Meta Platforms Inc v Mineralogy Pty Ltd
[2024] ATMO 25
•12 February 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Meta Platforms Inc to registration of trade mark application number 2186301 (all classes) – Ausface – in the name of Mineralogy Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Stephen Rebikoff of counsel instructed by King & Wood Mallesons Applicant: Ben Katekar SC and Rebecca De Stoop of counsel |
| Decision: | 2024 ATMO 25 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 59 and 60 pursued – none established – trade mark to proceed to registration |
Background
This decision concerns an opposition brought by Meta Platforms Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: Ausface (‘Trade Mark’)
Number: 2186301 (‘Application’)
Owner: Mineralogy Pty Ltd (‘Applicant’)
Filing date: 14 June 2021 (‘Relevant Date’)
Specification: All classes[1] (‘Claimed GS’)
[1] The Application’s specification is reproduced in Annexure A to this decision.
The acceptance of the Trade Mark for possible registration was advertised on 15 November 2021. The Opponent filed a notice of intention to oppose on 17 January 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 17 February 2022. The Applicant filed a notice of intention to defend on 12 April 2022.
The parties filed evidence in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) and an oral hearing was requested. Submissions were filed by the Opponent on 30 October 2023 (‘Opponent’s Submissions’) and by the Applicant on 6 November 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 13 November 2023. Stephen Rebikoff of counsel, instructed by Cate Nagy and Kelly Williamson of King & Wood Mallesons, presented submissions on behalf of the Opponent. Ben Katekar SC and Rebecca De Stoop of counsel, accompanied by Sam Iskander and Baljeet Singh, presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44, 59 and 60 of the Act. However, the Opponent’s Submissions stated that the s 44 ground was not pressed. As such, I treat that ground as abandoned.
To be successful, the Opponent bears the onus of establishing at least one of the above grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
[3] Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| Evidence in Support (‘EIS’) |
|
| Evidence in Answer (‘EIA’) |
|
| Evidence in Reply (‘EIR’) |
|
EIS
The Opponent ‘owns and operates Facebook, a world-famous social networking service, mobile application and website, which launched in February 2004’ and has been available to users in Australia since September 2006.[4] Mr Sousa explains that ‘[p]eople use Facebook to stay connected with friends and family, to discover what’s going on in the world, and to share and express what matters to them’ and ‘[u]sers can follow friends, family, celebrities, political figures and businesses to see their posts, share photos, videos, websites and other media’.[5]
[4] Sousa Declaration, [11].
[5] Ibid.
Facebook has grown rapidly since its creation with an average of 1.91 billion daily active users as at June 2021. The Opponent has offices in more than 80 cities worldwide including Sydney and Melbourne. It ‘offers an array of tools and features to help individuals and businesses connect with others on the Facebook platform’ and provides various ‘software applications to aid in communication and collaboration’.[6] As at the Relevant Date, the Facebook mobile application was ranked in ‘the top five apps overall in 36 countries for iPhone iOS’ and in ‘the top one hundred apps overall in 58 countries for Google Play’.[7] Ms Sousa notes that the Facebook website generally ranked as the second or third most visited website globally between 2011 and 2018.
[6] Ibid [17], [22].
[7] Ibid [28].
10. Mr Sousa declares that Facebook is ‘one of the world’s most prominent brands’ and its popularity has ‘resulted in thousands of media and pop culture references to the Opponent and its services’.[8] Exhibited to the Sousa Declaration are various brand reports ranking Facebook as one of the most valuable global brands as well as numerous publications referring to its ubiquity. Revenue figures of the Opponent’s global and Asia Pacific (which includes Australia) business together with the Opponent’s global marketing and sales expenditure figures between 2012 and 2021 have been provided. Whilst the figures disclosed are not ‘associated solely with the Opponent’s Facebook platform’,[9] even when zealously read down to accommodate this, they remain substantial by any reasonable measure.
[8] Ibid [16].
[9] Ibid [52]–[53].
