Opposition by Salesforce.com, Inc to registration of trade mark application number 1831105 (class 9, 16 and 42) – Force | React with cloud device - in the name of Intygrate Pty Ltd.
[2019] ATMO 103
•1st July 2019
TRADE MARKS ACT 1995 DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Salesforce.com, Inc to registration of trade mark application number 1831105 (class 9, 16 and 42) – FORCE | REACT with cloud device - in the name of Intygrate Pty Ltd.
Delegate:
Aaron Walters
Representation:
Opponent: Samuel Hallahan of Counsel, instructed by Davies Collison Cave.
Applicant: Written submissions by Y IP Legal.
Decision:
2019 ATMO 103
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under sections 42(b), 44, 58, 59, 60 and 62A of the Act – Section 44 established – trade mark registration refused.
Background
This is an opposition brought by Salesforce.com, Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Intygrate Pty Ltd (‘the Applicant):
Application Number:
1831105
Trade Mark:
(‘the Trade Mark’)
Priority Date:
15 March 2017
Goods and Services:
Class 9: Application software; Boxes adapted for storing computer software disks; Boxes adapted for transporting computer software disks; Cards encoded to access computer software; Cartridges (software) for use with computers; Cartridges for computer games (software); Cartridges for video games (software); Cleaning discs for computer software; Communication software; Communications processing computer software; Computer game software; Computer games entertainment software; Computer games programs downloaded via the internet (software); Computer games programs recorded on tapes (software); Computer graphics software; Computer hardware for use in computer-assisted software engineering; Computer programmes (programs) and recorded software distributed online; Computer programs (downloadable software); Computer software; Computer software (programs); Computer software (recorded); Computer software adapted for use in the operation of computers; Computer software applications (downloadable); Computer software designed to estimate costs; Computer software designed to estimate resource requirements; Computer software downloaded from the internet; Computer software for accounting systems; Computer software for analysing address files; Computer software for analysing market information; Computer software for authorising access to data bases; Computer software for business purposes; Computer software for communicating purposes between microcomputers; Computer software for communication between computer processes; Computer software for processing address files; Computer software for processing market information; Computer software for the analysis of defects; Computer software for time control; Computer software for use in controlling machines; Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Computer software programs for spreadsheet management; Controlling software for computer printers; Data carriers for computers having software recorded thereon; Data communications software; Data processing software; Data processing software for graphic representations; Data processing software for word processing; Downloadable software applications (apps); Education software; Engineering design software; Game programmes (programs) and software for use with electronic games of all kinds; Games software; Industrial computer software programs; Industrial controls incorporating software; Installations for the remote loading of computer software; Installations for the remote unloading of computer software; Integrated software packages; Interactive computer software; Interactive education software; Interactive entertainment software for use with computers; Interactive video software; Magnetic cards being computer software; Magnetic platforms for software; Magnetic storage materials incorporating software; Magnetic supports for software; Magnetic tapes for memorising software programs; Network management computer software; Operating computer software for main frame computers; Packaged software; Personal computer application software; Personal computers incorporating computer software; Pre-recorded software; Printer spooler software; Process controlling software; Programmed video games (software); Programmed video games contained on cartridges (software); Recorded computer software; Recorded software and programmes for use with electronic games of all kinds; Satellite imagery software; Security devices for computer software; Simulation software for use in digital computers; Software drivers; Table representation software; Video game programs (software)
Class 16: Catalogues relating to computer software; Computer software in printed form; Computer software in the form of printed matter; Computer software in the nature of printed matter; Computer software operating manuals; Documentation for use in the development of computer software programs; Handbooks relating to computer software (sold with the software); Instruction books sold with computer software; Instruction guides sold with computer software; Instruction manuals (handbooks) sold with computer software; Instruction manuals relating to computer software; Instruction manuals sold with computer software; Manuals for computer software; Manuals for computer software (sold with the software); Manuals for use with software; Printed books relating to software; Printed manuals relating to computer graphics software; Printed publications relating to computer software
Class 42: Advisory services relating to computer software; Computer security services (design and development of secure computer hardware, software and systems); Computer security services (programming and software installation repair and maintenance services); Computer software advisory services; Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Computer software programming services; Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Consultancy in the design and development of computer software; Design and development of computer software (for others); Design of computer software; Development of computer software; Development of computer software application solutions; Development of software; Diagnosis of faults in computer software; Hosting of software as a service (SaaS); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Installation and maintenance of computer software; Installation of computer software; Installation of middleware (software); Installation, repair and maintenance of middleware (software); Maintenance of computer software; Online provision of web-based software (non-downloadable); Providing information, including online, about design and development of computer hardware and software; Provision of online non-downloadable software (application service provider); Rental of computer software; Rental of games software; Repair of computer software; Software as a service (SaaS); Software creation; Software engineering; Updating of computer software; Upgrading of computer software; Writing of computer software
(‘the claimed Goods and Services’)
The Trade Mark was examined as required under s 31 of the Act, and was advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 10 August 2017.
