Safepay Malta Limited (Now BML Group Limited) v BetSafe Pty Ltd

[2017] ATMO 5

TRADE MARKS ACT 1995

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

Re:Opposition by Safepay Malta Limited (now BML Group Limited) to registration of trade mark application 1603056 (41) BetSafe in the name of BetSafe Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Siobhán Ryan of Counsel, instructed by Griffith Hack Applicant: Daniel Symond (Director) and Richard Brading (Legal Counsel) of the Applicant
Decision:	2017 ATMO 5 Opposition under s 52 of the Trade Marks Act 1995: reg. 4.15A of the Trade Marks Regulations 1995 and ss 42(b) and 60 of the Act considered –– reg. 4.15A(2) partially established but reg. 4.15A(5) successfully invoked – insufficient reputation on which to base the s 42(b) or s 60 grounds – opposition not established.

Background

1. This is an opposition brought by Safepay Malta Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of BetSafe Pty Ltd (“the Applicant”):

Application Number:          1603056

Filing Date:  29 January 2014

Services:Class 41: Education services; Life coaching services (training or education services); Educational consultancy services; Business training consultancy services; Coaching (training); Staff training services; Training; Training consultancy; Gambling services

Trade Mark:  BetSafe               (“the Opposed Mark”)

Endorsement: Evidence and/or other circumstances provided under subsection 41(4). Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 11 September 2014.  The Opponent filed a formal Notice of Intention to Oppose on 10 November 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 10 December 2014 raising opposition grounds corresponding to reg. 4.15A of the Trade Marks Regulations 1995 (“the Regulations”) and ss 42(b)and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 14 January 2015.

2. I heard the matter as a delegate of the Registrar of Trade Marks on 21 July 2016 in Canberra.  Siobhàn Ryan of Counsel instructed by Griffith Hack appeared for the Opponent.  Daniel Symond and Richard Brading appeared for the Applicant.  The parties’ representatives’ submissions were supplemented by written submissions exchanged in accordance with my directions in the weeks leading up to the hearing.

Grounds of Opposition, Onus and Standard of Proof

1. As mentioned, the SGP lists three grounds.  Each of these is discussed below, where it is convenient to begin with consideration of the reg. 4.15A ground before going on to discuss the s 60 and s 42(b) grounds.  To succeed, the Opponent bears the onus of establishing at least one of these three grounds, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]  The relevant date for assessing the registrability of the Opposed Mark is the 29 January 2014 filing date of the application (“the Filing Date”). [2]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133] where the Full Federal Court (Besanko, Jagot & Edelman JJ) affirmed Gyles J’s approach.

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

The Evidence

1. For their evidence the parties rely on the declarations listed below, made pursuant to the Act and reg. 21.6 in the Opponent’s case and the Statutory Declarations Act 1959 in the Applicant’s case.  I note that throughout its written submissions the Applicant suggests that the Opponent’s evidence should be accorded little or no weight because the declarations it relies on were, the Applicant submits, not made in accordance with reg. 21.6. Reg. 21.6(1), the Applicant points out, says that, “A declaration required or permitted by the Act or these Regulations must be in an approved form” and notes that, “Declaration forms in the approved form are available on the IP Australia website at However the “approved” declaration form on the website ends with the familiar words “I make this declaration conscientiously believing the statements contained in this declaration to be true and correct.” The two declarations filed by the Opponent do not contain these (or similar) words at all.

2. As I indicated at the hearing I am nevertheless happy to accept the Opponent’s declarations at face value and do not believe they should be discounted merely because the above quoted words were omitted from them.  As the Applicant acknowledged, reg. 21.19 would in any event permit the same outcome.  The parties’ evidence accordingly consists of declarations by:

Evidence in Support

▪ Triin Toomemets-Krasnitski made 26 April 2015, with Annexures 1 to 3 (“Krasnitski 1”)

Evidence in Answer

▪ Elizabeth Symond made 31 August 2015, with Exhibit ES-1, Sections A to Q (“Symond 1”)

Evidence in Reply

▪ Triin Toomemets-Krasnitski made 9 November 2015 (“Krasnitski 2”)

Application to Rely on Further Evidence

1. A week before the Opponent’s evidence in reply was filed the Applicant sought to file and rely upon a second declaration made by Elizabeth Symond on 2 November 2015 (with Exhibit ES-2) as further evidence in answer.  The Opponent objected to its admission but, in case it were admitted, filed a declaration made by its Australian attorney Sally Shrimpton on 20 July 2016 (with Exhibits SS-1 and SS-2) in response, submitting that natural justice would require me also to take its contents into account.

