Geowan Pty Ltd v Senceive Ltd

[2020] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by Geowan Pty Ltd to registration of trade mark application 1919914 (9,38,42) – GeoWan – in the name of Senceive Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Marcus Fleming of Counsel instructed by Marcus & Marcus Applicant: David Thompson of Counsel instructed by Elliptic Legal & Patent Services
Decision:	2020 ATMO 133 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 58, 60 and 62A considered – s 58 established in respect of some of the Services – amendment made deleting the services for which the s58 ground has been established– trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Geowan Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Senceive Ltd (‘Applicant’): 

Application Number:	1919914
Filing Date:	13 April 2018
Priority Date[1]:	15 February 2018
Goods and Services[2]:	Class 9: Computer software; computer programs; data processing equipment; surveying apparatus and instruments; wireless communication system to enable measurement and sensing; measuring, detecting and monitoring apparatus, instruments, indicators and controllers; remote monitoring apparatus; instruments for surveying physical data; apparatus for measuring, monitoring and researching geophysical and geotechnical structures and their environments; wireless transmitters, sensors, detectors and communication apparatus; alarm sensors; wireless communication systems; wireless communication apparatus Class 38: Wireless communication services; rental of wireless communication systems; provision of wireless communication networks; wireless electronic transmission of data; leasing of telecommunication apparatus and equipment; providing access to databases; information, advisory and consultancy services relating to all the aforesaid services Class 42: Scientific and technological services and research and design relating to measurement and instrumentation applications; computerised information services relating to the measurement and monitoring of geophysical and geotechnical structures and their environments; geophysical and geotechnical surveys; geophysical and geotechnical exploration services; geophysical and geotechnical research services; collating, compiling, processing, monitoring, reviewing and analysing technical data; computerised analysis of data; research, design and development of computer software and computer programs; research, design and development of technologies for wireless communication; research, design and development of data processing systems; cloud-based software services relating to the measurement and monitoring of geophysical and geotechnical structures and their environments; monitoring and measurement of geophysical and geotechnical structures and their environments; monitoring of network systems; monitoring of computer systems and wireless communication systems by remotes access; surveying services; leasing and rental of scientific instruments and technical apparatus; installation, maintenance, servicing and repair of computer software and computer programs; all the aforesaid services also provided from a computer database and/or from the Internet; information, advisory and consultancy services relating to all the aforesaid services (‘Applicant’s Goods and Services’)
Trade Mark:	GeoWan	(‘Trade Mark’)

[1] Convention priority claimed: 15 February 2018, United Kingdom, No. 3290447 in respect of WIRELESS COMMUNICATION SYSTEM TO ENABLE MEASUREMENT AND SENSING in class 9; SCIENTIFIC AND TECHNOLOGICAL SERVICES AND RESEARCH AND DESIGN RELATING TO MEASUREMENT AND INSTRUMENTATION APPLICATIONS in class 42.

[2] At the time of the hearing

2. Following the advertisement on 12 July 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 10 September 2018.  The Opponent then filed a Statement of Grounds and Particulars (subsequently rectified) on 10 October 2018 (‘SGP’). The SGP raised grounds of opposition under ss 58, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 7 January 2019.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 7 April 2019 by Tim Cara, the Director of the Opponent, with Attachments TC-1 to TC-10 (‘Cara 1’).

   4. The Applicant filed the following evidence in answer:

   ·Declaration made on 10 July 2019 by Bryn Smith, Technical Director of the Applicant, with Annexures A to E (‘Smith declaration’); and

   ·Declaration made on 10 July 2019 by Kevin Blain, the former Chief Technical Officer of the Applicant (‘Blain declaration’). The Blain declaration is of no relevance to this matter as it responds to an allegation in the SGP (relating to the s 62A ground of Opposition) that was not subsequently supported in evidence.

2. The Opponent filed the following evidence in reply:

   ·Declaration made on 16 September 2019 by Tim Cara, the Director of the Opponent, with Attachment TC-11 (‘Cara 2’).

