Guangdong Oppo Mobile Telecommunications Corp Ltd v Fix-A-Tap Australia Pty Limited
[2024] ATMO 176
•20 September 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Guangdong Oppo Mobile Telecommunications Corp Ltd to registration of the trade mark the subject of application 2305853 (9, 11, 17, 35, 37, 42) – RenoConnect – in the name of Fix-A-Tap Australia Pty Limited
Delegate: Robert Wilson
Representation: Opponent: APT Patent and Trade Mark Attorneys
Applicant: IP Solved (ANZ) Pty Ltd
Decision: 2024 ATMO 176
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58 and 60 considered – opposition partially established – applicant requested amendment of specification to overcome established ground – trade mark may proceed to registration
Background
1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Fix-A-Tap Australia Pty Limited (‘Applicant’). The opposition was brought by Guangdong Oppo Mobile Telecommunications Corp Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).[1]
[1] Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
Trade Mark:
RenoConnect
(‘Applicant’s Trade Mark’)
Application Number:
2305853
Filing Date:
7 October 2022
Specification:
Class 9: (including) computer software
Class 11: (including) water supply apparatus and installations including water conduit installations and water distribution installations
Class 17: (including) pipe fittings in this class
Class 35: (including) retail services including online retail services; computerised database management
Class 37: (including) plumbing services; maintenance, installation and repair services
Class 42: (including) design, development, update, maintenance and provision of computer software
Full specification appears in the annexure to this decision.
(‘Applicant’s Goods and Services’)
2. Following publication of the application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
3. The Opponent filed Evidence in Support of its opposition, being:
Declaration made on 5 November 2023 by Chen Chen, the general counsel of the Opponent, with Annexures OMT-1 to OMT-24 (‘Chen declaration’).
4. The Applicant filed Evidence in Answer, being:
Declaration made on 8 February 2024 by Andrew Robertson, the CEO of the Applicant, with Exhibits 1 to 4(‘Robertson declaration’).
5. The Opponent did not file Evidence in Reply.
6. Once the time allowed for filing evidence had ended the Applicant requested a ‘decision without a hearing’. The Opponent did not request to be heard and did not file written submissions. In a ‘decision without a hearing’, the requesting party does not to file written submissions and the matter is decided on the material correctly filed in the opposition. Consequently, there are no written submissions from either party in this matter.
7. As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter on the material discussed above.
The Opponent
8. In providing a background of the Opponent, the Chen declaration referred to the Wikipedia description of the company, the company’s Australian website, and the description of the company’s RENO brand on Wikipedia and declared:
As can be seen our company was founded in 2004 and is a leading global electronics and technology service provider that delivers the latest and most exquisite mobile electronic devices in many countries, including the United States, Australia and several countries throughout Europe, Asia and Africa. As a leading manufacturer of smartphones, the OPPO Group was the top smartphone brand in China in 2016 and was ranked No. 5 worldwide in 2019. … As can be seen our company operates in more than 60 countries of the world, has more than 40,000 employees and 500 million users or (sic) mobile telephone that we have manufactured and sold. …
As can be seen the first reno smartphone was previewed in February 2019 before being released in April 2019. The Reno brand was first launched in Australia on July 7th 2019. …
Our company has sought and obtained several registrations in Australia and through WIPO related to its RENO brand …
9. The Opponent is the owner of a number of registered trade marks in Australia including the following (‘Opponent’s Trade Marks’):
| Registration Number | Trade Mark | Priority Date | Specification of goods/services (full specifications provided in Annexure) |
| 2013912 | Reno F | 5/6/2019 | Class 9: (including) Computer programs |
| 2013913 | Reno Z | 5/6/2019 | Class 9: (including) Computer programs |
| 2030247 | OPPO Reno | 23/1/2019 | Class 9: (including) Computer programs |
| 2089878 | Reno Ace | 20/9/2019 | Class 9: (including) Computer programs |
| 2167201 | REENO | 29/3/2021 | Class 9: (including) Computer programs |
| 2167439 | REENO | 30/3/2021 | Class 35: (including) Retail or wholesale services for cell phones, earphones, computers, computer software products, DVD players, cameras (photography), smartwatches, smart rings, facial recognition apparatus, biometric scanners, cabinets for loudspeakers, virtual reality headsets and touch screens |
| 2182298 | OPPO Reno | 27/5/2021 | Class 7: (including) Agricultural machines Class 12: (including) Motor buses Class 14: (including) Precious metals Class 28: (including) Games Class 42: (including) Computer software design, updating and maintenance of computer software |
| 2303761 | OPPO CONNECT | 15/6/2022 | Class 9: (including) Computer programs |
The Opponent’s Trade Marks will, individually, be referred to by the last three digits of the registration number; for example, the ‘912 Trade Mark’. The specifications of good/services will be referred to in the manner of these examples: the ‘912 Goods’, the ‘298 Goods and Services’, as is appropriate to each registration. Collectively, the goods and services covered by the Opponent’s Trade Marks will be referred to as the ‘Opponent’s Goods and Services’.
