Opposition by InfluxData Inc. to registration of trade mark application number 1718503 (class 42) – Influx Systems - in the name of Thy Nguyen

[2019] ATMO 94

TRADE MARKS ACT 1995

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

Re:Opposition by InfluxData Inc. to registration of trade mark application number 1718503 (class 42) – INFLUX SYSTEMS - in the name of Thy Nguyen

DELEGATE:

Cristy Condon

Representation:

Opponent: Not Represented/No written submissions

Applicant: Written submissions by Daniel McIntosh, Trademarkings

Decision:

2019 ATMO 94

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43 and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by InfluxData Inc. (‘the Opponent’) to registration of the following trade mark (‘the Trade Mark’):

Trade Mark No	1718503
Trade Mark	INFLUX SYSYEMS
Applicant	Thy Nguyen (‘the Applicant’)
Filing Date	2 September 2015
Specification	Class 42: Information technology (IT) consultancy; Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Outsource service providers in the field of information technology; Provision of information relating to information technology

1. The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 17 August 2017.

2. The Opponent filed a Notice of Intention to Oppose on 26 September 2017, followed by a Statement of Grounds and Particulars (‘SGP’) on 26 October 2017.

3. The Applicant filed a Notice of Intention to Defend the Trade Mark on 21 December 2017.

4. In due course the Opponent filed evidence in support of the opposition. No Evidence in Answer or Evidence in Reply was filed. 

5. The parties were advised of their right to be heard. The Opponent exercised its right to be heard, however, after vacating hearing dates set for 14 February 2019 and 21 March 2019 the Opponent by way of a letter dated 20 March 2019 said it no longer wished to attend the March hearing and instead it wished to rely on the evidence filed. The matter came before me, a delegate of the Registrar of Trade Marks, to be heard by way of written submissions. The Applicant filed written submissions on 2 February 2019. No written submissions were filed on the Opponent’s behalf.

   Grounds of opposition and onus

6. In the rectified SGP the Opponent nominated grounds of opposition under ss 42, 43, and 60. It also dispensed with the s 44 ground for opposition which it had nominated in the original SGP.

7. The Opponent bears the onus of establishing at least one of the grounds of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.

8. The rights of the parties are to be determined as at the date of the application which is generally, but not always, the filing date. For the purposes of s 60 which speaks of the priority date, the relevant date is 2 September 2015 which, in this case, is the same as the filing date of the application. Sections 42 and 43, however, do not refer to a filing date or a priority date. In Apple Inc. v Registrar of Trade Marks his Honour, Yates J noted:

   [T]he Act does not in terms provide a mechanism for implementing a shifting date in s 41 or, indeed, in any other provision of the Act dealing with the registrability of a given mark. I can discern no basis for reading such a mechanism into the Act. [Emphasis added].

9. I will proceed on the basis that the filing date of 2 September 2015 is the relevant date at which to assess the nominated grounds.

   Evidence

10. The Opponent relies on the declaration of Michelle Gorton (Gorton IP) made on 10 April 2018 with Annexures A to M (‘Gorton’).

11. Ms Gorton states the Opponent is a software company, founded in 2012, which “delivers open-source and proprietary platforms and software solutions which assist individuals and businesses to analyse data metrics, events and other time-based data”.

12. She goes on to explain that the Opponent is the owner of the following trade marks and this is supported by the Annexures attached to Gorton, the contents of which are described in more detail later in this decision:

Trade Mark No	1850674	1850972
Trade Mark	INFLUXDB	INFLUXDATA
Applicant	Influxdata Inc.	Influxdata Inc.
Filing Date	8 June 2017	9 June 2017
Convention Priority Date	17 March 2017	N/A
Specification	Class 9: computer software for use in database management Class 42: Providing temporary use of on-line non-downloadable cloud computing software for use in database management	Class 9: Computer software for searching, indexing, organizing, managing, processing, storing, retrieving, analyzing and reporting information and data; computer software for use in database management; computer software for alerting machines, sensors and devices; computer software for collecting information, data and metrics from machines, sensors and devices; computer software for graphing and visualization of data Class 41: Training in the installation, use and operation of database management systems and software Class 42: Providing virtual computer systems and virtual computer environments through cloud computing; Providing temporary use of on-line non-downloadable cloud computing software for searching, indexing, organizing, managing, processing, storing, retrieving, analyzing and reporting information and data, for use in database management, for alerting machines, sensors and devices, for collecting information, data and metrics from machines, sensors and devices, and for graphing and visualization of data; Computer technical support services, namely, remote, on-site, and help desk services for database management systems and software applications
Endorsement	Convention priority claimed: 17 March 2017, United States of America, No. 87375887 in respect of COMPUTER SOFTWARE FOR USE IN DATABASE MANAGEMENT in class 9; PROVIDING TEMPORARY USE OF ON-LINE NON-DOWNLOADABLE CLOUD COMPUTING SOFTWARE FOR USE IN DATABASE MANAGEMENT in class 42.

