HITIQ Limited v Conneqt, Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by HITIQ Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2312148 (International Registration number 1692985) (classes 9, 10 and 42) – Conneqt - in the name of Conneqt, Inc

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Forward Intellectual Property Pty Ltd

Holder: Phillips Ormonde Fitzpatrick

Decision:

2024 ATMO 174

Trade Marks Act 1995 (Cth) – opposition to extension of protection under reg 17A.33 - grounds of opposition pressed under reg 4.15A and ss 42(b), 58 and 60 of the Trade Marks Act 1995 (Cth) - s 58 ground established – extension of protection to Australia refused

Background
1. This is a decision in respect of an opposition by HITIQ Limited (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):
[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).
International Registration number:         1692985 (‘IR’)
Australian trade mark number: 2312148 (‘Application’)
Trade mark:  Conneqt (‘Trade Mark’)
Holder:  Conneqt, Inc (‘Holder’)
Filing Date:  21 September 2023 (‘Relevant Date’)
Specification:  Class 9: Downloadable cell phone application, for monitoring cardiovascular parameters and providing cardiovascular health insights; downloadable computer programs for monitoring medical data; computer software applications, downloadable, for analyzing arterial pulse waveforms to measure central arterial blood pressure and detect arterial stiffness; wearable electronic devices in the nature of a wearable activity tracker; computers in the form of wearable devices capable of connecting to computer networks.
Class 10: Arterial blood pressure measuring apparatus; pulse meters; testing apparatus for medical purposes, namely, central and brachial blood pressure measurement system; heart beat detector, namely, heart monitors; apparatus for use in medical analysis, namely, pulse wave analysis; medical device, namely, blood pressure monitors; heart rate monitoring apparatus; wearable monitor to perform pulse wave analysis for medical use.
Class 42: Providing temporary use of online, non-downloadable cell phone applications, regarding medical services and medical information; providing temporary use of online, non-downloadable computer programs for monitoring medical data.
(‘Holder’s Goods and Services’).

2.     The Trade Mark was examined and advertised as accepted for possible protection on 16 May 2023.
3.     On 17 July 2023, the Opponent filed a Notice of Intention to Oppose the IRDA. On 15 August 2023, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Holder filed a Notice of Intention to Defend the opposition on 18 September 2023.
4.     The Opponent filed Evidence in Support (‘EIS’) on 2 January 2024 and the Holder filed Evidence in Answer (‘EIA’) on 8 April 2024. No Evidence in Reply was filed.
5.     The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Holder requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the particulars set out in the SGP and the evidence of the parties.
Grounds and Onus
6.     The SGP nominates grounds of opposition under ss 42(b), 58 and 60.
7.     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 and the priority date of the IRDA.
[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] HCA 82, [4] (Kitto J) (‘Southern Cross’).
Evidence
8.     The following EIS was filed:
·Declaration of Matthew Ward, solicitor representing the Opponent, dated 2 January 2024 annexing a copy of a declaration of Damien Hawes, chief commercial officer of the Opponent, dated 23 June 2023 with exhibits DH-1 to DH-5 which was filed in respect of the prosecution of now lapsed trade mark application numbers 2319460 and 2319461 (‘Hawes’).

9. The following EIA was filed:
·Declaration of Russell John Waters, principal of Phillips Ormonde Fitzpatrick, attorneys for the Holder, dated 8 April 2024 with exhibits RJW-1 to RJW-6 including confidential exhibit RJW-3 (‘Waters’).

