Opposition by Outsystems Pty Ltd to extension of protection under regulation 17A.33 of the
[2025] ATMO 119
•18 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Outsystems Pty Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark numbers 2113237 (International Registration number 1546887) (classes 9 and 42) – OUTSYSTEMS – and – 2118767 (International Registration number 1549238) (classes 9 and 42) – OUTSYSTEMS (figurative) – in the name of OUTSYSTEMS - SOFTWARE EM REDE S.A.
Delegate: | Timothy Brown |
Representation: | Opponent: Andrew Petal of YIP Legal Pty Ltd Holder: Chelsea Peters of Spruson and Ferguson |
Decision: | 2025 ATMO 119 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ss 44 considered – prior use, honest concurrent use and other circumstances considered – s 44 established – extension of protection refused |
Background
This decision concerns an opposition brought by Outsystems Pty Ltd (‘Opponent’) under reg 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection of the following International Registrations Designating Australia in the name of OUTSYSTEMS - SOFTWARE EM REDE S.A (‘Holder’):
[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’).
Trade Mark Number: 2113237
International Registration Number: 1546887
Trade Mark: OUTSYSTEMS (‘Word Mark’)
Filing Date: 10 May 2020
Priority Date: 28 April 2020[2]
[2] Convention priority claimed on the basis of Portugal trade mark number 641594.
Goods and Services: See Schedule A
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
…
Trade Mark Number: 2118767
International Registration Number: 1549238
Trade Mark: (‘Composite Mark’)
Filing Date: 8 May 2020
Priority Date: 28 April 2020[3]
Goods and Services: See Schedule B
Endorsement: PANTONE 1795C; Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[3] Convention priority claimed on the basis of Portugal trade mark number 641595.
For the remainder of the decision, I have referred to the above International Registrations Designating Australia, collectively, as the ‘IRDAs’.
The IRDAs were examined, and acceptances for the extension of protection were advertised on 20 July 2023 for the Word Mark and 25 July 2023 for the Composite Mark.
The Opponent filed Notices of Intention to Oppose on 20 September 2023, followed by Statements of Grounds and Particulars (‘SGPs’) on 9 October 2023. I note that the SGPs are identical but for the references to the opposed IRDAs. The Holder filed Notices of Intention to Defend the oppositions on 9 November 2023.
The Opponent filed evidence in support (‘EIS’) for both oppositions on 12 February 2024. The Holder filed its evidence in answer (‘EIA’) on 13 May 2024. The Opponent filed evidence in reply (‘EIR’) on 16 July 2024. The evidence filed is the same for both oppositions.
Following the end of the evidence stage, both parties requested to be heard. The Opponent filed written submissions on 5 March 2025 and the Holder filed written submissions on 12 March 2025. The matter was heard before me, a delegate of the Registrar of Trade Marks on 19 March 2025 by video conference. The Opponent was represented by Andrew Petal of YIP Legal and the Holder was represented by Chelsea Peters of Spruson and Ferguson.
Grounds, Onus and Relevant Date
The grounds of opposition nominated in the SGPs were sections 42(b), 44, 58, 58A, 60 and 62A.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[4] The required standard of proof is on the balance of probabilities.[5] The date at which the rights of the parties will be determined is 28 April 2020 (‘Relevant Date’), being the priority date of the IRDAs.
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[5] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
| Declarant and Position | Date | Annexures or Exhibits |
| EIS | ||
| Kyle Lange, CEO and sole Director of the Opponent (‘Lange’) | 18 January 2024 | KL-1 to KL-4, including Confidential Annexure KL-1 |
| Andrew Petale, Registered Trade Mark Attorney and Principal of YIP Legal (‘Petale’) | 12 February 2024 | AP-1 |
| EIA | ||
| June Duchesne, General Counsel for the Holder (‘Duchesne’) | 10 May 2024 | JD-1 to JD-17, including Confidential Exhibits JD-3, JD-8, JD-9, JD-11, JD-12, JD-15 JD-16 |
| EIR | ||
| Kyle Lange (‘Lange 2’) | 2 July 2024 | Confidential Annexure KL-1 |
EIS
Lange annexes the following declarations:
Declaration of Kyle Lange (‘Lange 3’) dated 15 October 2018 with Exhibits KL-1 to KL-7, including Confidential Exhibits KL-6 and KL-7; and
Declaration of Andre Guerreiro Rodrigues, a legal representative for the Holder, dated 20 April 2020 (‘Rodrigues’) with Exhibits 1 to 11.
