Megaport (Services) Pty Ltd v NEXTDC Ltd
[2017] ATMO 107
•20 September 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Megaport (Services) Pty Ltd to registration of trade mark application 1677583(9, 16, 38, 42) - EXC - in the name of NEXTDC Ltd.
Delegate: | Katrina Brown |
Representation: | Applicant: Cameron Gascoyne of Clayton Utz Opponent: Matthew Hayes of AJ Park Intellectual Property |
Decision: | 2017 ATMO 107 Trade Marks Act 1995 – s 52 opposition – grounds pursued under ss 42(b), 44, 58, 60, 62A – none established – trade mark to proceed to registration. |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by Megaport (Services) Pty Ltd (‘the Opponent’) to the registration of the following trade mark:
Trade Mark No: | 1677583 |
Trade Mark: | EXC (‘the Trade Mark’) |
Applicant: | NEXTDC Ltd (‘the Applicant’) |
Filing Date: | 26 February 2015 |
Specification: | Class 9: Computers and data processing equipment; data security apparatus; data storage apparatus; data storage devices; electrical devices for storage of data; computer installations for the processing of data; computer installations for the storage of data; hardware facilities for the storage of data (‘the designated goods and services’) |
The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 23 July 2015.
The Opponent filed a Notice of Intention to Oppose on 23 September 2015 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 October 2015.
The Applicant filed a Notice of Intention to Defend on 1 November 2015.
In due course, the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 23 June 2017. Mr. Cameron Gascoyne of Clayton Utz represented the Applicant. The Opponent was represented by Mr. Matthew Hayes of AJ Park Intellectual Property.
Grounds of opposition and onus
In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. At the hearing, the Opponent’s representative confirmed that the ground of opposition under s 59 was not being pursued.
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].
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].
The relevant date at which the rights of the parties are to be determined is 26 February 2015 (‘the relevant date’) being the filing date of the Trade Mark.[3]
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.
Evidence
For their evidence, the parties rely on the following declarations:
Evidence in support
Declaration of Bevan Andrew Slattery (Director of the Opponent) made on 16 February 2016 with Exhibits BAS-1 to BAS-23 (‘Slattery Declaration’).
Evidence in answer
Declaration of Simon Cooper (Chief Operating Officer of Axon Systems Pty Ltd care of NEXTDC) made on 20 May 2016 with Exhibits SC-1 to SC-13 (‘Cooper Declaration’).
Evidence in reply
Declaration of Giulia Fimmano (Solicitor, AJ Park Intellectual Property) made on 15 August 2016 with Exhibit GF-1 (‘Fimmano Declaration’).
Declaration of Joshua Munro (Head of Services for the Opponent) made on 15 August 2016 (‘Munro Declaration’).
In its submissions for the hearing, the Applicant submitted that the Munro Declaration should be excluded on the basis that it is not replying to issues raised in the evidence in answer. The Munro Declaration was filed by the Opponent as part of its evidence in reply. This declaration consists of evidence of alleged market confusion since the launch of the Applicant’s services in 2015.
I am not persuaded that the Munro Declaration should be excluded. The evidence in support, evidence in answer and the evidence in reply all make statements in relation to confusion in the marketplace or lack of confusion in the marketplace. The chronology is as follows:
Evidence in support – [43] of the Slattery Declaration states that Megaport has received a number of telephone enquiries and enquiries at conferences where there has been confusion in the marketplace between EXC and VXC.
Evidence in answer – [11] of the Cooper Declaration states that Mr Cooper is not aware of any instances of confusion between the Applicant’s EXC services and the Opponent’s VXC services. He also declares that his understanding is that no one in the NEXTDC sales team is aware of any instances of confusion.
Evidence in reply – [3] of the Munro Declaration states that on a number of occasions Mr Munro has met with and spoken to new or potential customers who believe that VXC and EXC are the same thing, or that EXC is a service offered by Megaport that is related to its VXC service.
Paragraph 11 of the Cooper Declaration is in answer to [43] of the Slattery Declaration. Paragraph 3 of the Munro Declaration replies to [11] of the Cooper Declaration, albeit that the issue was initially raised in the evidence in support. Therefore, I will consider the Munro Declaration in deciding this matter.
The Applicant also asks for the evidence of marketplace confusion stated in [43] of the Slattery Declaration (paraphrased above at [12] of this decision) to be excluded on the basis that it is unsubstantiated. The weight given to this evidence will be discussed later in this decision in relation to the s 44 ground of opposition.
