Kabushiki Kaisha Zoom v Zoom Video Communications, Inc
[2024] ATMO 127
•16 July 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kabushiki Kaisha Zoom to registration of trade mark application number 2022717 (classes 9 and 38) – ZOOM (Figurative) - in the name of Zoom Video Communications, Inc.
Delegate: | Timothy Brown |
Representation: | Opponent: Shauna Ross of counsel, instructed by Sparke Helmore. Applicant: Andrew Sykes of counsel, instructed by Golja Haines and Friend |
Decision: | 2024 ATMO 127 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60 and 62A considered – no grounds established – trade mark to proceed to registration. |
Background
This decision concerns an opposition brought by Kabushiki Kaisha Zoom (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Number: 2022717
Trade Mark:
Filing Date: 11 July 2019
Owner: Zoom Video Communications, Inc. (‘Applicant’)
Goods and Services: Class 9: Downloadable software for use in the fields of audio teleconferencing, network conferencing services, instant messaging services, telephone conferencing services, teleconferencing services, telepresence conferencing services, text messaging services, video conferencing services, video communications services, video teleconferencing, videotext services, web conferencing services, and web messaging;
Class 38: Audio teleconferencing; Network conferencing services; Providing instant messaging services; Providing telephone conferencing services; Teleconferencing services; Telepresence conferencing services; Text messaging services; Video conferencing services; Video teleconferencing; Videotext services; Web conferencing services; Web messaging[2]
(‘Applicant’s Goods and Services’)
[2] The Applicant unconditionally requested to amend its goods in class 9 in its written submissions. I have considered the opposition to the application as amended.
The Trade Mark was advertised for acceptance on 15 June 2021.
On 14 August 2021, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 October 2021. The Applicant filed a Notice of Intention to Defend the opposition on 18 March 2022.
The Opponent filed Evidence in Support of the opposition on 22 June 2022. The Applicant filed Evidence in Answer on 27 September 2022. Evidence in Reply was filed by the Opponent on 30 November 2022.
Once the evidence stage ended, both parties requested an oral hearing. I heard this matter, as a delegate of the Registrar of Trade Marks (‘Registrar’), on 16 April 2024. The Opponent was represented by Shauna Ross of counsel, instructed by Shannon Platt and Susan Ha of Sparke Helmore and Reiko Toyosaki, a representative of the Opponent. The Applicant was represented by Andrew Sykes of counsel, instructed by Stephen Friend of Golja Haines and Friend.
Preliminary Matters
On 1 February 2023, the Opponent sought a three-month extension of time to file additional evidence in reply. The evidence comprised of a declaration of Susan Ha, Lawyer at Sparke Helmore, dated 28 February 2023 (‘Ha’) with Annexures A and B. On 22 May 2023, a delegate of the Registrar refused to grant the extension of time.
On May 2023, the Applicant requested that a declaration made by Elizabeth Widup dated 28 April 2023 (‘Widup 3’) with Annexures ELW-A1 and ELW-A2 be considered pursuant to reg 21.19. The information contained in the declaration sought to correct information in the Applicant’s evidence in answer and relates to matters raised in the Evidence in Reply concerning contact between the parties regarding instances of consumer confusion.
On 8 March 2023, the Opponent requested to amend the SGP pursuant to reg 5.12(1)(d) to amend the facts and circumstances forming the basis for the ground of opposition under sections 44 and 42(b). The amendment was granted by a delegate of the Registrar on 3 July 2023. The delegate then issued a direction under regulation 5.19 (‘Direction’) affording the Opponent one month to file evidence in support of the amended particulars. On 3 August 2023, the Opponent filed a declaration made by Shannon Platt of Sparke Helmore dated 3 August 2023 (‘Platt’) with Annexures SEP-A to SEP-S. On 6 September 2023, the Applicant informed the Registrar that it was of the view that Platt was not made in accordance with the Direction. Platt was reviewed by a delegate of the Registrar, who informed the Opponent that the declaration contained information not related to the amended particulars and allowed the Opponent time to file a revised version of the declaration. The Opponent did not rectify its evidence and filed submissions for the delegate’s consideration. The delegate then informed the parties it would be left to the Hearing Officer of the substantive case to determine if Platt would be considered in making a decision on the opposition. The Applicant then proceeded to file its evidence in answer, which comprised of a declaration made by Stephen Robert Friend dated 30 October 2023 (‘Friend’) and Annexures SRF-01 to SRF-04.
