Re: Opposition by Swatch AG (Swatch SA) (Swatch Ltd.) to extension of protection to Australia of International Registration Designating Australia 1210085 (9) Think Different (Australian Trade Mark Application No...
[2019] ATMO 105
•8 July 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Swatch AG (Swatch SA) (Swatch Ltd.) to extension of protection to Australia of International Registration Designating Australia 1210085 (9) – THINK DIFFERENT (Australian Trade Mark Application No. 1761226) - filed in the name of Apple Inc.
Delegate: Nicholas Smith Representation: Opponent: Stephen Rebikoff of Counsel instructed by Paul Fong of Watermark
Holder: Fiona McNeil of Counsel instructed by Brett Doyle of Clayton UtzDecision: 2019 ATMO 105
Trade Marks Act 1995 (Cth) - Regulation 17A.33 opposition: ss 41, 44, 59 and 62A considered – none established – protection may be extended to AustraliaBackground
This is an opposition brought by Swatch AG (Swatch SA) (Swatch Ltd.) (‘Opponent’) pursuant to regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to the extension of protection to Australia for the International Registration Designating Australia (‘IRDA’) details of which appear below in the name of Apple Inc. (‘Holder’):
Application Number:
1761226
IR Number
1210085
Priority Date:
24 February 2016
Goods:
Class 9: Computers hardware; hand held computers; personal digital assistants; portable digital audio players; electronic organizers; cables, computer programs for personal information management; database management software; electronic mail and messaging software; database synchronization software; computer programs for accessing, browsing and searching online databases; operating system software; data synchronization programs; application development tool programs; computer fonts, typefaces, type designs and symbols; computer software for use in providing multiple user access to a global computer information network for searching, retrieving, transferring, manipulating and disseminating a wide range of information; computer software for use as a programming interface; computer software for use in network server sharing; local networking software; computer software for matching, correction, and reproduction of color; computer software for use in video editing; computer software for use in enhancing text and graphics; computer software for use in font justification and font quality; computer software for use to navigate and search a global computer information network, as well as, organize and summarize the information retrieved; computer software for use in word processing and database management; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio, video and other digital data; computer software for analyzing and troubleshooting other computer software; computer game software; computer graphics software; computer search engine software; instructional manuals in electronic format packaged in association with all of the above (‘Holder’s Goods’)
Trade Mark:
THINK DIFFERENT
(‘Trade Mark’)
Following the advertisement on 21 July 2016 in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the IRDA, the Opponent filed a Notice of Intention to Oppose on 1 September 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 27 September 2016. The SGP raised grounds of opposition under ss 41, 44, 59 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’). The Holder filed a Notice of Intention to Defend on 27 October 2016.
Evidence and Submissions
The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 January 2017. This evidence consists of a declaration made on 10 January 2017 by Jeannine Aebi, CFO and Vice-President of the Opponent, with Annexures 1 to 16 (‘Aebi Declaration’).
The Holder filed Evidence in Answer (‘EIA’) on 19 April 2017. This evidence consists of a declaration made on 11 April 2017 by Thomas R. La Perle, director in the legal department of the Holder, with Exhibits TLP-1 to TLP-26 (‘La Perle Declaration’). The Opponent did not file any Evidence in Reply.
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Following the expiry of a cooling-off period on 27 July 2018 the Opponent requested an oral hearing. The Holder did the same on 6 August 2018. The matter was set down for a hearing in Canberra on 7 May 2019. In line with usual practice, a letter was sent to the parties on 27 February 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 23 April 2019 (‘Opponent’s Submissions’). The Holder filed written submissions on 30 April 2019 (‘Holder’s Submissions’).
On the day of the hearing the Holder provided by e-mail two additional documents, being photos of parts of the packaging of the iMac personal computer that bore the words ‘Think Different’. This material had already been exhibited to the La Perle Declaration but it was difficult to properly read. Following an indication that the Opponent did not oppose me having regard to this additional information, I have decided to have regard to this additional material. At the hearing Stephen Rebikoff of Counsel instructed by Paul Fong of Watermark represented the Opponent, appearing in person and Fiona McNeil of Counsel instructed by Brett Doyle of Clayton Utz, represented the Holder, also appearing in person (Mr Doyle appearing by telephone).
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by Reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and the oral submissions made at the hearing.
