Kyl Newton v Roshtech Pty Ltd

[2023] ATMO 220

TRADE MARKS ACT 1995

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

Re:Opposition by Kyl Newton to registration of trade mark application 2097448 – VIPC - in the name of Roshtech Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Rostron Carlyle Rojas Lawyers Applicant: Trevor Dredge of Intellepro Patent & Trade Mark Attorneys
Decision:	2023 ATMO 220 Trade Marks Act 1995 (Cth)- grounds of opposition under sections 58 and 60 pursued – section 58 ground of opposition established for some services in classes 37 and 42 – no other ground of opposition established – amendment requested - registration to proceed for amended services.

Background

1. Roshtech Pty Ltd (‘the applicant’), filed trade mark application number 2097448 on 19 June 2020 in classes 35, 37 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  VIPC (the ‘Trade Mark’)

   Trade mark application no: 2097448

   Filing Date:  19 June 2020 (the ‘Priority Date’)

   Specification:  Class 35: Business management and administration services supporting utilisation of a global computer network; Compilation of information into computer databases; Computer assisted business information; Computer data processing; Computerised accounting; Computerised book-keeping; Computerised business information retrieval; Computerised business information services; Computerised compilation of customer indexes; Computerised data verification; Computerised database management; Computerised file management; Online advertising on a computer network; Online promotion on a computer network; Updating and maintenance of data in computer databases; Marketing in the framework of software publishing; Advertising; Advertising services provided over the internet; Advertising services provided via a data base; Advisory services relating to advertising; Call centre services (telephone answering); Advice relating to business management; Advisory services relating to business risk management; Business project management; Data base management; Data management; Data management advice; Data scrubbing services (data management services); Logistics services (business management and organization of facilities and resources); Management consultancy in information analysis; Management of a retail enterprise for others; Management of business offices for others; Office management services (for others); Compilation of advertisements for use as web pages on the internet; Providing business information via a web site; Web site traffic optimisation; Business consultation; providing commercial information and advice for consumers in the choice of products and services

   Class 37: Computer support services (installation, repair and maintenance of computer hardware and peripherals); Installation and repair of telecommunication apparatus; Installation, maintenance and repair of computer peripherals; Installation, maintenance and repair of middleware (computer hardware); Maintenance and repair of communications systems; Maintenance and repair of data communications networks; Maintenance and repair of data processing apparatus; Maintenance and repair of electronic installations; Office machines and equipment installation, maintenance and repair; Provision of information in relation to the repair, maintenance and installation of goods; Repair of computers; Repair of telephone apparatus; Repair, maintenance and installation advisory services; Telephone installation and repair; Installation of communications network apparatus; Installing of telecommunications networks; Construction consultation; Information technology (IT) services (computer and computer peripherals installation and maintenance)

   Class 42: Computer virus protection services; Off-site data backup (online); Advisory services relating to computer software; Computer security services (design and development of secure computer hardware, software and systems); Computer security services (programming and software installation repair and maintenance services); Computer software advisory services; Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Diagnosis of faults in computer software; Hosting of software as a service (SaaS); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Installation and maintenance of computer software; Online provision of web-based software (non-downloadable); Repair of computer software; Updating of computer software; Upgrading of computer software; User authentication services using single sign-on technology for online software applications; Installation, repair and  maintenance of firmware; Installation, repair and maintenance of middleware (software); Cloud computing; Providing virtual computer systems through cloud computing; Testing of computing equipment; Creating and maintaining weblogs (blogs) for others; Hosting of weblogs (blogs); Computer network services; Computer security services (testing and risk assessment of computer networks); Development of computer based networks; Development, maintenance and updating of a telecommunication network search engine; Network security services (test and risk assessment of electronic networks); Project management (design); Creating and designing web pages for others; Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Creating and designing website-based indexes of information for others (information technology services); Creating and maintaining web sites for others; Hosting computer sites (web sites); Providing information relating to computer technology and programming via a web site; Web portal services (designing or hosting); Web site design; Internet portal services (designing or hosting); Internet security consultancy; Technological consultation services

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 20 November 2020. Subsequently Kyl Newton (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

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

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 16 November 2023. The applicant was represented by Trevor Dredge of Intellepro Patent & Trade Mark Attorneys who made the oral submissions. The opponent is represented by Rostron Carlyle Lawyers but was not present at the hearing and provided no written submissions for consideration.