11. As at May 2020, the word ‘Facebook’ was ‘protected worldwide via trade mark applications and registrations in more than 183 countries and 45 international classes’ and it ‘has been recognised as famous or well-known by various courts and trade mark offices in numerous jurisdictions across the world’.[10] The Opponent has several Australian trade mark registrations which incorporate the word ‘Facebook’[11] and the Registrar has previously ‘recognised the Opponent’s substantial reputation in [Facebook]’.[12] For example, in Facebook Inc v Northsword Pty Ltd (‘Northsword’),[13] the delegate found that the Opponent had ‘a very considerable reputation in its FACEBOOK trade mark in Australia at 19 February 2012 in relation to social networking services’.[14] Meanwhile, in Facebook Inc v Facemba Lda (‘Facemba’),[15] the delegate was satisfied ‘that as at 30 April 2012, the trade mark FACEBOOK used by the Opponent had [ac]quired a reputation in Australia in respect of social networking and other Internet platform services’.[16]
[10] Ibid [34], [36].
[11] See, eg, Australian trade mark registrations 1100642, 1101190, 1154693, 1211165, 1382068, 1411671, 1425810, 1452377, 1484391, 1576745, 1697723, 1846132, 1903096, 1906093, 2077322.
[12] Sousa Declaration, [41].
[13] [2014] ATMO 74 (‘Northsword’).
[14] Ibid [15].
[15] [2014] ATMO 83 (‘Facemba’).
[16] Ibid [22].
12. Mr Sousa points out that the ‘word “FACEBOOK” is defined by the Macquarie Dictionary’ as referencing the Opponent’s social networking service and website. He opines that this ‘is indicative of the widely known and exclusive association between [Facebook] and the Opponent’.[17] According to the Sousa Declaration, the Opponent ‘has been vigilant in protecting its rights in the FACEBOOK Mark against infringers’ and it ‘has successfully intervened to prevent registration of several trade marks incorporating the word FACE’ in Australia.[18] In Mr Sousa’s opinion, Facebook is ‘indisputably famous both worldwide and throughout Australia and is entitled to broad legal protection’.[19]
[17] Sousa Declaration, [35].
[18] Ibid [44], [51].
[19] Ibid [16].
13. The Warner Declaration puts into evidence copies of 47 search results obtained from the Australian Register of Trade Marks (‘Register’) for trade mark filings made by ‘Mineralogy’ or ‘Clive Palmer’[20] with a status of ‘lapsed’, ‘withdrawn’ and ‘pending’. The results reveal various trade mark applications were filed between 2012 and 2016. Search reports obtained for the domain names AusFace.com.au and AusFace.net.au are also provided. Ms Warner points out that ‘the earliest Whols record’ of the former is 15 June 2021 and the latter is 18 May 2022.[21] The Applicant is listed as the registrant for both domain names.
[20] Being a director of the Applicant.
[21] Warner Declaration, [12].
14. The Warner Declaration exhibits screenshots obtained from the website accessible at mineralogy.com.au. This website states that ‘[f]or over 20 years Mineralogy has been engaged in the exploration and development of mineral resources’ and ‘[t]he company was established by its founder Clive Frederick Palmer primarily to acquire and explore for iron ore’.[22] A ‘copy of the Applicant’s financial statement for the year ended 30 June 2020 from the Australian Securities and Investments Commission’ is also exhibited.[23] This document includes a report by one of the Applicant’s directors who states that the ‘principal continuing activities of the Group during the year were mineral exploitation, project development, investment, development of tenement mining rights and the operation, development and management of prospective mining infrastructure’.[24]
[22] Ibid [13].
[23] Ibid [16].
[24] Ibid Exhibit KMW-1, tab 8. The ‘Group’ is defined within the document as being the Applicant and its controlled entities.
15. The remainder of the Warner Declaration discusses the Facebook brand in Australia. Relevantly, Ms Warner states that an online database search ‘for articles in the category “Australia Top Newspapers” which include the word “FACEBOOK” and were published within the two-month period before’ the Relevant Date returned 1,449 results.[25] Similarly, Ms Warner declares to an awareness of ‘facey’ being ‘used in Australia as slang to describe the social media platform “Facebook” owned by the Opponent’.[26] Several internet search results and newspaper articles are provided to support this.
EIA
[25] Ibid [20].
[26] Ibid [21].
16. The Singh Declaration sets out information regarding Clive Frederick Palmer who is a director and sole beneficial owner of the Applicant. Relevantly, Mr Palmer ‘was elected as a Living National Treasure by the people of Australia’ in 2012 and was ‘elected as a Member of the House of Representatives of the 44th Parliament of Australia’ in 2013.[27] A Wikipedia entry for Mr Palmer states that ‘his net worth according to the Australian Financial Review (as at 2021) is $13.01 billion Australian dollars’.[28] Ms Singh claims that ‘[i]t is widely known in Australia that the Applicant is a company associated with and controlled by Clive Palmer’ and refers to internet search results which associate the Applicant with Mr Palmer.[29]
[27] Singh Declaration, [1(i)], [1(j)].
