Opposition by Owlet Baby Care Inc to registration of trade mark application number 2093522 (Class 9) – Owlet Home – in the name of Owlet Home LLC.

[2022] ATMO 8

TRADE MARKS ACT 1995

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

Re: Opposition by Owlet Baby Care Inc to registration of trade mark application number 2093522 (Class 9) – Owlet Home – in the name of Owlet Home LLC.

Delegate:

Blake Knowles

Representation:

Opponent: FB Rice Pty Ltd.
Applicant: Marcaria.com LLC.

Decision:

2022 ATMO 8

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds for opposition pursued under ss 42(b), 44, 58, 60, and 62A – s 60 ground established – registration refused.

Background

1. This is a decision in the opposition by Owlet Baby Care Inc (‘Opponent’) to trade mark application number 2093522 (‘Application’) filed by Owlet Home LLC (‘Applicant’) on 4 June 2020 (‘Relevant Date’) for the trade mark ‘Owlet Home’ (‘Trade Mark’) for electric door bells; electronic access control systems for interlocking doors; thermometers, not for medical purposes; scales; smoke detectors; fire alarms in Class 9 (‘Goods’).

2. The Application was accepted for registration and subsequently advertised for opposition on 5 November 2020.  The Opponent filed a notice of intention to oppose on 4 January 2021, followed by a statement of grounds and particulars (‘SGP’) on 3 February 2021. The Applicant filed a notice of intention to defend on 9 April 2021.

3. The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 14 July 2021. The Applicant did not file Evidence in Answer and the Opponent accordingly did not file Evidence in Reply.

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

4. The parties were given the opportunity to request a formal hearing or to file written submissions. Neither party requested a hearing or elected to file written submissions. The Opponent requested that the matter be decided based on the materials filed and paid the relevant fee. I have decided this matter based on the particulars set out in the SGP and the evidence of the Opponent.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60, and 62A.

6. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

7. The EIS consists of a declaration by Mr Jacob Briem, General Counsel of the Opponent, executed on 13 July 2021, with Annexures JCB-1 to JCB-45.  

8. Mr Briem declares that the Opponent is a health technology corporation based in the USA specialising in baby monitoring equipment. The Opponent first commenced distributing its goods, being a ‘smart sock’ baby monitoring device, under the ‘Owlet’ brand (‘Opponent’s Mark’) in 2015.

9. The Opponent commenced selling products outside of the USA in 2017, and distribution in Australia commenced in April 2018. Mr Briem annexes representative invoices which confirm that smart socks were sold under the Opponent’s Mark around this time. A further invoice for a wholesale quantity of baby monitoring cameras indicates the Opponent’s Mark was used for these particular goods in Australia since at least March 2019 (an extract of the Opponent’s YouTube page indicates that the camera was first launched in the USA around November 2018). The following is an illustrative example of one of the Opponent’s products, which combines the smart sock and camera into a single package:

10. Mr Briem states that the Opponent’s products are promoted online, including on the Opponent’s Australian website which has been operational since early 2018 as confirmed by Internet Archive Wayback Machine extracts from 22 March 2018. Mr Briem provides Google analytics which indicate that the Opponent’s website has a significant number of Australian visitors each day, although these analytics relate to June-July 2021, which is twelve months after the Relevant Date.  The Opponent’s products are also sold online via Pinterest, Amazon, Harvey Norman, and David Jones, and Mr Briem annexes extracts from these websites, although they are after the Relevant Date.

11. Mr Briem also states that the Opponent’s Facebook page has over 15,000 Australian followers. Mr Briem annexes a table which indicates that at the Relevant Date, the number of Australian Facebook followers was approximately 18,000. The Opponent has also used the Opponent’s Mark on Instagram, LinkedIn, YouTube, and Twitter since well before the Relevant Date. The subscriber/viewer figures provided for these other platforms indicate the Opponent has a healthy global social media following, but specific figures for the Australian market at the Relevant Date are not provided.   

12. Mr Briem declares that the Opponent’s products are distributed by approximately thirty-five Australian distributors with physical outlets across Australia. Mr Briem provides a list of thirty such distributors being retailers of baby products across most States and Territories.

13. Mr Briem declares that the Opponent’s Mark has featured in numerous media articles and provides a list of the articles which includes many published prior to the Relevant Date. Some illustrative examples include ‘The best baby monitors of 2020’ (PC Mag AU 10/02/2020), ‘Here are the 5 baby monitors we’re excited about in 2020’ (Yahoo!Lifestyle 15/11/2019), and ‘The best money I’ve ever spent was on a small piece of technology that lets me know my baby is safe’ (Business Insider AU, 02/01/2019). In addition, Mr Briem declares and provides details of promotion of the Opponent’s Mark via various partnerships in Australia.

14. Mr Briem declares that the Opponent has a database of 25,000 Australian residents who receive email communication from the Opponent several times per week. Mr Briem annexes examples of emails which include the Opponent’s Mark. However, there are no details as to the number of the Opponent’s email subscribers at the Relevant Date.

