Sitecore Corporation A/S v Salesforce.com, Inc

[2014] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by SITECORE CORPORATION A/S to extension of protection to Australia of trade mark 1423394(42) - SITEFORCE (IR No. 1073972) - filed in the name of salesforce.com, inc.

Delegate:

Heath Wilson

Representation:

Opponent: Khajaque Kortian of Spruson & Ferguson.

Holder: Siobhan Ryan of counsel instructed by Carly Mansell of Davies Collison Cave.

Decision:

2014 ATMO 37

Opposition under Regulation 17A.34 - grounds of opposition pressed under sections 44, 60 and 42(b) of the Act – IRDA protection to be extended to Australia - costs awarded against Opponent.

Background

1. On 5 April 2011, a US company salesforce.com, inc (‘the Holder’) applied for an extension of protection to Australia in relation to an international trade mark registration. The details of the International Registration Designating Australia (‘IRDA’) are:

   Trade Mark No: 1423394

   IR No. 1073972

   Trade Mark: SITEFORCE (‘the Trade Mark’)

   Classification of Services:

   Class 42: Providing temporary use of a web-based software application for users to create websites and portals (‘the designated services’)

2. The IRDA was examined under the Trade Marks Regulations 1995 (‘the Regulations’) and the Trade Marks Act 1995 (‘the Act’) and advertised on 8 September 2011 in the Australian Official Journal of Trade Marks as accepted for possible extension of protection to Australia.

3. On 8 December 2011, a Danish company ‘Sitecore Corporation A/S’ (‘the Opponent’) filed a notice of opposition to the IRDA nominating most of the available grounds of opposition under the Act. Reg 17A.31 of the Regulations relevantly provides that protection of an IRDA may be opposed on any of the grounds on which a domestic trade mark application may be rejected (s39 to 44) and also on the grounds of opposition set out under sections 58 to 61 and 62A of the Act. A notice of provisional refusal of protection based on the opposition was subsequently issued on 13 December 2011.

4. The evidence stages for the opposition to the IRDA followed, comprising:

Evidence in Support

• Statutory declaration of Philipp Alexander Heltewig (Managing Director of the subsidiary of the Opponent) dated 18 September 2012 with exhibits PH-1 to PH-18.

Evidence in Answer

• Statutory declaration of Alica Del Valle (US Trademark Counsel of the Holder) dated 16 August 2013 with exhibits ADV-1 to ADV-10.

Evidence in Reply

• Statutory declaration of Elizabeth Kathleen Swan (Solicitor for the legal representatives of the Opponent) dated 26 November 2013 with exhibits ES-1 to ES-5.

1. The written submissions later filed by the Opponent indicated that the grounds of opposition that would be pressed at the hearing would be based on sections 42(b), 44 and 60 of the Act. It was accepted by the parties, but I mention to avoid any doubt, that the Opponent bears the onus of establishing a ground of opposition according to the civil standard of the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051

2. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 14 March 2014. The Opponent was represented by Khajaque Kortian of Spruson & Ferguson who attended via telephone. The Holder was represented by Siobhan Ryan of counsel instructed by Carly Mansell of Davies Collison Cave, who both appeared in person.

3. At the outset I will address the ground of opposition that received the most attention at the hearing and turn to the remaining grounds should it become necessary. That ground of opposition was section 44 of the Act.

