Senceive Limited v Geowan Pty Ltd

[2024] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Senceive Limited to registration of trade mark application 1973332 – GEOWAN - in the name of Geowan Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Richard Plummer of Elliptic Legal & Patent Services Applicant: Justin Marcus of Marcus & Marcus Lawyers and Consultants
Decision:	2024 ATMO 37 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 established for all goods and services – evidence sufficient to overcome s 44 for some goods and services- no other ground of opposition established- Applicant provided with an opportunity to amend the specification – trade mark accepted.

Background

1. Geowan Pty Ltd (‘the Applicant’), filed trade mark application number 1973332 on 4 December 2018 in classes 9, 38 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  GeoWAN (the ‘Trade Mark’)

   Trade mark application no: 1973332

   Filing Date:  4 December 2018 (the ‘Priority Date’)

   Specification:  Class 9: Apparatus for linking computers into networks; Apparatus for network communication; Apparatus for telephone networks; Apparatus for transmitting data by the telephone network; Apparatus for use in communications networks; Communication devices for linking computer networks; Communications networks; Computer apparatus for use in local area networks; Computer apparatus for use with computer networks; Computer installations (networks); Computer network apparatus; Computer network installations; Computer network operating installations; Computer networking apparatus; Computer networking installations; Computer networks; Computer networks for the communication of data; Computer networks for the processing of data; Computer networks for the storage of data; Computer programs for the creation of networks; Computer programs relating to computer networks; Computer programs relating to local area networks; Connecting elements for communication networks; Data networks; Data transmission networks; Devices for use in the networking of computers; Electronic industrial network apparatus for high speed data transmission; Electronic networking apparatus for telephone systems; Installations for use in forming computer networks; Installations for use in the networking of communications apparatus; Installations for use in the networking of computers; Integrated circuits for networks for use in identification; Integrated service digital network installations; Integrated services digital network components; Intercom key apparatus for connection to telephone networks; Intercom key terminals for connection to a telephone network; Interface network modems; Linked computer networks; Local area networking apparatus for the switching of data; Local area networking apparatus for the transmission of data; Local area networks; Local optical fibre networks; Memory apparatus for telecommunications network design; Memory apparatus for telecommunications network management; Network applications being computer programs; Network controlling apparatus; Network management apparatus; Network management computer software; Network management control apparatus; Network protection devices (electronic); Network terminating apparatus (electric or electronic); Networks for the interconnection of communication systems; Telecommunications network management installations; Telecommunications networks; Wireless communication apparatus; Wireless transmission apparatus; Wireless transmission apparatus for remote control; Computer programs (downloadable software); Computer programs and recorded software distributed online; Computer software; Electrical sensors; Electronic sensors; Sensors (measurement apparatus), other than for medical use; Apparatus for automatically placing messages via telecommunications equipment; Apparatus for telecommunications engineering; Computer controlled telecommunications exchange apparatus; Computer programs for the control of telecommunication apparatus; Computer programs for the control of telecommunication instruments; Computer programs for use in telecommunications; Digital telecommunications apparatus; Digital telecommunications instruments; Mobile telecommunications apparatus; Programmable telecommunication apparatus; Telecommunications apparatus; Telecommunications apparatus for diagnostic purposes; Telecommunications apparatus for interfacing purposes; Telecommunications apparatus for measuring purposes; Telecommunications apparatus for transferring data to computers; Telecommunications apparatus for transmission purposes; Telecommunications apparatus for transmitting data for use with computers; Telecommunications apparatus for use with analogue signals; Telecommunications apparatus for use with digital signals; Telecommunications cable; Telecommunications devices; Telecommunications digital exchange apparatus; Telecommunications equipment; Telecommunications ground station apparatus; Telecommunications installations; Telecommunications instruments; Telecommunications machines; Transmitters (telecommunication); Transmitting apparatus for telecommunications

   Class 38: Communication network consultancy; Communication services over computer networks; Communications by fiber optic networks; Communications by fibre optic networks; Computer network communication services; Data transmission services over telecommunications networks; Digital network telecommunications services; Electronic network communications; Information services relating to electronic communication networks; Internet portal services (providing user access to a global computer network); Netcasting (broadcasting over a global computer network); Operating of electronic communications networks; Operation of local area networks; Operation of wide-band telecommunications networks; Providing access to computer networks; Providing telecommunications connections to a global computer network; Providing user access to a global computer network and online sites containing information on a wide range of topics; Providing user access to global computer networks; Rental of access time to global computer networks; Rental of local area networks; Switching network services (telecommunications); Telecommunications security (providing secure connections and access including to computers and a global computer network); Web portal services (providing user access to a global computer network); Webcasting (broadcasting over a global computer network); Wireless broadcasting; Wireless communication services; Wireless telephone services; Advisory services relating to telecommunications; Consultancy services relating to telecommunications; Operation of telecommunications apparatus; Operation of telecommunications systems; Remote transmission of data by means of telecommunications; Rental of telecommunication apparatus; Telecommunications advisory services; Telecommunications consultancy; Telecommunications routing and junction services; Telecommunications services for the distribution of data

