Geoscan Pty Ltd v Spring Cloud Tech Pty Ltd

[2024] ATMO 203

TRADE MARKS ACT 1995

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

Re:Opposition by GEOSCAN PTY LTD to registration of trade mark application numbers 2245627 and 2245628 (classes 9, 35 and 42) – COREPLAN and COREPLAN (Figurative) - in the name of SPRING CLOUD TECH PTY LTD

Delegate:

Timothy Brown

Representation:

Opponent: Rob Clark of counsel, instructed by Piper Alderman.

Applicant: Melissa Marcus of counsel, instructed by Allied Legal.

Decision:

2024 ATMO 203

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 42(b) and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns oppositions brought by GEOSCAN PTY LTD (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade marks in the name of SPRING CLOUD TECH PTY LTD (‘Applicant’):

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

Trade Mark No	Trade Marks	Filing Date	Goods and Services (‘Applicant’s Goods and Services’)
2245627	Coreplan	31 January 2022	See Annexure A
2245628	(‘Composite Trade Mark’)		See Annexure A

1. For the purposes of this decision, I will refer to both of the above trade marks, collectively, as the ‘Trade Marks’.

2. The Trade Marks were examined and subsequently advertised for acceptance 1 July 2022.

3. On 18 August 2022, Corescan Pty Ltd filed Notices of Intention to Oppose registration of the Trade Marks, followed by Statements of Grounds and Particulars on 19 September 2022. The Applicant filed Notices of Intention to Defend the oppositions on 17 October 2022. On 25 January 2023, the name of the opponent was amended from Corescan Pty Ltd to the Opponent pursuant to section 53.

4. On 27 January 2023, the Opponent filed Evidence in Support of the oppositions. The Applicant filed Evidence in Answer on 2 May 2023. The Opponent filed Evidence in Reply on 3 July 2023.

5. Following the end of the evidence stages, both parties requested to be heard, and the matter was heard before me, a delegate of the Registrar of Trade Marks, on 17 July 2024. The Opponent was represented by Rob Clark of counsel with instruction from Lorraine Miller of Piper Alderman. The Applicant was represented by Melissa Marcus of counsel with instruction from Ran Zheng of Allied Legal.

Grounds of Opposition, Onus and Relevant Date

1. The nominated grounds of opposition are sections 44, 42, and 60 of the Act. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2]

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

2. The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is 31 January 2022 (‘Relevant Date’), being the filing date of the Trade Marks and the priority date of the Trade Marks for the purposes of ss 44 and 60.

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

Evidence in Support

Declaration of Brenton James Armitage, Director of the Opponent, dated 25 January 2023 (‘Armitage’) with Annexures BJA-1 to BJA-16.

Declaration of Neil Edward Goodey, Director of Corescan Pty Ltd, dated 27 January 2023 (‘Goodey’) with Annexure NEG-1.

Evidence in Answer

Declaration of Alexandros Goulios, Director of the Applicant, dated 2 May 2023 (‘Goulios’)  with Annexures AG-1 to AG-29.

Evidence in Reply

Declaration of Peter Overend, Chief Financial Officer of the Opponent, dated 26 June 2023 (‘Overend’).

Declaration of Neil Edward Goodey dated 3 July 2023 (‘Goodey 2’) with Annexures NEG-2 to NEG-4.

1. The Opponent was incorporated on 28 June 2000, originally under the name Specterra Systems Pty Ltd. On 10 August 2009, the Opponent changed its name to Corescan Pty Ltd, then to Geoscan Pty Ltd on 6 February 2017.

2. Corescan Pty Ltd (‘Corescan’), a subsidiary of the Opponent, is a company specialising in scanning, processing and analysis of drill core, rock chips, blast holes and other geological samples for the mining and geotechnical industries. According to Armitage, Corescan maps the mineralogy and morphology of drills cores and provides geological information used across various points in mining processes. Additionally, Corescan provides laboratory services for real time geological scanning and reporting.

