Intel Corporation v Third Party Platform Pty Ltd - [2012] ATMO 57

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Intel Corporation to registration of trade mark application 1315445(36) - BELLINTELL - filed in the name of Third Party Platform Pty Ltd.

Delegate: Nicole Worth

Representation: Opponent: Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie law firm.
Applicant: written subsmissions

Decision: 2012 ATMO 57
Section 52 opposition – ss43, 44 and 60 pressed – s60 established – application refused – costs awarded against Applicant.
Background

On 17 August 2009 Third Party Platform Pty Ltd (‘the Applicant’) filed an application to register a trade mark, the relevant details of which appear below:
Trademark: bellintell
Application No: 1315445
Services:Class 36: Stockbroking; economic financial research services; financial investment research services; financial research; investment research; research services relating to finance; research services relating to investment; advice relating to investments; investment advice; brokerage services relating to financial instruments; computerised financial services; financial information services; financial investment research services; financial transaction services; brokerage of shares; share brokerage services; share services; trading of shares
The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 December 2009.
On 16 March 2010 Intel Corporation (‘the Opponent’) filed a Notice of Opposition nominating most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’).
The parties duly served and filed evidence and the matter came for hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 18 April 2012. The Opponent was represented by Gabriella Rubagotti, of Counsel, instructed by Jane Woodhouse of Baker and McKenzie law firm. The Applicant did not attend the hearing but made written submissions prepared on its behalf by Griffith Hack Patent and Trade Mark Attorneys.
Grounds and Onus
At the hearing the Opponent pursued grounds of opposition in respect of sections 43, 44 and 60 of the Act. As a formality, and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition have been established.
The onus is on the Opponent to establish at least one ground of opposition on the balance of probabilities.[1] The time at which the ground of opposition must be established is the date of filing of the application[2], being 17 August 2009.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.
Evidence
The evidence served and filed in respect of this matter is as…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Intel Corporation v Third Party Platform Pty Ltd

Details

AGLC: Intel Corporation v Third Party Platform Pty Ltd [2012] ATMO 57
Case: [2012] ATMO 57
Decision Date: 20 June 2012

CaseChat Overview and Summary

This matter concerned an opposition by Intel Corporation to the registration of trade mark application number 1315445 by Third Party Platform Pty Ltd. The opposition was based on grounds including section 60 of the *Trade Marks Act 1995* (Cth), which relates to the registration of trade marks that are identical or deceptively similar to a well-known trade mark. The hearing officer was required to determine whether the opponent had established any grounds for opposition on the balance of probabilities, with the relevant date for such establishment being the filing date of the application, 17 August 2009.

The evidence presented by Intel Corporation demonstrated that it is the owner of numerous Australian trade mark registrations for the word INTEL, including in class 36. The evidence established that the INTEL name and trade marks are exceptionally well known globally and in Australia, particularly in relation to information technology and computer microprocessors, with Intel being the world's largest semiconductor manufacturer. The hearing officer considered evidence of Intel's history, its global revenue and advertising expenditure, the development and success of its "INTEL INSIDE" licensing program, its diversification into financial services and e-commerce solutions, and extensive third-party recognition of the INTEL brand through various publications and surveys. Furthermore, decisions in other jurisdictions recognising the INTEL trade mark as well-known or famous were also taken into account.