The Opponent
The Opponent is a special service company that was established for the purpose of holding the intellectual property of the Megaport Group. In Australia, the Opponent licences the use of its intellectual property to Megaport (Australia) Pty Ltd.
At paragraph [8] of the Slattery Declaration it is declared that:
The Megaport Group was founded in 2013 as a provider of “elastic connectivity and network services interconnection”. Megaport developed what it refers to as an “elastic connectivity platform” that provides customers interconnectivity with other networks and cloud providers connected to the platform.
Elastic connectivity and elastic fabric allows customers to increase and decrease their available bandwith and commitments in response to their own demand requirements, as opposed to being tied to fixed service levels on long term customer contracts.
The following trade marks are registered in the Opponent’s name in Australia:
| Trade Mark No. | 1571176 | 1571177 | 1571178 |
| Trade Mark | VXC | VIRTUAL CROSS CONNECT | VIRTUAL X CONNECT |
| Registration Date | 30 July 2013 | ||
| Specification | Class 38: Communication of data by means of telecommunications; Data transmission services over telecommunications networks; Digital network telecommunications services; Fibre optic telecommunications services; Hire of telecommunications installations; Operation of telecommunications systems; Operation of wide-band telecommunications networks; Optical fibre telecommunications services; Providing telecommunications connections to a global computer network; Provision of telecommunication facilities; Switching network services (telecommunications); Telecommunications; Telecommunications routing and junction services | ||
The Applicant
The Applicant is an Australian proprietary company with the primary function of developing, operating and providing what is referred to in the Cooper Declaration as the AVONVX service. The AVONVX service:
[p]rovides on-demand dynamic connections between data centre customers, carriers and cloud service providers. Typically, a data centre customer would have fixed connections to one or more carriers and cloud (or other) service providers. Such fixed connections are known as “cross-connects”, and have a fixed capacity which at times may be underutilised and at other times may be insufficient and usually require dedicated infrastructure used on a one-to-one basis…The AVONVX service allows customers to have dynamic connections, via a single AVONVX connection as a minimum, to carriers and cloud (or other) service providers, each of which can be quickly and easily provisioned and are elastic in that they can be scaled up or down (including to “off”) on demand. The Applicant has coined the term “elastic cross-connect” as the name for these dynamic cross-connects.[4]
[4] Cooper Declaration 2 [5.1].
The Cooper Declaration states that the Trade Mark was developed in February 2015 as a brand for the elastic cross-connect services which form part of the AVONVX service.
Section 58
Section 58 of the Act provides:
Applicant not the owner of the 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.
The term ‘owner’ is not defined in the Act. However it is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[5] in the course of trade in Australia in relation to the designated goods or services[6] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[7]
[5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.
[6] Seven Up Co v OT Ltd [1947] HCA 59.
[7] Re Hicks’ Trade Mark (1897) 3 ALR 75.
In the SGP the Opponent nominated trade mark number 1571176 (‘the VXC Trade Mark’) as the basis for its claim that the Applicant is not the owner of the Trade Mark. The details of the VXC Trade Mark are reproduced at [17] of this decision.
Given the meaning of the term ‘owner’ as stated at [21] of this decision, to make out this ground of opposition the Opponent must establish that:
the Trade Mark and the VXC Trade Mark are identical or substantially identical; and
the goods and or services that the Trade Mark and the VXC Trade Mark have been used in relation to are the same or can be considered to be the ‘same kind of thing’; and
the Opponent used the VXC Trade Mark prior to both the application to register the Trade Mark and any actual use of the Trade Mark in Australia by the Applicant.
Turning to the first requirement, it is evident that the Trade Mark and the VXC Trade Mark are not identical. The first letter of each trade mark is different: the Trade Mark begins with the letter ‘E’ and the VXC Trade Mark begins with the letter ‘V’.
My next consideration is whether the trade marks are substantially identical. The phrase ‘substantially identical’ is not defined in the Act. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:
[t]hey should, I think, be 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.[8]
[8] (1963) 109 CLR 407, 414.
The Opponent submits that the trade marks are substantially identical. The Opponent’s reasoning can be summarised as follows:
The trade marks have the same number of letters. The first letter of each mark, V and E respectively, is pronounced in a similar manner. When the similar sounding letters are combined with XC the overall impact is that the trade marks exhibit a high degree of visual, phonetic and aural similarity.