3. Mr Armitage declares that the Opponent, and its subsidiaries, have used the trade marks CORESCAN and   (collectively, ‘CORESCAN Marks’) since 2009. Annexed to Armitage is a photo taken from Corescan’s booth at the Australasian Exploration Geoscience Conference in 2010 demonstrating use of the Opponent’s CORESCAN Marks. These trade marks have been used alongside other trade marks incorporating ‘CORE’, namely, COREPHOTO, CORETABLE and CORESHED. Annexed to Armitage are screenshots from the Opponent’s website, (‘Opponent’s Website’) demonstrating use of the CORESCAN Marks.[4]

   [4] Armitage Annexure BJA-3.

4. The Opponent is also the owner of the following Australian trade mark registrations (collectively, ‘Opponent’s Registrations’):

Trade Mark Number	Trade Mark	Priority Date	Goods/Services[5]
1606455	CORESHED (‘455 mark’)	17 February 2014	Class 35 Class 42
1606456	(‘456 mark’)	17 February 2014	Class 35 Class 42
1606458	CORESCAN (‘458 mark’)	17 February 2014	Class 42
1606459	(‘459 mark’)	17 February 2014	Class 42
1729096	CORETABLE (‘096 mark’)	19 October 2015	Class 9
1729183	(‘183 mark’)	20 October 2015	Class 9
2112848	(‘848 mark’)	19 August 2020	Class 42
2117596	(‘596 mark’)	4 September 2020	Class 35 Class 42

[5] See Annexure B for the full description of the goods and services of the Opponent’s Marks.

1. Mr Armitage declares that the CORESCAN Marks have been promoted since 2010 via the Opponent’s Website. Annexed to Armitage are screenshots sourced from the Wayback Machine Internet Archive showing use of the CORESCAN Marks from 2 December 2010 to 28 May 2022.[6] Other promotional activities include:

   [6] Ibid Annexure BJA-5.

• Promotion of the CORESCAN Marks via social media, namely, Facebook, LinkedIn, Twitter and YouTube. Screenshots of these social media accounts are annexed to Armitage.[7]

  [7] Ibid Annexure BJA-6.

• Sponsorship and investment in academic research and publications. Mr Armitage explains that these investments were designed to raise the profile of the Opponent’s products and the CORESCAN Marks. Annexed to Armitage are examples of these papers published in 2016, 2017, 2018, 2019 and 2021.[8]

• Presentations from the Opponent’s employees at international and domestic conferences and trade fairs. Examples of these trade fairs are detailed in Armitage.[9]

• Brochures and posters featuring the CORESCAN Marks. Annexed to Armitage are various examples of the brochures.[10]

• Partnerships with universities in research projects and PhD research, including with the University of Tasmania and Queensland.

• Branded uniforms featuring the CORESCAN Marks, which have been used by the Opponent since 2014.

  [8] Ibid Annexure BJA-7.

  [9] Ibid [42]; Annexure BJA-8.

  [10] Ibid Annexure BJA-9.

1. Armitage includes the annual sales income derived by the Opponent in Australia for its services provided in connection with the CORESCAN Marks from 2013 to 2022,[11] and the Opponent’s annual marketing expenditure for its goods and services used in connection with the Opponent’s Registrations from 2013 to 2022.

2. Goodey outlines an instance of alleged confusion witnessed at New Generation Gold Mine conference held in 2021 at Perth. Mr Goodey describes an attendee who mistakenly associated the Trade Marks with the CORESCAN Marks. This is expanded on by Mr Overend, who declares that while at the conference he confused a business care bearing the Trade Marks with the CORESCAN Marks.

Applicant

1. Mr Goulios declares that the Applicant has been using the Trade Marks since 2018. Prior to adopting the Trade Marks, the Applicant utilised the trade mark, ‘Springtech’. These trade marks were used concurrently for a period before the Trade Marks became the Applicant’s primary trade mark in 2021. An article published in Global Mining Review dated 27 April 2021 discussing the transition is annexed to Goulios.[12]

   [12] Goulios Annexure AG-9.