2. Part 51.2.6 of the Trade Marks Office Manual of Practice and Procedure indicates that, “As a general rule evidence that is not filed in time is not considered by the delegate when deciding the opposition.”  To successfully argue otherwise, a party would need to address:

   • Why the evidence was filed after the due date;
   • If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier;
   • What the evidence shows;
   • Why that information is crucial to the delegate’s decision;
   • Why it is in the public interest to have the information considered; and
   • What is the balance of convenience for the parties if the information is considered.[3]

   [3] I note this paragraph was added to the Manual on 15 October 2015.

3. Bearing these factors in mind I have decided not to take either of the parties’ late filed declarations into account in deciding the opposition.  I do accept the Applicant’s submission that it was unable to file the evidence in question earlier because it had only just become available.  I do not however consider the evidence to be “crucial” to my decision, nor indeed do I believe that it is likely to have had a significant impact on the outcome of the present opposition in any way.  In this regard its omission does not in my estimation put either party at any disadvantage.  I note that should my decision be appealed, it would of course be open to the parties to file fresh evidence for the Court’s consideration and thus to rely on any further evidence they believe relevant.

Overview of the Evidence

1. It is convenient to commence with an overview of the parties’ (properly filed) evidence.  Triin Toomemets-Krasnitski is Senior Legal Counsel of BML Group Limited (“BML”), which she explains “is the legal successor of the Opponent as of 24 December 2014 when [the Opponent] merged with [BML].”  Having been acquired in June 2011 for a sum of €6.16 million, the Opponent’s ultimate holding company is Betsson AB of Sweden, a listed company whose:

   7. …core business consists of investing in and administration of shareholdings in companies which, through partners or by themselves, offer games to end users via the Internet.

2. As to the Opponent specifically, she says it:

   8. … offers online gambling services through a number of websites, such as (altogether some 20 different brands/websites).  [The Opponent] offers products such as Poker, Casino, Sports betting, Lottery, Bingo and Games.

3. The basis for all of the Opponent’s opposition grounds is the close similarity of the Opposed Mark to the trade mark BETSAFE (“the Opponent’s Mark”) for which it claims a substantial reputation because of earlier use and registration in Australia.  It is as well here to note that whereas the evidence indicates both parties use their marks in a variety of upper and/or lower case letter configurations, (BETSAFE, betsafe, BetSafe or Betsafe), I consider all of these forms to be substantially identical and nothing in this decision turns on any of these trifling differences.  I note too that the parties’ representatives concurred with this approach.  For the sake of clarity, nonetheless, I will continue to refer to usage in any form by the Applicant as being of the Opposed Mark and usage in any form by the Opponent as being of the Opponent’s Mark.

4. I accept that reputation is generally inferred from a high volume of sales combined with substantial advertising expenditure and other promotions,[4] but recognise there do remain other ways in which an opponent may demonstrate reputation in a trade mark.  As to adoption and use of the Opponent’s Mark, Ms Toomemets-Krasnitski says:

   10. [The Opponent’s Mark] was chosen by the Opponent with the intention of clearly identifying the underlying services (i.e. online gambling, thus the use of the word “bet” which signifies playing a game for money) as well as giving the customers the assurance of a secure and reliable playing environment (thus the use of the word “safe”)…

   11. In 2006, when the trade mark was chosen, the global online gambling market was largely without regulation and the primary customer concern in those days was whether the gambling operator was reliable and reputable enough to be trusted with the customer monies.

   12. [The Opponent’s Mark] was first used by the Opponent in January 2006 (the website initially being launched from Malta but targeted at many territories worldwide). 

   [My understanding is that Ms Toomemets-Krasnitski is here referring to the website at < (hereafter “the Website”).]

   13. [The Opponent’s Mark] was first used in Australia in January 2006 (as part of the worldwide launch of the [W]ebsite).  Two (2) customers were accepted by [the Website] from Australia within the first month, this then increased to a total of 151 customers within the first year of operation (2006).  The [Opponent’s Mark] has been in continuous use in Australia since the date of first use.