The Applicant
According to the Robertson declaration:
[The Applicant] is a long established and well-known Australian general plumbing goods manufacturer and distributor originally founded by its predecessor in title, Blackwell Trading Company in Sydney, Australia in 1972. Since this date, [the Applicant] is now recognised as one of Australia’s largest and premier plumbing goods and services supplier of plumbing goods and retail services in the Australian marketplace, with in excess of 1000 individual plumbing product lines and ranges provided to Australian consumers through an Australian-wide distribution network under a large number of trade marks.
[The Applicant] markets, promotes, distributes and sells its product lines and ranges in Australia, New Zealand and the Pacific Islands to leading hardware and plumbing retailers and outlets such as: Bunnings Hardware, Mitre 10 Hardware, Samios Plumbing Supplies, Thriftylink Hardware, Home Timber and Hardware, Reece Plumbing Supplies, Tradelink Plumbing Supplies, Plumbing Plus and Plumbers Supplies Collective.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 7 October 2022, being the filing date of the application (‘Relevant Date’).[4] The Relevant Date is also the priority date for the purposes of ss 44 and 60.
Consideration of Grounds of Opposition
[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 Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 44
In the SGP the Opponent nominated the Opponent’s Trade Marks in respect of s 44. No further particulars were provided.
Provisions relevant to the consideration of s 44 in this matter are reproduced below:
Section 44 - Identical etc. trade marks
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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 14 – Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
As a starting point, to successfully oppose registration pursuant to s 44 the Opponent must establish that at least one of the Opponent’s Trade Marks:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’);
· is in respect of at least some goods/services which are similar/closely related to the Applicant’s Goods and Services (‘the second requirement’); and
· is substantially identical with, or deceptively similar to, the Applicant’s Trade Mark (‘the third requirement’).
The first requirement
The Opponent’s Trade Marks each have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement in respect of them all.
The second requirement
The Applicant’s Goods and Services includes computer software in Class 9. This is a broad claim which encompasses the other software and application claims in the class. A number of the Opponent’s Trade Marks include the broad claim for computer programs in the same class. The terms ‘computer software’, ‘applications’ and ‘computer programs’ are interchangeable in this context. For this reason, the Opponent’s computer programs are similar goods to the Applicant’s computer software and the other Class 9 goods of the Applicant which are encompassed by that term. Of the Opponent’s Trade Marks, the following include computer programs in their Class 9 specifications:
| Registration Number | Trade Mark |
| 2013912 | Reno F |
| 2013913 | Reno Z |
| 2030247 | OPPO Reno |
| 2089878 | Reno Ace |
| 2167201 | REENO |
| 2303761 | OPPO CONNECT |
The balance of the Applicant’s Class 9 goods consists of electronic publications and electronic notice boards. In the absence of submissions from the Opponent, I am not satisfied that any of the Opponent’s Class 9 goods are similar to those goods.
The 439 Trade Mark includes the following services in Class 35: Presentation of goods on communication media, for retail purposes; Retail or wholesale services for cell phones, earphones, computers, computer software products, DVD players, cameras (photography), smartwatches, smart rings, facial recognition apparatus, biometric scanners, cabinets for loudspeakers, virtual reality headsets and touch screens; Business management consultancy and Compilation of information into computer databases. Variously and together, those services are similar to the Applicant’s services in Class 35.
The 298 Trade Mark includes various computer software related services in Class 42. These are similar to the services claimed by the Applicant in the same class. Computer software services are, in general, also closely related to computer software goods.
For clarity, I am satisfied that the second requirement is satisfied in respect of the following of the Applicant’s Goods and Services (‘Similar Goods and Services’):
Class 9: computer software; downloadable computer software and downloadable applications; downloadable software in the nature of mobile and desktop applications to facilitate the selection and purchasing of products; downloadable mobile and desktop applications to facilitate online shopping and purchases; downloadable mobile and desktop applications for use in promoting the goods and services of others
Class 35: (all of this class)
Class 42: (all of this class)
For the sake of completeness, I am not satisfied that any of the remaining Applicant’s Goods and Services are similar/closely related to any of the Opponent’s Goods and Services. Those of the Applicant’s Goods and Services which are not part of the Similar Goods and Services are the following (‘Remaining Goods and Services’):
Class 9: electronic publications; electronic notice boards
All of Classes 11, 17 and 37
The third requirement
Deceptively Similarity
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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 [trade mark].[5]
[5] Ibid [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[6]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[7]
Third, allowance must be made for imperfect recollection.[8]
Fourth, the effect of the spoken description must be considered.[9]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[11] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[12]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[13]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[14] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[15] [16]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).
[15] Ibid [100].
[16] [2012] FCA 1022, [37]–[46].