2. Mr Goulios explains that the Applicant’s Goods and Services focus on providing software as a service and digital operations platforms in the form of cloud based workspaces that assist workflows in mining environments. Mr Goulios asserts that there is no overlap in the products and services offered by the Applicant and the Opponent. A description of the Applicant’s services is set out on the Applicant’s Website, (‘Applicant’s Website’).[13]

   [13] Ibid Annexure AG-2.

3. Mr Goulios asserts that the Applicant is well recognised in the mining, energy and resource industries. In support, Goulios includes:

• Screenshots of several industry awards and nominations.[14]

• Examples of positive customer feedback published on the Applicant’s Website.[15]

• Web traffic analysis from detailing the visits and views per month to the Applicant’s Website.[16]

  [14] Ibid Annexure AG-3.

  [15] Ibid Annexure AG-4.

  [16] Ibid Annexure AG-5.

1. Regarding the use of the word ‘Core’ by both the Applicant and the Opponent, Mr Goulios claims that ‘Core’ is a widely used term by those in the mining industry. By way of example, Goulios includes phrases, such as ‘core samples’, ‘core drilling’, ‘core logging’, ‘core tests’, and ‘core scanning’. Goulios annexes a definition of ‘core’ taken from the online Cambridge Dictionary on 27 April 2023, which includes a geological definition of the word ‘core’ as ‘a long, thin cylinder-shaped mass of material taken out from the earth for study’[17]. Further, annexed to Goulios are examples of alleged descriptive uses of ‘core’ by itself and with other descriptive words, by businesses in the mining, energy and resources industries,[18]such as:

• Use of the phrases ‘drill-cores’, ‘exploration cores’, and ‘drill core samples’ by BHP;[19]

• References to ‘core size’ and core drilling in reports by Fortescue Metal;[20]

• Use of the phrase ‘core services’ by mining business Rio Tinto;[21]

• Use of phrase ‘core yard’, ‘core loss’, ‘freshly drilled or legacy core’, ‘core geochemical data’ and ‘core images’ by the business TruScan in connection with geological and drill core scanning services.[22]

  [17] Ibid Annexure AG-12.

  [18] Ibid Annexure AG-14 to AG-23.

  [19] Ibid Annexure AG-18.

  [20] Ibid Annexure AG-20.

  [21] Ibid Annexure AG-19.

  [22] Ibid Annexure AG-22.

1. Goulios also includes a list of businesses in the mining and resource industries that incorporate the word ‘core’ into their business names.[23]

Discussion and Reasons

[23] Ibid [35].

Section 44

1. Section 44 relevantly provides:

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

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

   (ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   (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.

2. To succeed under this ground, the Opponent must establish that the Trade Marks are substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar, or closely related to the Applicant’s Goods and Services.

3. The Opponent relies on the Opponent’s Registrations as the basis for this ground of opposition.

4. I note that each of the Opponent’s Registrations each have an earlier priority date than the Trade Marks and are in the name of someone other than the Applicant.

Comparison of Goods and Services

1. Section 14 provides:

   (1)    For the purposes of this Act, goods are similar to other goods:

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

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

   (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.

2. Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’[24]. This is determined through consideration of a number of factors, including the nature of the goods,[25] the purpose for which the goods will be used,[26] and the trade channels through which the goods are bought and sold.[27] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:

   What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put.  Another is whether they are commonly dealt with in the same course of trade or business.[28]

   [24] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).

   [25] Ibid.

   [26] Ibid.

   [27] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).

   [28] (1954) 70 CLR 84, 94.

3. The Act does not define ‘closely related’ goods and services. Justice French noted in Registrar of Trade Marks v Woolworths:

   The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[29]

   [29] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37].

4. The Applicant’s Goods in Class 9 all relate to software. The Opponent submits that computer software is a necessary adjunct to, or means to carry out, many of the scientific and research services claimed in relation to the Opponent’s Registrations. I do not consider these goods to be similar, or closely related, to any of the goods or services specified in connection with any of the Opponent’s Registrations. Although software is certainly a means to carry out many different services, its nature is fundamentally different from the Opponent’s services. There is also no evidence before me to suggest software has the same trade origin or trade channels as traders who provide scientific, analysis or research services. This conclusion is also applicable to the Applicant’s Services in Class 42 relating to software or platforms as a service.

