Omega Diagnostics Limited v Nutritics Limited
[2024] ATMO 100
•3 June 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Omega Diagnostics Limited to registration of trade mark application numbers 2272277 foodprint (fig.) in classes 9, 38, 40 & 42 and 2272279 FOODPRINT in classes 9, 40 & 42 – both in the name of Nutritics Limited
Delegate: | Tracey Berger | |
Representation: | Opponent: R J Boadle of Counsel instructed by Foundry Intellectual Property Pty Ltd Applicant: Rob Clark of Counsel instructed by Allens Patent & Trade Mark Attorneys | |
Decision: | 2024 ATMO 100 Trade Marks Act 1995 (Cth) – oppositions under section 52 – ss 44 and 58 pursued – no grounds established – trade marks to proceed to registration | |
Background
This is a decision on the oppositions by Omega Diagnostics Limited pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade marks which are the subject of the applications detailed below (collectively ‘Trade Marks’) both in the name of Nutritics Limited (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
| Number | Trade Mark | Filing Date | Goods and Services[2] |
| 2272277 |
| 25 May 2022 (Priority claimed 23 May 2022 | Class 9: Computer hardware and software; … Electronic databases in the field of carbon footprint and environment protection recorded on computer media Class 38: Providing temporary access to online non-downloadable databases in the field of carbon footprint and environmental protection Class 40: Label printing services; Digital label printing services; Advice and consultancy services relating to all of the aforesaid services Class 42: Research and development of computer software; Research and development of computer software systems for databases and for relational databases and for software for management, manipulation and production of data; Software as a Service (SaaS); Platform as a Service (PaaS); Provision of online non-downloadable software for use in publishing and printing; Application service provider featuring application programming interface (API) software; … Online provision of web-based software, namely providing temporary use of non-downloadable computer software …; Calculation of climate impacts; … Advice and consultancy services relating to all of the aforesaid services; Consulting and technical services in the nature of data collection and analysation in the fields of mapping, measuring, verifying, reducing and offsetting carbon footprint |
| 2272279 | FOODPRINT | 25 May 2022 | Class 9: Recorded and downloadable media, publishing, printing, content creation and labelling software; all the aforesaid goods for use in and/or relating to a menu and food/drink review, informational display and reporting system; Labels carrying electronically recorded or encoded information; Computer software for the display of digital media for use in and/or relating to a menu and food/drink review, informational display and reporting system Class 40: Label printing services; Digital label printing services; Advice and consultancy services relating to all of the aforesaid services Class 42: Software as a Service (SaaS), Platform as a Service (PaaS) and Provision of online non-downloadable software for use in publishing and printing; all the aforesaid services for use in and/or relating to a menu and food/drink review, informational display and reporting system … for labelling; Installation, maintenance, repair and support services in relation to computers and computer software, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Hosting of websites, databases, web portals, platforms and digital content relating to a menu and food/drink review, informational display and reporting system; … Provision of labelling systems software solutions; Provision of label verification, inspection and validation services and related support services; Advice and consultancy services relating to all of the aforesaid services |
[2] The full specifications are shown in Annexure A to this decision. Collectively, the goods and services of the Applications are referred to as the ‘Applicant’s Goods and Services’.
Following the advertisement of acceptance of the Applications, the Opponent filed Notices of Intention to Oppose registration of the Trade Marks on 17 November 2022, followed by its Statement of Grounds and Particulars (‘SGP’) on 17 December 2022. On 17 February 2023, the Applicant filed Notices of Intention to Defend the oppositions.
The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent filed its Evidence in Support (‘EIS’) of the oppositions on 2 June 2023, followed by the Applicant’s Evidence in Answer (‘EIA’) on 6 September 2023. The Opponent filed Evidence in Reply (‘EIR’) on 8 November 2023.
Once the evidence stage concluded, the parties were given the opportunity to request a hearing and both parties requested a hearing by written submissions. Mr Robert J Boadle of Counsel, instructed by Foundry Intellectual Property Pty Ltd filed submissions on behalf of the Opponent on 20 February 2024 and Mr Rob Clark of Counsel, instructed by Allens Patent & Trade Mark Attorneys filed submissions on behalf of the Applicant on 27 February 2024. I have been allocated these matters to determine as a delegate of the Registrar of Trade Marks and make my decision based on the aforementioned materials.