The Applicant submits that the trade marks are not substantially identical. The Applicant’s reasoning is that:
The letter “E” is aurally and visually different to the letter “V”.
Given that the Applicant’s Mark and the Opponent’s Mark each consist of only 3 letters that are likely to be pronounced individually, each letter is an essential feature of the respective trade mark. The first letter of each trade mark makes up the first syllable and is therefore particularly significant…The aural and visual differences between the first letter of the Applicant’s Mark and the first letter of the Opponent’s Mark means that the Applicant’s Mark and Opponent’s Mark are not substantially identical.[9]
[9] Applicant’s Hearing Submissions 4 [4.5].
In my opinion the Trade Mark and the VXC Trade Mark are not substantially identical. The trade marks begin with different letters of the English alphabet which cannot be overlooked in a side by side comparison. The significance of this difference is emphasised because neither trade mark can be pronounced as a word, rather each letter must be spoken separately. Additionally, the letter ‘E’ is not visually similar to the letter ‘V’. The letter ‘E’ is formed by a vertical line and three horizontal lines. The letter ‘V’ is formed by two diagonal lines which converge to form a point. I am not satisfied that a total impression of resemblance or similarity emerges between the Trade Mark and the VXC Trade Mark.
As such the ground of opposition under s 58 of the Act has not been established.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(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.
…
The Opponent must establish that the Trade Mark is substantially identical with or deceptively similar to a trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar and or closely related goods or services.
In support of this ground, the Opponent nominated the VXC Trade Mark in the SGP. In the submissions for the hearing, the Opponent also referred to trade mark numbers 1571177 VIRTUAL CROSS CONNECT and 1571178 VIRTUAL X CONNECT as the basis for the s 44 ground of opposition; these trade marks were referred to in the evidence in support but were not nominated in the SGP.
Of the trade marks put forward by the Opponent to support this ground of opposition, the VXC Trade Mark has the most similarities with the Trade Mark. If I am not satisfied that the requirements of s 44 are met in respect of the VXC Trade Mark, I will not reach a different conclusion in relation to trade mark numbers 1571177 and 1571178. As such, I will focus my comparison on the Trade Mark and the VXC Trade Mark.
The VXC Trade Mark is held in the Opponent’s name and therefore meets the requirement of being in a name other than that of the Applicant. The priority date of the VXC Trade Mark is 30 July 2013 which is earlier than that of the Trade Mark.
With respect to the goods and services, at this point it is sufficient for me to say that the Trade Mark and the VXC Trade Mark have the same and/or similar claims in class 38 for a variety of telecommunication, communication and data transmission services.
As expressed in relation to the s 58 ground of opposition, it is my opinion that the Trade Mark is not substantially identical to the VXC Trade Mark. The remaining consideration is whether the Trade Mark is deceptively similar to the VXC Trade Mark.
Deceptively similar
Section 10 of the Act defines a ‘deceptively similar’ trade mark as:
[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.
It is necessary to show that a real and tangible danger of deception or confusion exists between the relevant trade marks.[10] In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd Windeyer J provided the following insights on deceptive similarity:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[11]
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.
[11] [1963] HCA 66 [13].
The Opponent submits that the Trade Mark is deceptively similar to the VXC Trade Mark because:
There is a high degree of visual, phonetic and aural similarity between the marks. The marks therefore sound identical and look deceptively similar, regardless of the difference between the initial “V” and “E”.
Both marks leave the person with a general overall impression of the sound “ee-ex-see”. The aural difference between the initial sounds “vee” and “ee” is likely to be ignored or misheard when the mark is read or heard aloud. Consumers are likely to misremember or wonder whether EXC is connected in trade with VXC.
The essential feature of the VXC Mark is the letters V, X and C in combination. Consumers are likely to pronounce each letter in the VXC mark individually, as there is no other logical way to pronounce the mark. The EXC Mark includes as its primary feature a three-letter acronym also ending in –XC, with a slight difference in spelling that does not materially alter the pronunciation of the word, particularly if the word is slurred.[12]
[12] Opponent’s Hearing Submissions 8[40].
I agree with the Opponent that the Trade Mark and the VXC Trade Mark are both three letter acronyms which end in the letters ‘XC’. The trade marks begin with different letters of the English alphabet. The Trade Mark begins with the letter ‘E’ and the VXC Trade Mark with the letter ‘V’. I have explained the visual differences between the letters ‘V’ and ‘E’ earlier in this decision and I will therefore not discuss it again here.