5. The Applicant’s Services in Class 35 relate to various business management, business administration, risk management, data and database management and data analysis services. These services are framed broadly and clearly the same or similar to all of the business management, business administration, database and statistics services specified in relation to the 455, 456 and 596 marks.

6. The remainder of the Applicant’s Services in Class 42 are project management services, scientific and technological services, and digitisation/scanning of documents services. The Opponent’s 455, 456, 458, 459, 848 and 596 marks all specify various scientific, technological, scanning and analysis services, which are the same or similar to the remainder of the Applicant’s Services in Class 42.

7. I note that the services of the 096 and 183 marks relate to screens and hardware displays as well as ‘apparatus for storage and reproduction of images’ in Class 9. In my view, these goods are not the same or closely related to any of the Applicant’s Goods or Services. Accordingly, I am not satisfied that there would be a real or tangible danger of confusion between the Trade Marks and the 096 and 183 marks.

8. I will now consider whether the Trade Marks are substantially identical with, or deceptively similar to any of 455, 456, 458, 459, 848 and 596 marks.

Comparison of Marks

1. The following discussion concerns a comparison between the following trade marks:

Trade Marks

Opponent’s Registrations

COREPLAN

CORESCAN

CORESHED

(Collectively, ‘Opponent’s Word Marks’)

1. If the Trade Marks are found not to be deceptively similar to the Opponent’s Word Marks, it stands to reason that the remainder of the Opponent’s Registrations are also not substantially identical with, or deceptively similar to, the Trade Marks given their additional differences.  

2. Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[30] The Opponent made no submissions regarding whether any of the Opponent’s Registrations are substantially identical to the Trade Marks. For completeness, I note that there are visual and aural differences between the trade marks, such as the word ‘PLAN’ in the Trade Marks, or the additional word elements in each of the Opponent’s Registrations. Having regard to these features, I do not consider there to be a total impression of resemblance between the trade marks.

   [30] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

3. Section 10 defines ‘deceptive similarity’ in the following terms:

   For the purposes of this Act, 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.

4. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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 [mark].[31]

   [31] Ibid [13].

5. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[32] Accordingly, an allowance is made for imperfect recollection of the trade marks.[33] The impression comes from the trade marks in their entirety,[34] and is informed by the look, sound and ideas conveyed by the trade marks.[35]

   [32] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [33] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [34] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [35] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

1. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[36] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[37]

   [36] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [37] Ibid.

2. The Opponent emphasised that the CORESCAN Mark is identical to the Trade Mark save for the letters ‘SC’ and ‘PL’, and that the word ‘CORE’ is the essential distinguishing feature of each of the trade marks. The Opponent reasoned that ‘CORE’ was distinct in comparison to the words ‘SCAN’ and ‘PLAN’, which are descriptive of the services provided under the respective trade marks. The Opponent accepts that similarity between the CORESHED Mark and the Trade Marks is less than that of the CORESCAN Mark but reiterates that the common distinctive element between the trade marks is the word ‘CORE’.

3. The Applicant submits that the words ‘SCAN’, ‘SHED’ and ‘PLAN’, while descriptive, have distinct meanings, and are not visually, aurally or conceptually similar. In the Applicant’s view, consumers are likely to recall the trade marks in their entirety, not just by the element ‘CORE’.

4. The trade marks share some visual and aural similarities derived from the use of the word ‘CORE’ as the first word of each trade mark. As a general principle, the first part of a trade mark is often the most important for comparative purposes.[38] In each of the trade marks, ‘CORE’ is followed by a different additional word element, namely ‘SCAN’, ‘SHED’ and ‘PLAN’. These additional words provide a degree of visual and aural difference between the trade marks.

   [38] London Lubricants (1920) Limited Application (1925) 42 RPC 264, 279 (Sargent LJ).

