GoPro, Inc v Shenzhen Maisi Digital Co., Ltd

[2024] ATMO 130

TRADE MARKS ACT 1995

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

Re:Opposition by GoPro, Inc. to registration of trade mark application number 2275207 (class 9) - MAXCAM - in the name of Shenzhen Maisi Digital Co., Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: A J Park

Applicant: Unrepresented

Decision:

2024 ATMO 130

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

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by GoPro, Inc (‘Opponent’) to registration of the following trade mark:

Trade mark number:  2275207 (‘Application’)

Trade mark:  MAXCAM (‘Trade Mark’)

Applicant:  Shenzhen Maisi Digital Co., Ltd (‘Applicant’)

Filing Date and Priority Date:      7 June 2022 (‘Relevant Date’)

Specification:  Bags adapted for carrying photographic apparatus; Selfie sticks (hand held monopods); Tripods for cameras; Stands for photographic apparatus; Viewfinders, photographic; Cases especially made for photographic apparatus and instruments; Filters for use in photography; Selfie lenses; Enlarging apparatus (photography); Close-up lenses; Batteries; Battery chargers; Electric battery chargers; Power supply devices for battery chargers (‘Applicant’s Goods’)

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

1. The Trade Mark was examined and advertised as accepted for possible registration on 8 November 2022.

2. On 3 January 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 1 February 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the Opposition on 31 March 2023.

3. The Opponent filed Evidence in Support (‘EIS’) on 30 June 2023. The Applicant did not file Evidence in Answer.

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard by written submissions. The Opponent filed written submissions, drafted by Blake Carey of A J Park on 17 April 2024. The Applicant did not file any submissions. I have decided this matter based on the particulars set out in the SGP, the evidence and the written submissions of the Opponent.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44 and 60.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date,[4] being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.

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

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

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The following EIS was filed:

• Declaration of Jonathan Tang, Senior Director of Sales, APAC of the Opponent, dated 29 June 2023 with Exhibits JT-01 to JT-28 including Confidential Exhibits JT-9 and JT-26 (‘Tang’).

• Declaration of Megan Cox, employee of A J Park, dated 29 June 2023.

Summary of EIS

1. Tang provides some history of the Opponent, a technology company founded in 2002. The Opponent’s most popular products are action cameras and associated mobile apps, and video editing software which are sold worldwide including Australia under the trade marks GOPRO, HERO and GOPRO MAX.

2. Tang claims the Opponent has used the trade mark GOPRO MAX since October 2019 and exhibits a copy of a news release dated 24 October 2019 announcing that availability of the GOPRO MAX camera at select retailers around the globe from 25 October 2019. I note the news release:

• is headed ‘GoPro MAX Now Shipping’

• refers to the camera in the body of the announcement as both Max and GoPro MAX

• states that the name Max was chosen ‘because it takes just about every aspect of a GoPro and pushes it to the maximum…’

• continually references the trade mark such as ‘MAX has become my favorite GoPro of all time’, ‘MAX is a waterproof … dual-lens GoPro’, ‘MAX delivers next-level, unbreakable video stabilization with Max HyperSmooth — GoPro's highest performance stabilization, ever’ and ‘MAX also features four digital lenses, including the new ultra-wide Max SuperView—GoPro's widest field of view, ever’.

1. Tang claims that GOPRO MAX is marketed as both GOPRO MAX and MAX. Tang exhibits Wayback Machine[5] screenshots from the Opponent’s Australian website at (‘Opponent’s Website’) between 6 December 2019 and 21 May 2021 where I note the following examples of use:    and the trade mark (‘Figurative Mark’) appearing on the camera body together with the trade mark .Tang does not provide any information on the number of Australian consumers accessing the Opponent’s Website in the Relevant Period.

   [5] >

   Tang claims that the Opponent uses the trade marks GoPro MAX and MAX on, or in close proximity to, camera apparatus including selfie sticks, camera stands, camera cases, batteries, and battery chargers and that the cameras come with a rechargeable battery, camera case, curved adhesive mount, 2 protective lenses + lens caps, microfiber bag, mounting buckle + thumb screw, and USB-C cable.

2. Tang claims the Opponent’s cameras are sold in major Australian electronics retailers including JB-Hi Fi, Harvey Norman, Officeworks, The Good Guys, Camera Warehouse and PB-Tech, and from the Opponent directly online.

