Internex Australia Pty Ltd v Conexus Pty Limited

[2005] ATMO 7

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Internex Australia Pty Ltd to registration of trade mark applications 826869 & 838579(35 & 42) - CONEXUS - filed in the name of Conexus Pty Limited.

Delegate:	Mary Skivington
Representation:	Opponent: Marianne Barker, of counsel, instructed by Freehills Carter Smith Beadle. Applicant: David Kell of counsel, instructed by Mallesons Stephen Jacques
Decision:	Re: 826869, grounds of opposition not established – registration allowed. Re: 8388579,  section 58 ground established – registration refused Costs: Parties to bear own costs except for those costs to the applicant directly resulting from a late adjournment of the hearing  - these costs are to be paid by the opponent to  the applicant.

Background

1. Conexus Pty Limited, (‘the applicant’), filed two applications to register the trade mark, CONEXUS. The first application, number 826869, was filed on 10 March 2000 for services in class 35 and the second application, number 838579 was filed on 12 June 2000 for services in class 42.

2. Acceptance of the first filed application was advertised in the Australian Official Journal of Trade Marks on 13 July 2000 for the following class 35 services:

   Importing and wholesaling of networking, communications, digital imaging and productivity software and hardware.

3. Trade mark number 838579 was advertised as accepted some three months later on  12 October 2000 for the following class 42 services:

   E-commerce computer services being e-commerce hardware and software intergration services; Internet, webserver and Australian banking system transaction gateway hosting

1. Internex Australia Pty Ltd, (‘the opponent’), filed notices of opposition to registration of both trade marks citing identical grounds of opposition under the Trade Marks Act 1995, (‘the Act’). Following completion of the evidentiary stages of the opposition process, both parties applied to be heard and as a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 26 November 2004.

2. The opponent was represented by Marianne Barker, of counsel instructed by   Freehills Carter Smith Beadle, Patent and Trade Mark Attorneys. David Kell, of counsel, instructed by Mallesons Stephen Jacques, Lawyers, represented the applicant.

   The Evidence

3. The evidence which is common to both trade marks comprises statutory declarations with exhibits as set out below.

   Evidence in support

Date	Declarant	Exhibits
12 December 2001	Gregory Martin Holloway, Director of InterNex Australia Pty Ltd.	GMH-1 to GMH-9 Annexures A&B

Evidence in answer

Date	Declarant	Exhibits
10 March 2003	Mark Douglas Daley, Marketing Director of Conexus Pty Ltd.	MDD-1 to MDD-18

Evidence in reply

Date	Declarant	Exhibits
12 December 2003	Gregory Martin Holloway, Director of InterNex Australia Pty Ltd.	GMH-1 to GMH-12
23 December 2003	Barry Wayne Hammond, Managing Director of Webnetc Pty Ltd.	BWH-1

Applicant’s further evidence

Date	Declarant	Exhibits
13 April 2004	Mark Douglas Daley, Marketing Director of Conexus Pty Ltd.	MDD-19 to MDD-34

Opponent’s further evidence

Date	Declarant	Exhibits
15 June 2004	Barry Wayne Hammond, Managing Director of Webnetc Pty Ltd	BWH-1

Evidence in support - Holloway

1. Mr Holloway declares that he has been in the Internet and telecommunications field since 1989, initially as a provider of bulletin board services and then when permanent connection to the Internet became possible, as an Internet Service Provider, (ISP). He declares that the opponent is one of Australia’s oldest ISPs.  Mr Holloway reports that he chose and first used the trade mark CONNEXUS in 1994 and that its use has been continuous since that time. The opponent was incorporated on 10 July 1995, (GMH-3), and is the successor in title to the business begun by Mr Holloway. He avers that by 2000 the CONNEXUS trade mark was in use for Internet services including access, hosting, training, support and e-commerce services and for the broadcasting of news, weather information and other information of general interest along with registration services in respect of domain names, e-mail addresses, web site names and domain name service records. The opponent offers clients .com.au and .net e-mail addresses derived from its CONNEXUS domain name. Exhibit GMH-5 contains copies of invoices from 1997 and 1998 for provision of Internet services. GMH-7 is an account for the printing of discount cards in December 1999 and GMH-8 is a copy of a mail out letter to customers sent in September 1998. Mr Holloway declares that the opponent promotes its services in a variety of ways including via Internet web sites, Internet search engines and directories, telephone directories, direct mail, leaflet drops and magazine advertisements. Exhibit GMH-9 is a printout from the website, thelist.internet.com, which lists ISPs around the world, showing a listing for the opponent’s website.