[28] Ibid [1(l)].
[29] Ibid [1(k)].
17. Ms Singh states that ‘[i]t has, since application, and remains the Applicant’s intention to use the [Trade] Mark’.[30] She asserts that the Applicant ‘caused the [Trade] Mark to be used on 14 June 2021 when the company then known as A.C.N. 119 455 917 Pty Ltd successfully requested the Australian Securities and Investments Commission (ASIC) reserve the company name “Ausface”’ and again, on 28 June 2021, when A.C.N. 119 455 917 Pty Ltd changed its name to Ausface Pty Ltd.[31] Likewise, it is claimed that the Applicant used the Trade Mark when it registered ausface.com, ausface.com.au, ausface.net, ausface.net.au and ausface.org (collectively ‘Domains’) on 14 June 2021.
[30] Ibid [2(a)].
[31] Ibid [4(b)] (emphasis omitted).
18. The Singh Declaration responds to the EIS. Relevantly, Ms Singh asserts that the marks considered in Northsword and Facemba are not analogous to the Trade Mark. She also emphasises that the ‘Applicant’s business is not limited to information contained on the website mineralogy.com.au’ and ‘there is no legal requirement nor is it customary for a privately owned company to provide the details of the entirety of its business activities or operations on a website’.[32]
[32] Ibid [1(h)].
19. The remainder of the Singh Declaration is essentially submissions which compare the Trade Mark with the word ‘Facebook’ and disputes the grounds of opposition nominated in the SGP. Ms Singh observes that ‘Aus’ is ‘commonly known in Australia as an abbreviation for “Australia”’ and it is defined in the Macquarie Dictionary as ‘Australian’.[33] She submits that Facebook and the Trade Mark are ‘very different in all respects’ and contends that the Trade Mark is suggestive of ‘something to do with Australia and a Face’.[34] Ms Singh also notes that, as at 12 October 2022, there were 584 registered trade marks on the Register ‘which include the word “face” as a word, prefix or the suffix’.[35]
EIR
[33] Ibid [3(e)].
[34] Ibid [3(d)], [3(j)].
[35] Ibid [6(e)].
20. The Nagy Declaration states that, as at 28 November 2022, ‘the server IP addresses could not be found for any of the [Domains]’ and only one of the Domains had been archived by the Wayback Machine but that screenshot displayed the text ‘Not found’.[36] Five pages of internet search results for the term ‘ausface’ are also exhibited. Ms Nagy observes that the results returned ‘do not indicate any results referring to Mineralogy Pty Ltd, Ausface Pty Ltd or Mr Clive Frederick Palmer’.[37]
[36] Nagy Declaration, [7]–[8].
[37] Ibid [10].
The Nagy Declaration brings into evidence various search results obtained from social media sites such as Instagram and Facebook. In short, the results indicate that no accounts, pages or uploads utilising the Trade Mark were posted by the Applicant, Ausface Pty Ltd or Mr Palmer. The Nagy Declaration also exhibits three news articles relating to Australian trade mark filings made by Mr Palmer for ‘Coolum Casino’ in 2012 and ‘The Australian Times’ in 2013.
Discussion
Section 59
22. Section 59 of the Act relevantly provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
23. This ground of opposition was relevantly particularised in the SGP as follows:[38]
Here, Application no. 2186301 covers goods and services in all possible classes (1-45) and in particular, covers the class heading for each of the 45 classes. Given this, the Applicant is claiming an intention to use the AUSFACE trade mark in relation to each and every good and service falling in classes 1-45. …
Based on the Opponent’s research to date, the Applicant has a website at The business is described as “engaged in the exploration and development of mineral resources”. This is a very niche market with a specialised customer base. Given the commercial focus of the Applicant’s business, it is unlikely that it will sell every kind of good and provide every kind of service as listed in its trade mark application. The research conducted to date also indicates that the Applicant has not used the AUSFACE trade mark in Australia in relation to any kinds of goods and services in Australia to date.
It can be reasonably inferred from the breadth of the specification that at the time of the filing of the application for the Opposed Mark, the Applicant did not intend to use, authorise the use of, or assign to a body corporate for use by that body corporate, the [Trade] Mark in respect of all of the goods and services included in application no. 2186301.
[38] Emphasis in original.