   Class 42: 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; Cloud computing; Providing virtual computer systems through cloud computing; Design of telecommunications apparatus; Design of telecommunications installations; Telecommunications technology consultancy (‘Relevant Goods and Services’)

   Endorsements:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks dated 22 September 2021. Subsequently Senceive Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

3. The Applicant then filed its Notice of Intention to Defend. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth)(‘the Regulations’).

4. No hearing was requested, although some months later the Opponent’s attorney requested that the matter be decided without hearing. It has therefore been allocated to me to decide, as a delegate of the Registrar of Trade Marks, on the basis of the application and the documents identified above.

   Grounds of Opposition

5. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’). However, only those grounds being under sections 44, 58, and 60 were pursued in the written submissions before me. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the Opponent establish one ground of opposition in relation to all of the Relevant Goods and Services, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).]

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Confidential Declaration of Bryn Anthony Smith, Technical Director of Senceive Ltd, dated 2 June 2022 (‘Smith 1’) with Annexure BS-201 to BS-249

   ·Declaration of Bryn Anthony Smith, dated 2 June 2022 (‘Smith 2’) with Annexure BS-300 to BS-302

   Evidence in Answer

   ·Declaration of Tim Cara, Director of GeoWAN Pty Ltd (‘Cara 1’) dated 21 September 2021 with Schedule A, Schedule B and Annexures TC-01 to TC-82

   ·Declaration of Tim Cara, (‘Cara 2’) dated 8 September 2022 with Annexures TC-83 and TC-84

   ·Declaration of Tim Cara dated 8 September 2022

   Evidence in Reply

   ·Declaration of Bryn Anthony Smith, dated 8 November 2022 (‘Smith 3’) with Annexure BS-250

   Discussion

   Section 44

7. Section 44 of the Act relevantly 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 (the 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.

8. To establish this ground of opposition, at least one trade mark which satisfies the following requirements must be identified:  

   I.it is in the name of a person other than the Applicant (‘First Requirement’); 

   II.it has a priority date which is earlier than the priority date of the Trade Marks (‘Second Requirement’);  

   III.it is in respect of services and/or goods which are either similar and/or closely related to the Opposed Services (‘Third Requirement’); and 

   IV.it is substantially identical with, or deceptively similar to, the Trade Marks (‘Fourth Requirement’). 

9. The Opponent is the registered owner of one trade mark registration which it has particularized in its SGP and submissions in support of the section 44 ground of opposition. The details of that registration are as follows:

   Trade mark:  GeoWan (‘Opponent’s Mark’)

   Trade mark application no: 1919914

   Filing Date:  13 April 2018 (‘Opponent’s Priority Date’)

   Convention details:              15 February 2018
     3290447 United Kingdom

   Specification:  Class 9: Computer software; computer programs; data processing equipment; surveying apparatus and instruments; wireless communication system to enable measurement and sensing; measuring, detecting and monitoring apparatus, instruments, indicators and controllers; remote monitoring apparatus; instruments for surveying physical data; apparatus for measuring, monitoring and researching geophysical and geotechnical structures and their environments; wireless transmitters, sensors, detectors and communication apparatus; alarm sensors; wireless communication systems; wireless communication apparatus

   Class 38: Wireless communication services; rental of wireless communication systems; provision of wireless communication networks; wireless electronic transmission of data; leasing of telecommunication apparatus and equipment; providing access to databases; information, advisory and consultancy services relating to all the aforesaid services

   Class 42: Scientific and technological services and research and design relating to measurement and instrumentation applications; computerised information services relating to the measurement and monitoring of geophysical and geotechnical structures and their environments; geophysical and geotechnical surveys; geophysical and geotechnical exploration services; geophysical and geotechnical research services; collating, compiling, processing, monitoring, reviewing and analysing technical data; computerised analysis of data; research, design and development of computer software and computer programs; research, design and development of technologies for wireless communication; research, design and development of data processing systems; cloud-based software services relating to the measurement and monitoring of geophysical and geotechnical structures and their environments; monitoring and measurement of geophysical and geotechnical structures and their environments; monitoring of network systems; monitoring of computer systems and wireless communication systems by remotes access; surveying services; leasing and rental of scientific instruments and technical apparatus; installation, maintenance, servicing and repair of computer software and computer programs; all the aforesaid services also provided from a computer database and/or from the Internet (‘Opponent’s Goods and Services’)

   Endorsements:  CONVENTION PRIORITY CLAIMED: 15 FEBRUARY 2018, UNITED KINGDOM, NO.3290447 IN RESPECT OF WIRELESS COMMUNICATION SYSTEM TO ENABLE MEASUREMENT AND SENSING IN CLASS 9; SCIENTIFIC AND TECHNOLOGICAL SERVICES AND RESEARCH AND DESIGN RELATING TO MEASUREMENT AND INSTRUMENTATION APPLICATIONS IN CLASS 42.