   Evidence in answer – Daley

2. Mr Daley declares that the applicant is a distributor to computer resellers, retail super stores, mail order catalogues, ISPs, value-added resellers and systems integrators of a large range of networking, communications and productivity computer software and hardware. Exhibit MDD1 shows the applicant was incorporated on 10 January 1991. Exhibit MDD2 is a digital photograph of the CONEXUS launch disc included in the Australian Macworld magazine in March 1991. Mr Daley reports that the applicant provides the hardware and software that allows computers to communicate, (network), with each other. Mr Daley declares that CONEXUS is a value-added distributor offering pre and post sales support to its reseller base and that it is a specialist distributor in computer markets such as, Macintosh & Windows Solutions, Networking & Communications, Digital Video & Multimedia, Enterprise Solutions and Education Solutions. Exhibit MDD4 contains the sales figures from 1992 to 2003 which I regard as substantial particularly as the goods are not sold directly to end users. The applicant advertises in a large number of industry publications as well as in telephone directories, on Internet websites, search engines and directories, in brochures, newsletters, magazines and point-of-sale materials and via trade shows and telemarketing. Mr Daley declares that the similarity between CONEXUS and CONNEXUS is causing confusion in the information technology industry. Mr Daley relies on Exhibit MDD-18 which contains copies of e-mails sent to the applicant where, within the text  content of the e-mails, CONEXUS has been misspelt with a double letter ‘N’ to support this claim. 

3. I note that these e-mails contain various other typographical and grammatical errors including reference to CONEXUS misspelt with a double ‘N’ and a double ‘X’. I regard these as evidence of carelessness in composition and not evidence of customer confusion.

   Evidence in reply – Holloway (2)

4. Mr Holloway declares that in 1994 the Internet in general and ISP services in particular were new and not recognized as part of the mainstream information technology industry. Even today, he declares, he does not believe that that an ISP business is the same as the mainstream technology industry.

1. Mr Holloway declares that the CONNEXUS business began in Melbourne and then extended to Sydney and Brisbane in 1999 when exchanges were established there. Exchanges were established in Adelaide and Perth in early 2000.  Exhibit GMH-1 is a copy of an Australian Bureau of Statistics, (ABS) survey, conducted in 2000, the results of which indicate that the opponent at that time was at least a ‘Medium ISP’. Mr Holloway further declares that if the definition ‘subscriber’ in the ABS survey includes actual users the opponent would fall within the definition of a ‘Large ISP’.  Mr Holloway estimates that by January 2000 the opponent was processing between 16,000 and 20,000 e-mail messages per day containing a CONNEXUS e-mail address.  He estimates that by March 2000 the opponent hosted between 100 and 200 websites and further estimates that in 2000 having regard to the growth in the number of subscribers from 1999 to 2003 there would have been 100,000 documents per month served by the opponent’s website hosting services not including hits to the opponent’s own CONNEXUS web sites. Mr Holloway also declares that from at least 1996 the opponent has retailed hardware such as modems and routers to enable customers to establish an Internet connection. Exhibits GMH-11 and GMH-12 are extracts from the Google Directory of Australian ISPs. These describe the opponent and the applicant respectively as:

   National network with ADSL broadband, dialup and full range of internet and e-commerce services.

   and,

   Networking, communications and thinclients distributors. Reseller partners and regional wholesale distribution of PC and Macintosh software.

2. Mr Holloway reports that by 1996 the opponent like many ISPs was offering e-commerce services and that its website included a facility allowing electronic processing of financial transactions through financial institutions.  Exhibit GMH-6 is a printout of the website as it appeared on 22 December 1996 showing an ‘online credit card registration’ facility. 

1. This is not evidence of use in respect of transaction gateway services - the printout also advises that the server is under construction – but it does strongly suggest the imminent availability of such services. Mr Holloway declares that e-commerce only became popular in the mid 1990s although the opponent has been assisting its customers to integrate e-commerce features such as shopping carts onto their websites since 1994.

   Evidence in reply – Hammond

2. Mr Hammond was engaged as an expert witness to comment and provide a report on:

   ·     The state of the broad computer/IT industry in Australia in 1994 and in particular the relationship at that time between the market for distribution of IT hardware and software and  the market for ISP services and internet connection services to homes

   ·     Changes in the computer/IT industry in Australia between 1994 and 2000

   ·     How consumers perceive, interact with and purchase within the broad computer/IT industry and

   ·     To comment on the evidence received from both parties.

