julie Simpson, Attorney at Pizzeys Patent and Trade Mark Attorneys Pty Ltd, dated 3 August 2023, with Exhibits JMS-1 to JMS-6 for 2272695.

• A declaration of Julie Simpson dated 5 April 2023, with Exhibits JMS-1 to JMS-6 for 2273998.

1. The contents and exhibits of these are materially the same. Therefore, I refer to them collectively as ‘Simpson’.

2. The Opponent did not file Evidence in Reply for any of the oppositions.

3. The parties requested to be heard. After consultation with the parties the Trade Marks Office decided that there would be a joint hearing for the oppositions.

4. The Opponent filed its written outline of submissions on 3 September 2024. On 10 September 2024 the Holder filed written submissions prepared by Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd (‘Holder’s Submissions’). I heard the matters by teleconference on 17 September 2024. Miriam Stiel and Ye Rin Yoo of Allens Patent and Trade Mark Attorneys appeared on behalf of the Opponent. The Holder or its representatives did not appear at the hearing. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Evidence

EIS

1. The Opponent commenced trading in 2005 as a pay television services and related goods provider. It has more than 4.5 million subscribers in Australia. After extensive promotion throughout Australia, in February 2005 the Opponent launched a set top box incorporating a personal digital recorder and associated television services under the trade mark iQ or Foxtel iQ. A set top box is the interface between the internet and a consumer’s television, which decodes broadcasts. The Opponent’s iQ branded set top boxes enjoyed extensive media attention upon launch.

2. A new version of the set top box was launched in 2008, under the sign iQ2 or Foxtel iQ2. Again, there was extensive media coverage, promotion and consumer adoption. Various other generations of the iQ followed under the signs iQ3, iQ4 and iQ5 in the years after. Extensive use of these signs in relation to set top boxes, with increasing personalisation and functionality, for over a decade is demonstrated in the evidence.

3. The Opponent is the registered owner of various trade marks that contain the letters ‘iQ’ or ‘IQ’. I extract these at Schedule 1 to these written reasons (‘Opponent’s Trade Marks’).[2] I refer to the goods and services for which the Opponent’s Trade Marks are registered collectively as the ‘Opponent’s Goods and Services’.

   [2] I do not consider it necessary or useful to reproduce the full specification of the Opponent’s Trade Marks in these written reasons, doing so would require over 60 pages. The classes for the specification of the Opponent’s Trade Marks are provided at Schedule 1. Further details are available to interested persons on the Register of Trade Marks.

4. I note that Stewart also provides evidence that the Opponent is the owner or exclusive licensee of additional registered trade marks which contain the letters ‘iq’. However, these additional trade marks are not particularised in the SGP and they do not change the outcome in the two oppositions.

5. Significant resources have been invested by the Opponent in the promotion of trade marks including or consisting of the letters ‘iQ’. I do not reproduce every iteration of trade marks which have included or consisted of the letters ‘iQ’ or ‘IQ’ which appear in the evidence. The evidence demonstrates widespread promotion in various direct and indirect manners, point of sale promotion and business to business. Numerous examples of promotion in popular magazines are provided at Tab 16 to Exhibit CS-1, such as New Idea, Australian Women’s Weekly and Marie Claire. Printed press advertisements are extensively extracted at Tab 22 to Exhibit CS-1, including the Sydney Morning Herald, the Melbourne Age and The Australian. Television advertisements have also occurred on numerous free to air television channels and direct to the Opponent’s own subscribers.

6. There are extensive examples of advertising activities, sales information, third-party newspaper articles and recognition of trade marks containing the letters ‘iQ’ or ‘IQ’. Sales information reflects significant subscription and revenue statistics for services and goods under the trade mark iQ, across 2011 to 2022.