4. Section 44 of the Act relevantly provides:

Section 44: Identical etc. trade marks

1. …

2. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

3. In pursuit of the ground of opposition under section 44, the Opponent relied on its own four trade mark registrations, extracted below:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
1239213	sitecore	14 May 2008	Class 9: Application software excluding web content management software, intranet portal software, and applications and modules for these types of software
1271725	SITECORE	11 Nov 2008	Class 35: Advertising, marketing and promotional services including provision of these services via a global computer network; recruitment and placement services; employment agency services; personnel management consultancy services; compilation and provision of business information including business statistics; compilation and provision of directories in this class including jobs directories and business directories; business directory services; provision of information, advisory and consultancy services in relation to the aforementioned services
1274019	SITECORE	25 Nov 2008	Class 9: Computer software; computer software for managing online content; computer software for managing and editing information contained on the Internet, intranet, and extranet sites; computer software for development of Internet applications Class 35: Business management; business administration; office functions Class 36: Financial affairs Class 38: Telecommunications Class 42: Research, design and development of computer software
1274024	25 Nov 2008	Class 9: Computer software; computer software for managing online content; computer software for managing and editing information contained on the Internet, intranet, and extranet sites; computer software for development of Internet applications Class 35: Business management; business administration; office functions Class 36: Financial affairs Class 38: Telecommunications Class 42: Research, design and development of computer software

1. Under the aforementioned section 44 ground of opposition, the onus is on the Opponent to highlight the existence of a trade mark with an earlier priority date that is substantially identical with or deceptively similar to the Trade Mark and that has a specification containing similar services or closely related goods. As all of the trade marks of the Opponent have earlier priority dates to the IRDA, I will turn to whether the designated services of the IRDA are similar to the Opponent’s services and/or closely related to the Opponent’s goods.

2. The definition of “similar services” in section 14 of the Act includes services which are the same or of the same description as the other services. With regard to the expression ‘closely related’, French J in Registrar of Trade Marks v Woolworths Ltd[2] noted:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related". As its use in the Mathys Committee Report indicated however, it is a term of wider import than "similar" and can apply to the relationships between competing services as well as between goods and services - Cmnd 5601 par 70.

   [2] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411 at 424.

3. For convenience, I will restate here that the Holder claims protection in Australia of the IRDA in relation to providing temporary use of a web-based software application for users to create websites and portals.

4. As set out earlier, the Opponent is the owner of four SITECORE trade mark registrations which reside in classes 9, 35, 36, 38 and 42. I will now address whether the goods in class 9 are closely related to the Holder’s services in class 42.

5. Any argument that the exclusion in the specification of the Opponent’s earliest trade mark (no. 1239213) for web content management software, intranet portal software, and applications and modules for these types of software precludes a likelihood of confusion between that trade mark and the IRDA, is negated by the existence of the Opponent’s other trade mark registration (1274019) which clearly includes computer software; computer software for managing online content; computer software for managing and editing information contained on the Internet, intranet, and extranet sites; computer software for development of Internet applications. Those goods and the designated services go hand in hand and are likely to be supplied by the same companies and to serve a similar purpose. I find that the Holder’s services are closely related to these goods.

6. In addition, the latter two of the Opponent’s trade marks are registered for services in class 42 namely Research, design and development of computer software. Those services of the design and development of computer software are not the same as, but are of the same description as the provision of a web-based software application that is offered to consumers to enable them to design and develop websites and portals. While there may be certain differences as to the purpose of such services (one is a service to design software and other is a service to design websites and portals), their nature and the trade channels through which they would be bought and sold are similar.

7. In brief, I find that there is the required nexus between the services of the IRDA and some of the goods and services in the specification of the Opponent’s trade marks. Therefore, this matter will be determined by a consideration of whether the trade marks of the parties are deceptively similar. It was not argued by Mr Kortian (and I concur) that any of the Opponent’s trade marks are substantially identical to the Trade Mark subject and so the question is: are they deceptively similar? A number of factors inform this question which I will detail below.   

‘Deceptively Similar’

1. Section 10 of the Act provides a definition of the expression ‘deceptively similar’, however that definition does not greatly assist this determination. The more useful guidance appears in common law precedent including the oft-quoted decision in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[3] where Dixon and McTiernan JJ made it clear that:

   The marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).

