Internet Services Australia 1 Pty Limited v Ikonick LLC
[2023] ATMO 159
•16 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Internet Services Australia 1 Pty Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2028775 (International Registration number 1481549) (class 16) - IKONICK - in the name of Ikonick LLC
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Lynne Lewis from Bird & Bird Holder: None |
Decision: | 2023 ATMO 159 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – grounds of opposition under Trade Marks Act 1995 (Cth) ss 42(b) and 60 argued – none established – protection to be extended. |
Background
On 8 August 2019, Ikonick LLC (‘Holder’) filed an application to extend protection for International Registration 1481549 (‘IRDA’) to Australia. The trade mark concerned is the plain word IKONICK (‘Trade Mark’) in respect of class 16 ‘Prints, color prints, art prints on canvas’ (‘Designated Goods’). The priority date of the IRDA is 20 June 2019 (‘Relevant Date’).
After examination of the IRDA, acceptance was advertised on 5 November 2020. Internet Services Australia 1 Pty Limited (‘Opponent’) filed a Notice of Intention to Oppose on 14 December 2020 and its Statement of Grounds and Particulars (‘SGP’) on 22 December 2020. On 8 April 2021 the Holder filed a Notice of Intention to Defend (‘NID’).
The parties jointly requested and obtained a cooling off period on 8 July 2021. This stay of proceedings ended on 8 January 2022. This office sent letters to the parties to that effect, noting that the Opponent’s evidence in support (‘EIS’) was ‘due three months from 9 January 2022.’ On 21 April 2022 this office wrote to the parties again to note that the time for filing of the Opponent’s EIS had expired on 9 April 2023.[1] This same letter indicated that the Holder had three months from the date of the letter to file its evidence in answer (‘EIA’). The Holder did not file EIA at any point in these proceedings.
[1] Regulation 5.14(5). In these reasons, each reference to a regulation is a reference to the Trade Marks Regulations 1995 (Cth), and (except where otherwise specified) each reference to a section is a reference to the Trade Marks Act 1995 (Cth).
On 17 August 2022 the Opponent requested an extension of time to file EIS. A delegate of the Registrar of Trade Marks (‘Registrar’) first indicated an intention to refuse the request, with the Opponent given time to comment. No comment from the Opponent forthcoming, and no evidence having been filed within the extra time sought the request was considered redundant. This outcome was communicated to the parties by letter dated 4 October 2022.
On 20 September 2022 the Opponent requested to be heard. On 4 October 2022 a delegate of the Registrar contacted the representatives of the Opponent by telephone to ask whether the hearing request concerns the substantive matter or the denial of the request for an extension of time. The Opponent’s representative confirmed that the hearing was requested on the substantive matter.
The substantive matter was later set down for hearing. This was communicated to the parties by letters dated 1 May 2023. The Opponent filed its written outline of submissions and a declaration of Gayle Burchell, Chief Commercial and Sustainability Officer at the Opponent, dated 5 July 2023, with Exhibits GB-1 to GB-12 (‘Burchell’). The Opponent’s representatives also filed a letter to the Registrar which sought to explain the delay in filing the EIS. I heard the matter on 19 July 2023 by teleconference. Providing oral submissions for Opponent was Lynne Lewis from Bird & Bird. Also in attendance was Katrina Dang from Bird & Bird. The Holder did not appear or make any submissions. I have decided the matter as a delegate of the Registrar.
Grounds
Regulation 17A.34 broadly provides that an extension of protection can be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds of opposition specified in ss 58 to 61 and 62A. The Opponent has the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
In this matter the Opponent has nominated ss 60 and 42(b) as grounds of opposition.
Preliminary matter
Burchell and its exhibits should have properly been filed as EIS and the Opponent concedes that material has been filed out of the required time. However, the Opponent presses me to consider Burchell and its exhibits pursuant to regs 21.15(4) and 21.19.While there are several considerations that can be relevant to the exercise of this discretion, it has not been necessary for me to carefully weigh all of them. If the material in question would not assist, then this weighs heavily against me giving it weight.[4] If the evidence does not support a finding that the ss 42 or 60 grounds of opposition are established, then that evidence will not affect the outcome of these proceedings. For reasons which follow, Burchell and its exhibits do not change the outcome here.
