Mobileciti Pty Ltd v Glotech Services Limited

[2013] ATMO 67

TRADE MARKS ACT 1995

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

Re:Opposition by Mobileciti Pty Ltd to registration of trade mark application 1350277(35) - MOBICITY AND DEVICE - filed in the name of Glotech Services Limited.

and

Opposition by Glotech Services Limited to registration of trade mark applications 1365187(35) – MOBILECITI AND DEVICE and 1365192(35) - MOBILECITI - filed in the name of Mobileciti Pty Ltd.

Delegate:

Nicole Worth

Representation:

Mobileciti Pty Ltd: Dimitrios Eliades of Counsel, instructed by Go Trademarks, Trade Mark Attorneys

Glotech Services Limited: Ben Fitzpatrick of Counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys

Decision:

2013 ATMO 67

S52 opposition: 1. 1350277 – grounds pursued under sections 60, 42 and 62A - section 60 established - registration refused.

2. 1365187 & 1365192 – grounds under sections 60 and 42 pursued – neither ground established – applications to proceed to registration.

Background

1. These are proceedings pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) wherein Mobileciti Pty Ltd (‘Mobileciti’) has opposed the registration of trade mark application 1350277 filed in the name of Glotech Services Limited (‘Glotech’), and Glotech has opposed the registration of trade mark applications 1365187 and 1365192 filed in the name of Mobileciti. The evidence served and filed in each opposition is largely the same, the main difference being whether it has been cast as evidence in support or evidence in answer, and the matters were argued before me at a single hearing. Such proceedings are referred to as ‘cross-oppositions’ and it is convenient to issue a single decision in relation to all three oppositions.

2. The relevant details of the opposed applications are shown in the following table:

TM Application 1350277

TM Applications 1365187 & 1365192

Owner: Glotech Services Limited

Owner: Mobileciti Pty Ltd

1365187:             

1365192:             MOBILECITI

Priority date: 24 March 2010

Priority date of both applications: 4 June 2010

Services: “Retail services” in class 35

Services of both applications: “Retail sales and discount services (retail and wholesale) (by any means) of mobile phones, mobile devices, phone and internet plans, computers, electronic, toys and games, and all related accessories” in Class 35.

1. Following the advertisement of acceptance of the applications, the relevant opponents filed notices of opposition. Mobileciti’s notice of opposition in respect of application 1350277 nominated grounds of opposition under sections 58, 60, 41, 42, 43 and 62A of the Act, and Glotech’s notice in respect of applications 1365187 and 1365192 nominated most of the grounds available under the Act to oppose registrations of an application.

2. After the filing and service of evidence, described further below, the matter came for hearing before me, as the Registrar’s delegate, on 4 June 2013. Ben Fitzpatrick, of Counsel, made submissions on behalf of Glotech and Dimitrios Eliades, of Counsel, made submissions on behalf of Mobileciti.

Evidence

1. The evidence in respect of the opposition to application 1350277 comprises:

   Evidence in support: statutory declaration of Aaron Huang, General Manager of Mobileciti, declared 17 February 2011 with exhibits AH-1 to AH-23 (‘Huang 1’).

   Evidence in answer: statutory declaration of Darren Bell, “representative” of Glotech, declared 25 November 2011 with confidential exhibits 1 to 4 and exhibits 5 to 8.

   Evidence in reply: statutory declaration of Aaron Huang declared 20 February 2012 with exhibits AH-A to AH-M.

   Further evidence of Mobileciti: statutory declaration of Glen Paoletto, attorney for Mobileciti, declared 12 September 2012 with exhibits GP-1 to GP-5 (‘Paoletto 1’).

   Further evidence of Glotech: statutory declaration of Dawn Logan Keeffe, attorney for Glotech, declared 4 December 2012 with exhibits DLK-1 to DLK-4.

   Second further declaration for Glotech: statutory declaration of Dawn Logan Keeffe declared 28 May 2012 (the date appears to be a typographical error which should read 28 May 2013).

   Second further declaration for Mobileciti: statutory declaration of Asaf Twina, attorney for Mobileciti, declared 30 May 2013 with exhibit AT-1.