I heard submissions from both parties regarding the admission of the above evidence. Neither party objected to the admission of Ha and Widup 3. Noting the corrective nature of these declarations, and the acquiescence of the parties to the consideration of the material, I have considered both declarations under reg 21.19 in deciding this opposition.
Turning to Platt, in my view, the declaration exceeds the scope of the Direction. The amendment to the SGP was granted on the basis that the Opponent had become aware of an instance of confusion between the parties that occurred in January 2023. The amended particulars pertained to s 29 of the Australian Consumer Law in the SGP. Platt contains evidence relating to:
· The history of use and alleged reputation of the Opponent’s trade marks;
· The Opponent’s relationship with its Australian distributor;
· Evidence of alleged confusion in the form of email correspondence, online chats and call logs;
· Information pertaining to past and ongoing litigation between the parties;
· A copy of Wreal, LLC v Amazon.Com, Inc (28 June 2022), which concerns the concept of reverse confusion.
· User reviews ‘showing the interoperability of the KKZ Goods with various technologies’;
· Shipping invoices from the Opponent to Dynamic Music, the Australian distributor.
· Sales data from Dynamic Music from 2014 to 2019.
The information contained in Platt repeats much of the Opponent’s evidence in support. Whilst the Opponent has characterised this information as contextual, in my view, significant portions of Platt form further evidence in support, supplementing the section 60 ground of opposition rather than addressing the amended particulars. The exception is the evidence of confusion comprised of emails and call logs, particularly those contained in Annexure SEP-P. However, considering the greater balance of Platt exceeds the scope of the Direction, I do not consider it appropriate to admit the evidence under the original direction.
Regulation 21.19 provides:
(1) If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
Regulation 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be considered when making a decision. It is not a substitute for the evidence stages of opposition and the party seeking admission of new material must make a compelling case for its inclusion. The circumstances surrounding consideration of Platt are particular to a request to amend the SGP. The evidence was filed following the granting of a request to amend the SGP. The Applicant was not ambushed with evidence late in proceedings. Furthermore, the Applicant was allowed to file evidence in answer to Platt. I acknowledge this was made more challenging for the Applicant given the ambiguity surrounding whether Platt would be admitted into the hearing in full, in part, or not at all.
Whilst much of the evidence in Platt is relevant to the sections 60 and 42(b) grounds of opposition, I am less convinced of its probative value. Significant portions of annexures filed with Platt are in Japanese characters with no translation. [3] This includes the evidence of purported sales revenue. Annexures SEP-J, SEP-K, SEP-M, and SEP-P, SEP-Q and SEP-R concern the alleged instances of consumer confusion. These annexures are comprised predominantly of email chains, extracts of online chats and call logs. Although relevant to supporting the Opponent’s case for consumer confusion, this evidence amounts only to small number of consumers who have seemingly confused the Trade Mark with the trade marks owned by the Opponent. For reasons that will become apparent, the instances of alleged confusion are not crucial to the outcome of proceedings, nor would the consideration of Platt change the outcome of the decision. For these reasons, I have not considered the Platt declaration under the provisions of reg 21.19. Accordingly, it is also unnecessary to consider the Friend Declaration that was filed by the Applicant in answer to Platt.
[3] For example: Platt Annexures SEP-B, SEP-C, SEP-F; Platt Confidential Exhibits SEP-3.
Grounds, Onus and Relevant Date
The nominated grounds of opposition are sections 44, 58, 60, 42(b) and 62A.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[4] The required standard of proof is on the balance of probabilities.[5] The date at which the rights of the parties will be determined is 11 July 2019 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[5] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
| Evidence in Support |
| Declaration of Kevin Gregory McNamara, General Manager of Dynamic Music Australia Pty Ltd, dated 21 June 2022 (‘McNamara’), with Annexures A to D. |
| Evidence in Answer |
| Declaration of Elizabeth Widup, Senior Counsel, Trade Mark and Copyright of the Applicant, dated 21 September 2022 (‘Widup’) with Annexures ELW1 to ELW9. Included in Widup is the declaration of Elizabeth Widup dated 21 May 2021 (‘Widup 2’) with Annexures ELW 1 to ELW 13 filed during examination of the Trade Mark. |
| Evidence in Reply |
| Declaration of Reiko Toyosaki, legal representative of the Opponent in Japan, dated 30 November 2022 (‘Toyosaki’) with Annexures A to H. |
Additionally, the Opponent relies on Ha and the Applicant relies on Widup 3.
