NetApp Inc v Trading Reference Australia Pty Limited

[2014] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by NetApp Inc to registration of trade mark application 1453295(9, 35, 36) - tApp* (Logo) - filed in the name of Trading Reference Australia Pty Limited.

Delegate:

Iain Thompson

Representation:

Opponent: Written submissions by Banki Haddock Fiora

Applicant: Andrew Lockhart, solicitor, a partner of Shelston IP

Decision:

2014 ATMO 61

s52 opposition to registration; s44 – comparison of trade marks – ground not established, s60 reputation of Opponent’s trade marks – trade marks dissimilar – ground not established; s42(b) not established.

Opposition not established.

Background

1. This opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) arises out of the filing by Trading Reference Australia Pty Limited (‘the Applicant’) of the application (‘the Application’) detailed below:

Application No: 1453295

Priority Date:  12 October 2011

Goods/Services:              Class 9: Computer software; apparatus for recording, transmission or reproduction of sound or images; computer databases including computer databases for storage of data, text and images; computer databases accessible online for input and submission of data, text and images by tenants; computer databases accessible online for searching and monitoring by real estate agents, commercial and mercantile agents; computer storage database for storage of tenant-inputted information; computer software and apparatus for searching electronic information, including online; data access apparatus for use in accessing stored information; electronic mail apparatus

Class 35: Providing a searchable online database of tenant-inputted information; compilation of tenant information into computer databases; computerised database management; business information services provided by access to a computer database or online relating to tenants and tenants affairs; business administration services relating to the storage of and access to tenant database records; tenant database record keeping and retrieval services; business management services; business administration services; publicity services; advertising, including online advertising; management of tenant databases; provision of tenant database services, including online

Class 36: Real estate affairs; provision of information and advisory services related to tenants of residential, commercial and holiday rental properties; provision of information and reports relating to tenants of residential, commercial and holiday rental properties, including provision of information and reports by access to a computer database or online

Class 38: Communication services; web portal services; providing access to online computer databases; computer data transmission services; electronic mail services

(‘the Services’)

Trade Mark:  

(‘the Trade Mark’)

1. The Application was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 2 February 2012.

2. On 2 May 2012 NetApp, Inc. (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice includes the grounds under sections 44, 60 and 42 which it argued in written submissions. For the sake of completeness, I find that the other grounds specified in the Notice have not been established.

3. The parties have filed evidence in support and evidence in answer and have been informed of their right to be heard.  The Opponent has filed written submissions by its lawyers, Banki Haddock Fiora.  For the Applicant, Andrew Lockhart, solicitor, of Shelston IP appeared before me at a hearing in Sydney on 19 June 2014.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence comprises the following statutory declarations:

   In Support

   Mark Welke, responsible for the Opponent’s product marketing, made on 24 July 2013 with Exhibits A-M.

   In Answer

   Andrew Scott Lockhart, Solicitor, made on 19 November 2013 with Exhibits ASL-1 to ASL-3.

2. Mr Welke states that the Opponent ‘has long been a leading vendor of innovative storage and data management solutions that help organisations around the world store, manage, protect, secure, access and retain their data.’

3. Concerning the history of the Opponent, Mr Welke says:

   NetApp was founded in 1992 in the United States under the trade name Network Appliance, Inc. Since 1995, NetApp has been a publicly traded company. NetApp’s stock has always been traded on the NASDAQ Exchange under the ticker symbol NTAP. On or about 10 March 2008 Network Appliance, Inc. changed its name to NetApp, Inc.  Since that date, NetApp, Inc has traded under the name NetApp.

4. Mr Welke addresses the Opponent’s trade marks and asserts:

   The NetApp trade mark is the primary trade mark used by NetApp to distinguish its goods and services from those of other traders. The NetApp trade mark has been used since 1992 in the United States and elsewhere in relation to the goods and services provided by NetApp. All NetApp goods and services are provided under the trade mark NetApp.