2. The evidence in respect of the opposition to applications 1365187 and 1365192 comprises:

   Evidence in support: statutory declaration of Darren Bell declared 25 November 2011 with confidential exhibits 1 to 4 and exhibits 5 to 8.

   Evidence in answer: statutory declaration of Aaron Huang declared 20 February 2012 with exhibits AH-1 to AH-32.

   Evidence in reply: statutory declaration of Dawn Logan Keeffe declared 23 November 2012 with exhibits DLK-1 to DLK-8 (‘Keeffe 1’).

   Further evidence of Glotech: statutory declaration of Dawn Logan Keeffe declared 28 May 2012 (the date appears to be a typographical error which should read 28 May 2013).

   Further evidence of Mobileciti: pursuant to a request from Mr. Twina, evidence served and filed in respect of the opposition to 1350277 was allowed into proceedings in respect of the opposition to 1365187 and 1365192,[1] specifically paragraphs 31 to 36 of Huang 1 (and accompanying exhibits) and Paoletto 1 (with accompanying exhibits).

   Second further declaration of Mobileciti: statutory declaration of Asaf Twina declared 30 May 2013 with exhibit AT-1.

   [1] On the basis that it was material of which both parties were aware and the advantage of dealing with all three oppositions together is that the evidence in one opposition is available in the others.

3. In addition to the evidence described above the Registrar, after considering a request by Mobileciti, issued a notice on 16 October 2012 requiring that Darren Bell of Glotech produce documents relating to the ownership and conduct of the domain name “mobilecity.com.au”. Mr. Bell did so, such documents being (in general terms) receipts for domain name registration from an entity named ‘Crazy Domains’, and emails from the same entity confirming changes to domain name servers.

Mobileciti’s evidence

1. Mobileciti is a seller of mobile telephones and related accessories. It is an Australian company that was registered on 8 June 1999, and it is claimed that since then it has provided its services to the Australian market place under the name “Mobileciti”. It operates from physical premises in Parramatta, NSW, and online via both a website and an ebay store. The Parramatta store appears to have traded since at least 2002. The ebay store has operated under the name “mobileciti_estore” since January 2003, accumulating some 61,000 feedback comments and a 99.6% positive feedback rating. It is not specified when the website at “mobileciti.com.au” was launched, although it was at least as early as 17 February 2008[2]. Turnover figures and advertising expenditure for the 2005 to 2011 fiscal years are provided and are substantial. Mobileciti promotes its business online and since 2002 in local and national newspapers.

   [2] As indicated by exhibit DLK-4 of Keeffe 1.

2. Mobileciti sources its goods from Australia and sells only “A-tick Australian-approved mobile phones”.  The “A-tick” is controlled by the Australian Communications and Media Authority (‘ACMA’) and is a mark of compliance to safety and technical standards which is applied to telecommunications items.[3]

   [3] See the Australian Communications and Media Authority ‘FS 94 FACTsheet The A-tick – Information for Consumers’, dated February 2010 and available at (accessed 12 July 2013).

3. Mobileciti documents several instances of confusion between it and Glotech. Such instances include emails from customers, discussions in the online forum Whirlpool, at the website “whirlpool.net.au”, and confusion by other third parties including an ACMA inspector, Australia Post and Samsung.

Glotech’s evidence

1. Glotech was incorporated in Hong Kong on 19 February 2010 and is also a seller of mobile telephones and related accessories. It operates an online retail store at “mobicity.com.au” which sells stock imported from overseas markets that apparently does not carry the “A-tick”, although it does carry a warranty administered by another third party. Prior to 2010 the services were provided by predecessors in title associated with the declarant Mr. Bell and/or his associate Mr. Alistair Eldred. The name MOBICITY and a logo similar to Glotech’s subject mark were created in 2007. First use of the name MOBICITY is claimed to be in late 2007, with Glotech’s subject mark claimed to have been launched in 2009.

2. Annual sales figures and advertising expenditure for the period 2008 to 2011 (YTD) are provided in confidential exhibits, which show significant growth. Advertising is conducted online via Google® AdWords and various search engines.

3. Before launching the MOBICITY brand the predecessor in title conducted searches of the internet, the “commercial .au domain name space” and the Australian trade marks register for the terms MOBICITY and MOBILECITY. No conflicts were identified. In January 2009 the registration of the below trade mark was sought and although it was accepted for potential registration it lapsed due to non-payment of the registration fee.