Pivotal to the consideration of deceptive similarity in this matter is the ordinary signification of ‘reno’ to purchasers of the Similar Goods and Services. It was declared in the Chen declaration that:
‘Reno’ is a word coined by the Opponent, which is used for upgrading OPPO’s new brand for smartphones. … Each letter of the word conveys different meanings: ‘R’ stands for ‘Refresh’ … ‘E’ stands for ‘Elegant’ … ‘N’ stands for ‘Neola’ … ‘O’ stands for ‘Original’ … Overall, the new brand ‘Reno’ stands for the applicant’s (sic) core values …
It may well be that the Opponent arrived at ‘RENO’ in the manner described; however, in the end this is not determinative of the ordinary signification of the sign. In contrast to the Opponent’s assertion, it was declared in the Roberston declaration:
In January 2022, [the Applicant] selected RenoConnect as the brand and trade mark for [the Applicant’s Goods and Services] to be sold under as we believed this word connoted and was synonymous with goods and services associated with commercial and home renovations. …
To support the assertion that ‘Reno’ will be understood to be a shortened form of ‘renovation’, Exhibit 4 of the Roberston declaration shows the results of an internet search for ‘definition of reno’. The definitions obtained by the search come from a variety of dictionaries. Of the nine definitions shown, three indicate that ‘reno’ is an informal abbreviation of ‘renovation’. The remaining definitions indicate that: ‘Reno’ refers to the city in the state of Nevada in the United States of America, that it is a diminutive of names like ‘Moreno’, and that it is also a type of large deer.
It is important to bear in mind that the ordinary signification of ‘reno’ is not to be determined in isolation, but must be considered in respect of the Similar Goods and Services. While a word might have a clear signification in connection with some goods, it might have no signification in respect of others. ‘Apple’ is an example commonly used to demonstrate this point. In respect of the goods of ‘fruit’, ‘apple’ has a clear ordinary signification—an apple is a type of fruit. In connection with the goods of ‘computers’, however, ‘apple’ has no ordinary signification—it is not, for example, descriptive of computers. While it is accepted that ‘reno’ will be seen in certain contexts as an abbreviation of ‘renovation’, I am not satisfied by the material before me that in connection with any of the Similar Goods and Services ‘reno’ is likely to be so understood. The word appears just as likely to be seen as a reference to the city, a person’s name, a type of deer, or simply an invented sign. For these reasons, I am of the view that ‘RENO’ is distinctive in respect of the Similar Goods and Services and is not, for example, descriptive of those goods and services.
The ‘Connect’ element of the Applicant’s Trade Mark, on the other hand, is likely to be seen as having an ordinary signification in respect of the Similar Goods and Services, ie that the goods/services assist in connecting to something. The ‘Connect’ element, therefore, lacks distinctiveness.
The 912 Trade Mark and the 913 Trade Mark are the high water mark for deceptive similarity as far as the Class 9 conflict in the Similar Goods and Services is concerned. For ease of comparison, those trade marks are shown below along with the Applicant’s Trade Mark.
| Applicant’s Trade Mark | 912 Trade Mark | 913 Trade Mark |
| RenoConnect | Reno F | Reno Z |
Given the distinctive nature of ‘Reno’ in respect of the Class 9 goods, that element of all three signs is likely to be seen as indicating the trade source of the goods. The elements ‘Connect’, ‘F’ and ‘Z’, on the other hand, are not so distinctive, and are likely to be seen as additions to the primary ‘Reno’ element. For these reasons, I am satisfied that the Applicant’s Trade Mark so nearly resembles the 912 Trade Mark and the 913 Trade Mark that it is likely to deceive or cause confusion if used in connection with the Class 9 goods of the Similar Goods and Services.
The specification of the 439 Trade Mark includes the conflicting services in Class 35 of the Similar Goods and Services. For ease of comparison, that trade mark is shown below along with the Applicant’s Trade Mark.
| Applicant’s Trade Mark | 439 Trade Mark |
| RenoConnect | REENO |
There are two main ways in which ‘reno’ is likely to be pronounced: either with a short vowel sound, as in ‘renno’, or with a long vowel sound, as in ‘reeno’. This is important because ‘the effect of the spoken description must be considered’[17] and ‘allowance must be made for imperfect recollection’[18]. While the signs under comparison have been provided side by side above for ease of reference, a side by side comparison is not how the signs are to be compared for the purposes of deceptively similarity. Taking into account the likelihood that the ‘Reno’ element of the Applicant’s Trade Mark is likely by many consumers to be pronounced in the same manner as the 439 Trade Mark, there is a significant likelihood that consumers would, at least, be caused to wonder whether services sold under those two trade marks come from the same trade source. For these reasons, I am satisfied that the Applicant’s Trade Mark so nearly resembles the 439 Trade Mark that it is likely to deceive or cause confusion if used in connection with the Class 35 services of the Similar Goods and Services.
