Intuit Inc v Guangzhou Dasen Lighting Electronics Limited

[2017] ATMO 128

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 no. 1696863 – INTUIIT - in the name of Guangzhou Dasen Lighting Electronics Limited.

Delegate:	Bianca Irgang
Representation:	Opponent: Siobhan Ryan of counsel instructed by Davies Collison Cave Applicant: Not present at the hearing
Decision:	2017 ATMO 128 Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 44, 58, 59 and 60 pressed – section 60 established for all goods – Trade Mar k refused registration.

Background

1. Guangzhou Dasen Lighting Electronics Limited (‘the applicant’), filed trade mark application number 1696863 on 28 May 2015 in class 11 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1696863            

   Filing Date:  28 May 2015

   Specification:  Class 11: Lamps; Flares; Automobile lights; Lighting apparatus for the stage; LED lighting apparatus; Lanterns for lighting; Air purifying apparatus and machines; Water distribution installations; Hot air bath fittings; Disinfectant apparatus

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 5 September 2015. Subsequently Intuit Inc. (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).        

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 5 July 2017. The applicant was not present at the hearing. The opponent was represented by Siobhan Ryan of counsel instructed by Davies Collison Cave.

   Grounds of Opposition

5. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 44, 58, 59 and 60 which were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach of Pfizer Products Inc. v Karam[3] where Justice Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of  Todd Santos (‘Santos’), Senior Manager – IP Programs of Intuit Inc.,  dated 9 June 2016

   ·Declaration of Tony Lolis, Practitioner of the Supreme Court of Victoria and employee of Davies Collison Cave, dated 10 June 2016

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act 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.

8. The opponent is relying on the following trade marks in the order to establish the section 60 ground of opposition:

   INTUIT

   (in use in Australia since 1992 – ‘INTUIT’)

   (in use in Australia since 2009 – ‘INTUIT stylised’)

9. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the opponent’s trade marks are at least deceptively similar to the Trade Mark. The respective trade marks differ in spelling by a single additional letter I contained within the Trade Mark. The respective trade marks are also phonetically identical. Further, the goods offered for sale to the Australian public by the opponent include such goods as those covered by the Trade Mark.

10. It is for me to determine therefore whether the opponent has established that before 28 May 2015 (‘the priority date’) its INTUIT or INTUIT stylized trade marks were recognized by the public generally, or at least by a significant number of persons in relevant market and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J at paragraph 81:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335

13. Santos states that the opponent was founded in 1983 in the U.S.A state of California and since that date has engaged in the business of designing, manufacturing, marketing, selling and providing a wide range of computer software and online services throughout the United States of America and in several other countries and territories of the world including Australia, as well as distributing office supplies and promotional goods in multiple jurisdictions. According to Santos, as of April 2016, the opponent had over 8,000 employees throughout the world which included more than 60 employees in Australia. The opponent has sought registration of the Intuit trade mark and variations of this trade mark in more than 40 countries and territories throughout the world[7].

    [7] Exhibit A accompanying Santos

14. Mr Santos avers that since at least as early as 17 February 1984 the opponent has used its Intuit trade mark and trade name in connection with its products and services. The evidence demonstrates that the opponent has engaged in extensive marketing, promotion, advertising, sales and product distribution under its various Intuit trade marks. The amount spent on advertising and promotional spending has been very significant. According to Mr Santos the opponent commenced advertising its goods and services at the Super Bowl in 2014. I understand that commercial airtime during the Super Bowl broadcast is the most expensive given the high audience numbers. However, I consider all of this evidence to establish the opponent has a very significant international reputation for the INTUIT trade mark but the question is: how much of this reputation is relevant to Australia?

15. In considering this question I turn to the evidence again. According to Santos the opponent first offered, advertised and promoted its computer software goods and related goods and services in Australia at least as early as 1992 and has continually offered various goods and services under the INTUIT trade mark since that time. In September 2012 the opponent launched a website dedicated specifically to and for Australian consumers which sells those goods to which the Trade Mark applies[8]. In 2013 the opponent brought its “Love Your Local Business” contest to Australia.

    [8] Exhibit H and K accompanying Santos

16. The Australian media coverage detailed in Exhibit J accompanying Santos demonstrates that the opponent has a considerable presence within Australia. While the initial advertising appears to have been more modest it is also clear from the confidential evidence that the opponent’s advertising and presence has been considerably growing within Australia since 1993 with more recent years evidencing significant presence and advertising within Australia for its INTUIT trade mark. The sales of the opponent’s goods bearing its INTUIT trade mark before the priority date of the Trade Mark are significant too.

17. I am satisfied that the opponent’s INTUIT trade mark had acquired a very significant reputation in Australia for computer software before the priority date of the opposed Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion.

18. Overall I consider that, given the reputation acquired by the opponent’s INTUIT trade mark, a significant number of consumers would at the very least experience a reasonable doubt[9] as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used to the extent of all of the goods listed in the opposed application. The significant similarities between the trade marks and the same goods being offered for sale under the respective trade marks makes it more likely that consumers would be caused to wonder if there was a connection with the applicant’s goods bearing the Trade Mark.

    [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

19. Therefore, I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

    Decision

20. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

21. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1696863.

    Costs

22. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    26 October 2017