5. In the context of many of the Applicant’s Goods and Services, the word ‘core’ has descriptive significance. This is reflected in Goulios, which includes numerous examples of the word ‘core’ being utilised by other businesses in the mining and resource industries for its descriptive significance. Similarly, the Opponent’s evidence includes descriptive use of the term in relation to its scanning and geological analysis services. For example, Armitage includes brochures explaining how its services improve ‘core logging’, numerous references to ‘drill cores’, and ‘core photos’.[39] In more general terms, ‘core’ refers to the centre or innermost part of something.[40] The Macquarie Dictionary also relevantly defines ‘core’ as ‘a cylinder of rock, soil etc, cut out by boring’[41]. This aspect of ‘core’ was emphasised in Goulios, which included an extract from the Cambridge Dictionary defining ‘core’ as a ‘long, thin cylinder-shaped mass of material taken out of the earth for study’[42]. I note that this definition is consistent with the use by the Opponent. For example:

[39] Armitage Annexure BJA-9.

[40] Macquarie Dictionary (online at 14 October 2024) ‘core’ (def 1).

[41] Ibid (def 7).

[42] Goulios Annexure AG-12.

1. The effect of this descriptive significance for the purposes of assessing deceptive similarity is the central point of contention between the parties. The Applicant submits that because of the relatively high degree of descriptiveness of the word ‘CORE’, consumers would not be confused between the Trade Marks and the Opponent’s Registrations. In contrast, the Opponent maintains that ‘CORE’ is not descriptive in nature, noting its many registrations incorporating the term ‘CORE’ and that neither the Trade Marks nor the Opponent’s Registrations have been opposed under s 41.  

2. I accept that descriptive elements of a trade mark should be afforded less weight for the purposes of comparison.[43] However, the authorities do not suggest that a common descriptive element is to be ignored.[44] It is still necessary to conduct the comparison with reference to the descriptive component and the trade marks in their entirety.

   [43] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem (1929) 41 CLR 475, 477-8 (Know CJ, Gavan, Duffy, and Starke JJ).

   [44] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ)

3. In my assessment, having regard to the trade marks in their entirety, the common feature between the trade marks is a word likely to be viewed and understood by consumers as descriptive within the context of both the Applicant’s Goods and Services and those of the Opponent.  In my view, despite being the first word of each trade mark, ‘CORE’ is no more significant than the other elements of the trade marks. Accordingly, I do not agree with the Opponent that the word ‘CORE’ is likely to been seen as the primary essential feature of the trade marks, or that the trade marks are likely to be recalled by the solely the word ‘CORE’.

4. Although the additional word elements of the trade marks, ‘PLAN’ and ‘SCAN’ are also descriptive, they are not visually, aurally or conceptually similar, nor do they convey a similar impression. I note in the case of the word ‘SHED’, it appears to have no clear descriptive significance in relation to any of the relevant services.

5. Another point of differentiation is the conceptual differences these word elements create when paired with the word ‘CORE’. I agree with the Applicant’s characterisation of the Trade Marks, namely that they convey the idea of a central or ‘core’ plan or planning service. In contrast,  ‘CORESCAN’ conveys the idea of a scan of a core or a process of coring and ‘CORESHED’ conveys the idea of a centralised shed or storage facility.  

6. The Opponent referred me to instances of alleged confusion between the trade marks. Goodey refers to an experience at a conference in which a participant of the conference associated the Trade Marks with the Opponent’s CORESCAN Marks.[45] Mr Overand, an employee of the Opponent, describes a situation where he received one of the Applicant’s business cards, and was unsure whether the Opponent had established a new service or business.[46] The Applicant submits that this evidence ought not be given much weight as it is not clear whether the individual who raised the question had any knowledge of the Applicant or the Applicant’s goods and services. I do not find the alleged instance of confusion particularly probative given Mr Overend’s connection with the Opponent.

   [45] Goodey [13].

   [46] Overend [14]-[16]

7. In my view, consumers who see the trade marks are likely to recall the trade marks in their entirety. Considered as whole trade marks, the visual, aural and conceptual differences outweigh the similarities that are derived from the word ‘CORE’. For these reasons, I am not satisfied that the Trade Marks are similar enough to the Opponent’s Word Marks to cause a real or tangible danger of confusion.