[17] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[18] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
The specification of the 298 Trade Mark includes the Class 42 services of the Similar Goods and Services. For ease of comparison, that trade mark is shown below along with the Applicant’s Trade Mark.
| Applicant’s Trade Mark | 298 Trade Mark |
| RenoConnect | OPPO Reno |
It is a general principle in comparing trade marks for the purposes of deceptively similarity that they be considered as a whole. This assessment is particularly important where one trade mark is contained within another trade mark. It is necessary to determine the extent to which a shared element has retained its identity as an essential feature of the trade marks.[19] In cases such as MY MELODY vs MY MELODY DREAMS,[20] and BRATS vs BONZA BRATS,[21] the common element was found to have retained its identity, resulting in the trade marks being considered deceptively similar. In other cases, such as JOCKEY vs THROTTLE JOCKEY,[22] and REBELLION vs SOUL REBELLION,[23] the connotation of the composite trade mark as a whole was found to be sufficiently different to the connotation of the common element alone; thus resulting in a finding that deception or confusion was unlikely.
[19] Bulova Accutron Trade Mark [1969] RPC 102.
[20] Eau De Cologne’s Application (1990)17 IPR 540.
[21] Re Application by Coles Myer Ltd (1993) 26 IPR 577.
[22] Jockey International, Inc v Darren Wilkinson [2010] ATMO 22.
[23] Chris Kingsley v David Scott [2011] ATMO 20.
That a trade mark is registered as a combination of two words—as is the case with the 298 Trade Mark—does not prevent consumers from interpreting the trade mark as two separate trade marks—consumers are likely to be oblivious as to whether a particular sign before them is registered or not. As noted in the statement of the case law, above, the judgement of deception or confusion is a practical one which requires that: an assessment of the effect of the trade mark on the minds of potential customers;[24] the impression based on recollection of the trade mark must be considered;[25] and allowance must be made for imperfect recollection.[26] Notwithstanding that the 298 Trade Mark is registered as a single trade mark, there is the possibility that it, in use, it will be interpreted by consumers a combination of two trade marks, each with a separate identity.
[24] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).
[25] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).
[26] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).
Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (‘Wellness’)[27] was an infringement case concerning the registered trade mark LIVING WATER and whether use of PRO-BIO LIVING WATERS would be infringing. In Wellness, Bennet J considered, inter alia, whether PRO-BIO LIVING WATERS was a single trade mark or two trade marks. A consequence of a finding that PRO-BIO LIVING WATERS was two trade marks meant that, ‘the comparison is between LIVING WATER and LIVING WATERS’.[28] Her Honour found that:
PRO-BIO is used to denote the company that is the origin of the range of waters collectively marketed and distinguished in the course of trade under the name LIVING WATERS. LIVING WATERS is thereby used as a separate trade mark.[29]
[27] [2004] FCA 438.
[28] Ibid [28].
[29] Ibid [32].
In Wellness there was no evidence before Her Honour ‘from consumers as to their impressions’ as to whether PRO-BIO LIVING WATERS would be interpreted as a single trade mark or a composite trade mark. Her Honour indicated that in this circumstance:
[I]t is a matter for [the Registrar] to view the matter objectively or, as put by Lockhart J in Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192, 194, with resort to common sense.[30]
[30] Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438, [29] (Bennet J).
There is no evidence before me here regarding whether consumers generally will see the 298 Trade Mark as a single trade mark, or as a combination of two trade marks. In the manner described in Wellness, the matter is to be viewed ‘objectively’ and ‘with resort to common sense’. ‘OPPO Reno’ does not, when considered as a whole, create an overall connotation—in the way that THROTTLE JOCKEY and SOUL REBELLION do. Rather, ‘OPPO Reno’ is in the nature of signs like MY MELODY DREAMS, BONZA BRATS and PRO-BIO LIVING WATERS. Each element of the sign retains its identity within the sign. In ‘OPPO Reno’, ‘OPPO’ is likely to be understood as denoting the company that is the origin of the range of services, and that ‘Reno’ further denotes a line of services provided by the company. ‘Reno’ therefore is likely to be seen by consumers as a separate trade mark.
In the light of the findings above—including, the distinctive nature of ‘Reno’ in respect of the subject services, and the lack of distinctiveness of the ‘Connect’ element in the Applicant’s Trade Mark—I am satisfied that the Applicant’s Trade Mark so nearly resembles the 298 Trade Mark that it is likely to deceive or cause confusion if used in connection with the Class 42 services of the Similar Goods and Services.
For the reasons discussed above, the third requirement is satisfied in respect of all of the Similar Goods and Services. There are no submissions before me which address the provisions of s 44(3) or 44(4). Further, there is nothing apparent in the evidence which would support the application of those provisions. Consequently, I am satisfied that the s 44 ground of opposition is established in respect of all of the Similar Goods and Services. That is not the end of the matter, however, as the remaining grounds of opposition must be considered in respect of the Remaining Goods and Services.
Section 60
The ground based on s 60 is particularised in the SGP as follows:
The trade mark/s have been used before the priority date of the trade mark being opposed.