On 9 October 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 9 November 2017 which outlined six grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 22 December 2017.
The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The evidence before me consists of:
Evidence in Support
•• Declaration made on 5 April 2018 by David M. Simon, Senior Vice President of Intellectual Property for the Opponent, with Exhibits DMS-1 to DMS-36 (‘Simon Declaration’).
Evidence in Answer
•• Declaration made on 9 July 2018 by Sarah Arnold, Director and Chief Operating Officer of the Applicant, with Annexures SA-1 to SA-5 (‘Arnold Declaration’).
Evidence in Reply
•• Declaration made on 18 September 2018 by Carly Eve Mansell, Trade Marks Attorney for Davies Collison Cave, with Exhibits CM-1 to CM-5 (‘Mansell Declaration’).
On 22 October 2018, the Opponent requested an oral hearing. The matter was set down for hearing 5 April 2019. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks. In response to the Hearing Notices, sent 6 February 2019, the Opponent provided its written submissions on 22 March 2019 and the Applicant provided its written submissions on 29 March 2019.
I heard the matter on 5 April 2019. Samuel Hallahan, Counsel for the Opponent, appeared on its behalf and provided oral submissions to supplement his written submissions (‘the Opponent’s Submissions’). The Applicant did not attend the hearing, instead relying only on its written submissions (‘the Applicant’s submissions’).
As a delegate of the Registrar of Trade Marks, I provide the ensuing discussion for the decision that follows, which is made under s 55(1) of the Act and is based on the evidence and submissions referred to above.
Onus and Grounds of Opposition
To succeed, the Opponent need only establish one of the nominated grounds. Although written submissions were provided with respect to all nominated grounds of opposition, the Opponent informed me during the hearing that it would not press the ground nominated under s 59 of the Act.
The onus of proof rests on the Opponent, with the standard being the civil standard on the balance of probabilities. The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 15 March 2017 (‘the relevant date’).
Preliminary matters
The Applicant has objected to the inclusion of certain material forming part of the Opponent’s submissions on the basis that it forms evidence filed outside of the evidentiary periods. This material consists of:
•• At paragraph 24, the Opponent refers to screenshots of the Applicant’s website, captured 19 March 2019 and annexed to the submissions.
•• At paragraph 28, 45 and 68, the Opponent refers to screenshots of the Applicant’s twitter feed going back to October 2017, captured 18 March 2019 and annexed to the submissions.
•• At paragraph 87(c), the Opponent references a Wikipedia page as evidence of the term “react” being the name of a computer programming language. The Wikipedia entry itself has not been tendered.
(together, ‘the contested material’)
The Applicant’s written submissions contend the Applicant would be prejudiced by the consideration of the contested material since it did not form part of the Opponent’s Evidence in Support. As a result, the Applicant has been denied procedural fairness in that it has not had the opportunity to submit evidence which may counter any inferences drawn by the Opponent. The Applicant has requested the contested material be excluded from consideration.
At the commencement of the hearing, I allowed the Opponent to make submissions for the inclusion of the contested material. As was done by the Opponent, I shall consider the contested material in two different categories, the first being the Applicant’s Twitter account and website (‘the online material’) and the second being the Wikipedia reference (‘the Wikipedia reference’).
The online evidence
The Opponent explained the online evidence was only discovered during the writing of submissions and was included as an annexure at that time. As expressed under reg 21.15(4) of the Regulations, the Registrar is not bound by the rules of evidence and may be informed on any matter before her which she believes is reasonably appropriate.
