Hive Empire Pty Ltd v Phonepost Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hive Empire Pty Ltd to registration of trade mark application number 1951331 (Class 9) – GOFINDER – in the name of Phonepost Pty Ltd.

Delegate: Blake Knowles

Representation: Opponent: Gorton IP.
Applicant: Self-represented.

Decision: 2022 ATMO 133
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 43, 44, 58A, and 60 – no grounds established – trade mark to proceed to registration.
Background

This is a decision on the opposition by Hive Empire Pty Ltd (‘Opponent’) to registration of trade mark number 1951331 (‘Application’) filed by Phonepost Pty Ltd (‘Applicant’).
The Application was filed on 29 August 2018 (‘Relevant Date’) seeking registration of GOFINDER (‘Trade Mark’) in respect of Class 9: Vehicle tracking apparatus (‘Applicant’s Goods’).
The Trade Mark was examined, and subsequently accepted for registration and advertised for opposition purposes on 23 September 2019. The Opponent filed notice of its intention to oppose registration on 2 November 2019 and a statement of grounds and particulars (‘SGP’) on 2 December 2019. The Applicant filed a notice of intention to defend the Trade Mark from opposition on 13 February 2020.
The parties had the opportunity to file evidence under the timetable set out in reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 14 May 2020. The Applicant filed Evidence in Answer (‘EIA’) on 19 July 2020. The Opponent did not file Evidence in Reply.
[1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The parties were given an opportunity to request a hearing by videoconference or written submissions. The Applicant requested to be heard by written submissions and filed submissions on 18 June 2022. The Opponent did not request to be heard. As a delegate of the Registrar, I have decided the matter based on the particulars detailed in the SGP, the EIS, and EIA. The submissions filed by the Applicant consist of additional evidentiary material relating to use of the Trade Mark after the Relevant Date. This information is of little probative value. As such, I give it no weight in reaching my decision.
Grounds and onus
The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58A, and 60.
The Opponent carries the burden of establishing the ground of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
The following evidence was filed:
EIS
Declaration of Michelle Gorton, lawyer acting for the Opponent, made on 14 May 2020, with Annexures A to K.
EIA
Declaration of Graham Thomas, Director of Applicant, made on 23 August 2020.
EIS
The EIS consists solely of a declaration made by Ms Michelle Gorton, a lawyer acting on behalf of the Opponent. Ms Gorton declares that she makes the declaration based on information provided to her by the Opponent. It is always preferable for a party to give evidence via one of its officers rather than a legal representative. However, where relevant information is reasonably specific and could have been provided to the declarant from company records (rather than being reliant on personal recollection), I consider it has some probative value.
Ms Gorton declares that the Opponent is an online comparison service which compares and advertises various products and services including computer type goods and services, mobile phones, various types of consumer loans, various types of consumer and business insurance, and online shopping discounts and codes. The Opponent provides its services via the website (‘Opponent’s Website’).
Ms Gorton declares that the Opponent is the owner of a family of trade marks that include the word FINDER. Ms Gorton highlights two of these registrations in particular, namely:
Trade Mark Number:             1559528
           Trade Mark:
(‘528 Mark’)
Priority Date:  28 May 2013
Trade Mark Number:             1813169
Trade Mark:
(‘169 Mark’)
Priority Date:  7 December 2016
(collectively, ‘Opponent’s Registrations’)
The Opponent’s Registrations cover a broad range of goods and services in classes 9, 35, 36, 38, 39, 41, and 42, which are set out in Annexure A as ‘528 G&S’ and ‘169 G&S’.
Ms Gorton declares that the Opponent has used various FINDER marks, particularly the plain word FINDER and the 528 Mark, since 2012 in relation to goods and services in classes 9, 35, 41, and 42. Ms Gorton provides confidential annual revenue and promotional expenditure figures for the period between 2012 to 2017 which are commercially significant. Similarly, Ms Gorton declares that there were a significant number of visits to the Opponent’s Website during the period 2012-2016.
Ms Gorton annexes to the declaration various examples of use and promotion of the FINDER trade marks, including advertising, social media extracts (including from Facebook, Twitter, YouTube, Instagram, and LinkedIn), and Internet Archive Wayback Machine extracts of the Opponent’s Website. Ms Gorton also annexes many examples of references to the Opponent in the media. This material indicates that the Opponent is a ‘go to’ source for comparative information and statistics for consumer products and services.
EIA
Mr Thomas declares that the Applicant has been trading as GOFINDER since 2004 ‘selling wholesale and retail GPS tracking equipment and software’. The Trade Mark was first registered to a sister company, Dark Horse Productions Pty Ltd, in 2005. However, that company became dormant and the trade mark was removed due to non-renewal in July 2014.
Mr Thomas provides annual turnover figures between 2016 and 2019. Mr Thomas also provides evidence of use of the Trade Mark and associated composite marks between 2006 and 2018, including on the Applicant’s website ww.gofinder.net.
Mr Thomas declares that the Applicant has built a substantial reputation within the tracking industry, having imported and badged under its own name equipment and software from the USA, New Zealand, South Africa, Canada, Taiwan, and China. In addition to having a wide rental and tracking subscription client base, since 2009 products sold under the Trade Mark have been retailed in 93 Car Audio Masters group stores across Australia.
Discussion
Section 44
To establish a ground of opposition under s 44, the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of goods that are similar to the Applicant’s Goods or services that are closely related to the Applicant’s Goods.