1. The goods and services in the table above will now be referred to as “the Opponent’s goods and services” and the trade marks therein will be referred to as “the Opponent’s trade marks”.

2. Ms Gorton also claims that the Opponent’s goods and services “offered under the INFLUX trade marks, including the INFLUXDATA and INFLUXDB trade marks, are available for download throughout the whole of Australia from the website (“The Opponent’s website”) and have been since 2014”. She goes on to say later in the declaration:

   The ww.influxdata.com website has had an increasing number of hits or visits by consumers originating from Australia. By way of example, the number of hits to the website (bearing the INFLUX trade marks, in particular the INFLUXDATA and INFLUXDDB trade marks) originating from Australia in February 2018 alone was 4,000 page views.

   Since 2014, the INFLUX trade marks, in particular the INFLUXDATA and INFLUXDDB trade marks, have been used by the Company throughout the whole of Australia by way of the website, global press releases and the software itself.

   […]

   It is generally the case that the consumers who use and download the software bearing the INFLUX trade marks, will themselves discuss (and subsequently make available to third parties) the software via online communities and online blogs.

   […]

   The evidence…outlines the strong reputation that the various INFLUX trade marks, in particular the INFLUXDAATA and INFLUXDB trade marks, have in Australia in relation to the Goods and Services of Interest amongst consumers. When consumers see the various INFLUX trade marks, in particular the INFLUXDATA and INFLUXDB trade marks, in the Australian marketplace, they immediately associate these trade marks with the Company.

3. The Annexures attached to Gorton contain the following evidence:

   •    o  Annexure A consists of an undated copy of screenshots from the Opponent’s website specifically the “About InfluxData” page.

   •    o  Annexure B consists of an undated copy of screenshots from the Opponent’s website specifically the “InfluxDB” page.

   •    o  Annexure C consists of an undated copy of screenshots from the Opponent’s website specifically the “Inlfuxdata Products Overview” page.

   •    o  Annexure D is claimed to consist of a list of downloads of the INFLUXDATA/INFLUXDB software from Australia in 2014. The table contains four email addresses which have downloaded the software.

   •    o  Annexure E are copies of printouts of various pages taken from a third-party website called anchor.com.au. The blog post is dated 2014 and mentions the Opponent’s INFLUXDB trade mark and many other products from other traders.

   •    o  Annexure F is screenshots of the Internet Wayback Machine of the Opponent’s website showing use of the trade marks INFLUXDATA and INFLUXDB in relation to the Opponent’s goods and services. The copies are dated after the relevant date.

   •    o  Annexure G are copies of global press releases showing use of the Opponent’s INFLUXDATA and INFLUXDB trade marks in Australia from 2016-2018. These are dated after the relevant date.

   •    o  Annexure H are copies a of third^-party website that show consumers discussing the INFLUXDATA and INFLUXDB trade marks within online communities. Five blog posts discuss the Opponent’s InfluxDB trade mark

   •    o  Annexure I are copies of print-outs of online blogs and online articles mentioning the INFLUXDATA an INFLUXDB trade marks. These posts are either not dated or after the relevant date, except page 129.

   •    o  Annexure J are copies of presentation slides dated 2013 to 2018 which are downloadable from There is no evidence to show these have been downloaded or used by anyone in Australia.

   •    o  Annexure K is a printed copy of the website that shows a meet up event called ‘The Internet of Things and Real Time Analytics with Influx’ scheduled for 22 June 2016 in Adelaide where the Opponent was to appear by teleconference. This is dated after the relevant date.

   •    o  Annexure L is a printed copy of an iTunes Store webpage that shows a podcast available for download about INFLUXDATA. Ms Gorton deposes that this podcast includes mention of the Opponent’s INFLUXDATA and INFLUXDB trade marks. This is dated after the relevant date.

   •    o  Annexure M is printed copies from the Opponent’s social media pages including Facebook® and Twitter®. Most of this evidence is dated after the relevant date and all of it seems to be on social media accounts outside of Australia.

The Applicant has not filed any evidence in these proceedings but Mr McIntosh, for the Applicant, submits that there is no basis for the grounds of oppositions because the Trade Mark lacks any necessary connotation (s 43); the Opponent’s trade marks have no requisite reputation in Australia (s 60) and the evidence shows no confusion in the marketplace or damage to the Opponent’s business due to the Applicant’s use of the Trade Mark or from the filing of same (s 42(b)).