I would first emphasize reg 21.15(4) is a discretionary power and links closely to an obligation of procedural fairness contained under reg 21.19 of the Regulations. Under reg 21.19, the Registrar may consider information available to her, which would include evidence filed outside of the evidentiary periods. However, there are published guidelines from the Registrar to help a party in putting its case for the exercise of this discretion:
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
• • Why the evidence was filed after the due date
• • If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
• • What the evidence shows
• • Why that information is crucial to the delegate’s decision
• • Why it is in the public interest to have the information considered
• • What is the balance of convenience for the parties if the information is considered.
I would stress that a party seeking to rely on later filed evidence should not assume reg 21.15(4) and reg 21.19 will accommodate a mere desire to have it included. Compelling reasons are necessary. As the Delegate in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited noted:
… the assumption that, post commencement in April 2013 of stricter extension of time for evidence provisions as well as the removal of formal further evidence provisions, regulation 21.19 might almost be a given to assist in ‘wrapping up loose ends’ at the time an opposition comes before a hearing officer. Emphatically, opposing parties who intend to rely on such an assumption will do so at their peril. There remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times. If the onus is properly met, … oppositions should arrive at the end of the process in a properly organized state, with all parties clear about what evidence is safely in and what is in dispute, and if so, exactly why.
Salient to the present matter is whether the information is crucial to my decision. The Opponent states that it is, particularly in relation to its ss 42(b) and 62A grounds of opposition. Setting aside that the online material has been included as an undeclared annexure, the Opponent later submitted, should it not be allowed in for consideration, it considered these grounds to be established on the evidence properly filed. It does not strike me then that the online material is indeed crucial to my decision.
Further, the Opponent explains the late stage at which it was put forward was not due to laziness or ineptitude, but rather due to a discrepancy between the Applicant’s corporate name (“Intygrate Pty Ltd”) and its alleged trading name (“The React Company”). As there had been no mention of its trading name in the evidence, the Opponent suggested this demonstrated misleading behavior on behalf of the Applicant. The Opponent submits the online evidence would be appropriate Evidence in Reply had the Applicant made mention of its trading name during Evidence in Answer. It is contended this misleading behavior led to the online evidence not being discovered during the evidentiary stages and that there is a public interest in not allowing the Applicant to benefit from such behavior.
I am not persuaded by this line of reasoning given it is both speculative and appears to improperly impose an evidential requirement on the Applicant. Evidence in Answer will generally respond to matters raised in Evidence in Support. As no question was raised in the Simon Declaration over a relationship between the Applicant and the “React” trading name, it does not strike me as incumbent upon the Applicant to provide an answer to that which has not been asked. To accept, as the Opponent suggests, that this amounts to misleading conduct is an example of the type of inference the Applicant has been denied an opportunity to address.
I am not satisfied that the online material should be allowed into evidence and will not be considering it.
The Wikipedia reference
This I can deal with briefly. Being a user generated source of information, there are clear reasons why Wikipedia entries should be treated with extreme caution. In any event, I am not provided the entry itself, merely a reference, and, as shown below, it is not crucial to the Opponent’s ground of opposition under s 44 of the Act.
Discussion
Section 44
Section 44 of the Act relevant 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Sub-sections 44(3) and (4) provide that a substantially identical or deceptively similar trade mark may still achieve registration should the Registrar be satisfied of the Applicant’s honest concurrent use, or some other circumstances, or prior continuous use. In the Arnold Declaration, Ms Arnold states the Applicant has not commenced use of the Trade Mark, nor have other circumstances been identified. As such, I need not consider these sub-sections further.
