Re: Opposition by Chicago Mercantile Exchange Inc. to registration of trade mark application number 1875578 (class 36) - EMINI-WATCH.COM Better Emini Trading Every Day (Figurative) in the name of Barry Taylor..

[2020] ATMO 100

TRADE MARKS ACT 1995

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

Re:        Opposition by Chicago Mercantile Exchange Inc. to registration of trade mark application number 1875578 (class 36) – EMINI-WATCH.COM BETTER EMINI TRADING EVERY DAY (Figurative) - in the name of Barry Taylor International Pty Ltd.

Delegate:	Kate Doherty
Representation:	Opponent: F St John of counsel, i/b Ashurst Applicant: Legal123
Decision:	2020 ATMO 100 Trade Marks Act 1995 (Cth) – opposition under section 52 – Grounds of opposition pursued ss 42(b), 43, 44, 60 and 62A; s 60 established; trade mark will not proceed to registration.

Background

1.    This is an opposition decision following an online hearing on 30 March 2020. I heard the matter as a Delegate of the Registrar of Trade Marks in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:               1875578

Trade Mark:    (‘Trade Mark’)

Words:  EMINI-WATCH.COM BETTER EMINI TRADING EVERY DAY

Filing date:   25 September 2017

Applicant:  Barry Taylor International Pty Ltd

Specification of Goods: (at time of filing):  Class 36

Providing indicators to trade futures contracts; financial analysis of futures contracts; commentary and analysis, in relation to futures trading and commodities trading; provision of information in relation to the aforesaid services including by electronic means

2.    The Trade Mark was advertised accepted on 30 August 2018.  A Notice of Opposition was filed on 29 October 2018 by Chicago Mercantile Exchange Inc. (‘The Opponent’).  On 10 January 2019, the Applicant filed a Notice of Intention to Defend the Opposition.  The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 42(b), 43, 44, 60 and 62A.

Evidence

3.    Summary of evidence received from the parties.

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
M Kelly	Opponent	EIS	28 May 2019	1-22	Kelly Declaration
B Taylor	Applicant	EIA	23 August 2019	1-15	Taylor Declaration
K Smith	Opponent	EIR	29 October 2019	1-3	Smith Declaration

The declarations annex evidence which includes copies of: sales brochures, press releases, product guides, ranking tables, news articles, regulatory documents, screenshots of websites and email correspondence.  Written submissions were received from both parties.

4.    The Opponent has applied for extension of protection for the following International Registration Designating Australia (‘IRDA’) which is currently subject to examination:0F[1]

Words:   E-Mini (‘Opponent’s Mark’)

Trade Mark Number:     1402147
IRDA Number:                 1927300
Priority Date:                    1 September 2017
Class:      Class 36

Financial exchange; futures exchange services; financial services, namely, the trading of financial instruments, securities, shares, options and other derivative products; on-line trading of financial instruments, shares, options and other derivative products; providing financial information; providing information in the field of financial stock and equity markets; trading of securities options; trading of securities index futures 

[1] International Registration 1402147 for "EMINI" to Australia on 15 February 2018 (Trade Mark No. 1927300).

Onus and Standard of Proof

5.    The relevant standard of proof is the civil standard, or “on the balance of probabilities”.1F[2]  The Opponent bears the onus of proof in an Opposition Hearing.2F[3] 

[2] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

[3] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

6. The application will succeed if any of the nominated grounds are established. The rights of the parties are determined at the date of filing the application. For the purposes of s 60 the relevant date is the priority date which is 25 September 2017.

Application to make oral representations

7.    The Applicant was present at the hearing and an application to make oral representations was made on their behalf by the legal representative at the commencement of the hearing.  The Opponent sought to oppose that application with a sole submission relating to actual prejudice arising from insufficient notice.  

8.    Where a declaration has been duly filed this can be accepted as notice and a declarant may be permitted to make oral representations pursuant to r 5.2.[4]   The question of the weight to be given to any oral representations will then be a significant issue.  The Applicant’s oral submissions included opinion evidence and did not extend beyond the substantive declaration.  The oral submissions were permitted but attributed negligible weight due to their substance.

Grounds of Opposition

[4] Trade Mark Regulations 1995 (Commonwealth), r5.2.

Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia

9. Section 60 of the Act provides:

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.

10. Section 60 is discussed in McCormick & Company Inc v McCormick per Kenny J:3F3F[5]

Reputation is “the recognition of the [trade] marks by the public generally”.