The Opponent and/or its authorised users have used the Opponent's Trade Marks Reno and OPPO Reno in 2019 in Australia before the priority date of the opposed application in connection with cell phones and related software thereof. Use by the applicant of the opposed Trade Mark for the goods and services listed in class 09 of the opposed application would be likely deceive or cause confusion.
Section 60 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.
To establish a ground of opposition under s 60 an opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. As per the SGP, the Opponent relied upon the trade marks ‘Reno’ and ‘OPPO Reno’ to support this ground (‘Opponent’s s 60 Trade Marks’).
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[31] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[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 …[32]
[31] [2000] FCA 1335, [81] (Kenny J).
[32] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).
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.[33]
[33] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).
As stated above, as well as the consideration regarding reputation, another factor relevant to an opposition under s 60 is the question of what constitutes a significant number of persons in the relevant market. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[34] 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:
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.[35]
[34] [2000] FCA 1587 (Heerey J).
[35] Ibid [91]. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted.
It is apparent from the SGP that asserted reputation relied upon by the Opponent was acquired as a result of the use of the Opponent’s s 60 Trade Marks in connection with ‘cell phones and related software thereof’. The SGP indicates that the Opponent’s s 60 Trade Marks were used ‘in 2019 in Australia’. It is stated in the Chen declaration that, ‘The Reno brand was first launched in Australia on July 7th 2019’. I note that this is some three years before the Relevant Date.
The Chen declaration provides a table of the ‘sales volumes of “Reno” smart phones in Australia’ for the years 2020 to 2023. The 2023 figure is indicated as a ‘year-to-date’ figure; in any case, the Relevant Date falls in 2022, so the 2023 figure is of little assistance to the Opponent in establishing this ground. In light of the Australian population and the ubiquitous nature of smart phones, the provided sales figures are modest. The Chen declaration also includes screenshots of pages from the online stores of a number of well-known merchants. The screenshots show the Opponent’s smart phones for sale in connection with ‘Reno’, ‘OPPO Reno’ or simply ‘OPPO’. The Chen declaration exhibits screenshots of a number of online reviews of the Opponent’s smart phones. The declaration also states that ‘the Opponent and its licensee in Australia have put considerable time, effort and expense into developing promotional material and advertising the Reno brand in Australia’. Exhibited are examples of outdoor and indoor signage, and online advertising, I note some of these examples post-date the Relevant Date. On balance, I am satisfied that the Opponent’s s 60 Trade Marks had acquired a modest reputation in respect of smart phones at the Relevant Date. There is insufficient evidence before me to satisfy me that the reputation extended beyond smart phones to ‘related software thereof’.
It is not sufficient that the Opponent merely establish that the Opponent’s s 60 Trade Marks had acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[36]
[36] (1937) 58 CLR 641, 658.
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. [37]
[37] [1979] RPC 410, 423 (citations omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[38]
[38] (1997) 38 IPR 495, 501 (Heerey J) (citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[39]
[39] [1999] FCA 1020, [50] (French, Branson and Tamberlin JJ). These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).
Given the similarity between the Applicant’s Trade Mark and the ‘Reno’ and ‘OPPO Reno’ trade marks—as discussed in respect of the s 44 ground—I am satisfied that because of the reputation acquired by the Opponent’s s 60 Trade Marks use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The deception or confusion is likely to arise were the Applicant’s Trade Mark to be used in connection with goods similar to the goods for which the Opponent’s s 60 Trade Marks acquired a reputation (that is, smart phones), or were it to be used in connection with closely related services. Such similar goods and closely related services fall within the Similar Goods and Services for which the s 44 ground of opposition was established; consequently, while I am satisfied that the s 60 ground is established in respect of certain goods and services this takes the Opponent no further than the established s 44 ground.
Section 42(b)
The particulars in the SGP for the s 42(b) ground of opposition were minimal, being simply:
Competition and Consumer Act 2010; Tort of passing off.
The relevant provisions of s 42 are reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[40] The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[41] There was no indication in the SGP of which particular provisions of the Competition and Consumer Act 2010 the Opponent relies upon. The Australian Consumer Law (‘ACL’) is Schedule 2 to the Competition and Consumer Act 2010 (Cth). It is sections of the ACL which are typically relied upon by opponents for this ground of opposition. In the absence of submissions, it is assumed that the sections of the ACL discussed below are the relevant ones here.
[40] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[41] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
In the present matter the Opponent established a ground of opposition under s 60 in respect of certain goods and services. As the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60,[42] I am satisfied that, as far as s 18 is concerned, this ground of opposition takes the Opponent no further than the s 60 ground.
[42] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (Cth) (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[43] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[44]
[43] [2003] FCA 104, [107].
[44] [1989] FCA 506, [40] (citations omitted).
For these reasons, I am not satisfied that this ground of opposition takes the Opponent any further than the extent of the grounds of opposition already established, and need not be considered further.
Section 58
The ground based on s 58 was particularised in the SGP as follows:
The Opponent and/or its authorised users have used substantially similar (sic) trade marks in Australia, including ‘Reno’ and ‘OPPO Reno’ in connection with goods and/or goods similar to those of the class 09 specification of goods set out in the opposed application before the priority date of the opposed application.