Opponent
McNamara explains that Dynamic Music Australia Pty Ltd (‘Dynamic Music’) is a major distributor of musical instruments and audio-visual equipment in Australia, and the exclusive distributor of the Opponent’s products in Australia. The Opponent was founded in Japan in 1983 and is a manufacturer of musical instruments and audio-visual equipment, such as microphones, audio recorders, drum machines, and integrated circuits and processors for its devices. McNamara declares that the Opponent has sold these goods in Australia since at least 1989 via Dynamic Music.
The Opponent is the owner of the following trade mark registrations (‘Opponent’s ZOOM Marks’) in Australia:
| Trade Mark No. | Trade Mark | Priority Date | Goods |
| 529001 | ZOOM (‘Opponent’s Mark’) | 19 February 1990 | Class 15: Musical instruments (‘Opponent’s Goods’) |
| 2194854 (International registration number 1267107) | 13 April 2021 | See Annexure A |
The Opponent was also the owner of following trade mark registration, which was removed from the register on 26 March 1998:[6]
[6] The Opponent did not renew the registration of this trade mark.
| Trade Mark No. | Trade Mark | Priority Date | Goods |
| 529000 | ZOOM (‘529001 Mark’) | 19 February 1990 | Class 9: Voice frequency transmitting apparatus, portable communicating apparatus, and public address systems; amplifiers; synchronising and auto-locating systems for tape recorders; parts and fittings for computers in this class; none of the foregoing incorporating zooming facilities |
According to Toyosaki, in or around 1998, the Opponent also sold guitar effect and effects for musical instruments.[7] Toyosaki explains that the Japan Patent Office considers ‘effects for musical instruments’ and ‘phasers for electric or electronic musical instruments’ to have the same meaning and classifies the goods in class 15. For this reason, the Opponent considered the registration of the Opponent’s Mark sufficient to cover goods, such as guitar effects, effectors and effects for musical instruments, and let the 529000 mark lapse.
[7] Toyosaki [14].
According to McNamara, Dynamic Music has promoted the Opponent’s Goods sold under the Opponent’s Zoom Marks via its website, (‘Dynamic Music’s website’), since 1999. In support, McNamara includes a copy of its distribution agreement with the Opponent dated 2014,[8]print outs from Dynamic Music’s website from various dates between 2001 and 2021,[9] and promotional material published in Australian Technology Magazine dated 2006 as well as various print advertisements from a variety of marketing activities dated from 2007 to 2009.[10]
[8] McNamara Annexure A.
[9] McNamara Annexure B.
[10] Ibid Annexure D.
Toyosaki includes historical printouts from the Opponent’s website (‘Opponent’s Website’) dating from 1998 to 2021. Toyosaki states that the website ‘has always been visible to persons located in Australia’ and that persons from Australia have been able to download and access materials and software from the Opponent’s Website.
McNamara attests to a series of phone calls from in or around 2020 from customers who were confused between the Trade Mark and the Opponent Mark, having identified the Opponent’s products with the Trade Mark.[11] Similarly, Toyosaki states that the parties have experienced ‘frequent’ consumer confusion. In October 2019, the Opponent contacted the Applicant regarding the confusion that occurred between the parties due to the use of ‘ZOOM’.[12] Toyosaki states that the Applicant’s ongoing use of the Trade Mark, despite instances of consumer confusion, forced the Opponent to file opposition proceedings against the registration of the Trade Mark in a number of jurisdictions, including Australia.
[11] Ibid [21]-[22].
[12] Toyosaki Annexure D.
Applicant
The Applicant is the provider of a video telecommunications platform that connects users via various forms of telecommunication methods including, but not limited to, video meetings, phone calls, webinars, and internet chat rooms. Widup describes ‘Zoom Meetings’ as the Applicant’s ‘flagship product’. Zoom Meetings is a software, also capable of being deployed as a software as a services or via cloud, that provides video and voice conferencing and in meeting chat via computers, mobile devices, conference room systems, and telephones.