10. The SGP identified the above registration as underpinning this ground of opposition. Evidently, the Opponent’s mark is registered by a person other than the Applicant and has a priority date which is earlier than 4 December 2018. The First and Second Requirements are satisfied. 

11. As regards to the Third Requirement, section 14 of the Act relevantly provides:

    Definition of similar goods and similar services 
    (2)  For the purposes of this Act, services are similar to other services: 

    (a)  if they are the same as the other services; or  
    (b)  if they are of the same description as that of the other services 

12. The guiding factors for determining if goods are similar are well settled and require a holistic consideration of: 

    [T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[3]

    [3] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.

13. These guiding factors have, subject to any necessary modification, been recognised as being equally applicable to determining whether services are similar.[4] Further, it is the notional scope of the goods and services which must be considered for the purposes of comparison under s 44 of the Act.[5]

    [4] Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

    [5] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

14. The Opponent has pointed out that the Relevant Goods and Services are the same as those goods and services to which the Opponent’s Mark is applied.

15. I acknowledge that the Relevant Goods and Services and the Opponent’s Goods and Services have been drafted in broad terms like ‘computer software’ without any specificity or limitations such as ‘computer software for stock tracking’. It is well established that the meaning and scope of the specification is to be resolved by considering the actual words used in the description of the Opponent’s Goods and Services as this is what the Opponent has achieved registration for.[6] Peripheral considerations, such as the nominated class number (i.e., class 38) or the Opponent’s actual use of the Opponent’s Mark are thus not determinative of the goods or services that may fall within the Opponent’s Goods and Services. This is because the Register of Trade Marks is to speak for itself.[7]

    [6] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [42]–[44] (Wilcox J).

    [7] Ibid [44].

16. The Opponent’s Mark has attained registration for certain items which are exceptionally broad in a notional context. This is most apparent in the first item of the class 9 specification for computer software and computer programs without any particularisation as to the subject matter of such goods. In its ordinary English sense,[8] members of the public would naturally understand ‘computer software’ to include all types of computer software. Similarly, a broad claim for wireless communication services and information, advisory and consultancy services relating to all the aforesaid services among the other broad claims in class 38 encompasses many of the Relevant Goods and Services of interest to the Applicant. The same applies to the class 42 services.

    [8] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71, [244] (Burley J).

17. It follows that all the Relevant Goods and Services are similar to the Opponent’s Goods and Services. Notionally, each of the goods and services which falls within the Relevant Goods and Services is either encompassed by the broad claims of the Opponent’s Goods and Services or would be considered goods and services of the same description given the Applicant’s similarly broad claims. The Applicant’s broad claims in its specification are capable of corresponding and encompassing any particularised description present in the Opponent’s Goods and Services. For example, ‘design of telecommunications apparatus; design of telecommunications installations’ would encompass the Opponent’s claim for ‘design of technologies for wireless communication’. Consequently, the Third Requirement is satisfied. 

1. Turning to the Fourth Requirement, the test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd: 

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [9] [1963] HCA 66, [12] (‘Shell’).

2. The Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd observed that: 

   A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[10]

   [10] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).

3. The trade marks are reproduced below: 

Trade Mark	Opponent’s Mark
GeoWAN	GeoWan

1. A comparison of the Opponent’s Mark and the Trade Mark creates an impression of total resemblance.[11] The trade marks are comprised of the same essential features being the expression GEOWAN. Whether rendered in lower case or upper case letters, the expression is visually, orally and conceptually the same. The Applicant has argued that because the second portion of the Trade Mark is in upper case letters it presents as the acronym WAN which has a distinct meaning being “Wide Area Network”. The Applicant states this changes how a consumer would understand and perceive the respective trade marks. However, I am not persuaded by this argument. The Opponent’s Mark also emphasises the ‘WAN’ portion of the mark by use of an uppercase ‘W’ which, just like the Trade Mark, breaks the expression into “GEO-WAN”.  I am satisfied there would be a real and tangible danger of confusion arising[12] between the respective trade marks. My finding is that the respective trade marks are substantially identical. As a result of this finding, the Forth Requirement has been satisfied and the ground of opposition under section 44 has been made out. However, this is not necessarily fatal to the application.