Grounds, onus and Relevant Date
In its SGP, the Opponent particularised grounds of opposition under ss 44 and 58.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined for the s 44 ground of opposition is the priority date of 23 May 2022 and for the s 58 ground of opposition is filing date of 25 May 2022. Nothing turns on this difference of two days. Any reference to the ‘Relevant Date’ for the purposes of the s 44 ground is a reference to 23 May 2022 and for the s 58 ground is a reference to 25 May 2022. Collectively these dates are referred to as the ‘Relevant Dates’.
Evidence
The parties filed the following evidence which is summarised below:
| EIS |
| · Declaration of Jag Grewal, Chief Executive Officer of Omega Diagnostic Group Plc, made on 1 June 2023 with Annexures JG-1 to JG-9 (‘Grewal 1’) |
| EIA |
| · Declaration of Stephen Nolan, Chief Executive Officer of the Applicant, made on 5 September 2023 with Exhibits SN-1 to SN-15 (‘Nolan’) |
| EIR |
| Declaration of Jag Grewal made on 31 October 2023 with Annexures JG-10 to JG-14 (‘Grewal 2’) |
Opponent’s evidence
The Opponent is an international diagnostics testing business in the field of nutrition that develops, manufactures and markets diagnostic products associated with food sensitivity and gut health. The Opponent has continuously used the mark FOODPRINT (‘Opponent’s Mark’) since its first use in the United Kingdom (‘UK’) in 2011 for a food intolerance diagnostic test kit (‘Opponent’s Goods’) and diagnostic services (‘Opponent’s Services’). Grewal 1 claims that the Opponent’s Mark is used on the Opponent’s Goods which include software, chemicals, coated slides and instructions.
In summary, the use of the Opponent’s Goods involves testing of a patient’s blood against food extracts, optically scanning the testing pads, assessing the results with processing hardware and software, generating a report of the results and printing the report to send to the patient. The Opponent’s Goods and Services analyse up to 222 foods and is ‘trusted by more than 150 laboratories worldwide’.
Grewal 1 notes that the Opponent is the owner of Australian trade mark registration number 1270435 for the Opponent’s Mark in class 42 for ‘medical laboratory tests for food intolerances in humans’ (‘Registered Services’) and has been registered since 10 July 2008 (‘Opponent’s Registration’).
In 2021, the Opponent adopted a logo form of the Opponent’s Mark being (‘Opponent’s Logo’).[5] The Opponent’s Logo has been continuously used in the UK since its adoption for the Opponent’s Goods and Services. From the Annexures to Grewal 1, it is apparent that the Opponent’s Logo is also used in Australia.
[5] The Opponent’s Mark and Opponent’s Logo are collectively referred to as the Opponent’s Marks.
In 2017, the Opponent appointed Abacus dx Pty Ltd (‘Abacus’) as its Australian distributor for the Opponent’s Goods and Services. Abacus has used the Opponent’s Mark since its appointment. The Opponent’s Goods are sent to Abacus from the UK. Abacus distributes the Opponent’s Goods to its customers and Abacus performs the diagnostic services in Australia with the Opponent’s authorisation. Annual sales turnover figures for the Opponent’s Goods in Australia from 2018-2022 are provided which are not substantial.[6]
[6] It is not clear whether these sales figures include the provision of the Opponent’s Services and I have assumed the figures relate only to sales of the Opponent’s Goods.
In Australia, the Opponent’s Marks are used on marketing collateral for the Opponent’s Goods and Services, promotions, seminars, webinars, diagnostic testing services, reports and componentry. One of Abacus’ customers, BeFunctional Labs, also promotes the Opponent’s Goods on its social media accounts. In addition, BeFunctional Labs has promoted the Opponent’s Goods in its newsletter sent to medical practitioners and other subscribers. Various examples of the promotion of the Opponent’s Goods and Services are provided.
The remainder of Grewal 1 consists of arguments about the similarities of the Opponent’s Marks to the Trade Marks and the similarities of the Applicant’s Goods and Services, customers and trade channels to those of the Opponent.
Most of Grewal 2 criticises the Applicant’s evidence and the prominence the Applicant gives to the Trade Marks compared to its house mark NUTRITICS. Grewal 2 also claims that the term ‘foodprint’ in Australia is a commonly used term in food education to describe the environmental footprint of food.
Applicant’s evidence
The Applicant is a food data management software provider which provides software that manages recipes, creates labels, plans meals, publishes menus and measures the environmental impact of food and drink.
According to Nolan, the Applicant has 135,000 customers across 100 countries. The Applicant’s customers include Unilever, Starbucks, Pepsico and Emirates.
