Microsoft Corporation v Matthew James Kruger - [2004] ATMO 59

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Microsoft Corporation to registration of trade mark application 916764, 928259, 928261 & 929077(25, 28) - X KEEHOLE EXPLORER AND DEVICE, X DEVICE - filed in the name of Matthew James Kruger.

Delegate: Jock McDonagh

Representation: Opponent Trevor Stevens of Davies Collison Cave, Attorneys
Applicant No representation or appearance

Decision:
1. Section 52 opposition, s44 ground established, application refused

2. Costs awarded against applicant

Background

Matthew James Kruger, (“the applicant”) has filed application to register the following trade mark:

Application Number: 916764

Priority date: 19 June 2002

Goods:
Class 25 Clothing, footwear and headgear

Trade Mark:

Advertised: 17 July 2003

Application Number:

928259

Priority date: 25 September 2002

Goods:
Class 42 Design and development of computer hardware and software

Trade Mark:

Advertised: 1 May 2003

Application Number:

928261

Priority date: 25 September 2002

Goods:
Class 28 Games and playthings, sporting articles

Trade Mark:

Advertised: 20 March 2003

Application Number:

929077

Priority date: 2 October 2002

Goods:
Class 42 Design of computer hardware and software

Trade Mark:

Advertised: 1 May 2003

On 5 June 2003, Microsoft Corporation, a Washington USA corporation, (“the opponent”) filed a notice of opposition to application 928261 pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The opponent likewise filed notice of opposition on 24 July 2004 to applications 928259 and 929077, and on 14 October 2003 filed notice of opposition to application 916764.
Although the notices effectively pleaded all of the available grounds of opposition provided in the Act, the opponent primarily relied on section 44 of the Act. The opponent also placed secondary reliance upon sections 42, 43, 59 and 60 in the event that the section 44 ground was not upheld.
The conflicting mark relied upon for the section 44 ground is as follows:

Application Number:
867766

Priority date: 13 September 2000

Goods:
Class 9 Video game player machines for use with televisions and computers; electronic devices, namely computer hardware for accessing global computer and communication networks; computer hardware and peripherals; computer keyboards; computer and video game joysticks and game controllers; computer game pads and controllers; computer peripherals, namely computer mice and other pointing devices; computer software for playing video games and computer games and for accessing and browsing global computer and communication networks; computer software for compressing and decompressing data and video images, word text editing, and for composing, transmitting and receiving email; operating system software programs and utility programs for use with the above referenced machines; user manuals therefor sold as a unit therewith

Class16 Printed matter and publications, namely magazines, books, newsletters, manuals and journals in the fields of video and computer game industries, general video game and computer game information, and video and computer game hardware, software and related accessories; trading cards

Class 25 Shirts, vests, sweatshirts, sweaters, sweatpants, shorts, jackets, caps, bathrobes, night shirts, suspenders, coats, sweaters, sweatbands, scarves, gloves, mittens, socks, ties, visors, wrist bands, and pyjamas

Class…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] ATMO 59
Decision Date: 27 October 2004

CaseChat Overview and Summary

This matter concerned an opposition by Microsoft Corporation to the registration of four trade mark applications by Matthew James Kruger. The opposition was heard by Jock McDonagh, a Hearing Officer acting as a delegate of the Registrar of Trade Marks. The applicant was unrepresented at the hearing, and the only evidence before the Hearing Officer was filed by the opponent.

The primary legal issue before the Hearing Officer was whether the applicant's trade marks should be rejected pursuant to section 44 of the *Trade Marks Act 1995* (Cth). This required a determination of whether the applicant's marks were substantially identical with, or deceptively similar to, the opponent's registered trade mark, and whether the goods or services in respect of which the applicant sought registration were similar or closely related to those for which the opponent's trade mark was registered. The opponent's trade mark had an earlier priority date than the applicant's trade marks.

The Hearing Officer found that the opponent had established a ground of opposition under section 44. The opponent submitted that the goods for two of the applications were identical to those covered by the opponent's registration, and that the services for the other two applications were closely related to the opponent's registered goods. Given the opponent's success on this ground, the Hearing Officer acceded to the opponent's submission that no findings were necessary on any secondary grounds of opposition.

Consequently, the Hearing Officer refused to register the four trade mark applications. The Hearing Officer also awarded costs against the applicant in favour of the opponent, to be assessed according to the official scale.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Sydney on 19 July 2004. The opponent was represented by Mr Trevor Stevens of Davies Collison Cave of Sydney. The applicant was not represented at the hearing.Evidence The only evidence filed and served was evidence in support filed and served by the opponent. It comprised three declarations, virtually identical in content save as to references to the application opposed and date of execution. The details of the declarations are as follows: Section 44, in so far as it is relevant, reads:Identical etc. trade marks44.(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.Note 1: For deceptively similar see section 10.Note 2: For similar goods see subsection 14(1).Note 3: For priority date see section 12.(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.Note 1: For deceptively similar see section 10.Note 2: For similar services see subsection 14(2).Note 3: For priority date see section 12. The opponent's trade mark has a priority date of 13 September 2000, which is earlier than the applicant's trade mark. The matters for determination are therefore:(a)whether the applicant's mark is deceptively similar to the opponent's registered trade mark in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and (b)whether the opponent's trade mark is registered in respect of similar goods or closely related services to 916764 and 928261, or in respect of similar services or closely related goods to 928259 and 929077. The opponent submitted that the goods under applications 916764 and 928261 were identical to those under the opponent’s registration 867766. It was further submitted that the services under applications 928259 and 929077 were closely related to the opponent’s goods in class 9 under registration 867766.

Decision

Reasons for decision

At the hearing, the attorney for the opponent submitted that if I should conclude that the section 44 ground were made out, then the opponent considered that no account be taken of the further submissions n respect of the secondary grounds. Therefore, I accede to this submission and make no findings in respect of the remaining grounds.Decision The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful. Pursuant to section 55 of the Act, I refuse to register Application numbers 916764, 928259, 928261 and 929077.Costs The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.Jock McDonaghHearing OfficerTrade Marks Hearings27 October 2004

Ratio Decidendi

Legal Principle Established

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Application Number:	916764
Priority date:	19 June 2002
Goods:	Class 25 Clothing, footwear and headgear
Trade Mark:
Advertised:	17 July 2003
Application Number:	928259
Priority date:	25 September 2002
Goods:	Class 42 Design and development of computer hardware and software
Trade Mark:
Advertised:	1 May 2003
Application Number:	928261
Priority date:	25 September 2002
Goods:	Class 28 Games and playthings, sporting articles
Trade Mark:
Advertised:	20 March 2003
Application Number:	929077
Priority date:	2 October 2002
Goods:	Class 42 Design of computer hardware and software
Trade Mark:
Advertised:	1 May 2003