Lange 3 was initially filed by the Opponent in response to an adverse report issued by IP Australia during examination of the following trade mark registration (‘Opponent’s Mark’):
Trade Mark Number: 1910500
Trade Mark: OUTSYSTEMS
Owner: Opponent
Filing Date: 1 March 2018
Goods and Services: See Schedule C (‘Opponent’s Goods and Services’)
Endorsement: Provisions of paragraph 44(4) and/or Reg 4.15A(5) applied
Rodrigues was filed by the Holder during an opposition to the registration of the Opponent’s Mark.[6]
[6] See: Outsystems Software EM Rede SA v OutSystems Pty Ltd [2022] ATMO 164 (Delegate Katrina Brown) (‘Outsystems’).
Mr Lange declares that he established the Opponent in June 2005 as an IT consultancy company.[7] According to Mr Lange, the Opponent’s Mark was initially used in relation to IT consultancy services,[8] but its use has since extended to ‘workplace management systems’. Mr Lange explains that these systems enable businesses to monitor their workforce,[9] and purportedly include timekeeping and attendance recording systems, job costing systems, access control systems, employee tracking systems, electronic key safes, computerised swipe systems and plastic and paper swipe cards. Mr Lange states that the Opponent also provides customer support for these systems.
[7] Lange 3 [2], [5] and exhibit KL-1.
[8] Ibid [13].
[9] Ibid [14].
Annexed to Lange 3 are copies of invoices featuring the Opponent’s Mark from 29 August 2009, 21 August 2010, 27 September 2013, 30 January 2015, and 30 November 2017.[10] Lange 3 also includes the Opponent’s annual sales figures for goods and services provided under the Opponent’s Mark from 2009 to 2018,[11] and advertising spend from 2005 to 2017.[12]
[10] Lange 3 Exhibit KL-3.
[11] Lange Confidential Annexure KL-7.
[12] Ibid Confidential Annexure KL-6.
Exhibit KL-4 to Lange 3 contains screenshots from the website (‘Opponent’s Website’) sourced from the Wayback Machine Internet Archive, which show use of the Opponent’s Mark and the trade mark on 10 September 2009 in relation to workplace management systems.
Petale also annexes screenshots of the Opponent’s Website sourced from Wayback Machine Internet Archive.[13] The screenshots demonstrate use of the trade mark in relation to workplace management software and hardware from various dates between 31 October 2018 and 4 March 2020.
[13] Petale Annexure AP-1.
EIA
According to Duchesne, the Opponent is a software company founded in Portugal in 2001,[14] which provides ‘low code’ software for the ‘development of mobile and web enterprise applications’.[15]
[14] Duchesne [9].
[15] Ibid [8].
Ms Duchesne declares that since 2001, the Holder has continuously offered software goods and services by reference to the IRDAs. In support, Duchesne includes screenshots from the Holder’s website, (‘Holder’s Website’).[16] These screenshots show use of the Word Mark dated 2 November 2001, and the Composite Mark dated 8 July 2009. Google Analytics are also provided for the Holder’s Website, summarising visitors to the website from Australia.[17]
[16] Ibid Exhibit JD-2.
[17] Ibid Confidential Exhibit JD-3.
According to Duchesne, the Holder launched an application entitled ‘OutSystems Express Edition’ in 2007. Exhibited to Duchesne is a screen capture of a Google news alert for an article published by iTwire.com.au dated 24 May 2007. Ms Duchesne declares that by 2008, OutSystems Express Edition had been installed ‘more than 4000 times worldwide’ and had users in ‘more than 130 countries’, including Australia. A sales document exhibited to Duchesne refers to the program’s use by developers in Australia in Q1 of 2008.[18]
[18] Ibid Exhibit JD-6.