According to Widup, Zoom Meetings was first used in Australia in 2012. Since that date, the number of meetings hosted in Australia has grown significantly. Widup includes a summary of the total meetings hosted in Australia by free users and paid subscriptions users from 2012 to 2021.[13] Widup also includes world-wide revenue figures from the fiscal years of 2017 to 2022, and Australian revenue figures from 2018 to 2022.
[13] Widup [9].
Widup describes the Applicant’s marketing and promotion of its goods and services, which include direct marketing via social media, radio advertising, sports and business sponsorships, and extensive digital advertising. Widup includes examples of digital advertisements featured on websites such as The Sydney Morning Herlad, Financial Review and The Age.[14]
[14] Ibid Annexure ELW7.
Widup declares that at the time the Applicant adopted the Trade Mark, it was unaware of the existence of the Opponent and the Opponent’s ZOOM Marks. Widup declares that the Applicant became aware of the Opponent in April 2019 through notice of the Opponent’s opposition to the Applicant’s trade mark application in the EU. Widup 3 clarifies that the Opponent did initially contact the Applicant regarding confusion between their trade marks in 2018 via the customer help desk.[15]
Discussion and Reasons
[15] Widup 3 [10], Annexure ELW-A1.
Section 58
Section 58 provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and first use of a trade mark,[16] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[17] To succeed in this ground of opposition, the Opponent must establish the following:
· The Trade Mark is identical, or substantially identical, to an earlier trade mark;
· The trade mark upon which the Opponent relies has been used in respect of goods and/or services that are ‘the same kind of thing’ as the Applicant’s Goods and Services; and
· A person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark before the Relevant Date.[18]
[16] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd. v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).
[17] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[18] Pham (n 24) [50].
The Opponent relies on its use of the Opponent’s ZOOM Marks since before the filing date of the Trade Mark. In its written submission the Opponent relied on the 529000 mark as ‘objective evidence of ownership’ since 1990. The Applicant challenged the Opponent’s reliance on the 529000 mark, noting that the SGP made no reference to any earlier registrations owned by the Opponent. In my view, despite the circumstances surrounding the lapsing of the 529000 mark (outlined earlier at [23]), a trade mark registration that lapsed in 1998 is not sufficient to establish a prior claim of ownership, particularly noting the use of the Opponent’s ZOOM Marks demonstrated in the Opponent’s evidence since 1998 is in connection with goods distinct from those specified in the 529000 mark.
Annexure F of Toyosaki includes screenshots captured from Wayback Machine Internet Archive. These screenshots show use of the Opponent’s ZOOM Marks from various dates between 1999 and 2021. The majority of use demonstrated in Annexure F is in relation to electronic recording hardware. The exception is use of the Opponent’s ZOOM Marks in connection with what appears to be firmware, drivers or support software for use with the Opponent’s electronic recording products. Examples from Toyosaki are reproduced below:
| Evidence | Date |
| 5 February 2003 | |
| 2 February 2004 | |
| 2 February 2004 | |
| 22 March 2006 | |
| 19 January 2012 | |
| 1 April 2015 |
The above examples feature three different variations of the ‘ZOOM’ trade mark:
| ZOOM |
(collectively, ‘Opponent Marks’)
The Applicant submits that the Opponent’s use of ‘Zoom’ in plain text does not appear as a sign distinguishing the Opponent’s Goods from those of other traders and is merely a brand reference to the Opponent’s logo marks. I do not agree. Instances of use such as ‘Welcome to the ZOOM website’ or ‘go to the ZOOM YouTube Channel’ possess the character of a badge of origin, and, in my view, are used for the purposes of indicating a connection in the course of trade between the goods offered for sale on the website and the Opponent.
Whether two trade marks are substantially identical is determined by a side-by-side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from that comparison.[19] In this instance, the trade marks are each comprised of the word ‘Zoom’, which in my view, is the essential feature of the trade marks. The sole point of distinction is the font or stylisation of the trade marks. Whilst I acknowledge that the respective stylizations of the trade marks have some degree of visual effect, the trade marks remain readily identifiable as the word ‘Zoom’. When compared side by side having regard to the essential features of the trade marks, I am satisfied that there is a total impression of resemblance between the Trade Mark and the Opponent’s ZOOM Marks.
[19] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
The Applicant challenges the Opponent’s evidence on the basis that the software used in connection with the Opponent’s ZOOM Marks was not the same kind of thing as the software claimed in the Applicant’s Goods, and also submits that the use demonstrated by the Opponent was not use in Australia or targeting Australian consumers.