2. At the hearing, both Ms Ryan and Mr Kortian quoted various decisions from the courts and from delegates of the Registrar of Trade Marks involving findings of whether two trade marks were deceptively similar. Mr Kortian referred to cases where the trade marks were found to be deceptively similar such as: ‘BAND>>IT’ and ‘Band-Aid’[4], ‘Next Generation (Logo)’ and ‘Next’[5] and ‘CashPal’ and ‘Paypal’[6].

   [4] Johnson & Johnson v Kalnin (1993) 26 IPR 435.

   [5] Next Retail Ltd v Marlin Australia Pty Ltd (2010) 90 IPR 554.

   [6] PayPal Inc v Credibanc Pty Ltd (2011) 93 IPR 561.

3. Ms Ryan, for the Holder, referred me to the following cases where two trade marks were found not to be deceptively similar: ‘TIMBERLAND’ and ‘TIMBERLINE’[7]; ‘TIMBERLAND’ and ‘TIMBERTOWN’[8]; ‘RAIN KING’ and ‘RAIN MASTER’[9]; ‘SONOVIST’ and ‘SONOVUE’[10]. In terms of the cases quoted to me, Windeyer J put it aptly in Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application[11]:

   Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.

   [7] The Timberland Company v Woolworths [2005] ATMO 12

   [8] The Timberland Company v Alison Waite [2012] ATMO 12

   [9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538 (HC).

   [10] Bracco International BV v Schering Ag (1999) 47 IPR 381.

   [11] Re Bali Brassiere Co Inc's Registered Trade Mark and Berlei Limited's Application [1968] HCA 72; (1968) 118 CLR 128 at 139

4. Having made that point, some general factors may be extracted from the reasoning in the various decisions. Any visual comparison of the trade marks must be made in light of the fact that the consumer would not have the trade marks in front of them for comparison. An aural pronunciation of the two trade marks should be considered in this matter despite my view that it is less important for services offered to the consumer over the internet. The sound of the hard consonant “C” in the Opponent’s trade marks cannot be overlooked and similarly the “s” sound in the word ‘force’ at the suffix of the Trade Mark is a further point of differentiation.

5. Both parties accepted that in most cases, the prefix of a trade mark is the most importation for comparison. Reference was made to the decision of the United Kingdom Court of Appeal in London Lubricants (1920) Ltd’s Appn[12] where it was observed:

   [T]he tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [12] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279.

6. Furthermore, the word ‘Site’ is understandably common for website related products and services. Where elements within a trade mark are common to the trade, less regard may be paid to those elements for the purposes of comparison. [13]  However, as the word forms the prefix and constitutes almost half the Trade Mark it cannot (and should not) be entirely ignored but rather accorded appropriate weight. The addition of the word ‘CORE’ or ‘FORCE’ does not alter the meaning of the prefix in either trade mark.

   [13] See ‘Frigiking’ Trade Mark [1973] RPC 739.

7. The fact that the trade marks in question comprise the known English words ‘CORE’ and ‘FORCE’ also affects the interpretation of the trade marks and how the ordinary consumer would recall them. Mr Kortian argued that ‘CORE’ and ‘FORCE’ have related meanings – that is, they both have connotations of strength. I am not satisfied by that interpretation and I give it little weight. In relation to software related products and services, the word ‘core’ is likely to be given its most common meaning and interpreted as the centre or innermost part of something (e.g. a site or website). The word ‘force’ is likely to be interpreted as strength or power. As a result, both words have their ordinary recognizable meanings or connotations which would differ in the eyes of the relevant consumer.   

8. Even taking the scope of the designated services at their broadest, I am still of the view that these services would not be impulse purchases but instead target  consumers with a certain level of technical knowledge necessary to create websites and portals via a software application. It is possible that the scope of the specification includes the provision of basic application software for mobile devices, but even in that event the relevant consumer of that service would likely be one that takes care in selecting an appropriate product.