Section 58 is reproduced below:
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.
The owner of a trade mark for particular good/services is the person who first used it in Australia, or the person who first filed an application to register the trade mark in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[45]
· that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponent was used;[46] and
· that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Applicant’s Trade Mark by the Applicant.[47]
[45] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).
[46] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd, à Beckett and Hood JJ).
[47] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The Opponent relied upon its use of the trade marks ‘Reno’ and ‘OPPO Reno’ to support this ground of opposition. It was found in respect of the s 60 ground that those trade marks were used before the Relevant Date in respect only of smart phones. For this reason, this ground of opposition could take the Opponent no further than the grounds of opposition already discussed and need not be considered further—this includes whether or not the trade marks relied upon by the Opponent are substantially identical to Applicant’s Trade Mark; no finding is made in this regard.
Applicant’s Opportunity to Amend Goods and Services
The Opponent has established grounds opposition in respect of a subset of the Applicant’s Goods and Services. The s 44 ground of opposition took the Opponent the furthest, and was established in respect of the Similar Goods and Services. Prior to this decision being issued the Applicant was given an opportunity to amend the Applicant’s Goods and Services to be the Remaining Goods and Services (as detailed in paragraph 22). The Applicant availed itself of that opportunity and the Applicant’s Goods and Services were amended accordingly. Consequently, the Applicant’s Trade Mark may proceed to registration with the specification so amended.
Decision
Section 55 relevantly provides:
(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.
I have found the Opponent established grounds of opposition in respect of a subset of the Applicant’s Goods and Services. Prior to this decision being issued, the Applicant was given an opportunity to amend its specification, which it did. Consequently, the established ground of opposition is overcome, and the Applicant’s Trade Mark may proceed to registration after 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 a court so orders.
Costs
In the SGP, the Opponent sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent established grounds of opposition largely to the extent particularised in the SGP, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
20 September 2024
Annexure
Applicant’s Trade Mark (specification of goods and services)
Class 9: computer software; downloadable computer software and downloadable applications; downloadable software in the nature of mobile and desktop applications to facilitate the selection and purchasing of products; downloadable mobile and desktop applications to facilitate online shopping and purchases; downloadable mobile and desktop applications for use in promoting the goods and services of others; electronic publications; electronic notice boards
Class 11: water supply apparatus and installations including water conduit installations and water distribution installations; water filtering apparatus; water intake apparatus; pipes for sanitary installations; cocks and spigots for pipes; faucets for pipes; regulating and safety accessories for water apparatus and pipes; flushing apparatus and installations including water flushing installations and flushing tanks; sanitary apparatus and installations; water supply parts and accessories including bath installations, bath fittings, bath plumbing fixtures; shower installations, shower fittings, shower plumbing fixtures; shower roses including hand held shower roses; toilet installations, toilet fittings, toilet plumbing fixtures; urinal installations, urinal fittings, urinal plumbing fixtures; hand basins and hand bowls including installations, fittings and plumbing fixtures therefore; sinks including installations, fittings and fixtures therefore; taps; faucets; valves including valves for controlling water levels; washers including washers for water taps; cisterns and cistern valves; toilet buttons; flush pipe kits; water supply connectors; hoses for use in water supply apparatus
Class 17: pipe gaskets not of metal; joint packings and junctions for pipes; flexible tubes not of metal; hoses including hoses of textile material; water tight rings; rings of rubber; valves and washers of rubber or vulcanised fibre; plumbers tape; insulating tape; threads of plastic materials and rubber, not for textile use; rubber or plastic stoppers; tapes and sealing tapes in this class; hoses for washing machines and dishwashers; hose connectors and hose couplings; fittings for washing machines and dishwashers in this class; rubber connectors; pipe fittings in this class; outdoor hoses and accessories in this class; rubber sink plugs
Class 35: retail services including online retail services; compilation of information into computer databases; computerised database management; price and product comparison services; systemisation of data in computer databanks and databases; sales promotion (for third parties); data saving; advertising and marketing services; advertising the goods of other vendors enabling customers to conveniently view and compare the goods of those vendors; market research and market studies; customer loyalty schemes; incentive and loyalty card services; compilation and provision of price and feature information relating to the supply of products; product information services for the purposes of advertising and retail and for the purposes of comparative pricing; compilation and provision of product descriptions and comparative information; price monitoring services; data management on servers; information, consultancy and advice in relation to all the aforementioned services