3. Mr Hammond attests to a broad experience in the information technology industry and appears well qualified to report on the state of the industry but I do not consider that he qualifies as an expert in respect of evidence and I attach no weight to any comments he makes as they relate to the evidence.

1. Mr Hammond reports that in 1994 there was a clear distinction between a distributor of hardware and software and an ISP. The distributor was in a tried and true business as a wholesaler of products to resellers. The ISP was a provider of new services derived from telecommunication providers. Mr Hammond declares that in the years 1994 to 2000, with the possible exception of the Internet phone there were no new Internet technologies. However, a better understanding of the use, application and deployment of the previously invented technologies developed. Mr Hammond reports that by 2000, notwithstanding the emergence of Web-based e-commerce that has led to some convergence in the business models of ISPs and distributors, there remained considerable differences between the businesses. Mr Hammond considers that the customer base of the applicant and the opponent would not normally overlap. Mr Hammond reports that while all companies now use Internet networking technologies the opponent enters this networking market as a provider of access to the Internet. He declares that an ISP does not normally retail goods although it may sometimes retail goods such as modems and routers to enable its customers to access or improve their access to the Internet. Mr Hammond states that in his opinion  consumers regard the businesses of the distributor and the ISP as quite different businesses.

   Applicant’s further evidence -  Daley

2. Mr Daley provides a history of the applicant’s online marketing of the products it distributes and its domain name registrations. He refers to hardware products manufactured overseas and distributed in Australia by the applicant which are co-branded with the CONEXUS trade mark. Exhibit MDD24 comprises copies of brochures dated September and October 1999 which are co-branded with the CONEXUS trade mark. Mr Daley avers that his company has been at the forefront of the distribution of Internet networking products. Exhibit MDD25 is a 1992/3 catalogue of listing such products. He declares that CONEXUS has provided direct end user services by way of upgrade sales, technical support both pre and post sales and end user consulting and configuration services in respect of email servers and e-commerce application design, remote access issues, Internet router configurations and product selection. He declares that direct sales have been made to educational institutions and corporate clients. Mr Daley attests to the provision of e-commerce hardware and software integration services to a number of companies since 1998, however, he does not provide any documentary evidence of these services. Mr Daley declares that a number of businesses have used Internet transaction gateway services provided by CONEXUS. In support of this claim exhibit MDD29 contains copies of e-mails related to gateway hosting provided by CONEXUS. These are dated from August 1999 to January 2000. It is not clear to me from these e-mails what service the applicant is actually providing. The e-mail dated 18 August 1999 from Mark Daley to Abraham Glazer refers to ‘the Bank Gateway people and our hosting ISP’ which seems to indicate, I think, that the applicant  provides the appropriate technical hardware and software to enable these services or that it is a reseller of the gateway services provided by others, rather than trading in gateway services themselves.

   Opponent’s further evidence - Hammond

3. Mr Hammond is critical of the applicant’s further evidence and submits that in his opinion it does not constitute expert evidence and that it contains inaccuracies and is misleading. He reports that the evidence indicates that the applicant uses Internet technologies like web browsing, web hosting, e-mail and e-commerce but it does not offer them as an ISP but uses them as tools. He likened this situation to that of a tradesperson using a work tool.

   Grounds of opposition

4. The notices of opposition claim that the onus of establishing that the applicant is entitled to registration of the opposed trade marks lies with the applicant. While this was so under the 1955 Act, under the 1995 Act the onus moved to the opponent to establish its grounds. Section 55 of the Act provides that in an opposition to registration of a trade mark application,

   Unless 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.

5. At the hearing Ms Barker pressed grounds of opposition under the provisions of sections 58, 59 and 60 of the Act.  No submissions were made in respect of the remaining grounds of opposition which I now find have not been established.

   Submissions and the law

   Section 58

6. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. In order to make out a ground of opposition under section 58 the opponent must establish that it was the first user of a trade mark that is at least, substantially identical with the applicant’s trade mark, Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, in respect of the ‘same kind of thing’, ReHicks Trade Mark, (1897) 22 VLR 636.