9. If there is a slight possibility of a consumer being deceived or confused by misremembering the trade marks, I am of the view that it does not rise above that level to there being a ‘real tangible danger’[14] of confusion. On an overall visual, aural and contextual comparison of the trade marks I find that they are not deceptively similar. The ground of opposition under section 44 of the Act has therefore not been established.

   [14] Reckitt & Colman (Australia) Ltd. v. Boden [1945] HCA 12; (1945) 70 CLR 84, at pp 94, 95; Sym Choon & Co. Ltd. v. Gordon Choon Nuts Ltd. [1949] HCA 54; (1949) 80 CLR 65, at p 79.

Section 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 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.

1. To paraphrase the above section (with reference to the particulars of the current opposition), the Opponent firstly bears the onus of establishing that a reputation in its trade mark existed in Australia as at the priority date of the IRDA (being 5 April 2011). Secondly, as a result of that demonstrated reputation, there must be a likelihood of deception or confusion resulting from the use of the IRDA in the Australian marketplace.

2. Section 60 does not require the trade marks be deceptively similar or for the respective goods/services to be similar (although the required reputation of the Opponent’s trade mark must be greater in the absence of one or both of these factors). The level of reputation in the Opponent’s trade mark needs to be amongst a significant[15] number of purchasers but in Le Cordon Bleu BV v Cordon Bleu International Ltee[16] it was made clear that:

   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.

   [15] Re Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97.

   [16] (2001) 50 IPR 1; [2000] FCA 1587 at 20.

3. The Phillipp Heltewig declaration indicates that the Opponent first commenced business in Copenhagen, Denmark in 2001 and in Australia from December 2004. The overseas Opponent has an Australian subsidiary, Sitecore Australia Pty Ltd (“Sitecore Australia”). However, it was not until July 2007 that Sitecore Australia was incorporated. The Opponent’s corporate factsheet annexed to the declaration is from its international website ( and indicates that the Opponent’s trade mark has a global presence (including a presence in Australia). At the time of making the Heltewig declaration, the physical presence of the Opponent’s business in Australia consisted of four offices, 24 employees and around 200 customers Australia-wide.  

1. The Opponent has made mention of notable Australian customers such as the Australian National Audit Office (‘ANAO’), Mazda Australia, Canon Australia and the Rock Building Society. Involvement with Mazda Australia appears to have occurred in 2010 and with Canon Australia before the priority date. However, the website for ANAO utilizing the Opponent’s software was not launched until March 2011- less than a month before the priority date of the IRDA. Similarly the website for the Rock Building Society was launched in April 2011.

2. There is evidence of industry recognition within Australia in the form of an Australian award from CeBIT.AU - an annual Information and Communications Technology Event held in Australia. In addition, the Opponent has taken part in industry exhibitions from July 2010 to the priority date of the IRDA. Despite the fact that the Opponent appears to have taken an active role in some of the exhibitions, the attendance figures were more often than not, negligible. The supplied advertising figures are not insubstantial and it appears from the evidence that the majority of the expenditure was conducted via online promotions. As I have already noted the Opponent’s website and online promotions cater for a global audience (which includes Australia) and the advertising figures need to be examined in light of that fact.

3. At the time the evidence was compiled, the Opponent had around 200 customers throughout Australia. Although some of those customers are noteworthy, it appears that the majority of them are fairly new customers and in terms of an established reputation as at the priority date in the trade marks, I can only assume that on 5 April 2011 the amount of customers numbered fewer.

4. I am satisfied from the Opponent’s evidence that the SITECORE trade mark(s) of the Opponent had a reputation in the international marketplace as at the priority date of the IRDA. The argument that the reputation and goodwill attained in the SITECORE brand overseas had ‘spilled over’ to the relevant Australian customer base is in line with the comments of Justice Lockhart in Conagra Inc v McCain Foods (Australia) Pty Ltd[17]:

   It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on.  Goods and services are often preceded by their reputation abroad.  They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

   [17] Conagra Inc v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193 (at 233-4).