The Opponent relies on the Opponent’s Registrations as the basis for the s 44 ground. Each of the Opponent’s Registrations has a priority date earlier than the Application. I will first assess whether the Trade Mark is either substantially identical with, or deceptively similar to, either of the Opponent’s Registrations.
The test for whether two marks are substantially identical requires that they 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.[4]
[4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).
I am satisfied that the Trade Mark is not substantially identical with either of the Opponent’s Registrations. The Trade Mark consists of a conjoined word GOFINDER whereas the essential features of each of the Opponent’s Registrations is the word FINDER and a distinctive device element. A total impression of resemblance does not emerge from a side by side comparison of the respective trade marks.
The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, I am guided by the following principles:
-There must be a real, tangible danger of confusion, not just a mere possibility.[6]
-Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[7]
-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[9]
-Consumers may retain an imperfect recollection of a mark or its essential features.[10]
-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[11]
-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[12]
-It must be considered how the goods or services are ordinarily sold or provided.[13]
[5] Trade Marks Act 1995 (Cth) s 10.
[6] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).
[7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
[8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).
[9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).
[10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).
[11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).
[12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[13] Ibid.
The Opponent’s Registrations are a composite of the stylised word FINDER (as the primary essential feature) and a device element comprising a magnifying glass inside a raindrop background. The word FINDER is also a prominent element of the Trade Mark, being combined with GO to form the coined term GOFINDER. However, the word FINDER is also highly descriptive in relation to the Applicant’s Goods, which are vehicle tracking apparatus. This descriptiveness reduces the impact that the word FINDER has on the consumer, particularly given that the word GO which forms the first part of the mark is distinctive and arbitrary in relation to the Applicant’s Goods. There are also conceptual differences between the respective marks, as the Trade Mark conveys the idea of ‘go find’ which is not analogous to the meaning of the word FINDER by itself. I also note that the Applicant’s Goods are specialised items that would be purchased with a reasonable degree of care and attention, which further mitigates the potential for confusion. In the circumstances, I am not satisfied, given the presence of the distinctive word GO in the Applicant’s Mark, the presence of device elements in the Opponent’s Registrations, and the descriptive nature of the word FINDER, that there is a real tangible danger of confusion. While there is some possibility of confusion, I consider that possibility to be remote, particularly in the context of the different goods and services of the Application and Opponent’s Registrations.
The ground under s 44 is not established.
Section 58A
Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).
The Opponent has failed to establish the ground under s 44. As such, it was not necessary for the Applicant to rely on s 44(4), and the ground under s 58A cannot be established.
Section 60
To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.
It is not necessary for the Opponent to establish that the trade mark relied on by the Opponent and the opposed Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion.
In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:
It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[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 the 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.
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[14]
[14] [2000] FCA 1335, [85]-[86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[15]
[15] [2019] FCA 923, [83] (O’Bryan J).
The Opponent relies on reputation in the FINDER word mark, the 528 Mark, and the 169 Mark as the basis for s 60. I consider that the Opponent’s evidence is sufficient to demonstrate reputation in each of these trade marks, to varying degrees. However, I consider that reputation is limited to the provision of price comparison and other consumer information services, and I must consider the likelihood of confusion posed by use of the Trade Mark in this context.
The basis for any alleged confusion arising from reputation in the Opponent’s FINDER marks is the presence of the word FINDER in the Trade Mark. As discussed above, there is only remote potential for confusion based on the visual, aural, and conceptual similarities and differences of the respective trade marks as a whole. FINDER is descriptive in relation to vehicle tracking apparatus and also other goods and services that relate to the finding of persons or things. As such, consumers could reasonably expect to see FINDER/S used by different businesses providing various types of ‘finding’ goods and services. The use of FINDER/S by different traders in relation to ‘finding’ type goods and services that are inherently different is much less likely to cause confusion than if the respective traders were using a highly distinctive word that was arbitrary in relation to their respective goods and services, and where one trader had established a significant reputation.
I consider that the Applicant’s Goods (being vehicle tracking apparatus) are very different in nature and purpose from the price comparison and consumer information services in which the Opponent has acquired reputation for its various FINDER trade marks. The differences in the respective goods and services coupled with the descriptive nature of the word FINDER renders the likelihood of confusion as being remote.
As the Opponent has not established a likelihood of confusion arising from the reputation in its trade marks, the ground under s 60 is not established.
Section 42(b)
The Opponent under s 42(b) alleges that use of the Trade Mark would constitute a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’), the tort of passing off, and trade mark infringement under s 120 of the Trade Marks Act 1995 (Cth).