8. The factors outlined above apply equally to a comparison of the Trade Marks with each of the remainder of the Opponent’s Registrations. I note that the Composite Trade Mark and the remainder of the Opponent’s CORESCAN Marks contain circular devices positioned to the right of the word elements. The device elements present in the Opponent’s Registrations are reproduced below:

1. Although the above devices and the device in the Composite Trade Mark are each circular in nature, in my view, there is not sufficient similarity between the devices to result in any further danger of confusion. Noting the differences outlined above, I am satisfied there would not be a real tangible danger of confusion between the Trade Marks and the any of the Opponent’s Registrations. Accordingly, the section 44 ground of opposition has not been established.

Section 60

1. Section 60 provides:

   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.

2. To establish this ground of opposition, the Opponent must establish:

   • A reputation was acquired by another trade mark in Australia before the Relevant Date; and
   • That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

3. The Opponent relies on its use of the Opponent’s Registrations, contending that as of the Relevant Date, these trade marks had acquired a reputation in Australia.

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[47] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[48]

   [47] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [48] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[49] or providing evidence of high volume of sales,[50] advertising expenditure or other promotion of goods or services to which the trade mark applies.[51] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[52]

   [49] Ibid [118].

   [50] McCormick (n 46) [86].

   [51] Ibid.

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

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[53] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[54]

   [53] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

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

4. In my view, the Opponent’s evidence falls short of demonstrating that the Opponent’s Registrations had developed a reputation amongst a substantial number of relevant consumers in Australia before the Relevant Date. I have arrived at this conclusion having regard to the Opponent’s evidence, in particular:

• The use of CORESCAN Marks since 2009, and various other trade marks containing ‘CORE’, including CORETABLE, CORESHED and COREPHOTO.

• The promotion of the CORESCAN marks at trade fairs and mining conferences. A number of examples are included in Armitage dating from 2010 to 2021.

• Use of the CORESCAN Marks on the Opponent’s Website. I note Goodey 2 details the unique visitors to the Opponent’s Website during 2021 and 2022.

• The Opponent’s sales and marketing expenditure from 2013 to 2021.

• The Opponent’s industry partnerships, and partnerships with Australian universities.

1. From the outset, I note that although the Opponent has claimed a reputation in the Opponent’s Registrations, the majority of evidence pertains to its CORESCAN Marks. There is very limited use of the CORESHED or CORETABLE marks. Consequently, I am not satisfied that any of the CORESHED or CORETABLE marks have acquired a reputation in Australia.

2. Turning to the CORESCAN Marks, although the CORESCAN Marks have been used in Australia since 2009, the extent of the use of the trade marks during that period and the degree of their exposure to Australian consumers is more difficult to discern. First, although the sales relating to the CORESCAN Marks detailed in Armitage are not insignificant, there is no indication of the costs of the Opponent’s services or any other evidence that would allow me to contextualise the sales in terms of volume, number of customers, or that might otherwise indicate the number of people exposed to the trade marks. Consequently, I am unable to determine the significance of those sales amounts relative to the mining, resource and energy industries.

3. Second, the Opponent’s evidence indicates a limited social media and online presence. This is not surprising given the technical and specialised nature of the Opponent’s services. The Opponent appears to have done the majority of its promotion via industry channels, in particular through use of print media, such as brochures, and trade conferences. The Applicant notes that a number of the conferences detailed in Armitage were international conferences occurring outside of Australia. In response, the Opponent emphasised the international nature of its own services and the mining industry in general. Although Armitage indicates the Opponent has been present at both domestic and international conference since at least 2015, only six conferences have been specified in Arimtage. The remainder of the Opponent’s evidence of marketing and promotion concerns academic papers referencing the CORESCAN marks, and the Opponent’s partnership with the University of Tasmania and University of Queensland. Whilst these may demonstrate some public awareness of the CORESCAN Marks, they do not, in my view, demonstrate any significant degree of exposure of the CORESCAN Marks to Australian consumers.

4. Finally, unlike the Opponent’s sales figures, its marketing expenditure does not indicate whether those figures are the Opponent’s Australian or international expenditure. Accordingly, given the international nature of the Opponent’s business, I cannot form a clear view of the degree of the Opponent’s marketing expenditure in Australia.

