Opposition by Xero Limited to registration of trade mark application number 1842087 (class 35, 38) - ZERO - in the name of Muneebuddin Mohammed

[2019] ATMO 178

TRADE MARKS ACT 1995

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

Re:      Opposition by Xero Limited to registration of trade mark application number 1842087 (class 35, 38) - ZERO - in the name of Muneebuddin Mohammed

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions prepared by Samuel J. Hallahan of Counsel, instructed by James & Wells Attorneys

Applicant: no appearance or submissions

Decision:

2019 ATMO 178

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58 and 62 pressed – s60 considered and established – registration refused.

Background

This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Muneebuddin Mohammed (‘Applicant’). Relevant details of the opposed application are set out below:

Application No

1842087

Trade Mark

(‘Trade Mark’)

Filing Date:   

3.05.2017

(‘Priority Date’)

Services:

Class 35: Advertising

Class 38: Mobile telephone communication services

The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 31 September 2017. Xero Limited (‘Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark on 21 November 2017 and a Statement of Grounds and Particulars on 20 December 2017.  Thereafter the Applicant filed a Notice of Intention to Defend on 2 February 2018. The Opponent then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’). The Applicant did not provide any evidence in this matter.

I heard the matter in Canberra by way of written submissions on 21 March 2019 as a delegate of the Registrar of Trade Marks. The Opponent’s submissions were prepared by Samuel J. Hallahan of Counsel, instructed by James & Wells Attorneys. The Applicant did not provide any submissions.

Grounds of Opposition

The Opponent pressed the following grounds of opposition under the Act:

•   Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

•   Section 58: The Applicant is not the owner of the trade mark in respect of advertising services; and

• Section 60: The Trade Mark is similar to a trade mark that has acquired a reputation in Australia;

To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds on the ‘balance of probabilities’.

The time at which the grounds of opposition must be established is the date of filing of the application for registration.

Evidence

The Opponent relied on the declaration made by Trent Matthew Innes on 7 May 2018 (Innes Declaration) as its evidence in support of the opposition. Mr Innes is the Opponent’s Managing Director-Australia and Asia. He gives evidence about the history and operations of the Opponent’s business, and of its extensive use of “Xero” trade marks in Australia since 2007.

The Applicant did not file any evidence in answer and hence I have no information about the Applicant and the nature of his business.

Discussion

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

Section 60 of the Act is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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

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

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

To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. However, if the other trade mark has a reputation, the degree of similarity between the marks ‘is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’.

Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick by Kenny J at [81] – [82]:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

Further, at [86], Kenny J said:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

The Innes declaration states that the Opponent commenced business in New Zealand in 2006 and in Australia since 2007. The Opponent registered the word mark 1145998 XERO in classes 9, 16, 35, 36, 41 and 42 in Australia in November 2006, and has used it since 2007. The Opponent registered the following device mark 1625355 in classes 9, 35, 36 and 42 in Australia in January 2014:

In January 2017 the Opponent filed 1894522 XERO in classes 9, 16, 18, 21 and 35, including for ‘mobile phones and related part and accessories.’

The Innes declaration provides relevant confidential exhibits evidencing significant and substantial Australian sales, customer base, website use, and marketing activities involving the Opponent’s trade marks prior to the Priority Date.

At [11], the Innes declaration states that the Opponent provides cloud-based accounting software as a service that allows clients to access data ‘anytime, anywhere and on any device’.

The Opponent provides XERO software to over 518,00 subscribers in Australia. At [12] the Innes declaration states that the Opponent leads the Australian, New Zealand, and United Kingdom cloud accounting markets.

The Opponent is listed on the Australian Stock Exchange and attracts approximately 20% of the Australian accountancy software market.

I am satisfied that the evidence is such that I can infer the required relevant reputation in Australia in the accounting software market.

I am satisfied that the words ZERO and XERO are phonetically and aurally identical, and visually differ only by one letter, and the devices are substantially identical.

The Opponent submitted, and the evidence supports, that the core of the Opponent’s business is cloud-based accounting software services. The primary market for such services comprises businesses and enterprises, being small, medium or large. The Opponent submits that businesses and enterprise customers are also a market targeted specifically by providers of advertising services and mobile phone telecommunication services (because of software applications used on the mobile devices), such as those of the Applicant.

The Opponent further submitted, and I accept, that there is a modern convergence between mobile phones, mobile internet data, cloud computing software and services, and advertising services. Customers have grown accustomed to two or more of these types of goods and services being provided by the same company under the same brand. For example, companies typifying such convergence include Apple, Google, Amazon, and Telstra. While such companies are not advertising companies as such, their self-promotion is similar.

I am satisfied that there is a real likelihood that consumers who see or hear the Trade Mark used in relation to the Applicant’s services may be deceived or confused by the use of the Trade Mark; that is, they would have cause to wonder whether the services provided in association with the Trade Mark were being provided by or authorised by the Opponent.

I am satisfied that the Opponent has established this ground of opposition. 

Decision

I have found the Opponent has established the ground of opposition it raised under to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the trade mark application number 1842087.

I have only found it necessary to address the section 60 ground in this decision. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

Costs

The Opponent has sought its costs.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.

Jock McDonagh

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

17 December 2019