Opposition by Emoji Company GMBH to registration of trade mark application no. 1816866 (9, 41, 42 and 45) EMEJI - in the name of Inquisitive Learners Pty Ltd

[2019] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Emoji Company GMBH to registration of trade mark application no. 1816866 (9, 41, 42 and 45) – EMEJI - in the name of Inquisitive Learners Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: Olaf Kretzschmar of One IP International Pty Ltd

Applicant: Justine Beaumont of Counsel instructed by Davies Collison Cave

Decision:

2019 ATMO 70
Trade Marks Act 1995 - Section 52 opposition: sections 42(b), 44 and 60 pressed at hearing – section 44 established for all goods and services.

Background

1. Inquisitive Learners Pty Ltd (‘the applicant’), filed trade mark application number 1816866 on 20 December 2016 in classes 9, 41, 42 and 45 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1816866            

   Filing Date:  20 December 2016

   Specification:  Class 9: Computer software in this class, including, computer operating software, computer browsing software, computer software for providing access to the Internet and computer search engine software; computer graphics software; computer programs for producing computer graphics; computer software for generating icons and avatars; interactive computer software; interactive education software; interactive video software; interactive terminals; downloadable digital applications and apps; computer programs including interactive computer programs; voice recognition software; speech to text conversion software; voice-enabled software applications; pre-recorded media, including videos; computer hardware; artificial intelligence apparatus; publications in electronic format; electronic newsletters (downloadable); electronic magazines (downloadable); electronic publications (downloadable); electronic publications including those sold and distributed online; printed publications in electronically readable form; printed publications in machine readable form; publications in computer readable form; publications in machine readable form; publications downloaded in electronic form from the internet; parts, fittings and accessories for the aforesaid goods

   Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment services, including providing on-line computer games, Internet games; organisation of amusements and entertainment for children; electronic publication of electronic journals and web logs featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; information, support, assistance, consultancy and advisory services in relation to the foregoing

   Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer services in this class; application service provider (ASP) services; providing temporary use of non-downloadable software applications; providing temporary use of non-downloadable software applications for creating and generating icons and avatars; computer hardware and software consulting services; information relating to computer technology provided on-line from a global computer network or the Internet; creating and maintaining web-sites; providing search engines for obtaining data via communications networks; operating search engines; cloud computing; computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing online technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites via a website; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; computer services, namely, providing search engines for obtaining data on a global computer network and other electronic communications networks; providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; computer services, namely, application service provider featuring application programming interface (API) software for providing gift suggestions and to allow users to perform electronic business transactions via a global computer network; electronic storage of digital media, including, data, documents, text, photographs, images, music, graphics, audio, video, and multimedia content; providing online resources for software developers; hosting computer, electronic and online databases in the field of entertainment and in the fields of academic, social and community interest groups; advisory, support, information and consultancy services relating to the foregoing

   Class 45: Introduction and social networking services; personal and social services rendered by others to meet the needs of individuals; social introduction and networking services; advisory, support, information and consultancy services relating to the foregoing

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 11 May 2017. Subsequently Emoji Company GMBH (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).      

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 1 February 2019. The applicant was represented by Justine Beaumont of Counsel instructed by Davies Collison Cave. The opponent was represented by Olaf Kretzschmar of One IP International Pty Ltd.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and those grounds of opposition under sections 42(b), 44 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Olaf Kretzschmar (‘Kretzschmar 1’) dated 14 November 2017 with Annexures A to M

   Evidence in Answer

   ·Tim Power (‘Power’) dated 21 February 2018 with Exhibits TP-1 to TP-16

   Evidence in Reply

   ·Olaf Kretzschmar (‘Kretzschmar 2’) dated 17 April 2018 with Exhibits OP-1 to OP-5

7. At the hearing the opponent made a request under Reg 21.19 of the Regulations for permission to file additional evidence in support of the opposition. Following submissions from both parties I have refused this request.  

   Discussion

   Section 44 –Substantially Identical or deceptively similar

8. Section 44 of the Act relevantly 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.

9. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or applied for, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the Trade Mark

10. The opponent cited five trade mark registrations in support of the section 44 ground of opposition which are as follows:

Trade Mark No.	Trade Mark	Classes
1689321	emoji	3, 9, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 32
1702972	emoji	28, 38, 41, 45
1771945	emoji	11
1771963	emoji	12
1872976	emoji	5, 8, 10

1. The opponent is the registered owner of the above trade mark registrations which all have earlier priority dates than that of the Trade Mark (‘the opponent’s trade mark’).

