Roshtech Pty Ltd v Kyl Newton

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Roshtech Pty Ltd to registration of the trade mark the subject of application number 2124112 (classes 9, 16, 35, 37, 41 & 42) - VIPC - in the name of Kyl Newton

Delegate:

Tracey Berger

Representation:

Opponent: Trevor Dredge of Intellepro Patent & Trade Mark Attorneys

Applicant: No appearance

Decision:

2024 ATMO 96

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 62(b) and 62A considered – s 44 successful for some goods and services – no other grounds established – application amended - trade mark may proceed to registration for amended services

Background

This is a decision on the opposition by Roshtech Pty Ltd (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark the subject of application 2124112 (‘Application’) for VIPC (‘Trade Mark’) filed on 13 October 2020 for a range of retail services and computer related goods and services in classes 9, 16, 35, 37, 41 and 42 as detailed in Annexure A (‘Goods and Services’).
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Application was accepted for registration with an endorsement that the ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied’. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose on 23 December 2021 followed by its Statement of Grounds and Particulars (‘SGP’) on 20 January 2022. The Applicant filed its Notice of Intention to Defend the opposition on 24 March 2022.
The parties then filed evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 30 June 2022 followed by the Applicant’s evidence in answer on 4 October 2022. The Opponent filed its evidence in reply on 17 March 2023.
Once the evidence stage ended, the Opponent requested an oral hearing. The Applicant did not ask to be heard. The Opponent filed a written summary of its submissions on 22 March 2024 and then filed additional documents on 4 April 2023. Some of the documents filed on 4 April 2023 had been filed as evidence and the remaining documents were correspondence between Mr Dredge and this office regarding Mr Dredge’s request under the Freedom of Information Act 1982 (Cth) (‘FOI’) for a copy of the Applicant’s evidence of use filed to secure acceptance of the Application under s 44(4) (‘Prior Use Evidence’).
I heard this matter as a delegate of the Registrar of Trade Marks on 5 April 2024. At the hearing, Mr Trevor Dredge of Intellepro Patent & Trade Mark Attorneys made oral submissions on behalf of the Opponent. Most of the submissions were directed to Mr Dredge’s complaint that the Opponent only received a redacted copy of the Prior Use Evidence in response to its FOI request. The Opponent claimed because the Prior Use Evidence was redacted, it could not ascertain whether the Application was accepted under the provisions of s 44(4) based on evidence or representations that were false in material particulars. This matter is discussed further below under the heading Preliminary Matter. As I have no power to provide an unredacted copy of the Prior Use Evidence, Mr Dredge and I were at an impasse. Accordingly, I offered to adjourn the hearing until 12 April 2024 to give Mr Dredge an opportunity to focus his submissions on the other grounds of opposition claimed in the SGP.
On 9 April 2024, Mr Dredge wrote to this office advising that the Opponent did not require a further hearing to make additional oral submissions but instead was filing supplementary written submissions. I make this decision based on the documents outlined above and the Opponent’s written and oral submissions.
Grounds, onus and Relevant Date
In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58, 60, 62(b) and 62A. At the oral hearing, the Opponent advised that it did not press the grounds of opposition under ss 42(b) and 60, and I treat those grounds as abandoned.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 13 October 2020 (‘Relevant Date’) being the filing date of the Application and priority date for the purposes of ss 44 and 60.
Evidence
The following evidence was filed:

Declarant and Position

Date

Annexures or Exhibits

Evidence in support

Declaration of Trevor James Dredge, trade mark attorney of Intellepro Patent & Trade Mark Attorneys (‘Dredge 1’)

29 June 2022

TJD1 to TJD12

Declaration of Michael Keogh, one of the owners of the Opponent (‘Keogh’)

29 June 2022

N/A

Evidence in answer

Declaration of Kyl Newton, Applicant (‘Newton’)

4 October 2022

KN-2

Evidence in Reply

Declaration of Trevor James Dredge (‘Dredge 2’)