3. Tang attests that the Opponent sells MAX branded accessories including:

• Dual Battery Charger + Enduro Battery

• Enduro Rechargeable Battery

• Grip + Tripod

• Rechargeable Battery

• Replacement Lens Caps

• Replacement Protective Lenses

• Replacement Door

and exhibits Wayback Machine screenshots of the Opponent’s Website for the following accessories before the Relevant Date:

• Grip + Tripod

• replacement protective lenses

• replacement lens caps

• rechargeable battery

together with undated copies of JB-Hi Fi brochures and instore shelf displays.

1. Tang states that in May 2020, the GOPRO MAX camera retailed for $659.95. Tang provides a total sales revenue figure for ‘many thousands of units GOPRO MAX [cameras] and related accessories’ between September 2019 and June 2022 (a 33 month period) and exhibits copies of eight confidential invoices headed GoPro dated between 20 December 2019 to 25 May 2020 showing sales of cameras, rechargeable batteries, replacement protective lenses, replacement lens caps, Grip + Tripod, replacement doors and replacement folding fingers, where the item names are referred to on the invoices as MAX.

2. Tang attests that other than through the Opponent’s Website, the trade marks GOPRO MAX and MAX have been promoted in Australia before the Relevant Date via websites of third-party retailers,[6] Facebook® and YouTube® accounts of third party retailers[7] and social media accounts of Australian athletes and content creators.[8] Tang exhibits screenshots and extracts from the websites of the party retailers and third party retailer Facebook® accounts where I note use of the following:

and screenshots and extracts from social media accounts of Australian athletes and content creators where I note only one athlete refers to GOPRO MAX rather than just GoPro. Tang does not provide any information on the number of Australian consumers accessing the websites of third-party retailers, Facebook® and YouTube® accounts of third party retailers and social media accounts of Australian athletes and content creators in the Relevant Period.

[6] Tang Exhibit JT-10.

[7] Ibid.

[8] Ibid Exhibit JT-12 and JT-15.

1. Other examples of advertising and promotion exhibited are a partnership with Infront Moto Racing,[9] a partnership with Habitat for Humanity Australia to give away a GoPro MAX,[10] use of GoPro MAX by the Australian Sail-GP team boat,[11] the GoPro Athlete Summit held in the Gold Coast in 2016,[12] the launch of the GoPro #HomePro Challenge requiring entrants to use the GoPro Quik app to post a photo or video that shows the GoPro camera being used at home,[13] and the GOPRO MAX winning the Edison Award in the Media, Visual Communications and Entertainment category and a silver medal in the portable entertainment sub-category in 2020.[14] I note that the trade marks GOPRO MAX, the word MAX and the Figurative Mark are all used on these examples of advertising and promotion but that MAX is seldom used without reference to the trade mark GOPRO MAX and mostly used in close proximity to the trade mark GOPRO.

   [9] Ibid Exhibit JT-13.

   [10] Ibid Exhibit JT-18.

   [11] Ibid Exhibit JT-14.

   [12] Ibid Exhibit JT-16.

   [13] Ibid Exhibit JT-19.

   [14] Ibid Exhibit JT-24.

2. Tang states that the Opponent’s GOPRO MAX products have been reviewed in many high-profile online publications in Australia before the Relevant Date including Digital Camera World, PC Mag, Gizmodo, Gadget Guy, and T3 and exhibits copies of single reviews by each of these publications.[15] I note that other than the Gadget Guy review where only the GOPRO MAX trade mark appears, both the GOPRO Max and MAX trade marks are each used in the publications.

   [15] Ibid Exhibit JT-17.

3. Tang states that the Opponent operates the following GOPRO social media accounts and provides follower/likes/subscriber numbers as at 29 June 2023, after the Relevant Date:

• Australia-New Zealand specific Facebook® page with more than 10 million likes together with posts dated after the Relevant Date. I note all references to the Opponent’s cameras are prefaced with the word GOPRO such as GoPro HERO and GoPro MAX;

• Twitter® with approximately 2 million followers;

• Australia-New Zealand specific Instagram® page with approximately 231,000 followers together with an undated Instagram post with no reference to GOPRO MAX, MAX or the Figurative Mark;

• YouTube® page with approximately 10.6 million subscribers together with an undated YouTube® page where I note only one reference to GOPRO MAX; and

• TikTok® page with approximately 2.6 million followers together with an undated TikTok ® page where I note only one reference to MAX.

Tang provides no information as to the number of followers/likes/subscribers from Australian consumers.