1. Ms Barker submitted that CONNEXUS and CONEXUS are to all intents and purposes the same and that a total impression of similarity emerges from a comparison between the trade marks. To support her argument she referred to authorities such as Carnival and Hicks, above, Karu Pty Ltd v Jose, (1994) 30 IPR 407 and PB Foods Ltd v Malanda Dairy Foods Ltd, (1999) 47 IPR 47. She observed that the difference of one letter between the two marks should not prevent a finding of substantial identity.

2. Mr Kell submitted that the tests for determining substantial identity are set out in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407 and argued that the application of these tests show that the trade marks in use are not substantially identical. He said it was relevant that in use the opponent’s trade mark commonly features a ‘martian-antennae’ type of device protruding from the letter ‘E’ and that the mark has principally been used as three words, these being, Connexus Internet Services.  He also noted that the opponent’s trade mark may be differentiated by the additional letter ‘N’.

   25.  The opponent’s evidence does show use of the CONNEXUS device mark and use of the word CONNEXUS in combination with the words Internet Services in addition to trade mark use of the word CONNEXUS without any other elements.  In the case of use of the mark Connexus Internet Services I regard the word CONNEXUS as the essential feature of the mark and the words Internet Services as utterly descriptive and devoid of any trade mark significance. Moreover, as the words Internet Services are always printed in a smaller and lighter typeface it is clear that CONNEXUS is intended to be seen as the trade mark. The applicant’s evidence also shows that CONEXUS is used alone as a plain word or in a stylized get-up and with other device elements, none of which detract from the fact that CONEXUS is the essential feature of the applicant’s trade mark. CONEXUS and CONNEXUS obviously share a common derivation.  Phonetically they are identical and visually, in a side by side comparison they are so similar that visual deception and confusion are almost inevitable. I find that these trade marks are substantially identical.

26.  I must now determine if the services of the respective parties are similar services. The expression, 'the same kind of thing' in the Hick's case, above, has come to mean 'the same goods or services'. Section 14 of the Act provides that services are similar to other services if they are the same as the other services, or if they are of the same description as that of the other services.

826869

27.  The services specified in this application are Importing and wholesaling of networking, communications, digital imaging and productivity software and hardware.

28.  In Jellinek's Application, (1946) 63 RPC 59, the factors to be taken into account for consideration as to whether the goods are of the same description were set down as: the nature of the goods, the purpose of those goods and the trade outlets through which the goods normally reach the consumer. Clearly a consideration of the nature and purposes of the services along with the trade channels of the services are factors that may be applied to a determination of similar services.

29.  The importer and distributor of hardware and software products assesses market needs and trends and seeks out products that meet those needs and trends from national and international manufacturers for the purpose of making them available to retailers. This trader does not normally deal directly with end users. The ISP on the other hand deals directly with end users. Its core business is to provide consumers with access to or a presence on the Internet. Essentially it provides a telecommunication service. It offers services such as web page design, e-mail, web hosting and secure access for transactions made via a network.  I do not consider that these services are similar in nature or purpose to the applicant’s class 35 services and the trade channels through which they are provided are also quite different.

30.  Ms Barker did not press the ground of opposition under section 58 in respect of the services in class 35.

31.  Mr Kell submitted that the evidence shows that the applicant has used its trade mark since the early 1990s in respect of distribution services for an extensive range of software and hardware products. He noted that such evidence may be found in the applicant’s product catalogues dating back to 1992.  He submitted that there is no evidence of any prior use by the opponent of its trade mark for any of the services covered by application number 826859.

1. I find that the applicant was the first user of the trade mark in respect of the class 35 services and I further find that the services of an ISP and a distributor of computer hardware and software are not similar services. The section 58 ground of opposition has not been established in respect of application number 826869.

   838579

2. The services specified in this application are E-commerce computer services being e-commerce hardware and software integration services; Internet, webserver and Australian banking system transaction gateway hosting.

1. Ms Barker submitted that the applicant is not the owner of the trade mark for these services by reason of the opponent’s first use of its trade mark CONNEXUS in respect of these same services. She submitted that Mr Holloway began offering Internet connection services in 1994 and after incorporation of the opponent it continued offering ISP services. Exhibit GMH-6 is an advertisement placed by the opponent in the January 1995 edition of Macworld that offers e-mail, chat room services and games on the Internet. Ms Barker submitted that the opponent’s business grew substantially in the years 1995 to 1999 and the number of its Internet related services increased to include web server hosting and in 1996 the provision of e-commerce and transaction gateway services.