Accordingly, to establish this ground of opposition the Opponent must point to an existing trade mark application or registration with an earlier priority date than that of the Trade Mark, which is either substantially identical with or deceptively similar to the Trade Mark, and is for similar and/or closely related goods and services. To that end, the Opponent nominates the following registered trade marks:
Trade Mark: 1405379 (International Registration 1062969)
Priority Date: 24 May 2010 (Convention)
FORCE
(‘the plain Force Mark’)Class 35: Business management services, namely, providing customer relationship management services, sales support management services, business intelligence services, performance management services, and social networking services for businesses; business management consulting services relating to customer relationship management, sales support management, marketing automation, business intelligence, performance management, and social networking for businesses; operating on-line marketplaces for buying and selling, sharing, and offering for free computer software, on-demand applications, and related development tools
Class 42: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze and report data in the fields of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields; providing temporary use of online non-downloadable computer software application development tools; online hosted computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto
Trade Mark: 1421435 (International Registration 1072634)
Priority Date: 13 January 2011 (Convention)
FORCE.COM
(‘the domain Force Mark)1. Class 9: Downloadable computer software for use in developing and customizing computer software applications and computer software application user interfaces; computer software for storing, managing, tracking, analyzing, and reporting data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; computer software to facilitate communicating among peer professionals in the advertising, marketing, and business services fields, and for customizing computer application user interfaces
2. Class 35: Business management services, namely, providing information, data asset, and identity management services; compilation and management of computerized databases; and consulting services related thereto; business management services, namely, providing customer relationship management services and sales support management services; business management consulting services relating to customer relationship management, sales support management, and marketing automation; providing a website with general information of interest to the fields of advertising, marketing, and business management consulting and advisory services; operating online marketplaces for buying and selling, sharing, and offering for free computer software and on-demand applications
3. Class 42: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support and employee efficiency; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields, and for customizing computer application user interfaces; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; providing temporary use of online non-downloadable computer software application development tools and programming language for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others; and consulting services related thereto
Class 45: On-line social networking services
Trade Mark: 1498764 (International Registration 1117686)
Priority Date: 23 March 2011 (Convention)
(‘the stylized Force Mark’)
1. Class 9: Downloadable computer software for use in developing and customizing computer software applications and computer software application user interfaces; computer software for storing, managing, tracking, analyzing, and reporting data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; computer software to facilitate communicating among peer professionals in the advertising, marketing, and business services fields, and for customizing computer application user interfaces
2. Class 35: Business management services, namely, providing information, data asset, and identity management services; compilation and management of computerized databases and consulting services related thereto; business management services, namely, providing customer relationship management services and sales support management services; business management consulting services relating to customer relationship management, sales support management, and marketing automation; providing business management consulting information through a website; operating online marketplaces for buying and selling, sharing, and offering for free computer software and on-demand applications
3. Class 41: Educational services, namely, conducting seminars, conferences, workshops, and computer application training in the fields of marketing, promotion, sales, customer information, customer relationship management, sales support and employee efficiency, and distributing course materials in connection therewith
4. Class 42: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support and employee efficiency; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields, and for customizing computer application user interfaces; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; providing temporary use of online non-downloadable computer software application development tools and programming language for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others; and consulting services related thereto
Class 45: On-line social networking services
(together, ‘the registered Force Marks’)
It is without question that the registered Force Marks have an earlier priority date than that of the Trade Mark. Further, it is not in dispute that registration of the Trade Mark is sought in respect of goods and services similar or closely related to those of the registered Force Marks. Thus, to succeed under the s 44 ground the Opponent must establish the Trade Mark is either substantially identical with, or deceptively similar to (one or all of), the registered Force Marks. Neither party suggests these marks are substantially identical and, bearing in mind the well-established test for assessing substantial identity, I agree this is the case. Therefore, the sole matter to be decided under s 44 is whether the marks are deceptively similar.
Deceptively Similar
Section 10 of the Act relevantly provides:
Definition of deceptively similar
For the purposes of the 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.
The likelihood of deception or confusion existing between the trade marks must be real and tangible. In Australian Woollen Mills Ltd v F. S. Walton and Company Ltd Dixon and McTiernan JJ remarked, when deciding upon question of deceptive similarity:
… the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
Over time, the general principles for assessing deceptive similarity between trade marks have become well established. The task is to be approached by comparing each mark in its entirety, with consideration given to any visual and aural similarities as well as the idea of the marks in question. Importantly, allowance is to be made for the imperfect recollection of consumers in determining whether the resulting impressions amount to a tangible likelihood of deception or confusion, as well as regard had for the surrounding circumstances, including the manner in which the trade marks could, in principle, be used.
Submissions
The Opponent’s submissions raise several points with respect to the principles to be applied for deceptive similarity. I have summarized the relevant points as follows:
•• The word “FORCE” is the only element of the registered Force Marks and forms an essential element of the Trade Mark.
