Re: Opposition by Banca Sella Holdings S.p.A. to registration of trade mark application 1796309 (36, 42) - sellabitcoin.com.au - in the name of Dominet Digital Corporation Pty Ltd

[2020] ATMO 124

TRADE MARKS ACT 1995

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

Re:Opposition by Banca Sella Holdings S.p.A. to registration of trade mark application 1796309 (36, 42) – sellabitcoin.com.au – in the name of Dominet Digital Corporation Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: AJ Park

Applicant: Trademark Ventures

Decision:

2020 ATMO 124

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 60 considered – neither established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Banca Sella Holdings S.p.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Dominet Digital Corporation Pty Ltd (‘Applicant’): 

Application Number:	1796309
Filing Date:	14 September 2016
Services:	Class 36: Acceptance of deposits (including substitute bond issuance); safekeeping of valuables including securities and precious metals; money exchange services; trusteeship of financial futures contracts; trusteeship of money, securities, monetary claims; foreign exchange transactions; issue of tokens of value; buying and selling of securities Class 42: Designing, programming, or doing maintenance of computer programs for use in electronic commerce transactions; providing search engines for electronic commerce transactions; designing, programming, or doing maintenance of computer programs (software) for authenticating users in electronic commerce transactions; providing computer programs for use in electronic commerce transactions; designing, programming, or doing maintenance of Internet websites for electronic commerce transactions (‘Applicant’s Services’)
Trade Mark:	sellabitcoin.com.au	(‘Trade Mark’)
Endorsements:	Evidence and/or other circumstances provided under subsection 41(4).

2.  Following the advertisement on 24 May 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 17 July 2018.  The Opponent then filed a Statement of Grounds and Particulars (subsequently amended) on 13 August 2018 (‘SGP’). The SGP raised grounds of opposition under ss 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 12 September 2018.

Evidence and Submissions

3.  Neither party filed any evidence in this matter.

4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 17 May 2019 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

In doing so, I take account of the written record comprised of the materials mentioned in the preceding paragraphs

The Opponent

6.  The Opponent has provided no evidence and, therefore, I am unable to provide any information about the Opponent other than what is set out in the Register of Trade Marks. 

7.  The Opponent is the registered owner of the trade mark set out below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Services
1690475	18 December 2014	Class 36: Banking services; financial forecasting, financial analysis and financial asset management; capital investment services; brokerage services in the field of futures, commodities, securities, currencies and financial instruments; trading of financial instruments; electronic financial trading services; providing financial information, including information in the field of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments, companies, financial markets and indices; financial securities and commodities exchange services; provision of financial information in electronic form relating to market quotations, trade executions, trading in financial instruments in the nature of offers and trades; providing financial pricing information and financial information relating to trade execution

The Applicant

8.  The Applicant has provided no evidence and, therefore, I am unable to provide any information about the Applicant.

Grounds of Opposition, Onus and Standard of Proof

9. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44 and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

10.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 14 September 2016, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

11. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it. Consequently, the Opponent has not to any extent established its ground of opposition under s 60 of the Act, which requires proof that the Opponent has a reputation in a particular mark. The mere filing of a Notice of Intention to Oppose and SGP without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.[4]

[4] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430, 433.

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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 services see subsection 14(2).

   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.

   (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. 

   Note:  For limitations see section 6.

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this 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.

   13. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

2. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. As the Applicant has not provided any evidence or submissions in this opposition there is nothing before me that could demonstrate that the requirements of ss 44(3) and 44(4) are satisfied.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which is registered to the Opponent.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is registered for a number of banking and financial asset management services which would include many of the services in class 36 for which the Trade Mark is sought to be registered.  The first and third requirements are satisfied.

   Substantially identical and/or deceptively similar

4. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

   [5] (1963) 109 CLR 407, 414.

   17.     The Trade Mark and the Opponent’s Trade Mark are set out below:

   sellabitcoin.com.au                            

   18.     On a side by side comparison there are clear visual, aural and conceptual differences between the respective trade marks which are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

   19.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]

   [6] Ibid [13].

   20.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, 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 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].[11]

   [11] [2012] FCA 1022, [38]-[46].

5. In the present case the strongest argument in support of the application of the s 44 ground is that the terms ‘bitcoin.com.au’ and ‘banca’ should be discounted as descriptive and hence confusion arises through the shared use of the essential feature ‘sella’. However, I am not satisfied that this is the appropriate approach to be taken in this case. While the term ‘banca’ means banking and bank in Spanish and Italian respectively, it is a distinctive element in English and hence is it likely to be distinctive in the context of the market for the Applicant’s Services in Australia. Equally while ‘bitcoin’ is a descriptive term for a form of cryptocurrency, it is not directly descriptive of the Applicant’s Services and hence cannot be entirely discounted when comparing the marks.

   22.     When considering the respective marks as a whole, it is immediately apparent that the marks are significantly visually different, especially given the distinctive stylisation of the Opponent’s Trade Mark.  They are highly distinctive aurally and equally distinctive conceptually, as a consumer on seeing the Trade Mark is likely to read it as ‘sell a bitcoin dot com dot au’ which is very different to the Opponent’s Trade Mark, which is likely to be read as ‘banca sella’.  In the context of the services for which the Trade Mark and the Opponent’s Trade Mark are registered/sought to be registered I am not satisfied that the use of the Trade Mark would, even allowing for imperfect recollection, deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Mark.

6. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

7. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1796309 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

8. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   21 July 2020