   Grounds of Opposition

5. The SGP nominated two grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’). Those grounds being under sections 58 and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] 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.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   Evidence

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

   Evidence in Support

   ·Declaration of Kyl Newton, owner of the VIPC business, dated 12 March 2022 with Exhibit KN-1 (‘Newton 1’)

   Evidence in Answer

   ·Declaration of Trevor James Dredge, Registered Patent and Trade Mark Attorney of Intellepro Registered Patent & Trade Mark Attorneys dated 17 November 2022 with Exhibits TJD1 to TJD37 (‘Dredge 1’)

   Evidence in Reply

   ·Declaration of Kyl Newton, dated 23 January 2023 with Exhibit KN-3

   Opponent’s Evidence

7. The Newton 1 declaration states that on 12 June 2017 and operating as a sole trader, Mr Newton registered his business name with ASIC[3] and on the same date applied for an ABN and registered for GST.[4] Mr Newton declares that he has continually operated his business under his trade mark being the four letter combination “VIPC” (‘VIPC mark’) since 12 June 2017 and has offered a number of goods and services under it to Australian customers by way of his business. According to Mr Newton, the goods and services offered under his VIPC mark since that date include:

   ·The sale (in retail and wholesale) of computers and computer parts, accessories and peripherals;

   ·Assistance to customers to design and build their own computers;

   ·Provision of advice and consultancy services to customers in respect of the computers and computer parts;

   ·The publication of instruction guides, manuals, and documentation that accompany the products he sells;

   ·Assistance to customers with troubleshooting, repairs of and advising on computer issues, software (including installation), hardware and firmware;

   ·Provision of computer maintenance services;

   ·Assistance to clients, designing, building and selling computers; and

   ·Provision of general customer support.

   [3] Page 2 of Exhibit KN1 accompanying Newton 1

   [4] Page 4 of Exhibit KN-1 accompanying Newton 1

8. Further to this, Mr Newton states that in order to run his business he registered the domains:

   a) (registered 9 June 2017);

   b) (registered 9 June 2017);

   c) (registered 9 June 2017);

   d) (registered 9 June 2017);

   e) (registered 19 August 2020); and

   f) (registered 2 April 2020)

9. Of these domain names, (b) through to (f) all redirect customers to (a). I note that the domain (e) were registered after the Priority Date of the Trade Mark.

10. Mr Newton states that he has continuously operated a website and his business under the VIPC mark since 2017. The earliest screenshot of the VIPC mark on the opponent’s website in its present form is the 3 February 2018 which is demonstrated in the evidence by a copy of a screen shot of the opponent’s website from the Internet Archive, Wayback Machine[5]. The screenshot of the opponent’s website from 3 February 2018 has the VIPC mark in prominent position on the top left-hand corner of the website.

    [5] Page 27 of Exhibit KN-1 accompanying Newton 1

11. As for the goods and services provided under the VIPC mark, the evidence does not support all the broad claims made by Mr Newton and detailed in paragraph 7 above. Careful consideration of pages 57 to 113 of Exhibit KN-1 accompanying Newton 1 reveals that the opponent does run an online computer hardware and peripherals retail shop. The opponent’s Facebook® page describes the opponent as an ‘Online Enthusiast Computer Store’. It is unclear whether this description has been on the opponent’s Facebook page for a long time or was a more recent addition as the posts on the page range 2018 until 1 June 2021[6]. Regardless, the screenshots of the opponent’s website provided in exhibit KN-1 do detail the opponent’s sale of third-party branded computer goods, particularly computer cooling systems, to members of the Australian public.

    [6] Pages 35 to 45 of Exhibit KN-1 accompanying Newton 1

12. Pages 80 to 96 of exhibit KN-1 contain copies of messages between the opponent and his customers dated from 2017 and 2018 which is before the Priority Date. These emails and messages demonstrate the opponent providing advice on computer hardware and peripherals as well as installation advice and engaging in selling his retail computer goods. On page 113 of exhibit KN-1, I note from the ‘Example of a product installation guide’ that at the bottom of the guide it reads:

    “We offer many different computing services that can help you out including water cooling planning, tube bending and cutting as well as complete system design and building. Get in touch if there is a service you need some help with.”

13. But this example of a product installation guide is undated and it is unclear when these services were offered to the opponent’s customers.

14. Mr Newton has provided in his evidence the number of ‘hits’ to his website from the top 100 locations around Australia for the years 1 July 2017 until 11 March 2022[7]. The ‘hits’ are relatively modest for the number of years that the opponent has been operating. Additionally, the opponent’s “Shopify[8] store statistics” from 2017 until 2022 support the modest number of hits to the opponent’s website. A similar trend of modest numbers is seen with the opponent’s eBay® store, Instagram®[9] account and Facebook® page[10]. Pages 64 to 65 of exhibit KN-1 contain a number of positive reviews for the opponent’s retail services but I note they are few. Although there is a more substantial number of reviews for the opponent’s eBay store over the period from 2017 until 2022[11].