   14. The services for which the [Opponent’s Mark] is used are online gambling services (predominantly online casino and poker games as well as online betting, which includes both fixed odds as well as live betting), sports marketing, events sponsorship and software applications [hereafter “the Opponent’s services”].

   [4] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at (127).

5. Krasnitski 1 contains several illustrations of use of what is said to be the Opponent’s Mark, made up of: screenshots from the Website; screenshots from the Opponent’s “mobile apps”; screenshots from one of the videos available on the Opponent’s dedicated YouTube^® channel; photographs of a wind jacket and a cap, pictures of sponsored racing cars; and a screenshot taken from the Opponent’s “bespoke [online] games/software” named the “Gumball 3000” game.  I note that in virtually all cases, the most prominent use shown is not of the Opponent’s Mark in its own right, but rather as part of a more complex logo mark (“the Logo Mark”), which also features a “rejoicing person” logo and the tagline “IN IT TO WIN IT.” as shown below:

1. Indeed in most of the examples of use in the evidence variations of the Logo Mark itself are shown, with the words “world of” or “com” added in similar font and point size to the left or right respectively of the word “betsafe”.  Since nothing in this decision turns on these differences, I include all these variants collectively when using the term “the Logo Mark”.

2. Ms Toomemets-Krasnitski says that the Opponent’s Mark has been used in Australia in the following ways:

   (i) on the Website;

   (ii) on the website < mobile apps;

   (iv) “in promotional videos online such as YouTube^®”;

   (v) “on clothing; sportswear”;

   (vi) “on sports equipment”;

   (vii) “in sporting events and by brand ambassadors”;

   (viii) “in relation to extreme sports”;

   (ix) “on cars (for example the Gumball Rally, which [the Opponent] sponsors)”; and

   (x) “in bespoke games/software (for example the Betsafe exclusive Gumball 3000 game, available at >

   In assessing the reputation of the Opponent’s Mark as at the Filing Date I am mindful of the following matters relevant to the use illustrated in Krasnitski 1.  Firstly, as mentioned, most of the use shown is of a version of the Logo Mark rather than of the Opponent’s Mark in its own right.

3. As regards the two websites mentioned, Ms Toomemets-Krasnitski says:

   25. The website remains the Opponent’s main trading website while is a marketing website intended to assist in building brand awareness.  The Betsafe trade mark appears on both websites.

4. While the two websites are said to have been launched in 2006, the only relevant supporting data in Krasnitski 1 relating to traffic is a “table of web visit information [for the Website only] relating to customers residing in Australia only.”  While the figures given for the 12 month period January 2014 to February 2015, being around 2,000 visitors per month, do not strike me as particularly significant in any event, I note this period is after the Filing Date and as such is of no direct relevance to the opposition.  Nevertheless Ms Toomemets-Krasnitski does elsewhere say that:

   20. Approximately 1800 customers of the Betsafe services have registered from Sydney and Melbourne; some 700-900 customers have registered from Adelaide, Perth and Brisbane each respectively.  In addition, there are thousands of other customers from smaller locations.

   21. Since the [W]ebsite launched in 2006 [and as at 26 April 2015 when Krasnitski 1 was declared], the Opponent has received a total of 27,293 customers from Australia.

5. As to use of the Opponent’s Mark via mobile apps, Ms Toomemets-Krasnitski says:

   16.(iii) The Opponent currently has 2 mobile applications: one for Android and one for iOS users.  The iOS version was launched in October 2013 and the Android version in May 2014.

6. I note that the iOS version was only launched some three months before the Filing Date and the Android^® version some months after it.  There is no other relevant information before me concerning how many Australian users may have downloaded the iOS version before January 2014, however, nor otherwise indicating why this claimed use would contribute significantly to the reputation of the Opponent’s Mark.

7. The Opponent apparently launched a YouTube^® channel in 2009 which as at 2 February 2015 (some 13 months after the Filing Date) had attracted more than 78,000 views in Australia.  The Opponent’s Mark (or the Logo Mark, at least) can it seems be seen from time to time during these offerings, although my overwhelming impression is that the exposure the Opponent’s Mark enjoys, such that it is, is very much dwarfed by the abundance of other material displayed.