   [11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (Gummow J).

   [12] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

2. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the Applicant’s evidence.

3. The Applicant pointed out that the Trade Mark had been accepted under the provisions of subsection 44(4). The Applicant referred me to the past opposition proceedings between the parties in regards to the Opponent’s Mark. In Geowan Pty Ltd v Senceive Ltd[13] (‘the Previous Opposition’), Hearing Officer Smith considered the same trade marks of the parties. I note that much of the evidence in the Previous Opposition has also been reproduced and filed in the current matter before me.

   [13] [2020] ATMO 133 (11 August 2020)

4. In the Previous Opposition Hearing Officer Smith summarized the Applicant’s (then Opponent’s) evidence thus:

   The relevant claims/statements in Cara 1 and 2 can be summarised as follows:

   ·The Opponent (Geowan Pty Ltd) has, since its inception, offered and provided services relating to the development of a public and private Internet of Things (‘IoT’) networks. It is currently implementing a public network rollout around Australia. It has previously implemented networks for cattle infrastructure modelling, energy and electricity modelling, and geological monitoring.

   ·The Opponent’s business was previously operated by Excel Electrical Engineers Pty Ltd under the name AusLoRa, but following a cease and desist letter received in mid-2016 the Opponent’s predecessor in title commenced offering its services under the Opponent’s Trade Mark.

   ·The Opponent was incorporated on 31 August 2016 and the business previously operated by Excel Electrical Engineers Pty Ltd was transferred to it. Since its incorporation it has used the Opponent’s Trade Mark in connection with its business and services offered by it.

   ·The Opponent also offers IoT products through an online store via the ecommerce platform Shopify. The Opponent has participated in a number of industry events.

   ·The Applicant’s use of the Trade Mark for the Applicant’s Goods and Services directly overlaps with the services that the Opponent has offered since August 2016. In particular, in 2019 the Applicant incorporated a low-power wide-area network into its product which would directly overlap with the existing GeoWan product.

   ·In 2019 the Opponent experienced an instance of confusion when a potential client mistook the Opponent as a subsidiary of the Applicant.

   Cara 1 provides a list of the Opponent’s clients (including testimonials from those clients) as well as financial statements. The client list is not unimpressive but the financial statements indicate that the Opponent’s expenses and income prior to the filing date for the mark to be minimal. As discussed later in this decision, the Opponent’s evidence does not explain how the Opponent has provided a long significant set of services for a large number of clients, while simultaneously providing financial statements that indicate that the Opponent, in FY2017 and FY2018, received essentially negligible income and incurred negligible expenses. Cara 1 also provides copies of the Opponent’s websites and social media pages, but again the documentary evidence indicates that the number of visitors to the Opponent’s websites and the number of social media followers is very small.

5. The Applicant has provided this evidence and additional information in its evidence before me. Cara 1 reiterates the same background for the Applicant and states that on 30 August 2016, Mr Cara was copied-in to an email by his business colleague and subsequent co-director of the Company, Istvan Szecsei, which enquired with an industry partner about the appropriateness of the new trade mark, “GeoWAN”[14]. Subsequently, on or about September 2016, Mr Cara engaged a graphic designer, Creative Haus, to design a logo for the Company’s business.[15] From approximately 16 September 2016, the Company commenced using the logos depicted below[16]:

   [14] Annexure TC-03 accompanying Cara 1

   [15] Annexure TC-10 accompanying Cara 1

   [16] Annexure TC-12 accompanying Cara 1

6. I note from the Applicant’s evidence that the above logos are often used in conjunction with the Trade Mark. All of this evidence establishes that the Applicant commenced using its Trade Mark prior to the Relevant Date of the Opponent’s Mark. It is now for me to determine exactly what goods and services the Applicant’s evidence demonstrates it has used the Trade Mark on.

7. Mr Cara avers that the Applicant has used the Trade Mark continuously since August 2016 on all the Relevant Goods and Services. To this end, Mr Cara has provided Schedule A and B accompanying Cara 1. Schedule A breaks down the Relevant Goods and Services into the classes 9, 38 and 42 and numbers them as 1 (Class 9), 2 (Class 38) and 3 (Class 42). Then the broad categories of goods/services in those classes are assigned a letter designation which is broken down into the exact goods/services of the specification. Schedule B then lists the documents contained in each annexure accompanying Cara 1 and explains which goods and services are demonstrated as being used in the Annexure. A sample from Schedule B is as follows:

