Lenovo (Singapore) Pte Ltd v Reza Najafi

[2023] ATMO 128

TRADE MARKS ACT 1995

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

Re:Opposition by Lenovo (Singapore) Pte Ltd to registration of trade mark application 2071042 – ThinkBased The Future Starts Here and device  – in the name of Reza Najafi

Delegate:

Bianca Irgang

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: Self represented

Decision:

2023 ATMO 128

Trade Marks Act 1995 (Cth) - section 52 opposition – ss 42, 44, 58 and 60 grounds of opposition considered – deceptively similar – evidence not sufficient to apply ss 44(3) or (4) – s 44 established – trade mark refused.

Background

1. Reza Najafi (‘the applicant’), filed trade mark application number 2071042 on 22 February 2020 in class 42 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:         2071042

Filing Date:  22 February 2020

Specification:  Class 42: Computer technology consultancy; Creating and designing website-based indexes of information for others (information technology services); Information services relating to information technology; Information technology (IT) consultancy; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Information technology services provided on an outsourcing basis; Providing information relating to computer technology and programming via a web site; Provision of information relating to information technology; Research in the field of telecommunications technology; Research relating to technology; Telecommunications technology consultancy; User authentication services using single sign-on technology for online software applications; User authentication services using technology for e-commerce transactions; 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 software consultancy; Computer software design; Computer software development; Computer software engineering; Computer software programming services; Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Consultancy in the design and development of computer software; Design and development of computer software (for others); Design of computer software; Development of computer software; Development of computer software application solutions; Development of software; Diagnosis of faults in computer software; Hosting of software as a service (SaaS); Installation and maintenance of computer software; Installation of computer software; Installation of middleware (software); Installation, repair and maintenance of middleware (software); Maintenance of computer software; Online provision of web-based software (non-downloadable); Providing information, including online, about design and development of computer hardware and software; Provision of online non-downloadable software (application service provider); Rental of computer software; Rental of games software; Repair of computer software; Software as a service (SaaS); Software creation; Software development in the framework of software publishing; Software engineering; Updating of computer software; Upgrading of computer software; Writing of computer software; Industrial research; Preparation of reports relating to scientific research; Preparation of reports relating to technical research; Preparation of statistics for scientific research; Research into new products; Research relating to agriculture; Research relating to computer programming; Technological research; Computer security engineering; Cryptocurrency engineering; Electrical engineering services (design); Engineering; Engineering design; Engineering research; Engineering services relating to computer programming; Engineering services relating to computers; Engineering surveying; Engineering testing; Technical engineering; Technological engineering analysis

1. Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks on 23 July 2020. Subsequently Lenovo (Singapore) Pte Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

2. The applicant then filed its Notice of Intention to Defend. Thereafter, both parties filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’). In due course a decision on the basis of the written record was requested.

3. The matter was heard by way of written submissions. The opponent provided written submissions for consideration by way of its legal representatives Davies Collison Cave Pty Ltd. The applicant did not provide any written submissions for consideration.

Grounds of Opposition

1. The SGP nominated grounds of opposition under sections 44, 58, 60 and 42(b) of the Trade Marks Act 1995 (Cth) (‘the Act’). 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]

   [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

1. The evidence filed in this matter consists of the following declarations:

Opponent’s evidence

• Declaration of Becky Williams, Senior Counsel and Director of Trade Marks for the Opponent, made on 17 March 2021 accompanied by Exhibits A1 to E2

• Declaration of Becky Williams, Senior Counsel and Director of Trade Marks for the Opponent, made on 31 August 2021 accompanied by Exhibits A and B

Applicant’s evidence

• Declaration of Reza Najafi (‘Najafi declaration’), the applicant, made on 15 June 2021 accompanied by exhibits A1 to A4

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

   44  Identical etc. trade marks

(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.

1. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

• the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

• the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

1. As particularised in the SGP, the opponent is the registered owner of 15 trade mark registrations listed in support of its section 44 ground of opposition[3]. The details of the trade mark registrations in support of the section 44 ground of opposition are as follows:

   [3] I note that in July 2021 the opponent assigned many of these trade mark registrations to Lenovo PC International Limited.

Number	Class(es)	Trade Mark	Priority Date
547656	9	THINK PAD	29 June 1990
547657	16	THINK PAD	29 June 1990
644889	18	THINKPAD	18 May 1994
935359	9, 16	THINKCENTRE	26 August 2002
935360	9, 16	THINKVANTAGE	26 August 2002
1154449	9, 16, 38, 41, 42	THINKSTATION	21 December 2006
1220783	9	THINKSERVER	22 January 2008
1815914	9	THINKSYSTEM	17 August 2016
1845552	9	THINKAGILE	28 February 2017
1917982	9, 38, 42	THINKSMART	7 December 2017
1965961	9	THINKSHIELD	4 October 2018
1986217	9	THINKREALITY	7 December 2018
2012652	9	THINKBOOK	16 November 2018
2265962	9, 42	THINKEDGE	23 March 2022
2320533	9	THINKPHONE	20 September 2022

1. The Opponent also relies on the following marks filed in the name of its related entity, Lenovo Group Limited, in Australia:

Number(s)	Class	Trade Mark	Priority Date
1048999	9, 35, 37, 42	THINKPLUS	4 April 2005
1050132	35	THINKSTORE	11 April 2005

1. The opponent’s listed trade mark registrations all (except trade mark registration nos. 2265962 and 2320533) have an earlier priority date to the Trade Mark.  

2. The opponent’s states that various listed trade mark registrations (collectively ‘the THINK marks’) have a direct overlap in the class 42 services and that those goods listed in class 9 are closely related goods to those IT services that relate to the Trade Mark. For example, the class 9 goods “computer hardware and computer software” under the opponent’s various THINK marks are the subject matter directly dealt with by the class 42 services “computer support services (computer hardware, software and peripherals advisory and information services)” under the Trade Mark. These goods and services are complementary and are typically provided through the same trade channels and consumed in the same circumstances and transactions[4]. This is particularly relevant with the direct overlaps in specification for trade mark registrations no. 1154449 THINKSTATION, 1917982 THINKSMART and 1048999 THINKPLUS and the Trade Mark. Therefore, the first two requirements of section 44 have been established.

   [4] Pianotist’s Application (1906) 23 RPC 774 at 777

3. The remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the previously registered trade marks put forward by the opponent. It is obvious that the various THINK marks are not substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5]. While the respective trade marks all contain the prefix ‘THINK-’ this is where the similarities between them end. They each have a different suffix which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity.

   [5] (1963) 109 CLR 407, 414.

4. I now consider whether the Trade Mark is deceptively similar to the opponent’s family of THINK marks. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[6] The probability of deception must be finite and non-trivial.[7]

   [6] Ibid 415

   [7] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

5. The opponent submitted that given the number of trade mark registrations owned by the opponent which incorporate the prefix THINK- it follows that consumers who know of the opponent’s THINK marks upon seeing the services bearing the Trade Mark are likely to believe that the services come from the same trade source or are related to products bearing the opponent’s THINK marks. It is then to be considered whether it is likely that deception or confusion could occur through ‘conceptual confusion’ whereby the common element in all the trade marks may induce traders and the public into believing the marks emanate from the same trade source.[8]

   [8] John Fitton & Co. Ltd’s Application 66 RPC 110, [113] (Assistant-Comptroller Chisholm).

6. The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[9] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

   With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks “Jests” and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element “Jest” in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

   [9] Ibid.

7. Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that “ThinkBased The Future Begins Here with device” would be seen as a member of the ‘family’ of THINK trade marks of the opponent because of a commonality that has been produced by the mutual feature ‘Think’.