8. Ms Toomemets-Krasnitski also mentions other social media, namely Facebook^® and Twitter^®.  I am however unable to gauge the extent of exposure the Opponent’s Mark may have enjoyed via these means as no relevant supporting data is provided as to Australian based activity or participation.

9. While Ms Toomemets-Krasnitski says the Opponent’s Mark is used on clothing, the sole supporting material she provides is a picture of a hooded jacket and a picture of a cap, each of which bears a version of the Logo Mark.  Ms Toomemets-Krasnitski does not say where, when or in what quantities these or any other items of clothing may have been sold or distributed.  This material is accordingly of no assistance in my assessment of the reputation of the Opponent’s Mark as at the Filing Date.

10. The Opponent’s claimed use “on sporting equipment” is likewise unhelpful for the same reason.  The sole supporting material is an undated picture of a pair of surfboards bearing a variant of the Logo Mark and, again, Ms Toomemets-Krasnitski does not say where, when or in what quantities these or any other items of sporting equipment may have been sold or distributed.

11. The sole examples given of brand exposure via “sporting events and by brand ambassadors” are (i) a single, undated photograph of a downhill ski-run event prominently featuring the Logo Mark on a banner and on bunting and (ii) details of the sponsorship of a Swedish wake boarder who visited Australia in 2014.  When and in what country the downhill ski event took place is not stated.  The wake boarder’s sponsorship, the only example of an athlete sponsorship provided, occurred after the Filing Date.  Obviously this too is not relevant information upon which to gauge the extent of the reputation of the Opponent’s Mark in Australia as at the January 2014 Filing Date.

12. There is likewise no significant material before me evidencing use of the Opponent’s Mark “in relation to extreme sports” or “on cars.”

13. Finally, Ms Toomemets-Krasnitski says the Opponent’s Mark is used in relation to “bespoke games/software.”  However no numbers, dates or distribution or sales figures for the games/software are given and the claim is accordingly of no evidentiary weight as far as assessment of the reputation of the Opponent’s Mark is concerned.

14. Ms Toomemets-Krasnitski does give the (confidential) “annual turnover in Australia for services offered for sale under the betsafe trade mark” for, (relevantly), the years 2008 to 2013 inclusive.  I understand the term “annual turnover” in this context represents the total amounts wagered by Australian users on the Website in any given year.  I would just comment that these amounts, while arguably not insubstantial, do to my mind appear relatively modest given the nature and range of the gaming services offered on the Website, just exceeding AU$1 million in the best of the years listed.  As the Applicant argues, nor are figures for the total amount wagered necessarily an objective guide to actual customer numbers or customer activity in any given period in any event.

15. Turning to the evidence in answer, Elizabeth Symonds is a Director and shareholder of the Applicant.  She explains that the Applicant and its predecessors have been continuously using the Opposed Mark since 1998 “to provide an Australian responsible gaming consultancy and program to assist Australian-based gambling operators and problem gamblers in responding to problem gambling related matters.”  She tells of the Applicant’s adoption and use of the Opposed Mark as follows:

    5. My late husband, Paul Symond, commenced business as a specialist gambling and addiction counsellor in 1993.  Paul was well known as a national authority on problem gambling and appeared in many media reports as an expert.

    6. Paul Symond registered the business name “Paul Symond Consultancy” (NSW R82961 118) on 25 August 1995 under which he provided consulting services in relation to problem gambling.

    7. A family company, P&E Symond Pty Ltd (ACN 084 145 246), was formed on 1 September 1999 by Paul Symond and James Connolly, a former employee of P&E Symond Pty Ltd.

    8. The business name BETSAFE (NSW V842911) was registered on 17 September 1999 by Paul Symond and James Connolly…

    9. In 2005 BetSafe Pty Ltd [the Applicant] was incorporated for the purpose of operating the BetSafe program.

    10. In 2005, the BetSafe program was assigned to [the Applicant], who remains the owner and operator of the BetSafe program.

    11. I have been a director and shareholder of [the Applicant] since its incorporation.  Paul Symond was a director of [the Applicant] during two periods between 12 March 2001 and his death on 11 June 2015.  My son Daniel Symond was a director of [the Applicant] between 24 November 2005 and 23 July 2010.