   6. The Applicant sought to file additional evidence out of time on 16 June 2020 but as this evidence was filed out of time and there was not a compelling case for the Registrar to have regard to this late-filed evidence pursuant to Reg 21.15(4) of the regulations, I have not had regard to it for the purposes of this decision.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 17 October 2019 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 14 July 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 14 April 2020 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 30 June 2020 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 5 July 2020 (‘Applicant’s Submissions’).  At the hearing David Thompson of Counsel instructed by Elliptic Legal & Patent Services represented the Applicant, and Marcus Fleming of Counsel instructed by Marcus & Marcus represented the Opponent, both appearing by video conference.

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs as well as the submissions made at hearing.

   The Opponent

3. The Opponent is an Australian company that purports to offer electronics, network and software solutions including the support and management of telecommunications network infrastructure.  

   9. The Opponent is the applicant for the trade mark listed below (‘Opponent’s Trade Mark’) which is currently under examination, with a later priority date than the Trade Mark. 

Number	Trade Mark	Priority Date	Goods and Services
1973332	GeoWan	4 Dec 2018	Class 37: Apparatus for linking computers into networks; Apparatus for network communication; Apparatus for telephone networks; Apparatus for transmitting data by the telephone network; Apparatus for use in communications networks; Communication devices for linking computer networks; Communications networks; Computer apparatus for use in local area networks; Computer apparatus for use with computer networks; Computer installations (networks); Computer network apparatus; Computer network installations; Computer network operating installations; Computer networking apparatus; Computer networking installations; Computer networks; Computer networks for the communication of data; Computer networks for the processing of data; Computer networks for the storage of data; Computer programs for the creation of networks; Computer programs relating to computer networks; Computer programs relating to local area networks; Connecting elements for communication networks; Data networks; Data transmission networks; Devices for use in the networking of computers; Electronic industrial network apparatus for high speed data transmission; Electronic networking apparatus for telephone systems; Installations for use in forming computer networks; Installations for use in the networking of communications apparatus; Installations for use in the networking of computers; Integrated circuits for networks for use in identification; Integrated service digital network installations; Integrated services digital network components; Intercom key apparatus for connection to telephone networks; Intercom key terminals for connection to a telephone network; Interface network modems; Linked computer networks; Local area networking apparatus for the switching of data; Local area networking apparatus for the transmission of data; Local area networks; Local optical fibre networks; Memory apparatus for telecommunications network design; Memory apparatus for telecommunications network management; Network applications being computer programs; Network controlling apparatus; Network management apparatus; Network management computer software; Network management control apparatus; Network protection devices (electronic); Network terminating apparatus (electric or electronic); Networks for the interconnection of communication systems; Telecommunications network management installations; Telecommunications networks; Wireless communication apparatus; Wireless transmission apparatus; Wireless transmission apparatus for remote control; Computer programs (downloadable software); Computer programs and recorded software distributed online; Computer software; Electrical sensors; Electronic sensors; Sensors (measurement apparatus), other than for medical use; Apparatus for automatically placing messages via telecommunications equipment; Apparatus for telecommunications engineering; Computer controlled telecommunications exchange apparatus; Computer programs for the control of telecommunication apparatus; Computer programs for the control of telecommunication instruments; Computer programs for use in telecommunications; Digital telecommunications apparatus; Digital telecommunications instruments; Mobile telecommunications apparatus; Programmable telecommunication apparatus; Telecommunications apparatus; Telecommunications apparatus for diagnostic purposes; Telecommunications apparatus for interfacing purposes; Telecommunications apparatus for measuring purposes; Telecommunications apparatus for transferring data to computers; Telecommunications apparatus for transmission purposes; Telecommunications apparatus for transmitting data for use with computers; Telecommunications apparatus for use with analogue signals; Telecommunications apparatus for use with digital signals; Telecommunications cable; Telecommunications devices; Telecommunications digital exchange apparatus; Telecommunications equipment; Telecommunications ground station apparatus; Telecommunications installations; Telecommunications instruments; Telecommunications machines; Transmitters (telecommunication); Transmitting apparatus for telecommunications Class 38: Communication network consultancy; Communication services over computer networks; Communications by fiber optic networks; Communications by fibre optic networks; Computer network communication services; Data transmission services over telecommunications networks; Digital network telecommunications services; Electronic network communications; Information services relating to electronic communication networks; Internet portal services (providing user access to a global computer network); Netcasting (broadcasting over a global computer network); Operating of electronic communications networks; Operation of local area networks; Operation of wide-band telecommunications networks; Providing access to computer networks; Providing telecommunications connections to a global computer network; Providing user access to a global computer network and online sites containing information on a wide range of topics; Providing user access to global computer networks; Rental of access time to global computer networks; Rental of local area networks; Switching network services (telecommunications); Telecommunications security (providing secure connections and access including to computers and a global computer network); Web portal services (providing user access to a global computer network); Webcasting (broadcasting over a global computer network); Wireless broadcasting; Wireless communication services; Wireless telephone services; Advisory services relating to telecommunications; Consultancy services relating to telecommunications; Operation of telecommunications apparatus; Operation of telecommunications systems; Remote transmission of data by means of telecommunications; Rental of telecommunication apparatus; Telecommunications advisory services; Telecommunications consultancy; Telecommunications routing and junction services; Telecommunications services for the distribution of data Class 42: Computer network services; Computer security services (testing and risk assessment of computer networks); Development of computer based networks; Development, maintenance and updating of a telecommunication network search engine; Cloud computing; Providing virtual computer systems through cloud computing; Design of telecommunications apparatus; Design of telecommunications installations; Telecommunications technology consultancy

