Genesys Telecommunications Laboratories Inc

[2001] ATMO 71

TRADE MARKS ACT 1995

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

Re:Trade mark application number 741802(9) - T-SERVER - in the name of Genesys Telecommunications Laboratories Inc.

Background

Trade mark application number 741802 was filed on 19 August 1997 by Genesys Telecommunications Laboratories Inc ("the applicant"). The application was for the word T‑SERVER in respect of computer software for call centre management in class 9.

The application was duly examined under the Trade Marks Act 1995 (the Act). Three reports issued during the course of examination. The first report raised grounds for rejection under the terms of s44 of the Act, in that the applicant's mark was substantially identical, or deceptively similar to five other trade marks with a T prefix. The second report maintained the s44 ground, and also held the mark as incapable of distinguishing the applicant's goods pursuant to s41 of the Act, as the term "t-server" is commonly used to describe telephony servers, and invited the applicant to provide evidence of prior use or honest concurrent use of the mark. The third report maintained only one of the s44 citations and maintained the s41 ground. Again, the applicant was invited to lodge evidence of prior use or honest concurrent use.

The applicant, through its attorney, Abbot Tout Solicitors of Sydney, made submissions in response to the first report that highlighted differences between the applicant's mark and the cited marks and distinctions between goods and services of the applicant and the cited marks. Enclosed with these submissions was a bundle of trade pamphlets and brochures in relation to the applicant's product.

In response to the second report, the applicant submitted that the term "T-Server" is not commonplace in the telecommunications industry and that the fact that the term appears in a technical dictionary is not evidence that the term is commonplace, nor that the term is used by traders and service providers within the industry. The applicant also submitted details of the differences between the applicant's mark and the marks cited by the examiner.

The applicant has requested a decision on the written record. Accordingly, the matter has been referred to me as a delegate of the Registrar for a decision on the material on the file.

Evidence/Submissions

The applicant has not filed any further evidence in support of its application.

The applicant made further submissions in response to the third report. In respect of the s41 ground, the applicant maintained its objection to the examiner's assertion that the use of the term T-SERVER was widespread, and was critical of the methodology and findings of the internet search conducted by the examiner.

In respect of the s44 ground, and the citation of trade marks 634569 (TNET), 666404 (T‑Net), 673942 (T-Online) and 681711 (T-System), the applicant submitted that the "T" prefix is commonplace in trade marks and the prefix alone is not likely to deceive or confuse people. It was submitted that each mark needs to be considered and compared as a whole: and on that basis T‑SERVER is visually and phonetically distinguishable overall from the cited marks. It was further submitted that the applicant's goods are highly specific and unlikely to be in the same market as the cited goods. The market involved sophisticated technical buyers who are unlikely to be confused or deceived.

I take it from the material on the file - in particular the promotional material filed by the applicant - that a "server" is a computer program that provides services to other computer programs in the same or other computers. The computer that a server program runs in is also frequently referred to as a server.

In the evidence filed by the applicant is a brochure entitled "T-SERVER  5.0 ... The scalable framework providing open Computer Telephony Integration (CTI) ... PRODUCT OVERVIEW". The first two sentences of the first paragraph of the brochure state:

Successful computer telephony integration (CTI) depends on a flexible and powerful connection between computers and telephony applications. The Genesys T-Server  (Telephony Server) sets the market standard in harnessing the power of computers for control of call activity in an open systems environment.

Reasons

Section 41 Ground

To be prima facie registrable, a trade mark must be capable of distinguishing the goods for which registration is sought, in terms of s41 of the Act.

Section 41 provides:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 ("Blount"), Justice Branson discusses the application of s41. Her Honour observed at page 504 that, in deciding whether a trade mark is capable of distinguishing under s41, the Registrar has three options. The Registrar may conclude:

(a)     that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)     that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services; or

(c)     that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

In each of those three options, the key consideration is the degree of inherent adaptation to distinguish possessed by a trade mark.

The criteria on which a judgment of inherent adaptation to distinguish should be made are set out at length by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513. In F H Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555, Kitto J summarised those criteria as:

The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

The criteria were recently approved by Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579.