17 March 2023

TJD13 to TJD49

Opponent’s evidence

Dredge 1 attests to the filing of trade mark 2097448 VIPC in the name of the Opponent on 19 June 2020 in classes 35, 37 and 42 for a broad range of services principally relating to computers and computer products (‘Opponent’s Registration’).[4] Before proceeding to registration, the Opponent’s Registration was opposed by the Applicant and until that time Mr Dredge was unaware of the Applicant.[5] I note the s 58 ground of opposition raised in that opposition—Applicant not the owner of the trade mark—was partially successful, resulting in an amendment prior to registration of the Opponent’s applied for services in Classes 37 and 42.
[4] Details of the Opponent’s Registration are set out in Annexure B of this decision.
[5] The database records of IP Australia indicate that a Notice of Intention to oppose application 2097448 was filed by the Applicant in January 2021. A decision issued on that opposition in December 2023 (2023 ATMO 220).
The Opponent has used the mark VIPC since June 2020 when it announced the launch of its VIPC service via email to almost 1000 customers and a further 5000 recipients in July 2020.[6] The Opponent adopted the mark VIPC as an acronym for ‘Voice.Internet.Print.Cloud’. It seems that the Opponent uses the VIPC mark in relation to a business to business technology service whereby the Opponent manages the provision of its customers’ IT services (including voice, internet, print and cloud services).
[6] Dredge 1 Exhibit TJD1.
The remainder of Dredge 1 comprises copies of correspondence from Mr Dredge to the Applicant in an effort to negotiate an amicable resolution of this matter, a copy of the publicly available documents on the official file for the Application, the redacted Prior Use Evidence and correspondence relating to the FOI request for that evidence, extracts from the Opponent’s website, historical extracts from the Applicant’s website at (‘Applicant’s Website’) and Facebook business account seeking to demonstrate that the Applicant only uses the Trade Mark for retail services and not all the Goods and Services.
Keogh attests to the adoption of the mark VIPC by the Opponent, declares that he had not heard of the Applicant until the Applicant opposed the Opponent’s Registration and attests that the two businesses operate in different market segments with different classes of customers.
Dredge 2 annexes extracts from the Applicant’s Website at the Relevant Date, the Applicant’s Facebook account for VIPC, the Applicant’s LinkedIn profile, details various other online enquiries designed to demonstrate the field of use of the Trade Mark as compared to the Opponent and extracts from the Applicant’s new website at Dredge 2 also annexes a number of extracts from the Opponent’s website after the Relevant Date.
Applicant’s evidence
The Applicant is a sole trader and in June 2017, he registered the Trade Mark as a business name, applied for an Australian Business Number and registered for GST. He also registered a number of domain names between June 2017 and August 2020, all of which redirect to the Applicant’s Website. An extract from the Applicant’s Website dated 3 February 2018 is provided.
Newton claims that since June 2017 he has continuously operated the Applicant’s Website and used the Trade Mark for the following goods and services offered by his business:
·     sale of computers, computer parts, computer accessories and peripherals;
·     assisting customers to design and build their own computers;
·     publication of instruction guides, manuals and documentation for the goods sold by the Applicant;
·     assisting customers with troubleshooting, repairs of and advising on computer issues, software, (including installation), hardware and firmware;
·     computer maintenance services; and
·     providing general customer support.
Newton plans to expand his business beyond the services outlined at [17] to include installation, maintenance and upgrading of computers and computer hardware; diagnosing and repairing computers; computer support services; training; software installation; internet security; networking solutions; backup solutions and IT consultancy services. To this end, Mr Newton declares that he acquired a vehicle in June 2022 to enable him to offer the services outlined at [17] and is updating his website with these additional services in early 2023. Screenshots of the new website are annexed.
Various supporting documents are annexed to Newton including copies of screenshots of his eBay store at (‘eBay Store’) where he also sells computer products, social media accounts, product installation guides, Google business page and customer support emails.
Newton attests that he promotes his business on ‘organic search and advertising platforms’ including Google, Facebook, Instagram and Reddit as well as being listed as a distributor on third party websites as a computer part distributor. Examples are annexed to Newton and includes statistics for Newton’s business on Shopify, Google advertising and Facebook advertising as well as a list of all Newton’s sales channels being the Applicant’s Website and eBayStore as well as units sold for financial years 2017-18 to 2020/21.
Preliminary matter
Much of the Opponent’s evidence and submissions focused on its inability to obtain an unredacted copy of the Prior Use Evidence by FOI request or otherwise. The Opponent argues that in adversarial proceedings an applicant should be required to waive its rights to the confidentiality of any evidence filed during prosecution of its application in order for an opponent to be afforded natural justice and to be able to test the veracity of the information filed particularly where an application is accepted on the basis of honest concurrent use or prior continuous use. The Opponent also contends that the FOI process is incompatible in terms of timing with opposition deadlines. The Opponent argues that s 226A gives the Registrar the ability to make prosecution evidence available outside of the FOI process.
To be frank, the Opponent’s focus on this issue is misplaced and it is not for me to determine the efficacy of the FOI but given the emphasis placed on the matter by the Opponent, I have commented on the issue below.
Section 226A provides:
226A Requirements for confidential treatment of information held in the Trade Marks Office
(1) In accordance with the regulations, the Registrar may:
(a) require that specified information in a document that has been filed, or is to be filed, in relation to a trade mark be held in the Trade Marks Office confidentially; and