Exhibit JD-7 is a screen capture of the Holder’s Website showing a case study discussing the adoption of the Holder’s ‘Outsystems Agile Platform’ by TIO, which appears to be a government owned Australian corporation.
Duchesne also includes a list of the Holder’s Australian customers from 2011 to 2024,[19] and the Holder’s revenue in Australia from 2011 to 2023.[20]
[19] Ibid Confidential Exhibit JD-8.
[20] Ibid Confidential Exhibit JD-9.
Ms Duchesne declares that goods and services offered for sale under the IRDAs are also provided by the Holder’s authorised partners. Duchesne includes a list of the Holder’s authorised partners in Australia and screen captures from the websites of these partners.[21] I note that these screen captures are not dated. Also exhibited to Duchesne are examples of the agreements with the authorised partners.[22]
[21] Ibid JD-10.
[22] Ibid Confidential Exhibit JD-12.
In addition to the Holder’s Website and those of its authorised partners, the IRDAs are also promoted on the Holder’s social media accounts. The IRDAs have also been referenced and promoted in various third party media publications. Examples are exhibited to Duchesne.[23]
[23] Ibid Exhibit JD-13 to JD-14.
According to Duchesne, the IRDAs are also used in relation to a community forum and support program called ‘Outsystems Developer Community’. Duchesne provides the details of the programs earliest known Australian member, who, according to Duchesne, has been an active member since 17 September 2009.
The Holder is the owner of the following registered trade mark:
Trade Mark Number: 1767596
Trade Mark:
Priority Date: 28 April 2016
Goods and Services: See Schedule D
The Holder was also the owner of the following registered trade mark in Australia:
Trade Mark Number: 1146143
Trade Mark:
Priority Date: 10 November 2006
According to Duchesne, trade mark number 1146143 was allowed to lapse by the Holder following the filing of trade mark number 1767596.
EIR
A preliminary issue arose during the hearing regarding the Opponent’s EIR. The Holder submitted that paragraph [8] and Confidential Annexure KL-1 of Lange 2 did not constitute evidence in reply. Both aspects of the EIR pertain to the Opponent’s engagement with a business trading under the name MIRKA in December 2005.
Evidence in reply is generally limited to replying to the Holder’s evidence in answer. It is not an opportunity to file further evidence in support of the grounds of opposition. In this case, I agree with the Holder that paragraph [8] and Confidential Annexure KL-1 do not constitute evidence in reply. However, as will become apparent, this material has had no bearing on the outcome of this decision, and it has not been necessary to refer it in determining this decision.
Discussion and Reasons
Section 44
Section 44 relevantly provides:
(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.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
In order to succeed under this ground, the Opponent must establish that the IRDAs are substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Holder, in respect of goods or services that are similar, or closely related to the Holder’s Goods and Services.
The Opponent relies on the Opponent’s Mark as the basis for this ground of opposition. I note that the Opponent’s Mark has an earlier priority date than the IRDAs and is held in the name of another person.
The Holder accepts, and I agree, that the Opponents Mark is substantially identical to the IRDAs. The remaining issue for consideration is whether the Holder’s Goods and Services are similar and/or closely related to the Opponent’s Goods and Services.
Comparison of Goods and Services
Section 14 provides:
(c) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(d) For the purposes of this Act, 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.
Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’[24]. This is determined through consideration of a number of factors, including the nature of the goods,[25] the purpose for which the goods will be used,[26] and the trade channels through which the goods are bought and sold.[27] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.[28]
[24] Re Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).
[25] Ibid.
[26] Ibid.
[27] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).
[28] (1954) 70 CLR 84, 94.
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. 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.[29]
[29] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37].
Both the Holder’s Goods and the Opponent’s Goods are comprised of computer software and applications in Class 9. I note that the Holder’s Goods are limited to ‘software development tools or for use in the development of mobile and web enterprise applications’ and the Opponent’s Goods are limited to ‘being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes’.
