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

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.
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.
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

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.
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
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

Mr Holloway declares that he has been…

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 Internex Australia Pty Ltd v Conexus Pty Limited

Details

AGLC: Internex Australia Pty Ltd v Conexus Pty Limited [2005] ATMO 7
Case: [2005] ATMO 7
Decision Date: 28 February 2005

CaseChat Overview and Summary

This matter concerned an opposition by Conexus Pty Limited (the opponent) to the registration of two trade marks by Internex Australia Pty Ltd (the applicant). The dispute centred on the alleged similarity between the applicant's trade mark CONEXUS and the opponent's trade mark CONNEXUS, and whether this similarity would lead to deception or confusion among consumers. The decision was made by Hearing Officer Mary Skivington of the Trade Marks Hearings.

The primary legal issue before the court was whether the opponent had established sufficient reputation in its trade mark CONNEXUS at the relevant date to give rise to a likelihood of deceiving or confusing consumers into believing that the applicant's services originated from the opponent. This involved assessing the extent of use and promotion of both trade marks in their respective markets, and the degree of similarity between the marks themselves.

The Hearing Officer found that while the opponent had a developing presence in the Internet Service Provider (ISP) industry with steadily increasing sales, it had not established a reputation sufficient to meet the threshold for deception or confusion. The evidence presented by the opponent, including statutory declarations and exhibits detailing its business activities and promotional efforts since 1994, was deemed insufficient to demonstrate the necessary level of consumer recognition. Conversely, the applicant provided evidence of its incorporation in 1991 and substantial sales figures from 1992 to 2003, along with extensive advertising and distribution networks.

Ultimately, the Hearing Officer refused to register trade mark number 838579 (the applicant's mark) on the grounds that the opponent had succeeded in establishing its opposition under section 58 of the Act. However, none of the grounds of opposition were established in respect of trade mark number 826869 (also the applicant's mark), which was therefore permitted to proceed to registration. The Hearing Officer also directed that the opponent pay the applicant's costs incurred due to a late adjournment of the hearing, and that each party bear its own remaining costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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

Decision

Reasons for decision

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 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. 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 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. 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 SkivingtonHearing OfficerTrade Marks Hearings28 February 2005

Ratio Decidendi

Legal Principle Established

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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.

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