Re: Opposition by Sigfox to registration of trade mark application number 1713786 (classes 9 and 42) Sigbox in the name of Macquarie Telecom Pty Ltd

[2020] ATMO 183

TRADE MARKS ACT 1995

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

Re:Opposition by SIGFOX to registration of trade mark application number 1713786 (classes 9 and 42) - SIGBOX - in the name of Macquarie Telecom Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: No representation Applicant: Sonia Stewart of Counsel instructed by Brian Elkington of Adams Pluck
Decision:	2020 ATMO 183 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 44, 58, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This is a decision on the opposition to registration of the plain word SIGBOX (‘Trade Mark’) by SIGFOX (‘Opponent’).[1] On 18 August 2015 (‘Relevant Date’) Macquarie Telecom Pty Ltd (‘Applicant’) filed an application for registration of the Trade Mark with this office, claiming the following goods and services:

   Class 9:Communication software; Computer software; Computer software (programs); Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Data communications software; Apparatus for controlling the storage of data; Apparatus for data collection; Apparatus for data storage; Apparatus for input of data; Apparatus for the storage of data; Computer apparatus for the storage of data; Computer data storage apparatus; Computer databases; Computer installations for the storage of data; Data banks; Data files; Data programmes; Data recorded in electronic form; Data recording materials; Data storage apparatus; Data storage devices; Database programs; Databases; Electrical devices for storage of data

   Class 42:Advisory services relating to computer software; Computer software advisory services; Computer software consultancy; Hosting of software as a service (SaaS); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Installation of computer software; Software as a service (SaaS); Back-up (copying) of computer data; Computer database consultancy services; Computerised data storage services; Electronic data storage; Hosting of databases; Server hosting; Cloud computing

   [1] The Opponent is a Société Anonyme registered in France.

2. As required by the Trade Marks Act 1995 (Cth)[2] the Trade Mark was examined, accepted for possible registration and then advertised for opposition purposes. The Opponent filed a notice of its intention to oppose registration of the Trade Mark on 10 March 2016 and a statement of grounds and particulars (‘SGP’) on 7 April 2016. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 6 May 2016. The parties then filed evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth), concluding with the Opponent’s evidence in reply on 30 January 2017.[3]

   [2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

   [3] Trade Marks Regulations 1995 (Cth) reg 5.14. Each reference to a regulation in these reasons is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

3. This opposition was originally scheduled for hearing on 19 July 2018 but on that day the parties jointly sought a cooling-off period of six months in accordance with reg 5.16. The parties did not seek to extend the cooling-off period, and another hearing date was set for 11 February 2020. Prior to the hearing, the Opponent told this office that it would not file written submissions or attend the hearing, relying only on its evidence filed earlier. I held the hearing in my capacity as a delegate of the Registrar of Trade Marks. Presenting argument on behalf of the Applicant was Sonia Stewart of Counsel instructed by Brian Elkington of Adams Pluck.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[4] The rights of the parties are assessed as at the Relevant Date.[5]

   [4] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Evidence

1. The following evidence was filed under reg 5.14:

   Evidence in support

   Declaration of Raoul Mallart, Vice President of Innovation and Intellectual Property of the Opponent, made on 18 August 2016 with annexures A to H.

   Evidence in answer

   Statutory declaration of Paul Christensen, General Manager of Data Centre and Government Operations of the Applicant, made on 24 November 2016 with annexures A to P

   Statutory declaration of Brian Elkington, attorney for the Applicant, made on 28 November 2016 with annexure A

   Evidence in reply

   Declaration of Lara Townsend Gun, solicitor and attorney for the Opponent, made on 30 January 2017

2. Mr Mallart reads into evidence details of the Opponent’s registered trade marks around the world, including one mark registered in Australia. He provides an account of historical use of the Opponent’s SIGFOX mark, describing the services offered under that mark as ‘connecting services for the IOT (internet of things) being an operated telecommunication network dedicated to the IOT’. Use in relation to those services as at the Relevant Date was confined to ten countries in Europe. Also attached to this declaration are Google Analytics, Google Trends and Meltwater data. The first of these offers statistics on visits to the Opponent’s website from Australia. Google Trends reflects how often SIGFOX has been used as a search term. Meltwater calculates how many social media mentions of that mark have been made by internet users in Australia and New Zealand. The Opponent’s sales and advertising expenses are disclosed in confidential annexures, and examples of marketing materials along with a press release signalling the Opponent’s intention to enter into a partnership, extending its IOT network to Australia and New Zealand.