The Holder’s Services comprise of a range of software related services, including the provision of non-downloadable software, computer programming services, design and development of software services, installation, support and repair services, and consultancy and research services in the fields of computer software, all limited to ‘software development tools or for use in the development of mobile and web enterprise applications’. The Opponent’s Services comprise a variety of software as a service, provision of non-downloadable software platforms, computer software consultancy services, and project management (design) services, all limited to ‘being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes’.
The Opponent submits that the respective limitations are not sufficient to remove the similarity between the goods and services. In particular, the Opponent emphasises that software development tools could encompass software in the areas of ‘time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes’. Conversely, the Holder contends that the risk of confusion is remote as the trade marks will be used in relation to goods and services that serve different purposes and functions.
I accept that the purposes of the respective goods and services are different. However, the relevance of this distinction to the average of consumers of the goods and services is less clear. The providers of goods and services, irrespective of the specific purposes of the goods and services, can be characterised as software developers. The class of consumers to whom the goods and services would be provided are either the same or overlapping to a significant degree. Most pertinently, software development tools or tools for development of web enterprise applications may be used to develop a wide variety of software, including the very same software and software as a service described in the Opponent’s Goods and Services. This similarity extends, in my view, to the research, consultancy and design/development services specified in class 42 of the IRDAs. These services are provided in the context of software development and for the same purposes as the non-downloadable software services specified in the Holder’s Services.
For these reasons I am satisfied that all of the Holder’s Goods and Services are similar or closely related to the Opponent’s Goods and Services in classes 9 and 42, and that given the similarity of the trade marks, there would be a real and tangible danger of confusion between the IRDAs and the Opponent’s Mark.
The Opponent has established a prima facie ground of opposition under ss 44(1) and 44(2).
Section 44(4) - prior use
Section 44(4) enables a trade mark which would otherwise have been rejected under s 44(1) and/or 44(2) to be registered due to prior continuous use of the trade mark. For s 44(4) to be established, the Holder must demonstrate continuous use of the IRDAs in relation to the Holder’s Goods and Services from before the priority date of the Opponent’s Mark, 1 March 2018, until the Relevant Date.
Duchesne states that the Holder first began using the IRDAs in 2001. The earliest example of this use provided by the Holder is a screen capture of the Holder’s Website dated 2 November 2001. However, there is no indication that at this time the Holder was providing its goods or services to Australia. There is an assertion that the Holder’s Website was accessible to Australians, supported by data from Google analytics since 2005. However, accessibility does not equate to prior use of the IRDAs in Australia. There is nothing in the Holder’s evidence to indicate that the Holder’s Goods and Services were offered to Australians at this time.
Duchesne refers to the launch of ‘OutSystems Express Edition’ in 2007 and an article published in May 2007 by an Australian publication. The article has not been produced, nor is it apparent from the Google News Alert provided by the Holder whether the ‘OutSystems Express Edition’ was launched in Australia or utilised by Australian users. Exhibit JD-6 of Duchesne is described as a ‘sales document’ for ‘internal and partners usage only’ and makes reference to Australian developers in the context of adoption of the ‘OutSystems Express Edition’. However, there is no evidence of any public use of the IRDAs at that time directed to Australian consumers.
Duchesne asserts that by January 2009, the Holder had established a partnership with Timestamp (‘Timestamp’), an IT consultancy company that has undertaken IT projects in Australia. In support, Duchesne includes a screenshot of the Holder’s Website which refers to Timestamp as one of ‘OutSystems Partners’ and states ‘Timestamp has deployed projects in…Australia’.[30] Putting aside whether any alleged use of the IRDAs by Timestamp could be considered authorised use within the meaning of s 8, there is no evidence of Timestamp using the IRDAs in Australia, nor of Timestamp offering any goods or services in Australia. I note that the Holder has provided examples of subsequent agreements with authorised users of the IRDAs. However, these agreements are of no assistance in establishing use of the IRDAs in 2009.
[30] Duchesne [20].