4. Glotech is also connected with the domain name “mobilecity.com.au”.[4] “Mobilecity.com.au” is not a website as such, but is a domain name which immediately redirects an internet user to the online store at “mobicity.com.au”.

   [4] Whilst Glotech is not the registrant of the domain name, it is the contact and billing address for it.

Summary of submissions

1. Each party puts the main thrust of its opposition somewhat differently. Mobileciti submits that it used the name “mobileciti” first and that in the intervening 10-plus years of trading the trade mark has acquired a significant reputation. Since Glotech entered the market, Mobileciti submits that it has suffered a reduction in trade due to consumers’ confusion between the two and a tarnished reputation due confusion with Glotech’s non-A-tick stock. Whilst it does not concede that the Glotech trade mark has a reputation greater than that of its own, it contends that in any event section 60 is not intended to provide an exception to the rights of first user and the relevant inquiry should predicated on the reputation of the earliest mark (being its own). It further submits that Glotech’s registration of the domain name “mobilecity.com.au” is evidence of bad faith on Glotech’s part, in that Glotech registered the domain name, which differs from Mobileciti only by the spelling of “city/citi”, to harness the reputation of Mobileciti and divert internet traffic to its own website.

2. Glotech’s primary position is that each party’s trade mark(s) should be able to co-exist but if only one is to prevail then it should be Glotech. It submits that the marks ought to coexist because the evidence shows that two entities adopted descriptive trade marks entirely independently of each other - Glotech developing its business online and Mobileciti, for the most part, developing a “bricks and mortar” shop. Any resultant confusion is allegedly based not on reputation but on the similarity of descriptive marks. It submits that the registration of the domain name “mobilecity.com.au” reflects not bad faith but the common business practice of registering common misspellings of the relevant domain name (“mobilecity” being the most obvious misspelling of “mobicity”). On the other hand if only one party is to prevail, it ought to be Glotech because although it has been trading for a shorter period of time it submits its trade mark has the greater reputation.

Grounds of opposition

1. It is the opponent that bears the onus of establishing at least one ground of opposition according to the ordinary civil standard of the balance of probabilities[5], and the relevant date at which the rights of the parties are to be determined is the priority date of the application.[6]

   [5] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.

2. In written submissions prepared for the hearing the parties confirmed the grounds upon which they pursued their opposition. Mobileciti pressed grounds under sections 60, 42(b) and 62A of the Act and bears the onus of establishing one of them as at 24 March 2010. Glotech pressed grounds under sections 60 and 42 and bears the onus of establishing either as at 4 June 2010.

3. I will discuss each party’s opposition in turn, beginning with that by Mobileciti to Glotech’s trade mark application 1350277.

Opposition to 1350277

Section 60

1. Section 60 of the Act provides:

   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.

   Note: For priority date see section 12

2. In McCormick & Co Inc v McCormick (‘McCormick’)[7] Kenny J discussed the meaning of “reputation” as:

   What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:

   reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.

   Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[8] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[7] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

[8] [2000] FCA 1587; (2000) 50 IPR1.

1. It is for me to determine therefore whether Mobileciti has established that before 24 March 2010 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the mobile telephone market, and whether because of that the use by Glotech of its trade mark would be likely to cause the public confusion.

2. Mobileciti relies upon its use of the word “mobileciti” to establish the ground under section 60. I note that “mobileciti” is used in a number of different ways: in addition to any use as a trade mark it is used within the company name “Mobileciti Pty Ltd”, the domain name “mobileciti.com.au” and the ebay store name “mobileciti_estore”. Although such use is not necessarily trade mark use, it is not necessarily incompatible with it either. I note the comments of the Registrar’s delegate regarding use of a business name, in Skyspan (Pacific) Pty Ltd v Rodric Fooks (‘Skyspan’)`[9], which if used as the identifier of the origin of the goods or services becomes, at that point, a trade mark. Similarly Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd (‘Tennis Warehouse’)[10] noted that use of a domain name may constitute use of the trade mark where trade is conducted online and the public understands the name to be a sign for the services available at the website. I therefore bear these principles in mind in assessing Mobileciti’s evidence of reputation in “mobileciti”.

