Sentia Australia Pty Ltd and Michael Cindric v Isentia Pty Limited

TRADE MARKS ACT 1995

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

Re:Opposition by Sentia Australia Pty Ltd and Michael Cindric to registration of trade mark application 1532028 (35, 41) - iSENTIA - in the name of ISENTIA Pty Limited

Delegate:	Michael Kirov
Representation:	Opponent: Julian Zmood of Counsel assisted by Steven Spadijer of Counsel, instructed by Alison Cairns of Colin Biggers and Paisley Applicant: Julian Cooke of Counsel assisted by David Larish of Counsel, instructed by Jessie Buchan of DLA Piper Australia
Decision:	2015 ATMO 88 Section 52 opposition: s 60 considered – insufficient reputation shown - registration may proceed.

Background

This is an opposition brought jointly by Sentia Australia Pty Ltd (“the Opponent Company”) and Michael Cindric (collectively “the Opponents”) 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 ISENTIA Pty Limited (“the Applicant”):

Application Number: 1532028

Trade Mark: iSENTIA (“the Opposed Mark”)

Filing Date: 18 December 2012

Services:Class 35: News clipping services; media monitoring services, namely, monitoring print media, television, radio, and other media for customer-specified topics, gathering relevant content on those topics, and providing documentation and analysis of that media content to others for business purposes; online media monitoring services using computer software to automatically monitor Internet websites and online publications for customer-specified topics and to capture relevant content on those topics, and providing documentation and analysis of that online content to others for business purposes; business services; marketing services; business and marketing research; business and marketing advisory services; research, analysis and evaluation of marketplace information; compilation of information into computer databases; research, analysis and evaluation of marketing, advertising and promotional activities; compilation and provision of business directories; consultancy relating to public relations; providing information and news in the field of business; provision of business information via a web site in the form of audio and video interviews, transcripts and other educational materials; transcription services; media buying advice, namely, advising the client how much media time, and at what times the client should be purchasing advertising; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions
Class 41: Entertainment services, namely providing a website featuring information on a wide range of topics and/or news articles; gathering of news for news agencies; news reporter services in the nature of news analysis and news commentary; dubbing services; event management services
(“the Claimed Services”)

Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

The Opponents filed a Notice of Intention to Oppose on 13 September 2013, followed by a Statement of Grounds and Particulars (“SGP”) on 11 October 2013 raising a single opposition ground corresponding to s 60 of the Act. The Applicant filed a Notice of Intention to Defend on 14 November 2013.
For their evidence, the parties rely on the following Statutory Declarations:[1]

Evidence in Support

▪ Michael Philip Cindric made 21 February 2014, with Exhibits 1 to 32 (“Cindric 1”)

Evidence in Answer

▪ John Andrew Croll made 3 July 2014, with Exhibits JAC-1 and JAC-2 (“Croll”)

[1] As explained in paragraphs 14-18 below, a request by the Opponents to rely on further evidence made on 5 June 2015 was refused.

Evidence in Reply

▪ Michael Philip Cindric made 10 September 2014, with Exhibits 1 & 2 (“Cindric 2”)