•• The differing stylistic way “force” is presented in the Trade Mark separates it as a distinct element to “REACT”, which emphasizes “force” is not part of a compound expression such as “FORCE REACT”. This distinct nature is consistent with Applicant intending to use the Trade Mark as one in a suite of trade marks featuring the “REACT” element.
•• The presence of the CLOUD device in the Trade Mark is indicative of the Opponent’s goods and services which relate to cloud computing.
The Applicant’s submissions “make observations by reference to the Opponents arguments” outlined above. Summarized, these are as follows:
•• While the registered Force Marks all contain the word “FORCE” as a prominent feature, it is misleading to say that it is the whole of those marks. Other distinguishing features exist such as the .COM element of the domain Force Mark and stylization of the stylized Force Mark, neither of which occur in or are similar to the Trade Mark.
•• Exhibits SA-3 and SA-4 to the Arnold Declaration contain printouts of the Australian Trade Marks Register featuring a number of marks, each with the word “FORCE” as either a prefix or suffix element and registered for similar goods and services to those of the Opponent. The prevalence of the word “FORCE” used in trade marks for software products and services is said to indicate consumers are likely aware of its commonplace nature and would not specifically associate it with the registered Force Marks. Accordingly, the word FORCE has limited ability to distinguish the Opponent’s goods or services.
•• The differences in stylization between the words “force” and “REACT” in the Trade Mark should not preclude the Trade Mark from being viewed as a compound expression.
•• The CLOUD device features dual mirrored arrows which make up the two halves of the cloud. As such, it is a distinctive element of the Trade Mark.
Consideration
To quote from Jacobsen J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (‘Kingsgate’):
If the question were limited to a side by side comparison, [the Opponent’s] opposition would fail. This is because the physical appearance of the [trade] marks is quite different.
However, Lord Radcliffe in de Cordova v Vick Chemical Co relevantly said:
… a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole of a mark, it is impossible to exclude consideration of the sound or significance of those words.
The Opponent’s submissions quite appropriately contend the word “force” is the whole of the Registered Force marks. In my mind, this is quite clearly the case. The italic stylization of the “f” in the stylized Force Mark is minimal and the top-level domain “.COM” being suggested as distinguishing trade mark material is inconsistent with current judicial consideration on the matter. Thus, the sole essential element of the registered Force Marks is wholly contained within the Trade Mark.
It is necessary for due regard to be given to the surrounding elements which may diminish the impact of the shared element. Indeed, caution must be exercised when the idea or meaning of the Trade Mark, as a whole, could be sufficiently altered due to those surrounding elements. Justice Jacobsen in Kingsgate (at [46]) effectively explains the balance of consideration:
… if a registered trade mark includes words which can be regarded as an “essential feature” of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s [Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196] at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an “essential feature” because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].
In Crazy Ron’s Moore, Sackville and Emmett JJ considered, on appeal and in the context of infringement, whether the primary judge erred in finding the words “CRAZY JOHN” to be deceptively similar to “CRAZY RON’S”, on the basis that it was an essential element of (what was referred to as) “the 1995 Mark”. Their Honours explained (at [98]):
The primary Judge concluded, in essence, that the ‘idea’ of the 1995 Mark, or the impression that would be created by it, is the phrase ‘CRAZY JOHN’. However, in our view, the idea or impression that an ordinary purchaser would take from the 1995 Mark involves much more than that phrase. The dominant idea conveyed by the Mark to a casual observer is of the fantasy cartoon character sitting astride the stylised globe. The point is perhaps illustrated by Mr Darrer’s description in his 12 November 1999 letter to the Trade Marks Office of the 1995 Mark as:
‘the trademark “CRAZY JOHN” with graphics of a man atop a globe holding a mobile phone’.
Their Honours went on to further mention (at [102]):
If it is necessary to identify a specific error in the approach of the primary Judge, we think it lies in the failure to take into account the fact that the 1995 Mark is a composite mark of which the words ‘CRAZY JOHN’ are but one of several prominent elements. His Honour obviously appreciated, as he said, that the 1995 Mark ‘is a composite mark with a number of features’. But, with respect, the judgment does not address the significance of that fact in deciding whether the words ‘CRAZY JOHN’ constituted an essential feature of the 1995 Mark. The additional features of the 1995 Mark are significant points of dissimilarity from the allegedly infringing mark and need to be given due weight in determining the nature of a consumer’s ‘imperfect recollection’ of the 1995 Mark.