A case study published on the Holder’s Website dated 20 October 2011 refers to the use of its ‘OutSystems Agile Platform’ development system by the Australian based company, TIO, in 2011.[31] This is further supported by a list of Australian clients from 2011 to 2024,[32] the Holder’s revenue in Australia from 2011 to 2023,[33] a list of Australian partners from 2012 to 25 October 2023,[34]and examples of partnership agreements from various dates between 2015 and 2023. The list of Australian clients at Confidential Exhibit JD-8 is of limited utility in the absence of any dated evidence that shows how the IRDAs were presented to these parties or what specific goods and services were provided. I note that the examples of partnership agreements utilise the IRDAs. However, there are no dated examples demonstrating use of the IRDAs by the Australian partners/users in Australia. Furthermore, the Holder itself is not a party to these agreements, which instead involve agreements between what appears to be Australian based companies and/or entities in either Singapore or Australia. There is no evidence of the relationship between these parties and the Holder so as to demonstrate effective control. Accordingly, I am not persuaded that these examples demonstrate use of the IRDAs by the Holder in Australia.
[31] Ibid Exhibit JD-7.
[32] Ibid Confidential Exhibit JD-7.
[33] Ibid Confidential Exhibit JD-8.
[34] Ibid Confidential Exhibit JD-11
Duchesne includes screen captures from the Holder’s Facebook account. These screen captures show a post, dated 17 July 2015, referencing the IRDAs in the context of what is described as a ‘live demo’ in Sydney.[35]A further post, dated August 2016, references the IRDAs at an event in Perth, and another post, dated 24 July 2018, promotes what appears to be a business relationship with McMillan Shakespeare’s, ‘Australia’s largest provider of salary packaging and novation leasing services’.[36] There is a significant degree of ambiguity surrounding what goods and/or services the IRDAs are being used on or in relation to in this context.
[35] Ibid-JD-13.
[36] Ibid.
I can infer from the Holder’s evidence that there has been some use of the IRDAs in Australia. The scope of that use, whether it has been in relation all of the Holder’s Goods and Services, and whether it has been continuous is less clear. It is apparent from the Holder’s Website that there has been global use of the IRDAs from as early as 2001. I accept that the Holder used the IRDAs in Australia on 20 October 2011. Although this instance of use is before the priority date of the Opponent’s Mark, I am not satisfied that there has been continuous use of the IRDAs from that point in Australia to the Relevant Date. Whilst the Holder has provided its yearly revenue from 2011, there are issues with the subsequent examples of use of the IRDAs. What little use there may be, is further obfuscated by the agreements provided in Duchesne which reference agreements between purported authorised users and companies other than the Holder.
For these reasons I am not satisfied that there has been prior and continuous use of the IRDAs by the Holder.
S 44(3) - Honest Concurrent Use and/or Other Circumstances
The Holder bears the onus of establishing that there has been honest concurrent use of the Trade Mark.[37] In McCormick & Company Inc v McCormick (‘McCormick’), Kenny J stated that the criteria for determining whether registration of a trade mark should be permitted pursuant to s 44(3) of the Act are:
(i) the honesty of the concurrent use;
(ii) the extent of the use in terms of time, geographic area and volume of sales;
(iii) the degree of confusion likely to ensue between the marks in question;
(iv) whether any instances of confusion have been proved;
(v) the relative inconvenience that would ensue to the parties if registration were to be permitted.[38]
[37] Trident Seafoods Corporation v Trident Foods Pty Ltd Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’).
[38] [2000] FCA 1335, [30]-[32].
The Holder relies on the same evidence to establish honest concurrent use of the IRDAs, noting in addition that there have been no known instances of confusion between the trade marks and that the Holder’s adoption of the IRDAs was honest, having occurred prior to the Opponent’s first use of the Opponent’s Mark.