[4] Trade Marks Manual of Practice and Procedure Part 51.2.5; Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [38] (Hearing Officer Richards.)
Evidence
Burchell in summary provides the background to establishment and growth of the Opponent’s business carried out using its trade mark THE ICONIC (‘Earlier Trade Mark’). The Opponent trades via its website (‘Opponent’s Website’) and its software application (‘Opponent’s App’), both with the Earlier Trade Mark.
The exhibits to Burchell in summary consist of the following:
Exhibits GB-1 to GB-4 being screen captures of the Opponent’s Website showing art prints for sale, all dated in 2012.
Exhibit GB-5 being screen captures of the Opponent’s Website showing the sale of Phaiden art books dated in 2012.
Exhibit GB-6 being a press release about the launch by the Opponent of a range homewares. These are dated after the Relevant Date.
Exhibit GB-7 being screen captures of the Opponent’s Facebook page, promoting The ICONIC magazine and ICONIC Men magazine published by the Opponent dated in 2012 and 2013.
Exhibit GB-8 being a collection of articles about THE ICONIC magazine and THE ICONIC Men magazine found in Australian media dated in 2012 and 2013.
Exhibit GB-9 being a collection of articles about the Opponent from major publications dated from 2012 until the Relevant Date.
Exhibit GB-10 being a confidential table summarising total annual review figures of the Opponent dated in 2011 from 2019, rounded off to the highest level. These numbers are substantial.
Exhibit GB-11 being a confidential table summarising the total annual number of users of the Opponent’s Website dated from 2009 to 2011. The number of users is substantial.
Exhibit GB-12 being a confidential number for downloads of the Opponent’s App around 2016. The numbers appear to be substantial.
Consideration
Section 60
The Opponent relies upon s 60, which provides:
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.
Note: For priority date see section 12.
To establish s 60, the Opponent must establish a reputation earlier than the Relevant Date, for any trade mark relied upon as a matter of fact.[5] The word ‘reputation’ here means, ‘the recognition of the [trade mark] by the public generally’.[6] Something more than a reputation among a small number of persons is required and the size and extent of the class of persons may vary depending on the circumstances.[7] A reputation may be inferred from a high sales volume, together with substantial advertising expenditure and other promotions, without direct evidence of consumer appreciation of the Trade Mark.[8]
[5] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77] (Lockhart J) (‘ConAgra Inc’).
[6] McCormick & Co Inc v McCormick [2000] FCA 1335, [127] (Kenny J) (‘McCormick’).
[7] Conagra Inc (n 5) [131]-[132] cited with approval in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81] (Greenwood, Jagot and Beach JJ).
[8] McCormick (n 6) [80] (Kenny J).
The evidence establishes use of the Earlier Trade Mark since 2009 for online retail of fashion apparel goods on the Opponent’s Website and the Opponent’s App. Figures in Burchell suggest that at some points between 9% and 15% of Australian households have had an account for the Opponent’s Website.[9] The evidence shows that sales, users of the Opponent’s Website and downloads of the Opponent’s App, leading up to the Relevant Date, are all substantial. Whilst the Opponent provides a few examples of use of the Earlier Trade Mark in 2012 in relation to online retailing of printed art, it also concedes that it has not used the Earlier Trade Mark in respect of the online retailing of the Designated Goods since 2012 and the focus of the use of the Earlier Trade Mark has been on online fashion retailing. The evidence does not establish a reputation of the Earlier Trade Mark for the Designated Goods. However, I am satisfied that a reputation has been established in respect of online fashion retailing.