In my view, the Applicant’s submissions have merit. While both the Trade Mark and the Opponent’s ZOOM Marks are utilised in connection with specific types of software, the test for whether goods are the ‘same kind of thing’ is a narrower assessment than whether they are goods of the ‘same description’[20]. In Colorado Group Ltd v Strandbags Group Pty Ltd[21] Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article.[22]
[20] Colorado Group Ltd v Standbags Group Pty Ltd [2007] FCAFC 184, [14] (Kenny J, Gyles and Allsop JJ).
[21] [2007] FCAFC 184 (Kenny, Gyles and Allsop JJ).
[22] Ibid [89].
The Applicant’s Goods in class 9 can be characterised as telecommunications software. The description of the Applicant’s software is limited ‘in the fields of audio teleconferencing, network conferencing services, instant messaging services, telephone conferencing services, teleconferencing services, telepresence conferencing services, text messaging services, video conferencing services, video communications services, video teleconferencing, videotext services, web conferencing services, and web messaging’. On the other hand, the Opponent’s ZOOM Marks appear to be used exclusively in relation to software for musical recording. Toyosaki describes the software as ‘bundled software’ that is provided ‘in association with the goods of the Opponent’ or ‘that can be used without being limited to the hardware of the Opponent’.[23] Software of the latter description appears to be third party software, such as Cubase, a music production software provided by another party. While the former appears, from what I can gather from the screenshots in Toyosaki, to be the either firmware or drivers for its musical recording equipment. Although both the Applicant’s software and the Opponent’s software broadly fall under the description of software, I do not consider them to be equivalent. Software is an extremely broad category of goods, encompassing programs with many distinct uses and purposes. In this case, the purpose or use for the types of software are distinct. Software for musical recording is neither a substitute for, or equivalent to, software for telecommunications. Accordingly, I am satisfied that the Applicant’s Goods are not the ‘same kind of thing’ as the goods used in connection with the Opponent’s ZOOM Marks.
[23] Toyosaki [38].
For this reason, I am satisfied that the grounds of opposition under section 58 has not been established.
Section 60
Section 60 provides:
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.
To establish this ground of opposition, the Opponent must establish:
- A reputation was acquired by another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent relies on its use of the Opponent’s ZOOM marks. In the SGP, the Opponent asserts that because of the Opponent’s reputation in the Opponent’s ZOOM Marks in Australia as at the Relevant Date, use of the Trade Mark by the Applicant is likely to deceive or cause of confusion.
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[24] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[25]
[24] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[25] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[26] or providing evidence of high volume of sales,[27] advertising expenditure or other promotion of goods or services to which the trade mark applies.[28] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[29]
[26] Ibid [118].
[27] McCormick (n 26) [86].
[28] Ibid.
[29] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
Generally, the relevant reputation must be amongst a significant or substantial number of persons.[30] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[31]
[30] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[31] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
In my view, the Opponent’s evidence does not demonstrate that the Opponent’s ZOOM Marks had acquired a reputation amongst a substantial number of consumers in Australia before the Relevant Date. In arriving at this conclusion, I have had regard to the evidence of use of the Opponent’s ZOOM Marks detailed in McNamara and Toyosaki, in particular:
Use of the Opponent’s ZOOM Marks in Australia by Dynamic Music. McNamara asserts that the Opponent’s ZOOM Marks have been sold in Australia since 1989, and that Dynamic Music has promoted the Opponent’s ZOOM Marks since 1999.
Printouts from Dynamic Music’s website dating from 2001 to 2021.[32]
Promotional material from publication Australian Technology Magazine dated 2006.[33]
The historical printouts included in Toyosaki from the Opponent’s Website dating from 1998 to 2021, showing use of the Opponent’s Zoom Marks in relation to music recording software and musical recording equipment.[34]
[32] McNamara Annexure B.
[33] Ibid Annexure D.
[34] Toyosaki Annexure F.
The Opponent’s evidence does not contain any evidence of sales revenue or advertising expenditure. While this information is not determinative to the question of reputation, the lack of such information presents a challenge to determining the extent of any reputation that may have been acquired from use of the Opponent’s ZOOM Marks in Australia. Whilst McNamara and Toyosaki contain examples of use of the Opponent’s ZOOM Marks, primarily sourced from Dynamic Music Website and the Opponent’s Website, these examples only demonstrate how the Opponent’s ZOOM Marks were used and promoted online. Although these examples show that the Opponent’s Zoom Marks have been used for a significant period of time both internationally and in Australia, the Opponent’s evidence does not address the degree of exposure this use had to the Australian market, nor whether any of the international use has spilled over into the Australian market.