The Opponent
The Opponent is a company based in Switzerland that, amongst other things, has developed the SWATCH watch. The Opponent is the applicant for the trade mark application featured below (‘Opponent’s Trade Mark’).
Application Number:
1743921
Priority Date:
16 July 2015 (Convention)
Opponent’s Goods:
Class 9: Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and mobile and computer devices, digital personal stereos, mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); handheld electronic apparatus for accessing the Internet and sending, receiving, recording and storing of short messages, electronic messages, telephone calls, faxes, video-conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, sunglasses and magnifying glasses; batteries for electronic apparatus and computers, batteries for timepieces and chronometric instruments
Trade Mark:
The Opponent, in respect of the s 44 ground of opposition also relies on the third party marks featured below, owned by Jia Ge (‘Jia Ge Trade Marks’). The services for which the Jia Ge Trade Marks are registered are collectively refereed to as the ‘Jia Ge Services’.
Mark Priority Date Services 1715083 THINK DIFFERENT 17 Aug 2015 Class 35: Advice on tax preparation; Preparation of documents relating to taxation; Preparation of income tax returns; Preparation of tax returns; Tax advice (accountancy); Tax assessment (accountancy) consultancy; Tax assessment (accounts) preparation; Tax consultancy (accountancy); Tax consultations (accountancy); Tax filing services; Tax planning (accountancy); Tax preparation; Tax return advisory (accountancy) services; Tax return preparation; Tax services (business management and accountancy services); Taxation (accountancy) advice; Taxation (accountancy) consultancy; Accounting; Cost accounting; Cost management accounting; Management accounting; Professional business consultancy; Professional recruitment services; Advice relating to acquisitions; Advice relating to barter trade; Advice relating to business management; Advice relating to business organisation; Advice relating to commercial management; Advice relating to marketing management; Advice relating to personnel management; Advice relating to the acquisition of businesses; Advice relating to the sale of businesses; Association services being the provision of business support or advice; Business advice; Business advice relating to advertising; Business advice relating to franchising; Business advice relating to marketing; Business management advice; Career advisory services (other than education and training advice); Career counselling (employment advice and information); Career information and advisory services (other than educational and training advice); Management advice; Marketing management advice; Personnel management advice; Provision of advice relating to marketing; Provision of business advice relating to franchising 1740980
THINK DIFFERENT12 Dec 2015 Class 36: Advisory services relating to real estate ownership; Advisory services relating to real estate valuations; Agency services for the leasing of real estate property; Appraisal of real estate; Brokerage of real estate; Commercial real estate agency services; Consultation services relating to real estate; Evaluation of real estate; Leasing of real estate; Management of real estate; Property leasing (real estate property only); Property sales services relating to real estate development; Provision of information in relation to real estate; Provision of information relating to real estate; Real estate acquisition (for others); Real estate administration; Real estate advisory services; Real estate agencies; Real estate agency services; Real estate appraisal; Real estate brokerage; Real estate brokerage; Real estate broking; Real estate consultancy; Real estate insurance services; Real estate leasing; Real estate licensing; Real estate management; Real estate selection and acquisition (on behalf of others); Real estate services relating to real estate development; Real estate valuations; Rental of offices (real estate); Rental of real estate; Research services relating to real estate; Stock and station agencies (real estate services); Subdivision of real estate (real estate services); Valuation of real estate; Insurance
The Aebi Declaration contains the following claims/statements:
· Established in 1985, the Opponent took over the development, production and marketing of the very successful Swatch watch product, which by 2006 had reached sales of 333 million watches.
· The Opponent has released products with NFC chips that can communicate with mobile phones and other readers that can be used for contactless payments, as well as fitness watches and other battery related products. As of 2015 the CEO of the Opponent expressed an intention to invest in research in areas such as electronic chips, batteries, touch screens, solar panels and other materials.
· The Opponent has offered its Swatch watches for sale in Australia since 1985 with significant sales over the last 30 years.
· The Trade Mark is a variant of the Opponent’s moto ‘Always new, always different’, which was used by the Opponent in the 80s and 90s. The Opponent first used the Trade Mark in connection with watches sold in Switzerland in 2016 and in respect of certain special edition watches released in connection with the Olympic Games in Brazil. The watches sold by the Opponent in Switzerland featured contactless payment technology that enabled the watch to be used as an alternative to cash or cards.