[5] (2000) 51 IPR 102 [81].

However, for highly specialised products or products directed at specific markets the relevant assessment of reputation is made in relation to those markets and not the public generally.4F4F[6] Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures.  Direct evidence for consumer appreciation of a mark is often not required.5F5F[7]

[6] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410 [436].

[7] Ibid. [86].

11.   In ConAgra Inc v McCain Food (Aust) Pty Ltd it was stated that reputation cannot be assumed and must be established as a question of fact:6F6F[8]

It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.7F7F[9]

[8] ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.

[9] Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619 [25].

12.   Earlier use can result in an earlier priority date.8F8F[10] To establish a ground of opposition under s 60, the Opponent must demonstrate that at the priority date of 25 September 2017:

a)there was another trade mark;

b)which had acquired a reputation in Australia;

c)amongst a significant section of the public;

d)such that use of the opposed trade mark would be likely to deceive or cause confusion.

[10] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR [606].

13.   The relevant Opponent’s Mark is the plain words ‘E-Mini’ and it appeared on the Trade Mark Register via a Madrid application a short time before the priority date.9F9F[11]  The Opponent’s Mark is still subject to examination in Australia.  The questions at the heart of this dispute are whether the term ‘E-Mini’ is generic, or, whether registration would lead to confusion where there is co-existence of the marks?10F[12]

[11] Above at [4].

[12] Re Ana Laboratories Ltd(1951) 69 RPC 146 (UK Reg).

14.   The evidence provided by the Opponent shows the Chicago Mercantile Exchange Inc. has been trading in Australia since 1992, with a physical presence in Sydney since 5 October 2017.10F11F[13]  A great deal of the evidence relates to other marks owned by the Opponent, such as the: CME Group Mark®, Chicago Mercantile Exchange, CME®, Clearing 21, the globe logo and GLBOEX®.12F[14]  

[13] Kelly Declaration [18]-[19], [23], Exhibits Five and Six.

[14] Kelly Declaration, Exhibit 11.

15.   The term ‘E-Mini’ is used by the Opponent in connection with over 100 other terms, and some of those are trade marks not owned by the Opponent, for example ‘E-Mini NASDAQ 100’.13F[15]  The only direct evidence of use of the Opponent’s Mark in Australia, is a table stating the number of E-mini contracts sold at the relevant time.  A substantial number of contracts in the year 2017 are disclosed, as well as significant numbers in the years 2012 to 2018.14F[16]

[15] Kelly Declaration [32]; see Registration 1690838 for "NASDAQ-100" filed 30 April 2015.

[16] Kelly Declaration [33]; see: Anheuser-Busch Inc v Castlebrae Pty Ltd (1991) 32 FCR 64.

16.   The Opponent asserts they developed the term ‘E-mini’ in 1997.[17]   The term is used to describe a type of financial product which is a fraction of an ordinary futures contract.  By facilitating trading of these smaller futures contracts outside ordinary trading hours and at a proportionally lower cost: a different investor base is available than for the traditional futures contracts market. 

[17] Kelly Declaration, Exhibit 8.

17.   The total market for the Opponent’s futures contracts globally in 2017, was a significant number.[18]  A small proportion of these are attributed to the Australian market, but a numerical ratio is not appropriate for determining the significance of the section of the relevant public.  The raw total relates to all contracts and not the fractions of contracts which are the new class of financial product.  No evidence of any similar product is before me, and I find that there is a significant population of modified futures contract traders in Australia who are aware of the Opponent’s Mark.

[18] Kelly Declaration [28].

18.   I find the evidence is sufficient to show the Opponent’s Mark has acquired a reputation for modified futures contract trading in Australia. It follows that I must now consider whether use of the Trade Mark would be likely to deceive or cause confusion.

Confusion amongst a significant section of the public

19.   The requirement that the deception or confusion should be amongst “a substantial number of persons” must be “properly and sensibly applied”.11F15F[19]  The degree of reputation necessary is dependent on the market in question.  In Le Cordon Bleu BV v Cordon Bleu International Ltee12F16F[20] Heerey J observed:13F17F[21]

What is “significant” or “substantial” will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.

[19] Re Bali Brassiere Co Inc's Registered Trade Mark [1968] HCA 72.

[20] Le Cordon Bleu BV v Cordon Bleu International Ltee(2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587; see also Spiral Foods Ltd v Valio Ltd (2000) 50 IPR 473.