8. As already discussed, the word THINK is the common element in all the trade mark representations. I note the addition of the slogan “The Future Begins Here” in small font along the bottom of the Trade Mark and the addition of the light bulb device. These are visual and aural different which preclude the respective trade marks from being substantially identical. The opponent has argued:

   (a) The term “ThinkBased” is the most visually striking component of the [Trade] Mark. Further, the separation of “Think” and “Based” into two distinct words is emphasised by the capitalisation of the letters T and B. This highlights the use of “Think” as a prefix and the dominant element. While the Trade Mark also contains a device, this is likely to be regarded as an embellishment or decorative element, and will not outweigh the visual significance of the textual element “ThinkBased” and its prominent prefix “Think”. It is also evident, from the disparity in the font sizes, that “ThinkBased” rather than the tagline “The Future Starts Here”, is intended to be the visual focal point.

   (b) From an aural perspective, consumers are likely to refer to the Trade Mark by the term “ThinkBased”, wherein “Think” is the first element to be verbalised. It is highly unlikely that consumers would aurally refer to the Opposed Mark by the device or the tagline which appears in a significantly smaller typeface.

   (c) Conceptually, “ThinkBased” refers to something that is based on subject matter identified by the prefix “Think”. This enhances the conceptual significance of the “Think” element. Further, the ordinary meaning of “ThinkBased” suggests that the services under the Opposed Mark originate from a range of product offerings that would be identified by the brand “THINK”. The word “Based” does not carry any unusual meaning that would outweigh the inherent distinctiveness of “Think”. The lightbulb device and tagline “The Future Starts Here” also do not carry any distinctive meaning that would diminish the meaning of “ThinkBased”. In fact, lightbulbs are symbols of ideas and thoughts, which reinforces the “Think” prefix in the Opposed Mark.

9. The opponent’s arguments are persuasive. The Trade Mark contains additional elements but it is structured in such a way that it is likely that the common element, THINK, in all the THINK marks will induce traders and the public into believing that goods and branded with the trade marks emanate from the same trade source.[10] Although the trade marks look different when viewed side by side, marks are often imperfectly remembered by prospective purchasers. They may have a general impression, in this case of the trade mark registrations incorporating the prefix “THINK”, and consequently become confused as to the origin of the services when faced with the Trade Mark, particularly when the marks are applied to the same or similar services or closely related goods.

   [10] Ibid

10. I am satisfied that there is a real tangible chance of these trade marks being confused in the marketplace in respect of the services in class 42. Therefore, the opponent has established a ground of opposition under the provisions of section 44. However, establishing a section 44 ground of opposition is not necessarily fatal to the application. Paragraphs 44(3) and 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

11. In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the established section 44 ground of opposition I turn to the applicant’s evidence. From the outset I do not doubt the honest adoption of the Trade Mark by the applicant but the applicant’s evidence is very limited in establishing any use he has made of the Trade Mark on his IT services.

12. I note that Exhibit A3 accompanying the Najafi declaration contains a copy of an ASIC certificate of registration for the business name “Think Based” in the applicant’s name dated 9 February 2020. Similarly, Exhibit A4 contains a copy of a certificate of registration of the business name “ThinkBased” in the Netherlands in the applicant’s name dated 8 April 2019. However, the registration of business names does not demonstrate use of the Trade Mark. The Najafi declaration makes many statements and arguments that disagree with the opponent’s evidence but these are unsupported assertions which do not assist the applicant’s case.

13. Seemingly, Mr Najafi has used the Trade Mark in some capacity, however, without documentary evidence of use of the Trade Mark within Australia or any other circumstances, there is nothing before me in these proceedings which would allow me to accept the Trade Mark under the provisions of s 44(3) or (4) of the Act. I find that the opponent has established the section 44 ground of opposition and that the applicant has been unable to overcome it.

Decision

1. Section 55 of the Act relevantly 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:          For limitations see section 6.

1. The opponent has established the section 44 ground of opposition in the terms it pursued, therefore it is successful in this opposition. Accordingly, I refuse to register application 2071042.

Costs

1. 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

Trade Marks and Designs

29 August 2023