I will refer to the parties’ evidence as necessary below, but by way of background here set out in full the substance[2] of the SGP, which explains the relationship between the Opponents and the claimed basis for their opposition under s 60. I mention that the terms “the SENTIA mark”, “the SENTIA brand” and “the SENTIA trade mark”, which are referred to several times in the SGP, are not defined in the document itself and it is accordingly unclear whether any distinction between the terms is intended:
[2] The only other information in the SGP not reproduced here is administrative in nature, such as the contact details of the Opponents and their attorneys.
1. This document forms part[3] of the [SGP] lodged by [the Opponents] in opposition to trade mark application number 1532028.
[3] See footnote 2 above.
2. The [A]pplicant has applied to register the [Opposed Mark] in classes 35 and 42 [sic] [for the Claimed Services].
3. The priority date of the [opposed application] is 18 December 2012.
4. [The Opponent Company] ACN 129 064 044 is a[n] Australian proprietary company incorporated on 2 January 2008.
5. Mr Michael Cindric is the sole director of [the Opponent Company].
6. The [O]pponents submit that the SENTIA mark had acquired a reputation in Australia as at 18 December 2012 and, because of that reputation, the use of the [Opposed Mark] would be likely to deceive or cause confusion.
7. The SENTIA mark had acquired a reputation amongst a significant section of the public including relevantly purchasers of technology and technology related services as at 18 December 2012.
8. [The Opponent Company] and previously Mr Cindric as the nominee of [the Opponent Company] have been the registered proprietor of the Australian country level domain name since incorporation of [the Opponent Company] on 2 January 2008.
9. The SENTIA brand has been used continuously in Australia as a trade mark by [the Opponent Company] in respect of technology and technology related services since incorporation of that company on 2 January 2008 up to and including 18 December 2012 as evidenced by inspection of Wayback Machine snapshots for the website during that period, all featuring the SENTIA brand.
10. There have been approximately 40,000 unique visitors to the website in the period between 2 January 2008 and 18 December 2012.
11. The reputation in the SENTIA brand is evidenced by its top ranking on a Google search being performed for the search term “sentia”.
12. [The Opponent Company] has been nominated for a number of business awards including
(a) nominee in the 2012 City of Sydney Business awards
(b) nominee in the 2011 City of Sydney Business awards
(c) nominee and finalist in the 2009 City of Sydney Business awards
13. [The Opponent Company] has placed advertising promoting the SENTIA brand in a broad spectrum of industry publications and journals including Police Down Under, Harpers Nationwide Neighbourhood Response Magazine, The Drug And Alcohol Review, Emergency Services Report, Safety Awareness Journal, Children’s Safety Review, Occupational Health and Safety Journal, The Emergency Safety Gazette and National Crime Prevention.
14. [The Opponent Company] has also received industry press exposure including in StartupSmart.
15. [The Opponent Company] given its reputation developed in the SENTIA brand has attracted well known clients including Football Federation of Australia, AirTasker and OneBigSwitch.
16. [The Opponent Company] generates substantial revenue through the supply of SENTIA branded services to its customers.
17. [The Opponent Company] spends substantial amounts on Google Adwords, community events and other promotions in connection with the promotion of the SENTIA brand.
18. [The Opposed Mark] closely resembles [the Opponent Company’s] SENTIA trade mark because both trade marks contain or comprise the memorable and distinctive word SENTIA. Consumers who are familiar with the services provided under [the Opponent Company’s] trade mark are likely to be confused as to the source of similar services provided under the [Opposed Mark].
19. [The Opponent Company] often fields correspondence from the [A]pplicant’s customers and suppliers, and in one case, an employee of the [A]pplicant, on the mistaken belief that [the Opponent Company] is in fact the [A]pplicant.
20. The [A]pplicant has itself admitted to the likelihood of confusion by initiating discussions with the [O]pponents regarding a potential purchase of the SENTIA brand and/or discontinuance by the [O]pponents of the SENTIA brand in order to remove confusion from the marketplace.
21. Further and better particulars of the reputation of the SENTIA mark will be provided as part of the [O]pponents’ evidence in support including confidential revenue and advertising figures.
Mr Cindric, the founder and sole Director of the Opponent Company since its incorporation in January 2008, provides the following information in Cindric 1 about the company and its predecessor(s) in business from 2006. While Cindric 1 is awkwardly drafted, my understanding from the information reproduced below is that the Opponent Company’s relevant business was originally conducted from 4 March 2006 under a partnership arrangement before its transfer later that year to a company named Sentia Pty Ltd which was incorporated on 14 September 2006. The business was then presumably transferred to the Opponent Company following its incorporation in early 2008. Although the term “Sentia” is defined in paragraph 1 of Cindric 1 as “Sentia Australia Pty Limited” (that is, the Opponent Company), it is apparent, (given that company was not incorporated until 2008), that Mr Cindric at times also uses the term to refer to either the original partnership or the company Sentia Pty Ltd, or simply to the business conducted by the various entities. I have accordingly only replaced the word “Sentia” with the words “Opponent Company” in the extracts below where it is clear to me that is what Mr Cindric intended:
3. Sentia is a mobile and internet software development consultancy business which was started as a partnership in 2006 with 3 partners. I was a partner of the partnership which began to trade as Sentia from 4 March 2006. …
4. Sentia Pty Ltd was incorporated in Australia on 14 September 2006. …
5. The [Opponent Company] was incorporated in Australia on 2 January 2008. …
6. [Presumably due to inadvertence, there is no paragraph 6 in Cindric 1.]
7. In 2006 Sentia began offering software development and consultancy services, specialising in web and mobile applications. Sentia established itself in the market working with customers including Telstra, Redbull, Football Federation Australia, Kazaa, Airtasker, One Big Switch, Calumo, OurDeal, Tyro Payments, Pureprofile, Vow Financial, and within the media, government, finance and private sectors.
8. Sentia’s business has grown through quality of work and continued to expand adding more members to the Sentia team. Sentia today is an award winning development consultancy business known both in Australia and internationally for the quality of its services and results. The Sentia brand stands out in the market and well recognised [sic] by clients and the industry.
9. Sentia continues to offer software development and consultancy services as its business.
…
43. In the financial year 2006-2007 Sentia commenced with one employee, and experienced under $[a modest amount][4] in sales.
[4] To maintain confidentiality I have refrained from indicating the precise sum stated by Mr Cindric.
44. In the financial year 2007-2008 Sentia grew to two employees, and experienced 100% growth in sales.
45. In the financial year 2008-2009 Sentia grew to three employees, and experienced 100% growth in sales.
46 In the financial year 2009-2010 Sentia experienced less than 100% growth in sales. This slow down in growth is due to my purchase of my business partners’ interest in Sentia.
47 In the financial year 2010-2011 Sentia grew to 6 employees, and resumed rapid growth in sales.
48. In the financial year 2011-2012 Sentia grew to 9 employees, and continued rapid growth in sales.
49. In the financial year 2012-2013 Sentia reduced to 7 employees, and began to suffer a decline in sales.
50. In the financial year from 1 July 2013 to 21 January 2014 Sentia has been reduced to 4 employees and continued to experience a further decline in sales.
51. From 2012 onwards Sentia has retained its existing clients and a decline in sales has been due to a fall off in new clients contacting Sentia for work.
52. It is my opinion that the brand confusion between the Applicant and Opponent[s] is a significant cause in the decreased flow of new clients, enquiries and business to Sentia.
53. Due to the brand confusion, Sentia in the last two years has needed to increase its efforts and spend on marketing and Google marketing to reaffirm the Sentia brand associated with Sentia business [sic].
Mr Cindric does not indicate what he means by the term “the Sentia brand” used in paragraphs 8 and 53 quoted above. Based on his evidence as a whole I understand he is using the term to refer interchangeably to the trade marks SENTIA and SENTIA (Stylised) subject of the Opponent Company’s applications 1578909 and 1578910 in Class 42 and to which I will refer hereafter as “the Opponents’ SENTIA Mark” and “the Opponents’ SENTIA (Stylised) Mark” respectively, or collectively as “the Opponents’ s 60 Marks”, as the case may be. Details of these two applications, which were filed after the Opposed Mark and which are currently being opposed by the Applicant, are set out below:

Application Number: 1578909

Trade Mark: SENTIA

Filing Date: 13 September 2013

Services:Class 42: Computer software advisory services; Computer software consultancy; Computer software design; Computer software development; Computer software engineering; Computer software programming services; Computer support services (programming and software installation, repair and maintenance services); Design and development of computer software (for others); Development of computer software application solutions; Diagnosis of faults in computer software; Hosting of software as a service (SaaS); Installation and maintenance of computer software; Online provision of web-based software; Providing information, including online, about design and development of computer hardware and software; Provision of online non-downloadable software (application service provider); Software as a service (SaaS); Online provision of web-based applications; Web site design consultancy

Application Number: 1578910

Trade Mark:

Filing Date: Same as application 1578909

Services:Same as application 1578909

As for the Applicant, John Andrew Croll has been a Director and its Chief Executive Officer since 1999. He says in his declaration that:
6. The Applicant is a media intelligence company, and has operated as such since the early 1980s. The Applicant provides media intelligence to its clients by aggregating, searching, validating, and analysing media content, which analysis is provided to the Applicant’s clients to assist them in making better, more informed, business decisions. The vast majority of the Applicant’s clients are large corporations, or government departments.
7. The Applicant is a global leader in delivering crucial business intelligence, operating in 18 offices across Asia-Pacific and servicing over 5,000 clients around the world. …
8. The Applicant was founded in Sydney in 1982 by Neville Jeffress, an advertising businessman. In 1982, Mr Jeffress purchased a business called “New South Wales Country Press”. Two press clipping agencies were included in that purchase, which were then merged with Lynch Pidler Pty Ltd to form Neville Jeffress/Pidler Pty Ltd (i.e. the Applicant). …
9. In 1986, the Applicant acquired a majority interest in Media Monitors Australia Pty Ltd from Ian Parry-Okeden and partners. Since that time, the Applicant has operated as a media intelligence company.
10. In 1993, the Applicant changed its name to Media Monitors Australia Pty Ltd. At that time, the Applicant was still primarily monitoring traditional media forms.
11. By the early 21st century, the media landscape was changing rapidly. The Applicant entered the new online world by providing digital content. In addition, the Applicant acquired Asia’s leading online business intelligence company Brandtology and Australian social media monitoring firm BuzzNumbers to add monitoring of social media to its existing and traditional media monitoring.
12. Between 2004 and 2008 the Applicant expanded its operations through opening offices or merging with businesses in Singapore, New Zealand, and mainland China. Later, the Applicant acquired offices in Malaysia, Hong Kong, Philippines, Thailand, Indonesia and Vietnam.
13. Today, the Applicant’s operations involves [sic] over 1,100 people working together in 15 countries. The [A]pplicant continues to focus on its core services of interpreting complex data to provide insights to clients that enable those clients to make more informed business decisions.
…
19. The Applicant’s operations include monitoring media sources. As discussed above, this initially involved monitoring print media sources, but the Applicant’s operations have expanded to monitor online, broadcast and social media. To deliver these integrated media intelligence solutions to its clients, the Applicant’s platforms gather content in 12 languages from more than 5,500 mainstream media outlets, 55,500 online news sources per month and 3.4 million user-generated content sources, three of the largest being Facebook, Twitter and Weibo.
20. The nature of online media sources has enabled the Applicant to monitor more sources, and to conduct more sophisticated searches and analysis of the content located to provide more advanced media intelligence to its clients. In particular, the Applicant uses sophisticated software searching technologies to monitor online media. Results located by such technologies are then reviewed by the Applicant’s staff of media analysts to prepare reports and summaries of the media content located and reviewed. For example, the Applicant’s staff produce more than 12,000 broadcast summaries every day. The majority of the Applicant’s staff (that is, approximately 600 people) are media monitors and reporters who are tasked with preparing media summaries and intelligence reports.
…
23. By 2011, the Applicant had acquired or developed a number of brands for its various services. These included “MEDIA MONITORS”, “MEDIAPORTAL”, “BRANDTOLOGY”, “SLICE MEDIA” and “360M”. The Applicant’s management decided to create a new brand as an umbrella brand for all its various sub-brands to operate under. In late 2011/early 2012, the Applicant chose “SENTIA MEDIA” as the new umbrella brand, but in late 2012, decided to change this to “iSENTIA”.
24. The Applicant initially decided to change its name because the Applicant’s board (of which I have been a member at all material times) felt that “MEDIA MONITORS” sounded too much like a press clipping service. The board wanted the Applicant’s house brand to sound more like a media intelligence company. The Applicant’s marketing department suggested to me that the Applicant’s brand should be changed to “Sentia Media” because the Applicant understood “sentia” to be a Latin word with the meanings “I perceive”, “I understand”, and “I have an opinion”[5] and the Applicant’s management considered this to accurately reflect the nature of the Applicant’s media intelligence services.
[5] Although nothing turns on this, I note from my own knowledge of Latin that this is imprecise (the Latin word “sentio” would have the meanings mentioned) and is moreover inconsistent with the endorsement on the Applicant’s registration 1460800 which is detailed in paragraph 9 below.
25 Accordingly, the Applicant changed its name to Sentia Media Pty Ltd in February 2012 and commenced using the name and brand from that time. Around a year later, the Applicant’s board decided that the name “Sentia Media” still focussed too much on media and not enough on the Applicant’s intelligence services. Accordingly, the Applicant decided to drop the word “Media” from its name and to place the letter “i” at the beginning of the name, resulting in the name and brand “iSENTIA”.
…
27. The Applicant first used the “iSENTIA” brand in relation to its media intelligence operations in March 2013. …
28. Since that time, the Applicant has used the “iSENTIA” trade mark, and the “iSENTIA Logo”[6] in respect of the Applicant’s full range of media intelligence services. …
29. The Applicant has supported a number of events in Australia during its change of brand identity as mentioned in paragraphs 23 to 28 above. At Part C of Confidential Exhibit JAC-2 is a list of the Australian events the Applicant has supported as “Media Monitors”, “Sentia Media” and now “iSENTIA”, which also details the Applicant’s marketing and communications investment in these events.
30. I have read [Cindric 1]. I note that Mr Cindric indicates at paragraphs 7 and 9 … that the Opponent offers software development and consultancy services. The Applicant does not offer those services and does not intend to do so in the future.
31. In the ordinary course of my duties for the Applicant, I have not been aware of the Opponent or Mr Cindric.
32. I am not aware of any instances of confusion between the Applicant and the Opponent. Any such confusion would have been notified to me if any of the Applicant’s over 5,000 clients had reported this to the Applicant, or if any of the Applicant’s approximately 1,100 staff had become aware of it.
…
34. In late 2012 or early 2013, when the Applicant was changing its name and brand to “iSENTIA”, I was aware of the Opponent. At no time did I consider that there would be confusion between the Applicant’s brand (whether “SENTIA MEDIA” or “iSENTIA”) and the Opponent’s brand, primarily because the area of business in which each party operated was very different, namely media intelligence services on the one hand, and software development on the other.
[6] As to which see paragraph 8 below.