    [7] Pages 46 to 49 of Exhibit KN-1 accompanying Newton 1

    [8] Shopify is a user-friendly e-commerce platform that helps small businesses build an online store and sell online through one streamlined dashboard.

    [9] Pages 31 to 32 of Exhibit KN-1 accompanying Newton 1

    [10] Pages 34 to 45 and 57 to 58 of Exhibit KN-1 accompanying Newton 1

    [11] Pages 67 to 68 of exhibit KN-1 accompanying Newton 1

15. Pages 55 to 56 of exhibit KN-1 detail the opponent’s marketing of his website and services. The marketing figures from 2017 until 2022 are, again, modest. The opponent’s sales figures over the financial years 2017 until 2021 are detailed on page 71 of exhibit KN-1. These figures are not substantial.

    Applicant’s evidence

16. The majority of the applicant’s evidence[12] is an encore of the exhibits and webpage screen shots of the opponent’s evidence in support. Mr Dredge asserts that exhibits TJD14 to TJD26 accompanying Dredge 1 demonstrate that the opponent does not sell goods branded with the VIPC mark from the opponent’s online computer retail store but is solely a provider of retail services. Additionally, exhibit TJD13 contains the second declaration of Trevor James Dredge dated 29 June 2022 with exhibits TJD-1 to TJD- 12 (‘Dredge 2’). Dredge 2 has put into evidence as exhibits TJD-3 and TJD-4 copies of the correspondence between the parties from the attempts of the applicant to negotiate an agreement with the opponent.

    [12] Exhibits TJD14 to TJD26 accompanying Dredge 1

17. Exhibits TJD-6 and TJD-7 accompanying Dredge 2 contain the FOI request and correspondence that the applicant engaged in when it sought access to the documents on the Official File for trade mark application number 2124112 for the trade mark “VIPC” which the opponent sought to register and which the applicant opposed. Similarly, TJD-10 and TJD-11 accompanying Dredge 2 all relate to documents on the Official file for the applicant’s lapsed trade mark application number 2200752 for the trade mark “Voice / IT / Print / Cloud” and are of limited value in the current opposition proceedings.

18. Exhibits TJD30 to TJD37 accompanying Dredge 1 contain copies of the screen shots from the applicant’s website. Exhibit TJD31 is a copy of a webpage from the applicant’s website which contains claims made by the applicant under the title of ‘Our Story’:

    Rosh Tech is a local Brisbane business that has been around for over 30 years. In the digital era, good IT solutions are essential for small and large businesses alike. That is why Rosh Tech was initially founded with SMB technology needs in mind. Our name and logo come from the Hebrew word ‘rosh’, meaning ‘head’ – mapping out our mission to help small and medium businesses ‘get a-head of technology’. The purpose of our business is to offer a reliable service that helps SMB’s make the most of technology.

19. But from the applicant’s evidence is it unclear exactly when it commenced using the Trade Mark. I can see the Trade Mark use on the applicant’s website but all the printouts from applicant’s website are dated in 2022 and contain “Copyright© 2022 Rosh Tech” along the bottom of the print outs.

    Discussion

    Section 58 – Applicant not the owner of the trade mark

20. Section 58 of the Act provides:

    58             Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

21. In order to establish a ground of opposition under section 58, the opponent must establish that:

    ·   the respective trade marks of the applicant and opponent are either identical or substantially identical,[13]

    ·   the respective services on which the trade marks have been or are to be used are the ‘same kind of thing’; and[14]

    ·   the opponent has the earlier claim to ownership based on authorship[15] and use of its trade mark prior to both the filing of the application and any actual use of the opposed trade mark by the applicant.[16]

    [13] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375 (Gummow J).

    [14] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd J).

    [15] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399]( Fullagar J).

    [16] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 [413] (McGarvie J).

22. In regards to the first point, it is clear that the opponent’s VIPC mark and the Trade Mark are substantially identical according to the side-by-side test where the trade marks:

    compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[17]

    [17] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 [414] (Windeyer J)

23. The respective trade marks to be compared are as follows:

Trade Mark	opponent’s VIPC mark
VIPC	VIPC

1. A comparison of the opponent’s VIPC mark and the Trade Mark creates an impression of total resemblance.[18] The trade marks are comprised of the same essential features being the upper case letters VIPC.

   [18] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (Gummow J).

2. I now need to determine whether the opponent is able to satisfy the remaining two requirements in order to establish the section 58 ground of opposition in relation to any or all of the applicant’s claimed services.

