Re: Opposition by Zillow, Inc. to registration of trade mark application number 1872673 (classes 20,42) - Zillo + HUTCH in the name of Zillo & Co Pty Ltd

[2020] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Zillow, Inc. to registration of trade mark application number 1872673 (classes 20,42) – ZILLO + HUTCH - in the name of Zillo & Co Pty Ltd.

Delegate:	M. Cooper
Representation:	Opponent: Griffith Hack Applicant: CounselCorp Pty Ltd
Decision:	2020 ATMO 120 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 60 and 62A – no grounds established – trade mark to proceed to registration.

Background

1.     This matter concerns an opposition by Zillow, Inc (‘the Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade mark detailed below in the name of  Zillo & Co Pty Ltd (‘the Applicant’):

Application Number: 1872673

Trade Mark: ZILLO + HUTCH (‘the Trade Mark’)

Filing Date: 15 September 2017

Specification:

Class 20: Furniture

Class 42: Interior design

(‘the Goods and Services’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 8 February 2018 in the Australian Official Journal of Trade Marks.

3.     On 29 March 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 26 April 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 31 May 2018.

Evidence

4.     Evidence in Support (‘EIS’) was filed by the Opponent on 5 September 2018. It comprised the declaration of Michelle Wynn Otter, the Opponent’s Assistant General Counsel, dated 4 September 2018, with Annexures 1 to 9 (‘Otter declaration’).

5.     On 14 December 2018, the Applicant sought a two-month extension of time to file its Evidence in Answer. On 15 January 2019, the Trade Marks Office emailed the Applicant reminding it to file its Evidence in Answer even though a decision on its request was yet to be made. On 22 January 2019, the Applicant was advised by the delegate that she intended to refuse its extension of time request because she was not satisfied the reasons given justified the extension sought. The Applicant was given 14 days to file any further submissions. No further material was filed by the Applicant. On 15 March 2019, the extension of time request was refused.

6.     On 18 March 2019, the parties were advised that the evidence stages had ended and a request could be made for a hearing. As no request was made, the parties were further advised that a decision would be made on the filed material. They were advised that written submissions should be filed within three months from the date of the correspondence. On 28 June 2019, the Opponent filed written submissions.

7.     The matter has been allocated to me as a delegate of the Registrar and I have proceeded to decide it on the filed material.

Evidence in Support

8.     The Otter declaration describes the Opponent as ‘a leading worldwide online platform for the real estate and rental marketplace’ which hosts a database of ‘more than 110 million US homes and provides a platform for users to engage in the full cycle of owning, living in and improving a home’. It was also claimed that ‘[s]ince its launch in 2006, Zillow’s online presence, hosted at has grown exponentially amongst worldwide consumers of housing markets, home valuation, and real estate.’ In 2013 Australian investors purchased a significant share in the business and various Australian articles referring to the purchase were annexed. Ms Otter also attached a chart of Australian visits to the Opponent’s website and claimed that there had been over 28,000 installations of its app by Australian users. She stated that the Opponent’s trade marks ‘are widely recognized world wide as the identifier of Zillow and its high quality goods and services’

9.     She further notes that Zillow is the registered owner of Australian trade marks ZILLOW, registration 1486412 and ZILLOW.COM registration no. 115154, in respect of goods and services in Classes 9, 35, 36, 37, 39, 42  and refers to them as ‘the Zillow marks’[1]. She claimed they had been used either alone or in connection with the Opponent’s stylised ‘Z’ design element[2], ‘in connection with the real estate, mortgage, financial valuation services, and related services through the development and use of computer application software’.

[1] Otter declaration, paragraph 12.

[2] Australian registered trade mark 1832056.

10.     In relation to interior design, the Otter declaration refers to the Opponent’s investment in a start-up interior design company, ‘Hutch’, that ‘provides an application allowing users to take control of their own interior design by using photographs of the user’s vacant space and virtual technology’. The application was said to be available for purchase on Apple iOS and Google Play systems and have more than 40,000 users. She notes that the online nature of goods and services means they are ‘interactive and advisory rather than the sale of physical products on the ground.’