Mr Croll also provides details of the Applicant’s registration 1532046 for what he refers to as the “iSENTIA Logo”. This was filed on the same day and covers the identical services in Classes 35 and 41 as the Claimed Services of the opposed application, but was for some reason not opposed. The registered mark, which I will refer to hereafter as “the Applicant’s iSENTIA & Device Mark”, is shown below:

I note in passing an apparent inconsistency in examination of the Applicant’s iSENTIA & Device Mark and that of the Opposed Mark, namely that registration 1532046 carries no endorsement, whereas, as indicated in paragraph 1 above, the opposed application was accepted for registration bearing an endorsement indicating s 44(3)(b) of the Act was applied. In particular, the opposed application was accepted because of the existence of “other circumstances”, despite there being an earlier pending or registered trade mark in the name of another party considered to be “substantially identical” or “deceptively similar” and to cover “similar goods or closely related services”. The earlier mark, subject of registration 1460800 SENTIA MEDIA, was apparently owned by a party related to the Applicant at the time and its citation was overcome pursuant to s 44(3)(b) because the related party provided its formal consent to coexistence. Registration 1460800, which like registration 1532046 also covers the identical services in Classes 35 and 41 as the Claimed Services of the opposed application (and was not itself opposed), is now in the name of the Applicant. It is the earliest application or registration owned by the parties for a mark containing or consisting of the element SENTIA and is detailed below:

Registration Number: 1460800

Trade Mark: SENTIA MEDIA

Filing Date: 22 November 2011

Services:Class 35: Same as the Claimed Services
Class 41: Same as the Claimed Services

Endorsement: An English translation of the Portuguese language word SENTIA in the trade mark is ‘felt’. An English translation of the Catalan language word SENTIA in the trade mark is ‘I feel’.

Underpinning the Opponents’ sole ground of opposition under s 60 is their claim that use of the Opposed Mark for the Claimed Services was likely to deceive or cause confusion as at 18 December 2012 when the opposed application was filed (“the Relevant Date”) because of the then reputation of one or both of the Opponents’ s 60 Marks in the relevant Australian market.
I heard the matter as a delegate of the Registrar of Trade Marks on 15 June 2015 in Sydney. The Applicant was represented by Julian Cooke of Counsel assisted by David Larish of Counsel, instructed by Jessie Buchan of DLA Piper Australia. The Opponents were represented by Julian Zmood of Counsel assisted by Steven Spadijer of Counsel, instructed by Alison Cairns of Colin Biggers and Paisley. Both parties’ leading Counsel also filed written submissions.

Grounds of Opposition, Onus and Standard of Proof

As mentioned, the SGP raises a single ground of opposition corresponding to s 60 of the Act. To succeed, the Opponents bear the onus of establishing this ground.
I proceed on the basis that the standard of proof required is the ordinary civil standard based on the balance of probabilities[7] and that, as indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd,[8] the rights of the parties are to be determined as at the date of application, being the Relevant Date.
[7] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
[8] (1954) 91 CLR 592 at 595.