   The NetApp trade mark is often represented with the N device as shown below:

1. Mr Welke also asserts concerning the use of the trade mark NetApp in Australia as follows:

   NetApp provides an extensive range of information and technical support, training and educational services under the NetApp trade mark in Australia and around the world including in person and online at its global and country specific websites. It also provides an online community allowing the exchange of information amongst NetApp users worldwide. These offerings include:

   (a) detailed online training and education through the NetApp University;

   (b) technical support, information and education through a wide range of media including its web site, blogs, Twitter, Facebook, GOOGLE+, YouTube, FLICKR, podcasts and webcasts;

   (c) RSS feeds which provide the latest press releases, customer stories and technical reports direct to the customer’s desktop;

   (d) publication and electronic distribution of the online Tech OnTap newsletter;

   (e) apps available on iTunes and GOOGLE PLAY entitled NetApp Support, NetApp Hardware Universe and NetApp RFP Builder, among others;

   (f) brochures, white papers, and technical reports; and

   (g) advertisements in journals and other print publications.

   A copy of a screenshot of the relevant page detailing these services from the NetApp Australian Website showing use of the NetApp trade mark and printed on 17 February 2011 is attached and marked Exhibit B along with a copy of screen shots of relevant pages relating to the NetApp University from the NetApp Australian Website from 17 February 2011 and screenshots of the NetApp Australian Website printed on 10 July 2013. Also comprised in Exhibit B are screenshots from the website showing current news and press releases in relation to NetApp and its products, printed on 10 July 2013 and brochures and advertisements, including white papers and technical reports, all bearing the NetApp trademark and trade name, with copyright notices as to the materials’ date of first publication.

   In relation to NetApp’s presence in Australia, NetApp has, by way of example, in years 2005 through to 2006, earned $xx million in revenue from products sold to customers located in Australia. NetApps’s revenue in Australia for sale of its products from January 2007 to April 2010 was approximately $xxx million.

   NetApp does substantial business in Australia. The NetApp trade mark was first used in Australia in at least as early as 1999 in relation to NetApp’s data storage and data management products.

   NetApp’s customers in Australia have included, by way of example, IP Australia, Telstra and Karoon Gas Australia, an Australian energy exploration company. Attached and marked Exhibit G are copies of printouts from the NetApp Australian Website (copyright 2008 through to 2010) outlining Australian projects involving NetApp. Also comprised in Exhibit G is a list of NetApp’s Australian partners printed from the website on 10 July 2013. Also comprised in Exhibit G is a printout of a press release from 27 March 2007 about a NetApp customer in Australia, Animal Logic.

   Attached and marked Exhibit H is a copy of a press release printed from the website as of the date indicated on the printout. The press release is dated 24 October 2006 and includes quotes from a Telstra representative about how Telstra uses NetApp’s products in Australia along with a reference to the Tech OnTap newsletter.

   NetApp has also been featured in a variety of Australia-based publications. Attached and marked Exhibit I are copies of representative articles from the arnnet.com.au website, the voiceanddata.com.au website and the searchstorage.techtarget.com.au website as of the dates indicated on each article. Also part of Exhibit I are copies of articles from and specifically about NetApp in Australia.

   In NetApp’s fiscal year 2012, NetApp’s revenues were $x.x billion. As such, NetApp qualifies for and is listed among the Fortune 500®.

2. Mr Welke asserts that the Opponent’s Tech OnTap trade mark has been used in relation to a publication:

   NetApp’s monthly newsletter is published under the trade mark Tech OnTap. This newsletter contains a range of technical and educational information including information on best practices, detailed case studies, tips and engineering perspectives. It is delivered via email to subscribers and made available on NetApp’s websites. Tech OnTap is both the title of the publication and the trade mark under which information, training and education are provided to subscribers and interested persons.

   The Tech OnTap newsletter and the information contained in it, are of global relevance. That is, there is no special edition created or published for a particular country or region. The Tech OnTap newsletter and the information it contains is published to Australian subscribers and made available on NetApp websites accessible from Australia including the NetApp global website at and the NetApp Australian Website.

   Since at least November 2005, NetApp has continuously published its monthly Tech OnTap newsletter to customers, including in Australia, by email and through NetApp’s websites accessible from Australia including the global website and the NetApp Australian Website. Also accessible is an archive of past Tech OnTap newsletters.

   A copy of a screen shot of the relevant page of the NetApp Australian Website showing the link from that site to access the Tech OnTap archives printed on 25 November 2010 is attached and marked Exhibit C along with the page that is linked to, showing a drop down list of archived copies of the Tech OnTap newsletter available for access, also printed on 25 November 2010. This list shows that the Tech OnTap newsletter has been published continuously on a monthly basis since November 2005.