The same issues that prevented the Holder from establishing prior use are applicable to the Holder’s case for honest concurrent use. Although the period relevant to honest concurrent use of the IRDA is briefer, noting the priority date of the Opponent’s Mark, the Holder submission is not supported by clear demonstrated use of the trade mark by the Holder in connection with the Holder’s Goods and Services in Australia within this period. In particular, I note that other than the use demonstrated on 20 October 2011, I am not satisfied that the Holder has demonstrated concurrent use of the IRDAs in Australia in relation to the Holder’s Goods and Services. The onus is on the Holder to establish hones concurrent use of the IRDAs, and in the absence of any further use, I cannot be satisfied that there has been honest concurrent use of the IRDAs.
In regard to any other circumstances which would make registration appropriate, the Holder has drawn my attention to its other trade marks, namely trade mark registration 1767596 (‘1767596’) and the previously registered trade mark number 1146143. The Holder asserts that its use of 1767596 has also been continuous.
Section 44(3)(b) is broad in scope and may include factors such as an earlier registered trade mark for the same trade mark or a trade mark possessing the same essential features. The weight afforded to the earlier registration is largely dependent on the circumstances of the case. I also note that the discretion afforded by s 44(3)(b) is exercised at the time the discretion is exercised rather than the priority date of the application.[39] Generally, the party seeking to rely on ‘other circumstances’ must make a compelling case.
[39] Trident (n 37) [83].
In the circumstances raised by the Holder, the degree of similarity between the trade marks and the goods and/or services and whether the cited mark was registered on the basis of prior use under s 44(4) are also relevant factors. I note that the Opponent’s Mark was registered on the basis of prior use, having been subject to an opposition by the Holder in Outsystems. I also note that the Holder was not able to establish s 58A in that matter.
I am not satisfied that the Holder has made out a compelling case to allow registration of the IRDAs. Although there is overlap with the respective goods and services, the scope of the IRDAs is different than the goods and services of the earlier registration. I particularly note that the IRDAs claim services in class 42 which pertain to research, design and technological consultancy services, which are beyond the scope of services specified in 1146143. Furthermore, given the issues regarding evidence of continuous use of the IRDAs for the Holder’s Goods and Services outlined above, I am not satisfied that there are commercial realities that exist which make registration of the IRDAs proper noting the risks of confusion between the trade marks. Finally, I am not convinced that it is appropriate to exercise the discretion on the basis of an earlier registration in circumstances where the Holder, after relying on its purported earlier use of the IRDAs, has not been able to establish ss 44(4) and 44(3)(a). For these reasons, I do not consider it appropriate to exercise the discretion under s 44(3)(b).
Accordingly, the s 44 ground of opposition has been established.
Decision
Regulation 17A.34N(1) provides:
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to extend protection to trade mark numbers 2113237 and 2118767.
Costs
Both parties sought costs. As the Opponent has been successful, I award costs against the Holder under section 221 in accordance with Schedule 8 of the Regulations in respect of trade mark number 2113237. In respect of trade mark number 2118767, I award reduced costs in the same manner as Hume Industries (Malayasia) Berhard v James Hardie & Coy Pty Ltd.[40]
[40] [2001] ATMO 78 (Delegate Terry Williams).
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
18 June 2025
Schedule A
Class 9: Mobile apps; downloadable computer software applications; downloadable mobile applications for the transmission of data; computer software platforms, recorded or downloadable; interactive software; operating software; collaboration software platforms (software); software for use in providing multiple user access to a global computer information network; software for the integration of artificial intelligence; cloud computing software; all the foregoing being software development tools or for use in the development of mobile and web enterprise applications.
Class 42: Providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; design and development of operating software to access and use a cloud computing network; technological consultancy and research services in the fields of computer software, computer hardware and computer networks; computer programming services; design, development, deployment, implementation, analysis, integration and management of computer software for others; installation, modification, maintenance and repair of computer software; customization and configuration of computer software; configuration of computer hardware using software; consulting services related to virtual infrastructure and computer networking applications; managed information technology services and operations for others, namely management of virtual infrastructure and consultancy related to computer networking applications; service provider, namely hosting, managing and administering computer software for others; leasing and rental of computer software; technical support services, namely troubleshooting in the nature of diagnosing computer hardware and software problems; all the foregoing being software development tools or provided for use in relation to the development of mobile and web enterprise applications.