   [9] [2003] ATMO 31.

   [10] [2010] FCA 664; (2010) 87 IPR 300

Evidence of reputation

1. McCormick, at [86], states:

   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

2. As indicated previously Mobileciti provides annual turnover figures and advertising expenditure for the 2005 to 2011 fiscal years (although given that the priority date is 24 March 2010, I do not take the 2011 figures into account and note that the 2010 figure is only partially relevant). Both sets of figures are substantial and it is reasonable to infer from them the existence of a correspondingly substantial reputation.

3. In addition the “mobileciti_estore” ebay store has existed since 2003 and in the period from January 2003 to December 2009 it accumulated 56,579 feedback comments. It is true that in general online feedback is not necessarily a reliable mechanism – traders may leave positive feedback for their own businesses or negative feedback for competitors, or the same person may leave feedback multiple times. However a general gauge of the extent of trade may be discerned and here I consider it not insignificant.

4. The length of time in existence and the amount of traffic attracted to either the Parramatta store or the website is not explicitly stated, although I note the website existed at least as early as February 2008 and Mobileciti’s sales invoices (which list the store’s addresses) date as far back as 2002. It is also noteworthy that the store is located upon the main street of Parramatta, a busy commercial district.

5. As further support of its trade mark’s reputation Mobileciti submits

   …[M]ost telling in our submission, is the conduct of [Glotech] and its predecessors in title in registering 1 year before the priority date the MOBILECITY domain name namely mobilecity.com.au, and redirecting internet inquiry from a domain name with a substantially identical name to MOBILECITI save the domain name ends in ‘y’ not ‘i’.

   The rhetorical question must be asked, if MOBILECITI had little or no significant reputation, why would [Glotech or its predecessor] register mobilecity.com.au, a name internet users would most likely use to find MOBILECITI and redirect those inquiries to MOBICITY?

However I am not convinced that Glotech registered the domain name for the purpose of harnessing Mobileciti’s reputation. I consider it equally as likely that Glotech originally registered the domain name as an obvious misspelling of its own trade mark, and therefore do not believe that this factor itself says anything of the reputation of “mobileciti” as at the priority date.

1. Despite the above point I am satisfied that Mobileciti has established a reputation in its trade mark. The annual turnover and advertising expenditure are significant, as are the feedback comments of the ebay store and the number of years the business has been trading. Whilst this is so, Glotech expressed some concerns over aspects of Mobileciti’s evidence and so I will briefly address them. Firstly, all but one of Mobileciti’s sales invoices in evidence do not show use of the trade mark but rather use of the words “Mobileciti Pty Ltd”[11]. Whilst I do not take this as evidence of the trade mark in use I consider it likely that there is some level of association by the public as a badge of origin (as per Skyspan) – Mobileciti does not appear to use any alternative names with which the services might be associated, and the company, the website and the ebay store are all identified primarily by “mobileciti”.

   [11] Some invoices also display the tag line “Thank you for choosing Mobileciti!” however it is not clear whether the tag line appeared at the time the invoice was issued to the purchaser or whether it was a feature of the printer used to later print the duplicate copies for use as evidence. For that reason I have not taken the tag line into consideration.

1. Glotech made similar submissions in respect of Mobileciti’s receipts for advertising in various newspapers. They do not show the trade mark being advertised but rather make reference to Mobileciti as the customer or account name (and often Mobileciti is misspelled). I agree that this is a shortcoming, and was there not other evidence before me it is unlikely I would be satisfied that Mobileciti had established a reputation.

2. Glotech also contends that Mobileciti’s business is, for the most part, a “bricks and mortar” shop located in an outer suburb of Sydney and any reputation, it if exists, is confined to that area. It produces evidence which allegedly shows that the internet traffic to Mobileciti’s website is strongly localised to NSW, and submits that Mobileciti’s invoices show sales made outside of NSW were to on-sellers rather than end customers, thereby reducing the extent of reputation amongst the wider market.