   During the time that NetApp has offered its Tech OnTap newsletter to customers in Australia, the number of recipients of the Tech OnTap newsletter has grown. Currently, over 4,000 individuals in Australia receive the Tech OnTap newsletter.

   The cost of preparing and producing the English version of the Tech OnTap newsletter is approximately $xx,xxx per quarter. The cost of preparing and producing the Tech OnTap newsletter, since its introduction in 2005 has on average been approximately $xxx,xxx per year.

   Attached and marked Exhibit D is a screen shot of the Tech OnTap Winner’s Circle portion of the website printed on 17 February 2011. The Tech OnTap Winner’s Circle is the name NetApp used to refer to the winners of Tech OnTap contests. As shown by the screen shot in Exhibit D, the Tech OnTap Winner’s Circle list includes at least one winner from Australia. These results listings date from around October 2005 until around September 2006.

   Attached and marked Exhibit E is a copy of the May 2009 Tech OnTap newsletter that addresses the following technical and educational topics: “Storage Infrastructure for the Cloud,” “NetApp and Cisco: Virtualizing the Data Center,” and “Boosting Data Center Efficiency”. Also included in Exhibit E is a copy of the June 2013 Tech OnTap Document Integrity Verified EchoSign Transaction Number: WYVZ4T5B625422-4- newsletter that addresses the following topics: “What’s new in Clustered Data ONTAP 8.2?” and “Is software-defined storage in your future?” These topics are representative of the topics covered by NetApp’s Tech OnTap newsletter and are addressed to sophisticated consumers of network storage products and services.

   Attached and marked Exhibit F are copies of printouts from the NetApp Australian Website as of the date indicated on the printouts. The printouts provide a sample of the Tech OnTap newsletter from November 2005 through to June 2013. In particular, the editions from November 2005, February 2006, March 2006, September 2006 and November 2006, September 2009, December 2010, March 2011, June 2012 and June 2013 are provided.

3. Mr Welke details use of the Opponent’s OnTap trade mark as follows:

   NetApp Data ONTAP is an operating system provided by NetApp. Attached and marked Exhibit J are printouts containing information regarding the Data ONTAP operating system. Every customer using NetApp storage system uses the NetApp Data ONTAP software.

4. Mr Welke then details the Opponent’s United States trade mark registrations which are asserted to include the elements TAP or TAPP.  I do not consider these relevant to these proceedings.  Additionally, Mr Welke exhibits copies of trade mark registration certificates for the trade mark DATA ONTAP from Canada, China, the European Union, and Japan.  However since only registration and/or use in Australia (or spillover reputation which results from use of a trade mark overseas) are relevant to these proceedings, these registration certificates are of only incidental interest.

5. Similar remarks apply to the overseas registration certificates of the trade mark NETAPP which are exhibited to Mr Welke’s declaration.

6. Mr Welke also details the Opponent’s trade mark registrations in Australia.  These are:

Registration No:              796221

Priority Date:  3 June 1999

Goods:Class 9: Computers, computer hardware, computer peripherals, computer software, and user manuals sold as a unit therewith

Trade Mark:  NetApp

Registration No:              951197

Priority Date:  22 April 2003

Goods:Class 9: Computer operating systems software for use within a file server

Class 16: Instruction and user manuals

Trade Mark:  DATA ONTAP

Registration No:              960829

Priority Date:  9 January 2003 (78/201846 USA)

Goods/Services:              Class 9: File servers dedicated to perform a single function and dedicated computer hardware and operating software; computer hardware and software for storing, managing, replicating, transferring, securing, retrieving and restoring data and files; computer hardware and software for sharing, updating, partitioning, and accessing common files over a computer network; computer hardware and software for optimizing the accessibility, delivery, backup, security, restoration and replication of data; computer hardware and software for managing, monitoring and securing networks, computer disc drives, electronic data storage systems, databases and other storage devices across computer networks; and downloadable computer software for use in troubleshooting computer hardware and software problems

Class 41: Educational services, namely, arranging and conducting online and instructor-led training courses, lectures, classes, workshops, seminars and conferences in the fields of computers, computer software and hardware, computer storage networks, computer storage devices, data and computer file storage, management, replication, security, retrieval, restoration and distribution, and management, monitoring and security of computer networks, computer disc drives, electronic data storage systems, databases and other storage devices across computer networks; providing testing and certifications to determine professional skills in the fields of computers, computer software and hardware, computer storage networks, computer storage devices, data and computer file storage, management, replication, security, retrieval, restoration and distribution, and management, monitoring and security of computer networks, computer disc drives, electronic data storage systems, databases and other storage devices across computer networks; and distribution of course materials in connection therewith