· The term ‘think different’ is an ordinary English expression. The Holder used the term for an advertising campaign in 1997 but since 2002 then its use of the term has been very limited. The Holder now seeks to register THINK DIFFERENT as a trade mark despite not using it in any significant manner for 15 years. It is motivated by a desire to interfere with the Opponent’s genuine intention to use the Opponent’s Trade Mark and not by any genuine intention to use the Trade Mark for the Holder’s Goods.
The Holder
The Holder is a technology company, based in the United States and exceedingly well-known throughout the world. The Holder is the registered owner of numerous trade marks in Australia including the mark listed below (‘Earlier Mark’).
Mark Priority Date Goods 754377
THINK DIFFERENT29 Aug 1997 Class 16: Newsletters, brochures, pamphlets, folders and posters dealing with the subject of computers; paper and stationery, namely writing and notepads; decalcomanias; stickers; pens
The La Perle Declaration contains the following claims/statements:
· The Holder was founded in 1976 and since that time has offered countless technology-related products including the iPhone, iPad, Apple Watch and iPod devices. The Apple brand is exceedingly well-known internationally with a very loyal customer base.
· In 1997 the Holder’s co-founder Steve Jobs returned to become CEO and invited agencies to present new slogans for the Holder. An advertising campaign revolving around the slogan ‘THINK DIFFERENT’ was chosen and ran in 1997. This initial, enormously successful, campaign included a TV commercial and promotional posters featuring historic figures. Further uses of THINK DIFFERENT included use on the Apple website and as part of the packaging for iMac personal computer product, the sales of which have been substantial.
· The THINK DIFFERENT advertising campaign has won numerous awards and received significant media recognition.
· The Holder’s global sales and marketing expenditure is highly significant, as are its sales of its iMac range of personal computers.
· The term ‘Think Different’ is an ungrammatical phrase, which the Holder has held as a registered trade mark in Australia since 1997 (being the Earlier Mark). The Holder now seeks to expand this registration by registering the Trade Mark for the goods to which the THINK DIFFERENT advertising and promotional campaign has applied to since 1997. The Holder has historically used the Trade Mark as part of its advertising campaign for a wide variety of the Holder’s Goods and continues to use the mark to advertise the iMac product.
· The Declarant does not believe that the Opponent intends to use the Opponent’s Trade Mark for the broad range goods for which it is sought to be registered. Rather because of the commercial rivalry between the Holder (which in 2014, launched the Apple Watch product) and Opponent, the Opponent has sought to misappropriate the Holder’s goodwill by seeking to register various trade marks connected to the Holder, including the Opponent’s Trade Mark, ONE THING, and SWATCH ONE MORE THING, the phrase ‘one more thing’ being associated with Steve Jobs.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 44, 59 and 62A. To successfully oppose the application the Opponent needs to establish at least one of those grounds.
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 24 February 2016 (‘relevant date’), being the filing date or in the case of s 44, the ‘priority date’, that date being the same in this case.[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).
Discussion
Section 44
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)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)it 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).(2)…
(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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· 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 goods, and/or services which are closely related to, the Holder’s Goods (‘the third requirement’).
In the event that each of these requirements are satisfied by the Opponent it may 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 exist which would make registration of the Trade Mark proper, or that the Holder has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark and the Jia Ge Trade Marks each of which has an earlier priority date than the Trade Mark. When considering the second and third requirements it is appropriate to consider the Opponent’s Trade Mark and the Jia Ge Trade Marks separately, starting with the Opponent’s Trade Mark.
Opponent’s Trade Mark
The Opponent’s Trade Mark is presently sought to be registered by the Opponent. It has been the subject of an opposition proceeding by the Holder however in Apple Inc v. Swatch AG (Swatch SA) (Swatch Ltd.) 2019 ATMO 98 I concluded that the (present) Holder had not established any of the grounds of opposition to the Opponent’s Trade Mark and that the mark should proceed to registration.
I consider that at least some of the goods for which the Opponent’s Trade Mark is registered are similar to some of the Holder’s Goods, as both marks are sought to be registered for computer hardware and other IT peripherals. The first and third requirements are satisfied.
Substantially identical and/or deceptively similar
Although the Opponent did not specifically assert that the respective trade marks are substantially identical in the SGP, 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.[4]
[4] (1963) 109 CLR 407, [12].