    12. The BetSafe program consists of a number of different services, including: education services; life coaching services (training or education services); educational consultancy services; business training consultancy services; coaching (training); staff training services; training; and training consultancy and gambling services, each of which are described in [the statement of services covered by the opposed application].

    13. The BetSafe program was officially launched on 10 December 1998 by the NSW Government Minister for Gaming and Racing, The Hon Richard Face, at Western Suburbs Leagues Club, Newcastle, NSW…

    …

    37. The BETSAFE trade mark was registered by Paul Symond and James Connolly…on 15 October 1998 (registration 775658).  The goods and services registered are “Class 42 Counselling and psychological services for persons affected by gambling.”

    38. The BETSAFE trade mark was removed from the trade marks register on 21 May 2009 for non-payment of the renewal fee.  This was an administrative oversight by [the Applicant].

    39. The [Applicant or its predecessors] has continuously owned the Australian domain name <betsafe.com.au> since June 2000.

    40. The [Applicant or its predecessors] has continuously operated a website using the Australian domain name <betsafe.com.au> since June 2000.

    41. The [Applicant or its predecessors] has continuously owned the Australian 1800 phone word for BETSAFE (1800 238 723) since 8 January 2003.

1. Ms Symond exhibits an impressive range of supporting materials dating from 1999 backing up the Applicant’s claim of continuous use of the Opposed Mark.  These include a copy of a newspaper article from 1999 reporting on the launch of the Applicant’s predecessor’s original “BetSafe campaign”, copies of many other newspaper articles dating from September 1999 to August 2002 explaining and discussing the Applicant’s services offered under the Opposed Mark and copies of the Applicant’s quarterly newsletters (titled BetsafeNews) commencing with the first edition published on 1 April 1999.

2. It is unnecessary here further to describe all of the information and comprehensive supporting documentation provided by Ms Symond pertaining to the Applicant’s long, continuous use of the Opposed Mark for relevant services. I nevertheless note for the record that this use has extended throughout NSW and the ACT and beyond to South Australia and Western Australia in 2001 and 2004 respectively. I note also her evidence that:

   26. [The Applicant or its predecessors] has continuously operated a 24 hour telephone counselling service accessible through the phone word 1800 BETSAFE (1800 238 723) since January 2003.  Prior to that date the [Applicant or its predecessors] operated a 24 hour telephone counselling service accessible by the phone number 02 9874 0744 since July 1998.

   27. [The Applicant or its predecessors] has continuously operated a face-to-face problem gambling counselling service, approved by the NSW Government since 2002…

   28. [The Applicant or its predecessors] is an approved education and training provider…

3. In reply to Symond 1 the Opponent relies on a second declaration by Ms Toomemets-Krasnitski which effectively addresses some of the more ambitious criticisms Ms Symond makes of the Opponent’s evidence in support. As Ms Toomemets-Krasnitski points out in this regard, the Act does not require the Opponent’s evidence be in the form of a Statutory Declaration, nor does it require that the user of a trade mark in Australia must also have a physical presence in Australia or be registered as a business entity in Australia. Nor should “the lack of a licence to operate a gambling, wagering or bookmaking business in Australia…preclude the Opponent from protecting its trade mark rights in the mark BETSAFE in Australia,” says Ms Toomemets-Krasnitski, reasonably on the face of it.

4. I move on now to discuss in detail the specific grounds of opposition raised.

Discussion

Reg. 4.15A

1. Section 189A of the Act allows for regulations to be made which, inter alia, “deal with…the protection given to protected international trade marks in Australia.” Reg. 4.15A, which is in essentially identical terms to s 44 of the Act, is such a regulation. It is applicable in this case because the Opponent relies on its earlier (accepted) application 1591187 BETSAFE in Classes 9, 41 and 42, this being an “International Registration Designating Australia” (IR 1181594) under the Madrid Protocol, to underpin its opposition ground.

2. Reg. 4.15A, insofar as relevant, is reproduced below (with Notes omitted):

Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol

(1) …

(2) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.

(3) If, in a case mentioned in subregulation (1) or (2), the Registrar 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 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.

(5) If, in a case mentioned in subregulation (1) or (2), the Registrar 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 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.

1. The ground based on reg. 4.15A is particularised in the SGP as follows:

   Ground

   The trade mark is substantially identical with or deceptively similar to, a trade mark with an earlier priority date registered or subject of an application for registration by another person in respect of similar goods or closely related services or in respect of similar services or closely related goods.