For these reasons, I am not satisfied that at the Relevant Date a reputation had been acquired in the Opponent’s ZOOM Marks in Australia. Given s 60(a) has not been satisfied, it is not necessary to consider s 60(b). Accordingly, the s 60 ground of opposition has not been established.
Section 42(b)
Section 42 relevantly provides:
An application for the registration of a trade mark must be rejected if:
…
its use would be contrary to law.
The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b).
To succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL, or constitute passing off.[35]
[35] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[36] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60.[37]
[36] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
[37] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).
Australian Consumer Law
Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods and Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading.
The Opponent repeats its submissions concerning section 60. In addition, the Opponent alleges that deception or confusion could arise due to the Applicant’s reputation and consumer awareness of the Applicant’s goods and services. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods into believing that the Trade Mark, and the Opponent’s Zoom Marks, are related.
Passing Off
Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[38] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[39]
[38] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
[39] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).
Sections 52 and 53 of the Trade Practices Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The basis for the ground of opposition under section 62A is the Applicant’s awareness of the Opponent’s ZOOM Marks, and the alleged reputation of the Opponent ZOOM Marks in Australia. The Opponent states in the SGP that ‘the Applicant knew, or should have known that adopting and seeking registration of a trade mark that is substantially identical with, or deceptively similar to, a well known third party’s mark falls short of acceptable standards of commercial behaviour’.
‘Bad faith’ is not defined in the Act. The meaning of ‘bad faith’ was considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:
For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[40]
[40] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).
In DC Comics v Chequout Pty Ltd, Bennett J summarised the principles the principles for bad faith:
Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
Bad faith does not require dishonesty.
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
Mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[41]
[41] [2013] FCA 478, [62].
Whether the application to register the Trade Mark was made in bad faith requires the Delegate to first consider the Applicant’s knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.
It is evident that the parties had been in contact regarding instances of confusion between their respective trade marks prior to the filing of the application to register the Trade Mark.[42] However, knowledge or awareness of another trade mark does not constitute bad faith. The behaviour of the Applicant ‘needs to have some quality that makes it repugnant to the purposes for which the statutory regime exists’[43]. Widup demonstrates that the Applicant has used the Trade Mark in Australia since around 2012 in relation to its teleconferencing services. It is also evident that the Applicant has been very successful both in Australia and worldwide. The revenue figures disclosed in Widup are substantial, and indicative of a significant presence in the teleconferencing market. In my view, the application to register the Trade Mark was made with the genuine intention of protecting the goodwill acquired from the Applicant’s use of the Trade Mark in Australia.
[42] Toyosaki [30]; Widup 3 [11]-[12].
[43] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [74] (Kennett J).
Furthermore, in my view there is no nexus between the Applicant’s Goods and Services and those associated with the Opponent’s Marks. As outlined earlier in this decision, I am also not satisfied that the Opponent’s ZOOM Marks have acquired any reputation in Australia. In this context, I consider the Applicant’s decision to apply for the registration of the Trade Mark reasonable. As there are no other aspects of the Opponent’s evidence that point to any activity or action taken by the Applicant that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied that the application for the Trade Mark was made in bad faith. The ground of opposition under section 62A has not been established.
The section 62A ground of opposition has not been established.
Section 44
Section 44 relevantly provides:
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar, or closely related to the Applicant’s Goods or Services.
The Opponent relies on the Opponent’s Mark as the basis for this ground of opposition.
I note that the Opponent’s Mark has an earlier priority date than the Trade Mark and is held in the name of another person.
As indicated in the discussion of the section 58 ground of opposition, I also consider the Trade Mark to be substantially identical to the Opponent’s Mark.