The Trade Mark and the Opponent’s Trade Mark are set out below:
THINK DIFFERENT
While I consider the stylization of the Opponent’s Trade Mark to be de minimus, I do find that on a side by side comparison there is a clear difference between the marks, namely that one mark contains the distinctive word ‘THINK’ and the other ‘TICK’ which is sufficient for me to conclude that the trade marks are not substantially identical. I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.
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].[5]
[5] Ibid [13].
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[6] at [49]; Australian Woollen Mills[7] at 658.
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[8] 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.
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[9] at 594 – 595.
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].[10]
[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[10] [2012] FCA 1022, [38]-[46].
While the marks share some similarities, as both of them consist of one word ‘t…k’ and a second word ‘different’ on balance I consider that the marks, when taken as a whole are sufficiently visually, aurally and conceptually different such that, given the surrounding circumstances, I am not persuaded that the use of the Trade Mark will cause confusion.
The visual dissimilarity arises as a result of the difference between the words ‘think’ and ‘tick, being the first word of the respective marks. Although both marks start with words beginning with ‘t’ they are aurally dissimilar, with ‘think’ commencing with the ‘th’ sound and a longer pronunciation. ‘Tick’ on the other hand has a short pronunciation and commences with a hard ‘t’ sound, such that ‘think different’ is unlikely to be misheard as ‘tick different’ (and visa versa).
The marks, while sharing the conceptual focus on ‘difference’ or ‘doing things differently’ have quite different meanings as a result of the distinctive meanings of ‘think’ and ‘tick’. As noted in the EIS, consumers would consider the meaning of ‘think different’ to be that the individual should think differently (to other people, or previous ways of thinking) or otherwise embrace innovation. The meaning of ‘tick different’ is less clear, but any meaning that a consumer might find in ‘tick different’ would focus on the word ‘tick’ which either refers to the sound made by a traditional clock or watch, or a check mark, and thus the meaning ascribed would be something along the lines of ‘a different version of the sound/mark’. Finally I note that the Holder’s Goods are reasonably sophisticated goods that are customarily purchased with some care. As a result of the quite significant differences in sound and meaning of the marks, and the noticeable but less significant difference in the visual appearance of the respective trade marks it is unlikely that the use of the Trade Mark on the Holder’s Goods will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark.
I find the Opponent has failed to establish the ground of opposition under s 44 in respect of the Opponent’s Trade Mark. It therefore necessary to consider the Jia Ge Trade Marks.
Jia Ge Trade Marks
The Jia Ge Trade Marks have an earlier priority date and are identical to the Trade Mark. It is then necessary to consider if either of these marks are registered in respect of services which are closely related to the Holder’s Goods.
Closely related services
The recent case of Paypal, Inc v Braintree Communications Pty Ltd summarises the legal principles applicable when determining if the goods for which the Trade Mark is sought to be registered are closely related to the services for which the Jia Ge Trade Marks are registered as follows:
In Qantas Airways Ltd v Edwards[11] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[12]:
[11] [2016] FCA 729 at [111].
[12] (1999) 93 FCR 365; [1999] FCA 1020 at [37].
... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...
Yates J continued:
His Honour also said in this connection that “closely related” was of wider import than “similar”.
Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:
Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...
His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):
... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.
Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.
However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.
This understanding is supported by the following passage in [39] of his Honour’s reasons:
... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.
His Honour concluded at [40]:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.
The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [13]
[13] [2017] ATMO 90, [28]-[29].
The Holder’s Goods are IT products. The Jia Ge Services are tax, real estate or general business advisory services. Notwithstanding that the Jia Ge Services may be (or even necessarily are) performed through the use of IT products (a factor that can be, in particular cases show that the services are closely related to the goods), I am not satisfied that the relationship between them is such that even with identical marks (as is the case in the present matter) the application of the Trade Mark to the Holder’s Goods would deceive or cause confusion. This is because the Holder’s Goods are a necessary part of the provision of a vast array of services; indeed other than certain types of personal services and manual labour, it is difficult to conceive of business providing services in Australia that does not use IT products in some way. To put it another way, the Jia Ge Services are no more and no less related to the Holders Goods then any other service that can be provided by means of IT products. Consumers are aware of that and are unlikely to conclude that the provider of IT products provides any or all the services that can be performed with those goods.