10.     The relevant claims/statements in Cara 1 and 2 can be summarised as follows:

·     The Opponent has, since its inception, offered and provided services relating to the development of a public and private Internet of Things (‘IoT’) networks.  It is currently implementing a public network rollout around Australia.  It has previously implemented networks for cattle infrastructure modelling, energy and electricity modelling, and geological monitoring. 

·     The Opponent’s business was previously operated by Excel Electrical Engineers Pty Ltd under the name AusLoRa, but following a cease and desist letter received in mid-2016 the Opponent’s predecessor in title commenced offering its services under the Opponent’s Trade Mark.

·     The Opponent was incorporated on 31 August 2016 and the business previously operated by Excel Electrical Engineers Pty Ltd was transferred to it.  Since its incorporation it has used the Opponent’s Trade Mark in connection with its business and services offered by it.

·     The Opponent also offers IoT products through an online store via the ecommerce platform Shopify.  The Opponent has participated in a number of industry events.

·     The Applicant’s use of the Trade Mark for the Applicant’s Goods and Services directly overlaps with the services that the Opponent has offered since August 2016.  In particular, in 2019 the Applicant incorporated a low-power wide-area network into its product which would directly overlap with the existing GeoWan product.

·     In 2019 the Opponent experienced an instance of confusion when a potential client mistook the Opponent as a subsidiary of the Applicant.

11.     Cara 1 provides a list of the Opponent’s clients (including testimonials from those clients) as well as financial statements.  The client list is not unimpressive but the financial statements indicate that the Opponent’s expenses and income prior to the filing date for the mark to be minimal.  As discussed later in this decision, the Opponent’s evidence does not explain how the Opponent has provided a long significant set of services for a large number of clients, while simultaneously providing financial statements that indicate that the Opponent, in FY2017 and FY2018, received essentially negligible income and incurred negligible expenses.  Cara 1 also provides copies of the Opponent’s websites and social media pages, but again the documentary evidence indicates that the number of visitors to the Opponent’s websites and the number of social media followers is very small. 

The Applicant

12.     The Applicant is a company based in the United Kingdom, incorporated in 2005, that provides wireless remote control monitoring solutions. 

13.     The relevant claims/statements in the Smith declaration can be summarised as follows:

·     The Applicant’s flagship platform is a wireless condition monitoring system called FlatMesh.  The Applicant developed a wireless platform to support the FlatMesh product under the GeoWan name.

·     The Applicant independently developed the GeoWan name in early 2018 and at the time it applied to register the Trade Mark in Australia, had an intention to use the Trade Mark in Australia.

·     The Applicant’s FlatMesh system comprises of sensor nodes and gateways that communicate data within a short distance networks. 

14.     The Annexes to the Smith Declaration provide extracts from other countries’ IP databases confirming the registration of the Trade Mark in those locations along with an extract from the Applicant’s website further describing the Applicant’s GeoWan technology.  

15.     The Blain Declaration responds to an allegation particularised in the SGP that Kevin Blain, the former chief technical officer of the Applicant, attended a conference in Melbourne in 2016 and thus became aware of the Opponent.  Mr Blain denies being in Melbourne in 2016.  

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 58, 59, 60 and 62A of the Act but in its submissions no longer presses the s59 ground. To successfully oppose the application the Opponent needs to establish one of the remaining nominated grounds.