Summary of EIS
10.   Hawes states that the Opponent is an Australian public company, which provides hardware and services relating to concussion management including instrumented mouthguards which record head impacts, and services which assist customers/users in managing concussions.
11.   Hawes claims that the Opponent has developed a platform under the Trade Mark which enables sharing of data relating to head injuries, including an online portal through which information related to head injuries would be shared between various parties, for example players, caregivers, team managers, and health professionals (‘Opponent’s Services’).
12.   Hawes declares that the Opponent first used the Trade Mark for the Opponent’s Services on 13 September 2022, when Mr Dawes made a presentation to the West Australian Football League (‘WAFL’). Hawes also declares that on 19 September 2022, Mr Dawes emailed a brochure to WAFL and exhibits a copy of the brochure and the email. I note reference to the Trade Mark in the brochure. Dawes claims WAFL became a customer of the Opponent’s Services under the Trade Mark and remains a customer to this day but provides no supporting evidence.
13.   Dawes claims that from the date of first use to 23 June 2023, the Opponent has marketed and delivered to customers the Opponent’s Services under the Trade Mark including to Rugby Australia, the Australian Football League, and the National Rugby League. No supporting evidence is provided.
14.   Dawes also claims that the Opponent has marketed the Opponent’s Services on the Opponent’s website at since January 2023 and exhibits printouts from the website dated 23 June 2023.
Summary of EIA
15.   Waters states that the Holder is a subsidiary operating company of CardieX, Inc (‘CardieX’) and that CardieX first used the trade mark CONNEQT in Australia in a CardieX investor update presentation titled ‘Corporate Update’ released through the Australian Stock Exchange (‘ASX’) in May 2021. Russell exhibits a dated copy of the presentation[5] where I note the following:
·CardieX is a health technology company that focusses on vascular and arterial health which has two operating divisions, one being ATCOR (medical) for specialist clinical markets, research and pharma and the other CONNEQT (consumer) for home and primary care (GPs) vital sign monitoring devices, wearables, digital solutions and apps.
·use of the trade mark CONNEQT in respect of a dual blood pressure monitor (referred to as Conneqt Pulse) and a wearable vascular health band referred to as Conneqt Band (‘Products’).
·sample marketing campaigns and launch schedules for the Products under the CONNEQT trade mark.
·reference to CardieX Limited and not CardieX Inc on the CardieX Capital Structure – Overview page as .
[5] Waters Exhibit RJW-1.

16.   Waters claims that the CONNEQT trade mark was also used in subsequent ASX announcements and exhibits copy of an announcement[6] made on 28 June 2022 announcing the filing of an application for FDA (United States Federal Drug Administration) approval for the Pulse monitor to be marketed by the Applicant under the trade mark CONNEQT. I note that the company CardieX referred to in the announcement is CardieX Limited and not CardieX Inc as:
and further note the following in the announcement:
[6] Waters Exhibit RJW-2.
17.   Waters claims that CardieX has promoted its products to Australian customers and prospective customers via email and exhibits copies of three emails dated 4 and 10 July 2022 and 5 September 2022. I note the following statement in the email of 4 July 2022 ‘once we get through the FDA clearance process (being confident here) we will proceed with CE[7] and Australian TGA[8] clearances. Our time line is hence pre-Christmas to have the product on the market.’. I also note that the email of 5 September 2022 appears to be an internal email between ATCOR (a subsidiary of CardieX)[9] and CardieX.
[7] CE certification is a regulatory standard that guarantees that a product and its packaging meet European safety and quality requirements.
[8] The Therapeutic Goods Act (1989) (Cth) is administered by the Therapeutic Goods Administration which maintains the Australian Register of Therapeutic Goods (‘ARTG’). Such goods include medical and surgical devices and must be entered in or included in the ARTG before they can lawfully be supplied in Australia.
[9] Waters Exhibit RJW-2, RJW-4 and RJW-6.
18.   Waters states that FDA approval for the CONNEQT Pulse product was announced on 26 April 2023 on the online site and exhibits a copy of the announcement where I note reference to CardieX Limited and not CardieX Inc. Waters states that TGA approval for the product in Australia is still pending.
19.   Waters claims that the Trade Mark has also been used on the Holder’s website at httos://conneqthealth.com/ online since December 2022 and exhibits undated printouts of the website and that the trade mark CONNEQT was promoted in The Australian Business Review dated 15 September 2023 and exhibits a copy of the article.
Discussion and Reasons
20.   Regs 17A.28 and 17A.34 provide that an IRDA can be opposed on the grounds under ss 39 to 44 and 58 to 61 and 62A respectively.
Section 58
21.   The provisions of s 58 provide:
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.

