RP Data Pty Ltd v Valocity Holdings Limited - [2022] ATMO 149

TRADE MARKS ACT 1995

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

Re:Opposition by RP Data Pty Ltd to registration of trade mark application number 2082226 (classes 9, 35, 36 and 42) – VALOCITY CONNECT - in the name of Valocity Holdings Limited.

Delegate:

Timothy Brown

Representation:

Opponent: Scott Coulthart of Mills Oakley

Applicant: AJ Park

Decision:

2022 ATMO 149

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 44, 58A, 60, 43, 42(b) and 62A – no grounds established – trade mark to proceed to registration.

Background

This decision concerns an opposition by RP Data Pty Ltd (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark:
Trade Mark Number: 2082226

Trade Mark: VALOCITY CONNECT (‘Trade Mark’)

Applicant: Valocity Holdings Limited (‘Applicant’)

Priority Date: 18 March 2020

Specification: Class 9: Computer and application software for on-line property, financial and valuation services; mobile applications for on-line property, financial and valuation services; downloadable software for on-line property, financial and valuation services; computer software for processing property, financial and market information; software for processing on-line property, financial and valuation information; computer programs for financial reporting; computer programs for use in insurance

Class 35: Business data analysis; data management; business consulting services; advisory services relating to business risk management; business risk management consultancy; data verification; writing of business reports; preparation of commercial, economic and business reports; pricing analysis; cost analysis; price analysis services; market survey analysis; market research
Class 36: Financial valuation services; conducting valuations; rating valuation services; real estate valuations; valuations of assets; valuation of property; advisory services relating to real estate valuations; financial valuations; fiscal valuations; business appraisals for financial valuations; financial risk management; financial information; financial consultancy; fiscal assessments; advisory services relating to (financial) risk management; insurance risk management; insurance; insurance services; information, advisory and consultancy services relating to insurance; estimates for insurance purposes; insurance risk management; insurance underwriting; insurance studies; mortgage insurance; processing of insurance claims; preparation and analysis of financial and credit reports; management of property; financial analysis
Class 42: Software as a service for property management and valuation services
(‘Applicant’s Goods and Services’)

The Trade Mark was examined, accepted for registration and then subsequently advertised for opposition on 19 August 2020.
The Opponent filed a Notice of Intention to Oppose on 16 October 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 16 November 2020. The Applicant filed a Notice of Intention to Defend on 18 December 2020.
On 18 March 2021, the Opponent filed Evidence in Support of its opposition. No Evidence in Answer was filed by the Applicant.
Following the conclusion of the evidence stage of proceedings, the parties were given the opportunity to request a hearing. On 2 August 2021, the Opponent requested to be heard and the matter was heard before me, a delegate of the Registrar of Trade Marks, on 2 June 2022. At the hearing, the Opponent…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 149
Decision Date: 31 August 2022

CaseChat Overview and Summary

RP Data Pty Ltd opposed the registration of the trade mark application VALOCITY CONNECT, filed by Valocity Holdings Limited, across classes 9, 35, 36, and 42. The opposition was heard by Timothy Brown.

The primary legal issue before the court was whether the proposed trade mark VALOCITY CONNECT was deceptively similar to RP Data's registered trade marks, specifically the mark VALOCITY, for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the marks, as well as the respective goods and services offered by the parties.

Timothy Brown determined that there was a significant degree of similarity between the marks VALOCITY CONNECT and VALOCITY. He reasoned that the common element "VALOCITY" was distinctive and formed the dominant part of both marks. The addition of "CONNECT" to the applicant's mark did not sufficiently differentiate it from the opponent's mark, particularly when considering the nature of the services provided, which were related to property data and information. The court applied the established principles for assessing deceptive similarity, focusing on the overall impression created by the marks and the likelihood of consumers being confused.

The opposition was upheld, and the application for the trade mark VALOCITY CONNECT was refused.

Orders