24. The date for assessing the Applicant’s intention to use the Trade Mark in Australia is the Relevant Date.[39] The nature of the intention was considered in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) wherein Jacobson J said:
In my view, the intention, or lack thereof, to which s 59 is directed, is a “real and definite intention” of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time …
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground.[40]
[39] Food Channel (n 2) [74].
[40] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [160]–[161] (citations omitted) (‘Health World’).
25. The act of filing an application gives rise to a presumption that the applicant intends to use the trade mark in respect of all the goods and services claimed.[41] As was explained in Bauer Consumer Media Ltd v Evergreen Television Pty Ltd:
Nothing in the Act or the Trade Marks Regulations 1995 (Cth) requires an applicant to state its intention, and the making of the application itself has long been regarded as prima facie evidence of intention to use … The burden falls upon an opponent to registration (or an applicant under s 92(4)(a)) to establish a relevant lack of intention on the part of the trade mark applicant a[t] the filing date. This may involve the consideration of the intention of the applicant having regard to any of his or her statements of intent, prior uses consistent or otherwise with that intention, and uses shortly after the filing date. The scope of the inquiry may be broad, but commences from the prima facie position set out in [Aston v Harlee Manufacturing Co [1960] HCA 47].[42]
[41] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).
[42] [2019] FCAFC 71, [247] (Burley J).
26. As such, merely nominating s 59 as a ground of opposition does not displace the presumption. Rather, to discharge its onus, the Opponent must establish a prima facie case that the Applicant lacked an intention to use the Trade Mark in relation to the Claimed GS in Australia at the Relevant Date.[43] As Jacobson J stated in Health World:
[T]here is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made …
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[44]
[43] Food Channel (n 2) [72].
[44] Health World (n 40) [162]–[163] (emphasis in original).
27. It has been recognised that ‘[o]nly a very low threshold has been set with regard to intention to use’[45] and it is ‘difficult for an opponent to discharge the onus it bears under s 59 of the Act’.[46] Circumstances in which a prima facie lack of intention has been established include ‘where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint’.[47] Likewise, a lack of intention has been found where ‘the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark’.[48]
[45] Food Channel (n 2) [67].
[46] Suyen Corporation v Americana International Ltd [2010] FCA 638, [212] (Dodds-Streeton J) (‘Suyen’).
[47] Ibid.
[48] Ibid.
28. However, the mere non-use of the Trade Mark does not, without more, provide a basis to infer a lack of intention to use.[49] While the focus of the inquiry is the Applicant’s intention at the Relevant Date, any subsequent use (or lack thereof) may assist in inferring whether the requisite intention existed.[50] If the Opponent establishes a prima facie case that the Applicant lacked the requisite intention on the Relevant Date, the evidentiary onus shifts to the Applicant to establish intention.[51]
[49] Ibid [207].
[50] Food Channel (n 2) [74].
[51] Health World (n 40) [163].
29. The Opponent contends that ‘the Applicant was clearly on notice that its intention to use the [Trade] Mark in respect of the [Claimed GS] was an issue in the proceeding’.[52] It points to the particulars detailed in the SGP as well as the evidence filed which indicates that the Trade Mark has not been used and the Applicant’s business is primarily concerned with mineral resources. Emphasis was placed on Ms Singh declaring to the Applicant’s ‘intention to use the mark without specifying any goods or services for which the mark is to be used and without providing any supporting evidence for that assertion’.[53] In the Opponent’s view, ‘the Applicant has clearly assumed the evidentiary burden of establishing an intention to use the [Trade] Mark in respect of the [Claimed GS], and has palpably failed to do so’.[54]
[52] Opponent’s Submissions, [16].
[53] Ibid [17].
[54] Ibid [17].
30. Furthermore, attention was drawn to the sheer breadth of the Claimed GS which appear ‘to have simply been copied from the class headings for each of the relevant classes from class 1 to class 45’.[55] The Opponent claims that the absence of any objective evidence to support the Applicant’s asserted intention is telling and opines that ‘[i]t would be practically impossible for any entity to provide, or even to intend to provide, all of those goods and services, or to intend to use or authorise the use of a single trade mark in relation to each of them’.[56] Finally, reference was made to the trade mark filing history of the Applicant and Mr Palmer which allegedly strengthens the ‘almost inescapable inference’ that the Applicant lacked the requisite intention to the use the Trade Mark at the Relevant Date.[57]
[55] Ibid [19].