Class 42: Technical support services in the fields of computers, computer software and hardware, computer storage networks, computer storage devices, data and computer file storage, management, replication, security, retrieval, restoration and distribution, and management, monitoring, and security of computer networks, computer disc drives, electronic data storage systems, databases and other storage devices across computer networks, and providing back-up computer programs and facilities

Trade Mark:  NETAPP

Registration No:              1307015

Priority Date:  30 Jun 2009

Services:Class 41: Electronic publication of information, including online and over a global computer network in relation to computers, computer hardware, computer software and information technology; online (electronic) publication of books, journals, and newsletters in relation to computers, computer hardware, computer software and information technology; publication of multimedia material online in relation to computers, computer hardware, computer software and information technology

Class 42: Compilation of information relating to information technology; information services relating to information technology

Trade Mark:  Tech OnTap

Endorsements:                Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

Registration No:              1470173

Filing Date:  6 December 2011

Priority Date:  9 June 2011 (85342535 USA)

Services:  Class 36: Financing services

Class 42: Software as a service (SAAS) services featuring software for management, storage, troubleshooting, optimization, and analysis of network data

Trade Mark:  NETAPP

1. In his evidence for the Applicant, in answer to the above evidence, Mr Lockhart brings to my attention the state of the Register as regards trade marks which contain the ‘suffix’ ‘app’.  Mr Lockhart also provides definitions for the ‘word’ ‘app’ from the Macquarie Dictionary Online and other dictionaries.

Section 44

1. The Applicant has filed no evidence of use of the Trade Mark. Accordingly, section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   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.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (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).

2. In its written submissions the Opponent defines the Opponent’s registrations listed at [16] above as being ‘the NetApp Registrations’ but goes on throughout its written submissions to refer to ‘the NetApp Marks’, a term for which the Opponent does not give a definition. I will proceed on the basis that where the Opponent refers to ‘the NetApp Marks’ in its written submissions it intends to refer to ‘the NetApp Registrations’.

3. The Opponent does not argue that the NetApp Registrations are substantially identical to the Trade Mark but argues that they are deceptively similar to it.  As the comparison of the trade marks takes place in the context of the marketplace for the goods and services, I note for the sake of brevity that many of the goods and services of the parties are similar or closely related.

4. The Opponent’s primary argument is based on the following premise:

   Consumer recollection of both the Opposed Mark and the NetApp Marks will be of the letters tApp. The NetApp trade mark consists of the letters tApp, and so does the word element of the Opposed Mark. The NetApp trade mark has only the letters Ne at the beginning of the mark to differentiate it from the Opposed Mark. We submit that if the Opposed Mark was used in relation to the goods or services of the Application, that consumers would be confused as to the origin of the goods and services and as to whether there is a relationship between the Applicant’s goods and services and the Opponent’s goods and services.

5. This view is, in my consideration, fundamentally flawed.  The Opponent’s hypothesis that its NetApp trade mark ‘consists’ of the trade mark tApp relies on an artificial dissection of the NetApp trade mark which is countered by the presence of the prefix ‘net’ which has a well-known and very relevant meaning in relation to the goods and services.  This well-known meaning of the word ‘net’ in relation to the goods and services dictates that the proposed hypothetical perception on the part of the relevant public (who must be taken to be acquainted with the denotation of the word ‘net’ in relation to the goods or services) is inherently improbable.  Additionally, as stated by Sargant J in London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 (at 279):

   The only similarity in the word “Tripcastroid” to “Castrol” is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

6. Accordingly, the impact of the prefix ‘net’ in the trade mark NetApp must not be discounted to any extent in the comparison of these trade marks.  It may lack inherent adaptation to distinguish but the same can be said of each element of the construction ‘tApp’ and also of the NetApp Registrations.