   17.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined for the purposes of ss 58, 62A and parts of s 60 is 13 April 2018 (‘relevant date’), being the filing date of the application in Australia.[5] The Applicant has also claimed a Convention Priority date pursuant to the Madrid Protocol being 15 February 2018; this is the relevant date for the ground of opposition pursuant to s 60 with respect to the goods and services for which the Applicant has claimed convention priority, being ‘wireless communication system[s] to enable measurement and sensing’ in class 9 and ‘scientific and technological services and research and design relating to measurement and instrumentation applications’ in class 42. I note that nothing in my decision turns on the difference between the relevant date and the Convention Priority date.

   Discussion

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

   Section 58 – Applicant not owner of trade mark

   18. Section 58 of the Act is reproduced below:[6]

   [6] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   19.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[7]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[8] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[9]

   [7] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [8] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

   20.     In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[10] stated as follows:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[11].

   [10] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18].

   [11] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

   21. The ground based on s 58 of the Act was particularised in the SGP as set out below, though in the interests of brevity I do not extract Section 1 and 2 of the SGP:

   1. In Section I and Section II of this Statement, the genesis and history of the Opponent with respect to the unregistered trade mark are described, which descriptions clearly identify historical use of that mark by the Opponent well before the Applicant’s application was lodged.

   2. Based on the Opponent’s history, it cannot be argued that there has been no use of the trade mark in this jurisdiction. Consequently, it is not open to conclude that an entitlement to ownership may be asserted by the Applicant simply by its status as first applicant for registration.

   3. On information presently available, the Opponent asserts its common law ownership of the trade mark established by its current and historical use of same.

   4. To the knowledge of the Opponent and its solicitors, notwithstanding the conduct of various searches and enquiries, the Applicant does not have any substantive presence in Australia (commercial or otherwise), and certainly no demonstrable commercial association with the proposed trade mark – presently, or formerly (other than by its Application). Neither is there any information known to the Opponent that would indicate any person or entity other than the Opponent has ever used the trade mark.

   5. It is significant that the Opponent has, in the course of its commerce, used the unregistered trade mark – which is the same as, or substantially identical to, the Applicant’s proposed trade mark - in relation to goods and services that carry descriptions similar (if not identical) to the Applicant’s proposed class descriptions - and at the very least - essentially the same.

   22.     The Opponent relies on the Opponent’s Trade Mark that is identical to the Trade Mark.  The first factor is satisfied.  There is no evidence that the Applicant used the Trade Mark in Australia prior to the relevant date.  Therefore, the challenge in this case is to determine exactly for what goods and services the Opponent used the Opponent’s Trade Mark  prior to the relevant date (and hence established earlier claim to ownership) and whether these are the same kind of thing as the Goods and Services.  This requires consideration of the Opponent’s evidence.

   23.     The Opponent’s evidence in this matter is confusing and somewhat unhelpful.  Much of it relates to overseas use, undated statements of use (‘since its incorporation GeoWan has…’), use after the relevant date, or consists of broad statements of use for a variety of services that are not supported by documentary evidence.  Cara 1 contains statements to the effect that the Opponent offers solutions in the ‘internet of things’ industry, including devices, electronics, network and software.  The purpose of the ‘internet of things’ industry is to capture field based data through the use of sensors or similar devices connected to a Wide Area Network (WAN).  The data is then aggregated and displayed for analytics.

   24.     The services the Opponent purports to offer appear to be the creation of such WANs as well as advising, supporting and managing network infrastructure.  Cara 1 gives examples of work the Opponent has done in this field, such as monitoring remote assets and infrastructure for Charles Darwin University or rolling out and monitoring assets for FedEx.   The Opponent’s business commenced in 2015 through a predecessor in title and the Opponent was incorporated on 31 August 2016, approximately 19 months prior to the relevant date. 

   25.     The Opponent appears to have traded under the Opponent’s Trade Mark or a logo consisting of the word GEOWAN (with minor stylisation) and a triangle device (‘Opponent’s Logo’).  While the addition of the device to the Opponent’s Logo renders the Opponent’s Logo not substantively identical to the Trade Mark, this does not affect my consideration as I find that in most examples of purported use provided by the Opponent, it appears that the Opponent used both the Opponent’s Trade Mark and the Opponent’s Logo as trade marks.  I do not accept the submissions made by the Applicant that the evidence does not show which if any trade mark the Opponent was using prior to the relevant date:  To the extent the Opponent provided any goods and services prior to the relevant date, it did so under the Opponent’s trade mark.