While not specifically stated under the s 42(b) ground in the SGP, I assume the Opponent’s basis for the claims relating to breach of the ACL and passing off are based on its reputation in the FINDER word mark, the 528 Mark, and the 169 Mark as particularised under s 60.
As stated under s 60, I do not consider that use of the Trade Mark gives rise to a likelihood of confusion due to reputation in the Opponent’s marks. For similar reasons, I do not think that consumers would be likely to be misled or deceived, and as such, the claims that use of the Trade Mark would breach ss 18 and 29 of the ACL or constitute passing off are not established.
Turning to the claim that use of the Trade Mark would breach s 120 of the Trade Marks Act 1995 (Cth), the Opponent has not stated which registered trade marks are likely to be infringed, although I infer that the Opponent intended to rely on the Opponent’s Registrations as it did under s 44. If that is the case, the claim of trade mark infringement under s 120 is not made out for the same reasons as I provided with regards to s 44.
As the Opponent has not established that use of the Trade Mark would be contrary to law, the ground under s 42(b) is not established.
Section 43
To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
In the SGP, the Opponent particularised the ground under s 43 by alleging that use of the Trade Mark would incorrectly convey that the Applicant has the licence or approval of the Opponent (being the owner of various FINDER marks).
Section 43 of the Act is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[16] The allegation made by the Opponent is more relevant to s 60, which has been dealt with above.
[16] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
There is no evidence before me to establish that the Trade Mark contains any connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground is not established.
Decision and costs
The Opponent has failed to establish any of the grounds of opposition nominated. The Trade Mark may proceed to registration not less than one month from the date of this decision.
If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent in accordance with Schedule 8 of the Regulations.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks
09 August 2022
Annexure A
Opponent’s Registrations – goods and services
528 G&S
Class 9: Electronic publications (downloadable); downloadable image files; apparatus for searching electronic information; databases (electronic publications); directories (electric or electronic); computer databases; computer programs for use in database management; computer software; downloadable computer software; downloadable image files; data recorded electronically from the internet; computer programs including computer programs for the integration of databases on a global computer network; software for the comparison of costs associated with credit cards, mobile phones, home loans, savings accounts, life insurance, personal loans, broadband plans, Forex Trading, car loans, term deposits, income protection insurance, debit cards, flights and travel and travel insurance and other financial products
Class 35: Price comparison services; price analysis services; pricing surveys; surveys (opinion polling); compilation of information into computer databases including compilation of information into computer databases relating to comparison of credit cards, mobile phones, home loans, savings accounts, life insurance, personal loans, broadband plans, Forex Trading, car loans, term deposits, income protection insurance, debit cards, flights and travel and travel insurance; systemisation of information into computer databases; commercial information services provided by access to a computer database; compilation of business data; advertising services including advertising services provided over the Internet, advertising services provided by television,advertising services provided via a database, electronic advertising services, outdoor advertisng services, press advertising services, promotional advertising services; direct marketing; marketing; marketing advisory services; marketing analysis; marketing information; planning of marketing strategies; product marketing; promotional marketing; promotional services; product marketing; computerised database management; dissemination of advertising material; dissemination of business information; dissemination of commercial information; providing information, including online, about advertising, business management and administration and office functions; business advice; commercial information and advice for consumers; data management advice; management advice; arranging price quotations (for others); arranging subscriptions to telecommunication services (for others); classified advertising; collection of data; collection of information relating to credit cards, mobile phones loans, savings accounts, life insurance, personal loans, broadband plans, Forex Trading, car loans, term deposits, income protection insurance, debit cards, flights and travel and travel insurance; collection of information relating to advertising and market research; compilation and provision of online directories; compilation of directories for publishing on the Internet; systemisation of information into computer databases; data search in computer files (for others); business management advisory and consultancy services; business administration; administration of business affairs; office functions; commercial business management