7. I otherwise refer to the EIS where relevant throughout these written reasons.

EIA

1. The Holder is a market research company and provides analysis and business planning services to a variety of industries, including the entertainment, technology, lifestyle, sports, and gaming industries. Simpson states that the Holder offers a global syndicated service that delivers always-on insight into the competitive streaming marketplace. Simpson adds that the Holder has offices in Los Angeles, New York, Singapore, San Francisco and London. Simpson further declares that the trade mark OIQ is a shortened form of the trade mark ORIGINALS IQ.

2. Exhibits JMS-1 and JMS-2 are extracts of 2273998 and 2272695 from the Register of Trade Marks, which includes the history and publications extract.

3. Exhibit JM-3 consists of documents which concern grant of trade mark registrations in the European Union, United Kingdom and Japan.

4. Exhibit JMS-4 is a brochure explaining the nature of the Holders Services.

5. Exhibit JMS-5 consists of examples of reports produced by the Holder in relation to the entertainment, technology and lifestyle industries. These show that the Holder provides audience analysis and advice. This analysis and advice provided by the Holder incorporates film, television, streaming, audio and live shows.

6. JM-6 consists of copies of entries from the Register of Trade Marks which show trade marks containing the letters ‘iq’.

Grounds and Onus

1. Regulation 17A.34 broadly provides that an extension of protection can be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds of opposition specified in ss 58 to 61 and 62A. The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]

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

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

2. The SGP nominated grounds of opposition under ss 42(b), 44 and 60. The dates for the rights of the parties to be determined are the priority dates of the IRDAs.

Consideration

Section 60

1. The Opponent relies on s 60 for each of the oppositions, which 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.

2. A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[5] It is the Opponent who must establish that a reputation exists as a matter of fact.[6] The word ‘reputation’ in s 60 means ‘the recognition of the [trade mark] by the public generally’.[7] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[8] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[9] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue for showing that a reputation exists.[10]

Reputation

[5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[6] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).

[7] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).

[8] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

[9] McCormick (n 7) [80] (Kenny J).

[10] Ibid.

1. For its s 60 ground in each of the oppositions the Opponent relies on an alleged reputation in the trade mark ‘iQ’ or ‘IQ’. The Opponent relies on the extensive evidence of use of trade marks which contain the letters ‘iQ’ or ‘IQ’.

2. In Foxtel Management Pty Ltd v Beijing Qiyi Century Science & Technology Co Ltd (‘Foxtel Management’)[11] the delegate found that use of the trade mark in relation to pay television services and related goods, would be likely to deceive or cause confusion because of a reputation in the trade mark ‘IQ’. Accordingly, a ground of opposition under s 60 was established. In doing so the delegate found that there was a reputation in the trade mark ‘IQ’ for pay television services and related goods.[12]

   [11] [2020] ATMO 50 (Hearing Officer Smith).

   [12] Ibid [26].

3. I acknowledge that much the evidence shows the letters ‘IQ’ or ‘iQ’ beside or in proximity to other trade marks, such as the word ‘FOXTEL’. However, there are also widespread examples of these letters, or ‘IQ2’, ‘IQ3’ and ‘IQ4’ in isolation or with such an effect that demonstrate a reputation. I note the comments of the delegate in Foxtel Management that, the

   …question of whether the use of two distinct elements on packaging or marketing material is use of two trade marks, one trade mark or a trade mark and something else can be a difficult question to resolve and it depends on an evaluation of the context of the use of the respective elements. I find that the manner of use of the IQ Mark and the mark FOXTEL amounts to the use of two distinctive trade marks, similar to INTEL PENTIUM.[13]

   [13] Ibid [27]. See also, paragraph [9] where the delegate defined the ‘IQ Mark’ with reference to many of trade marks mentioned in Schedule 1 to these written reasons.

4. My assessment of the evidence before me is the same. Trade marks containing the letters ‘iQ’ or ‘IQ’ have been used as a trade mark distinct to, for example, the trade mark FOXTEL, to refer to the particular set-top box and related services offered by the Opponent. Therefore, the trade mark ‘iQ’, or ‘IQ’, have a separate reputation to that of the word FOXTEL. Like the delegate in Foxtel Management, I find that the reputation is considerable.[14]

   [14] Ibid [27].