[21] Le Cordon Bleu BV v Cordon Bleu International Ltee(2000) 50 IPR 1; [2000] AIPC 91-661; [2000] FCA 1587 at 20, [91]; see also Aktion Zahnfreundlich v Suntory Ltd (1998) 42 IPR 593; [1998] ATMO 44.

20.   There is no evidence before me of actual confusion, but there is no assertion that the Opponent’s Mark is particularly well known.18F20F[22] Instances of actual confusion are compelling but not essential to establish a ground of opposition pursuant to s 60.

[22] Coldstream Refrigerators Ltd v Aircrafts Pty Ltd(1950) AOJP 1491 [1496].

21. Although it is not necessary that goods or services are of the same type for consideration in relation to s 60, where goods and services are associated the threshold required to establish a likelihood of deception or confusion will be lower. The overlap of services offered by both parties enlivens this, namely financial products and specifically the modified futures contracts.17F21F[23] The Nice Classifications are an administrative tool, the system does not provide a strictly delineated taxonomy of goods and services for the purposes of an assessment of similarity pursuant to s 60. Both parties operate businesses online, and both offer financial products related to furcated futures contracts.

[23] Above at [1] and [4].

22.   The Applicant has submitted that  The term ‘E-Mini’ is not used as a trade mark in the evidence before me.22F[24] E-mini is shown to be broadly used in websites and promotional material for describing classes of financial products known as futures, including specific products such as E-Mini NASDAQ 100 futures contracts.23F[25]  

[24] Trade Marks Act 1995 (Commonwealth), s 7.

[25] Kelly Declaration, Exhibit 13, pp. 108.

23.   New York Mercantile Exchange, Inc. S&P, S&P 500, NASDAQ-100, Nikkei 225, Russell 1000, Russell 2000, TRAKRS, Total Return Asset Contracts are Registered trademarks and shown to be used with E-Mini in the evidence.   Chicago Mercantile Exchange Inc. discloses in collateral and press releases that the intellectual property for those registered terms when used in connection with the term ‘E-mini’ are used under licensing arrangements.  The terms of those licenses are not before me.24F[26]  I find that the Applicant’s term ‘E-mini-watch’ is very similar to other terms said to be licensed and shown to be used by the Opponent.25F[27]

[26] Kelly Declaration, Exhibit 11.

[27] Scotch Whisky Assn v De Witt(2007) 74 IPR 382; [2008] AIPC 92-264; [2007] FCA 1649.

24.   The Opponent’s evidence discloses a large number of domain names they own which show tolerance for minor variations in terms.26F[28]  The Applicant also lists a number of domain names not owned by the Opponent which contain the term ‘E-Mini’.27F[29] Where the E-Mini term is found to be genericised for use in a domain name the assumption would not necessarily correlate for a trade mark Registration.28F[30]  The Trade Mark contains the domain name as part of a composite mark which has few distinguishing features, merely plain words and an illustration of a magnifying glass.  I do not find the device is distinguishing for a mark which contains the term ‘watch’.29F[31]  The registrability of domain names are not relevant on the facts in relation to the reputation of the Opponent’s Mark.

[28] Kelly Declaration [44].

[29] Taylor Declaration [30].

[30] REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559.

[31] E and J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15.

25.   The only evidence that the Applicant has adduced in relation to E-mini being generic are two entries for websites.  Those documents attribute the term ‘E-Mini’ either ‘predominantly’ and ‘primarily’ to the Opponent.30F[32]  Alleged use of an ‘E-Mini’ hashtag on the Twitter social media platform is not supported by any evidence and would not be compelling without evidence that Twitter users are the same persons who comprise the specialised market namely, consumers of the specialised financial product in Australia.31F[33]  I am not persuaded that the term is commonly associated with a generic product.  There is no evidence of use before me supporting that the term is in use independent of the Opponent’s business.

[32] Taylor Declaration, Exhibits 13 and 14.

[33] Taylor Declaration, Exhibit 15.

26.   I am satisfied that the Opponent’s Mark has the requisite reputation in Australian for modified futures contracts and use of the Trade Mark would be likely to deceive or cause confusion.

27. The s 60 ground of opposition is established.

Decision

28.   The Opponent has established a ground of opposition.  Pursuant to section 55(1), the Trade Mark number 1875578 will not proceed to registration. 

29. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.

Costs

30.   Costs ordinarily follow the event for an Opposition Hearing.  No submissions have been received to displace the proposition.

31. I therefore direct costs against the Applicant pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
5 June 2020