Grounds of Opposition and Onus

11.     The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) FCR 388, 420 [133] (Besanko, Jagot and Edelman JJ) affirming the approach in Pfizer Products Inc. v Karam (2006) FCR 585, 587-94 [6]-[26] (Gyles J).

12. As noted above, the Opposition grounds particularised in the SGP are those under ss 42(b), 58, 60 and 62A of the Act.

13.     The time at which a ground of opposition must be established is 15 September 2017 (‘the relevant date’) being both the filing date and the priority date of the Trade Mark.[4] 

Consideration and reasons

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

Section 58

14. Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

15. Having regard to s 58, the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) identified the relevant principles.[5] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are ‘the same kind of thing’ as the trade mark and that another person/entity has the earlier claim to ownership based on its use of the mark/s before the filing of an applicant’s mark or any use of it by the applicant as a trade mark.

[5] (2017) 251 FCR 379, 390-1 [50] (Greenwood, Jagot and Beach JJ).

16. The s 58 ground was particularised in the SGP as follows:

The trade mark ZILLOW was first used in Australia by the Opponent prior to the date of application of the Opposed application and prior to the date of any first use of the Opposed application in Australia.

17.     The Opponent submitted that by virtue of its prior use of the ZILLOW trade mark it is the owner of the Trade Mark. It noted its launch of its online platform in 2006 under the ZILLOW Trade Marks and that it has consistently used them since this time for a wide range of real estate and home improvement services.

18.     The Opponent further contended that because the dominant cognitive cue of the Zillow marks is the word ‘ZILLOW’, and the dominant cognitive cue of the Trade Mark is the word ‘ZILLO,’ the trade marks are substantially identical.

Substantially identical

19.     Windeyer J outlined the relevant test for substantial identity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd where he 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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103, at p 106.[6]

[6] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 [13]; (1963) 109 CLR 407, 415.

20.     It is unclear on which of the Opponent’s trade marks it relies in this regard, referring interchangeably to the Zillow trade mark and the ZILLOW trade marks. As the submissions refer in this regard to the Otter declaration, I have assumed that the Opponent relies on ‘the Zillow marks’ as described therein (see paragraph 9 above) and which I shall refer to as ‘the Opponent’s marks’.

21.     The Opponent’s marks and the Trade Mark are set out side by side below:

Trade Mark	Opponent’s marks
ZILLO + HUTCH	ZILLOW.COM
ZILLOW

22.     While the Trade Mark and the Opponent’s marks each commence with the letters ‘ZILLO’, the absence of the ‘W’ and the addition of the distinctive ‘+ HUTCH’ in the Trade Mark renders them dissimilar in all other respects. On this basis I am not satisfied that on a side by side comparison, a total impression of resemblance emerges between the Trade Mark and the Opponent’s marks such that they might be regarded as being substantially identical.

23. It follows that the s 58 ground is not established.

Section 60

24. Section 60 provides as follows:

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

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

(a)  another trade mark had, before the priority date for the registration of the first -mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)  because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note:          For priority date see section 12.

25. Therefore, to establish the s.60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.

26. The s60 ground was particularised in the SGP as follows:

The trade mark ZILLOW has been used before the priority date of the application and has acquired a reputation in respect of a wide range of goods and services including: [lists its goods and services in class 9, 35, 36, 37, 39 and 42].

Reputation

27.     As noted by the Opponent, the comments of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[7]

[7] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].

28.     In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[8]

[8] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].

29.     The Opponent submitted that the Opponent’s marks have significant global recognition, including in Australia, as evidenced by their appearance in many media articles and through ‘extensive advertising and promotion throughout the world including in Australia’. It was further contended that ‘[t]he ZILLOW brand is extremely well known by the Australian public with a steady increase amongst the Australian internet users since 2013 and a total of approximately 11.2 million Australians visiting the Opponent’s online platform by 2018.’

30.     The Opponent’s evidence demonstrates significant Australian and international media commentary confirming the high profile of the ‘ZILLOW’ online real estate platform both internationally and in Australia. It also demonstrates significant use/views by Australian consumers of the Opponent’s website Overall, I am satisfied the evidence demonstrates that at the relevant date the Opponent’s marks had a reputation among a significant number of Australian consumers concerned with real estate in the United States (‘US’).