5. The next issue is whether because of the reputation which exists in the trade mark ‘iQ’ or ‘IQ’, use of each of the Trade Marks for the Holder’s Services is likely to mislead or cause confusion. I deal with this question for each of the Trade Marks below.

6. I note the following comments of the delegate in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi concerning s 60:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[15]

2272695

[15] [2012] ATMO 124, [40] (Hearing Officer Thompson).

1. The Holder submits the following in respect of the s 60 ground of opposition:

   Based on the evidence filed by the Opponent, we agree it has achieved a reputation in a number of marks incorporating the term “iQ”, however, we disagree that reputation has extended to all the goods and services as claimed in the trade mark registrations listed… [in Stewart] and that reputation does not extend to the Services offered by the [Holder] under the Opposed Marks. 

It is submitted the presence of the word FOXTEL at the marks listed in … [Stewart] is likely to be remembered by a significant number of the general population, and would be inherently remembered by this name, being widely understood in the Australian population to refer to the pay television services it offers.

It can be said the Opponent’s FOXTEL and iQ marks, based on their duration and extent of use have achieved notoriety in relation to its goods and services. The words FOXTEL and iQ are likely to be very familiar to the Australian population, it would be artificial to separate out the physical features of the marks from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In these proceedings the visual impact of the name FOXTEL and the term iQ cannot be assessed without a recognition of its notorious familiarity to consumers

The extensive evidence filed by the Opponent establishes the words FOXTEL and iQ would be considered to be well known and therefore it is difficult to understand how the Opponent can establish a “real and tangible danger” of deception or confusion between the marks. Whilst deceptive similarity is not directly relevant to the considerations under section 60 of the Act, this is a factor that adds to the likelihood of deception and confusion. As discussed below it is submitted the Opponent’s marks and the Opposed Marks are not deceptively similar.[16]

[16] Holder’s Submissions [35]-[38].

1. The word ‘ORIGINALS’ has a lower impact than the word ‘IQ’ and lower impact than that asserted in the Holder’s Submissions. Taken as a whole, the main identifying element of 2272695 is likely to be viewed as the word ‘IQ’. The word ‘ORIGINALS’ has a descriptive quality, likely suggesting original creative content to a consumer. I consider 2272695 and the ‘iQ’ or ‘IQ’ trade marks for which there is a reputation to have a great degree of similarity.

2. I note that the reputation in the trade mark ‘iQ’ or ‘IQ’ is for pay television services to end-consumers of creative and other content. These services have some differences with the Holder’s Services, which are more likely targeted at business for the analysis and compilation of data relating to streaming and content. I would summarise these services as being concerned with monitoring, tracking and analysing the performance of streaming content. Whilst there are some differences, in their up-stream and down-stream natures, the subject matter is related because it is concerned with creative content, such as films or sound recordings. I do consider there to be some nexus here. Further, consumers of the Holder’s Services would likely make an association between a set top box provider and pay television services provider and expect the Holder’s Services to be delivered by the same provider.

3. I am satisfied that because of the reputation acquired by the trade mark ‘iQ’ or ‘IQ’, the use of 2272695 in connection with the Holder’s Services would be likely to deceive or cause confusion.

4. Accordingly, the ground of opposition under s 60 has been established for 2272695.

2273998

1. 2273998 has a leading element in the letter ‘O’. 2273998 presents as a whole entity consisting of an apparent acronym. My assessment is that all of the trade marks in the EIS which contain the letters ‘iQ’ or ‘IQ’ have various differences with 2273998. 2273998 as a whole consists of the combination of the letters ‘O’, ‘I and Q’.