7. In regards to the comparison, Parker J, said in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.

8. One of the circumstances of the comparison is the inherent adaptation of the shared element of the trade marks under consideration – here it is the suffix ‘app’ (or in the case of other of the Opponent’s NetApp Registrations such as Tech OnTap, the suffix ‘tap’ as a part of the expression ‘on tap’).  While the suffix ‘app’ in the Opponent’s NetApp Registrations is a short-form for the word ‘appliance’, it is more likely in my estimation to immediately be recognized by most people in the relevant market as denoting the word ‘application’.  As noted by the Hearing Officer in Apple Inc. [2013] ATMO 13 at [17] the word ‘app’ is defined in the Oxford English Dictionary as:

   noun An application, esp. an application program

9. The word ‘app’ thus obviously has immediate and obvious facility in relation to the goods and services of the parties[2] because, as far as I understand it, there are over a million ‘apps’ available which relate to programs which feature a vast number of subjects as diverse as cookery, medicine, home budgeting, aircraft movements, farming, gaming, word processing and astronomy.  I note that the word ‘app’ within the trade mark NetApp is actually an abbreviation of the word ‘appliance’ but, in the context of the goods and services, popular usage of the word ‘app’ as denoting ‘applications’ has, in my estimation, eclipsed that denotation which (in any event) itself lacks inherent adaptation.

   [2] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505; [1998] AIPC 37-628.

10. The word ‘app’ is thus exceptionally weak trade mark material and is much more likely to be viewed as referring to the character or quality of the goods or services than it is as denoting an origin in trade of the goods or services: Coca-Cola Co (Canada) Ltd v Pepsi Cola Co (Canada) Ltd (1942) 59 RPC 127; Broadhead's Appn (1950) 67 RPC 209 and Nisco Sport Ltd v B.T.R. Plc (1989) AIPC 90-575.

11. Similarly, the Opponent’s trade marks which terminate with the word ‘tap’ are (in the context in which they occur) (and as a matter of commonsense) much more likely to be viewed, remembered and recognized as ending in the suffix ‘tap’, rather than imperfectly remembered or misrecognized as being only comprised of the word ‘tApp’.

12. Aurally, or phonetically, the trade marks of the parties are also quite different.  In Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited [1946] HCA 15; (1946) 72 CLR 175 (the "Rohoe" Case) Dixon J said at 184:

    But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements.

13. I consider that similar observations apply to how people attempt to pronounce words which they have not encountered previously.  When people encounter new words, they refer to words that they do know and then apply this knowledge to any new words that they encounter according to the context in which such new words are encountered which (to paraphrase Rohoe) is here settled by the Application and the NetApp Registrations.  In this instance the Trade Mark will (in the context of the normal rules of the English language and the context of the goods and services) most obviously be pronounced as ‘tee App’ since the lowercase letter ‘t’ is obviously a distinct element of the Trade Mark as it is followed by the capitalized and known word ‘app’ which has work to do in relation to the goods and services.  In contrast the NetApp Registrations will be pronounced normally as ‘net app’, ‘data on tap’ and ‘tech on tap’.[3]

    [3] See Nurofen Limited v Use Techno Corporation [2005] ATMO 68 (GLUSULIN and GLUCODIN); Apparel Group Pty Ltd v Lidl Stiftung & Co KG. [2011] ATMO 124 (SABA and SABANGO); Vatole Pty Ltd v Boehringer Ingelheim KG [1992] ATMO 77 (PROTEC and BEROTEC); Oracle Corporation v Newcom Technologies Pty Ltd [2000] ATMO 105 (ORATEL and ORACLE).

14. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 Windeyer J said at [13]:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": deCordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

15. In Clark v Sharp (1898) 15 RPC 141 at 146 the Court said that:

    … one must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

16. In my estimation, as discussed above, the general effect of the respective trade marks, considered as wholes is that it is most unlikely that persons would mistakenly see the word tApp (which is the sole word in the Trade Mark) within any of the NetApp Registrations where it is in fact submerged within other indicia (such as the part-words ‘net’ or ‘app’) which will (as wholes) be seen, remembered and recalled by ordinary people as something entirely different.  In the words of Harmon LJ in Accutron T.M. [1966] RPC 152 (concerning the trade marks ACCUTRON and ACCURIST):

    It is not right to pull the words to pieces, ACCU- for one part and -IST and -LARM for the other part, next to argue that ACCU reminds you of “accurate” no matter what the suffix, and to conclude that the upshot will be a monopoly in the natural word.