Opponents’ Application to Rely on Further Evidence

Before discussing the s 60 ground, I must mention a late application by the Opponents to rely on further evidence. When the Opponents’ attorneys filed Mr Zmood’s written submissions on the afternoon of Friday, 5 June (in accordance with my earlier directions), they also apparently filed two further declarations made by Michael Cindric on 4 June 2015, one of 10 paragraphs (“Cindric 3”) and one of 13 paragraphs with seven accompanying exhibits (“Cindric 4”). This was first brought to my (and to the Applicant’s attorneys’) attention by way of a somewhat oblique email from the Opponents’ attorneys sent at 2.48pm that afternoon, which is reproduced below:
With regard to the written submissions which the [Opponents are] due to file by 3.00pm today, please find attached:
1. Opponent’s Outline of Submissions
2. [Cindric 3]
3. [Cindric 4]
I confirm that these documents have also been uploaded to Objective Connect in accordance with your instructions of 28 May 2015.
Just after 5.00pm that Friday afternoon the Applicant’s attorneys emailed me (and copied the Opponents’ attorneys), as follows:
We refer to the Opponent’s email sent at 2:48 pm below and [Cindric 3 and Cindric 4].
We have not had an opportunity to review the above declarations in detail and take instructions on the content or filing of the declarations. However, it appears that the Opponent is seeking to file further evidence in this proceeding. There is no longer any provision in the [Act] or Regulations for the filing of further evidence. Accordingly [Cindric 3 and Cindric 4] cannot be included in evidence in this proceeding.
A cursory review of [Cindric 3 and Cindric 4] indicates that their content:
a.could have been filed by the Opponent’s deadline if the Opponent had prepared its evidence with due diligence and therefore does not justify being filed so late;
b.is dated after the date of the opposed application and is therefore irrelevant; and/or
c.is hearsay and is therefore of insufficient probative value to warrant consideration.
If the Opponent is requesting a late extension of its deadline to serve evidence in reply (which was 10 September 2014), its deadline to request such an extension expired several months ago, and it has in any event offered no basis for the grant of such an extension.
We request that the Hearing Officer decline to allow [Cindric 3 and Cindric 4] into evidence in this proceeding.
If the Hearing Officer is minded to consider allowing the evidence to be filed, the Applicant requests an opportunity to make further submissions after it has had an opportunity to consider the proposed evidence.
I responded by email to the parties that afternoon saying that I had not yet had a chance to look at Cindric 3 and Cindric 4, but that I would bear in mind the Applicant’s objection and comments and would provide a substantive response on Tuesday, 9 June. At around 7.20pm that Friday evening the Opponents’ attorneys emailed me (with copy to the Applicant’s attorneys) stating:
We refer to the email from the Applicant’s solicitors sent at 5:03pm today.
[Cindric 3] makes it clear that the Opponent’s application relates strictly to the extension of a period for filing evidence, under Regulation 9.18 of the Trade Marks Regulations 1995.
We ask that you refer to the supporting facts set out in paragraph 9 of the Declaration, which form the basis of the Opponent’s request under Regulation 9.18.
The Opponent has not claimed a right to file further evidence other than as permitted by Regulation 9.18.
To the extent that you wish to hear from the Opponent further (in reply) on the matters raised by the Applicant’s solicitors today, we would be pleased to respond, if and when required by you.
Should the Applicant be permitted to make further submissions in relation to the evidence to which the Declaration refers, the Opponent requests an opportunity to respond to those submissions.
On 9 June, having read Cindric 3, I responded to the Opponents’ attorneys by email (with copy to the Applicant’s attorneys) formally refusing their request for the Opponents to be allowed to rely on Cindric 4. That (self-explanatory) response is reproduced below:
I refer to your two emails below of 5 June last and the information contained in [Cindric 3].
I confirm my decision is to refuse the Opponents’ request to rely on [Cindric 4] in these proceedings.
I would firstly point out that regs. 9.16 and 9.18, as with Part 9 of the Regulations generally, solely concern oppositions to removal of a trade mark from the Register for non-use and do not have any relevance to these proceedings. The corresponding regulations for s 52 oppositions are found in Part 5 and in particular in regs. 5.14 and 5.15. In this regard I understand from paragraph 9(c) of [Cindric 3] that your client is requesting an extension of time to file evidence in support of the opposition pursuant (effectively) to reg. 5.15.
Reg. 5.14 details the initial time limits applicable to the filing of evidence in s 52 oppositions and reg. 5.15 then addresses the question of extensions as follows:
Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
"exceptional circumstances" includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
In your 7.20 pm email of 5 June last you referred to “the supporting facts set out in paragraph 9 of [Cindric 3], which form the basis of the Opponent’s request under [reg. 5.15].” The sole “supporting fact” appears to be that Counsel was retained by the Opponent some eight days ago, on 1 June 2015, and subsequently “advised that additional, relevant evidence was required”.
This on the face of it is manifestly inadequate to satisfy me that the Opponent has acted promptly and diligently at all times or that any special circumstances are present and, as mentioned, I refuse to allow the requested extension. (See Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013), an early decision by a delegate of the Commissioner of Patents on the equivalent (post-RTB amendments) reg. 5.9 of the Patents Regulations 1991.)
To summarise, then, I confirm that my consideration of the Opponents’ s 60 ground of opposition discussed below is based solely on the evidence contained in Cindric 1, Croll and Cindric 2, as indicated in paragraph 3 above.[9]

Discussion

[9] I can now also confirm that, having read Cindric 4 since completing my consideration of the Opponents’ s 60 ground, it contained nothing that would have altered my decision in any event.

Section 60

Particulars of the Opponents’ s 60 ground as contained in the SGP were set out at paragraph 4 above.
Section 60 of the Act itself 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.