The Trade Marks are used in relation to ‘an automated menu and food/drink review, informational display and reporting system’. For example, the system calculates the carbon footprint score per dish so as to support environmentally conscious food choices and provides a sustainability score for packaging, dishes and promotional materials.
The Applicant first used the Word Mark in the UK in March 2022. Nolan claims that since that time, the Applicant’s FOODPRINT system has been widely promoted including in hospitality and foodservice trade magazines, editorials and newspapers ‘across the UK and EU (and beyond)’ and has won a number of awards. A selection of these articles and promotions are exhibited to Nolan.
Further, the Applicant has promoted the Trade Marks in Australia through the Restaurant and Catering Industry Association and the Hospitality Magazine. The Applicant also had an exhibition stand at the Foodservice Australia show in October 2022 where it demonstrated its FOODPRINT system.
Nolan explains that contrary to Grewal 1, the Trade Marks are not used in connection with a labelling service which ‘automatically calculates nutritional values and scans for allergens as you input data’. The Applicant offers this service but under a different trade mark. The services offered under the Trade Marks relate to sustainability and not nutrition. Moreover, Nolan declares the Applicant does not carry out medical or laboratory testing for food intolerances or allergens but rather is a software company.
Discussion
Section 44
Section 44 relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
In the SGP, the Opponent relies on the Opponent’s Registration and claims that the Registered Services are similar to the services and closely related to the goods of the Applications.
In order to succeed on this ground of opposition, the Opponent’s Registration must satisfy the following requirements:
i.it is in the name of a person other than the Applicant (‘First Requirement’);
ii.it has a priority date which is earlier than the priority date of the Trade Marks (‘Second Requirement’);
iii.it is in respect of services which are either similar and/or closely related to the Applicant’s Goods and Services (‘Third Requirement’); and
iv.it is substantially identical with, or deceptively similar to, the Trade Marks (‘Fourth Requirement’).
The Opponent’s Registration satisfies the First and Second Requirements in that it is in the name of a person other than the Applicant and has an earlier priority date.
Moreover, the Applicant accepts that the Opponent’s Mark is identical to the Word Mark and deceptively similar to the Logo Mark. I agree that the Fourth Requirement is satisfied.
Therefore, the Third Requirement is the only issue in dispute and I must consider whether the Registered Services are similar to the Applicant’s Services and/or closely related to the Applicant’s Goods.
Section 14(2) provides that services are similar to other services if they are the same or of the same description. Determining whether services are of the same description involves a consideration of a number of factors including:
the inherent character of each of the services for which the trade mark is registered.
(2) to whom are the services offered?how are they provided?
how are they used?
what is their purpose?
are they bundled together with other services?
are they differentiated by the functional level at which they are provided: wholesale or retail?
where do they originate?
what is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
how closely contestable are the services in substance: are they in the same market or trade?
how might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[7]
[7] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205, [2017] FCAFC 56, [339] (Greenwood, Besanko and Katzmann JJ).
Whilst the Act does not define closely related goods and services, Justice French noted in Registrar of Trade Marks v Woolworths:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[8]
[8] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37].
A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[9] namely:
[9] [1993] ATMO 55 (Hearing Officer Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
The Opponent argues that the Registered Services are similar to the Applicant’s Services because they are sufficiently broad to ‘cover and encompass the same end users, same uses, same trading channels and would be considered as complementary or ancillary services’. For example, the Opponent notes that ‘label printing services; digital label printing services’ could be viewed as an ancillary service of the Opponent.
The Applicant contends that the Registered Services are highly specialised being tests undertaken by trained and regulated medical professionals. Although the tests may be undertaken by patients wanting information about food intolerances, it is the medical professional and not the patient who carries out the test. The patient attends a clinical laboratory (or perhaps a medical practice) to have blood taken and the test is undertaken on that blood sample. In comparison, the Applicant summarises its Goods and Services as falling in the following categories:
a. Computer hardware, computer software and application, services for the development of the same;
b. Labelling hardware and labels (including printers and scanners), software related to labelling and related labelling services;
c. Provision of databases and cloud computing services; and
d. Research and provision of information.
Moreover, the Applicant notes that the Applicant’s Goods and Services are restricted to those directed to particular purposes such as ‘carbon footprint and environmental protection analysis’, ‘for providing recipes and information in the fields of food, cooking and beverages’, ‘the design and creation of food and drink labels, menus and advertisements’, amongst others but none of which are directed to the healthcare sector. Whilst many of the Applicant’s Goods and Services are restricted as indicated by the Applicant, this is not the case for all of the claimed goods and services.