3. Nonetheless I am satisfied on the evidence before me that Mobileciti had, by the priority date, built a reputation in its trade mark “mobileciti”. Whilst I bear in mind Glotech’s submissions regarding the geographic extent indicated by the sales invoices, there is a significant amount of trade that has occurred via ebay for which there is no data relating to the geographic extent of the customer base. As an online platform ebay customers may be based anywhere in Australia, and given mobile telephones and related accessories are not bulky items that are expensive to post there is no reason to assume the customers are limited to those nearby.

4. Given that I am satisfied a reputation in “mobileciti” exists the next stage of the inquiry is whether, because of that reputation, the public is likely to be deceived or confused as to the origin of the services.

Evidence of confusion

1. Mobileciti puts into evidence several documented instances of confusion including:

   ·     Multiple emails wherein customers have confused the parties, including up to and beyond the point of purchase

   ·     An email from an online auction site which details an event wherein Glotech replaced a faulty product for a customer who had erroneously contacted it rather than Mobileciti,

   ·     An email written by an associate of Glotech who mistakenly sends it to an email address of Mobileciti (“[email protected]”)[12],

   ·     Several conversations in the online discussion forum Whirlpool in which participants confuse the parties, including a conversation entitled “Difference between MobileCiti/Mobicity”,

   ·     Descriptions in Huang 1 of incidents of confusion, including an ACMA inspector who visited Mobileciti believing it to be Glotech’s business Mobicity.

I note that some of these are undated or are dated in the months after the priority date. There are also further examples documented in Mobileciti’s evidence in reply, although they date from 2011 and 2012. Bearing in mind that “evidence of later events may cast light upon the true position at an earlier date”[13] I am satisfied that confusion was likely as at the priority date, and indeed has occurred.

[12] Although submitted to be evidence of relevant confusion, I consider it more likely that this example reflects only an inadvertent typing error.

[13] As per Burchett J in Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509.

Cause of confusion

1. Glotech submits that any confusion is not as the result of a reputation in Mobileciti’s trade mark, but rather because of consumers’ knowledge of Glotech’s mark or because of the highly descriptive nature of Mobileciti’s mark. It also submits that the comparison must be made with the trade mark as applied for, which comprises more than the word “mobicity” simpliciter.

2. In respect of the first contention, although there are some examples of confusion based upon customers of Glotech who mistakenly seek out Mobileciti, there are at least as many based on the reverse scenario including:

   ·     An email from Mr. Luke Megginson which states he was advised by Vodafone to search for MobileCiti and when he did so he came across Mobicity and considered the two confusing,

   ·     Emails to Mobileciti from Mr. George Lepir stating “Yeah I’m surprised I ordered from the other place by mistake” and “I usually only deal with you guys. I must have typed your company in wrong on Google”,

   ·     A customer who purchased a mobile telephone from Mobileciti, and when he found it faulty contacted Glotech by mistake, who then mistakenly replaced it,

   ·     A participant in a Whirlpool forum named “Darren Mobicity”, who appears to write as an agent for Glotech and whom I therefore consider is likely to be Mr. Darren Bell, himself confusing a discussion about Mobileciti to be a discussion about Mobicity,

   ·     A Whirlpool discussion in which a participant name “Guitarfish” describes a purchase made from Mobileciti but mistakenly attributes it to Mobicity

3. Moreover I consider that as at the priority date in March 2010, Glotech was considerably less well known than it now claims to be (discussed further in the opposition to applications 1365187 and 1365192). I am therefore not persuaded that the more likely cause of confusion is consumers’ knowledge of Glotech’s mark as opposed to Mobileciti’s mark.

4. In respect of the second contention Glotech submits that “mobileciti” is highly descriptive and consequently a level of confusion in the market would have to be expected and tolerated[14]. It states that “mobile” refers to the nature of the goods (“mobile telephone” commonly being shortened to “mobile”) and “city” is a common suffix used where a wide variety of retail services is provided at a single shop, outlet or destination.

   [14] As per Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited [1978] HCA 11; (1978) 140 CLR 216 at 229-230.