(b) make such a requirement subject to specified conditions and/or limitations; and
(c) vary or revoke such a requirement, condition or limitation.
(2) The regulations may provide for procedures to be followed in connection with the making, variation or revocation of a requirement under this section or of conditions or limitations on such a requirement.
(3) If a requirement is made in writing under this section, the requirement is not a legislative instrument.
In my view, nothing in this provision allows the disclosure of confidential information to a third party and I disagree with the Opponent that s 226A gives the Registrar the same power to order inspection or production of documents as s 56 Patents Act 1990 (Cth). In my view, s 226 is intended to cover unusual situations such as where confidential evidence cannot be provided electronically and the Registrar gives limited access to that information by say, for example, allowing physical attendance at the office to view it, make notes on it but not copy it.
The following provisions of the Act and Regulations specifically provide that evidence of use of a trade mark is not available for public inspection:
· Section 217A Trade Marks Act 1995 provides that prescribed documents relating to trade marks are to be available for public inspection.
· Regulation 21.11A provides that each document held by the Registrar that relates to a trade mark is prescribed other than a document mentioned in subregulation (2).
· Regulation 21.11A(2)(d) provides that a document that solely contains evidence of the use or proposed use of a trade mark is not prescribed.
It is clear from Regulation 21.11A(2)(d) that evidence of use of a trade mark filed during prosecution of an application is not available for public inspection and therefore, a third party can only access such information via an FOI request. There are good reasons for this position. In particular, during prosecution, an applicant may file confidential information in order to secure acceptance of its application which information it is not willing to disclose to a competitor or third party either at all or in the particular form filed.[7]
[7] See explanatory memorandum for Intellectual Property Laws Amendment Bill 2006, [112]-[113].
Nevertheless, an opponent is afforded natural justice where an application is accepted under the provisions of ss 44(3) or 44 because s 44 is available as a ground of opposition. Assuming an opponent establishes a prima facie case under s 44 in terms of the existence of a prior conflicting mark, the applicant must then establish on the balance of probabilities, that it is entitled to registration of the trade mark under ss 44(3) or (4) by filing evidence in answer to the opposition—the applicant is not able to rely on the evidence it filed during examination. That evidence in answer may involve simply refiling its evidence lodged during examination or filing new evidence. This gives an opponent the ability to test the veracity of the applicant’s claims to use of a trade mark but also affords an applicant with the opportunity to present its evidence in a form that it is comfortable disclosing to an opponent. In opposition proceedings, given the adversarial nature of the proceedings, an applicant’s evidence of honest concurrent use or prior continuous use is thereby subject to greater scrutiny than at the examination stage.
The Opponent seems to be under the mistaken impression that s 62(b) should be an available ground in every case where an opposed application has been accepted under s 44(3) or s 44. As pointed out above, the appropriate ground for challenging an applicant’s entitlement to registration under ss 44(3) or (4) is by way of an opposition under s 44. In some cases, where an applicant files different information as evidence in answer, rather than refiling its evidence lodged during examination, it becomes apparent that the application was accepted on representations in the examination evidence that were false in material particulars and a ground of opposition under s 62(b) becomes applicable.[8] This is exactly what happened in the case relied on by the Opponent, Chris-Telle Pty Ltd v Australian Swimming Inc[9] where application 819557 was accepted for registration under s 44(3)(a) based on evidence of honest concurrent use. The opponent obtained a redacted copy of that prosecution evidence which it filed in the opposition. The applicant’s evidence in answer directly contradicted the evidence filed to secure acceptance of the application and made it apparent that the applicant had not in fact sold goods under the relevant trade mark. Accordingly, the Opponent succeeded under both the ss 44 and 62(b) grounds of opposition.
[8] If s 62(a) was not a nominated ground in the statement of grounds and particulars, an amendment to the statement of grounds and particulars to add the ground might be available.
[9] [2004] ATMO 60 ( Hearing Office R Dunn).
Finally, it is not the case that any inconsistency or imprecise statement in prosecution evidence will be sufficient to establish a ground of opposition under s 62(b).[10] At the hearing, Mr Dredge appeared to be of the view that if the unredacted Prior Use Evidence was furnished to him and demonstrated use for only some of the Goods and Services that the Opponent’s opposition could succeed under s 62(b) in its entirety. This view is incorrect. It is only where evidence filed during examination contains representations which are false in material particulars and the application was accepted on the basis of those representations that s 62(b) is enlivened. This is a wholly different issue as to whether an application was correctly accepted under the provisions of ss 44(3) or (4) based on evidence which is potentially deficient but does not contain evidence or representations which were false in material particulars—the deficiency issue is properly dealt with under a s 44 ground of opposition.
[10] Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2002] ATMO 93 (Hearing Officer G. Purvis-Smith).
I turn now to a consideration of the grounds of opposition pressed.
Discussion
Section 44
Section 44 provides:
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) the applicant’s trade mark 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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(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.
(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.