5. Although I acknowledge that the evidence indicates that the Opponent has used its trade marks in the mining industry in Australia, for the above reasons I am not satisfied that the Opponent’s CORESCAN Marks have acquired a reputation in Australia amongst a significant number of people. Given s 60(a) has not been satisfied, it is not necessary to consider s 60(b). Accordingly, the s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42 provides:

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

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. To succeed in an opposition under section 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [55]

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

4. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[56] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60.[57]

   [56] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [57] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

5. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Marks would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Marks and the Opponent’s Registrations are related.

6. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[58] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation that:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[59]

   [58] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [59] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Marks would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Decision

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

   Unless subsection (3) applies to the proceedings, 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.       

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark numbers 2245627 and 2245628 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Marks, I direct that the registration of the Trade Marks not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponent has not been successful, I award costs against the Opponent under section 221 in accordance with Schedule 8 of the Regulations in respect of trade mark number 2245627. For trade mark number 2245628, I award reduced costs against the Opponent in the same manner as Hume Industries (Malayasia) Berhad v James Hardie & Coy Pty Ltd.[60]

   [60] [2001] ATMO 78 (Delegate Williams).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

16 October 2024

Annexure A

Specification of Trade Mark Number 2245627

Class 9: Data processing software; Data communications software; Process controlling software; Computer software; Computer software (programs); Computer software designed to estimate costs; Computer software designed to estimate resource requirements; Computer software downloaded from the internet; Computer software for business purposes; Computer software packages; Computer software programs; Industrial computer software programs; Interactive computer software; Computer software programs for database management; Computer software programs for spreadsheet management; Computer programs for financial management; Computer programs for project management; Computer programs for use in database management

Class 35: Business administration services; Billing services; Cost analysis; Cost price analysis; Business administration advisory services; Business advisory services; Business analysis services; Business data analysis; Business data analysis services; Business consulting services for digital transformation; Business advisory services relating to the management of businesses; Computerised file management; Computerized file management; Advisory services relating to business risk management; Business project management; Data base management; Data management; Database management

Class 42: Engineering project management services; Scientific and technological services; Platform as a Service (PaaS); Application Service Provider (ASP) services; Software as a service (SaaS); Digitisation of documents (scanning)

Specification of Trade Mark Number 2245628

Class 9: Data processing software; Data communications software; Process controlling software; Computer software; Computer software designed to estimate costs; Computer software designed to estimate resource requirements; Computer software downloaded from the internet; Computer software for business purposes; Computer software packages; Computer software (programs); Computer software programs; Industrial computer software programs; Interactive computer software; Computer software programs for database management; Computer software programs for spreadsheet management; Computer programs for financial management; Computer programs for project management; Computer programs for use in database management

Class 35: Business administration services; Billing services; Cost analysis; Cost price analysis; Business administration advisory services; Advisory services for business management; Business advisory services; Business analysis services; Business data analysis services; Business data analysis; Business consulting services for digital transformation; Business advisory services relating to the management of businesses; Computerised file management; Computerized file management; Advisory services relating to business risk management; Business project management; Data base management; Data management; Database management; Computerised database management

Class 42: Engineering project management services; Scientific and technological services; Platform as a Service (PaaS); Application Service Provider (ASP) services; Software as a service (SaaS); Digitisation of documents (scanning)

Annexure B

Trade Mark Registration 1606455

Class 35: BUSINESS MANAGEMENT AND ADMINISTRATION SERVICES COMPRISING DATA SEARCH IN COMPUTER FILES FOR OTHERS; UPDATING AND MAINTENANCE OF DATA IN COMPUTER DATABASES; COMPILATION OF INFORMATION INTO COMPUTER DATABASES; SYSTEMISATION OF INFORMATION INTO COMPUTER DATABASES; COMPILATION OF STATISTICS; COMPUTERISED FILE MANAGEMENT; PROVIDING BUSINESS INFORMATION VIA A WEBSITE; DOCUMENT REPRODUCTION; RETRIEVAL AND MANAGEMENT OF ELECTRONIC DATA