Class 37: plumbing services; building and construction services; maintenance, installation and repair services; information, consultancy and advice in relation to all the aforementioned services
Class 42: design, development, update, maintenance and provision of computer software; provision of non-downloadable software; application service provider (ASP) services; investigations and research in data banks and on the internet for third parties; operation of search engines for the internet; digital data processing; computerised information storage services; non-downloadable software to facilitate the selection and purchasing of products; non-downloadable mobile and desktop applications to facilitate online shopping and purchases; non-downloadable mobile and desktop applications for use in promoting the goods and services of others; data storage; information, consultancy and advice in relation to all the aforementioned services
Opponent’s Trade Marks (specifications of goods and services)
2013912 Reno F
Class 9: Tablet computers; Computer programs, recorded; Computer game software, recorded; Computer game software, downloadable; Computer peripheral devices; Computer programs, downloadable; Smartphone software applications, downloadable; Smartwatches; Smartglasses; Interactive touch screen terminals; Humanoid robots with artificial intelligence; Wearable computers; Gesture recognition software; Virtual reality game software; Scanners (data processing equipment); Facsimile machines; Navigational instruments; Wearable activity trackers; Smartphones; Cases for smartphones; Protective films adapted for smartphones; Covers for smartphones; Cell phone straps; Keyboards for smartphones; Wireless speaker; Portable media players; Wireless headsets; Teaching apparatus; Camcorders; Virtual reality headsets; Security surveillance robots; Cameras (photography); Selfie sticks (hand-held monopods); USB cables; Chips (integrated circuits); Touch screens; Batteries, electric; Chargers for electric batteries; Rechargeable batteries; Animated cartoons; Air analysis apparatus; Measuring apparatus; Biochips
2013913 Reno Z
Class 9: Tablet computers; Computer programs, recorded; Computer game software, recorded; Computer game software, downloadable; Computer peripheral devices; Computer programs, downloadable; Smartphone software applications, downloadable; Smartwatches; Smartglasses; Interactive touch screen terminals; Humanoid robots with artificial intelligence; Wearable computers; Gesture recognition software; Virtual reality game software; Scanners (data processing equipment); Facsimile machines; Navigational instruments; Wearable activity trackers; Smartphones; Cases for smartphones; Protective films adapted for smartphones; Covers for smartphones; Cell phone straps; Keyboards for smartphones; Wireless speaker; Portable media players; Wireless headsets; Teaching apparatus; Camcorders; Virtual reality headsets; Security surveillance robots; Cameras (photography); Selfie sticks (hand-held monopods); USB cables; Chips (integrated circuits); Touch screens; Batteries, electric; Chargers for electric batteries; Rechargeable batteries; Animated cartoons; Air analysis apparatus; Measuring apparatus; Biochips
2030247 OPPO Reno
Class 9: Computers; computer peripheral devices; computer software, recorded; notebook computers; electronic publications, downloadable; computer programs, downloadable; computer game software, recorded; computer game software, downloadable; USB flash drives; tablet computers; smartglasses; smartwatches; interactive touch screen terminals; humanoid robots with artificial intelligence; smart rings; smartphone software applications, downloadable; personal digital assistants [PDAs]; computer software platforms, recorded or downloadable; wearable computers; virtual reality game software; LCD monitors; computer game software downloadable from a global computer network; light emitting diode displays; USB card readers; pedometers; apparatus to check franking; counterfeit coin detectors; mechanisms for coin-operated apparatus; dictating machines; face recognition devices; punched card machines for offices; bathroom scales; rules [measuring instruments]; signs, luminous; transmitters of electronic signals; intercommunication apparatus; telephone apparatus; global positioning system [GPS] apparatus; smartphones; mobile telephones; cell phones; network communication equipment; wearable activity trackers; cases for smartphones; protective films adapted for smartphones; telecommunication apparatus in the form of jewellery; selfie sticks for use with smartphones; stands adapted for mobile phones; GPS navigation device; electronic devices used to locate lost articles employing the global positioning system or cellular communication networks; in-car telephone handset cradles; sound transmitting apparatus; portable media players; electronic book readers; earphones; virtual reality headsets; wearable video display monitors; HD (High Definition) televisions; DMB (Digital Multimedia Broadcasting) televisions; selfie sticks [hand-held monopods]; selfie lenses; measuring apparatus; audiovisual teaching apparatus; wires, electric; USB cables; semi-conductors; electronic chips; electric plugs; video screens; remote control apparatus; optical fibres [light conducting filaments]; heat regulating apparatus; lightning conductors; electrolysers; fire extinguishers; radiological apparatus for industrial purposes; protection devices for personal use against accidents; theft prevention installations, electric; eyeglasses; batteries, electric; rechargeable batteries; wireless chargers; USB chargers; chargers for electronic cigarettes; animated cartoons; portable remote car arrester; optical apparatus and instruments; gesture recognition software; biometric retinal scanners; ear pads for headphones.