Tc-#	Title	Date	Relevance for Class and Goods/Services per Schedule A
15	Preparation Documents - IoT Cup	2017	Broad relevance of use.
16	Farming Smarter CRC Document	2017	1(a,b,c,e,g), 2(a,b,c), 3(b)

1. At face value Schedule B would appear to be helpful in establishing what goods and services the Trade Mark had been used on and when this had occurred. A careful consideration of the Annexures, and with reference to what Mr Cara stated the corresponding ‘Relevance for Class and Goods/Services per Schedule A’ was for the annexures, reveals a different story. Taking the sample above as an example, Annexure TC-16 contains a document which Mr Cara states demonstrated use of the Trade Mark on the goods and services listed in 1(a,b,c,e,g), 2(a,b,c), 3(b) of Schedule A. These are a lot of goods and services. I have reproduced a small portion of the goods listed as 1(a,b,c,e,g) in Schedule A which are:

   1.   Class 9:

   a. Goods for Networks

   i. Apparatus for linking computers into networks;
   ii. Apparatus for network communication;
   iii. Apparatus for telephone networks;
   iv. Apparatus for transmitting data by the telephone network;
   v. Apparatus for use in communications networks;
   vi. Communication devices for linking computer networks;
   vii. Computer apparatus for use in local area networks;
   viii. Computer apparatus for use with computer networks;
   ix. Computer network apparatus;
   x. Computer networking apparatus;
   xi. Connecting elements for communication networks;
   xii. Devices for use in the networking of computers;
   xiii. Electronic industrial network apparatus for high speed data transmission;
   xiv. Electronic networking apparatus for telephone systems;
   xv. Installations for use in forming computer networks;
   xvi. Installations for use in the networking of communications apparatus;
   xvii. Installations for use in the networking of computers;
   xviii. Integrated circuits for networks for use in identification;
   xix. Integrated service digital network installations;
   xx. Integrated services digital network components;
   xxi. Intercom key apparatus for connection to telephone networks;
   xxii. Intercom key terminals for connection to a telephone network;
   xxiii. Interface network modems; xxiv. Network controlling apparatus;
   xxv. Network management apparatus;
   xxvi. Network management control apparatus;
   xxvii. Network protection devices (electronic);
   xxviii. Network terminating apparatus (electric or electronic);

   b. Network Services

   i. Communications networks;

   ii. Computer installations (networks);

   iii. Computer network installations;

   iv. Computer network operating installations;

   v. Computer networking installations;

   vi. Computer networks;

   vii. Computer networks for the communication of data;

   viii. Computer networks for the processing of data;

   ix. Computer networks for the storage of data;

   x. Data networks; xi. Data transmission networks;

   xii. Networks for the interconnection of communication systems;

   xiii. Linked computer networks;

   c. Telecommunications Goods and Services

   i. Apparatus for automatically placing messages via telecommunications equipment;

   ii. Apparatus for telecommunications engineering;

   iii. Computer controlled telecommunications exchange apparatus;

   iv. Computer programs for the control of telecommunication apparatus;

   v. Computer programs for the control of telecommunication instruments;

   vi. Computer programs for use in telecommunications;

   vii. Digital telecommunications apparatus;

   viii. Digital telecommunications instruments;

   ix. Mobile telecommunications apparatus;

   x. Programmable telecommunication apparatus;

   xi. Telecommunications apparatus;

   xii. Telecommunications apparatus for diagnostic purposes;

   xiii. Telecommunications apparatus for interfacing purposes;

   xiv. Telecommunications apparatus for measuring purposes;

   xv. Telecommunications apparatus for transferring data to computers;

   xvi. Telecommunications apparatus for transmission purposes;

   xvii. Telecommunications apparatus for transmitting data for use with computers;

   xviii. Telecommunications apparatus for use with analogue signals;

   xix. Telecommunications apparatus for use with digital signals;

   xx. Telecommunications cable;

   xxi. Telecommunications devices;

   xxii. Telecommunications digital exchange apparatus;

   xxiii. Telecommunications equipment;

   xxiv. Telecommunications ground station apparatus;

   xxv. Telecommunications installations;

   xxvi. Telecommunications instruments;

   xxvii. Telecommunications machines;

   xxviii. Transmitters (telecommunication);

   xxix. Transmitting apparatus for telecommunications

   xxx. Memory apparatus for telecommunications network design;

   xxxi. Memory apparatus for telecommunications network management;

   xxxii. Telecommunications network management installations;

   xxxiii. Telecommunications networks;

   e. Sensors

   i. Electrical sensors;

   ii. Electronic sensors;

   iii. Sensors (measurement apparatus), other than for medical use

   g. Wireless Goods

   i. Wireless communication apparatus;

   ii. Wireless transmission apparatus;

