Opposition by AUDC Pty Ltd to registration of trade mark application number 2447913 (classes 9 and 42) –

[2025] ATMO 199

TRADE MARKS ACT 1995

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

Re:Opposition by AUDC Pty Ltd to registration of trade mark application number 2447913 (classes 9 and 42) – AudD – in the name of AudD LLC

Delegate:

Debrett Lyons

Representation:

Opponent: no representation

Applicant:  no representation

Decision:

2025 ATMO 199

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 ground established – trade mark refused registration

Background

1. This decision concerns an opposition by AUDC Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of a trade mark filed in the name of AudD LLC (‘Applicant’).   Details of the trade mark application are shown below:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Number:

2447913 (‘Application’)

Trade Mark:

AudD (‘Trade Mark’)

Filing Date:

 4 May 2024 (‘Relevant Date’)

Goods / Services:

Class 9: downloadable computer software being application programming interface [API]; recorded computer software for use as an application programming interface [API]; application software; computer interface software; computer application software; computer software applications; application software for computers; application programs for computers; web application software; graphical user interface software; computer application programs; software; computer software applications for mobile telephones; open-source software [OSS]; downloadable software applications [apps]; downloadable computer software for use in implementing Internet of Things [IoT]; industrial automation software; software applications, downloadable; computer software applications for use with artificial intelligence; artificial intelligence software for analysis; data processing systems; data processing software; data processing programs; data processors; data processing apparatus; computer programs for data processing; computer software for data processing; data communication software; electronic data processing apparatus; digital signal processors; artificial intelligence software; data processing apparatus with artificial intelligence; artificial intelligence and machine learning software; machine learning software; machine learning software used in computer deep neural networks programs; machine learning software used in computer deep learning programs; downloadable application programming interface [API] software; computer software being application programming interface [API]; downloadable computer software for use as an application programming interface [API]; recorded application programming interface [API] software; computer software for use as an application programming interface [API]

(‘Goods’)

Class 42: encoding of digital music; software as a service featuring software for machine learning, deep learning and deep neural networks; computer technology consultancy in the field of machine learning; software as a service [SaaS]; software as a service [SaaS] featuring software for use in database management; software as a service [SaaS] featuring software for machine learning, deep learning and deep neural networks; software as a service [SaaS] featuring software for machine learning; development of software application solutions; IT programming services; software programming; software as a service [SaaS] featuring artificial intelligence software for machine learning; software as a service [SaaS] featuring software using artificial intelligence for machine learning; artificial intelligence consultancy; research in the field of artificial intelligence technology; computer technology consultancy in the field of artificial intelligence; technology consultancy in the field of artificial intelligence; software as a service [SaaS] featuring software using artificial intelligence for software development; software as a service [SaaS] featuring software using artificial intelligence for use in machine learning; platforms for artificial intelligence as software as a service [SaaS]

(‘Services’)

1. The Application was examined as required under s 33 of the Act and was advertised as accepted for possible registration on 5 October 2024. On 4 December 2024, the Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars on 20 December 2024 (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 4 January 2025.

2. The parties then had the opportunity to file evidence in accordance with the Regulations. The only evidence filed was evidence in support, being the declarations of:

   ·     Effie Dimitropoulos, the CEO of the Opponent, made 9 April, 2025; and

   ·     Gregory Michael Pieris, a partner with the Opponent’s law firm, made on April 7, 2025.

3. Once the time for filing evidence had ended, both parties were invited to request to be heard.  Neither party asked to be heard but the Opponent requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks.

   Grounds, onus and Relevant Date

4. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, 59 and 60.  The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date. 

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Summary of the evidence

5. Effie Dimitropoulos declares that the Opponent is a fintech company specialising in blockchain technology which claims use of AUDD as a trade mark in Australia since February 2022 and is the owner of trade mark registration 2246967 for AUDD, filed on 4 February 2022 in class 36 for “Financial affairs; Financial exchange of crypto assets; Financial exchange services; Currency exchange services; Trading in currencies; Brokerage of currency; Buying and selling currency” (‘Registration’).

6. All that is known of the Applicant comes from the declaration of Gregory Pieris which suggests that the Trade Mark has used in connection with a music recognition API (application programming interface).   I note, too, from official records that on 13 December 2024 the Applicant filed an application to remove the Registration from the Register for non-use but that the final outcome recorded is that those proceedings were discontinued.