1. Ms Barker argued that the applicant has not shown use of CONEXUS in respect of Internet, web server and Australian banking system transaction gateway hosting. She argued that the applicant has shown only an intention, since 1999, to resell computer hardware and software which assist in providing these services in the context of an arrangement with one or more Australian financial institutions. In any event, she said, the alleged use by the applicant of CONEXUS for these services post dates first use by the opponent of CONNEXUS for the same services.

1. Ms Barker submitted that the evidence does not show that the applicant provides e-commerce services being hardware and software integration services. She submitted that the evidence indicated that it was more likely that the applicant has provided some sort of support services to enable it to provide hardware and software products for use in the provision of e-commerce. She maintained that any development, consulting and support services provided by the applicant would be driven by the need to sell the products and that this is consistent with its core business but it does not show use in respect of e-commerce services being hardware and software integration services. She noted that Mr Daley declares that the applicant has provided these services since  at least 1998 which date post dates first use by the opponent of CONNEXUS  for these services.

1. Mr Kell was critical of the opponent’s evidence submitting that it does not provide cogent evidence of the opponent’s prior use of its trade mark in respect of these services and in any case any alleged use by the opponent has not been in respect of a trade mark that is the same as the applicant’s trade mark.  He said Mr Holloway’s evidence was not compelling and that the exhibits to his declarations did not show use of the mark CONNEXUS in respect of e-commerce and transaction gateway hosting.

1. He noted that in addition to its distribution services the applicant has provided an extensive range of relevant services such as product upgrade sales to consumers, direct technical support services and pre and post sale support services and consulting and configuration services in respect of remote access issues. The applicant also provides training for resellers, their clients and strategic alliance partners as well as providing recommendations for hardware and software solutions to enable companies to integrate their software into the Australian banking system to allow them to trade in e-commerce, said Mr Kell.  He said that the applicant has, since 1999, by reference to the CONEXUS trade mark, provided services related to transaction gateway services. 

1. The applicant describes itself as distributor of world class technology for a variety of computer environments and the evidence supports this claim. The evidence does not support a claim that it is a provider of the services claimed in class 42. The applicant clearly wholesales the goods that enable others to provide these services and in the course of providing the products the applicant provides advice on the most appropriate products for particular functions and how the products may be integrated to work together and advice on and training in how to use the products. These services are ancillary to the sale of the products but they are not e-commerce services. The evidence shows that the applicant has provided software to enable transaction gateway services but it is not evidence of it providing transaction gateway hosting services.

1. The opponent describes itself as an ISP providing a full range of Internet and e-commerce services. The evidence shows that the opponent was providing some Internet services by 1995 such as e-mail services. The opponent’s business grew and by 2000 it was least a medium sized ISP.  The opponent claims that by then it was offering e-commerce, information and hosting services which are the core business of an ISP.  The evidence of both parties is less than ideal but I am satisfied that the opponent began use of its trade mark CONNEXUS in 1994 initially in respect of the provision of access to the Internet and that it had extended its range of services provided via the Internet to include those claimed in the subject application, 838579, well before its priority date, 12 June 2000.  I find the section 58 ground of opposition has been established in respect of trade mark 838579.

   Section 59

2. Section 59 of the Act states that the registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia or to assign the trade mark to a body corporate for use by the body corporate in Australia, in relation to the goods and/or services specified in the application.

1. The applicant has provided evidence of substantial use in respect of the services claimed in class 35 and Ms Barker made no submissions in relation to these services specified in trade mark application number 826869. Accordingly I find the section 59 ground of opposition has not been established in respect of this application.

1. Ms Barker asserted that the applicant lacks the capacity, in a business sense, to provide the class 42 services claimed in application number 838579. She referred to Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd, [2004] FCA 968, (Austereo), where it was found that the applicant had failed to show an intention to use the trade mark for certain services because it provided those services, if at all, not in a commercial sense but only with the provision of other services.  Ms Barker argued that in relation to the applicant this was an identical situation and that the application should as a consequence be refused.

1. Mr Kell said that the applicant’s act in filing the application is a claim of the requisite intention to use and noted that this is supported by authorities such as Aston v Harlee Manufacturing Co, (1960) 103 CLR 391,NSW Lotteries Commission v Novamedia, (2001) 82 IPR 638, Amalgamated Television Services Pty Ltd v Clissold, (2000) 52 IPR 207 and Shanahan, para 11.95 where it reads,

   There is a heavy burden on an opponent seeking to establish an applicant’s lack of intention to use because of the subjective nature of an intention, the fact that an applicant is not required to demonstrate intention to use and the general onus on an opponent.