3. Mr Christensen’s evidence provides a reasonably detailed account of the coining of the Trade Mark. In 2014 the declarant discovered a need for a secure online document sharing facility, sometimes called a ‘drop-box’, for Australian Government agencies. In the same calendar year, the Applicant began negotiations to license a suitable product from a third party and discussed conducting proofs of concept with several government agencies. At the time, the Applicant was already offering a secure internet connection for government users, which it had called SIG. One of the Applicant’s senior officers suggested it call this new service SIGBox, since its SIG internet connection would be the means for accessing the document sharing facility. In 2015 the Applicant finalised its licensing negotiations, securing a reseller agreement for the product. It also received certification that its new product complied with the Australian Government Security Manual, and commenced advertising the product on its website. The remainder of this declaration discusses marketing, revenue and sets out growth in the customer base for its SIGBox product, and notes there have been no instances of confusion as to the trade source of goods or services offered under the Trade Mark to date.

4. Mr Elkington’s declaration provides search results of the Australia Trade Marks Register for marks containing the word BOX for computer hardware, software and related services. There are more than 180 marks in the results.

5. Ms Gun’s declaration does not introduce any new facts, and as such is not evidence but submissions. It is solely concerned with pointing to deficiencies in Mr Christensen’s declaration—that some of the annexures are not dated and that sales of the Applicant’s SIGBox product took place after the priority date of Australian trade mark number 1690745 (‘Opponent’s Mark’) .

6. Shortly before the hearing the Applicant filed another statutory declaration. This declaration was an attempt to update the evidence as to the Applicant’s more recent use of the Trade Mark. While I understand that the Applicant would have been motivated to alert me to the fact that things had moved on since their evidence in answer was filed over three years prior, filing evidence out of time without permission has a tendency to bring about serious procedural issues. Where that evidence relates to events taking place in the intervening period it is unlikely to shed much light on the grounds of opposition since, as I have recited above, the Relevant Date is generally the crucial point at which to assess the grounds of opposition. The Applicant’s late filed evidence is also unlikely to affect the outcome of this opposition. This is because the onus to establish a ground of opposition lies with the Opponent and, as I have discussed below, there are significant failings with the Opponent’s case as it was put in its evidence. Given this, it has not been necessary to refer to the Applicant’s late filed declaration or give it any weight.

7. At the same time as filing this late evidence, the Applicant also filed a four-page excerpt from the Macquarie Dictionary. Two pages provide the cover and publication details, and the other two pages list all entries beginning with SIG.[6] I have referred to the latter two pages in my discussion of the grounds of opposition.

Discussion

[6] Macquarie Dictionary (7^th ed, 2017) 1389-90.

Sections 44 and 58

1. To establish the s 44 ground what is required is a mark that has been filed under the Trade Marks Act 1995 (Cth) earlier than the Trade Mark. That earlier mark must claim similar or closely related goods and services and be deceptively similar or substantially identical to the Trade Mark.

2. The Opponent has put forward for consideration under s 44 its own mark, which I have defined above as the Opponent’s Mark. It consists of the plain word SIGFOX. It is a Protected International Trade Mark with a priority date of 5 February 2015, so it is earlier than the Trade Mark. It is protected in relation to a broad range of goods in class 9 and services in class 38. There are some near identical claims in class 9, such as ‘software’ in relation to the Opponent’s Mark and ‘computer software’ in relation to the Trade Mark. There are at least arguably some distinctions that could be drawn for other goods and likely more still when it comes to the parties’ respective claims to services in classes 38 and 42. However, for present purposes in order to put the Opponent’s case at its highest, I will assume all claims are in relation to the same goods and services. This will allow me to engage more directly with the more crucial question—whether the Trade Mark too nearly resembles the Opponent’s Mark.

3. There are two types of resemblance set out in s 44—deceptively similar and substantially identical. The latter is assessed in the following manner:

   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.[7]

   [7] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

4. That is, this ought to be a studied comparison of SIGFOX with SIGBOX. While these marks share five letters SIG_OX, the Opponent’s Mark fills in the blank with an F and the Trade Mark with a B. These in turn form different ordinary English words, FOX and BOX. The impression formed on a side-by-side comparison is not one of substantial identity. Substantial identity being a necessary element of s 58, that ground of opposition is not established. I now move on to the second species of resemblance in s 44, deceptive similarity.

5. Assessing whether these marks are deceptively similar requires that I form an estimation of the general impression of the Opponent’s Mark that is likely to be carried away by consumers, noting that later recollection of that mark will be imperfect.[8] With that general impression in the mind, the question is whether on seeing the Trade Mark used in relation to its claimed goods or services, would consumers be likely to be caused to wonder, even fleetingly, whether those goods or services might come from the Opponent.[9] In order to gain an appreciation of this general impression, and through it an insight into any likelihood of confusion caused by use of the Trade Mark it is useful to consider the visual, aural and conceptual aspects of each mark.

   [8] Ibid 415.

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

6. The marks share significant visual and aural similarities. They have the same number of letters, begin with identical syllables, and each sports a second syllable terminating in the same -OX sound. It is the beginning of the second syllables that are different. Despite this single-letter difference being relatively slight, it will result in a readily distinguishable overall look and sound due in no small part due to the difference of idea each presents.