In support of this ground of opposition, the Opponent relies on the Opponent’s Registration which has an earlier priority date than the Application and is in the name of someone other than the Applicant. Further, the trade mark which is the subject of the Opponent’s Registration is identical to the Trade Mark and therefore, the remaining question is whether the Applicant’s Goods and Services are similar, or closely related, to the Opponent’s Services.
Pursuant to s 14(1), ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[11]
[11] Jellinek’s Application (1946) 63 RPC 59 (Romer J); Beck, Koller & Company’s Application (1947) 64 RPC 76.
Section 14(2) provides that services are similar to other services if they are the same or of the same description. Determining whether services are of the same description involves a consideration of a number of factors including:
(1)           The inherent character of each of the services for which the trade mark is registered…

(2)         To whom are the services offered?
(3)         How are they provided?
(4)         How are they used?
(5)         What is their purpose?
(6)         Are they bundled together with other services?
(7)Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8)         Where do they originate?
(9)What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10)How closely contestable are the services in substance: are they in the same market or trade?
(11)How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]‑[73].[12]
[12] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205, [2017] FCAFC 56, [339] (Greenwood, Besanko and Katzmann JJ).
Whilst the Act does not define closely related goods and services, Justice French noted in Registrar of Trade Marks v Woolworths:
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. 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” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[13]
[13] Registrar of Trade Marks v Woolworths Ltd (1999) FCR 365; [1999] FCA 1020, [37].
The Applicant’s class 9 goods are computers, computer hardware and computer hardware publications. Computers and computer hardware are closely related goods to the Opponent’s computer installation, maintenance and repair services in Class 37. Producers of computer hardware provide various related services including installation and maintenance. Consumers expect computer hardware and many of the Opponent’s computer related services to emanate from the same source. The Applicant’s computers and computer hardware are closely related goods to the Class 37 services of the Opponent’s Registration.
Similarly, ‘computer hardware publications in electronic form; computer documentation in electronic form’ in Class 9 and Class 16 publications relating to computers are closely related goods to the Opponent’s Services. Computers and computer hardware are typically sold with publications about computers and hardware, or access is provided to an electronic version of such publications. As noted above, producers of computer hardware and the accompanying electronic publications on computer hardware, also provide installation and maintenance services. These publications are provided by the same traders as the Opponent’s Class 37 Services, to the same class of consumers and hence are closely related goods to the Opponent’s Services.
Turning to the Applicant’s class 35 services, I note that the services “advertising; online advertising on a computer network’ overlap directly with the advertising services in the Opponent’s Registration. Further, sales promotion services fall within the broader term ‘advertising’. The Opponent does not argue that any of the other class 35 services of the Application are similar and for completeness, I note that I do not regard the Applicant’s retail services to be similar or closely related to any of the services of the Opponent’s Registration.
The Applicant’s class 37 services all relate to the installation, repair and maintenance of computer hardware and computer peripherals. These services are the same or similar to the class 37 and class 42 services of the Opponent’s Registration.
The Opponent contends that the Applicant’s class 41 services ‘instruction in the use of computers; computer training; computer training advisory services’ are similar to the Opponent’s class 42 services ‘advisory services relating to computer software; computer support services (software advisory and information services); providing information relating to computer technology and programming via a web site’. I consider these services to be different in that computer training services or instruction in the use of computers is an educational service intended to inform a consumer on how to use or maximise the use of a computer. On the other hand, the Opponent’s advisory services are technical services provided to customers about how to fix a particular technical issue. Other than the allegation that these sets of services are similar, the Opponent has not directed me to any evidence in support of this contention. The only possible evidence that I could identify is an article in Dredge 2 entitled ’13 Types of IT Services: What They Help‘ from the website of Indeed (a job board platform similar to Seek)[14] which Dredge 2 states demonstrates the Opponent’s field of use. Examples of IT services in this article include cloud services, hardware installations and maintenance, software development, troubleshooting and technical support and ‘technology training.’ However, the article goes on to explain the benefits of having an IT team train internal staff. I do not consider that the article provides any evidence that the same businesses provide computer training and computer advisory services to their customers. Whilst I acknowledge that some large IT companies like Apple may offer both sets of services, my view is that this is the exception rather than the norm. My understanding is that computer training services are generally provided by universities, colleges or specialist education and training providers rather than IT services companies. In the absence of any evidence to the contrary, I do not regard the Applicant’s class 41 services to be closely related to any of the Opponent’s Services.