Thus, the relevant question I must consider in this case is whether the word mark T-SERVER is one which other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use in connection with their goods or services.

The trade mark is the word t-server and it is clear that it consists of the intial letter "T" hyphenated to the word server.

I have not found that the letter "T" is an acknowledged abbreviation for the word telephony or telecommunication. It is, clearly, the initial letter of these words and an appropriate letter to use to signify them. It is, as per The Macquarie Dictionary - 3^rd Edition The Macquarie Library Pty Ltd, Sydney, 1998, and acknowledged abbreviation for words such as territory, tare, teaspoon, temperature, and Tuesday. And as with all letters, it is likely to be required by other traders not simply for its function as an acknowledged abbreviation, but as an indication of any number of characteristics from surnames and company names, to model numbers.

The word server as I noted above, is an ordinary technical term which refers directly to goods claimed in this trade mark application (computer software for call centre management).

I am of the view that a trader of hardware or software related to servers used in telephony would be likely in the ordinary course of their business, and without any improper motive, to desire to use the term "t-server", or any abbreviation of telephony server, upon or in connection with their goods. Prima facie, it is not to any significant extent, inherently adapted to distinguish and I am thus led to the provisions of s41(5).

These provisions must be read in consideration of Branson J's comments in Blount (40 IPR 498, at 505), where her Honour said:

The question whether or not a trade mark is to be taken for the purposes of s41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s41(3)-(6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.

Her comments regarding "the applicant establish[ing]" are at 504, where she says:

Where the Act requires the registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517; at 521. That is, that the registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

I have considered the material on the file, including the brochures, in respect of the extent to which the mark is inherently adapted to distinguish the designated goods, the use, or intended use, of the trade mark by the applicant, and any other circumstances in the material filed by the applicant. I am not satisfied that the trade mark does or will distinguish the designated goods. I am therefore required to reject the application.

Section 44 Ground

Although I have found grounds for rejection based upon s41 of the Act, I find it necessary for completeness also to consider the s44 ground.

The provisions of s44 lay down, inter alia, that a ground for rejection exists if an application trade mark is substantially identical with or deceptively similar to an earlier trade mark, and that earlier trade mark comprehends services which are the same as or similar to the services nominated in the subject application

Section 10 defines deceptive similarity. A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion

The test for deception and confusion under the Trade Marks Act 1995 (Cth) has been determined by French J in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (the Metro case). His Honour says (at [45]), with reference to the Smith Hayden case (Re Smith Hayden & Co’s Application (1946) 63 RPC 97; at 101):

The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

The criteria for deception and confusion are set outx by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5 and were considered by French J in the Metro case: 45 IPR 411 at [50]. Identifying the presumption of registrability as an underlying policy of the Trade Marks Act 1995, his Honour says

… Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(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

The citations of concern are the following marks, and I list some of the relevant items from the respective statements of goods.

666404	T-NET	Class 9	Electric, electronic, optical, measuring, signalling, controlling or teaching apparatus ...
673942	T-Online	Class 9	... data processing equipment and computers
681711	T-System	Class 9	Electric, electronic, optical, measuring, signalling, controlling or teaching apparatus ...

I find that the applicant's mark and the cited marks each consist of the prefix "T-" coupled with a technical or telecommunications industry-specific term, that is "server", "online", "system" and "net". This results in an apparent series of marks that is highly likely to be viewed by consumers and traders as originating from the same source. If one considers the idea conveyed by the marks, coupled with the concept of imperfect recollection, there is a real and tangible danger of deception or confusion occurring and the fact that the market consists of sophisticated technicians is unlikely to forestall this danger..

I find T-SERVER to be deceptively similar to trade marks 666404 (T-NET), 673942 (T-ONLINE) and 681711 (T-SYSTEM).

Decision

I find that:

• T-SERVER is not a mark that is capable of distinguishing the designated goods, and

• T-SERVER is deceptively similar to trade marks 666404 (T-NET), 673942 (T-ONLINE) and 681711 (T-SYSTEM).

I therefore reject this application.

Jock McDonagh
Hearing Officer

10 August 2001