[56] Ibid [21].
[57] Ibid [22].
31. For its part, the Applicant relies on the presumption that arises from the filing of the Application coupled with Ms Singh’s direct statement that the Applicant had (and continues to hold) an intention to use the Trade Mark at the Relevant Date. It submits that the Opponent has not established a prima facie case to shift the onus. Hence, the Applicant’s ‘stated intention to use is enough to meet the section 59 criterion’.[58] Regardless, the Applicant asserts that not leading ‘evidence of a plan of action in order to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention’.[59] Similarly, it contends that the breadth of the Claimed GS ‘does not speak of an absence of intention to use’ and notes that an opposition proceeding is not an appropriate time for the Registrar ‘to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in an applicant’s specification’.[60]
[58] Applicant’s Submissions, [19].
[59] Ibid [22].
[60] Ibid [25].
32. In my assessment, the Opponent has not established a prima facie case that shifts the onus. First, the non-use of the Trade Mark prior to or after the Relevant Date is not determinative of the Applicant’s intent nor, for that matter, is it unusual given ‘there may be good reason to defer use until the protection of registration is secured’.[61] While the mere registration of the company name ‘Ausface Pty Ltd’ and the Domains by the Applicant at the Relevant Date does not constitute use of the Trade Mark as a badge of origin, nonetheless it lends credence to the existence of an intention to use same.
[61] Suyen (n 46) [207].
33. Second, it does not follow from the Applicant directly expressing its intention to use the Trade Mark that it has assumed the evidentiary burden in this matter. Equating a responsive statement to an adoption of the evidentiary onus is not reasonable. This is particularly so given it is expected that such a statement would be forthcoming given the alternative of remaining silent may be perceived as consistent with a lack of intention to use.
34. Third, the designation of items across all classes within the Claimed GS is not, by itself, reflective of a lack of intention to use the Trade Mark. Although it is uncommon for a single application to designate items in all 45 classes, the Act does not impose any restrictions on the number of classes (or items within each class) that may be selected in a single application. Indeed, there are only explicit limitations prohibiting other terms including ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’ from appearing in a specification.[62] It follows that the Act permits the Applicant to claim disparate items in every class, provided each item is sufficiently particularised, and it possesses the requisite intention to use the Trade Mark in relation to same. As mentioned above, the latter arises by virtue of the Application being filed.
[62] Regulations reg 4.4(2).
35. As to alleged copying, it is true that the Claimed GS bear a strong resemblance to the class headings detailed in Schedule 1 of the Regulations. However, a cursory inspection of the Claimed GS reveals that certain additions and modifications have been made by the Applicant.[63] This distinguishes the present matter from Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd insofar as the evidence does not establish that the Claimed GS was copied from a third party registration or ‘conjured in a matter of minutes’.[64] Nor is there any evidence to suggest that the Claimed GS, as filed, included ‘a significantly broader range’ of items than what the Applicant had envisioned.[65] Consequently, the fact that the Claimed GS includes all classes and shares similarities to class headings does not provide a compelling basis to infer that the Applicant lacks the requisite intention to use same.
[63] See, eg, the items particularised in class 38 of the Claimed GS which extend well beyond the class heading of ‘Telecommunications’ that appears in Schedule 1 of the Regulations.
[64] [2023] FCA 999, [107] (O’Callaghan J).
[65] Ibid [103].
36. Fourth, I do not consider the trade mark filing history of the Applicant and Mr Palmer to be of particular significance in this instance. The evidence establishes that the Applicant and Mr Palmer are well resourced[66] and there is no suggestion that the trade marks were filed for illegitimate purposes. It is true that several applications have been filed for an eclectic range of trade marks which have not progressed to registration. In certain circumstances, this may indicate a lack of intention to use.[67] Equally, it may indicate a misapprehension as to the types of signs which are registrable under the Act. In any event, the Applicant has actively taken part in the examination and opposition stage of this Application which suggests an intention to use the Trade Mark.
[66] See Singh Declaration, Exhibits 4, 5 which indicate that the Applicant had a net income of ‘354 million AUD (2018 Audited)’ and Mr Palmer’s net worth is estimated as being 13.01 billion AUD.
[67] See, eg, Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18, [35].