[14] Exhibit TJD40.
There is significant overlap in the Applicant’s class 42 services and the Opponent’s class 42 services. I am of the opinion that these services of the Applicant are the same or similar to those of the Opponent.
The Opponent has prima facie established a s 44 ground of opposition with respect to the following:
·    Class 9: Computer design hardware; Computers; Computer systems; Computer hardware; Home computers; Personal home computers; Personal computers; Personal computers incorporating computer software; Computer hardware publications in electronic form; Computer documentation in electronic form
·    Class 16: Books relating to computers; Catalogues relating to computer software; Computer brochures; Computer documentation in printed form; Computer handbooks; Computer hardware publications (printed matter); Computer hardware reference manuals; Computer hardware users guide; Computer instruction manuals; Computer manuals; Computer operating documentation; Computer operation documents; Computer reference manuals; Handbooks relating to computers; Handbooks relating to computers (sold with the computers); Instruction books sold with computers; Instruction guides sold with computers; Instruction manuals (handbooks) sold with computers; Instruction manuals relating to computer hardware; Instruction manuals relating to computers; Instruction manuals sold with computers; Manuals for use with computers; Manuals relating to computers; Printed manuals relating to computers; Printed matter relating to computers; Printed publications relating to computers
·    Class 35: Discount services (sales promotion services); Sales promotion services; Advertising; online advertising on a computer network;
·    Class 37: Computer support services (installation, repair and maintenance of computer hardware and peripherals); Installation and repair of computer hardware; Installation of middleware (computer hardware); Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of middleware (computer hardware); Maintenance and repair of computer hardware; Maintenance services relating to computer hardware; Information technology (IT) services (computer and computer peripherals installation and maintenance); Installation, maintenance and repair of computer peripherals; Provision of information in relation to the repair, maintenance and installation of goods; Maintenance and repair of computers; Repair of computers
·    Class 42:Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Advisory services relating to computer hardware; Consultancy in the design and development of computer hardware; Design and development of computer hardware for others; Design of computer hardware; Providing information, including online, about design and development of computer hardware and software; Rental of computer hardware; Advisory services relating to computer software; Computer software advisory services; Computer software consultancy; Installation and maintenance of computer software; Installation of computer software; Maintenance of computer software; Repair of computer software; Updating of computer software; Upgrading of computer software; Computer design; Advisory services relating to computer systems design; Computer program advisory services; Installation of firmware; Installation, repair and maintenance of firmware; Installation of middleware (software); Installation, repair and maintenance of middleware (software); Advisory services relating to computer systems analysis; Computer system analysis; Computer system design; Development of computer systems; Computer rental; Maintenance of computer programs
(‘Conflicting Goods and Services’)
Accordingly, I turn to a consideration of the EIA to determine whether the Applicant has established prior continuous use of the Trade Mark for any of the Conflicting Goods and Services under s 44(4), honest concurrent use under s 44(3) or other circumstances. Firstly, I note that the Applicant has not argued that there are any ‘other circumstances’ justifying acceptance of the Application under s 44(3)(b).
The Application was accepted for registration under the provisions of s 44(4). Pursuant to s 44(4), I may not reject the Trade Mark if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the Conflicting Goods and Services before the priority date of the Opponent’s Registration.
Newton includes two extracts of the Applicant’s Website from 3 February 2018 and 29 January 2019. Both the website extracts indicate that the Applicant was using the Trade Mark for an online store selling PrimoChill and XSPC computer related products. PrimoChill, XSPC and Raystorm branded products also feature in posts from 2018 on the Applicant’s Instagram account at vipc.shop and Facebook account. Similarly, the reviews of the Applicant’s eBay Store all relate to the Applicant’s services in selling PrimoChill and XSPC products. It appears that the goods featured on the Applicant’s Website, eBay Store and social media accounts are third party products. This is supported by the Applicant being listed under the Trade Mark as a reseller of PrimoChill and XSPC products on other websites. None of the products featured bear the Trade Mark and there is no evidence that the Applicant has used the Trade Mark in relation to the Conflicting Goods in Class 9.
In relation to the publications in Classes 9 and 16, there is no evidence before the date of the Opponent’s Registration that the Applicant has provided such goods.
The Applicant has not provided any evidence that it offered advertising services under the Trade Mark before the Relevant Date. The promotion of the Opponent’s shop on social media accounts is not the provision of advertising services to third parties.