7. As mentioned above, the first syllable in the Trade Mark, SIG, is explained by the Applicant as a reference to its earlier product, being a Secure Internet Gateway. The Macquarie Dictionary notes that these three letters are short form for signature, signification, signifies and signor. There are definitions that show it is also a contraction of signal as in SIGINT (a portmanteau of signals intelligence) and sigma (a Greek letter) as in sigmate/sigmoid. It is unclear which of these meanings of SIG the relevant consumer would take away. Some of those meanings, particularly signal, suggest this prefix carries with it a descriptive (or at least referential) tinge. This is also suggested by its apparent popularity in respect of goods in class 9. SIGTEC, SIGUARD, SIGVIEWER, SIGWELL, SIGICOM, SIGLENT and SIGMAMRP coexist on the register along with many other SIG formative marks predating the Opponent’s mark. Consumers are therefore likely to be accustomed to seeing and differentiating trade marks with SIG as their prefix. The immediate meanings of FOX and BOX are more concrete—the former an animal, the latter a receptacle. This pair of words rhyme perfectly, as exemplified in a best seller of Dr Seuss, and as such can twist a tongue:

Fox
Socks
Box
Knox
Knox in Box
Fox in socks

Knox on fox in socks in box[10]

[10] Dr Seuss, Fox in Socks (Beginner Books, 1965) 3-5.

1. But while some tongues may experience brief confusion no minds would. Conceptually FOX and BOX are as unlikely to be confused as CAT and HAT or HAM and SAM. Moreover, FOX and BOX are reasonably distinctive, quite simple concepts and therefore are each perfectly memorable in relation to the goods and services in question. When each of these marks is taken as a whole, there does not appear to be any real, tangible likelihood of confusion of SIGBOX with SIGFOX.

2. These marks are not deceptively similar, so the s 44 ground of opposition is not established.

Sections 42(b) and 60

1. Each of these grounds, as they have been addressed by the Opponent, depends on a reputation in SIGFOX existing in Australia among the relevant public at the Relevant Date. No such reputation is borne out in the evidence. As Mr Mallart tellingly declares:

   the SIGFOX Mark is intended to be used in Australia from the second half of calendar year 2016 in relation to at least some of the same or similar goods and services in relation to which the Opposed Mark is sought to be registered.

2. Among the Opponent’s evidence, the only information that might arguably go toward the establishment of a reputation in the Opponent’s Mark by the Relevant Date are the Google Analytics, Google Trends and Meltwater data annexed to Mr Mallart’s declaration.

3. The Google Analytics data purports to show how many sessions on the Opponent’s sigfox.com website originated in Australia from 2014 to 3 April 2016. The data from after the Relevant Date is of little relevance. The numbers appear small, though the Opponent has done nothing to inform this office as to what might be significant in relation to the market for the goods or services involved here. Underwhelming numbers aside, there is another problem with this data. A website published to the world at large, without an effort to direct or target that website content toward Australians, is not trade mark use within Australia.[11]

   [11] Ward Group Pty Limited v Brodie & Stone plc (2005) 143 FCR 479, 490 [40] (Merkel J).

4. The Google Trends data purports to show ‘Interest over time’ of the search term ‘sigfox’ between March 2014 and March 2016. This annexure is meaningless. The graph provides no indication of the numbers involved, nor does it indicate where those searches were performed.

5. The Meltwater data is similarly unhelpful. It is solely concerned with social media mentions in Australia and New Zealand taking place after the Relevant Date.

6. Aside from these metrics, the Opponent has provided undated marketing material stating that rollout ‘continues to the rest of Europe, Asia and the Americas over the next couple of years.’ There is also a press release from after the Relevant Date indicating that the Opponent plans to extend its SIGFOX network into Australia. While it too would have been of limited value here, the Opponent has not provided evidence that this happened.

7. In the absence of an established reputation in the Opponent’s Mark at the Relevant Date, neither of ss 42(b) or 60 can be established.

Section 62A

1. In asserting that the Trade Mark was applied for in bad faith, the Opponent has again submitted that there was a reputation in SIGFOX at the time the application was filed. The SGP states that ‘the Applicant could have or should have been aware’ of this reputation in the Opponent’s Mark, that these marks are deceptively similar and are ‘in relation to at least some of the same or similar goods and services’. While I have already found the marks are not deceptively similar, it also bears repeating here that ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.’[12] The Opponent’s allegation of bad faith here does not rise above an assertion of prior knowledge of its mark by the Applicant. This ground of opposition is not established.

   [12] 1872 Holdings VOF v Havana Club Holding SA (2017) 127 IPR 410, 427 [64] (Hearing Officer Thompson).

Decision and costs

1. The Opponent has failed to establish any of the nominated grounds of opposition. As such, the Trade Mark may proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the opposition should be in accordance with the Court’s order or direction.

2. The Applicant has asked that costs be awarded. The normal course is for costs to follow the event. No argument has been made nor are there any circumstances I am aware of that might alter that. As such, I award costs against the Opponent.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
30 November 2020