Class 42: SCIENTIFIC AND TECHNOLOGICAL SERVICES COMPRISING ELECTRONIC DATA STORAGE; ANALYSIS FOR EXPLOITATION OF GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL DATA; CONVERSION OF DATA OR DOCUMENTS FROM PHYSICAL TO ELECTRONIC MEDIA; DIGITISATION OF DOCUMENTS (SCANNING); PROVIDING GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL TECHNICAL AND ANALYTICAL INFORMATION VIA A WEBSITE; OFFSITE DATA BACKUP; DELIVERY OF GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL DATA VIA WEB BASED SERVERS

Trade Mark Registration 1606456

Class 35: BUSINESS MANAGEMENT AND ADMINISTRATION SERVICES COMPRISING DATA SEARCH IN COMPUTER FILES FOR OTHERS; UPDATING AND MAINTENANCE OF DATA IN COMPUTER DATABASES; COMPILATION OF INFORMATION INTO COMPUTER DATABASES; SYSTEMISATION OF INFORMATION INTO COMPUTER DATABASES; COMPILATION OF STATISTICS; COMPUTERISED FILE MANAGEMENT; PROVIDING BUSINESS INFORMATION VIA A WEBSITE; DOCUMENT REPRODUCTION; RETRIEVAL AND MANAGEMENT OF ELECTRONIC DATA

Class 42: SCIENTIFIC AND TECHNOLOGICAL SERVICES COMPRISING ELECTRONIC DATA STORAGE; ANALYSIS FOR EXPLOITATION OF GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL DATA; CONVERSION OF DATA OR DOCUMENTS FROM PHYSICAL TO ELECTRONIC MEDIA; DIGITISATION OF DOCUMENTS (SCANNING); PROVIDING GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL TECHNICAL AND ANALYTICAL INFORMATION VIA A WEBSITE; OFFSITE DATA BACKUP; DELIVERY OF GEOLOGICAL, MINERALOGICAL AND GEOCHEMICAL DATA VIA WEB BASED SERVERS

Trade Mark Registration 1606458

Class 42:  SCIENTIFIC AND TECHNOLOGICAL SERVICES COMPRISING CHEMICAL ANALYSIS, CHEMICAL RESEARCH, CHEMISTRY SERVICES, MINERALOGICAL ANALYSIS, MINERALOGY SERVICES, GEOLOGICAL PROSPECTING, GEOLOGICAL RESEARCH AND GEOLOGICAL SURVEYS

Trade Mark Registration 1606459

Class 42:  SCIENTIFIC AND TECHNOLOGICAL SERVICES COMPRISING CHEMICAL ANALYSIS, CHEMICAL RESEARCH, CHEMISTRY SERVICES, MINERALOGICAL ANALYSIS, MINERALOGY SERVICES, GEOLOGICAL PROSPECTING, GEOLOGICAL RESEARCH AND GEOLOGICAL SURVEYS

Trade Mark Registration 1729096

Class 9: Screens for display of digital data and images; tables containing a screen for display of digital data and images; apparatus for storage and reproduction of images

Trade Mark Registration 1729183

Class 9: Screens for display of digital data and images; tables containing a screen for display of digital data and images; apparatus for storage and reproduction of images

Trade Mark Registration 2112848

Class 42: Scientific and technological services comprising chemical analysis, chemical research, chemistry services, mineralogical analysis, mineralogy services, geological prospecting, geological research and geological surveys being services in class 42

Trade Mark Registration 2117596

Class 35: Business management and administration services comprising data search in computer files for others; updating and maintenance of data in computer databases; compilation of information into computer databases; systemisation of information into computer databases; compilation of statistics; computerised file management; providing business information via a website; document reproduction; retrieval and management of electronic data

Class 42: Scientific and technological services comprising electronic data storage; analysis for exploitation of geological, mineralogical and geochemical data; conversion of data or documents from physical to electronic media; digitisation of documents (scanning); providing geological, mineralogical and geochemical technical and analytical information via a website; offsite data backup; delivery of geological, mineralogical and geochemical data via web based servers