2. The IQ elements which are shared are subsumed in the whole of ‘OIQ’. I do not consider the letters ‘IQ’ to have any specific or individual influence on the impression caused by 2273998. The letter ‘O’ does not, for example, visually appear in such a way that a person would recall it by the letters ‘IQ’.

1. The assessment I must make is one of the overall effect on the minds of the consumers. Aurally and visually, there are sufficient differences which would result in a distinct effect on the minds of ordinary consumers. Whilst the trade marks share the letters ‘iQ’ or ‘IQ’, the letters ‘IQ’ are commonly understood perhaps as a shorthand word for the term ‘intelligence quotient’. By contrast ‘OIQ’ does not have any specific and apparent meaning. It visually presents as an acronym. I do not consider that a consumer seeing 2273998 would be likely to pronounce 2273998 as, for example, ‘zero IQ’. 2273998 would most likely be pronounced ‘oh-eye-que’.

2. After accounting for the reputation of each of the trade marks relied upon for the s 60 ground, the differences in the trade marks mean that use of 2273998 is not likely to mislead or cause confusion.

3. Accordingly, the s 60 ground of opposition in respect of 2273998 has not been established.

4. I now consider the remaining grounds of opposition in respect of 2273998.

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   …

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   …

1. For its s 44 ground of opposition in respect of 2273998 the Opponent relies on the Opponent’s Trade Marks, as outlined in its SGP.[17]

   [17] See Schedule 1 to these written reasons.

2. The Opponent’s Trade Marks are all in the name of a person other than the Holder and have a priority date which is before the priority date of the 2273998.

Comparison of trade marks

1. I must compare the respective whole trade marks[18] with regard to essential or distinguishing features,[19] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[20] Actual reputation of a trade mark or an owner is not relevant. Rather, of importance is the effect and meaning of the spoken trade marks,[21] especially their effect or impression produced on the mind of ordinary consumers.[22] I should account for imperfect recollection of those ordinary consumers. To establish this ground what is required is a real tangible danger of confusion.[23] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[24] Actual instances of deception or confusion are of great weight though not required.[25]

   [18] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J) (‘Woolworths’). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [19] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [20] New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [21] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [22] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Woolworths (n 18) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [24] Woolworths (n 18) [50(ii)] (French J); Southern Cross ibid 594-595. See also, Australian Woollen Mills (n 22) 658.

   [25] Self Care (n 21) [30]; Australian Woollen Mills (n 22) 658.

2. In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon and McTiernan JJ explained:

   … in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained… …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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.[26]

   [26] Australian Woollen Mills (n 22) 658 (Dixon and McTiernan JJ).

3. Much of my comparison of the trade marks at paragraph [38]-[40] of these written reasons for the purposes of s 60 is also applicable for a comparison concerning s 44. However, I do not take account of any reputation in each of the Opponent’s Trade Marks for the purposes of s 44.

4. The importance of the placement of the elements in trade marks has been emphasised before in the comments of Sargent J in London Lubricants (1920) Limited’s Application:

   The tendency of persons using the English language to slur the termination of words […] 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.[27]

   [27] (1924) 42 RPC 264, 279.

5. I also note the comments of the Full Court of the Federal Court of Australia in Australian Meat Group Pty Ltd v JBS Australia Pty Limited:

   Another issue that can arise is whether the mark applied for is substantially identical with, or deceptively similar to, an acronym that is a prior registered mark or a mark whose registration has been sought with an earlier priority date than the mark in question: see s 44 of the Act. When this question arises, the Registrar proceeds on the basis that the Australian public is quite used to acronyms in the market place and is used to relying on small differences to distinguish between them. For this reason, closer similarities than normal are expected and tolerated for acronyms, in the absence of demonstrated bad faith: ATP; Professional Golfers’ Association of Australia Ltd v Ladies Professional Golf Association (2004) 61 IPR 206 at [17]; CMA CGM v CMA Corporation Ltd [2011] ATMO 95; 95 IPR 593 at [25]–[30]...[28]

   [28] Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207 [83] (Allsop CJ, Besanko and Yates JJ).