[9] Burchell, Exhibit GB-9, 147
The next question is whether, based on that reputation which does exist, deception or confusion is likely to follow from use of the Trade Mark for the Designated Goods.[10] What is relevant here is the Designated Goods[11] and I must consider the hypothetical use of the Trade Mark for those Designated Goods in the whole of Australia. It is enough if a person would be caused to wonder whether the services of the Opponent derive from the same trade source as the Designated Goods. Articles show that the Opponent’s new Chief Executive Officer has expressed an intention to expand the Opponent’s online retail business into new categories. The Opponent submits this that this shows consumers would be likely to be confused. Whilst a reputation in the Earlier Trade Mark has been acquired, it is specifically for online retail of wearable fashion goods.
[10] Section 60(b).
[11] Sym Choon & Co Ltd v Gordon Choon's Nuts Ltd (1949) HCA 54, [6] (Latham CJ).
The Trade Mark consists of the word IKONICK which is a misspelling of the word ‘iconic’. Therefore, the an important word of the Trade Mark and the Earlier Trade Mark share a similar sound and meaning. The word ‘iconic’ is defined as, ‘designating a person or thing seen as representative or stereotypical of a culture.’[12] Another definition is, ‘[a]rt (of statues, portraits, etc.) executed according to a convention or tradition.’[13] The word ‘iconic’ by itself has minimal inherent distinctiveness for the Designated Goods. When pronounced, the word has a descriptive meaning for art, referring to the subject matter or nature of the art. The Trade Mark, whilst phonetically the same as the word ‘iconic’, has a different appearance and spelling. The Earlier Trade Mark’s reputation is also one which includes the word ‘the’. The reputation shown in the evidence is of the trade mark ‘The ICONIC’, not simply the word ‘iconic’ by itself. The differences between goods and/or services for which there is a reputation, and the designated goods in an application may be one factor to consider when deciding whether confusion is likely.[14] The Designated Goods are specific in nature and scope. They are also unrelated to fashion wearables. In contrast, the reputation of the Earlier Trade Mark is for specifically retail of wearables and fashion.
[12] Macquarie Dictionary (online, accessed 18 September 2023).
[13] Macquarie Dictionary (online, accessed 18 September 2023).
[14] GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519, [148] and [169] (Markovic J), citing Hill Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [208] (Lander J). See also, Monster Energy Company v Mixi Inc [2020] FCA 1398 (Stewart J), though concerning a much greater divergence between energy drinks on the one hand and online services on the other; and Qantas Airways Ltd v Edwards [2016] FCA 729, [142] (Yates J).
Taking account of the reputation demonstrated in the Earlier Trade Mark, I am not satisfied that use of the Trade Mark in relation to the Designated Goods is likely to deceive or cause confusion. Accordingly, even were Burchell properly filed, the ground of opposition under s 60 would not be established.
Section 42
Section 42(b) provides,
‘An application for the registration of a trade mark must be rejected if… its use would be contrary to law’.
The requirement is that I be satisfied that the use of the Trade Mark would not could be contrary to law.[15] The Opponent relies on (1) ss 18 and 29 of the Australian Consumer Law (‘ACL’);[16] and (2) the common law of passing off. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[17]
[15] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[16] Competition and Consumer Act 2010 (Cth), Schedule 2.
[17] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark for the Designated Goods is likely to cause deception or confusion. It follows that on the stricter test of the ACL[18] and its predecessor,[19] I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. As I am not satisfied that ss 18 and 29 of the ACL would be contravened, it also follows that I am not satisfied that use of the Trade Mark would amount to passing off.[20] Therefore, use of the Trade Mark would not be contrary law under the ACL or by the common law of passing off. Accordingly, even if Burchell was properly filed, the ground of opposition under s 42(b) would not be established.
[18] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).
[19] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44. [7] (Gibbs CJ).
[20] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Decision
Regulation 17A.34N relevantly provides:
17A.34N 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.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established any ground of opposition. Extension of protection is to follow one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA otherwise be in accordance with the Court’s order or direction.
Costs
The Holder by its NID sought its costs, which do ordinarily follow the event. I see no reason to depart from that here. As such I award costs against the Opponent.
Benjamin Goldsworthy
Hearing Officer
Delegate of the Registrar of Trade Marks
16 October 2023
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