In my opinion, taking into consideration the various questions and factors in [29] and [31] of this decision, it is apparent that the Applicant’s Goods and Services are not similar or closely related to the Registered Services. Providers of medical laboratory diagnostic tests do not provide online databases in the field of carbon footprint and environmental protection being the Applicant’s Class 38 Services nor do they offer label printing services claimed by the Applicant in Class 40. The Applicant’s services in classes 38 and 40 are completely unrelated in their nature, purpose and use to the Registered Services.
The Opponent’s medical laboratory tests are for the purpose of identifying food intolerances, are principally directed to and provided by clinical laboratories and medical practitioners. The Applicant’s computer, hardware and software products and services are not generally targeted to healthcare providers and laboratories. The provision of services in most industries typically involves, at some point, the use of computer hardware, software or database services. This does not mean that diagnostic test services are similar or closely related to the computer hardware, software and database goods and services that may be used at some point in providing the testing services. If general consumers were searching for food intolerance testing and came across computer hardware, software and labelling products and services, it is improbable that those consumers would think it likely that those goods and services emanate from the same source as a food intolerance test. In my view, the Applicant’s Goods and Services are generally provided by different traders through different trade channels for different uses than diagnostic testing services.
The s 44 ground of opposition is unsuccessful.
Section 58
Pursuant to s 58, a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia for the relevant goods or services of the ‘same kind of thing’, or first files a trade mark application for it in Australia, whichever is the earlier.
On my assessment of the EIA, the Applicant has not used the Trade Marks in Australia before the Relevant Date. The EIA refers to the Applicant promoting its FOODPRINT system in Australia but all of the examples provided are after the Relevant Date.
Accordingly, the Opponent must establish the following three factors to succeed on this ground:
i. the trade mark relied upon by the Opponent is identical or substantially identical with the Trade Marks;[10] and
the Applicant’s Goods and Services are the ‘same kind of thing’ as those for which the trade mark relied upon by the Opponent has been used;[11] and
a person (other than the Applicant) has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to the applications to register the Trade Marks or any actual use of the Trade Marks (whichever is the earlier).[12]
[10] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[11] Re Hick’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
In its SGP, the Opponent particularised this ground as follows:
Foodprint Limited released its app for reducing food waste in 2019 and entered the Good Design Awards in 2020. The Good Design Awards are Australia's premier design awards. The app is 4+ years old and available for download on the Australian Apple Store and Google Play store.
The Opponent’s submissions make no mention of the FOODPRINT app but instead the Opponent argues that it has used the Opponent’s Marks in Australia since before the Relevant Dates. The Applicant objects to the Opponent relying on an entirely different basis to that pleaded in the SGP.
Dealing with the ground as pleaded, in Grewal 2, the Opponent annexes the results of a Google search for ‘foodprint Australia’ and the first result is for ‘the FOODPRINT app, which operates in NZ and is available on the Australian Apple App Store’. Grewal 2 attests that this app shows the location of nearby food outlets which sell food at a discount because the food has been rejected by supermarkets as aesthetically unappealing.
I note that the trade mark relied on by the Opponent is identical to the Word Mark. Before considering whether the FOODPRINT app is the ‘same kind of thing’ as the Applicant’s Goods and Services or whether the Logo Mark is substantially identical to FOODPRINT, it is appropriate to consider whether the Opponent’s evidence establishes that the FOODPRINT app was available in Australia before the Relevant Dates. In my opinion, the Opponent’s evidence does not establish that the FOODPRINT app was available in Australia. The Google search results provide no compelling information that Foodprint Limited was offering goods or services in Australia or that the app was available here before the Relevant Dates. Annexure JG-13 to Grewal 2 simply shows that the FOODPRINT app won an Australian Good Design Award in 2020 in the category of ‘digital apps and software’. However, the Australian Good Design Awards is an international design awards program and there is no requirement that the entry be designed or sold in Australia.[13] Accordingly, I am not satisfied that the FOODPRINT app was available in Australia before the Relevant Dates. The s 58 ground as pleaded in the SGP is unsuccessful.