5. Even if knowledge of the Opponent’s overseas activities prior to 2007 did spillover to Australia prior to the availability of its relevant goods and services here, I am not satisfied from the evidence before me that such ‘spillover’ reputation was at all significant. The dollar amount of the sales figures in Australia, while increasing over the years since the first use of the Opponent’s trade mark, needs to be considered in light of the price range of the Opponent’s products and services. The high cost of the Opponent’s products/services means that any prospective customers would take particular care in selecting services of website design and development. As a result, the differences between the Opponent’s trade mark and the Trade Mark would be all the more likely to be noted by prospective consumers. 

6. Ms Ryan argued that any reputation the Opponent may be able to establish would not be of the expression ‘SITECORE’ solus, but use of the word ‘SITECORE’ with the circular device seen in trade mark registration no. 1274024. Even if this were true, I am not convinced that it would make a difference to the outcome of the ground of opposition under section 60 of the Act. The addition of the device would do little to differentiate the Trade Mark from the Opponent’s trade mark if the Opponent were otherwise able to demonstrate a significant or substantial reputation in Australia at the relevant time.

7. After approximately four years of use in Australia, the Opponent has demonstrated a certain reputation in its trade mark(s) in Australia following an established reputation globally. However, I am not satisfied that the Opponent has discharged the onus of establishing such a reputation in its trade mark(s) as at the priority date that the use of the Trade Mark in Australia would be likely to deceive or cause confusion. Accordingly, I find that the ground of opposition under section 60 of the Act has not been established.

Section 42(b): Trade mark use contrary to law

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

    (b)  its use would be contrary to law.

1. The Opponent pressed the contrary to law ground on the basis that it would amount to misleading and deceptive conduct and accordingly be a breach of the Australian Consumer Law.[18] The Opponent’s arguments for the proposition that the use of the Trade Mark would be contrary to law were identical to those factors argued under the section 60 ground. The similarity of the Opponent’s and the Holder’s trade marks, the use and reputation of the Opponent’s trade mark(s) in respect of its goods and services, and the resultant likelihood of deception of confusion have already been considered earlier in my decision.

   [18] Section 18 of the Competition and Consumer Act 2010.

2. I have already addressed the reputation aspect of the Opponent’s argument under the section 60 ground of opposition which concerns a level of ‘deception or confusion’ rather than whether the use of the Trade Mark amounts to conduct which is likely to ‘mislead or deceive.’ Conduct which is likely to mislead or deceive is a higher threshold[19] than to use which is likely to deceive or confuse under section 60. In addition, section 42(b) requires the Registrar to be satisfied that the use of the Trade Mark ‘would, not could’ be contrary to law.[20] It follows that there are not a reasonably significant[21] number of potential purchasers in Australia that are aware of the Opponent’s products or services and likely to be misled or deceived by the Holder’s use of the Trade Mark. As a consequence, I cannot be satisfied that the use of the Trade Mark would be contrary to law.    

   [19] See Parkdale Custom Built Furniture Pty Ltd v Puxu (1982) 149 CLR 191 per Gibbs CJ at p100.

   [20] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].

   [21] Weitmann v. Katies Ltd (1977) 29 FLR 336, 343.

3. The ground of opposition under section 42(b) of the Act has not been established.

Decision

1. As at the time of filing the notice of opposition to the IRDA, regulation 17A.34 stated: 

   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

   (2)The Registrar must tell the International Bureau of his or her decision.

2. The Opponent has not established a ground of opposition under the Act. I therefore direct that under the provisions of regulation 17A.34 (1)(b) protection of IRDA no. 1423394 (IR No. 1073972) be extended to Australia with respect of all the services listed in the IRDA one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court.

Costs

1. The Opponent has not established a ground of opposition under the Act. I award costs against the Opponent to the extent allowed under Schedule 9 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

5 May 2014