17. As regards similarity of the ideas conveyed by the trade marks of the parties I consider that the Trade Mark conveys the idea that the goods and/or services are something to do with ‘apps’ or applications.  The alphabetical letter ‘t’ in the Trade Mark has no immediate connotation in relation to the goods or services – accordingly, taken as a whole, the idea of the Trade Mark is somewhat indefinite.  In contrast, the ideas within the NetApp Registrations are more immediately apparent and more directly allusive to the character or nature of the goods and services in respect of which they are registered.  Thus, the ideas, behind the trade marks are not, in my consideration, the same although they have a degree of relationship.  I otherwise agree with the submissions of Mr Lockhart that:

    The marks must still look or sound alike before the issue of whether they convey the same idea is relevant: Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552.

    The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them and a proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 at 539.

    The suggestion of differing ideas may serve to reduce the risk of confusion Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 440). The idea that is relevant is the idea that the mark will naturally suggest to the mind of one who sees it (Jafferjee v Scarlett (1937) 57 CLR 115 at 121).

    NetApp conveys the idea of network application software.  The Opposed Trade Mark has a first letter t, which is has no obvious link to the idea of a network.

18. After taking the all of the above factors into consideration, I conclude that the NetApp Registrations are quite dissimilar to the Trade Mark and that deception or confusion arising from the concurrent use of the trade marks is very unlikely.

19. Accordingly, the trade marks are not deceptive similar and the Opponent has not established its ground of opposition under section 44.

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. The initial step under section 60 is an assessment of the trade mark(s) upon which an Opponent relies.

3. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 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.

   Cf. The Oxford English Dictionary. In s 60, 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[4] 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.

[4] [2000] FCA 1587; (2000) 50 IPR 1 albeit in relation to subparagraph 28(a) of the Trade Marks Act 1955 which, in the context of those proceedings, required ‘reputation’ to be established.

1. I would assess that the trade marks identified within the NetApp Registrations have a strong reputation in a marketplace that is quite specialized within Australia.  Mr Welke has declared that the Opponent’s goods and services are ‘storage and data management solutions that help organisations around the world store, manage, protect, secure, access and retain their data’. It logically follows that the reputations of the NetApp Registrations exist amongst IT professionals who work in the computer areas of the organisations mentioned by Mr Welke.

2. There is no suggestion in the evidence that the reputations of the NetApp registrations have moved beyond the marketplace for the Opponent’s goods and services as has, for example, the trade mark ROLLS ROYCE.  The reputation thus remains confined amongst IT professionals.

3. There are occasions on which that, whatever the reputation of an Opponent’s trade mark, the degree of dissimilarity between the trade marks under consideration is so great that it is quite unlikely that deception or confusion might arise from the concurrent use of those trade marks.  This is one of those occasions.  In so finding, I also note that the market for the Opponent’s goods and services is primarily amongst IT professionals who are well-trained and knowledgeable in the field and likely to exhibit more discernment and discrimination in their purchases than the public at large.  However, if the market for the Opponent’s goods and services were in fact the public at large where the Applicant’s goods and services are also supplied, in my consideration the scope for deception or confusion would also be very low.

4. In so finding I note that I have not accepted the proposition that the Opponent’s NetApp trade mark consists of the indicium tApp.  It does, however, contain suffix ‘App’ which is common to the trade marks of the parties and on which the Opponent must rely in order to establish this ground in respect of its trade mark NetApp.  This suffix entirely lacks for inherent adaptation to distinguish and I refer by analogy to the observation of Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; (1978) 52 ALJR 392; [1978] ATPR 40-067; [1978] ASC 55-010; (1978) 3 TPC 244; (1978) 1B IPR 818; 18 A Crim R 639 at[22] (page 229):

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.

1. The Opponent has not established its opposition under section 60.

Subparagraph 42(b)

1. Subparagraph 42(b) of the Act provides:

   42Trade mark scandalous or its use contrary to law

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

   (a)…

   (b)its use would be contrary to law.

2. The Opponent relies on sections 18 and 29 of the Australian Consumer Law 2010 (‘the ACL’).

3. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1, Gibbs C.J. said (at page 6):

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

In the same case Mason J. said (at page 15):-

“. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

1. The opposition under subparagraph 42(b) is not established.

Decision

1. At the priority date of the Application subsection 55(1) of the Act provided:

   55Decision

   (1)Unless the proceedings are discontinued or dismissed, 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.

2. The opposition has not been to any extent established.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant, having been successful in these proceedings, is entitled to its costs which I order against the Opponent at the Official Scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

03 July 2014