2. There is no evidence that the applicant does not intend to use the mark.  The opponent did not file evidence in support of this ground of opposition so that the applicant was left with nothing to answer. It is not relevant that the applicant does not appear to have used the trade mark in respect of class 42 services because section 59 refers to a present and ongoing intention to use. An applicant may choose not to use a trade mark until the relative certainty of registration. Indeed many applicants find that it is a more prudent course of action. This ground of opposition has not been established in respect of trade mark application number 838579.

   Section 60

3. An opponent must establish the following requirements in order to establish a ground of opposition under the provisions of section 60 of the Act:

   ·     The applied for trade mark must be substantially identical with or deceptively similar to another trade mark or trade marks cited by the opponent

   ·     The mark cited by the opponent must have acquired a reputation in Australia before the priority date of the applied for trade mark,  and

   ·     Because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion.

1. Section 60 does not require the relevant goods or services to be the same or closely related nor does it require the trade mark on which the opponent relies to be registered or the subject of an application for registration. The opponent relied on its common law trade mark CONNEXUS which it has used since 1994.

1. I have already found that CONEXUS and CONNEXUS are substantially identical so the first requirement has been satisfied.

1. Ms Barker asserted that given that the trade marks so closely resemble each other the degree of reputation required to be shown in order to found a likelihood of deception and confusion is lower.  In support of her argument she cited Shanahan’s Australian Law of Trade Marks & Passing Off, 3^rd Edition [11.155] at page 300 and the cases at note 245; Telstra Corporation Ltd v Yellownet Corporation, (1999) 44 IPR 415, (Reg), Effem Foods Pty Ltd v Marks and Spencer Plc, (1999) 47 IPR 213 (Reg), Caterpillar Inc v Amco (Vic) Pty Ltd, (2000) 49 IPR 407 (Reg) and  Societé des Produits Nestlé SA v O’Connor, (2000) 51 IPR 431 (Reg).

2. Ms Barker said that the opponent had acquired the requisite reputation at the relevant date. This, she said, was established through its sales, promotional expenditure and activities. Ms Barker argued that because of the reputation so achieved  there is a real likelihood of deception and confusion if the applicant uses CONEXUS in respect of class 42 services particularly because  the opponent was the first to use CONNEXUS as a trade mark in respect of Internet and web server hosting, e-commerce services all of which traditionally belong in the domain of  an ISP.

3. Mr Kell said that reputation cannot be assumed but must be proven by evidence and established as fact, Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 33 FCR 302. He submitted that the opponent had failed to show that it had a sufficient reputation, that its sales revenue was not high and the amount spent on promotion and advertising was very low. He contrasted these amounts with the more impressive sales and advertising figures achieved by the applicant in respect of its distribution services. Mr Kell argued that it may be one thing for a company to provide particular services but quite a different and more difficult matter to show that the company has amassed a reputation under a particular trade mark sufficient for section 60 purposes. He noted that the opponent had provided no declarations from consumers or trade members attesting to the opponent’s reputation.

4. The opponent clearly has a developing presence in the ISP industry with sales steadily increasing each year. The low expenditure on advertising and promotion is probably a reflection of the fact that much of an ISPs advertising would be cost free on the Internet. However, the opponent has not established that it had a reputation, at the relevant date, sufficient to give rise to a likelihood of deceiving or confusing consumers into a belief that the applicant’s services originated with the opponent.  This ground of opposition has not been established.

   Decision

5. The opponent has succeeded in establishing its ground of opposition under the provisions of section 58 of the Act in respect of trade mark 838579. Therefore in accordance with section 55 of the Act, I refuse to register trade marks 838579.

6. None of the grounds of opposition have been established in respect of trade mark number 826869. Therefore, trade mark number 826869 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

7. Initially this hearing was scheduled for 9 September 2004 but it was adjourned on 8 September 2004 at the request of the opponent. I direct that the opponent pay any costs incurred by the applicant as a direct result of the late adjournment of the hearing.

8. As the outcome of the hearing conducted on 26 November 2004 is that the opponent has been successful in establishing a ground of opposition in respect of trade mark, 838579 and the applicant has been successful in respect of trade mark number 826869 in that none of the grounds of opposition has been established, I direct that each party shall be responsible for its own remaining costs.

   Mary Skivington
   Hearing Officer
   Trade Marks Hearings
   28 February 2005