[13] Good Design Australia, FAQs (28 May 2024) >
With respect to the Opponent’s arguments which were not pleaded in the SGP, I note that the purpose of a Statement of Grounds and Particular is to define the issues that the Applicant is required to address in defending their application. Accordingly, the Opponent should not be able to rely on matters not notified in its SGP. Having said that, the Opponent has nominated only two grounds of opposition and its EIS outlines the use of the Opponent’s Marks (which is not relevant to the s 44 ground) and covers matters directed to the similarity of the Trade Marks and Opponent’s Marks as well as the purported similarity of the customers, trade channels and purpose of the respective parties’ goods and services (s 44 matters). Accordingly, it cannot be entirely surprising to the Applicant that the Opponent also wishes to rely on use of its marks in support of the s 58 ground. In any event, for the reasons discussed below, I do not consider that the outcome of this matter would be any different had the Opponent properly particularised the s 58 ground of opposition in its SGP by specifying that it relies on use of the Opponent’s Marks.
In its written submissions, the Opponent argues that it has used FOODPRINT in Australia since 2017 for the Applicant’s Goods and Services, or goods and services that are the ‘same kind of thing’, by providing ‘diagnostic testing kits and processes, on printed labels, computer hardware and software and online databases’. I am satisfied that the Opponent’s evidence demonstrates use of the Opponent’s Marks for food intolerance diagnostic tests. However, the fact that these tests bear a printed label, involve the use of computer hardware and software, and the results may be stored in a database does not amount to use of the Opponent’s Marks for these goods. To constitute use of a trade mark, there must be trade in the particular goods or services for which the use is to be established.[14] Based on the evidence, the Opponent does not provide or offer to provide labels, computer hardware, software or computer databases to customers but offers only food intolerance diagnostic tests.
[14] Watermark Restaurant Pty Ltd v The Watermark Hotel Group Pty Ltd (2002) 55 IPR 406, 415 (Hearing Officer Ryan).
Accordingly, I turn to a consideration of whether the Opponent’s food intolerance diagnostic tests are the ‘same kind of thing’ as the Applicant’s Goods and Services. The ‘same kind of thing’ means, applying practical commonsense, goods and services which are ‘essentially the same … though they pass under a different name owing to slight variations in shape and size’ or, put another way, are ‘true equivalents’.[15]
[15] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [89] (Allsop J).
In my opinion, none of the Applicant’s Goods and Services are essentially the same as the Opponent’s food intolerance diagnostic tests. The Applicant’s Goods and Services are not substitutes for or equivalent to those of the Opponent. Given the differences in the Opponent’s food intolerance diagnostic tests, it is not necessary to decide whether the Opponent’s Marks are substantially identical to the Trade Marks.
The s 58 ground of opposition is unsuccessful.
Decision
The Opponent has failed to establish a ground of opposition and accordingly applications 2272277 and 2272279 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 of the Trade Marks shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.
The Applicant has sought its costs and I see no reason to depart from the general rule that costs follow the event. Accordingly, with respect to the opposition to trade mark 2272277, I award costs against the Opponent in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2272279, I award reduced costs against the Opponent under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[16]
[16] [2001] ATMO 78 (Hearing Officer Williams).
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
3 June 2024
ANNEXURE A
TRADE MARKS
Number
Trade Mark
Specification
2272277
Class 9: Computer hardware and software; Downloadable computer software for use as an application programming interface (API); Recorded and downloadable computer software; Recorded and downloadable computer applications; Interactive computer software; Recorded and downloadable media and publishing software; Recorded and downloadable computer software and programs for printing; Publishing software; Content creation, design and management software; Computer software for accessing, searching and managing databases; Interactive database software; Recorded and downloadable software for creating, downloading, uploading, designing, modifying, manipulating, reproducing, transmitting, and sharing images, graphics, fonts, text, videos and data; Recorded and downloadable software for the positioning of text, in the nature of word processing; Recorded and downloadable software for processing data and information; Recorded and downloadable data management software; all the aforesaid goods for use in and/or relating to a menu and food/drink review, informational display and reporting system; Recorded and downloadable data management software in the field of food and drinks; Recorded and downloadable software for carbon footprint and environment protection analysis; Recorded and downloadable label management software; Label management hardware, being electronic label printers and optical scanners; Recorded software, downloadable software and cloud computing software for labelling, regulated labelling, label management, content management, regulated content management and component content management for use in and/or relating to a menu and food/drink review, informational display and reporting system; Computer software and hardware for use in designing, creating, managing, editing, issuing, checking, inspecting, verifying, validating, printing and re-printing labels, auto-identification labels, regulated labels, barcodes and tags; Bar code labels, encoded; Labels carrying electronically recorded or encoded information; Recorded and downloadable software in the form of calculating tools, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Recorded and downloadable software for calculation and visualisation of the carbon footprint of goods and services; Recorded and downloadable software for collecting and analysing data relating to food and drink for measuring their impact on the environment and in particular their carbon footprint; Recorded