   26.     The Opponent has since 2016 operated an online store under the Opponent’s Trade Mark from the e-commerce platform ‘Shopify’ (and later Pinterest) through which it has sold sensors and other devices relating to the IoT.  An issue that arises is whether the Opponent is using the Opponent’s Trade Mark for retail services relating to network products or whether the Opponent is using the Opponent’s Trade Mark for the products themselves.  The evidence is unclear but in summary it does not appear that any of the products bear the Opponent’s Trade Mark and the sole reference to the products made using the Opponent’s Trade Mark comes from evidence that postdates the relevant date (Exhibit TC-06 to Cara 1).  For that reason I have reached the conclusion that prior to the relevant date the Opponent has provided retail services under the Opponent’s Trade Mark but had not used the Opponent’s Trade Mark for goods of any sort.  The Opponent also provides evidence of the revenue from its online store.

   27.     The key issue that is apparent from the Opponent’s evidence is this: While the Opponent purports to have provided a large variety of services in the IoT industry to a variety of customers (and has provided customer testimonials to support this), its financial statements for the financial years ending in 30 June 2017 and 30 June 2018 indicate a trading income that is very limited.  Indeed, it appears that the Opponent’s trading income arises entirely from revenue from its online store.  Its expenses are minimal and indeed reflect a minor business that operates an online store and not a business that is involved in the construction of significant network infrastructure sites.  The Opponent provides no explanation for this discrepancy, which was squarely raised in paragraph 40 of the Applicant’s Submissions.

   28.     There is no evidence that the Opponent entered any contracts or issued any invoices to third parties for its purported services.  However, to support its claims of use of the Opponent’s Trade Mark the Opponent has provided the following documents:

   -A presentation dated March 2018 from the Opponent and enviroeye, which refers to the work the Opponent did in conjunction with enviroeye to supply hardware and network connectivity that enabled enviroeye to integrate its environmental sensors and weather stations in Victoria on the Opponent’s GEOWAN LoRaWAN network.

   -An e-mail dated 2019 from a senior manager at La Trobe University, referring to work done by the Opponent with La Trobe University in developing solutions for car parking using the Opponent’s network.  While the e-mail refers to the manager meeting Tim Cara in 2017 it is not clear when the work conducted by the Opponent for La Trobe University started.

   -An e-mail from a senior lecturer from Swinburne University of Technology that refers to an IoT project that the Opponent was involved in at Swinburne during 2017.

   -An e-mail from an academic at Charles Darwin University referring to work the Opponent has done with CDU since 21 April 2017 on developing IoT solutions for the remote monitoring for the cattle and aquaculture industries.  This e-mail specifically refers to the GeoWan network stations and that the Opponent is a partner of Charles Darwin University.

   -An e-mail dated 24 February 2017 confirming that the Opponent is an ACMA (Australian Communications and Media Authority) responsible supplier.

   29.     The Opponent also provides evidence of its use of the Opponent’s Trade Mark in marketing including copies of its websites and social media presence.  Much of this material postdates the relevant date but relevantly:

   -The Opponent provides evidence that its primary website has been active since November 2016 but the number of visitors to the website was very low, consistent with the minimal sales figures generated by the Opponent.

   -The Opponent provides evidence of an article published by its director on Linkedin dated March 13, 2017 referring to the IoT but not indicating what goods and services are offered by the Opponent.  

   -The Opponent has evidence of it launching a Facebook page in late 2016 but there appears to be limited evidence of postings.

   -The Opponent’s director participated as a speaker in a forum on 15 August 2017 on Internet of Things that described him as the founder of GeoWan IoT.