   Discussion

   Section 44

7. Section 44 provides:

   44  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.

8. In the absence of submissions from either party, the SGP simply nominates the Registration as the basis for s 44 and the declaration of Effie Dimitropoulos states that the Trade Mark “is substantially identical, or deceptively similar, to a trade mark registered by the Opponent in respect of closely related services”.

9. Applying s 44, the Registration stands in the name of a person other than the Applicant and its priority date (4 February 2022) is earlier than the Relevant Date which is the priority date of the Application (4 May 2024).  For the purposes of comparison, I can disregard the upper and lower case of the Trade Mark.  I find that it is substantially identical to the mark of the Registration.  The only live question is whether the Registration covers services which are either similar to the Services and/or closely related to the Goods.

10. Section 14(2) provides that services are similar to other services “(a) if they are the same as the other services; or (b) if they are of the same description as that of the other services.  In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) the Full Federal Court laid out the following questions to help ascertain whether services might be services of the same description:

    (1)       The inherent character of each of the services for which the trade mark is registered.  That may emerge as a function of language but it is likely to be the subject of evidence:  for example, what does “an hotelier” actually do?  What precisely is involved in providing “property management services”?

    (2)        To whom are the services offered?

    (3)        How are they provided?

    (4)        How are they used?

    (5)        What is their purpose?

    (6)        Are they bundled together with other services?

    (7)        Are they differentiated by the functional level at which they are provided:  wholesale or retail?

    (8)         Where do they originate?

    (9)         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?

    (10)        How closely contestable are the services in substance:  are they in the same market or trade?

    (11)       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].[4]

    [4] [2018] FCAFC 231 [339].

11. I do not find that the Services are either the same as, or of the same description as, “financial affairs; financial exchange of crypto assets; financial exchange services; currency exchange services; trading in currencies; brokerage of currency; buying and selling currency”. 

12. The more challenging question is whether those same class 36 services of the Opponent are closely related to any of the Goods.  In Registrar of Trade Marks v Woolworths Ltd, French J said that the expression “closely related” was of wider import than the word “similar”.[5]  In Re Aussat Pty Ltd, a list of questions – similar to that in Accor – was compiled by the Registrar’s delegate, of particular relevance, being: are the goods a necessary adjunct to a particular service.  A corollary question arising from the case law is whether the public would expect the same business to provide or supply both the service and the goods,[6] at the same time bearing in mind that the relationship between different goods and services shifts over time with both market and technological development.

    [5] [1999] FCA 1020 at 424.

    [6] See, for example, Winglide Pty Ltd v Corporate Express Inc. (1999) 46 IPR 627.

13. My assessment is that “application software” and a host of other nominated Services are necessary adjuncts to virtually all of the services covered by the Registration.  Some, such as trading in currencies, will in this age absolutely depend on application software, but whether the branding of that software is ever before the public eye is another matter.  On the other hand, buying and selling currency may be a business where the public is exposed to the same mark on goods and services and expects that they come from the same trade source.

14. Absent any engagement from the Applicant in this case which might have included submissions to convince me otherwise, I find that broadly the class 36 services of the Opponent are closely related to the Goods. 

    Decision

15. Section 55(1) relevantly provides:

    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.        

16. The s 44 ground of opposition is at least partly successful and the question which arises is whether this is a case where the reasoning in Apple Inc v Registrar of Trade Marks should apply.  In that case Yates J. stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[7]

    [7] [2014] FCA 1034, [232].

17. Under this principle the Registrar may reject an application in its entirety where an opposition has been established for some, but not all, of an applicant’s goods or services.  However, the Registrar retains a discretion to offer an amendment to an applicant, allowing it to remove the goods and services for which a ground of opposition has been established. 

18. In the case of Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

    I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[8]

    [8] [2014] FCA 373, [231].

19. The Applicant has not participated in the proceedings beyond filing a Notice of Intention to Defend.  Neither party filed submissions nor identified a principled basis to allow amendment of the Application by class or by limitation(s) to the Goods/Services.  In these circumstances, I do not consider it appropriate to exercise my discretion and offer an amendment in respect of the Trade Mark.  Therefore, I reject the Application for possible registration in its entirety.

20. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s order or direction.

    Costs

21. In the SGP the Opponent sought costs. Since it has established a ground of opposition, I award costs against the Applicant in the amounts set out in Schedule 8 of the Regulations.

    Debrett Lyons
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    22 September 2025

    
    

and Edelman JJ).