   Particulars

   The following trade marks [sic] will be relied upon for this ground:

Number	Mark	Class
1591187 (IR 1181594)	BETSAFE	9, 41, 42

1. Details of accepted application 1591187 (IR 1181594), which is owned by BML (and which I note is currently being opposed by the Applicant) (“the IRDA”), are set out below:

Application Number:          1591187 (IR 1181594)

Priority Date:  23 September 2013

Goods:Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; all the aforesaid except goods in connection with animals and pets

Services:Class 41: Education; providing of training; sporting and cultural activities; all the aforesaid except services in connection with animals and pets

Services:Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; all the aforesaid except services in connection with animals and pets

Trade Mark:  BETSAFE (“the s 44 Mark”)

Endorsement:  Evidence and/or other circumstances provided under subsection 41(4).

1. The Applicant agrees with the Opponent that the IRDA has an earlier priority date than the opposed application and is for a trade mark substantially identical to the Opposed Mark.  However the Applicant disputes the Opponent’s claim that all of the services covered by the opposed application are similar to, or closely related to, the services or goods of the IRDA.  Most notably the Applicant submits that, “It is apparent on the face of the designated goods and services that the [s 44 Mark] does not designate any goods and services which are ‘similar services or closely related goods’ to ‘gambling services’ designated under the opposed application].”  I agree with this assessment.  However I also agree with Ms Ryan’s submission that the respective applications otherwise cover the same or similar services, that is as far as education, coaching and training services are concerned.  Accordingly in relation to these services the Opponent’s reg. 4.15A ground is at least partially made out.

2. The Applicant points to its long, continuous use of the Opposed Mark since 1999, nonetheless, and in its submissions invokes subreg. 4.15A(5),[5] as it had already successfully done at the examination stage before the opposed application was accepted for registration.  I am well satisfied based on the evidence of Ms Symond that the Applicant and its predecessors have continuously used the Opposed Mark in Australia in relation to, inter alia, education, coaching and training services relating to problem gambling since 1999.  As such I consider it appropriate to apply reg. 4.15A(5) in the Applicant’s favour in this case.

   [5] Or, in the alternative, subreg. 4.15A(3).

3. To conclude, while the Opponent has partially established its ground based on reg. 4.15A(2) in respect of the education, coaching and training related services covered by the opposed application, I am satisfied that it is nevertheless appropriate in this case to apply reg. 4.15A(5) in the Applicant’s favour, with any registration to mature from the opposed application to be endorsed (as it currently is) accordingly.

Section 60

1. Section 60 of the Act is reproduced below:

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.

1. The ground based on s 60 is particularised in the SGP as follows:

   Ground

   Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60

   Particulars

   The opponent had, before the priority date (29 January 2014), acquired a reputation in Australia in the BETSAFE mark, including in relation to education services; life coaching services  (training or education services); educational consultancy services; business training consultancy services; coaching (training); staff training services; training; training consultancy; gambling services. The use of the similar trade mark by the applicant would be likely to deceive or cause confusion in the market place, including by falsely suggesting that the applicant’s services are those of the opponent or that the applicant or its services are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent.

2. In her written submissions Ms Ryan further specified the Opponent was relying on the reputation of the three trade marks shown below, said to be in use in Australia since 2006:

   BETSAFE

   (“the s 60 Marks”)

3. As Ms Ryan observed, what I must consider in the case of s 60 is the fair notional use the Applicant might make of the Opposed Mark in relation to the services covered by the opposed application.  The issue is whether such use would be likely to deceive or cause confusion amongst, as it is often put, a “significant” or “substantial” number of potential consumers of the relevant Class 41 services as at the Filing Date in light of the then reputation in Australia of the s 60 Marks.  As Heerey J noted in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[6]

   …the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[7]  What is “significant” or “substantial” will depend on the nature of the goods or services in question.  For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [6] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.

   [7] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

4. In the present case I proceed on the basis that the target market for the Applicant’s Class 41 services would in principle include almost all Australians over the age of 18.  As far as assessing the reputation of the s 60 Marks in this market is concerned, as both parties acknowledged, Kenny J said the following in McCormick & Co Inc v McCormick:[8]

   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…

   [8] (2002) 51 IPR 102 at [86].