37. Overall, the Opponent’s evidence largely relates to the Applicant’s stated business operations and search results which show the Trade Mark has not been used. I accept that the Applicant’s main operations, which focus on mineral resources, are seemingly incongruent with items in the Claimed GS. However, the Applicant enjoys the presumption arising from the act of filing the Application. The benefit of this presumption is not contingent on only a subset of classes being selected in an application. Here, the Applicant confirmed that it held an intention to use the Trade Mark in respect of the Claimed GS at the Relevant Date. Contemporaneous evidence supports the existence of this intention – namely, the registration of the company name and the Domains on the Relevant Date.
38. Considered in its entirety, the Opponent’s evidence provides no cogent basis to conclude that the Applicant’s intention was not bona fide or that the Application was filed for defensive, speculative or otherwise illegitimate purposes. Similarly, the Applicant has made no concessions as to its intended use and the EIA does not undermine its position.[68] Notably, as the Applicant highlights, ‘[the Opponent] does not contend that [the Applicant] (backed by Clive Palmer) does not have the resources to carry out the intention’.[69] In the circumstances, the Opponent’s case simply rises no higher than establishing non-use of the Trade Mark in relation to the Claimed GS. Accordingly, I am not satisfied that the Opponent has established a prima facie case sufficient to shift the onus.
[68] Cf Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 (O’Callaghan J).
[69] Applicant’s Submissions, [30].
39. The s 59 ground of opposition has not been established.
Section 60
40. Section 60 of the Act relevantly 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.
41. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
42. This ground of opposition was relevantly particularised in the SGP as follows:
The FACEBOOK trade mark has been continuously used and promoted in Australia since at least 2006.
In particular, the Opponent’s FACEBOOK name and trade mark are used extensively in connection with its online social networking service, online platform, mobile software applications, and in relation to numerous related goods and services, including but not limited to software including software for social networking, online applications, online photo and video sharing and editing services, telecommunication services, and the provision of advertising, marketing, and online networking services (collectively “the Goods and Services”) in Australia and throughout the world.
As a result of the continuous, longstanding and extensive use, advertising and promotion of the FACEBOOK mark in Australia and internationally, the Opponent has acquired a reputation in the FACEBOOK mark in Australia and internationally, including at the [Relevant Date] of the [Application]. As a result of this reputation, the use or registration of the [Trade Mark] by the Applicant for the goods and services covered by the application to register the [Trade] Mark, or for closely related goods and/or services, would be likely to deceive or cause confusion.
Accordingly, the Opponent relies solely on the reputation of its trade mark, being ‘Facebook’ simpliciter (‘Opponent’s Mark’), at the Relevant Date as the basis for this ground of opposition.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[70] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[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 ... .[71]
[70] [2000] FCA 1335, [81] (‘McCormick’).
[71] [1992] FCA 159, [118] (‘ConAgra’).
45. Further, Kenny J observed in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[72]
[72] McCormick (n 70) [86].
46. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[73] Meanwhile, the existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[74]
[73] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[74] ConAgra (n 71) [77].
47. In the present matter, the evidence establishes that the Opponent’s Mark had acquired a reputation amongst a significant number of Australian consumers in relation to online social media and social networking services. Widespread and extensive use of the Opponent’s Mark has been demonstrated in Australia and overseas before the Relevant Date. By way of example, there were 17 million active users of Facebook in Australia prior to the Relevant Date and Facebook was ranked as the number one social networking app in Australia as at the Relevant Date. The enormity of the revenue, marketing and sales figures disclosed reinforces the significant reputation of the Opponent’s Mark in Australia. Previous findings made by the Registrar remain applicable to the extent that the Opponent’s Mark has been characterised as having ‘an immense’ or ‘a very considerable’ reputation in Australia.[75] Even the Applicant accepts that the Opponent ‘has acquired a significant reputation in Australia in the word “Facebook”’.[76]
[75] See Meta Platforms Inc v Romanoff Roman Borysovych [2023] ATMO 83, [28]; Northsword (n 13) [15].
[76] Applicant’s Submissions, [31].
48. Pursuant to s 60(b) of the Act, consideration now turns to whether use of the Trade Mark would be likely to deceive or cause confusion because of the reputation enjoyed by the Opponent’s Mark.
Likely to deceive or cause confusion
49. The concepts of ‘deceived’ and ‘confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[77]
[77] [1979] RPC 410, 423 (citation omitted).
50. The ‘test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade’.[78] It has been observed that ‘the threshold for confusion is not high’.[79] Further, a ground of opposition under s 60 ‘is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. The question is purely one of prior reputation’.[80] Nevertheless, it has been recognised that:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[81]
[78] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O’Bryan J).