   30.     In essence Cara 1 contains clear statements from the Deponent that the Opponent has used the Opponent’s Trade Mark, albeit often somewhat vague as to the exact services and the timeframe.  This is supported by testimonials from customers and partners in the academic industry that refer (again somewhat vaguely through the use of words like ‘collaboration opportunity’, ‘working with the development team’) to services provided by the Opponent prior to the relevant date.  However the exhibits to Cara 1 indicate that the Opponent received no revenue prior to the relevant date other than through the Shopify account and incurred none of the expenses one would expect of a provider of services such as ‘developing IoT solutions for the remote monitoring for the cattle and aquaculture industries’ or ‘supply hardware and network connectivity’ (which would likely involve some level of travel, accommodation and purchase of equipment as part of the creation of a LoRaWAN network).  While I appreciate that the Opponent may have been a start-up with limited expenses in a new and expanding industry, this issue is difficult to resolve.

   31.     However, it is not necessary that there be an actual dealing in a particular good or service for there to be trade mark use.  In Lomas v Winton Shire Council [2002] FCAFC 413 the Full Court said (emphasis added):

   It may even be possible to establish use where the mark has been used in an advertisement of goods in the course of trade in circumstances where there is an existing intention to offer or supply goods bearing the mark in trade or there is an actual trade or offer to trade in the goods bearing the mark - Moorgate Tobacco Co Ltd v Phillip Morris Ltd and Anor [No. 2] [1984] HCA 73; (1984) 156 CLR 414 at 433-4. However, where there is no actual trade or offer to trade in goods bearing the relevant mark in Australia or any existing intention to offer or supply such goods in trade, but merely preliminary discussions and negotiations about whether the mark would be so used, there is no use so as to constitute ownership of the mark (see Moorgate Tobacco (No.2) at 434). [12]

   [12] Lomas v Winton Shire Council [2002] FCAFC 413, [39].

   32. Ultimately, noting the onus to provide evidence to support the s 58 ground of opposition rests with the Opponent I can only be satisfied that prior to the relevant date, the Opponent (under the Opponent’s Trade Mark) provided retail services, being the sale of sensors and (through its promotional activities) held itself out as offering advisory and consulting services with respect to the creation of networks as part of the Internet of Things. Given the absence of receipts, contracts, revenue or expenditure as well as the other gaps in the Opponent’s evidence identified in the paragraphs above I cannot be satisfied that the Opponent used the Opponent’s Trade Mark for any other goods or services prior to the relevant date.

   33. The Opponent is therefore the owner of the Trade Mark for ‘retail services relating to the sale of network products’ and ‘advisory and consulting services with respect to the creation of networks as part of the Internet of Things’. I find that ‘retail services relating to the sale of network products’ is not the same kind of thing as any of the Goods and Services but that ‘advisory and consulting services with respect to the creation of networks as part of the Internet of Things’ is the same kind of thing as ‘information, advisory and consultancy services relating to the Applicant’s class 42 services’ and hence the Opponent has established the ground of opposition pursuant to s 58 of the Act in respect of ‘information, advisory and consultancy services relating to the Applicant’s class 42 services’. The Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act for the remaining Goods and Services.

   Section 60

1. Section 60 of the Act is reproduced below:

   Section 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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[13]

   [13] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[14]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [14] [2000] FCA 1335, [81].

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[15]

   [15] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[16]

   [16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[17] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless, the words of Heerey J provide some guidance:

   [17] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[18]

   [18] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[19]

   [19] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

7. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   1. The background provided at Section I and Section II of this Statement identify as a matter of fact that the Opponent has in the course of conducting its business developed and cultivated its special trade mark with a reputation within a specific, yet significant and substantial, market in Australia, by virtue of:

   a. Domestic private, commercial and governmental partnerships and affiliations;

   b. International private, commercial and governmental partnerships and affiliations;

   c. Public press and media publications;

   d. Social media presence;

   e. Corporate events and functions;

   f. Research and development programs with education institutions;

   g. Sales and implementation of its products and services;

   h. Advertising and other promotional exposure;

   i. Opponent’s cultivated idea of a full suite of products and services with broad application for consumer access to IoT.

   2. It is uncontroversial to suggest that the Applicant’s proposed trade mark and the Opponent’s unregistered trade mark are aptly-described as ‘substantially similar’, if not ‘identical’.

   3. When the fact that both marks are supposed to apply to what is materially the same classification of goods and services, a comparison of the marks attracts a significant propensity for confusion.

   4. The Opponent currently occupies – and has for over three years, occupied – a market position in Australia for the delivery of network solutions to customers pertaining to IoT, which market position has been all the while developed by the Opponent with the use of its unregistered trade mark. Were the Applicant to commence trading in Australia in respect of the goods and services specified in its Application under the proposed trade mark – which trade apparently has not yet commenced – there would without doubt be confusion amongst consumers and assumptions made about the identity of the supplier of the goods and services.