As I am not satisfied that the Jia Ge Services are closely related to the Holder’s Goods I find the Opponent has failed to establish the ground of opposition under s 44 in respect of the Jia Ge Marks.
Section 41
Section 41 of the Act is set out below:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the
With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[14] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:
[14] (1998) 40 IPR 498, 505.
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][15]
[15] [2017] ATMO 25, [38]-[40].
I note for completeness that the presumption of registrability also applies at the opposition stage and in an appeal under s 56 of the Act.[16]
[16] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 70 IPR 59, 602.
Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[17]:
As mentioned in paragraph [13] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.][18]
[17] [2015] ATMO 69 at [16]. I have in the main also retained the Hearing Officer’s original footnotes.
[18] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point.
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:
(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[19][19] [2017] FCAFC 56 at [236]
The ground based on s 41 of the Act is particularised in the SGP as follows:
The words “think different” comprise commonly used, ordinary, descriptive language which informs potential buyers that the manufacturer/supplier of the products in question has aimed to bring a new mindset to the products, or that purchasers should do so - i.e. to think in a different manner about the products. Other traders are legitimately entitled to promote that they have aimed to bring a new mindset to their products, and that consumers should think different(ly) about their products. The words are therefore not capable of distinguishing for the purpose of section 41 of the Trade Marks Act
The Opponent submits that the Trade Mark consists of the two word slogan ‘think different’, being an ordinary English phrase with a readily understood meaning, being to consider a situation or think in a new or distinct way. Accordingly, in the context of the Holder’s Goods, the Trade Mark will be understood by consumers as a laudatory expression or a general exhortation to the consumer, being part of the common heritage that other traders should be free to use. The Opponent points to some (in my view, limited) use of the words ‘think different’ by other entities, most of which have little to do with the market for the Holder’s Goods.
The Holder characterizes ‘think different’ as a grammatically incorrect English phrase (the correct phrase being ‘think differently’) the meaning of which (as characterized by the Opponent) is at most an indirect reference. Each of the uses of the phrase identified by the Opponent postdate the Holder’s use and, in one case explicitly, expressly acknowledge taking inspiration from the Holder’s use of the phrase.
The Trade Mark, in the context of the Holder’s Goods, does not indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Holder’s Goods or the time of their production. Indeed it is not descriptive in any form.
The expression ‘think different’ is either ungrammatical or (were I to accept the Opponent’s Submissions that the use is grammatically correct) at least an unusual and distinctive manner in which to express the concept of considering a situation in a new or distinct way. The evidence of usage of the Trade Mark by third parties is limited, generally outside the market for the Holder’s Goods, often outside Australia, and at least in one case, its use explicitly arises from the Holder’s use of the phrase.
While I accept the Opponent’s Submissions that simple exhortations and advertising slogans such as ‘have a break’ or ‘go on…’ may not be inherently adapted to distinguish, (notwithstanding that they are not descriptive of the goods to which they are appended) I do not consider that the unusual expression ‘think different’ falls into the same category as the common exhortations referred to above and more generally in Unilever Australia Ltd v Societe Des Produits Nestle S.A..[20] Rather the effect of the difference between ‘think different’ and the undisputedly grammatically correct form ‘think differently’[21] is similar to effect created by the phrase ‘TGI Friday’s’ which, while an abbreviation of a common expression was (as a result of the use of the possessive form of Friday) sufficiently uncommon and unidiomatic to render the mark capable of distinguishing the then applicant’s services.[22]
[20] [2006] FCA 782.
[21] The parties did not dispute that ‘think differently’ is grammatically correct; they disputed whether ‘think different’ was also grammatically correct.
[22] See T.G.I. Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720.
While the Trade Mark could potentially be seen as an exhortation, as a result of the unusual nature of the Trade Mark I do not consider it likely that other traders, in the ordinary course of their business and without any improper motive, will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Holder’s Goods. I find that the Trade Mark is inherently adapted to distinguish the Holder’s Goods from the goods of other persons and as such the Opponent has failed to establish the ground of opposition under s 41.
Section 59
Section 59 of the Act is reproduced below:
59 - Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia, or
(b) to assign the trade mark to a body corporate for use by the body Corporate in Australia;
in relation to the goods and/or services specified in the application.