Class 36: Financial services; financial evaluation; administration of financial affairs; advisory services relating to (financial) risk management; advisory services relating to the comparison of credit cards, home loans, savings accounts, life insurance, personal loans, Forex trading, car loans, term deposits, income protection, debit cards, insurance, travel insurance and other financial services; advisory services relating to financial investment; advisory services relating to financial matters; advisory services relating to financial planning; agencies for the exchange of financial operations; business appraisals for financial valuation; collection of financial information; conducting financial feasibility studies; consultation services relating to financial matters; economic financial research services; financial advisory services; financial advisory services for companies; financial advisory services for individuals; financial assessments; financial asset management; financial evaluations; financial assistance; financial banking; financial brokerage; financial business appraisals; financial clearing house service; financial consultancy; financial consultation services; financial credit services; financial database services; financial economic advisory services; financial economic analysis; financial evaluation (insurance, banking, real estate); providing information, including online, about insurance, financial and monetary affairs and real estate affairs; providing information, including online, about credit cards, home loans, savings accounts, life insurance, personal loans, Forex trading, car loans, term deposits, income protection, debit cards, insurance, travel insurance and other financial services; provision of information relating to financial services; provision of information relating to mortgages; collection of financial information; provision of credit information; financial analysis; housing agency services; consultancy services relating to personal finance; advisory services relating to investment finance; insurance advice; insurance consultancy; insurance information; insurance research; insurance services; information services relating to insurance; mortgage and savings services; provision of investment savings plans; savings account services; savings bank services; savings scheme services; advice regarding credit; advice regarding lending services; advice relating to insurance; advice relating to investments; advice relating to loan recovery services; advice relating to mortgages for residential properties; financial advice; independent financial planning advice; providing information, including online and through mobile phones relating to the comparison of financial services; provision of online financial calculators; real estate affairs
Class 38: Telecommunication and communication services; providing information, including online, about telecommunications; advisory services relating to communications including the comparison of mobile phones; communication services for the purpose of e-commerce; electronic transmission of data and information; web portal services; telecommunication of information (including web pages); telecommunication services for the collection, transmission, processing and storage of messages and data; transmission of information on a wide range of topics
Class 39: Advisory services relating to travel; provision of travel information, including information on airfares, travel packages, travel insurance and accommodation; travel arrangement
Class 41: Electronic desktop publishing; electronic publication of information on a wide range of topics, including online and over a global computer network; electronic publication of information relating to credit cards, mobile phones, home loans, savings accounts, life insurance, personal loans, broadband plans, Forex Trading, car loans, term deposits, income protection insurance, debit cards, flights and travel and travel insurance; online (electronic) publication of news; providing online electronic publications (not downloadable); publication of electronic books and journals online; publishing by electronic means; education services; entertainment services; information services; information services relating to education regarding credit cards, mobile phones, home loans, savings accounts, life insurance, personal loans, broadband plans, Forex Trading, car loans, term deposits, income protection insurance, debit cards, flights and travel and travel insurance and other financial services; publication of education texts; electronic publication of information on a wide range of topics; arranging and conducting of educational and training workshops; providing online electronic publications (non downloadable)
Class 42: Design of computer databases; compilation of data processing programs; design and research services; web design and development including customised web pages and customised applications on a global computer network; computer software design and consultancy
169 G&S
Class 9: Databases (electronic publications); Electronic publications (downloadable); Downloadable image files; Apparatus for searching electronic information; Directories (electric or electronic); Computer databases; Computer programs for use in database management; Computer software; Downloadable software applications (apps); Data recorded electronically from the internet; Computer programs (downloadable software); Database programs