2. I turn now to the respective goods and services of the applicant and the opponent. I note that the opponent’s trade mark registration 1702972 covers the same services in classes 41 and 45 as those services covered by the opposed application in classes 41 and 45. I additionally note those services claimed in Class 45 for the opponent’s trade mark Registration No. 1702972 which relate to social networking services are closely related those services in Class 42 and the some of the goods in in class 9 of the opposed application, namely:

   Class 9: providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing online technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites via a website; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data 

   Class 42: computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks;

3. There has been considerable argument between the parties about what services and goods and related and which are not. Considering that many of the goods and services that both parties have sought registration of their trade marks for strongly relate to social media and the provision of a social media platforms for consumers to network on, I am persuaded that the average Australian consumer would be less inclined to slice up all the different parts of a social media platform with the precision of a surgeon and see them as being provided by separate entities instead of being a single product. I believe it is more likely that an average Australian consumer logging onto a social media platform such as FaceBook® would perceive many of the functions of that site such as liking posts or arranging a meeting using software in that social media platform are all provided by the same trader – namely, Facebook Inc. Therefore, I am satisfied that the opponent’s goods and services are similar services and closely related goods to those claimed by the opposed trade mark application.

4. The next issue I will decide is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark	Trade mark
emoji

1. I am satisfied the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[4] There is the differing letter ‘e’ contained within the Trade Mark which creates a different look and a different aural pronunciation which precludes the trade marks from being substantially identical.

   [4] (1963) 109 CLR 407 at 414

2. Deceptive similarity is defined in section 10 of the Act as follows:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: [5]

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

   [5] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The decisive question is whether the use of the Trade Mark in connection with the goods and services in Class 9, 41, 42 and 45 would result in a tangible danger of confusion or deception given the previous registration for the opponent’s trade mark. I consider it would.

6. In considering the respective trade marks it becomes clear that they share some striking similarities. Namely, both words consist of five letters and share the beginning two letters and the end two letters. Indeed, the only difference between the two trade marks is the letter ‘O’ and ‘E’ which is in the very middle of the word. I note the applicant’s submissions that the Trade Mark is a coined word with no definition while the opponent’s trade mark comes from the Japanese language and literally joins the two commonly understood words ‘e’ being a picture or drawing with ‘moji’ being a letter or character.

7. I am also aware that the word EMOJI has a well understood meaning through the general population of Australia to describe ideograms and smileys used in electronic messages and webpages. An emoji is an actual picture which can include facial expressions, common objects, places, animals and types of weather. Powers states that ‘emojis’ originated on Japanese phones in 1999 and became increasingly popular worldwide in 2010. Exhibit TP-4 supports this statement. 

8. Taking all this into account, including the modest stylization contained with the Trade Mark, I still consider that the trade marks are deceptively similar. The difference of one letter, buried in the middle of the trade mark is not sufficient to differentiate the trade marks from each other when I consider the trade marks in their entirety[6]. Given the general monolingual Australian public it is likely that the single, differing letter in the trade marks would be overlooked and there is a real and tangible danger of confusion and deception in the marketplace. However, subsection 44(3) and 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

   [6] Empire Brands Pty Ltd [2010] ATMO 129

9. In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the established section 44 ground of opposition I turn to the applicant’s evidence. In this case the applicant’s evidence is of limited assistance in establishing its use of the Trade Mark. Much of Power is dedicated to explaining the differences between the opponent’s trade mark and the Trade Mark. There is considerable material to support the applicant’s assertions that EMOJI is a word with an established meaning. I note that Mr Power states that in early October 2016 he and his staff ran about three focus groups with a number of teachers and students in which the applicant presented the EMEJI trade mark and various EMEJI icons in relation to potentially being avatars for an education resource and as part of learning activities at school and home. I am also aware that the applicant is the owner of the domain name emeji.com which it purchased through an auction and become the owner of on 29 November 2016.

10. I further note the comments of Justine Beaumont, Counsel for the applicant, that stated the parties have been co-existing for a number of years now and that there has never been any documented instance of any consumer being deceived or confused by the Trade Mark. While this may well be the case, the evidence before me does not support the applicant’s broad assertions as to its use of the Trade Mark and the duration of that use. I am satisfied that a section 44 ground of opposition has been established by the opponent in regards to all the applicant’s claimed goods and services and that the applicant has not been able to overcome that ground of opposition with its evidence.

    Decision

1. Section 55 of the Act provides:

   55  Decision

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

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

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

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

   Note:          Forlimitationssee section 6.

2. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly I refuse to register trade mark application no. 1816966

   Costs

3. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   10 May 2019