Likelihood of deception or confusion

31.     The Opponent is also required to establish that, because of its reputation in the Opponent’s marks, notional use of the Trade Mark on the Goods and Services would be likely to deceive or cause confusion among relevant Australian consumers.

32.     The Opponent submitted that because of its ‘very substantial reputation, and the similarity of the Opposed Mark, coupled with the closeness of the Claimed goods and Services’ that there is a ‘very substantial risk that persons encountering goods under the Opposed Trade Marks [sic] would be “caused to wonder” whether they came from or were in some manner associated with or endorsed by the Opponent.’ In particular it contended that the likelihood of deception or confusion was heightened by the Opponent’s offering of home improvement services including interior design and aesthetic recommendations for homes, the similarity of the Opponent’s marks and the Trade Mark, and the similarity of the distinctive and memorable words ZILLOW and ZILLO.

33.     The meaning of the words “likely to deceive or cause confusion” were discussed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd, referring to Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 where Richardson J, in the New Zealand Court of Appeal, said:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[9]

[9] (1999) 96 FCR 107, 122 [39].

34.     The assessment of the likelihood of deception or confusion is informed by “the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties”[10].

[10] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, 40 and Qantas Airways Limited v Edwards [2016] FCA 729, 142.

35.     As noted above, I am satisfied that the ZILLOW mark has a significant reputation in Australia in relation to its online US real estate services however I do not consider that the evidence supports a conclusion that this reputation extends to the Goods and Services in such a way as would be likely to lead to deception or confusion. This is because the annexures relied on by the Opponent in this regard generally do not show use under or by reference to the Opponent’s marks.[11] Furthermore, in relation to the interior design app ‘Hutch’, annexure 2 indicates the Opponent’s investment in it occurred only a few months prior to the relevant date. Overall, I am not satisfied that at the relevant date the Opponent’s marks had any reputation in respect of the Goods and Services such as to give rise to a likelihood of confusion with use of the Trade Mark.

[11] For example, the articles in annexure 5 which relate to home improvement ideas (usually relating to sale of a property, i.e. ‘Home Seller’s Guide’) are badged with the Opponent’s stylised mark 1832056, on occasion alongside the phrase ‘Zillow Porchlight’ or ‘Zillow Digs’. Annexure 2 includes articles describing the Opponent’s investment in ‘Hutch’, but they do not demonstrate use of the Zillow mark.

36.     While there is clearly a degree of similarity between the marks insofar as both share the distinctive word ‘Zillo’/’Zillow’, the Trade Mark has the additional distinctive elements, ‘+ Hutch’ which, when considered cumulatively with the tenuous connection between the respective goods and services and the limited reputation of the Opponent’s marks in this regard, suggest that deception or confusion is unlikely.

37.     Also pertinent is French J’s discussion of the likelihood of deception or confusion in Registrar of Trade Marks v Woolworths Ltd[12] (‘Woolworths’):

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[13]

[12] [1999] FCA 1020, 50.

[13] Ibid.

38.     With regard to the surrounding circumstances, the use of the Opponent’s marks in Australia is entirely online while the Applicant’s Goods and Services indicate no such limitation. The circumstances in which the Goods and Services will notionally be bought and sold also differ insofar as Australian consumers’ engagement with the Opponent’s marks is limited to perusing its online US real estate platform whereas the Applicant’s customers will presumably be seeking the provision in Australia of furniture and/or interior design services. The probable acquirers of the Goods and Services will presumably be persons with a direct interest in purchasing furniture or interior design services whereas the acquirers of the Opponent’s marks’ services are those specifically interested in US real estate. As noted above in the Otter declaration, the Opponent’s goods and services are ‘interactive and advisory rather than the sale of physical products on the ground.’

39.     Consequently, for all the above reasons, I consider there is little, if any, likelihood that, because of the reputation acquired by the Opponent’s mark, use of the Trade Mark would be likely to deceive or cause confusion among relevant Australian consumers.