I do not agree with the Opponent’s submission that the difference between the initial sounds is likely to be ignored. I note the following observations of Sargant LJ in London Lubricants (1920) Ltd’s Application:
The tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction.[13]
[13] (1925) 42 RPC 264, 279.
As pointed out by the Opponent, the VXC Trade Mark cannot be pronounced as a word; each letter must be pronounced individually, that is V-X-C. Logically, this also applies to the Trade Mark and consumers are likely to pronounce the individual letters E-X-C. The effect of this is that each letter is emphasized and it is therefore less likely that any of the letters in each of the trade marks would be ignored or slurred, let alone the first syllable.
The fact that the trade marks being compared in this matter are acronyms, which can’t be pronounced as words, is also the reason why I do not think that the cases put forward by the Opponent are analogous. To support its position, the Opponent pointed to the following decisions in which the trade marks were found to be deceptively similar.
| Case | Trade marks being compared | |
| Teka Industrial SA v Deka Australia Pty Ltd [2017] ATMO 47 | ||
| Volvo Trademark Holding AB v Timken UK Limited [2016] ATMO 91 | VOLVO | REVOLVO |
| Christian v Societe Des Produits Nestle SA (No 2) [2015] FCAFC 153 | MUSASHI | A-SASHI |
| Societe Internationale de Telecommunications Aeronautiques v Aerocom Technology Pty Ltd [2015] ATMO 102 | AIRCOM | AEROCOM |
In these cases it is logical to pronounce each of the trade marks as a word. In the matter before me the letters in each of the trade marks must be said individually; that is V-X-C or E-X-C.
It is important to note that the element/s in common, that is the letters ‘XC’, have descriptive relevance. The Applicant has provided evidence that establishes that ‘XC’ is an abbreviation for ‘cross connect’. For example exhibit SC-12 to the Cooper Declaration includes a screenshot from Acronym Finder “ that states that ‘XC’ stands for cross connect. From the evidence before me, it also appears that both parties use the letters ‘XC’ within their respective trade marks as an acronym for cross connect. For example, on 4 February 2014 the Opponent’s website[14] stated ‘A Megaport Virtual Cross Connect (VXC) is’[15] and a press release published on 13 October 2015 refers to the Applicant’s services as ‘Elastic cross connect (EXC)’.[16]
[14] Slattery Declaration Exhibit BAS-7.
[16] Cooper Declaration Exhibit SC-3.
In the Frigiking Trade Mark case, it was made clear that the court’s deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration’.[17] Matter which is common to the trade should be to some extent discounted in the comparison between two trade marks,[18] however it cannot be completely ignored.
[17] [1973] RPC 739, 752.
[18] Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 58 RPC 127.
As previously mentioned, the Opponent submits that there has been actual confusion in the marketplace between the Trade Mark and the VXC Trade Mark. The following is stated in [43] of the Slattery Declaration:
Megaport has received a number of telephone enquiries and enquiries at conferences where there has been confusion in the marketplace between VXC and EXC. Customers appear to confuse the two trade marks, due to their similarities in appearance and sound.
The Munro Declaration is made by the Opponent’s head of sales and states the following at [3]:
On a number of occasions, I have met with and spoken to new or potential customers who believe that VXC and EXC are one and the same thing, or that EXC is a service or product offered by Megaport that is related to the VXC service offered by Megaport. I believe that since the launch of Avon’s EXC service in 2015, I have spoken to approximately seven potential or new customers who expressed confusion and believed that VXC were one in the same thing, or believed that there was an affiliation between VXC and EXC.
The Opponent has not provided any documentary evidence to support these assertions. Furthermore the statements extracted above are imprecise. Paragraph [43] of the Slattery Declaration does not provide any details as to when the enquiries were received or the name of the person/s who made the enquiries and who at Megaport received said enquiries. The declarant goes on to state that ‘customers appear to confuse the two trade marks’, however it is not clear to me that this conclusion is as a result of what was said by the person/s making the enquiries (i.e. the person making the enquiry has stated ‘I am confused because the trade marks are similar’) or whether it is a conclusion that the declarant has reached on their own.
Likewise the Munro Declaration provides very little detail as to the specifics of the alleged market confusion. Importantly [3] of the Munro Declaration is not explicit as to the nature of the confusion. It does not state that new or potential customers were confused because of the use of the Trade Mark and the VXC Trade Mark. Customers may well have believed that there was an affiliation between the Applicant and Opponent because they offer very similar services. There is no evidence that the purported confusion was the result of the similarity between the trade marks.