Applying the principles established in cases such as *Pfizer Products Inc v Karam* and *Chocolaterie Guylian N.V. v Registrar of Trade Marks*, the hearing officer found that Intel Corporation had discharged the onus of proving that its INTEL trade mark was well known in Australia as at the filing date of the application. Consequently, the hearing officer determined that the ground of opposition under section 60 of the Act had been established. The hearing officer refused to register trade mark application 1315445 and awarded costs to the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The onus is on the Opponent to establish at least one ground of opposition on the balance of probabilities.[1] The time at which the ground of opposition must be established is the date of filing of the application[2], being 17 August 2009.[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.Evidence The evidence served and filed in respect of this matter is as follows: In brief, the Opponent’s evidence shows that it is the owner of a number of standard trade mark registrations in Australia containing or comprising the word INTEL, including in class 36 (registration number 764081), and a defensive registration in which class 36 is specified (registration number 1310603). The INTEL name and trade marks are extremely well known in relation to information technology, and the Opponent is the world leader in computer microprocessors. The Opponent’s evidence is voluminous, however a summary of the information provided is:· Intel Corporation was founded in 1968 by Bob Noyce (one of the inventors of the integrated circuit) and Gordon Moore in the United States of America. The name Intel was coined from the words ‘integrated’ and ‘electronics’.· By 1971 the Opponent was producing the world’s largest selling semiconductor device. By 1992 it was the world’s largest semiconductor manufacturer and remained so til present (at least until the time when Cronin 1 was declared).· The Opponent established numerous corporate entities outside of the USA including the establishment of Intel Australia Pty Ltd in 1979.· In 1991 the INTEL INSIDE logo licensing program was developed. It is declared that it was a novel program for its time. It allowed the Opponent to raise the level of consciousness of the INTEL brand in the mind of the ordinary public by having its trade mark displayed upon finished computers, indicating the source of the component microprocessor. The licensing program continues today.· Global revenue and advertising figures, and fees related to the INTEL INSIDE program, are in the order of billions of dollars. In Australia these are in the order of millions of dollars.· The use of the Opponent’s technology has diversified and it is used for a range of purposes including inter alia entertainment, healthcare, communications, e-commerce and internet security. See for example exhibits PC-74 of Cronin 2 relating to health care in Australia, PC-75 of Cronin 2 relating to communications, media and entertainment, and PC-76 outlining the ‘Intel Brand Advantage’ program, the Opponent’s co-branding program which applies to a wide range of eligible devices. I do take into account that the last two exhibits appear to be global and are not specific to Australia.· In 1991 the Opponent began offering financial services through ‘Intel Capital’. ‘Intel Capital’ makes investments in technology ‘start-ups’ and companies across a range of industries. It is declared that several billion US dollars have been invested since then in companies in 47 countries, although specific detail relating to Australia is not provided.· It is also declared that the Opponent provides ‘Intel Solution Services’, a global consulting and research organisation that specialises in e-commerce solutions and related web services. However there is no specific information regarding these services as they relate to the Australian market. Similarly the declaration states that Intel has a worldwide ‘Financial Services Engineering Software and Solutions Group’, which specialises in financial services solutions and provides associated information on a ‘Financial Services Industry Community’ website. Again there is no information relating to Australia.· Numerous examples of third party recognition of the brand are provided. Fortune magazine named Intel a ‘Blue Ribbon’ company in the years 2002, 2004, 2006, 2007 and 2008: a title which requires a company to appear in at least four of Fortune’s lists including ‘Fortune 500’, ‘Global 500’ and ‘Best Companies’. Numerous Business Week articles are referred to or exhibited, all of which relate to top ranking brands which include INTEL. Several ‘Interbrand World’s Most Valuable Brands Surveys’ are also included in which INTEL is placed in the top ten.· Decisions in a number of jurisdictions around the world have found the INTEL trade mark to be well known or famous, including in Australia.

Decision

Reasons for decision

Section 55 of the Act relevantly provides:DecisionUnless the proceedings are discontinued or dismissed, 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 find that the Opponent has met the onus upon it in terms of the ground of opposition under section 60. I refuse to register trade mark application 1315445. It is usual for costs to follow the event, and I see no reason to depart from the usual rule here. I award costs, in accordance with the official scale in Schedule 8 of the Trade Mark Regulations 1995, against the Applicant.Nicole WorthHearing OfficerTrade Marks Hearings20 June 2012

Ratio Decidendi

Legal Principle Established

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Delegate:	Nicole Worth
Representation:	Opponent: Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie law firm. Applicant: written subsmissions
Decision:	2012 ATMO 57 Section 52 opposition – ss43, 44 and 60 pressed – s60 established – application refused – costs awarded against Applicant.