15. Mr Briem provides confidential revenue and promotional expenditure figures for the Australian market. These figures indicate that prior to the Relevant Date, sales were commercially appreciable and growing on a year-by-year basis. Similarly, expenditure on marketing and promotion was high prior to the Relevant Date.

16. Mr Briem opines that there are similarities between the Opponent’s baby monitors and some of the Goods. For example, in comparing baby monitors and video doorbells, he points to their mutual live streaming and sound and movement detection functionality and the ability to monitor via a smart device. Mr Briem annexes an extract from Amazon advertising one of the Applicant’s video doorbells, which is followed by reference to the Opponent’s Mark under the heading ‘Brands related to this category’. Further, Mr Briem annexes an example of another brand, Arlo, which sells video doorbells, security cameras, and baby monitoring products. Further, with regards to thermometers, Mr Briem declares that many baby monitors incorporate a thermometer function, being a room temperature sensor.

    Discussion

    Section 60

17. To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. The Opponent must then prove that because of this reputation, use of the opposed Trade Mark is likely to deceive or cause confusion.

18. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[4] Reputation can be demonstrated in several ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[5] The length of use of a trade mark in the Australian market is also relevant in determining the existence of reputation and its extent. However, it is possible for a trade mark to accrue reputation in a relatively short period of time, particularly given the capacity of the Internet and social media to bring immediate and widespread attention to new products and brands.

    [4] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

    [5] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

19. The Opponent’s evidence has some deficiencies. The evidence in part refers to use of the Trade Mark after the Relevant Date and contains aggregated figures (such as social media following, email subscribers, and number of physical retailers) that cover a period extending before and after the Relevant Date. Nevertheless, the figures for revenue and promotional expenditure prior to the Relevant Date, supported by information such as the Opponent’s Facebook following, indicate that the Opponent’s Mark had become exposed to a significant section of the relevant market by the Relevant Date. Further, as the Opponent’s evidence was only given approximately twelve months after the Relevant Date, I can by inference and logical extrapolation give some weight to aggregated figures for things such as social media following, email subscribers, and retailer numbers that cover a period before and after the Relevant Date. Overall, I am satisfied that there was an appreciable level of reputation in the Opponent’s Mark in Australia in relation to baby monitoring products at the Relevant Date. However, I would not characterise that reputation as being extensive.

20. I must now consider whether because of reputation in the Opponent’s Mark, use of the Trade Mark is likely to deceive or cause confusion. In addition to considering the extent and nature of the reputation in the Opponent’s Mark, relevant factors include the degree of similarity of the Trade Mark with the Opponent’s Mark and the degree of similarity of the Goods with the goods for which the Opponent’s Mark has acquired reputation. While it is not necessary for the Opponent to establish that the respective trade marks of the parties are substantially identical or deceptively similar, or that the respective goods are ‘of the same description’, close similarities in the trade marks and/or goods under consideration will obviously increase the likelihood of confusion.  

21. I consider that the Trade Mark and the Opponent’s Mark ‘Owlet’ are substantially identical (given that the term Home appearing in the Trade Mark is descriptive). Further, the term Owlet has no direct meaning in relation to the Goods, being a reference to a small owl. Conceptually, the word Owlet may imply things such as watchfulness and superior vision, which allude to qualities of some of the Goods and the Opponent’s products. However, the word Owlet is by no means directly descriptive or laudatory in relation to either the Goods or the Opponent’s products and overall I consider it to be a highly distinctive word. This factor significantly increases the potential for confusion.

22. Turning to consideration of potential for confusion in the context of the Goods, I am mindful that the Opponent’s reputation for baby monitoring devices is not so extensive to give rise to a possibility of confusion with a broad range of goods and services. However, the various items listed in the Goods encompass small electric or electronic devices for use in the home. The Opponent’s products also fall within this category. Further, devices falling under the Goods such as thermometers and scales would be purchased by parents of babies, similarly to the Opponent’s products. In addition, smart devices used for monitoring in the home (including baby monitors, electric doorbells incorporating cameras, access control devices, and smoke detectors and alarms) are often used with downloadable apps that allow the devices to be accessed via, or alerts to be provided to, a smart phone. Such devices for better or worse are increasingly becoming part of the greater ‘Internet of things’ that is entrenching itself in day to day living. Where two different small devices for use in the home can both be accessed in some way by a downloadable application, this increases the potential for confusion especially where the devices are sold under substantially identical marks.   

23. On balance, and in the absence of any arguments or evidence from the Applicant to the contrary,  I consider that it is more likely than not that a substantial number of consumers who at the Relevant Date were aware of the Opponent’s Mark and who subsequently came across the Trade Mark being used in relation to the Goods would be caused to wonder whether the Goods were sold by the Opponent or were otherwise associated with the Opponent.  

24. I am therefore satisfied that the Opponent has established the ground of opposition under s 60 in respect of all the Goods. As the Opponent has established a ground of opposition under s 60, it is not necessary to consider the other grounds of opposition relied on.

    Decision and award of costs

25. The Opponent has established a ground of opposition. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

26. The Opponent has requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

    Blake Knowles

    Delegate of the Registrar of Trade Marks

    14 January 2022