[79] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[80] Qantas Airways Ltd v Edwards [2016] FCA 729, [142] (Yates J).
[81] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original).
51. The Opponent contends that ‘face’ is a distinctive element of each mark and that ‘there is a real prospect that consumers would perceive the [Trade] Mark as indicating goods or services in some way connected or associated with the Opponent’.[82] The potential for confusion is said to be exacerbated by the fact that ‘Aus’ is descriptive of Australia and the Trade Mark will be used in relation to the same services for which the Opponent’s Mark has a significant reputation. Reference was made to Facebook Inc v One Eurofox TV S.R.L. (‘Eurofox’)[83] being a decision by the Opposition Division of the European Union Intellectual Property Office. The Opponent submits that Eurofox is instructive as it ‘held that the Opponent had a reputation in the FACEBOOK trade mark in the EU, and the trade mark EUROPE’S FACE and FACEBOOK were sufficiently similar, that the use of the EUROPE’S FACE trade mark should be refused’.[84] In the Opponent’s view, similar reasoning should apply to the present matter.
[82] Opponent’s Submissions, [46].
[83] EUIPO Opposition No B 3 062 484 (04/12/2019) (‘Eurofox’).
[84] Opponent’s Submissions, [48].
52. Conversely, the Applicant asserts that the significant reputation in the Opponent’s Mark ‘does not extend to the ordinary word “face” on its own, and certainly not to a mark (or any mark, as [the Opponent] effectively seems to contend) that includes the plain word “face” as a suffix’.[85] Further, it claims that ‘the particularly well-known nature’ of the Opponent’s Mark actually ‘tells against any sufficient likelihood of deception or confusion’.[86] That is, the significant reputation serves to diminish, rather than increase the potential for deception or confusion as consumers would be more likely to appreciate the differences between the marks. The Applicant is also critical of the evidence filed insofar as it does not establish any use of ‘face’ by itself nor does it provide any basis to find that the slang use of ‘facey’ could give rise to a reputation in ‘face’ simpliciter.[87] In the Applicant’s opinion, the Opponent’s Mark and the Trade Mark are different and the finding made in Eurofox does not assist the Opponent because the ground upon which ‘EUROPE’S FACE’ was rejected did not require a likelihood of confusion between the marks to be established.
[85] Applicant’s Submissions, [31].
[86] Ibid [38]–[39].
[87] Ibid [43].
53. The submissions advanced by the Applicant have considerable force. I agree that the baseline commonality of both marks incorporating the term ‘face’ is not sufficient to give rise to a likelihood of consumers being caused to wonder whether a trade connection exists between the relevant marks. The ‘face’ element in the Opponent’s Mark is a prefix conjoined to the term ‘book’. By contrast, ‘face’ operates as a suffix within the Trade Mark and is preceded by the term ‘Aus’. This structural difference is significant as it imports clear visual and aural dissimilarities between the marks. I accept that the prefix ‘Aus’ has a descriptive significance, however, it does not follow that it should be completely disregarded. Similarly, the presence of ‘book’ in the Opponent’s Mark must also be considered given it too is a ‘highly distinctive and unusual word’ when used in the context of social networking services.[88] It is important to recall that the evidence establishes the existence of a reputation in the Opponent’s Mark and not ‘face’ simpliciter.
[88] Northsword (n 13) [20].
54. With respect to Eurofox, this decision is not persuasive for three principal reasons. First, a decision from an overseas jurisdiction may be considered but it is not binding in Australia. Second, the mark ‘EUROPE’S FACE’ is not analogous to the Trade Mark. It does not consist of an abbreviation that has been run together with the word ‘face’ to form a unified word. Rather, ‘EUROPE’S FACE’ is presented as separate words in which emphasis falls on ‘FACE’ given the possessive apostrophe. Third, the ground of opposition under which the Opponent was successful in Eurofox did not require ‘a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public’.[89] Rather, it was only necessary to satisfy a lower threshold test of establishing ‘a link between’ the marks[90] and the decision acknowledged that ‘the similarity between the marks is quite low’.[91]
[89] Eurofox (n 83) 24.
[90] Ibid.
[91] Ibid (emphasis added).
55. Meanwhile, there is merit in the Applicant’s position that the significant reputation in the Opponent’s Mark weighs against any likelihood of deception or confusion occurring. In Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd,[92] Jessup J found that the respondent’s mark (i.e., ‘Maltesers’) had ‘a very widespread, solid, reputation in the area of packaged confectionery’ and it was ‘strongly embedded in the consciousness’ of many consumers.[93] Justice Jessup further observed that:
Indeed, with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.[94]
[92] [2015] FCA 1065.