40. Therefore, the s 60 ground has not been established.

Section 42

41. Section 42 of the Act provides:

Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)  the trade mark contains or consists of scandalous matter; or

(b)  its use would be contrary to law.

42.     The Opponent’s SGP states the following in this regard:

The use of the trade mark ZILLO + HUTCH would be passing off and would breach ss. 18 and 29 of the Australian Consumer Law and is therefore contrary to law.

43. In relation to s 42(b) the Opponent asserted in submissions that in view of the reputation of the Opponent’s marks any use of the Trade Mark would be contrary to law in the sense that it would constitute misleading and deceptive conduct and/or involve a misrepresentation because it would be likely to cause consumers to believe the Goods and Services were being offered by the Opponent or otherwise associated or endorsed by it. In addition, such conduct was said to cause damage to the goodwill of the Opponent’s marks and thereby constitute passing off.

44.     The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.[14]

[14] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411].

45. Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)) concerns whether relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods and Services or that they had some connection with the Opponent. The Court noted in Puxu that “conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s 52.”[15]

[15] Custom Built Furniture Pty Ltd vPuxu Pty Ltd (1982) 149 CLR 191 [198].

46. I note my findings above that use of the Trade Mark would not cause a person to be confused or deceived as to the source of the goods or services. It follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL.

47. In relation to s 29, I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have. It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having falsely represented its goods or services under s 29 of the ACL.

48.     Regarding the claims of passing off, as addressed by Hill J in in Re Equity Access Pty Ltd v Westpac Banking Corporation concerning the relationship between passing off and (then) s 52 and s 53 of the TPA, ‘[t]he scope for the operation of s 52 will thus be broader than that involved in the tort of passing off … failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail’.[16]

[16] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.

49. That is, where use of a trade mark does not contravene s 18 or s 29 of the ACL, neither will it amount topassing off. Therefore, the Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constituted passing off.

50. For these reasons, the s 42(b) ground has not been established.

Section 62A

51. Section 62A of the Act provides:

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.

52.     The Opponent particularised this ground as follows:

The trade mark ZILLOW is a well known trade mark owned by the Opponent and as a consequence the application has clearly been filed in bad faith to gain the benefit of the Opponent’s reputation.

53. Section 62A was considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’) where Dodds-Streeton J relevantly said:

It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application… Further, the onus of proving bad faith rests on the Opponents. While the seriousness of an allegation of bad faith that ‘impugns the character of an individual or collective character of a business...’ requires correspondingly cogent evidence … the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[17]

[17] [2012] FCA 81, [145].

54.     And after examining the various UK and Australian authorities Dodds-Streeton J concluded:

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….

The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[18]

[18] [2012] FCA 81 [165]–[167].

55.     The Opponent submitted, relying on the comments in DC Comics v Cheqout Pty Ltd[19] and Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3)[20], that in selling competing products under a similar name the Applicant was fully aware of the Opponent’s marks and was intending to trade off their reputation.

[19] [2013] FCA 478, 62.

[20] [2017] FCA 60, 194.

56.     As previously noted, the Applicant has provided no evidence or submissions so there is nothing before me which indicates how it came to devise the Trade Mark. While on the face of it, the coincidence in the Applicant’s adoption of the same-sounding distinctive element ‘Zillo’,  along with ‘Hutch’, suggests the Applicant may have been aware of the Opponent, it falls far short of demonstrating that the Applicant’s adoption of the Trade Mark was ‘unscrupulous, underhand or unconscientious character’.[21]

[21] Fry Consulting [165]–[166].

57.     In the circumstances I am not satisfied that, given the seriousness of the allegation, there is sufficient objective cogent evidence to find that the Applicant’s conduct in applying to register the Trade Mark might be said to constitute a ‘falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[22]

[22] Fry Consulting [165]–[166].

58. It follows that the s 62A ground of opposition has not been established

Decision

59. Section 55 of the Act relevantly provides:

Decision

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

60.     The Opponent has failed to establish any of the grounds of opposition it nominated. This Application may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

61. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has not established a ground of opposition, I award costs against the Opponent under section 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Delegate of the Registrar of Trade Mark
13 July 2020