1. Tang provides details of the Opponent’s Australian registration number 2037082 for the trade mark GOPRO MAX (‘Registration’) filed on 13 September 2019 with a priority date of 12 April 2019, which appear below:

Class and goods

9: Cameras; digital cameras; spherical and immersive photo and video capture cameras; cameras for producing 180, 360 and ultra-wide views; panoramic cameras; power solutions, namely, batteries, power adapters, and chargers for spherical, panoramic and immersive photo and video capture cameras; selfie sticks, namely, hand-held camera monopods; camera fixing bands for transporting and affixing cameras, namely, head bands, camera straps, shoulder bands, and chest bands; mounting brackets for cameras; mounting bases for cameras; clamps for cameras; floats for cameras; floatable hand grips for cameras; cases and bags for photographic apparatus; waterproof and non-waterproof protective cases for cameras; protective lens covers for cameras; protective films adapted for camera screens; camera windshields made of foam; filters for photographic equipment; wires and cables for camera electricity mains; structural parts and accessories of all the above named apparatus and instruments, namely, special camera enclosures, camera housings, camera straps, camera mounting devices, smart camera mounts, rigs used as wire connectors, camera holders, camera harnesses, tripods, adapter rings for attaching objects to cameras, remote controls for cameras, microphones, SD memory cards; central array boards consisting of computer hardware and software used for operating spherical, panoramic and immersive photo and video capture cameras; custom camera hardware solutions, namely, lenses, batteries, and wireless transmitters; custom integrated platform solutions, namely, software tools and software applications to support spherical, panoramic and immersive photo and video content; computer software for taking, capturing, managing, processing, operating, viewing, storing, editing, arranging, combining, sharing, manipulating, modifying, commenting on, transmitting and displaying spherical, panoramic and immersive photo and video content; computer software and software applications for use in uploading, downloading, editing, storing, distributing and sharing photographic and video content via global and local computer networks and via mobile devices; downloadable multimedia content featuring user generated images and videos related to topics of general interest

1. Tang claims he has reviewed the Applicant’s website at and until approximately May 2023, the website displayed goods such as handlebar mounts and screen protectors for a GoPro Camera with images of the goods displaying the Trade Mark together with GoPro cameras and exhibits undated examples of these images.

2. Cox claims that she called three JB HiFi stores asking to be directed to the camera department wherein she then asked someone in that department whether they had any MAXCAM products. On two of the occasions, she was misheard and had to spell out the word MAX. Tang states that the answers received were whether she meant GoPro or GoPro MAX.

Discussion and Reasons

Section 44

1. The relevant provisions of s 44 are reproduced below (noted omitted):

   Identical etc. trade marks

   (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.

1. The Opponent relies on the Registration for the s 44 ground.

2. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

• the Registration has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

• the Trade Mark is substantially identical with or deceptively similar to the Registration (‘the second requirement’); and

• the Applicant’s Goods are similar to and/or closely related to the goods claimed in the Registration (‘the third requirement’).

1. I am satisfied that the Registration has a priority date earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.

2. The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Registration.

3. The Opponent’s submissions do not contend that the Trade Mark and the Registration are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to the Registration. On a side by side comparison of the respective marks there are obvious differences visually and aurally.

4. For ease, the following table shows the trade marks to be compared:

Trade Mark	Registration
MAXCAM	GOPRO MAX

1. Section 10 provides a definition of deceptively similar being that “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”.

2. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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].[16]

   [16] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13] (‘Shell’).

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[17] (‘Self Care’) conveniently stated the relevant principles, which may be summarised as follows:

   [17] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

• the resemblance between the two marks must be the cause of the likely deception or confusion;[18]

  [18] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

• in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[19]

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

• the marks should not be compared side by side;[20]

  [20] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

• the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[21]

  [21] Ibid.

• the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[22]

  [22] Ibid.

• the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[23]

  [23] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

• the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[24]

  [24] Shell (n 16) 415.

• “deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [25]

• the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[26]

• it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[27]

• evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[28] and

• any intention to deceive or cause confusion may be a relevant consideration but is not required.[29]

  [25] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

  [26] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

  [27] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

  [28] Australian Woollen Mills (n 20).

  [29] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 20) 657.

1. Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[30] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[31]

   [30] [1999] FCA 1020, [39].

   [31] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

2. It is also relevant to take into account whether elements of the rival marks have a descriptive character’.[32] Whilst this does not preclude a finding of deceptive similarity,[33] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:

It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[34]

[32] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).

[33] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).

[34] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

1. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Registration. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Registration are used and the circumstances in which the goods are and will be sold. Here it is clear that the trade marks will be used for some identical and therefore similar goods namely ‘bags adapted for carrying photographic apparatus, selfie sticks (hand held monopods), tripods for cameras, cases especially made for photographic apparatus and instruments, filters for use in photography, close-up lenses, batteries, battery chargers and electric battery chargers’.