Considering all of the above, I am not satisfied that the s 44 ground of opposition has been established.
Section 60
Section 60 of the Act provides:
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.
In McCormick & Co Inc v McCormick Kenny J referred to the Macquarie Dictionary and determined that ‘reputation’ for the purposes of s 60 is recognition by the public generally.[19] The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[20]
[19] [2000] FCA 1335 [81] (‘McCormick’).
[20] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].
To establish this ground of opposition, the Opponent must demonstrate that at the relevant date there was another trade mark that had acquired a reputation in Australia amongst a significant or substantial number of people. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.
In ConAgra Inc v McCain Foods (Aust) Pty Ltd Lockhart J said:
[r]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner...[21]
[21] (1992) 33 FCR 302, 343
In McCormick Kenny J stated:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[22]
[22] [2000] FCA 1335 [86].
The Opponent contends that the VXC Trade Mark had, before the relevant date, acquired a reputation in Australia amongst a significant or substantial number of people. In my opinion, the evidence before me does not prove this contention.
In the Slattery Declaration it is declared that the VXC Trade Mark was first used in Australia as early as July 2013. As such the Opponent claims approximately 20 months of use in Australia before the relevant date.
Mr Slattery also declares that the Opponent has over 200 active customers. No additional information is provided and as such I am unable to ascertain how many customers the Opponent had at the relevant date and whether the customers were within Australia or in other countries in which the Opponent operates.
Revenue generated from services sold in Australia under the VXC Trade Mark has been provided for the financial year 2014/2015. My understanding is that although the VXC Trade Mark was used as early as July 2013, the Opponent only commenced billing revenue from 1 July 2014. The revenue has been provided as a total amount for the financial year 2014/2015 and therefore may include revenue that was generated after the relevant date (i.e. revenue generated from 27 February 2015 to 30 June 2015). As the figure hasn’t been broken down into the revenue generated in each month, I cannot quantify the amount of revenue that had been generated at the relevant date.
In the Slattery Declaration, Mr Slattery declares that he believes the Opponent holds approximately 95% of the market share for cross connect services. I note that no evidence has been provided to support this assertion.
The approximate amount spent on marketing and advertising the VXC Trade Mark in Australia has been provided for the 2013/2014 and 2014/2015 financial years and the 2015/2016 financial year up to February 2016. The amount spent on marketing and advertising in the 2013/2014 financial year is not insignificant. The expenditure in the 2014/2015 financial year is substantially more than was spent in the previous financial year. However once again I am unable to quantify the amount spent in that financial year, as at the relevant date, because the expenditure for each month has not been provided. The expenditure in the 2015/2016 financial year is after the relevant date.
The Slattery Declaration provides examples of how the VXC Trade Mark has been used and promoted. Screenshots from the website “ generated through the Internet Wayback Machine have been provided. The VXC Trade Mark is visible on the screenshots dated 4 February 2014, 4 April 2014, 31 July 2014 and 13 January 2015, all of which are before the relevant date. Statistical data detailing the number of visits to this website has been provided for the period 14 September 2015 to 14 February 2016. This entire period is beyond the relevant date. Even if I were to take these statistics as indicative of what was happening as at or before the relevant date, it would only establish that a certain number of sessions originated in Australia. It would not establish that any of those sessions involved viewing pages on the website which contained the VXC Trade Mark.
Copies of brochures, flyers and information sheets containing the VXC Trade Mark have also been provided. It is declared that the brochures and flyers were distributed to new and existing customers in Australia and Singapore in 2013, 2014 and 2015 and that the information sheets were distributed in Australia in 2013, 2014 and 2015. The declarant has not indicated how many brochures, flyers or information sheets were distributed, nor have they indicated that the distributions made in 2015 were at or prior to the relevant date. In relation to the brochures and flyers distributed in Singapore, no information has been provided to indicate how this contributed to the reputation of the VXC Trade Mark in Australia.
Copies of advertisements containing the VXC Trade Mark have also been provided. In the Slattery Declaration it is declared that these advertisements were emailed to customers after the customer had visited Megaport’s stand at an Amazon conference in Las Vegas, USA in 2015. The date of the conference has not been provided and the advertisements are undated. It is therefore not clear that either of these activities took place before or at the relevant date. Furthermore, it is has not been explained how attendance at a conference in the USA contributed to the reputation of the VXC Trade Mark in Australia.