and downloadable software for processing images, graphics, text, and data for use in the design and creation of food and drink labels, menus and advertisements; Recorded and downloadable software for use in the food and drinks industry and hotel and hospitality industries, namely, software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks; Recorded and downloadable software that provides carbon footprint, ecological impact and ecological sustainability information for food and drinks; Downloadable software in the nature of a mobile application that provides carbon footprint, ecological impact and ecological sustainability information for food and drinks; Recorded and downloadable software to calculate the carbon footprint, ecological impact and ecological sustainability of recipes; Downloadable software in the nature of a mobile application to assist in the calculation of the carbon footprint, ecological impact and ecological sustainability of recipes; Recorded and downloadable software that allows a user to calculate the carbon footprint and ecological impact of a recipe and to reformulate the recipe to make it more ecologically sustainable; Downloadable software in the nature of a mobile application that allows a user to calculate the carbon footprint and ecological impact of a recipe and to reformulate the recipe to make it more ecologically sustainable; Downloadable software in the nature of a mobile application that allows a user to calculate the carbon footprint of a recipe and to reformulate the recipe to reduce the carbon footprint; Computer software for the display of digital media for use in and/or relating to a menu and food/drink review, informational display and reporting system; Supply chain management software for use in and/or relating to a menu and food/drink review, informational display and reporting system; Electronic databases in the field of carbon footprint and environment protection recorded on computer media
Class 38: Providing temporary access to online non-downloadable databases in the field of carbon footprint and environmental protection
Class 40: Label printing services; Digital label printing services; Advice and consultancy services relating to all of the aforesaid services
Class 42: Research and development of computer software; Research and development of computer software systems for databases and for relational databases and for software for management, manipulation and production of data; Software as a Service (SaaS); Platform as a Service (PaaS); Provision of online non-downloadable software for use in publishing and printing; Application service provider featuring application programming interface (API) software; Software as a Service (SaaS) featuring software for data management; all the aforesaid services for use in and/or relating to a menu and food/drink review, informational display and reporting system; Software as a Service (SaaS) featuring software for data management in the field of food and drink; Software as a Service (SaaS) featuring software for providing recipes and information in the fields of food, cooking, and beverages; Software as a Service (SaaS) featuring software for gathering, visualising and categorising carbon footprint and sustainability information for food and beverages; Software as a Service (SaaS) featuring software for use in database management for recipes and carbon footprint and ecological sustainability information for food and beverages; Software as a Service (SaaS) featuring software that allows a user to search a database for recipes and carbon footprint, ecological impact and ecological sustainability information of recipes; Software as a Service (SaaS) featuring software that allows a user to calculate the carbon footprint, ecological impact and ecological sustainability of recipes; Software as a Service (SaaS) featuring software that allows a user to calculate the carbon footprint of a recipe and to reformulate the recipe to reduce the carbon footprint; Software as a Service (SaaS) featuring software that allows a user to calculate the ecological impact of a recipe and to reformulate the recipe to reduce the ecological impact; Software as a Service (SaaS) featuring software for recipe management and sharing; Software as a Service (SaaS) for use in the food and drinks industry and hotel and hospitality industries, namely, software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks; Software as a Service (SaaS) featuring software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks and disseminating such information to users in an easy-to-understand user interface dashboard; Software as a service (SaaS) featuring software in the field of carbon offsets, for calculating carbon offsets, and providing quantification and verification services in the field of carbon offsets, mapping, measuring, verifying, reducing and offsetting greenhouse gas emissions, data collecting and analysing, and carbon footprints; Software as a service (SaaS) featuring software for labelling, regulated labelling, content management, regulated content management and component content management; Platform as a Service (PaaS) featuring computer software platforms for data management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Platform as a Service (PaaS) featuring computer software platforms for data management in the field of food and drink; Platform as a Service (PaaS) featuring computer software platforms for providing recipes and information in the fields of food, cooking, and beverages; Platform as a Service (PaaS) featuring computer software platforms for gathering, visualising and categorising carbon footprint and sustainability information for food and beverages; Platform as a Service (PaaS) featuring computer software platforms for use in database management for recipes and carbon footprint and ecological sustainability information for food and beverages; Platform as a Service (PaaS) featuring computer software platforms that allows a user to search a database for recipes and carbon footprint, ecological impact and ecological sustainability information of recipes; Platform as a Service (PaaS) featuring computer software platforms that allows a user to calculate the carbon footprint, ecological impact and ecological sustainability of recipes; Platform as a Service (PaaS) featuring computer software platforms that allows a user to calculate the carbon footprint of a recipe and to reformulate the recipe to reduce the carbon footprint; Platform as