5. Whilst I consider the first part of this contention may be readily accepted, I am less convinced of the descriptiveness or commonness of “city” (and even less so of “citi”). In support of its argument Glotech lists “well known and less well known” examples of this type of use including “Car City”, “Sleep City”, “Pram City”, “Book City” and “Baby City”. Although I am not familiar with any of these specific examples I am aware of some use in this manner (in particular “RateCity”, a comparison website for financial services, and from which Glotech indicates it obtained inspiration for its trade mark). However I do not consider “city” so ubiquitously used that it has lost any distinctive character (and “citi”, although phonetically identical, is even less common). Whilst I acknowledge that trade marks in the form of “[descriptive prefix]city” are not unheard of, the degree of confusion that it is submitted should be tolerated is, in my estimation, overstated.

6. I acknowledge that the trade mark for which Glotech seeks registration contains more than the word “mobicity” simpliciter. “Mobicity” is nonetheless the most significant part of the mark and how it is most likely to be recalled. I do not consider therefore that the other elements in the applied for trade mark, including the device and the words “your mobile destination”, differentiate it such that it would not be confused or mistaken with Mobileciti’s trade mark.

7. In all, I am satisfied that as at the priority date Mobileciti had been using “mobileciti” for eight years and had garnered a significant reputation in it, and consequently that use of Glotech’s mark in the face of that reputation would be likely to cause confusion. Therefore Mobileciti has established its ground of opposition under section 60. Given it has established this ground I will not discuss the others pursued in its opposition and turn now to the opposition by Glotech to Mobileciti’s applications.

Oppositions to 1365187 and 1365192

Section 60

1. I need not repeat here the principles to be applied under section 60 as articulated in McCormick and Cordon Bleu but note that they apply equally in the present opposition, the relevant date (being the priority date) now being 4 June 2010.

2. Glotech declares that its “MOBICITY brand” was intended to be one of a family of online businesses distinguished by the suffix “city” (I note that Glotech subsequently registered the domain names “cameracity.com.au” and “accessorycity.com.au”), and to be a “sister brand” to the unrelated website “ratecity.com.au”. Prior to adopting the brand Glotech’s predecessors searched the internet, the “commercial .au domain name space” and the Australian trade marks register using the key words “mobicity” and “mobilecity”, and did not identify any conflicts (save for a US domain name registration, the owner of which apparently did not have any interest or rights in the Australian market). On this basis Glotech’s predecessor proceeded with the “mobicity” brand.

3. Annual sales figures and annual promotional expenditure are provided in confidential exhibits. In order to preserve their confidentiality I will not discuss their detail, other than to note that while sales have increased quickly, as at the priority date they were still somewhat less than those of Mobileciti for the same period and did not grow to a comparable size until the following year. At the same time, Glotech’s promotional expenditure was significantly higher than that of Mobileciti in that year. In terms of inferring reputation from such figures, it would seem most likely that Mobileciti had the greater reputation as at the priority date, Glotech only subsequently gaining the upper hand due to its significant investment in advertising.

4. First use of the “mobicity” name is declared to be in February 2008 when online advertising of the business commenced. In support of this claim Glotech provides in a confidential exhibit “an overview of the promotional and marketing campaigns conducted by [it or its predecessors] from February 2008 until June 2011”. As it is confidential I will not discuss its detail but note that it makes no reference at all to “mobicity” or the website “mobicity.com.au” (or indeed any name or any website) and as such there is little that can be gleaned from it.

5. The earliest sales invoice in evidence is dated 30 April 2008 but it does not make any reference at all to “mobicity”. The first invoice showing use of the name is dated 18 May 2008, which states that the purchase was made from the “main website” and displays at the bottom of the page:

   “ the above could not itself be described as use of a domain name, it is reasonable to infer that the purchase was made from the website at the domain name “mobicity.com.au”. Given the online nature of Glotech’s business the use of “mobicity” as part of a domain name can be a use of the trade mark, as per Tennis Warehouse. To put Glotech’s case at its highest I will consider then that the first use in evidence of its trade mark is 18 May 2008, and will revisit the issue if necessary.

   1. As further evidence of it having the greater reputation of the two parties, Glotech adduces the number of Whirlpool conversations that are found via a search for “mobicity” (being 43) and compares it to the number found via a search for “mobileciti” (being four). I do not consider this persuasive: whilst the content of such conversations may establish confusion, the mere number of conversations on Whirlpool is not sufficiently indicative of reputation in the wider market (especially when considered in light of sales figures which do not support Glotech having the greater reputation), and may only reflect that Glotech representatives are more active on the Whirlpool database. I note further that the majority of those conversations took place after the priority date.