It is true that the Trade Mark is a composite mark comprised of two words and a device. That said, the marks compared in Crazy Ron’s, and consideration made thereof, are quite distinct from the present matter.
The Opponent points to the stylistic difference separating the word “force” and “REACT” as indicating two separate elements rather than a compound expression. I agree and would add some additional observations:
•• The elements comprising the Trade Mark are presented in a linear fashion. The Trade Mark begins with the word “force” followed by a vertical bar preceding the word “REACT”, which in turn is followed by a CLOUD device.
•• The words, although being of roughly equal size, are not together a common expression and are quite clearly separated by the vertical rectangular bar.
•• The CLOUD device does not appear to reinforce a meaning associated with either word. However, while a distinctive device its own right, does have some connection to the Applicant’s cloud computing software and services.
•• The placement of the vertical bar and the CLOUD device on either side of the word “REACT” appear to enclose and further separate it as a distinct element from “force”.
As a whole, the idea of the Trade Mark is divided between two distinct components, being the word “force”, which stands on its own at the beginning of the Trade Mark, followed by the word “REACT” together with the CLOUD device. While I accept the latter component is a strong and distinctive element, I find consumers are still likely to be deceived or confused with the registered Force Marks.
In reaching this decision, I note the Applicant’s arguments alleging the commonality of the word “FORCE” with respect to software products and services. However, the solitary evidence relied on are the 42 registered trade marks contained in Exhibits SA-3 and SA-4 of the Arnold Declaration. I believe an abundance of caution should be exercised when drawing market inferences or conclusions based purely on such “state of the Register” evidence. Best said by Jacob J in British Sugar plc v James Robertson & Sons Ltd:
Some traders have registred marks consisting of or incorporating the word “Treat”. I do not think this assisit the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particlar the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. [Emphasis added]
Without more, I do not accept the word “FORCE” has obtained some level of commonality with respect to software products and services. As such, both the “force” and “REACT” components of the Trade Mark are, in my estimation, quite distinctive of the claimed Goods and Services.
The primary judge in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited, when considering the marks “BAREFOOT” and “BAREFOOT RADDLER”, stated:
… The word “RADLER” is not an ordinary English word and its use, it is considered, adds an element of both distinction and curiosity, such that persons will query what that particular word means.
… The word “RADLER”, it is considered, would leave an impression on the mind of a person who knew what the word meant and would leave an even firmer impression upon the mind of a person who had no such knowledge. And it is a word given prominence in the Lion Nathan sign. But those factors either alone or in combination would not be such as to remove the likelihood of deception or confusion. Contrast: [Crazy Ron’s]
An essential feature common to both the mark of Gallo Winery and the sign as pleaded by Lion Nathan remains the word “BAREFOOT” which, it is considered, would leave a considerable impression on the mind of a consumer of ordinary intelligence. Notwithstanding the distinctiveness which the word “RADLER” brings to the sign of Lion Nathan, it would not be sufficient to remove the likelihood of deception otherwise arising. [Emphasis added]
Following the reasoning above, an essential feature common to the registered Force Marks and the Trade Mark is the word “FORCE”. I find this element would leave a considerable impression in the mind of a consumer and, notwithstanding the distinctiveness the “REACT” component brings to the Trade Mark, there is a real tangible likelihood of deception or confusion arising.
Decision
Section 55 of the Act provides:
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: For limitations see section 6.
The Opponent has established its ground of opposition under s 44 of the Act. As such, I refuse to register trade mark application number 1831105. If the Registrar is served with a notice of appeal within one month of this decision, I direct that any further disposition of this application should be in accordance with the Court’s order or direction.
Costs
In the event of success, the Opponent has requested that costs be awarded. The normal course is for costs to follow the event and I see no reason to depart from this in the present matter. I award costs against the Applicant under s 221 of the Act in the amounts allowable under Schedule 8 of the Regulations.
Aaron Walters
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
1st July 2019
Key Legal Topics
Areas of Law
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Intellectual Property
Legal Concepts
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Appeal
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Costs
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Jurisdiction
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Standing
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Statutory Construction
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