TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 2307501 (International Registration number 1689749) (classes 9, 16, 25, 28, 35 and 41) – ASTERIX & Device- in the name of LES EDITIONS ALBERT RENE
Delegate:
Anne Makrigiorgos
Representation:
Holder: Barry Newman of Armour IP Pty Ltd
Decision:
2024 ATMO 98
Trade Marks Act 1995 (Cth) – ex parte hearing – whether ground for rejection of application under s 44 – satisfied that use of trade mark is likely to give rise to deception or confusion – extension of protection to Australia refused for some goods in Class 9
Background
1. On 4 July 2022, LES EDITIONS ALBERT RENE (‘Holder’) applied to extend protection to Australia of International Registration number 1689749 designating Australia under number 2307501 (‘IRDA’) pursuant to the provisions of the Trade Marks Act1995 (Cth) and Trade Marks Regulations1995 (Cth).[1] The current details of the IRDA appear below:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).
Filing Date: 4 July 2022
Priority Date: 7 February 2022
Trade Mark: (‘Trade Mark’)
Specification: See Annexure A (‘Holder’s Goods and Services’)
2. The IRDA was examined as required under reg 17A.12. On 8 November 2022, IP Australia issued a Notification of Provisional Refusal of the IRDA identifying grounds for rejection pursuant to s 44. Four prior registrations were cited as objections to registration of the Trade Mark.
3. The Holder and this office engaged in further rounds of correspondence whereby none of the citation objections were overcome. The citation of the following registration in the name of Asterisk.Asterisk, LLC and the following three registrations in the name of Digium, Inc. were maintained (together ‘Cited Marks’):
Asterisk.Asterisk, LLC
Registration
Filing Date
Trade Mark
Specification
902211
4 February 2022
(‘221 Mark’)
Class 10: Braces, including, knee, wrist and ankle athletic braces for use in sports, being orthopaedic braces
Class 25: Wearing apparel, including, shirts, T-shirts, hats, caps, visors, shorts, pants, belts, shoes, swim shirts and socks
Digium, Inc
Trade Mark Number
Filing Date/Priority Date
Trade Mark
Specification
1076510
17 May 2005
(‘510 Mark’)
Class 9: Open source computer software that creates a public branch exchange telephone network that may be downloaded from a global computer network
1082525
19 April 2005
ASTERISK
(‘525 Mark’)
Class 9: Open source computer software that creates a public exchange telephone network branch, downloadable from a global computer network
(‘525 Goods)
1270916
17 June 2008
ASTERISK
(‘916 Mark’)
Class 9: Computer telephony software; computer telephony hardware
Class 42: Computer hardware and software development; technical support services, namely, troubleshooting of computer hardware and software problems
(‘916 Goods and Services.)
(‘Digium Marks’)
4. The Examiner considered the Cited Marks and the Trade Mark to be deceptively similar raising the Cited Marks in respect of the…
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Details
- AGLC
- LES EDITIONS ALBERT RENE [2024] ATMO 98
- Case
- [2024] ATMO 98
- Decision Date
CaseChat Overview and Summary
The matter before the Hearing Officer concerned an application for the extension of protection to Australia of an international registration (IRDA) by Les Editions Albert Rene. The dispute arose because the IRDA, which featured the trade mark ASTERIX, was considered deceptively similar to existing Australian trade mark registrations, specifically registration numbers 1082525 and 1270916 (the 525 and 916 Marks), for certain goods and services. The applicant sought protection for goods in Class 9, Class 25, and other classes, but the primary concern was the potential for confusion with the 525 and 916 Marks, which also related to computer software and hardware.
The central legal issue was whether the ASTERIX trade mark, as applied to certain goods in Class 9, was deceptively similar to the 525 and 916 Marks, thereby constituting a ground for rejection under section 44 of the Trade Marks Act 1995 (Cth). The Hearing Officer was required to assess the likelihood of deception or confusion among consumers, considering the visual, aural, and conceptual similarities and differences between the marks, as well as the nature of the goods and services and the sophistication of the relevant consumers. The applicant also sought to rely on evidence of reputation and prior use to overcome any finding of deceptive similarity, or alternatively, to have discretion exercised in their favour.