   2. Along similar lines, Glotech submits evidence obtained from “Google Trends” which shows the comparative number of internet searches conducted for both “mobicity” and “mobileciti”, and the “regional interest” in those terms (being a map indicating from which state the searches originated). Whilst this data shows that searches for Glotech’s trade mark significantly exceeded those for Mobileciti’s in 2011 and 2012, it also shows that in 2010 the difference was not great and further that in 2008 (when Glotech first used its mark) it was “mobileciti” that was more often searched for. The “regional interest” maps do indicate that more searches for Glotech’s mark originate from a wider array of Australian states, however this data does not differentiate between the years 2008 to 2012 and so it is difficult to discern what Glotech’s position may have been as at the priority date.

   3. Mobileciti argues that any reputation in Glotech’s mark has been “infected” as from the time the domain name “mobilecity.com.au” became operational (which, according to exhibit AH-23 in Huang 1, was at least as early as 10 March 2009). In this regard Mobileciti submits that by virtue of the domain name “mobilecity.com.au” redirecting an unknown amount of traffic to “mobicity.com.au”, Glotech is appropriating an amount of inquiry meant for Mobileciti which has presumably resulted in sales, those sales then being used as evidence of Glotech’s reputation. Mobileciti contends that because of this, Glotech cannot place reliance upon its sales as evidence of its own reputation. I do not consider that I can draw this conclusion. As stated previously, I consider it equally as likely that the domain name “mobilecity.com.au” was originally registered as a common misspelling of “mobicity.com.au”. There is a corresponding likelihood that consumers do indeed commonly misspell “mobicity” as “mobilecity”. For that reason I cannot be satisfied that the traffic diverted to Glotech’s website was originally intended for Mobileciti’s.

   4. Nonetheless, in all it appears that when Glotech first adopted the “mobicity” trade mark it was Mobileciti that had the greater reputation and whilst the gap has narrowed in the intervening period between 2008 and the priority date in 2010, Glotech has not shown that its trade mark had a reputation as at the priority date such that it would be the likely cause of confusion.

   5. I am therefore not satisfied that Glotech has established its opposition under section 60, and the ground fails.

   Section 42

   1. Section 42 of the Act relevantly provides:

      An application for the registration of a trade mark must be rejected if:

      …
      (b) its use would be contrary to law.

   2. With regard to Glotech’s claim that use of the trade marks would contravene Australian Consumer Law I note that as at the priority date, 4 June 2010, it was the Trade Practices Act 1974 (‘TPA’) that was in force (the Competition and Consumer Act 2010 only coming into force as from 1 January 2011). I will nevertheless consider the Glotech’s submissions with reference to the equivalent section of the now repealed TPA which provides:

      Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

   3. The relevant standard for section 52 of the TPA is more onerous than that of section 60 of Act. It requires that the conduct “mislead or deceive”[15]. As already indicated in respect of the ground of opposition under section 60, however, I am not satisfied that use of the opposed trade marks is likely to cause deception or confusion on account of the Opponent’s reputation in its trade marks. It follows therefore that, on the stricter test posited by the TPA, use of the opposed trade marks is not likely to mislead or deceive. On that basis the ground of opposition under section 42 is not established.

      [15] See for example Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431.

   Decision

   1. Section 55 of the Act relevantly provides:

      (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.

      …

      (3) This subsection applies to the proceedings if:

      (a) the proceedings are discontinued; or

      (b) the proceedings are dismissed…

   2. I am satisfied that Mobileciti has established the ground of opposition under section 60, and accordingly I refuse registration of trade mark application 1350277.

   3. I am not satisfied that Glotech has established either of the grounds of opposition it pursued, and therefore trade mark applications 1365187 and 1365192 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.

   Costs

   1. Mobileciti has been successful in this matter and is entitled to costs. Accordingly I award costs against Glotech in accordance with Schedule 8 of the Trade Mark Regulations 1995, and in accordance with Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[16] wherein certain costs of the cross opposition are at the reduced scale of 20%.

      [16] [2001] ATMO 78.

   Nicole Worth

   Hearing Officer

   Trade Marks Hearings

   27 August 2013