2. The Opponent submits that the Trade Mark is deceptively similar to the Registration on the basis that:

• judging the respective marks by their look and sound, there are obvious and significant visual and aural similarities, particularly allowing for imperfect recollection and careless pronunciation, speech, typing and searching online;

• both marks incorporate the word MAX;

• the word MAX is a particularly distinctive and memorable part of both marks;

• the component CAM in the Trade Mark is shorthand for the descriptive word camera;[35]

• the Applicant (if it achieved registration) would be entitled to use the word MAXCAM in any stylisation, including in the same or similar font to that of the Figurative Mark; and

• conceptually the marks are difficult to distinguish as they both prominently feature the word MAX, which can be defined as meaning ‘to the greatest extent possible’ and the remaining elements of each mark (GOPRO in GOPRO MAX, and CAM in MAXCAM) are each conceptually connected to cameras and photography.

  [35] Relying on the Merriam Webster Dictionary online, which has not been provided in the evidence. I note the Australian Oxford Dictionary online (2 ed) does not contain a definition of cam as a camera and the Macquarie Dictionary online defines cam as, inter alia, a web cam and a combining form of camera indicating the presence of a miniature video camera in a specified location for taking film, especially of competitive events, from an unusual angle or position, as in hat-cam, race-cam, stump-cam.

1. I am aware from the definition of the word ‘max’ in the Macquarie Dictionary online that it is an abbreviation of the word maximum. I am also aware from my own knowledge that the word MAX is often used to signify the biggest, the best or the greatest of something. I therefore do not agree with the Opponent that the word MAX is particularly distinctive given it clearly has some descriptive significance.

2. The mere presence within each trade mark of the word MAX does not automatically render them deceptively similar. The word MAX is not a separate element in the Trade Mark and while it is a separate element in the Registration, it follows the highly distinctive and invented word GOPRO. Consumers are likely to view the word MAX as indicating the biggest, best or greatest of the Opponent’s GOPRO branded cameras. Consumers would not assume that every trade mark containing the word MAX denotes the same trader. This is particularly so where additional words create further aural and visual differences between the trade marks. I consider it highly unlikely that the Registration would be recollected solely as ‘MAX’.

3. With respect to the Opponent’s evidence of apparent confusion in Cox, I give this evidence little, if any, weight. Firstly, I note that the telephone enquiries conducted by Cox were conducted over a year after the Relevant Date and were a minute sample of three people. Secondly, there is no evidence that the apparent confusion was because of the alleged similarity of the Trade Mark with the GOPRO MAX mark. Thirdly, the fact that Cox could not be understood over the telephone in two of the three examples renders the evidence highly speculative. Fourthly, when Cox chose to spell out the Trade Mark, she only spelt out the word MAX and not the word CAM. By doing this, I consider that she immediately placed in the salespersons mind a product branded with MAX. Therefore, this evidence is flawed and does not assist the Opponent.

4. In my opinion the Trade Mark is not deceptively similar to the Registration. Visually, aurally and conceptually, considered as a whole, the differences are significant. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Registration will be both GOPRO and MAX. The identity of the Registration resides in this combination and not the word MAX solus.

5. It is highly unlikely that consumers with an imperfect recollection of the Registration would immediately link the Trade Mark to a memory of, or association with, the GOPRO MAX mark. The word GOPRO is a key visual and aural feature of the Registration being the first part of the mark, whereas the Trade Mark as a whole is that mark’s key visual and aural feature.

6. A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the differences in the respective marks, taken together, as a matter of impression and common sense they generate an overall visual, aural and conceptual impression of difference.

7. I am not satisfied that consumers viewing or hearing the MAXCAM mark would be caused to wonder whether the Applicant’s goods originate from the same trade source, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two. The trade marks are not deceptively similar.

8. Given I have not found the Trade Mark to be deceptively similar to the Registration, it is not necessary for me to further discuss the third requirement.

Section 60

1. Section 60 provides:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

1. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

2. The SGP identifies that since at least 2019 the Opponent has offered cameras and related goods and services including camera cases, mounts, microfiber bags, camera cables, chargers, other photographic apparatus, and services relating to the same (‘Opponent’s Goods and Services’) under the trade marks GOPRO MAX and the Figurative Mark (‘Opponent’s Marks’) and as a result, has gained a substantial reputation in the Opponent’s Marks in Australia. The Trade Mark is deceptively similar to the Opponent’s Marks and in light of the Opponent’s reputation, use of the Trade Mark would be likely to deceive or cause confusion.

Reputation

1. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[36]

   [36] [2000] FCA 1335, [81] (‘McCormick’).

2. Further, Kenny J stated in McCormick that:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[37]

   [37] Ibid [86].

3. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[38] Here, given the nature of the parties’ goods are cameras and parts and accessories for cameras, it follows that the relevant market would include virtually the entire Australian population. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[39]

   [38] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   [39] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[40]

   [40] [2019] 142 IPR 275, [83] (O’Bryan J) (‘Rodney’).

5. The Opponent submits that the EIS establishes the required reputation in the Opponent’s Marks in Australia as at the Relevant Date in connection with the Opponent’s Goods and Services. While the SGP claims the Opponent has offered services relating to cameras and related goods under the Opponent’s Marks, the Opponent has not expanded on the nature of these services and the EIS shows no use of the Opponent’s Marks on any services. I consider that the evidence only shows use of the Opponent’s Marks in respect of cameras and their parts and accessories. Therefore, if any reputation is found, it is limited to cameras and their parts and accessories.

6. While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60.[41]

   [41] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J) (‘Qantas Airways’); Rodney (n 40), [89].

7. The Opponent has shown quantitative dimensions namely sales revenue but firstly a single total figure is provided for a period of 33 months and secondly as the sales are not particularised according to camera sales separately to parts and accessories, it is difficult to determine how many cameras were sold compared to parts and accessories under the Opponent’s Marks in any year prior to the Relevant Date. Assuming that all sales were cameras, the flagship product of the Opponent, the number of cameras sold over a 33 month period would only amount to between 5000 and 6000 units (depending on price). Assuming all sales were parts and accessories, then the number would be significantly greater. In addition, the Opponent has not provided any expenditure in promoting the Opponent’s Marks.

8. A significant amount of the evidence displays use of the GOPRO MAX trade mark rather than the Figurative Mark. Further, the evidence shows that where there is use of the Figurative Mark, there is more often than not the presence of the  and/or GoPro trade mark. On the cameras themselves, the Figurative Mark may appear on the product but the trade mark is also displayed prominently. The association and reputation of the trade mark GOPRO undoubtedly affects the strength of the overall reputation of the Opponent’s Marks.

9. Having considered the totality of the Opponent’s evidence, I consider the evidence indicates that if any reputation exists, it only exists in the GOPRO MAX trade mark and not the Figurative Mark. I do not consider that a substantial portion of the Australian public has been exposed to the Figurative Mark before the Relevant Date and therefore I am not satisfied the Opponent’s evidence demonstrates a reputation in the Figurative Mark at the Relevant Date in connection with cameras and their parts and accessories.

10. In respect of the GOPRO MAX trade mark, while there is evidence of qualitative dimensions being evidence of content creators, third party retailers, the reach of the Opponent’s social media, awards, partnerships and reviews, there is no evidence to indicate how many Australian consumers were aware of the qualitative dimensions. I am therefore not satisfied that taken together with the sales revenue, that a substantial portion of the Australian public has been exposed to the GOPRO MAX trade mark before the Relevant Date and that this mark has a reputation at the Relevant Date in connection with cameras and their parts and accessories sufficient to enliven the provisions of s 60.

11. Given s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.

12. I add however that even if I were satisfied that the Opponent had the requisite reputation in the trade mark GOPRO MAX, I am not persuaded that there is a real danger of confusion likely to result from the use of the Trade Mark for the Applicant’s Goods as, for the reasons set out under the s 44 ground of opposition, I do not consider the GOPRO MAX trade mark and the Trade Mark to share a significant degree of similarity.

13. The s 60 ground of opposition has not been established.

Section 42

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

2. The Opponent asserts for the same reasons as outlined under the s 60 ground, the use of the Trade Mark would be contrary to s 18 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.

ACL

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[42]

   [42] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

2. The Opponent’s written submissions state that it relies on its submissions under s 60 that the Opponent’s Marks have a reputation and goodwill in Australia and the Trade Mark is deceptively similar to the Opponent’s Marks.

3. I have already concluded that the Opponent does not have a reputation in the Opponent’s Marks and there is no real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers. Therefore, if use of the Trade Mark is not likely to cause confusion or wonderment, then it is also not likely to mislead or deceive which is a more onerous test.

4. I am not satisfied that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL. It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct as required by s 18 of the ACL.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   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.[43]

   [43] [1989] FCA 506, [40] (Hill J).

3. Section 18 of the ACL is the equivalent of s 52 of the TPA.[44] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [44] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

4. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

5. The Opponent has accordingly not established its ground of opposition under s 42(b).

Decision

1. Section 55 relevantly provides:

   Decision

   (1)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.

   Note:For limitations see section 6.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2275207 may proceed to registration not less than one month from the date of this decision. If the Registrar is 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

1. The Opponent sought its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

22 July 2024