The Opponent has also provided images from the Megaport App. These images contain the VXC Trade Mark. The images are not dated and the Slattery Declaration does not provide any information to indicate that the Megaport App was available at the relevant date.
The evidence before me does not provide enough detail to allow me to quantify the reputation in the VXC Trade Mark at the relevant date. Therefore, I cannot be satisfied, as a matter of fact, that there was a reputation in the VXC amongst a significant number of people in Australia at the relevant date. As such, the first limb of the test for s 60 has not been met.
The s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[23]
[23] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].
The Opponent relies on ss 18, 29(1)(g) and 29(1)(h) of Schedule 2 to the Australian Consumer Law (‘the ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to passing off.
Schedule 2 of the ACL relevantly provides:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;
…
Section 18 and 29 of the ACL require conduct or representations that have been or are likely to mislead or deceive. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion. It follows that, on the stricter test posited by the ACL, use of the Trade Mark is not likely to mislead or deceive.
Similarly, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off.
The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
[T]he 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 the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[24]
[24] [1989] FCA 506 [40].
Section 18 of the ACL is essentially the equivalent of s 52 of the TPA. Therefore, the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.
Accordingly the s 42(b) ground of opposition has not been established.
Section 62A
Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Act does not provide any guidance as to the meaning of ‘bad faith’. In Fry Consulting Pty Ltd v Sports Warehouse (No 2) Dodds-Streeton J made the following observations:
[i]n my view, 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…
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[25]
[25] [2012] FCA 81 [13].
This ground of opposition is particularised in the SGP as follows:
By reason of the Opponent’s extensive reputation, or otherwise, the Applicant is or should be aware of the existence of the Opponent and the Opponent’s Registered Trade Mark being used in relation to the Opponent’s Registered Services.
The Applicant is using the Applicant’s Mark in relation to goods and services that are similar or closely related to the Opponent’s Registered Services.
By reason of the above, the Applicant appears to be trying to gain an unfair commercial advantage by using a mark that is similar to the Opponent’s Registered Trade Mark in relation to the Applicant’s Goods and Services in order to trade off the widespread commercial success of the Opponent.
…
A reasonable person standing in the shoes of the Applicant would have been aware that they ought not to have applied for the Applicant’s Mark in relation to the Applicant’s Goods and Services.
The Applicant’s conduct in filing the Applicant’s Trade Mark Application fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:
The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[26]
[26] [2009] ATMO 26 [12].
At the hearing, the Opponent did not make it clear what evidence they were relying on to establish this ground of opposition. From examining the Opponent’s evidence, it seems to me that they are relying on Exhibit BAS-22 and BAS-23 to the Slattery Declaration. Exhibit BAS-22 is a WhoIs search which shows Skeeve Stevens as the contact person for the Applicant. Exhibit BAS-23 is a PowerPoint presentation given by Skeeve Stevens at the Commsday Wholesale & Data Centre Summit Sydney 2015. Page 2 of this presentation contains dot points including, ‘Inspired by Megaports Launch in 2013’.
The Cooper Declaration at [6.3] states the following in relation to the association between Skeeve Stevens and the Applicant:
Mr Stevens was engaged by NEXTDC (through eintellego Networks Pty Ltd) as a consultant in the role of Chief Network Architect to assist in the development of the AVONVX service. Mr Stevens did not have any input to the development of branding of the AVONVX or EXC services. Mr Stevens was responsible for the technical aspects of registering and managing domain names based on branding decisions made by others.
Exhibit BAS-22 and BAS-23 to the Slattery Declaration in conjunction with [6.3] of the Cooper Declaration establish that a person who assisted with the development of the Applicant’s AVONVX service gave a presentation in 2015 which contained the dot point ‘Inspired by Megaports Launch in 2013’. It does no more than this. On its own it does not establish that the Applicant was unscrupulous or underhanded in applying for the Trade Mark.
I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to apply to register the Trade Mark as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.
Accordingly I find that the ground of opposition under s 62A of the Act has not been established.
Decision
Section 55(1) of the Act provides:
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.
The Opponent has not established a ground of opposition.
Accordingly trade mark application 1677583 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The parties sought costs. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Katrina Brown
Hearing Officer
Oppositions and Hearings
20 September 2017
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