6. There are differences between 2273998 and the Opponent’s Trade Marks ‘both visually and when described verbally as initialisms’.[29] The Opponent’s Trade Marks all have as their main identifying and memorable elements, the word ‘IQ’ or ‘iQ’. The effect of the presence of the letter ‘O’ as the leading element of 2273998 would direct the mind of the consumer to an impression distinct to one focussed on the letters ‘IQ’ or ‘iQ’. That impression would also not be, for example, one of the trade mark being the letters ‘iQ’ or ‘IQ’ following a number, such as a zero. 2273998 appears as an acronym with three letters. My assessment is that because of the differences between the trade marks they would have a different effect on the minds of the relevant persons. Consumers of the Opponent’s Goods and Services are not likely to imperfectly recollect the Opponent’s Trade Marks such that they would be caused to wonder whether the Holder’s Services are from the same trade origin, even assuming that the Opponent’s Goods and Services are similar or closely related to the Holder’s Services. Overall, I am not satisfied that there is a real and tangible danger of confusion. Therefore, 2273998 is not deceptively similar to any of the Opponent’s Trade Marks.

   [29] Ibid [88].

7. Consequently, the ground of opposition under s 44 has not been established for 2273998.

Section 42(b)

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of 2273998 would not could be contrary to law.[30]

   [30] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. The Australian Consumer Law (‘ACL’) forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). The ACL includes ss 18 and 29. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.

3. As already indicated in respect of s 60, I am not satisfied that there is a reputation in another trade mark so that the use of 2273998 for the Holder’s Services is likely to cause deception or confusion. As such, on the stricter test posited by the ACL, I am not satisfied that use of 2273998 is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. For the same reasons, I am also not satisfied that the use of 2273998 would be contrary to the law of passing off.

4. The Opponent has not established that use of 2273998 would be contrary to law.

5. Accordingly, the ground of opposition under s 42(b) has not been established for 2273998.

Decision and costs

1. Regulation 17A.34N relevantly provides:

   17A.34N  Decision on opposition

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

   (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

2. The Opponent has not established any ground of opposition for IRDA 1663726 (trade mark 2273998). Extension of protection is to follow one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA otherwise be in accordance with the Court’s order or direction. 

3. The Opponent has established a ground of opposition under s 60 for IRDA 1610260 (trade mark 2272695). Accordingly, I refuse to extend protection of IRDA 1610260.

4. Both parties have sought costs. I note that each have had a measure of success, the evidence was substantially same in each of the opposition proceedings and there was joint hearing. I decline to make an award of costs.

Benjamin Goldsworthy

Hearing Officer

Delegate of the Registrar of Trade Marks

17 December 2024

Schedule 1

Trade mark no.	Trade mark	Priority date	Specification
1040783	IQ MULTIROOM	8 February 2005	Class 9, 35, 38, 41 and 42
1041364	10 February 2005	Class 9, 16, 38, 41 and 42
1146156	iQcast	10 November 2006	Classes 9, 16, 35, 38, 41 and 42
1242128	22 May 2008	Classes 9, 16, 38, 41 and 42
1303705	iQSelect	11 June 2009	Classes 9, 16, 38, 41 and 42
1317108	26 August 2009	Classes 9, 16, 35, 38 and 41
1318757	iQ2Go	3 September 2009	Classes 9, 38, 41 and 42
1426495	23 May 2011	Classes 9, 16, 38, 41 and 42
1563394	iQ3	18 June 2013	Classes 9, 16, 35, 38, 41 and 42
1937960	iQ	2 July 2018	Classes 9, 35, 38 and 41
1947888	iQ4K	13 August 2018	Classes 9, 16, 35, 38, 41 and 42
1947889	iQ4	13 August 2018	Classes 9, 16, 35, 38, 41 and 42
2065158	iQ5	29 January 2020	Classes 9, 16, 35, 38, 41 and 42