   iii. Wireless transmission apparatus for remote control

2. These are a lot of goods and only a portion of what Mr Cara states the annexure demonstrates use of the Trade Mark on. When I turn to Annexure TC-16 it contains a copy of a document where the Trade Mark is used as a trade mark and the Applicant is described as being involved with Farming Smarter CRC by ‘supporting data capture points and providing data integration into user application’. The broad and ambiguous nature of the statement ‘supporting data capture points and providing data integration into user application’ does not assist me in determining the goods and/or services that the Applicant has actually used the Trade Mark on. It certainly does not support the claim made by the Applicant that it demonstrates use of the Trade Mark on such a broad range of goods and services such as those listed in paragraph 28 above.

3. Indeed, much of the Applicant’s evidence is plagued by the same ambiguity as Annexure TC-16. The Applicant’s evidence contains evidence of the Trade Mark in use but the exact goods and services it is being used on are vague. For example, the invoices provided do show the Trade Mark in use on the retail of a number of goods and services but not on the goods and services themselves which appear to be sold by the Applicant under the Trade Mark (retail services) but bearing the trade marks of other traders or services which are provided by third parties.

4. In the Previous Opposition, Hearing Officer Smith encountered much of the same evidence and the same issues, stating

   The Opponent has since 2016 operated an online store under the Opponent’s Trade Mark from the e-commerce platform ‘Shopify’ (and later Pinterest) through which it has sold sensors and other devices relating to the IoT. An issue that arises is whether the Opponent is using the Opponent’s Trade Mark for retail services relating to network products or whether the Opponent is using the Opponent’s Trade Mark for the products themselves. The evidence is unclear but in summary it does not appear that any of the products bear the Opponent’s Trade Mark and the sole reference to the products made using the Opponent’s Trade Mark comes from evidence that postdates the relevant date (Exhibit TC-06 to Cara 1). For that reason I have reached the conclusion that prior to the relevant date the Opponent has provided retail services under the Opponent’s Trade Mark but had not used the Opponent’s Trade Mark for goods of any sort. The Opponent also provides evidence of the revenue from its online store.

   The key issue that is apparent from the Opponent’s evidence is this: While the Opponent purports to have provided a large variety of services in the IoT industry to a variety of customers (and has provided customer testimonials to support this), its financial statements for the financial years ending in 30 June 2017 and 30 June 2018 indicate a trading income that is very limited. Indeed, it appears that the Opponent’s trading income arises entirely from revenue from its online store. Its expenses are minimal and indeed reflect a minor business that operates an online store and not a business that is involved in the construction of significant network infrastructure sites. The Opponent provides no explanation for this discrepancy, which was squarely raised in paragraph 40 of the Applicant’s Submissions.

   …

   In essence Cara 1 contains clear statements from the Deponent that the Opponent has used the Opponent’s Trade Mark, albeit often somewhat vague as to the exact services and the timeframe. This is supported by testimonials from customers and partners in the academic industry that refer (again somewhat vaguely through the use of words like ‘collaboration opportunity’, ‘working with the development team’) to services provided by the Opponent prior to the relevant date. However the exhibits to Cara 1 indicate that the Opponent received no revenue prior to the relevant date other than through the Shopify account and incurred none of the expenses one would expect of a provider of services such as ‘developing IoT solutions for the remote monitoring for the cattle and aquaculture industries’ or ‘supply hardware and network connectivity’ (which would likely involve some level of travel, accommodation and purchase of equipment as part of the creation of a LoRaWAN[17] network). While I appreciate that the Opponent may have been a start-up with limited expenses in a new and expanding industry, this issue is difficult to resolve.

   [17] Annexure TC-21 accompanying Cara 1 explains that LoRawan is an open source LPWAN (Low Energy Wide Area Network) that is able to be implemented by organisations such as Libraries

5. While the Applicant has sought to rectify the ambiguity in its evidence mentioned by the Hearing Officer in the Previous Opposition, the inclusion of invoices such as Annexures TC-42 to TC-80 accompanying Cara 1 and business documents such as Non-disclosure agreements in the evidence has provided limited clarity.

6. For example, the Applicant asserts to have used its Trade Mark on various telecommunication services that it offered for sale to the Australian public before the Opponent’s Priority Date. However, Annexure TC-41 accompanying Cara 1 is a copy of the Applicant’s Carrier License from the Australian Communication and Media Authority which is dated 30 April 2019 which is after the Opponent’s Priority Date. A carrier license is required if you are the owner of a network unit that is used to supply telecommunications carriage services to the public, such as telephony or internet. So it is unclear how the Applicant provided these services to the Australian public prior to obtaining the license. The evidence also remains ambiguous whether the Applicant has now provided these services though the obtainment of the license does indicate that the Applicant intends to supply telecommunications carriage services to the Australian public.