The Hearing Officer reasoned that while the ASTERIX trade mark, when viewed visually, includes a distinctive cartoon device, the word element "ASTERIX" is phonetically almost identical to the word "ASTERISK" present in the 525 and 916 Marks. It was noted that consumers often refer to the verbal component of a trade mark when ordering goods, and that the visual device of the ASTERIX mark did not sufficiently differentiate it from the word-only 525 and 916 Marks to prevent confusion. The Hearing Officer found that the consumers of the relevant Class 9 goods and services were not exclusively sophisticated and that a real danger of confusion or causing consumers to wonder about the source of the goods and services existed. Consequently, the Hearing Officer was satisfied that the ASTERIX mark was deceptively similar to the 525 and 916 Marks.
Ultimately, the Hearing Officer rejected the IRDA in part. The extension of protection was refused for the goods in Class 9 that conflicted with the 525 and 916 Marks, as the applicant's evidence of reputation was limited to children's literature and entertainment and did not demonstrate use in relation to the specific goods in question, nor did it satisfy the requirements for prior continuous use or honest concurrent use. However, the Hearing Officer accepted the IRDA for the applicant's goods in Class 25, finding no ground for rejection under section 44 in relation to those goods.
The central legal issue was whether the ASTERIX trade mark, as applied to certain goods in Class 9, was deceptively similar to the 525 and 916 Marks, thereby constituting a ground for rejection under section 44 of the Trade Marks Act 1995 (Cth). The Hearing Officer was required to assess the likelihood of deception or confusion among consumers, considering the visual, aural, and conceptual similarities and differences between the marks, as well as the nature of the goods and services and the sophistication of the relevant consumers. The applicant also sought to rely on evidence of reputation and prior use to overcome any finding of deceptive similarity, or alternatively, to have discretion exercised in their favour.
The Hearing Officer reasoned that while the ASTERIX trade mark, when viewed visually, includes a distinctive cartoon device, the word element "ASTERIX" is phonetically almost identical to the word "ASTERISK" present in the 525 and 916 Marks. It was noted that consumers often refer to the verbal component of a trade mark when ordering goods, and that the visual device of the ASTERIX mark did not sufficiently differentiate it from the word-only 525 and 916 Marks to prevent confusion. The Hearing Officer found that the consumers of the relevant Class 9 goods and services were not exclusively sophisticated and that a real danger of confusion or causing consumers to wonder about the source of the goods and services existed. Consequently, the Hearing Officer was satisfied that the ASTERIX mark was deceptively similar to the 525 and 916 Marks.
Ultimately, the Hearing Officer rejected the IRDA in part. The extension of protection was refused for the goods in Class 9 that conflicted with the 525 and 916 Marks, as the applicant's evidence of reputation was limited to children's literature and entertainment and did not demonstrate use in relation to the specific goods in question, nor did it satisfy the requirements for prior continuous use or honest concurrent use. However, the Hearing Officer accepted the IRDA for the applicant's goods in Class 25, finding no ground for rejection under section 44 in relation to those goods.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Visually, as a whole, the marks contain obvious differences. In contrast to the Trade Mark which consists of a visually striking. centrally positioned, cartoon character of a man with the invented word ASTERIX beneath, the 525 and 916 Marks consist solely of the well known word ASTERISK. Even allowing for imperfect recollection, the prominent device element of the Trade Mark cannot be disregarded. It is well established that the trade marks must be considered in their entirety.[40] [40] Clark v Sharp (1898) 15 RPC 141, 146.71. Aurally however, the words ASTERISK and ASTERIX are nearly phonetically identical. Given that ASTERIX is the only word in the Trade Mark, it is obvious that this element has greater relevance in an aural comparison of the marks. Further, as consumers will more naturally refer to a word when ordering a product where a trade mark combines a device with a word,[41] similarities between the verbal features of the marks may give rise to confusion notwithstanding that one of the marks has an accompanying device and the other does not.[42][41] Golden Crumpet Co Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147, 154 (Hearing Officer Nancarrow).