2089878 Reno Ace
Class 9: Computers; computer programs, recorded; computer game software, downloadable; computer peripheral devices; computer programs, downloadable; smartwatches; smartglasses; interactive touch screen terminals; humanoid robots with artificial intelligence; wearable computers; pedometers; face recognition devices; biometric retinal scanners; facsimile machines; scales; measures; signal lanterns; network communication equipment; navigational instruments; cell phones; covers for smartphones; wearable activity trackers; virtual reality headsets; cabinets for loudspeakers; earphones; microphones; portable media players; camcorders; cameras [photography]; measuring apparatus; magnifying glasses [optics]; USB cables; electronic chips; video screens; remote control apparatus; optical fibres [light conducting filaments]; electric buzzers; eyeglasses; chargers for electric batteries; batteries, electric; rechargeable batteries; animated cartoons; biochips; air analysis apparatus; devices for wireless radio transmission; headsets for telephones; smartphones.
2167201 REENO
Class 9: Cell phones; Smartphones; Notebook computers; Computers; Laptop computers; Earphones; Cabinets for loudspeakers; USB cables; Battery chargers; Portable power supplies (rechargeable batteries); Selfie sticks (hand-held monopods); Television apparatus; interactive touch screen terminals; Smartwatches; Smart bracelets; computer programs, recorded; computer programs, downloadable
2167439 REENO
Class 35: Presentation of goods on communication media, for retail purposes; Business management consultancy; Import-export agency services; Provision of an online marketplace for buyers and sellers of goods and services; Personnel management consultancy; Administrative services for the relocation of businesses; Compilation of information into computer databases; Accounting; Rental of sales stands; Advertising; Television advertising; Advertising agency services; online advertising on a computer network; Online advertising via a computer communications network; Sales promotion for others; Retail or wholesale services for cell phones, earphones, computers, computer software products, DVD players, cameras (photography), smartwatches, smart rings, facial recognition apparatus, biometric scanners, cabinets for loudspeakers, virtual reality headsets and touch screens
2182298 OPPO Reno
Class 7: Agricultural machines; Aerating pumps for aquaria; Disintegrators; Door openers and closers, electric; 3D printing pens; Electroplating machines; Milking machines; Hair clipping machines for animals; Woodworking machines; Papermaking machines; Diaper production equipment; Printing machines; Spinning machines; Dyeing machines; Tea processing machines; Mixing machines; Sewage pulverizers; Filter presses; Beverage preparation machines, electromechanical; Cigarette machines for industrial purposes; Leather splitting machine; Sewing machines; Bicycle assembling machines; Machinery and equipment for the ceramic industry, including ceramic machinery for construction; Engraving machines; Battery manufacturing machines; Chopstick making machines; Enamel making machines; Light bulb making machines; Packing machines; Coal briquettes making machines; Dishwashers; Washing machines (laundry); Machine used for processing filtration in the pharmaceutical industry; Machines for processing plastics; Glass-working machines; Fertilizer manufacturing machines; Rinsing machines; Cutters (machines); Oil refining machines; Road rollers; Lifts, other than ski-lifts; Swaging machines; Foundry machines; Steam engines; Carburetter feeders; Hydraulic turbines; Pushpin making machines; Zipper making machines; Stands for machines; Wire pulling grips (machines); Knives, electric; Equipment for electronic products manufacturing; Spectacle lenses processing equipment; Gas separation equipment; Spray guns for paint; Alternators; Filters for cleaning cooling air, for engines; Centrifugal machines; Pressure valves (parts of machines); Aerocondensers; Hydraulic coupler for excavators; Axles for machines; Electromechanical machines for chemical industry; Self-oiling bearings; Belts for conveyors; Welding machines, electric
Class 12: Motor buses; Pumps for bicycle tyres; Telpher railways (cable cars); Bicycle tyres; Repair outfits for inner tubes; Air vehicles; Boats; Civilian drones; Camera drones
Class 14: Precious metals, unwrought or semi-wrought; Jewellery boxes; Jewellery findings; Clocks; Gold bullion; Silver, unwrought or beaten; Musical jewelry boxes; Unwrought precious stones; Drop earrings; Sports watches; Wristwatches
Class 28: Games; Dolls; Roller skates; Christmas trees of synthetic material; Rods for fishing; Checkers (games); Chess games; Backgammon games; Balls for games; Body-building apparatus; Bows for archery; Hunting game calls; Swimming pools (play articles); Plastic race tracks (toys); Machines for physical exercises
Class 42: Technological research; Surveying; Cosmetic research; Biological research; Meteorological information; Material testing; Packaging design; Design of interior decor; Dress designing; Computer programming; Computer software design; Rental of computer software; Recovery of computer data; Conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Installation of computer software; Computer software consultancy; Software as a service (SaaS); Information technology (IT) consultancy; Cloud computing; Unlocking of mobile phones; Platform as a service (PaaS); Updating and maintenance of computer software; Updating of smartphone software; Smartphone software design; Design and development of software in the field of mobile applications; Recovery of smartphone data; Authenticating works of art
2303761 OPPO CONNECT
Class 9: Computer software, recorded; computer programs, downloadable; mobile phone software applications, downloadable; computer programs for connecting remotely to computers or computer networks; internet servers; network management computer software; network communication equipment; network routers; computer programs for using the internet and the worldwide web; application software for mobile phones; computer software applications, downloadable; switchboards; modems.
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