Schedule B
Class 9: Mobile apps; downloadable computer software applications; downloadable mobile applications for the transmission of data; computer software platforms, recorded or downloadable; interactive software; operating software; collaboration software platforms (software); software for use in providing multiple user access to a global computer information network; software for the integration of artificial intelligence; cloud computing software; all of the foregoing being software development tools or for use in the development of mobile and web enterprise applications.
Class 42: Providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; design and development of operating software to access and use a cloud computing network; technological consultancy and research services in the fields of computer software, computer hardware and computer networks; computer programming services; design, development, deployment, implementation, analysis, integration and management of computer software for others; installation, modification, maintenance and repair of computer software; customization and configuration of computer software; configuration of computer hardware using software; consulting services related to virtual infrastructure and computer networking applications; managed information technology services and operations for others, namely management of virtual infrastructure and consultancy related to computer networking applications; service provider, namely hosting, managing and administering computer software for others; leasing and rental of computer software; technical support services, namely troubleshooting in the nature of diagnosing computer hardware and software problems; all of the foregoing being provided in relation to the development of mobile and web enterprise applications.
Schedule C
Class 9: Computer software; computer software for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); computer software for fault or status reporting; computer software for privilege-based access security systems; computer software for employee award interpretation; computer software for facilities management and controlling facility access systems and components therefor, namely, control panels, access card readers, and equipment and systems for video imaging, access control, alarm monitoring and security; computer software for controlling and operating security and access systems comprising locks, doors, access devices and security enclosures in the nature of boxes for securing keys; computer user interface software and control software for managing surveillance equipment and systems; software for computers and computer networks, including, applications and programs for enterprises including applications for portals, transactional systems, workflows, database centric applications, integration systems, containing web, email and mobile interfaces, that may be downloaded from a global computer network; computer software including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; computer software including computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable digital applications and apps; computer programs including interactive computer programs; electronic newsletters; electronic magazines; electronic publications; 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; all the foregoing being in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes.
Class 35: Business consultancy; business consultancy services relating to data processing; consultancy relating to data processing; data management consultancy; business research; computerised business research; business information; collecting business information; collecting business information; compilation of business information; computer assisted business information; computer assisted business information; computerised business information services; computerised business information services; provision of business information; provision of business information; collection of commercial information; company data information services; computerised business information retrieval; provision of business management information; provision of business statistical information; provision of commercial information; systemisation of information into computer databases; data capture (keyboarding); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes
Class 42: Online provision of web-based software (non-downloadable); provision of online non-downloadable software (application service provider); software as a service (SaaS); providing online non-downloadable software platforms for creating, developing, implementing, managing, tracking, measuring, analysing, reporting, and optimising employee time recordal, employee work attendance, employee start and finish times, employee movement, employee tracking, employee visits between work sites, work times (including breaks); providing online non-downloadable software platforms for fault or status reporting; providing online non-downloadable software platforms for privilege-based access security systems; providing online non-downloadable software platforms for employee award interpretation; computer software consultancy; online provision of web-based applications; project management (design); information, advisory and consultancy services relating to the aforesaid services; all of the foregoing services in relation to goods in the areas of time and attendance systems, job costing systems, access control systems, employee tracking systems, time recorders and electronic key safes; computerised business information storage
Schedule D
Class 9: Computer software and computer networks, including application software for analysing, processing and handling information and computer programs, including software downloadable from internet; apparatus which include integrated circuits, magnetic strips and memory chips; CD ROMS, discs and tapes
Class 35: Promotional services and sales promotion services in relation to computer programs and applications; retail and wholesale of computer programs and applications
Class 41: Technical and general training in information technologies, development of computer programs, tools and methodology
Class 42: rental of computer apparatus, equipment and hardware; rental of computer software; software consulting; software analysis, implementation and programing; study of technical projects; software installation and maintenance; data conversion for computer programs and other software; conception and maintenance services for third parties relating to internet pages, office applications, internet applications and mobile applications
Class 45: Licensing of computer software, including its reproduction and distribution to clients and partners
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