a Service (PaaS) featuring computer software platforms that allows a user to calculate the ecological impact of a recipe and to reformulate the recipe to reduce the ecological impact; Platform as a Service (PaaS) featuring computer software platforms for recipe management and sharing; Platform as a Service (PaaS) for use in the food and drinks industry and hotel and hospitality industries, namely, software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks; Platform as a Service (PaaS) featuring computer software platforms for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks and disseminating such information to users in an easy-to-understand user interface dashboard; Platform as a Service (PaaS) featuring computer software platforms in the field of carbon offsets, for calculating carbon offsets, and providing quantification and verification services in the field of carbon offsets, mapping, measuring, verifying, reducing and offsetting greenhouse gas emissions, data collecting and analysing, and carbon footprints; Platform as a Service (PaaS) featuring computer software platforms for labelling, regulated labelling, content management, regulated content management and component content management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for data management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for data management in the field of food and drink; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for providing recipes and information in the fields of food, cooking, and beverages; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for gathering, visualising and categorising carbon footprint and sustainability information for food and beverages; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for use in database management for recipes and carbon footprint and ecological sustainability information for food and beverages; Online provision of web-based software, namely providing temporary use of non-downloadable computer software that allows a user to search a database for recipes and carbon footprint, ecological impact and ecological sustainability information of recipes; Online provision of web-based software, namely providing temporary use of non-downloadable computer software that allows a user to calculate the carbon footprint, ecological impact and ecological sustainability of recipes; Online provision of web-based software, namely providing temporary use of non-downloadable computer software that allows a user to calculate the carbon footprint of a recipe and to reformulate the recipe to reduce the carbon footprint; Online provision of web-based software, namely providing temporary use of non-downloadable computer software that allows a user to calculate the ecological impact of a recipe and to reformulate the recipe to reduce the ecological impact; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for recipe management and sharing; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for use in the food and drinks industry and hotel and hospitality industries, namely, software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks and disseminating such information to users in an easy-to-understand user interface dashboard; Online provision of web-based software, namely providing temporary use of non-downloadable computer software in the field of carbon offsets, for calculating carbon offsets, and providing quantification and verification services in the field of carbon offsets, mapping, measuring, verifying, reducing and offsetting greenhouse gas emissions, data collecting and analysing, and carbon footprints; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for labelling, regulated labelling, content management, regulated content management and component content management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Cloud computing services featuring software for data management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Cloud computing services featuring software for data management in the field of food and drink; Cloud computing services featuring software for providing recipes and information in the fields of food, cooking, and beverages; Cloud computing services featuring software for gathering, visualising and categorising carbon footprint and sustainability information for food and beverages; Cloud computing services featuring software for use in database management for recipes and carbon footprint and ecological sustainability information for food and beverages; Cloud computing services featuring software that allows a user to search a database for recipes and carbon footprint, ecological impact and ecological sustainability information of recipes; Cloud computing services featuring software that allows a user to calculate the carbon footprint, ecological impact and ecological sustainability of recipes; Cloud computing services featuring software that allows a user to calculate the carbon footprint of a recipe and to reformulate the recipe to reduce the carbon footprint; Cloud computing services featuring software that allows a user to calculate the ecological impact of a recipe and to reformulate the recipe to reduce the ecological impact; Cloud computing services featuring software for recipe management and sharing; Cloud computing services featuring software for use in the food and drinks industry and hotel and hospitality industries, namely, software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks; Cloud computing services featuring software for providing and calculating carbon footprint, ecological impact and ecological sustainability information for food and drinks and disseminating such information to users in an easy-to-understand user interface dashboard; Cloud computing services featuring software in the field of carbon offsets, for calculating carbon offsets, and providing quantification and verification services in the field of carbon offsets, mapping, measuring, verifying, reducing and offsetting greenhouse gas emissions, data collecting and analysing, and carbon footprints; Cloud computing services featuring software for labelling, regulated labelling, content management, regulated content management and component content management; Computer advisory, consultancy and design services relating to a menu and food/drink review, informational display and reporting system; Computer software advisory, consultancy and design services relating to a menu and food/drink review, informational display and reporting system; Installation, maintenance, repair