[42] Plantmark Pty Ltd v Wal-Mart Stores, Inc [2003] ATMO 9 (Hearing Officer Skivington).72. Given the word elements in the trade marks are nearly phonetically identical, even though the Trade Mark has a visual difference namely the cartoon character device, in my opinion, this device element does not serve to sufficiently differentiate the marks and thus remove the likelihood of confusion or cause to wonder. The device element in the Trade Mark does not overwhelm the identity of the virtually phonetically equivalent word ASTERIX and thus the word elements of the marks will inform the basis for any recollection (imperfect or otherwise) of the trade marks by a potential purchaser.73. The context of the comparison is of course relevant and here that is purchasers of the 525 Goods, the 916 Goods and Services and the Holder’s class 9 goods. The Holder states that the consumers of goods of the 525 and 916 Marks are highly sophisticated users of communication technology and telephony software and would not be confused between the marks. While I agree with respect to the 525 Goods the 916 Goods and Services are in a different category. The 916 Goods and Services cover telephony computer software and hardware, computer hardware and computer software development services and troubleshooting of computer hardware and software problems. While consumers of these goods and services may include highly sophisticated users, I consider the broad markets for these goods and services are the average consumer. Based on my experience alone, I often require the services of a third party to troubleshoot computer hardware and software problems, including on my mobile phone.74. Thus, the consumers of the respective goods and services can be the same and cannot be described solely as either sophisticated or those that are more likely to take time to assess and research a product or service before purchase. Further, there is nothing to suggest that the Holder’s class 9 goods and the 916 Goods and Services are not requested verbally either instore or over the telephone.75. I am satisfied that a number of customers would be caused to wonder whether it might not be the case that the respective goods and services come from the same source.76. In light of the above, it is most likely that the respective marks will be notionally used both orally and visually in the normal course of the trade. When the respective marks are used orally they will be virtually indistinguishable from each other. Thus, when the Trade Mark is compared to the 525 and 916 Marks, the Trade Mark does not have sufficient aural differences to render confusion unlikely.77. Having assessed the visual, aural, and conceptual similarities and differences between the 525 and 926 Marks and the Trade Mark and the context described in the preceding paragraphs of this decision, and after giving weight to the possibility of imperfect recollection and therefore the possibility that consumers may not remember specific details of the respective marks, but instead may recall their general idea or appearance, I find there is a real, tangible danger of confusion. Therefore the Trade Mark is deceptively similar to the 525 Mark and the 916 Mark.78. The Holder did not submit that the application could proceed under the provisions of ss 44(3) and/or 44(4) of the Act which make provision for the Holder to overcome a s 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. The Holder did however submit a declaration made by Barry Newman on 22 March 2024 with Exhibits BSN-1 to BSN 4, BSN-6 to BSN-7 and Confidential Exhibit BSN-5. The declaration sought to provide evidence of the reputation of the trade mark ASTERIX throughout Australia and the world. I note that there is no evidence in the declaration of use of the ASTERIX mark or the Trade Mark in respect of any of the Subset Goods. Any evidence of reputation in the declaration is limited to children’s literature and entertainment, books, films, board games, video games and a theme park. The evidence is insufficient to support a claim to prior continuous use or honest concurrent use.79. As previously noted, the Holder is the owner of Australian trade mark registration number 401046 for the trade mark ASTERIX in Class 9. The filing date of this trade mark was 12 December 1983. I have given consideration as to whether this fact alone is an ‘other circumstance’ under s 44(3)(b). allowing me to exercise my discretion to protect the IRDA notwithstanding a real risk of deception or confusion. 80. I have nothing before me other than a registration filed over 40 years ago from which to consider the commercial realities which will make the protection of the IRDA proper. While it is clear the Holder has the earliest rights by a number of years, it may be that the Holder has, in these 40 years, never used the ASTERIX trade mark on any of the Subset Goods. 81. I am not satisfied that I should exercise my discretion under s 44(3)(b) when the degree of similarity between the trade marks and the goods and services is high and there is no evidence from the Holder of use of the ASTERIX mark in respect of any of the Subset Goods showing continuous use in Australia. As such, I cannot be satisfied that there are other circumstances which would make the application of s 44(3)(b) appropriate.Decision82. Regulation 17.24 states:Final decision on examination(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it.(2)The Registrar may accept the IRDA subject to conditions or limitations.