As indicated earlier, the SGP variously refers to “the SENTIA trade mark” (or “the SENTIA mark”) and “the SENTIA brand” as underpinning the s 60 ground, but neither the SGP nor Cindric 1 or 2 further specify the precise mark or marks relied on. Mr Cindric does say at paragraph 21 of Cindric 1 that:
Sentia has been using its current logo since 2008, and is [sic] a recognized logo in the software development and consultancy industry. On 10 January 2011 Design Crowd Blog published an article titled “500 Good, Bad and Ugly Australian Startup Company Logos!” authored by Emma Egan. Sentia’s logo appeared at in [sic] “The Good Logos” list at number [17]. Annexed to this declaration is a copy of that article at Exhibit 11.
However the Opponents’ logo is not reproduced in the article forming Exhibit 11,[10] (notwithstanding, strangely, the “Good Logos” of the other 16 nominees are reproduced), and Mr Cindric does not otherwise say, or give an example of, what he means by the “current logo” or again mention it in his declarations. I note too that in his submissions on the Opponents’ behalf Mr Zmood only referred to “the Sentia trade mark” or “the trade mark SENTIA”. Nevertheless, some of the use shown in the exhibits to Cindric 1 is of the Opponents’ SENTIA (Stylised) Mark reproduced in paragraph 6 above and this is presumably the logo to which Mr Cindric is referring in paragraph 21 of Cindric 1. I in any event confirm I will take into account the combined effect that use of both of the Opponents’ s 60 Marks might have in assessing whether sufficient reputation is established to enliven the s 60 ground.
[10] As made available to me from the electronic copy uploaded to IP Australia’s “Objective Connect” facility by the Opponents’ attorneys on 21 February 2014.
What needs to be considered in the case of s 60 is the fair notional use the Applicant might make of the Opposed Mark in relation to the Claimed Services, essentially being, in Class 35, news clipping and media monitoring services, transcription services, a range of business, marketing and public relations services, providing advice on brand and social media strategies and on media buying and, in Class 41, entertainment services, gathering and reporting news, dubbing services and event management services. 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 purchasers of the Claimed Services in light of the reputation of the Opponents’ s 60 Marks as at the Relevant Date. As to the likely makeup of the potential purchasers involved, I note Mr Croll says in his declaration that since the early 1980s, “The vast majority of the Applicant’s clients [have been] large corporations, or government departments.”
As regards the nature of the reputation relied on, Heerey J noted in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[11]
…the reputation contended for by [an opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[12] 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.
[11] (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.
[12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 23 IPR 193.
Mr Cindric describes the services provided under the Opponents’ s 60 Marks since 2006 as “software development consultancy services, specializing in web and mobile applications” and says that the Opponents had been “working with customers including Telstra, Redbull, Football Federation Australia, Kazaa, Airtasker, One Big Switch, Calumo, OurDeal, Tyro Payments, Pureprofile, Vow Financial, and within the media, government, finance and private sectors.” [13] On the face of it, therefore, it does appear at least possible that the Applicant and the Opponents might in some instances provide their respective services to the same, (albeit relatively large and sophisticated), purchasers (such as, say, Telstra), although most likely directed at different people or sections within the organisations concerned. In this regard I imagine that the Opponents’ services would most likely be directed at IT personnel employed by their clients, whereas in the case of the Applicant Mr Croll says that:
21. The Applicant’s customer service staff consists of approximately 250 Asia-Pacific employees. These staff deal with the Applicant’s customers, the majority (perhaps 90%) of whom are the clients’ corporate communications or public relations personnel, and to a lesser extent, the clients’ marketing personnel.
[13] In, inter alia, paragraphs 3, 7 and 9 of Cindric 1. I mention that apart from the first three names in this list I am unfamiliar with any of the other organisations which Mr Cindric mentions, although I note he says at paragraph 23 that “‘Airtasker’ [is] one of the most successful start-ups in Australia in the last two years”, (that is, in the two years from February 2012 to February 2014 when Cindric 1 was made).
Mr Croll then goes on further to differentiate the Claimed Services from those provided under the Opponents’ s 60 Marks:
22. The Applicant has developed some of its own searching and analysis technologies. However, the Applicant only uses these technologies itself or within its group of companies. The Applicant does not sell or license the use of them to third parties (meaning parties outside the Applicant’s group of companies), nor does it intend to. The Applicant does not offer software development services, nor does it intend to. The Applicant offers a standardised, uniform service to its Australian clients.
…
30. I have read [Cindric 1]. I note that Mr Cindric indicates at paragraphs 7 and 9 of [Cindric 1] that the Opponent offers software development and consultancy services. The Applicant does not offer those services and does not intend to do so in the future.
31. In the ordinary course of my duties for the Applicant, I have not been aware of the Opponent or Mr Cindric.
…
34. In late 2012 or early 2013, when the Applicant was changing its name and brand to “iSENTIA”, I was aware of the Opponent. At no time did I consider that there would be confusion between the Applicant’s brand (whether “SENTIA MEDIA” or “iSENTIA”) and the Opponent’s brand, primarily because the area of business in which each party operated was very different, namely media intelligence services on the one hand, and software development on the other.
…
41. I confirm that the Applicant does employ staff in its IT department to manage its own IT systems. However, the Applicant does not intend to enter into the mobile and software development industry.
42. It is my understanding, based on [Cindric 1], that the Opponent is a small software development business, having a maximum of 9 employees in the financial year 2011-2012 and currently having around 4 employees, presumably all software developers.
43. It is also my understanding based on [Cindric 1] and my own experience, that the services provided by the Opponent are very different to the Applicant’s media intelligence services. Based on my experience in the media intelligence industry, consumers (both of the Applicant’s Services and the Opponent’s services) consider the Applicant’s Services to belong to an entirely separate industry to the Opponent’s services.
I note that in Cindric 2 Mr Cindric takes issue with some of Mr Croll’s above-quoted statements:
7. Paragraph 30: Mr Croll states that “...the Opponent offers software development and consultancy services. The Applicant does not offer those services and does not intend to do so in the future.” A key part of the Opponent’s business is the design, development and hosting of “Software as a Service” or “SaaS” platforms, both for its customers and as part of its “in-house” product/ service offering. The Applicant has stated, in a media release dated 19 May 2014, that “iSentia operates a market-leading Software-as-a-Service (“SaaS”) business ...” By holding itself out as a developer of SaaS platforms (albeit for its own products and services), the Applicant has added to marketplace confusion about which business activities are undertaken by the Applicant and which are undertaken by the Opponent. A copy of the Applicant’s media release of 19 May 2014 is annexed to this declaration at Exhibit 1.
8. Paragraph 31: I disagree with Mr Croll’s statement that “In the ordinary course of my duties for the Applicant, I have not been aware of the Opponent or Mr Cindric”, and believe that Mr Croll has been aware of Sentia and myself since at least February 2012. Beginning in February 2012, I had several conversations with Mr Croll as Chief Executive Officer of the Applicant, concerning an offer from the Applicant to purchase Sentia Pty Ltd (a company related to the Opponent) for a price of $50,000. Those conversations were instigated by Mr Croll, and at the time the Applicant was branded “Sentia Media”.