Class 35: Price comparison services; Price analysis services; Pricing surveys; Surveys (opinion polling); Compilation of business information; Compilation of commercial information; Compilation of directories for publishing on the Internet; Compilation of information into computer databases; Systemization of information into computer databases; Commercial information services provided by access to a computer database; Compilation of business data; Advertising; Advertising services provided over the internet; Advertising services provided by television; Advertising services provided via a data base; Electronic advertising services; Outdoor advertising services; Press advertising services; Promotional advertising services; Direct marketing; Marketing; Marketing advisory services; Marketing analysis; Marketing information; Planning of marketing strategies; Product marketing; Promotional marketing; Promotional services; Computerised database management; Dissemination of advertising material; Dissemination of business information; Dissemination of commercial information; Providing information, including online, about advertising, business management and administration and office functions; Business advice; Commercial information and advice for consumers (consumer advice shop); Data management advice; Management advice; Arranging price quotations (for others); Arranging subscriptions to telecommunication services (for others); Classified advertising; Collection of data; Collection of information relating to advertising; Collection of information relating to market analysis; Collection of information relating to market research; Compilation and provision of online directories; Data search in computer files (for others); Business management advisory services; Business management consultancy; Business administration; Administration of business affairs; Office functions; Commercial business management; Sales promotions by issuing redeemable coupons (for others); Business organization and management of discount services; Discount services (retail, wholesale, or sales promotion services); Organisation and management of discount card loyalty schemes
Class 36: Financial services; Provision of information relating to financial services; Financial evaluations; Administration of financial affairs; Advisory services relating to (financial) risk management; Advisory services relating to financial investment; Advisory services relating to financial matters; Advisory services relating to financial planning; Agencies for the exchange of financial operations; Business appraisals for financial valuation; Collection of financial information; Conducting financial feasibility studies; Consultation services relating to financial matters; Economic financial research services; Financial advisory services; Financial advisory services for companies; Financial advisory services for individuals; Financial assessments; Financial asset management; Financial assistance; Financial banking; Financial brokerage; Financial business appraisals; Financial clearing house service; Financial consultancy; Financial consultation services; Financial credit services; Financial database services; Financial economic advisory services; Financial economic analysis; Financial evaluation (insurance, banking, real estate); Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of information relating to mortgages; Provision of credit information; Financial analysis; Housing agency services; Consultancy services relating to personal finance; Consultancy services relating to investment; Insurance advice; Insurance consultancy; Insurance information; Insurance research; Insurance services; Information services relating to insurance; Mortgage and savings services; Provision of investment savings plans; Savings account services; Savings bank services; Savings scheme services; Advice regarding credit; Advice regarding lending services; Advice relating to insurance; Advice relating to investments; Advice relating to loan recovery services; Advice relating to mortgages for residential properties; Financial advice; Independent financial planning advice; Provision of online financial calculators; Advisory services relating to investment finance
Class 38: Message storage and transmission (telecommunications); Providing information, including online, about telecommunications; Telecommunications; Telecommunications advisory services; Communication services for the transmission of information; Advisory services relating to communications; Electronic communication services; Electronic transmission of data; Web portal services (providing user access to a global computer network); Providing on-line communications links which transfer the web site user to other local and global web pages; Transmission of information on a wide range of topics, including online and over a global computer network
Class 39: Advisory services relating to travel; Provision of travel information; Travel arrangement
Class 41: Electronic desktop publishing; Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; Providing online electronic publications (not downloadable); Publication of electronic books and journals online; Publishing by electronic means; Education services; Entertainment information; Information services relating to education; Information services relating to entertainment; Sports information services; Publication of educational texts; Training; Arranging and conducting of workshops (training); Arranging and conducting of in-person educational forums; Business educational services; Educational seminars
Class 42: Design of computer databases; Compilation of data-processing programs; Design services; Provision of research services; Research into new products; Research and development of products; Web site design; Web site design consultancy; Online provision of web-based applications (non-downloadable); Development of software; Software as a service (SaaS); Computer software design; Computer software consultancy

[2022] ATMO 133

9 August 2022

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Legal Concepts

Appeal

Costs

Standing

Delegate:	Blake Knowles
Representation:	Opponent: Gorton IP. Applicant: Self-represented.
Decision:	2022 ATMO 133 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 43, 44, 58A, and 60 – no grounds established – trade mark to proceed to registration.