7. Ultimately, from the evidence I am able to determine that the Applicant used its Trade Mark before the Opponent’s Priority Date on:

   ·Femtocell gateways with respect to the creation of networks as part of the Internet of Things [18]

   ·Retail services relating to the sale of network products[19];

   ·Advisory and consulting services with respect to the creation of networks as part of the Internet of Things[20]; and

   ·Design of networks as part of the Internet of Things[21]

   [18] Annexure TC-07 accompanying Cara 1

   [19] Annexures TC-42 to TC-80 accompanying Cara 1

   [20] Annexures TC-17, TC-42 to TC-80 accompanying Cara 1

   [21] Annexure TC-82 accompanying Cara 1

8. Therefore, the evidence supports applying the provisions of paragraph 44(4) in relation to the following:  

Class	Specification
9	Femtocell gateways used to create networks as part of the Internet of Things
38	Advisory services relating to telecommunications; Consultancy services relating to telecommunications; Telecommunications advisory services; Telecommunications consultancy; all being in relation to the creation of networks for the Internet of Things
42	Design of telecommunications installations; Telecommunications technology consultancy; all being in relation to networks for the Internet of Things

1. The material before me is not sufficient to apply the provisions of paragraph 44(4) in respect of the remaining Relevant Goods and Services (‘Remaining Goods and Services’). Section 44(3) of the Act provides the Registrar to accept the Trade Mark on the basis of honest concurrent use or other circumstances.

2. In this case, the ambiguous evidence of use of the Trade Mark put forward by the Applicant does not allow the acceptance of the Trade Mark for the Remaining Goods or Services. In such circumstances and based on the evidence, it is not appropriate to apply the provisions of paragraph 44(3)(a) or paragraph 44(3)(b). Therefore, I must now consider the remaining grounds of opposition in relation to those goods and services to which I have applied the provision of section 44(4).

   Section 58 

3. Section 58 of the Act relevantly provides:

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

4. A prerequisite to establishing this ground is that the trade mark relied upon by the Opponent must have been used in Australia prior to the Priority Date and prior to any actual use of the Trade Mark in Australia by the Applicant.

5. For the reasons stated above when discussing the s 44 ground of opposition, I am satisfied that the Applicant’s first use of the Trade Mark in Australia in relation to the Remaining Goods and Services occurred in 2016 and 2017. The Opponent’s alleged first use of any trade mark in Australia is declared as being ‘since 2016’ according to Smith 3. In Smith 3, Mr Smith avers that the Opponent’s Australian distributor, Position Partners, advised that the Opponent’s FlatMesh branded goods entered the Australian marketplace on 17 August 2016. Additionally, Mr Smith avers that the Opponent’s equipment was offered to TMR Queensland on 26 June 2017 at the very latest. However, there is nothing in the Opponent’s evidence which supports this assertion by Mr Smith. Nor can I be sure that the Opponent’s Mark that was used or its ‘FlatMesh’ trade mark.

6. Indeed, the evidence put forward in Smith 2 provides sales data for the Opponent commencing in the year 2018. Additionally, Smith 2 outlines the quotes for goods that were made to Australian customers and these quotes also commence in 2018. Annexure BS-300 accompanying Smith 2 contains an additional declaration by Mr Smith dated 16 June 2020 along with annexures. This additional Smith declaration confirms and reiterates the Australia figures for sales and quotes made by the Opponent under the Opponent’s Mark as commencing in 2018. Given that 2018 is after the Applicant’s first use of the Trade Mark in Australia, this ground of opposition fails at the threshold.   

7. The section 58 ground of opposition has not been established.

   Section 60 

8. Section 60 of the Act provides:

   60  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 firstmentioned 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 firstmentioned trade mark would be likely to deceive or cause confusion. 

9. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   ·See particulars provided above pursuant to the section 58a ground.

   ·The applicants use through personal contact with potential customers and use through its international website (which was accessible from Australia) from at least 23 May 2018 pre-dates the 4 December 2018 filing date of the opposed application

10. I note that the Opponent did not pursue the s58a ground of opposition but for clarity it was particularised as follows:

    ·The applicants use through personal contact with potential customers and use through its international website (which was accessible from Australia) from at least 23 May 2018 pre-dates the 4 December 2018 filing date of the opposed application.

    ·The Opponent contacted a number of clients, including some in Australia, by a eBlast e-mail on 8 May 2018. The eBlast e-mail referenced the goods and services offered by the Opponent under the “GEOWAN” trade mark.