I accept that Mr Croll may be mistaken as to when his initial approach to Mr Cindric was made, but do not believe this to be of particular significance as far as the Opponents’ s 60 ground is concerned.
As for the exhibited media release by the Applicant, (which post-dates the Relevant Date by some 18 months), this concerns the lodgment of an Initial Public Offering Prospectus with the Australian Securities and Investments Commission in relation to then forthcoming listing of the Applicant on the Australian Securities Exchange and an offer to the public to purchase shares. The relevant statement on the first page of the media release, which is only partially quoted in Cindric 2, states in full that:
iSentia operates a market-leading Software-as-a-Service (“SaaS”) business that provides many of the world’s leading brands, companies, agencies, industry bodies and government with timecritical and highly relevant media intelligence to assist them to make more informed and timely business decisions. This service is underpinned by iSentia’s proprietary software and systems that capture, enrich and interpret data from over 5,500 mainstream media outlets, 55,500 online news sources and 3.4 million user-generated content sources (e.g. Facebook, Twitter and Weibo) in real-time, to alert over 5,000 iSentia clients to what is being said about their organisations, competitors and industry as the “news breaks”.
Based on this information I am unable to agree with Mr Cindric’s characterization that the Applicant is “holding itself out as a developer of SaaS platforms”, although I note Mr Cindric in any event concedes any such development is “for its own products and services” rather than as a developer of such software which is then on-sold to the Applicant’s clients. I note too that the Applicant in fact describes itself prominently on that same first page of the media release, under the heading “ABOUT US”, as “the Asia Pacific region’s leading business intelligence company, providing over 6,000 clients with media information, analysis and advice 24/7/365…filtering information from over 10,000 print, radio and television media outlets and over 250 million online conversations per month.” There is otherwise no mention in the media release of services in the nature of software development or related consultancy services, the provision of such services to my mind being, as Mr Croll says, quite different on the face of it from the Applicant’s stated activities or, indeed, from any of the Claimed Services in Classes 35 or 41.
As Mr Zmood noted in his submissions, of course, for the opposition to succeed it is not essential that the claimed reputation of the Opponents’ s 60 Marks be in the same field as the Claimed Services. I agree that, as he put it, “Confusion or deception may still be very likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.”
Mr Zmood is right to point out that the extent of the similarity between the parties’ marks is a significant factor in assessing the likelihood of deception or confusion in the relevant market. Moreover, I agree with his submission that, “Although not strictly a fancy term [being derived, ultimately, from Latin], it is an unusual word; ‘sentia’ is not part of the Australian vernacular.” I agree, too, that the unusual words “sentia” and “isentia” undoubtedly share, as he said, a “visual and aural similarity.”
I do however disagree with Mr Zmood’s submission, relying on an article published in 1997 in the Australian Journal of Linguistics, that “In the spoken form…the ‘i’ may be rendered indistinct or inaudible, due to the nature of the ‘i’ vowel sound in Australian English” and that “In written form, the ‘i’ may also fall away, thereby causing confusion with SENTIA amongst relevant consumers.” While the letter ‘i’ may perhaps be rendered relatively indistinct or inaudible where it is unstressed, (such as, say, with the second ‘i’ in a word such as “principle”), I do not believe that would be the case with the initial ‘i’ in the opposed iSENTIA mark. While neither party specifically raised the issue, I note both Counsel pronounced the Opposed Mark, as [ai`sentja], (with the initial ‘i’ stressed and rhyming with the word “pie”). I believe most Australians would do likewise, particularly given the prevalence of well known trade marks such as Apple Inc’s iPod, iTunes, iPad and iPhone trade marks and similar. Indeed, Mr Zmood himself highlighted Sargant LJ’s often quoted observation in London Lubricants (1920) Ltd’s Application[14] that:
…the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
[14] (1925) 42 RPC 264 at 279.
I think, then, that relevant consumers are perhaps less likely to confuse the parties’ marks by reason of their visual and aural similarities alone than might at first blush appear. (This would particularly be the case with the Opponents’ SENTIA (Stylised) Mark, to which Mr Zmood did not refer in his submissions.) That said, I do recognize the possibility that for some consumers of the Claimed Services familiar with the software development and associated consultancy services provided under the Opponents’ s 60 Marks then, as Mr Zmood put it:
Alternatively, the “i” (in iSENTIA), when encountered in written form is allusive to the Internet or to the software sector, which more readily infers an association with the opponent ([Cindric 2] at para 39).
I turn now to the claim that the Opponents’ s 60 Marks had garnered the kind of reputation contemplated by s 60 before the Relevant Date amongst potential consumers of the Claimed Services. This claim is essentially based on use for six years or so of the Opponents’ SENTIA Mark and use for some four years in the case of the Opponents’ SENTIA (Stylised) Mark. As far as proving reputation generally, Mr Zmood began his submissions by referring to the well known words of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:[15]
…reputation 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…
[15] (1992) 23 IPR 193 at 234.