3. The applicant has not put forward any evidence in these proceedings which satisfies me that it has used the Trade Mark before the Priority Date[19]. Therefore, the opponent must demonstrate use of his substantially identical VIPC mark before the priority date, being 19 June 2020. To this end, the opponent’s evidence does demonstrate minimal use of his VIPC mark in Australia before the 19 June 2020. This use is in the form of the online sales to Australian customers with the VIPC mark prominently positioned on the correspondence and on the opponent website as I discussed in paragraphs 11 through to 15 earlier in the decision. Therefore, the opponent has satisfied the first and third requirement in establishing section 58. All that remains for me to determine is whether the services branded with the opponent’s VIPC mark in 2017 and early 2018 are ‘the same kind of thing’ to the relevant services of the Trade Mark.

   [19] As per my discussions of the applicant’s evidence at paragraphs [18] and [19] of these reasons.

1. To establish whether or not the services are the ‘same kind of thing’ I turn to the opponent’s evidence. I have noted from page 113 of exhibit KN-1, that the bottom of the ‘Example of a product installation guide’ does suggest that the opponent offers a few different types of computing services such as water cooling planning, tube bending and cutting as well as complete computer system design and building. These services are broad and are all offered under the opponent’s VIPC mark. However, the installation guide is undated and I cannot be satisfied that these services were offered by the opponent before the Priority Date on the basis of this documents alone. 

2. However, the opponent’s use of the VIPC mark as detailed in pages 80 to 96 in exhibit KN-1 accompanying Newton 1 are dated before the Priority Date. The emails and messages contained in these pages of the opponent’s evidence are all provided by the opponent under his VIPC mark and are dated from 2017 to 2018. In these documents the opponent offers information and advice on computer hardware and peripherals as well as installation information and advice while engaging in selling his retail computer goods. I am satisfied that the opponent has used his VIPC mark in relation to the following services before the Priority Date;

   Provision of information and advice relating to computer hardware and peripherals, advice and information on installation of computer hardware and peripherals and retail of computer hardware and peripherals.

3. I turn to the applicant’s services in classes 35, 37 and 42. A consideration of the applicant’s services reveals that the opponent’s VIPC mark branded services are the ‘same kind of thing’ as some of the applicant’s services in classes 37 and 42. I have reproduced the services which are plainly the ‘same kind of thing’ between the parties below:

Applicant’s services

Opponent’s services

Class 37: Computer support services (installation of computer hardware and peripherals); Installation of computer peripherals; Installation of middleware (computer hardware); Provision of information in relation to the installation of goods; Installation advisory services; Information technology (IT) services (computer and computer peripherals installation)

Class 42: Computer support services (computer hardware and peripherals advisory and information services); Information technology (IT) services (computer hardware and peripherals design and technical consultancy).

Provision of advice and information relating to computer hardware and peripherals; advice and information on installation of computer hardware and peripherals; retail of computer hardware and peripherals

1. In coming to this decision that the above services are to be considered the ‘same kind of thing’ I drew upon Colorado Group Ltd v Strandbags Group Pty Ltd, where Allsop J said:

   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. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper [1887] UKLawRpCh 91; 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical... yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same... though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[20]

   [20] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [89] (Kenny J).

2. While this reasoning is in regards to goods, I am satisfied the same principal applies to services. In the SGP, the opponent has stated:

   “VIPC ( is a business name registered to Kyl Newton since 12 June 2017 and the business has traded continuously since. Goods and services provided by VIPC include, but are not limited to, retail sales and design of computer hardware as well as requisite advisory services for computer hardware and software to support sales. To operate successfully, VIPC must support its retail sales with computer consultancy, repair and maintenance services. VIPC has been continuously trading since 12 June 2017, with first use prior to the filing date of the opposed trade mark 2097448, which is an exact match to the VIPC business name.".

3. However, I am not satisfied on the evidence before me that the opponent has used his VIPC mark on such a broad range of services and goods in Australia. As I stated above in paragraphs 27 and 28 of these reasons, the opponent’s claimed services may be broad but the evidence before me only demonstrates use of the VIPC mark on a small subset of computing services before the Priority Date.

4. In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the filing date of the Trade Mark, in relation to some of the services in classes 37 and 42 of interest to the applicant that are the ‘same kind of thing’. It follows that the opponent, and not the applicant, is the Trade Mark owner, and the section 58 ground of opposition is established with respect to some of the class 37 and 42 services specified in trade mark application 2097448.

5. I am satisfied that the opponent has established the section 58 ground of opposition in regards to some of the applicant’s services. Therefore, I need to consider whether or not the opponent has established the remaining ground of opposition in relation to the remaining services in classes 35, 37 and 42.