The relevant date for assessing the Holder’s intention to use the Trade Mark is the priority date being 24 February 2016.[23]
[23] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437. (‘Food Channel’).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
Evidence filed by the Holder in support of its opposition to the Opponent’s trade mark TICK DIFFERENT IR 1280843) shows that the Holder included the words “think different” in a generic advertising campaign almost 20 years ago, and that since 2009 those words have appeared in a very minor way on the specification sheet for one of the Holder’s products. These references to “Think Different” do not constitute use of those words as a trade mark. The Holder only filed IR 1210085 after becoming aware of the Opponent’s IR 1280843 (see section 62A ground below) and does not have a genuine intention to use THINK DIFFERENT as a trade mark in the future.
The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:
In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[24]
[24] [2008] 75 IPR 478, [160].
There is a presumption that where an application has been filed the applicant, has the requisite intention. However:
There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[25]
[25] Ibid [162]-[163] (citations omitted).
Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[26]
[26] Ibid [161] (citations omitted).
In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Holder lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Holder for rebuttal.
Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate in Foxtel Management Pty Ltd v 111Pix.com Ltd stated:
I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.
In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:
Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.
In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).
Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.
In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.
In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].
Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [27]
[27] [2012] ATMO 29, [36]-[39].
The Opponent’s evidence on this point appears to be a suggestion that, at the date of the EIS, the Holder was not using the Trade Mark in any significant way, and that the decision in 1997 to register the Earlier Mark should be seen as evidence that the Holder does not regard the Trade Mark as a badge of origin for the Holder’s Goods. A further submission has been made to the effect that the Holder sought to register the Trade Mark in order to interfere with the Opponent’s use of the Opponent’s Trade Mark.
I find that this material is insufficient to shift the evidentiary onus to show an intention to use the Trade Mark to the Holder. The Holder is trading in the Holder’s Goods and has used the Trade Mark (prior to the relevant date) in connection with the advertising of said goods. Even if I were to accept the Opponent’s submission that the present use of the Trade Mark on the iMac product is not use as a trade mark, that is insufficient to shift the evidentiary onus.
Furthermore, speculation as to the mindset of the Holder when it chose to register the Earlier Mark, 15 years before the relevant date, is of little relevance to the present question of the Holder’s intention at the relevant date. Finally, given the historical use of the Trade Mark and the fact that the Holder is trading in the Holder’s Goods I am unpersuaded that the sole purpose of the application is to interfere with the Opponent’s use of the Opponent’s Trade Mark (which in any event has an earlier priority date than the Trade Mark and hence any use by the Opponent in Australia is allowed pursuant to s 122(1)(e) of the Act). The Opponent has failed to establish a prima facie case that the Holder lacked the requisite intention as at the relevant date and has, consequently, failed to establish the ground of opposition pursuant to s59 of the Act.
Section 62A
Section 62A of the Act is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[28]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[29]
[28] [2004] EWCA Civ 1028; [2005] FSR 10.
[29] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[30]
[30] Ibid [165]-[166].
The Opponent has particularised this ground of opposition in the SGP as follows:
The Holder only filed IR 1210085 after becoming aware of the Opponent’s earlier IR 1280843 for TICK DIFFERENT, in an attempt to frustrate the Opponent’s use of that mark. This falls short of generally accepted standards of commercial behaviour.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[31] I refer to the matters in paragraph 55 and 56 above and note that I give little weight to any submissions about the intention of the Holder in 1997 when it registered the Earlier Trade Mark. I note the history of the Holder’s use of the Trade Mark, such that this case is not analogous to an entity simply registering an otherwise unused mark to interfere with a commercial opponent or otherwise obtain some illicit commercial gain. Finally I note that the Opponent has the right under s 122(1)(e) of the Act to use the Opponent’s Trade Mark for its goods in Australia and as such am unpersuaded that the purpose behind the application to extend protection to the Trade Mark was to deny the Opponent the right to use the Opponent’s Trade Mark. In summary I am not satisfied that the Opponent has satisfied the onus to show that the Holder’s decision to adopt the use of the Trade Mark is conduct of unscrupulous, underhand or unconscientious character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.
[31] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
Decision
Regulation 17A.34N provides:
17A.34N Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.
The IRDA may then proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the protection of the IRDA be subject to any orders of the Court.
The International Bureau will be notified of the Registrar’s decision.
Costs
The Holder 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.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
8 July 2019
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