In summary the SGP claims the Holder is not the owner of the Trade Mark as the Opponent first used the Trade Mark on 13 September 2022 in respect of health and medical related services including an online platform to enable the sharing of data relating to head injuries and management and care of such injuries and is therefore the owner of the Trade Mark.
The Act provides for registration of ownership and not ownership by registration.[10] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[11]
[10]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[11] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[12] which in this case is 21 September 2022.
[12] Ibid [14].
25. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[13]
[13] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ) (‘Anchorage’).
The use must be use as a trade mark, namely as a ‘badge of origin’ to indicate a trade connection between goods and services and the trade mark owner and the prior use must be in the course of trade in Australia.[14] The ‘course of trade’ has a broad meaning, consistent with ‘for the purposes of trade’.[15]
[14] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ and Sundberg and Finkelstein JJ).
[15] W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182, 191 (Dixon CJ, McTiernan, Williams, Webb and Taylor JJ).
As the High Court said in W D & H O Wills (Australia) Ltd v Rothmans Ltd:
The word "trade is, as their Lordships have told us in the Aristoc Case, a very wide word, but the use of a trade mark for the purposes of trade would have to be at least a use of the mark to indicate the origin of the goods. As Lord Simonds said of the analogous words in the course of trade", the use of the mark would have to be a use for the purposes of trade in the goods.[16]
[16] (1956) 94 CLR 182, 191 (Dixon C.J., McTiernan, Williams, Webb and Taylor JJ).
The purpose and nature of the use is the relevant inquiry in answering the question whether the use is use ‘as a trade mark’.[17] The assessment of the purpose and nature of the use of the sign is objective, that is by reference to what a member of the public could be expected to understand by its use.[18]
[17] TheShell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [15] (‘Shell’).
[18] Ibid 425. See also Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924, [14] (Burchett J).
In Oakley Inc v Franchise China Pty Ltd, Drummond J stated:
The term “trade” in the context of the phrase in s 17 the Trade Marks Act 1955 (Cth) is undoubtedly a wide one. It encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods. It has been held that “a use of a mark in an advertisement of goods is a use in the course of trade, and is of course a use in relation to the goods advertised”: The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd. The use of a mark on goods in conducting investigations as to whether there might be a market for those goods is unlikely to be a use of the mark in the course of trade: that will generally be the use of a mark in activities preparatory to the commencement of a course of trade. See Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd. But where the owner of a mark is able to show that it is committed to supplying marked goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to prospective customers in soliciting business will probably amount to the use of the mark in the course of the trade: see Settef at 439; Woolly Bull Enterprises Pty Ltd v Reynolds and cf Buying Systems (Australia) Pty Ltd v Studio Srl.[19]
[19] [2003] FCA 105, [29] (citations omitted).
In the words of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds[20] cited with approval by Katzmann J in Dick Smith Investments Pty Ltd v Ramsey:[21]
[20] [2001] FCA 261.
[21] [2016] FCA 939, [149].
[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd said:
Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.[22]
[22] [2023] HCA 8, [24] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
The objective purpose and nature of use are assessed by reference to context which includes the relevant trade,[23] the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.[24]
[23] Woolworths Ltd v BP Plc [No 2] (2006) 154 FCR 97, 117 [77] (Heerey, Allsop & Young JJ).
[24] Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192, 211-212, 218; Anheuser-Busch Inc v Budejovický Budvar Národní Podnik (2002) 56 IPR 182, 227 [186] (Allsop J).
The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd where his Honour stated:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[25]
[25] Shell (n 17), [12].
34.   Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.
35.   Whether there is substantial identity is a question of fact.[26]
[26] Ibid [53].
36.   The ground of opposition under s 58 will be established if the Opponent can prove that a person other than the Holder was the first person before the Relevant Date to:
(a) use as a trade mark the Trade Mark or a substantially identical sign to the Trade Mark in Australia; and