Grounds

Section 43

Section 43 provides:

43Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

This ground is particularised in the SGP as follows:

As evidenced above, the Opponent has established a reputation in the INFLUX- formative marks and the Opponent’s Trade Marks in Australia in relation to the Goods and Services of Interest. The use of the INFLUX SYSTEMS trade marks by the Applicant would cause consumers to believing that the INFLUX SYSTEMS trade mark is associated with the Opponent’s Trade Marks and INFLUX-formative marks

To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark which is likely to deceive or cause confusion. According to Gyles J in Pfizer:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question…

More recently Jagot J in Primary Heathcare Limited v Commonwealth of Australia considered and applied many of the well known cases which have considered the s 43 ground of opposition in times past and he said:

Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):

(1)     The section:

looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).

(2)“In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582 at [26]).

(3) The purpose of s 43:

is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).

(4)“Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).

(5)“The probability of deception or confusion must be finite and non-trivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).

(6)“In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).

(7)All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).

(8)The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).

The primary meaning of the word INFLUX is “An arrival or entry of large numbers of people or things”. The primary meaning of SYSTEM is “A set of things working together as parts of a mechanism or an interconnecting network, a complex whole”. Accordingly, the primary meaning of the Trade mark can be reasonably articulated as describing a large number of things working together as part of an interconnecting network.

The operative test under s43 however is concerned with the secondary meaning or “connotation” inherent in the mark itself not extraneous matters such as those articulated in the SGP. Confusion or deception due to use of the Trade Mark in the face of the Opponent’s trade marks, or it’s alleged reputation, should be dealt with under ss 60, 58 and 44.

I find there in no connotation in the Trade Mark that would evoke the s 43 ground.

Accordingly, I find that the s 43 ground of opposition has not been established.

Section 60

Section 60 of the Act provides:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

To establish this ground of opposition, the Opponent must show that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people at the relevant date. The Opponent must then establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

In the SGP the Opponent mentions other trade marks it uses in addition to the Opponent’s trade marks. It says:

The Opponent has also used various INFLUX-formative marks in Australia, including, INFLUXCLOUD and INFLUXENTERPRISE. By way of example, the INFLUXCLOUD trade mark was first used by the Opponent in Australia on or about July 2014. (the ‘Influx marks’)

I turn to consider the first limb of the Opponent’s opposition under s 60, that is, whether the Opponent, at the relevant date, had acquired the requisite reputation in the Opponent’s trade marks or in any of the Influx marks.

It is well established that reputation in the present context must be established as a matter of fact.

The words of the Hearing officer in Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H & Co. KG v Hugo Boss AG aptly describe how one should assess this requisite reputation. In that case the delegate said:

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question choses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

The evidence shows that the Opponent’s trade marks have, before the relevant date, had very limited use in Australia or that they could, like most other trade marks in this online age, be viewed online by people in Australia.

The opponent argues that use of the its trade marks and the Influx marks is shown through use on its website, press releases and the mention of them in various online communities where third parties comment on the Opponent’s trade marks. Much of the evidence is either dated after the relevant date or it is undated. The Opponent’s evidence is insufficient to establish that a significant or a substantial number of people would recognise a reputation existed in the Opponent’s trade marks or in the Influx marks at the relevant date. There is no other contemporaneous evidence before me. I have no sales, marketing or promotion expenses that would strengthen the Opponent’s case. In the absence of this I am not satisfied that a reputation existed in any of the Opponent’s trade marks or in the Influx marks in Australia amongst a significant or substantial number of people at the relevant date.

There is now no need for me to consider the second limb of s 60 but in case I am incorrect in respect to the issue of reputation, I say briefly that it is widely accepted that the concepts of ‘deceive’ and cause confusion’ are inexplicably linked to how similar the respective trade marks are. In the present matter if I had been satisfied that the requisite reputation had existed in the Opponent’s trade marks or in the Influx marks at the relevant date I would have found the second limb of section 60 was satisfied. But as is the case here, the s 60 ground of opposition has not been established.

Section 42(b)

Section 42(b) of the Act relevantly provides:

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

[…]

(b) its use would be contrary to law.

Under the s 42 (b) ground of opposition the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.

The SGP claims that the Opponent relies on ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also asserts that use of the Trade Mark would amount to the common law tort passing off.

The Opponent has failed to establish a ground of opposition under s 60 of the Act. This has a causal effect on whether the Opponent can succeed under the s 42(b) ground because the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60 and passing off.

In the words of the hearing office in Monster Energy v USA Nutraceuticals Inc:

Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’. Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

Accordingly, the s 42(b) ground of opposition has not been established.

Decision

Section 55(1) of the Act provides:

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

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

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

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

The Opponent has not established a ground of opposition.

Accordingly Trade Mark 1718503 may proceed to registration one month from the date of this decision.

If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application(s) should otherwise be in accordance with the Court’s order or direction.

Costs

The Applicant sought costs. As the successful party, the Applicant is so entitled.

I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Cristy Condon

Oppositions and Hearings

Trade Marks and Designs

18 June 2019