(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it, in whole or in part.83. Pursuant to this regulation, I must accept the IRDA unless there are grounds for rejecting it under the Act. 84. As the Trade Mark is not substantially identical or deceptively similar to trade mark registration number 902211, I am satisfied that no ground for rejection under s 44 applies to the Holder’s class 25 goods and therefore I accept the IRDA for possible extension of protection in Australia in respect of the Holder’s goods in class 25.85. As the Trade Mark is deceptively similar to trade mark registration numbers 1082525 and 1270916, the Subset Goods conflict with the goods and services of these registrations and s 44(3)(a) and (b) do not apply, I am satisfied that a ground for rejection under s 44 applies to the Subset Goods, which as a consequence are rejected. For clarity, the rejected goods are:Class 9: Apparatus for sound or image recording, transmission, storage, reproduction; computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; data processing equipment and computers and peripherals therefor; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; telephony devices86. If, however, the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the application be in accordance with the Court’s direction or order.Anne MakrigiorgosHearing OfficerOppositions and HearingsTrade Marks and Designs22 May 2024Annexure AClass 9: Apparatus for sound or image recording, transmission, storage, reproduction; interactive and non-interactive magnetic recording media; computer applications in the field of comics, information and education; downloadable mobile applications in the field of comics, information and education; holograms; animated films and cartoons; cinematographic films; data processing equipment and computers and peripherals therefor; pre-recorded game programs; interactive multimedia software; video game software; software for provision of access to a computer or data transmission network, particularly to a global communication network (such as the Internet) or to a private or restricted network (such as an intranet); downloadable electronic publications; software for downloading, accessing, publishing, displaying, tagging, blogging, broadcasting, linking, sharing or otherwise providing electronic content or information via computer and communications networks in the field of comics, information and education; eyewear; telephony devices; fire extinguishers.Class 16: Printing products (printed matter); posters, postcards, books and particularly children's books and books for young people, newspapers, periodicals, magazines; comic strips; calendars and agendas; photographs; lithographs; stationery; writing paper, envelopes [stationery], printed invitations; adhesives for stationery or household purposes; artists' materials; paintbrushes; instructional or teaching material (except apparatus); writing instruments; rubber erasers; stickers; transfers (decalcomanias); plastic materials for packaging (not included in other classes); stamps; paper napkins and tablecloths; printing type; printing blocks; coloring books.Class 25: Clothing, footwear, headwear.Class 28: Games; toys; stuffed toys, puppets and figurines (toys); playing cards; parlor games; jigsaw puzzles; game apparatus other than those adapted for use with an external display screen or monitor; play balloons; novelties for parties; gymnastic and sports articles not included in other classes; theme park attractions and rides; ornaments for Christmas trees (except illumination articles).Class 35: Advertising and publicity promotion; marketing services; commercial business management, particularly via the Internet (e-commerce); administrative services in the context of drawing up and concluding franchising contracts and operating contracts for theme parks [arranging contracts for provision of services for third parties]; merchandising activities; sales promotion for others; public relations services; newspaper, magazine and periodical subscription services; dissemination of advertising material (leaflets, prospectuses, printed matter, samples); assistance and consulting relating to advertising and promotional advertising, marketing and company communication; organization of events and exhibitions for commercial, promotional and advertising purposes.Class 41: Education; training; entertainment services in the form of amusement parks and theme parks; providing amusement parks and theme parks; production of shows for amusement parks and theme parks; publication and editing of books, comic strips, newspapers and periodicals; on-line publishing services; services provided by clubs dedicated to comic strip characters [entertainment]; games and competitions organization and services (education or entertainment); organization of exhibitions for cultural or educational purposes; organization and conducting of training workshops; design, direction, production, post-production, editing, mixing, distribution and performance of audiovisual programs, films for the cinema and television, animated cartoons, radio programs and shows; entertainment, including audiovisual, multimedia, radio entertainment and entertainment via global communication networks (the Internet) or private or reserved access networks (Intranet); sports training and fitness services; animal training.
Ratio Decidendi
Legal Principle Established
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