In relation to the Applicant’s claim that it provides computer support services, Newton annexes emails and chat messages from customers on the Applicant’s Website or through its social media accounts. Some of these are dated after the Relevant Date. In any event, the queries received relate to the availability or suitability of certain products and shipping times. In my view, none of this correspondence demonstrates the provision of the Conflicting Services claimed in classes 37 and 42.
I am not satisfied that the Applicant’s EIA demonstrates prior continuous use of the Trade Mark nor that there has been honest concurrent use of the Trade Mark for the Conflicting Goods and Services.
The Opponent is successful under s 44 in its opposition to the Conflicting Goods and Services. The s 44 ground of opposition fails in relation to the goods and services set out below (‘Non-competing Services’) and I will now consider whether the Opponent has established a ground of opposition with respect to the Non-competing Goods and Services.
· Class 35: Online retail services; Retail services; Retailing of goods (by any means); Wholesaling of goods (by any means); Department store retailing; Discount services (retail, wholesale services)
· Class 41: Instruction in the use of computers; Computer training; Computer training advisory services
(‘Non-competing Services’)
Section 58
Pursuant to s 58, registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In order to succeed on this ground of opposition, the Opponent must establish that:
·   the respective trade marks of the applicant and opponent are identical or substantially identical;[15]
·   the respective goods and services on which the trade marks have been or are to be used are the ‘same kind of thing’;[16] and
·   the Opponent has the earlier claim to ownership based on authorship and use of its trade mark prior to both the filing of the Application and any actual use of the Trade Mark by the Applicant[17].
[15] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J).
[16] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).
[17] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J)
In its SGP, the Opponent claims to have used the mark VIPC since June 2020 for services which are the same kind of thing as the Applicant’s services claimed in classes 35, 37, 41 and 42.
As already noted in this decision, the Opponent’s mark is identical to the Trade Mark. Accordingly, I must decide whether the Opponent has used the Trade Mark for services that are the same kind of thing as retail services and computer training services (being the Non-competing Services in classes 35 and 41).
In terms of evidence of the Opponent’s use of VIPC before the Relevant Date, the Opponent has provided a copy of the email sent to customers in June and July 2020 announcing its VIPC services being a business to business technology service whereby the Opponent manages the provision of its customers’ IT (particularly voice, internet, print and cloud) services. There is no other evidence of the Opponent’s use of the mark VIPC before the Relevant Date. The email sent by the Opponent announcing the launch of its VIPC service is not use of the Trade Mark for the same kind of thing as the Non-competing Services.
The s 58 ground of opposition is unsuccessful.
Section 59
Section 59 provides that a trade mark may be opposed on the ground that the applicant does not intend to use or authorise use of the mark in Australia or assign the trade mark to a body corporate for use by that body corporate in Australia, in relation to the goods or services claimed in the application.
The Opponent claims that the Applicant does not, and did not at the Relevant Date, intend to use the Trade Mark for all of the Goods and Services. According to the Opponent, the Applicant only intended to use the Trade Mark for its online store selling third party products and framed the Goods and Services with knowledge of the Opponent’s Registration.
It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[18] The presumption arising from filing may be challenged by evidence from the opponent that establishes a prima facie case to the contrary, thereby shifting the onus from the opponent to the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.
[18] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (Fullager J).
The intention must be “a resolve or settled purpose” and immediate use is not required.[19] In Ritz Hotel Ltd v Charles of Ritz Ltd and Another, McClelland J said:
[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[20]
[19] Re Ducker's Trade Mark (1928) 45 RPC 397, 402 (Lord Howarth MR).
[20] (1988) 15 NSWLR 158, 203.
Actual use after the date of the application will be relevant to the existence of the required intention.[21]
[21] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
In my opinion, the Opponent has not established its initial burden that the Applicant lacked the requisite intention to use the Trade Mark for the Non-competing Services. The Applicant has used the Trade Mark for the retail of third party products and has attested to the steps it has taken to expand its use of the mark. There is nothing in the Opponent’s evidence to demonstrate that the Applicant lacks the necessary intention to use the Trade Mark for the Non-competing Services.
The s 59 ground of opposition fails.
Section 62(b)
Section 62(b) provides:
Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
To succeed under this ground, the Opponent must demonstrate that the evidence or representations were false in material particulars and that there is a causal connection between those false representations and the decision to accept the application for registration.[22]
[22] Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company [2018] FCA 1014, [230] (Nicholas J).