5. I largely concur with the Applicant’s following written submissions (prepared by Daniel Symond) critical of the reputational evidence relied upon by the Opponent in this case:

   79. The Applicant submits that the Opponent has not discharged its onus to the relevant standard set out by Kenny J and as is required by s60.

   80. Based on the evidence and Opponent’s Submissions, the Opponent incorrectly provides dollar value of sales as evidence to satisfy the “volume of sales” component described by Kenny J (paragraph 32 of the Opponent’s Submissions).

   81. The Applicant submits that it is clear from Kenny J above that “volume of sales” in fact refers to the quantity or number of goods or services sold, not the dollar value per se, as being one component of evidence that could be used to infer the recognition of the trade mark by the public generally.

   82. That is, a small number of high value sales may in fact represent a lesser reputation for the purposes of s 60 as compared to a large number of small value sales.  This proposition is consistent with the reasoning in Hugo Boss AG v Jackson International Trading Co Kurth D Bruhl GmbH & Co KG (1999) 47 IPR 423.

   83. Evidence provided by the Opponent is insufficient to infer a reputation in Australia by volume of sales.

   a. The Opponent claims that approximately 2,000 customers plus “thousands of other customers” “have registered” (paragraph 20 of Krasnitski 1), however, the Opponent does not specify:

   i. the number of sales;

   ii. the actual number of registered customers as at the [Filing] Date;

   iii. what “have registered” means, which, in relation to a “free to register” Internet service may in fact not be any sales at all nor create any association in the mind of the customer in relation to the trade mark;

   iv. when those registrations occurred and how many continue today, which if occurring over a period since 2006 to the [Filing Date], might be insignificant on a per-year basis or as at the [Filing Date];

   v. how the trade mark is used in connection with the registration process in order to create a reputation in the mind of the customer or the public generally; and

   vi. whether the customer in fact knows they have registered with the Opponent (which it is common knowledge that registration for Internet services can take place without significant understanding of who is providing services).

   b. The Opponent claims that its gross annual turnover relating to services provided in Australia during 2014 was AU$ [redacted, I note this turnover was generated after the Filing Date in any event], however:

   i. this figure includes money that is received as bets and returned to customers as winnings and, therefore, is not equivalent to “sales” in the sense that Kenny J contemplated (that is, it appears to be significantly larger than a business that simply provides a service for fees or sells goods for fees);

   ii. there is no evidence of actual turnover which can be compared on a “like-for-like” basis to other more common businesses and, therefore, the size of turnover described by the Opponent (without a means for comparison) is irrelevant;

   iii. there is no description of the volume of sales as described by Kenny J, only the dollar amount of gross turnover; and

   iv. …

   84. Similarly, evidence provided by the Opponent is insufficient to infer a reputation in Australia through advertising activity because:

   a. of the 27,293 “customers” the Opponent claims to have received, it does not explain how those “customers” have been enticed to access the Opponent’s website, what page they have landed on, whether they are “unique clicks” or total aggregate clicks and whether they are in fact true customers of the Opponent or merely people who inadvertently clicked on a well-placed Internet banner ad;

   b. of the 27,293 “customers” the Opponent claims to have received, how those “customers” relate to the customers that have registered (which appears to be a significantly smaller number);

   c. similarly the statistics for social media impressions across Facebook, YouTube and Twitter while seeming significant, needs to be viewed in the context of such services where it is common knowledge that seemingly insignificant and quickly forgotten content receives a large number of views, etc (for example, it is common experience that 74,088 views of a YouTube channel consisting of several videos between 2009 and 2015 is not significant as compared to the general public consumption of YouTube videos throughout Australia); and

   d. there is no connection between evidence of advertising expenditures and other promotions and the recognition by the public generally in Australia as described by Kenny J.

   85. The Applicant submits, taking the Opponent’s evidence at face value, on the balance of probabilities it is likely that 27,293 potential customers have accessed the Opponent’s website from Australia during some period since 2006 (some of which would have done so inadvertently), with approximately 2,000 having actually signed-up and some even lesser number still having actually purchased services from the Opponent.  It is submitted that this volume is insufficient to show reputation with the general public.