    ·In the earlier opposition proceedings between the Applicant and Opponent (where the roles were reversed), the Applicant sought to oppose registration of the Opponent’s mark on the basis under section 58, but this ground was unsuccessful thereby proving that the Opponent is the true owner of the trade mark.

11. To satisfy section 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

12. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in section 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[22]12F9 and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd: 

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[23]

    [22] [2000] FCA 1335, [81].

    [23] [1992] FCA 159, [118].

13. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed: 

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures. 

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth. 

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.[24]1

    [24] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

14. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:

    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 …[25]

    [25] [2000] FCA 1587, [91].

15. The Opponent submits that the Opponent’s Mark had acquired a reputation at the Priority Date based on the combination of its use in Australia and internationally.  

16. Annexure BS-1 accompanying Smith 1 contains a number of declarations and annexures filed in the Previous Opposition. In Annexure BS-1 there are a number of copies of product brochures dated from 2018 which demonstrate the Opponent’s Mark being used on various goods and services relating to the IoT. Additionally, Mr Smith avers that the Opponent engaged in strategic partnerships with large market-share holders in the off-the-shelf monitoring visualisation software marketplace. These goods and services are used within the surveying and remote monitoring industries both in Australia and internationally. Additional third party articles confirm that there were partnerships entered into with Trimble, SCCS and Position Partners[26]. However, a number of these articles are international publications with a small percentage of Australian readers.

    [26] Annexures BS-1 and BS-210 to BS-213 accompanying Smith 1

17. Smith 1 also details a number of Australian conferences and seminars that the Opponent’s Australian distributor, Position Partners, attended and/or presented at from 2018 until 2022[27]. Mr Smith provides an approximation of the number of attendees for the events. The Opponent has also attended a number of international conferences[28].

    [27] Annexures BS-1 and BS-214 to BS-218 accompanying Smith 1

    [28] Annexures BS-1 and BS-218 to BS-240 accompanying Smith 1

18. Smith 2 expands on the information provided in Smith 1 providing the Australian promotional activities and sales revenue from the sale of goods and services branded with the Opponent’s trade mark since 2018. The number of units sold verses the revenue raised in Australia from 2018 until 2022 are modest[29]. International sales of the Opponent’s Goods and Servies are larger than those sales in Australia but are still modest[30].

    [29] Paragraph 6 of Smith 2

    [30] Paragraph 11 of Smith 2

19. The promotional activities engaged in by the Opponent include meetings with potential customers, direct marketing emails and telephone call approaches to potential customers. The number of meetings, emails and phone calls by the Opponent or by its Australian Distributor, Position Partners, has been minimal[31]. While I acknowledge that the surveying and remote monitoring industries both in Australia and internationally are a more specialised marketplace than most and it appears that the Opponent has put considerable effort into being present at trade shows and conferences, I am not satisfied that the Opponent has demonstrated a reputation sufficient to establish the section 60 ground of opposition. Taken all together and at its highest, the majority of the Opponent’s promotional efforts and sales have taken place overseas rather than in Australia. The Opponent’s activities within Australia since 2018 have been minimal.

    [31] Paragraphs 16 to 22 of Smith 2

20. In order to establish a section 60 ground of opposition the opponent must demonstrate that it has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating use, the Opponent’s Mark needs to be ‘associated in the minds of the Australian public’[32] to such a degree that confusion is likely. The Opponent’s evidence falls short of establishing this sort of level of reputation particularly where the technologies of interest to both parties are versatile and have ever expanding applications across a large number of marketplaces. including the agriculture, mining and city planning sectors. These are large marketplaces within the Australian economy and the evidence does not satisfy me that the Opponent has established such a reputation in the Opponent’s Mark such that there would be deception or confusion in these Australian marketplaces.

    [32] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

21. The Opponent has accordingly not established its ground of opposition under section 60 in regards to the Remaining Goods and Services.

    Decision

22. Section 55 of the Act relevantly provides:

    55  Decision

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

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

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

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

    Note:          Forlimitationssee section 6.

23. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44 with regards to the majority of the Goods and Services.

24. Accordingly, I wrote to the Applicant on 30 January 2024 advising them that I would provide them with two weeks in which to delete the conflicting goods and services from the Trade Mark specification. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to registration pending any appeal from the Opponent. I also advised that if the Applicant did not amend the specification to delete those goods in conflict that I would be issuing a decision whereby the Trade Mark would be refused in its entirety. The Applicant has responded and requested an amendment that deletes the goods and services in conflict.

25. Accordingly I accept for possible registration trade mark application number 1973332 in respect of the amended specification.

    Costs

26. The Opponent has requested costs. However, as both parties have been successful to some extent I determine that each party should bare its own costs.  

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    29 February 2024