   5. As an example, the Applicant’s website now appears on the first page of Google when the search term, “GeoWAN”, is used. However, all other first page search results pertain to the Opponent.

   6. The risk of such a situation coming into existence is palpable, which, in turn, creates a danger of the Applicant– through confusion and deception (whether intended or otherwise) - improperly obtaining or receiving the benefit of the Opponent’s reputation built on its unregistered trade mark in the development, sale and provision of goods and services of the same or similar nature as those specified in the Application.

8. I refer to my analysis of the Opponent’s evidence under the s 58 ground. At either the relevant date or the convention priority date the Opponent had used the Opponent’s Trade Mark for less than two years and sales under the Opponent’s Trade Mark were negligible. Although there was some promotional activity conducted by the Opponent (and I note the limited size of the IoT industry in Australia), I am not satisfied that the Opponent’s Trade Mark had, before the relevant date or the convention priority date, acquired a reputation in Australia sufficient for the requirements under s 60(a) of the Act.

9. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Section 62A

10. Section 62A of the Act is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

11. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

12. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[20]:

    [20] [2004] EWCA Civ 1028; [2005] FSR 10.

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[21]

    [21] [2012] FCA 81, [147].

13. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[22]

    [22] Ibid [165]-[166].

14. The Opponent has particularised this ground of opposition in the SGP as follows:

    1. In Melbourne in 2016 at a technology summit, the Opponent attended and interacted with the English Chamber of Commerce (‘ECoC’) and some of its constituents, including one Kevin Blain.

    2. Peculiarly, Mr Blain now is a member - and chief technical officer - of the Applicant.

    3. During the 2016 visit to Melbourne, the ECoC with Mr Blain would have been privy to discussions and information concerning the nature of the Opponent’s business services and products, and proposed developmental pathways for expansion of IoT technologies and networks, in addition to exposure to the Opponent’s unregistered trade mark (which, of course, is its trading name).

    4. Consequently, it is clear that since at least 2016, Mr Blain was aware of the trading name of the Opponent, and the nature of its business. The circumstance of Mr Blain’s current role with the Applicant subsequent to his exposure to the Opponent, its trading name and business offering certainly raises a number of questions.

    5. For example, did exposure to the Opponent in 2016 inspire a new division of the Applicant’s business?

    Why did the Applicant seek to register the same mark already established and used by the Opponent in Australia and internationally in relation to the specified goods and services?

    6. It appears in the circumstances that the Applicant either knew about the Opponent’s unregistered trade mark and nevertheless recklessly sought to adopt the same mark in respect of the same goods and services, or instead that the Application is a calculated attempt to improperly obtain a commercial benefit or advantage, perhaps through the leverage of the reputation and brand awareness established by the Opponent in Australia to launch or facilitate its own business endeavours.

15. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[23]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision made to take advantage of the reputation of the Opponent’s Trade Mark.  The Applicant, who is based overseas, has provided evidence that its decision to adopt the Trade Mark was in good faith.  It has also provided evidence that Kevin Blain did not visit Melbourne in 2016.

    [23] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

16. Given Mr Blain’s evidence, there no evidence about the Applicant that would suggest that the Applicant was aware of the Opponent at the relevant date. Finally as noted under the s 60 ground, the Opponent had little or no reputation in the Opponent’s Trade Mark at the relevant date such that it would make no sense for the Applicant to adopt a mark to take advantage of the reputation; there was no reputation to take advantage of. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Resolution of Opposition

17. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[24]

    [24] [2014] FCA 1304, [232].

18. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has not been established.

19. Given the limited range of services for which the Opponent had established the Opposition, on 28 July 2020 I provided the Applicant with an opportunity to remove the following services from the class 42 services ‘information, advisory and consultancy services relating to all the aforesaid services’ The amendment has now been made and on that basis I find that the Opposition under s 58 has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.

    Decision

20. Following the amendment referred to in paragraph 52, I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1919914 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

21. Both parties have sought an award of costs in their favour. While the Opponent has had a degree of success in this opposition it is ultimately minor, and the Application shall proceed to registration. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    11 August 2020