[93] Ibid [28].
[94] Ibid [29] (emphasis added).
56. Here, the Opponent’s Mark also enjoys a widespread and solid reputation such that the significant reputation may in fact cause consumers to more readily appreciate the differences between the relevant marks.
57. Ultimately, the likelihood of deception or confusion is a mere possibility in circumstances where the trade marks are quite dissimilar. This is notwithstanding the fact that the Trade Mark may be used on the same social networking services for which the Opponent’s Mark has a significant reputation. Accordingly, I am not satisfied that there is a real, tangible danger that use of the Trade Mark would be likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers.
58. The s 60 ground of opposition has not been established.
Section 42
59. 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.
60. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law.[95]
[95] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
61. The Opponent’s Submissions identified ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as underpinning this ground of opposition.[96] Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
[96] Opponent’s Submissions, [56]. The allegation as to trade mark infringement nominated in the SGP was not pursued.
The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[97] As the Opponent has failed to establish the s 60 ground of opposition, it follows that the Opponent has likewise failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding regarding the assertion that use of the Trade Mark would be contrary to s 29 of the ACL.[98]
[97] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36].
[98] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
63. With respect to passing off, the observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[99]
[99] [1989] FCA 506, [40].
64. Section 18 of the ACL is the equivalent of s 52 of the TPA.[100] As I have found that s 18 of the ACL would not be contravened, I am satisfied that use of the Trade Mark would not amount to passing off.
[100] Primary Health Care Ltd v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J). His Honour observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.
65. The s 42(b) ground of opposition has not been established.
Decision
66. Section 55 of the Act relevantly 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.
67. The Opponent has not established a ground of opposition. Trade mark application 2186301 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 the registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
68. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
12 February 2024
Annexure A
Class 1: chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science
Class 2: paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art
Class 3: non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations
Class 4: industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.
Class 5: pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
Class 6: common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes
Class 7: machines, machine tools, power-operated tools; motors and engines, (except for land vehicles); machine coupling and transmission components, (except for land vehicles); agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines
Class 8: hand tools and implements (hand-operated); cutlery; side arms, except firearms; razors
Class 9: scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus
Class 10: surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles
Class 11: apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes
Class 12: vehicles; apparatus for locomotion by land, air or water
Class 13: firearms; ammunition and projectiles; explosives; fireworks
Class 14: precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments
Class 15: musical instruments; music stands and stands for musical instruments; conductors' batons
Class 16: paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks
Class 17: unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal
Class 18: leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals
Class 19: materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal
Class 20: furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber
Class 21: household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paint brushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware
Class 22: ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor
Class 23: yarns and threads, for textile use
Class 24: textiles and substitutes for textiles; household linen; curtains of textile or plastic
Class 25: clothing, footwear, headwear
Class 26: lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair
Class 27: carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile
Class 28: games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees
Class 29: meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yogurt and other milk products; edible oils and fats for food
Class 30: coffee, tea, cocoa and artificial coffee; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water)
Class 31: raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animal; malt
Class 32: beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages
Class 33: alcoholic beverages (except beers); alcoholic preparations for making beverages
Class 34: tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers’ articles; matches
Class 35: advertising; business management, organization and administration; office functions
Class 36: financial, monetary and banking services; insurance services; real estate affairs
Class 37: construction services; installation and repair services; mining extraction, oil and gas drilling
Class 38: telecommunications services; transmission of digital files and electronic mail; providing user access to global computer networks; radio and television broadcasting; video on demand transmission; providing internet chatrooms and online forums; telephone and voice mail services; teleconferencing and videoconferencing services
Class 39: transport; packaging and storage of goods; travel arrangement
Class 40: treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation
Class 41: education; providing of training; entertainment; sporting and cultural activities
Class 42: scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; design and development of computer hardware and software
Class 43: services for providing food and drink; temporary accommodation
Class 44: medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services
Class 45: legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals
and Edelman JJ).
Key Legal Topics
Areas of Law
-
Civil Procedure
-
Commercial Law
Legal Concepts
-
Abuse of Process
-
Stay of Proceedings
-
Res Judicata
-
Costs
1
4
0