Intuit Inc v Cadcam Computer Design Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Intuit Inc to registration of trade mark application 1203904(35) - MRS QUICK BOOKS - filed in the name of Cadcam Computer Design Pty Ltd.

Delegate:

Iain Thompson

Representation:

Opponent: Kate Beattie of Counsel instructed by Davies Collison Cave

Applicant: Malcolm Bell of Phillips Ormonde & Fitzpatrick

Decision:

2011 ATMO 50

S52 opposition – s60 – because of reputation of opponent’s trade mark, use of opposed trade mark by applicant likely to deceive.

Registration refused

Background

1. In this matter CADCAM Computer Design Australia Pty Ltd (‘CADCAM’) of Albert Park, Melbourne, has applied to register a trade mark, current details of which appear below:

Application No:        1203904

Priority Date:            18 October 2007

Services:Class 35: Accounting; business accounts management; business consultancy; computerised business records keeping

Trade Mark:              

(‘the opposed trade mark’)

1. The application was examined in compliance with section 31 of the Trade Marks Act 1995 (‘the Act’) and accepted for possible registration.  It was advertised as such in the Australian Official Journal of Trade Marks on 21 February 2011.

2. On 19 June 2008, after seeking and receiving an extension of time in which to do so, Intuit Inc, (‘the opponent’) of Mountain View, California, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites most of the grounds of opposition available under the Act including those which were subsequently argued before me at a hearing of the matter in Melbourne on 7 March 2011. For the sake of completeness, I find that the grounds mentioned in the Notice other that those argued at the hearing are not established by the opponent.

3. At the hearing, Malcolm Bell of Phillips Ormonde & Fitzpatrick represented CADCAM.  Kate Beattie of Counsel instructed by Davies Collison Cave represented the opponent.

4. The grounds argued at the hearing were those under sections 44, 60 62A and 42(b) of the Act. As the ground under section 60 of the Act is straightforward and should very obviously succeed, I will direct my discussion of the evidence and submissions of the parties to that ground.

The Evidence

1. The evidence in this matter comprises:

   In support

   ·     Statutory declaration of Kimberly Jade Evans dated 11 June 2009 (‘Evans 1’);

   ·     Supplementary statutory declaration of Kimberly Jade Evans dated 18 August 2009 (‘Evans 2’); and

   ·     Statutory declaration of Todd Santos dated 18 August 2009 (‘Santos 1’).

   In answer

   ·     Statutory declaration of Julie Elizabeth Plummer dated 24 February 2010 (‘Plummer’);

   In reply

   ·     Statutory declaration of Todd Santos dated 23 November 2010 (‘Santos 2’).

2. The opponent has used the trade mark QUICKBOOKS[1] in Australia since 1994 in relation to an accounting software program and technical and support services.[2]  The opponent’s QUICKBOOKS trade mark is registered in Australia as below:

Registration No:              603749

Priority Date:  2 June 1993

Goods:  Class 9: Computer software; and all other goods in this class

Trade Mark:  QUICKBOOKS

Application No: 603750

Priority Date:…