6. The Applicant’s submissions contain further, not unreasonable, criticisms of the claimed reputation of the s 60 Marks which it is unnecessary to detail here.  It is enough to declare that I am not satisfied, based on the evidence before me, that the s 60 Marks had the kind of reputation as at the Filing Date contemplated by s 60.

7. While most if not all of the Opponent’s claimed exposure of the s 60 Marks in Australia was via the Website, I do not think a significant or substantial number of people would have come to know the s 60 Marks by this means.  The Opponent has otherwise adduced very limited corroborating evidence of any use of the s 60 Marks before the Filing Date.  There is essentially no information provided as to how, when, where or in what quantities any of the publicity material relied upon may have been accessed by Australian based consumers.

8. In summary, I cannot be satisfied on the evidence before me that the s 60 Marks had sufficient reputation amongst actual or potential consumers of the Applicant’s designated services as at the Filing Date for the Opponent successfully to rely on s 60 of the Act. The Opponent has accordingly not established its ground of opposition under s 60.

Section 42(b)

1. I have left discussion of the s 42(b) ground until last since my consideration of it essentially reflects my above conclusion on the s 60 ground.  Section 42(b) states:

Trade mark scandalous or its use contrary to law

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

(b) its use would be contrary to law.

1. The ground based on s 42(b) is particularised in the SGP in precisely the same words as is the ground based on s 60.[9]

   [9] See paragraph 43 above.

2. Ms Ryan further specified in her submissions in relation to the s 42(b) ground that:

   37. The use of the Opposed Mark by the…Applicant would be contrary to law under ss 18 and 29 of the Australian Consumer Law.  Specifically, the use of the Opposed Mark in relation to gambling services and ancillary training and education services would be misleading or deceptive, or likely to mislead or deceive, and would suggest a sponsorship, approval or affiliation with Safepay Malta and its similar services under the Opponent’s BETSAFE Marks, which the Applicant does not have.

1. Section 18 and, insofar as it is apparently relevant, s 29 of the Australian Consumer Law 2010 (“the ACL”) are set out below:

Section 18: Misleading or deceptive conduct

(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Section 29: False or misleading representations about goods or services

(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

1. I note that these provisions of the ACL are in essentially identical terms to ss 52 and 53(c) and (d) of the now repealed Trade Practices Act 1974 (“the TPA”) and, as Ms Ryan’s submissions acknowledge, case law under the TPA in this area is also relevant to interpretation of ss 18 and 29 of the ACL.

2. As I observed in Monster Energy Company v Nathan Darma,[10] “It is generally the case that where an opponent is unsuccessful in establishing its s 60 ground, it would inevitably also be unable to establish the relevant sections of the ACL (or TPA) had been breached in circumstances where the reputation(s) of the very same trade mark or trade marks is relied on.” In this case the Opponent’s s 42(b) ground is particularised in the identical words as its s 60 ground and the reputation of the same three trade marks is relied upon at its core. For the reasons already discussed in connection with the Opponent’s s 60 ground, there is simply insufficient evidence of an objective, evaluative nature before me to assess the significance of the reputation of any of the marks in question.

   [10] [2017] ATMO 4 at [59].

3. I would only add that, unlike s 60 of the Act, s 18 and ss 29(1)(g) and (h) of the ACL are not concerned with behavior that “would be likely to deceive or cause confusion”. The relevant provisions of the ACL require that I be satisfied there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s services or as to their being some commercial connection with the Opponent, rather than mere confusion or simply being caused to wonder as is the case with s 60 of the Act. More is thus required to establish a likelihood of misleading or deceptive conduct (or, similarly, conduct amounting to the making of false or misleading representations) than is the case with trade marks likely to deceive or cause confusion under s 60.[11]

   [11] See for example Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684 per Gibbs CJ at 688.

4. In the present matter I consider the reasoning set out earlier in rejecting the Opponent’s case based on s 60 of the Act is no less applicable to its claim that the Applicant’s use of the Opposed Mark as at the Filing Date would have breached the relevant provisions of the ACL. The Opponent has accordingly not established its ground of opposition under s 42(b).

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

2. I have found the Opponent has not established any of the grounds nominated in the SGP.  Application 1603056 may accordingly proceed to registration one month from the date of this decision with its present endorsement retained.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. In the event of success the Applicant’s representatives requested an award of costs in its favour. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
20 January 2017