The term ‘false’ in the context of s 62(b) does not mean that the representations were deliberately false[23] and the representations need not be intentionally misleading.[24]
[23] Ibid [231].
[24] Ibid [230].
In its SGP, the Opponent particularises this ground of opposition as set out below:
1. The Opposed Application carries the endorsement Provisions of subsection 44(4) and/or Reg 4.15A(5) applied. The ‘448 Application[25] was cited during examination. The Opposed application was accepted on evidence of prior use (the evidence). The Applicant, since 6 2017 has had a website as an “an online enthusiasts PC store” selling a very limited range of the branded goods of others to a specialised niche market. The Registrar has accepted the application for registration on the basis of the evidence or representations that were false in material particulars as there has been no prior use consistent with the application as accepted.
2. The Applicant in filing his application knew that he had only used the opposed mark on a website as an “an online enthusiasts PC store” selling a very limited range of the branded goods of others to a specialised niche market. The application as filed knowingly contained representations that were false in material particulars as to the actual use and intended use leading to acceptance. See also the particulars to Ground 3.
[25] The ‘448 Application is the Opponent’s Registration which was pending at the time the SGP was filed.
Despite the redactions to the Prior Use Evidence, it is apparent that the Applicant claimed:
·    registration of various domain names including of the Trade Mark as a business name;
·    use of the Trade Mark on the Applicant’s Website from at least 2018, being the date of an extract annexed to Newton;
·    the business model ‘requires activities such as computer hardware and software retail as well as advisory/consultancy, maintenance and support services as co requisite activities of the business. I note that it is apparent from the next sentence that the Applicant is referring to his online store as being the business requiring such ancillary services.
·    production of ‘VIPC branded materials have been required for customer order packaging’;
·    ‘Computer hardware suppliers are publically affiliated with my business with VIPC being listed on their list of Resellers on their consumer websites, directing customer traffic to my store;
·    provides sales and unit turnover figures confirming that the operation of the business has been continuous;
·    ‘Computer hardware and software advisory/consultancy and support has been recorded through historical…..communications’.
Although much of the detail and supporting documents of the above claims were redacted in the Prior Use Evidence that the Opponent obtained under FOI, a review of the EIA reveals that all of the above information was similarly claimed in the opposition and included in Newton.
I have already assessed that evidence under the s 44 ground of opposition. Whilst I did not find that the EIA demonstrates evidence of prior continuous use, nor do I find that the Applicant has made any false representations. Firstly, the Applicant was not represented by attorneys and presumably prepared the Prior Use Evidence without legal advice. Moreover, the Applicant provided documentation in support of each of the claims made in the Prior Use Evidence. Although the Examiner reached a different conclusion to me on that evidence and the Applicant’s entitlement to registration of the Trade Mark under s 44(4), this does not mean that the Applicant’s Prior Use Evidence or any representations made by the Applicant were false. It simply means that in this proceeding when each party’s evidence and position was subject to greater scrutiny, I have reached a different conclusion to the Examiner.
The Opponent has not established a ground of opposition under s 62(b).
Section 62A
Pursuant to s 62A, registration of a trade mark may be opposed on the grounds that the application was made in bad faith.
The term ‘bad faith’ is not defined in the Act but there have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)[26] and DC Comics v Cheqout Pty Ltd[27] (DC Comics). The following propositions emerge from each of these two decisions relevant to the present opposition:
[26] [2012] FCA 81 (‘Dodds-Streeton J) (Fry Consulting).
[27] [2013] FCA 478 (Bennett J) (DC Comics).
(a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of the application:[28]
(b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:[29]
(c) The onus of proving bad faith rests upon the opponent:[30]
(d)All of the circumstances surrounding the application to register the mark are relevant:[31]
(e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:[32]
(f)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[33]
(g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test[34]
(h)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.
[28] Fry Consulting (n 25), [145].
[29] DC Comics (n 26), [76].
[30] Fry Consulting (n 25), [145].
[31] DC Comics (n 26), [62].
[32] Ibid.
[33] Fry Consulting (n 9). [145].
[34] Ibid [147], [148] and [165].
In its SGP, the Opponent claims that the Applicant was, or should have been, aware of the Opponent’s mark VIPC and that the Application was filed in bad faith with knowledge of the Opponent’s use of the Trade Mark in ‘an effort to gain a commercial advantage over the Opponent’.
The Opponent has attested to two emails sent to its customers before the Relevant Date announcing the launch of a business to business IT management service. There is no other evidence about the extent of use of the Trade Mark by the Opponent before the Relevant Date. Based on two emails and the short time between the Opponent’s email announcement of its VIPC service and the filing of the Application, I do not think it is possible to conclude that the Applicant was aware of the Opponent’s use of the Trade Mark.
Moreover, the Applicant adopted the Trade Mark for its online store years before the Opponent and in filing the Application has chosen its own Goods and Services. Whilst there is some overlap in the specifications in classes 37 and 42, this is natural for businesses operating in the same or similar industry. There are sufficient differences, in my view, that that Applicant did not copy the Opponent’s Registration. Moreover, even if the Applicant knew of the Opponent’s adoption of the Trade Mark, there is no reasons for the Applicant to conclude that adoption was problematic for its own use or registration of the Trade Mark for the Non-Competing Services.
The s 62A ground of opposition is unsuccessful.
Decision
The Opponent has established a ground of opposition under s 44 with respect to the Conflicting Goods and Services.
In Apple Inc. v Registrar of Trade Marks Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[35]
[35] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
Accordingly, I wrote to the Applicant advising that I intended to refuse the Application unless the specifications were amended to:
· Class 35: Online retail services; Retail services; Retailing of goods (by any means); Wholesaling of goods (by any means); Department store retailing; Discount services (retail, wholesale services)
· Class 41: Instruction in the use of computers; Computer training; Computer training advisory services
That amendment has now been made and I direct that the Application (as amended) may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
The Opponent has requested costs. As both parties have had a degree of success, I decline to award costs.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
22 May 2024
ANNEXURE A – Opposed trade mark
Number:  2124112
Trade Mark:               VIPC
Filing Date:                 13 October 2020
Specification:            Class 9: Computer design hardware; Computers; Computer systems; Computer hardware; Home computers; Personal home computers; Personal computers; Personal computers incorporating computer software; Computer hardware publications in electronic form; Computer documentation in electronic form