(b) in respect of the same, goods or services, or goods or services of the same kind as the Holder’s Goods and Services.[27]
[27] Anchorage (n 13), [49]-[64].
Use as a trade mark or a substantially identical trade mark by a person other than the Holder
37.   The Opponent’s evidence makes an unsupported claim of first use of the Trade Mark on 13 September 2022. The date of the first use of the Trade Mark by the Opponent which is supported by documentary evidence is 19 September 2022, which is 2 days prior to the Relevant Date.
38.   The Holder’s evidence claims use by CardieX of the CONNEQT trade mark prior to the Opponent’s date of first use which is supported by:
·May 2021 ASX presentation – for a blood pressure monitor and wearable vascular health band
·28 June 2022 ASX announcement – for a blood pressure monitor, an app, a medical device data system and a physician’s portal
·July 2022 emails
39.   I am satisfied that CardieX has made first use of the CONNEQT trade mark and that this use is use as a trade mark in the course of trade. I consider that CardieX has gone beyond investigating whether to use and beyond planning to use the CONNEQT trade mark, and has committed itself to carrying its intention to use the CONNEQT trade mark into effect and is using the CONNEQT trade mark.
40.   I am also satisfied that the CONNEQT trade mark is virtually identical to the Trade Mark, being a capitalised version of the Trade Mark, and is therefore a substantially identical mark.
41.   However, clearly CardieX is not the Holder. Waters claims that the Holder is a subsidiary operating company of CardieX, but while the ASX announcement of 28 June 2022 refers to CardieX’s CONNEQT subsidiary, there is no evidence that CardieX’s CONNEQT subsidiary is the Holder. Further contrary to the ASX announcements, Waters claims that the Holder is a subsidiary operating company of CardieX Inc and not CardieX Limited.
42.   I therefore find myself in an unusual situation as on the evidence before me, there are two entities that have used the Trade Mark before the Holder: the Opponent on 19 September 2022 and CardieX in May 2021.
43.   As the ground of opposition in s 58 can be established by showing that the Holder is not the owner and while the burden of proof is on the Opponent, here, the evidence is sufficiently clear to enable a finding of fact to be made about ownership of the Trade Mark at the time of filing. On the evidence before me I am satisfied that a person other than the Holder first used the Trade Mark in Australia.
The same goods or services, or goods or services of the same kind
44.   The meaning of ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited (‘Colorado’) wherein Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming H B, Sebastian’s Law of Trade Marks, 4th Ed at p 91) or “goods essentially the same … though they pass under a different name owing to slight variations in shape and size.[28]
[28] [2007] FCAFC 184, [89] (‘Colorado’).
45.   The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[29] Essentially, the two sets of goods or services must be ‘true equivalents’.[30]
[29] Ibid.
[30] Ibid.
46.   I am satisfied that CardieX’s first use of the CONNEQT trade mark is in respect of a blood pressure monitor, a wearable vascular health band, an app, a medical device data system and a physicians portal (collectively ‘Goods and Services’).
47.   The question now is whether any of the Goods and Services are the same goods or goods of the same kind as the Holder’s Goods and Services. Not unexpectedly, given the Holder’s evidence, I consider that the Goods and Services are the same or the same kind of thing as the Holder’s Goods and Services.
48.   In light of the above, I am satisfied that the evidence establishes that the Trade Mark was used as a trade mark before the Relevant Date by a person other than the Holder in relation to the same goods and services, or goods and services of the same kind, as those of the Application.
49.   As I have found that CardieX has used the Trade Mark for Goods and Services which are the same or the same kind of thing as the Holder’s Goods and Services, and the s 58 ground is therefore established in respect of all the Holder’s Goods and Services, I do not need to consider whether the Opponent’s use of the Trade Mark was for Goods and Services which are the same or the same kind of thing as the Holder’s Goods and Services.
50.   Given the s 58 ground has been established, it is unnecessary that the remaining grounds be considered.
Decision
51.   Reg 17A.34N relevantly provides:
Decision on opposition
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
52.   The ground of opposition under s 58 has been established. Accordingly, I refuse to extend protection of the Trade Mark to Australia.
Costs
53.   The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As a ground of opposition has been established, I award costs against the Holder under s 221 as per Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
19 September 2024

[2024] ATMO 174

19 September 2024