Comparison of Goods and Services
The basis of the Applicant’s section 44 ground of opposition is the Applicant’s claim for ‘microphones’ in class 9, which the Opponent submits is similar to the Opponent’s claim for ‘musical instruments’ in class 15. As the Applicant amended the specification to remove ‘microphones’ and all other hardware goods from class 9, there is no longer any basis for the Applicant’s Goods to be considered similar to the Opponent’s Goods. For completeness, I do not consider the remainder of the Applicant’s Goods, which comprise of various forms of telecommunication software, to be the same or similar to the Opponent’s musical instruments in class 15. Similarly, I do not consider the Applicant’s Services, which are comprised of various forms of telecommunication services in class 38, to be closely related to musical instruments. Accordingly, I am the section 44 ground of opposition has not been established.
Decision
Section 55(1) relevantly provides:
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.
The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2022717 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
Both parties sought an award of costs. The Applicant sought an award of costs at an amount three times normally awarded in accordance with Schedule 8 of the Regulations due to the Opponent’s conduct in disregarding the directions of the Registrar in regard to the Platt declaration, which the Opponent claims has resulted in additional costs that the Applicant could not recover under an ordinary application of Schedule 8.
Section 221 confers upon the Registrar a discretionary power to make an award of costs in respect of matters and in amounts provided for in the Regulations. Regulation 21.12 provides that for the purposes of s 221, a party to proceedings before the Registrar may apply for an award of costs in relation to proceedings. This includes an opposition to the registration of a trade mark.
Costs are awarded in accordance with reg 21.13(1)(a), which provides that costs are awarded in accordance with Schedule 8 of the Regulations. Regulation 21.13(1)(b) provides that if the Registrar has a discretionary power in relation to the award of costs, costs may be awarded as the Registrar ‘considers appropriate’.
There is no provision in the Regulations that allows the Registrar to award costs other than those detailed in Schedule 8. Although reg 21.13(1)(b) provides that the Registrar may award costs as considered appropriate if the Registrar has a discretionary power in relation to the award of costs, in my view, this is not a discretionary power to award varying costs, but rather refers to additional discretionary powers ‘in relation to’ the award costs in certain circumstances. These circumstances are failures of parties to file a written summary of submissions in inter partes matters before the Registrar.[44]
[44] See: Regs 5.17(7), 6.9(4), 9.20(6), 17A.34M(7), 17A.48V(6) and 21.20E(4).
An alternative reading would render the role of reg 21.13(1)(a) insignificant. This construction is supported by the Explanatory Statement for the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013(No.1),[45]which states:
Under these new provisions, the Registrar may take a failure to file a summary of submissions into account in considering any award of costs between parties. This item amends regulation 21.13 to permit the Registrar to award costs where there is a discretionary power and the Registrar considers it appropriate.[46]
[45] This bill introduced the requirement that parties to certain proceedings before the Registrar were required to file a written summary of submissions five or ten days prior to the schedule hearing.
[46] Explanatory Statement, Intellectual Property Legislation Amendment (Raising the Bar) Regulations 2013 (No. 1) (Cth) 18 (‘Explanatory Statement').
Accordingly, while the Opponent’s conduct may factor into the Registrar discretion when deciding to award costs, once that award has been made, they are not factors that may be taken into account in determining the quantum.
I note that the Applicant amended its goods, and that this amendment may have been prompted by the Opponent’s submissions in relation to the section 44 ground of oppositions. Although I would not characterise the changes to the Opponent’s specification in class 9 as minor, I am not convinced that the Opponent would have been successful under the s 44 ground of opposition had the Opponent specification remained unchanged. I therefore award costs against the Opponent under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
16 July 2024
Annexure A – Goods of Trade Mark Number 2194854
Class 9: Measuring or testing machines and instruments; batteries and cells; electric wires and cables; photographic apparatus and instruments; cinematographic apparatus and instruments; optical machines and apparatus; electrical communication machines and instruments; multi-track recorders; IC recorders; field recorders; sound recording and reproducing apparatus; video recording apparatus; sound recorded magnetic cards, sheets, tapes and compact disks; phonographic records; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; metronomes; electric and electronic effects units for musical instruments; magnetic disks, magnetic tape and recording media recorded with computer programs; computer software program; electronic machines, apparatus and their parts; ic memory cards; electronic publications; recorded video discs and tapes; electrical switches; converters, electric; effects processor for musical instruments; apparatus for recording, transmission or reproduction of sound for DJ.
Class 15: Tuning apparatus for musical instruments; musical instruments; drum machines; musical performance auxiliaries.
Key Legal Topics
Areas of Law
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Intellectual Property
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Commercial Law
Legal Concepts
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Jurisdiction
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