Class 16: Books relating to computers; Catalogues relating to computer software; Computer brochures; Computer documentation in printed form; Computer handbooks; Computer hardware publications (printed matter); Computer hardware reference manuals; Computer hardware users guide; Computer instruction manuals; Computer manuals; Computer operating documentation; Computer operation documents; Computer reference manuals; Handbooks relating to computers; Handbooks relating to computers (sold with the computers); Instruction books sold with computers; Instruction guides sold with computers; Instruction manuals (handbooks) sold with computers; Instruction manuals relating to computer hardware; Instruction manuals relating to computers; Instruction manuals sold with computers; Manuals for use with computers; Manuals relating to computers; Printed manuals relating to computers; Printed matter relating to computers; Printed publications relating to computers
Class 35: Online retail services; Retail services; Retailing of goods (by any means); Wholesaling of goods (by any means); Department store retailing; Discount services (retail, wholesale, or sales promotion services); Sales promotion services; Advertising; Online advertising on a computer network
Class 37: Computer support services (installation, repair and maintenance of computer hardware and peripherals); Installation and repair of computer hardware; Installation of middleware (computer hardware); Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of middleware (computer hardware); Maintenance and repair of computer hardware; Maintenance services relating to computer hardware; Information technology (IT) services (computer and computer peripherals installation and maintenance); Installation, maintenance and repair of computer peripherals; Provision of information in relation to the repair, maintenance and installation of goods; Maintenance and repair of computers; Repair of computers
Class 41: Instruction in the use of computers; Computer training; Computer training advisory services
Class 42: Computer support services (computer hardware, software and peripherals advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); Advisory services relating to computer hardware; Consultancy in the design and development of computer hardware; Design and development of computer hardware for others; Design of computer hardware; Providing information, including online, about design and development of computer hardware and software; Rental of computer hardware; Advisory services relating to computer software; Computer software advisory services; Computer software consultancy; Installation and maintenance of computer software; Installation of computer software; Maintenance of computer software; Repair of computer software; Updating of computer software; Upgrading of computer software; Computer design; Advisory services relating to computer systems design; Computer program advisory services; Installation of firmware; Installation, repair and maintenance of firmware; Installation of middleware (software); Installation, repair and maintenance of middleware (software); Advisory services relating to computer systems analysis; Computer system analysis; Computer system design; Development of computer systems; Computer rental; Maintenance of computer programs
(‘Goods and Services’)
Endorsement:           Provisions of subsection 44(4) and/or Reg 4.15A(5) applied
ANNEXURE B – Opponent’s Registration
Number:  2097488
Trade Mark:               VIPC
Filing Date:                 19 June 2020
Specification:            Class 35: Business management and administration services supporting utilisation of a global computer network; Compilation of information into computer databases; Computer assisted business information; Computer data processing; Computerised accounting; Computerised book-keeping; Computerised business information retrieval; Computerised business information services; Computerised compilation of customer indexes; Computerised data verification; Computerised database management; Computerised file management; Online advertising on a computer network; Online promotion on a computer network; Updating and maintenance of data in computer databases; Marketing in the framework of software publishing; Advertising; Advertising services provided over the internet; Advertising services provided via a data base; Advisory services relating to advertising; Call centre services (telephone answering); Advice relating to business management; Advisory services relating to business risk management; Business project management; Data base management; Data management; Data management advice; Data scrubbing services (data management services); Logistics services (business management and organization of facilities and resources); Management consultancy in information analysis; Management of a retail enterprise for others; Management of business offices for others; Office management services (for others); Compilation of advertisements for use as web pages on the internet; Providing business information via a web site; Web site traffic optimisation; Business consultation; providing commercial information and advice for consumers in the choice of products and services.
Class 37: Computer support services (repair and maintenance of computer hardware and peripherals); Installation and repair of telecommunication apparatus; Maintenance and repair of computer peripherals; Maintenance and repair of middleware (computer hardware); Maintenance and repair of communications systems; Maintenance and repair of data communications networks; Maintenance and repair of data processing apparatus; Maintenance and repair of electronic installations; Office machines and equipment installation, maintenance and repair; Provision of information in relation to the repair, maintenance of goods; Repair of computers; Repair of telephone apparatus; Repair and maintenance advisory services; Telephone installation and repair; Installation of communications network apparatus; Installing of telecommunications networks; Construction consultation; Information technology (IT) services (maintenance)
Class 42: Computer virus protection services; Off-site data backup (online); Advisory services relating to computer software; Computer security services (design and development of secure computer hardware, software and systems); Computer security services (programming and software installation repair and maintenance services); Computer software advisory services; Computer support services (software advisory and information services); Computer support services (programming and software installation, repair and maintenance services); Diagnosis of faults in computer software; Hosting of software as a service (SaaS); Information technology (IT) services (software design and technical consultancy); Installation and maintenance of computer software; Online provision of web-based software (non-downloadable); Repair of computer software; Updating of computer software; Upgrading of computer software; User authentication services using single sign-on technology for online software applications; Installation, repair and maintenance of firmware; Installation, repair and maintenance of middleware (software); Cloud computing; Providing virtual computer systems through cloud computing; Testing of computing equipment; Creating and maintaining weblogs (blogs) for others; Hosting of weblogs (blogs); Computer network services; Computer security services (testing and risk assessment of computer networks); Development of computer based networks; Development, maintenance and updating of a telecommunication network search engine; Network security services (test and risk assessment of electronic networks); Project management (design); Creating and designing web pages for others; Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Creating and designing website-based indexes of information for others (information technology services); Creating and maintaining web sites for others; Hosting computer sites (web sites); Providing information relating to computer technology and programming via a web site; Web portal services (designing or hosting); Web site design; Internet portal services (designing or hosting); Internet security consultancy; Technological consultation services
(‘Opponent’s Services’)

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Declaration of Trevor James Dredge, trade mark attorney of Intellepro Patent & Trade Mark Attorneys (‘Dredge 1’)	29 June 2022	TJD1 to TJD12
Declaration of Michael Keogh, one of the owners of the Opponent (‘Keogh’)	29 June 2022	N/A
Evidence in answer
Declaration of Kyl Newton, Applicant (‘Newton’)	4 October 2022	KN-2
Evidence in Reply
Declaration of Trevor James Dredge (‘Dredge 2’)	17 March 2023	TJD13 to TJD49

[2024] ATMO 96

22 May 2024