and support services in relation to computers and computer software, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Hosting of websites, databases and web portals relating to a menu and food/drink review, informational display and reporting system; Hosting platforms on the internet relating to a menu and food/drink review, informational display and reporting system; Hosting of digital content or digital media on the internet relating to a menu and food/drink review, informational display and reporting system; Design, development and implementation of labelling, regulated labelling and label management software and hardware solutions; Provision of labelling systems software solutions; Provision of label verification, inspection and validation services and related support services; Research in the field of climate change; Providing scientific information in the field of climate change, global warming, ecology, packaging and sustainability; Calculation of climate impacts; Providing of calculation models for the climate impacts of food and drink; Computer services for calculating and visualising the carbon footprint of goods and services; Advice and consultancy services relating to all of the aforesaid services; Consulting and technical services in the nature of data collection and analysation in the fields of mapping, measuring, verifying, reducing and offsetting carbon footprint
2272279
FOODPRINT
Class 9: Recorded and downloadable media software and publishing software; Recorded and downloadable computer software and programs for printing; Publishing software; Content creation, design and management software; Recorded and downloadable software for the positioning of text, in the nature of word processing; all the aforesaid goods for use in and/or relating to a menu and food/drink review, informational display and reporting system; Recorded and downloadable label management software; Label management hardware, being electronic label printers and optical scanners; Recorded software, downloadable software and cloud computing software for labelling, regulated labelling, label management, content management, regulated content management and component content management for use in and/or relating to a menu and food/drink review, informational display and reporting system; Computer software and hardware for use in designing, creating, managing, editing, issuing, checking, inspecting, verifying, validating, printing and re-printing labels, auto-identification labels, regulated labels, barcodes and tags; Bar code labels, encoded; Labels carrying electronically recorded or encoded information; Recorded and downloadable software for processing images, graphics, text, and data for use in the design and creation of food and drink labels, menus and advertisements; Computer software for the display of digital media for use in and/or relating to a menu and food/drink review, informational display and reporting system
Class 40: Label printing services; Digital label printing services; Advice and consultancy services relating to all of the aforesaid services
Class 42: Software as a Service (SaaS) featuring software for use in publishing and printing; Platform as a Service (PaaS) featuring software for use in publishing and printing; Provision of online non-downloadable software for use in publishing and printing; all the aforesaid services for use in and/or relating to a menu and food/drink review, informational display and reporting system; Software as a Service (SaaS) featuring software for providing recipes and information in the fields of food, cooking, and beverages; Software as a Service (SaaS) featuring software for recipe management and sharing; Software as a service (SaaS) featuring software for labelling, regulated labelling, content management, regulated content management and component content management; Platform as a Service (PaaS) featuring computer software platforms for providing recipes and information in the fields of food, cooking, and beverages; Platform as a Service (PaaS) featuring computer software platforms for recipe management and sharing; Platform as a Service (PaaS) featuring computer software platforms for labelling, regulated labelling, content management, regulated content management and component content management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for providing recipes and information in the fields of food, cooking, and beverages; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for recipe management and sharing; Online provision of web-based software, namely providing temporary use of non-downloadable computer software for labelling, regulated labelling, content management, regulated content management and component content management, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Cloud computing services featuring software for providing recipes and information in the fields of food, cooking, and beverages; Cloud computing services featuring software for recipe management and sharing; Cloud computing services featuring software for labelling, regulated labelling, content management, regulated content management and component content management; Installation, maintenance, repair and support services in relation to computers and computer software, for use in and/or relating to a menu and food/drink review, informational display and reporting system; Hosting of websites, databases and web portals relating to a menu and food/drink review, informational display and reporting system; Hosting platforms on the internet relating to a menu and food/drink review, informational display and reporting system; Hosting of digital content or digital media on the internet relating to a menu and food/drink review, informational display and reporting system; Design, development and implementation of labelling, regulated labelling and label management software and hardware solutions; Provision of labelling systems software solutions; Provision of label verification, inspection and validation services and related support services; Advice and consultancy services relating to all of the aforesaid services
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
Legal Concepts
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Appeal
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Costs
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Remedies
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Statutory Construction
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