While the value of his Honour’s remarks is not in question, I note they were made in the context of his discussion of a passing off action brought by an overseas trade mark owner who had not used its mark “within the forum” (that is, in Australia itself) and was instead relying on other factors in its attempt to establish a reputation in Australia. As such they do not appear to me to be directly relevant to the matter at hand where, as I understand the Opponents’ evidence, they are relying solely on use of their marks in Australia.
Mr Cooke, for his part, referred principally to the judgment of Kenny J in McCormick & Co v McCormick[16] (“McCormick”) and in particular to her Honour’s observation at [86] that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[16] (2002) 51 IPR 102.
While Mr Zmood also referred to McCormick, he did so emphasising Kenny J’s remarks at [85] relating to the “esteem component” attached to a mark rather than advertising expenditure or volume of sales, noting that her Honour had “cited the observation of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG[17] with approval”:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that 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 the esteem, or image, projected by that trade mark. The quantum of sales, 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 sponsorships, 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 sales 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 associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
[17] (1999) 47 IPR 423 at 436.
That said, the only (arguably) significant or supported information Mr Cindric provides pertaining to the reputation of the Opponents’ s 60 Marks as at the Relevant Date is contained in in Cindric 1 and is as follows:
15. Sentia has been listed on the The Australian Web Industry Association directory for just under 2 years [of which less than 10 months were before the Relevant Date]. Sentia has obtained clients through this directory listing.
17. From time to time, Sentia has placed advertisements in various publications, which promoted Sentia’s brand, and from which Sentia obtained clients. [Three examples (only) are exhibited, being advertisements for “software development services” placed in 2011 in The Industrial Relations & Safety Review, The Occupational Technologies Magazine and NSW Drug and Alcohol Review, all of which publications are apparently distributed solely in NSW.]
18. Sentia is recognised in the software development and consultancy industry for its outstanding work, and was a finalist in the 2009 Sydney Business Awards in the Information Computer & Telecommunications category. I was informed by Telstra, who organised the 2009 Sydney Business Awards that a client anonymously nominated Sentia for this award.
20. In 2006 the Sentia Partnership secured the registration of the domain name ‘ its inception, Sentia’s website, has received high volumes of web traffic. I have obtained a report titled ‘Audience Overview’ from Google Analytics. This report analyses the web traffic to For the period between 1 January 2006 to 6 February 2014 received 72,262 visits, of which 58,253 were unique visits. Annexed to this declaration is a copy of that report at Exhibit 19.
As regards the Google Analytics data in Exhibit 19, it is convenient here to note that the figures provided, while modest in any event, cover a period extending some 13 months after the Relevant Date. Moreover, as I understand the data, the average “visit duration” over the eight year period from 2006 to 2014 was 1 minute and 29 seconds, with only some 14,009 visitors (or around 1,750 visitors per annum) being repeat visitors.
Mr Cindric goes on in Cindric 1 to mention several claimed instances of actual confusion said to be as a result of the similarity between the parties’ trade marks, including receipt by the Opponents of emails or letters apparently intended for the Applicant. It must however be said that these instances are mostly undocumented and those few instances that are appear principally to have occurred during 2012 when the Applicant initially changed its name from “Media Monitors” to “Sentia Media”, that is prior to its having changed its name to “iSentia” in late 2012. Moreover I agree with Mr Cooke that most of this claimed “confusion” would have resulted from simple typing errors, having:
…nothing to do with any confusion as a result of the reputation in the [Opponents’ s 60 Marks] before the [Relevant] Date; see eg The BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34 at [39].
In general terms I agree too with Mr Cooke’s criticisms of the evidence of reputation of the Opponents’ s 60 Marks contained in Cindric 1. These centered on its mostly unsupported nature, on the modest sales figures disclosed and absence of any information concerning advertising expenditure, and the fact that much of the evidence refers to matters post-dating the Relevant Date.
To conclude, taking into account the nature and extent of the use the Opponents’ s 60 Marks appear to have enjoyed, the differences between the parties’ marks, the relative sophistication of the likely market for the Claimed Services and the differences between the Claimed Services in Classes 35 and 41 and the “software development consultancy services, specializing in web and mobile applications” for which the Opponents’ marks have actually been used, I am not satisfied the Opponents’ s 60 Marks had the requisite reputation contemplated by s 60 amongst potential consumers of the Claimed Services as at the Relevant Date.
The Opponents have accordingly not established their s 60 ground of opposition.

Decision

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.
I have found the Opponents have not established the sole ground of opposition listed in the SGP. Application 1532028 may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

In the event of success Mr Cooke sought an award of costs in the Applicant’s favour. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponents as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov
Hearing Officer
Trade Marks Hearings
21 September 2015

[2015] ATMO 88

21 September 2015

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