   Section 60 - Reputation in Australia

   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.

6. To succeed on this ground, the opponent must establish as a matter of fact a reputation in a trade mark existing in Australia at the Priority Date. If a reputation in a trade mark is established, the opponent must then prove that because of the reputation in the mark relied on by the opponent, use of the Trade Mark in relation to the applicant’s services is likely to deceive or cause confusion.

7. The reputation in any trade mark relied upon by the opponent must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[21] but this is tempered by the nature of the relevant market. In the present case, the relevant market is large as a significant proportion of the Australian population are potential consumers of the sorts of services claimed by the applicant.

   [21] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin, Goldberg JJ); ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118] (Lockhart J).

8. The reputation must also be established as a matter of fact by the opponent[22].

   [22] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

9. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[23] or inferred from a high volume of sales,[24] advertising expenditure or other promotion.[25]

   [23] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

   [24] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

   [25] Ibid

10. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[26]

    [26] [2019] FCA 923, [83].

11. In the SGP, the opponent claim that the Trade Mark is identical to the opponent’s VIPC mark and that the opponent “has established a reputation from over three years of computer sales and service business with an online presence apparent through Google search and social media platforms, such as Facebook and Instagram. Awareness of the brand is garnered through organic search and advertising platforms, such as Google, Facebook, Instagram and Reddit, as well as being featured on manufacturer websites to direct traffic to the VIPC store.”

12. The opponent asserts that there exists a significant reputation in the VIPC mark as a result of the continued use of that mark for over 3 years in Australia. As discussed earlier, based on the opponent’s evidence there has been use of the opponent’s VIPC mark on limited computer services before the Priority Date in Australia.

13. Pages 46 to 49 of exhibit KN-1 accompanying Newton 1 contain a break down of the number of ‘hits’ to the opponent’s website from the top 100 locations around Australia for the years 1 July 2017 until 11 March 2022. The ‘hits’ are modest for the number of years that the opponent has been operating. A similar trend of modest numbers is seen with customer engagement through the opponent’s eBay® store, Instagram®[27] account and Facebook® page[28]. Pages 55 to 56 of exhibit KN-1 detail the expenses incurred by the opponent marketing his website and services. The marketing figures from 2017 until 2022 are modest, as are the opponent’s sales figures over the financial years 2017 until 2021[29]. I note that a substantial portion of the opponent’s evidence is dated after the Priority Date those figures and exhibits are of limited value in establishing a reputation within Australia at the Priority Date.

    [27] Pages 31 to 32 of exhibit KN-1 accompanying Newton 1

    [28] Pages 34 to 45 and 57 to 58 of exhibit KN-1 accompanying Newton 1

    [29] Page 71 of exhibit KN-1 accompanying Newton 1.

14. I do not consider that the modest sales evidenced at page 71 of exhibit KN-1 and the ‘hits’ to the opponent’s online social media pages or website demonstrate a significant number of Australian customers in the relevant computing market were aware of the opponent and his VIPC mark. In my assessment of the evidence, the opponent operates a small online business selling computer hardware and peripherals which is well regarded by the small number of clientele who have made purchases there. However, this does not amount to a reputation in the VIPC mark at the Priority Date amongst a significant number of persons in the relevant computer market sufficient to trigger section 60.

15. As I am not satisfied that the opponent had a reputation in the VIPC mark at the Priority Date amongst a significant number of persons in the computer marketplace, the section 60 ground of opposition is unsuccessful with respect to the applicant’s remaining services in classes 35, 37 and 42.

    Decision

16. 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.

17. I find that the opponent has met the onus upon him, in terms of the ground of opposition under section 58 in regards to some of the services in classes 37 and 42. Accordingly, I wrote to the applicant on 13 December 2023 advising them that I would provide them with two weeks in which to request an amendment to the class 37 and 42 services and delete the conflicting services from the Trade Mark specification. Namely:

    Class 37: Computer support services (installation of computer hardware and peripherals); Provision of information in relation to the installation of goods; Installation advisory services; Information technology (IT) services (computer and computer peripherals installation)

    Class 42: Computer support services (computer hardware and peripherals advisory and information services)

18. I advised that if this were done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to Registration pending any appeal from the opponent. The applicant has responded and requested an amendment that deletes the services in conflict.

19. Accordingly, I accept for possible registration trade mark application no. 2097448 in respect

    of the amended specification for services in classes 37 and 42 and all the services in class 35.

    Costs

20. It is usual for costs to follow the event, as both parties have been successful to some degree in their claims, I determined that each of the parties should bear their own costs.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    22 December 2023