Societe Internationale De Telecommunications Aeronautiques v Aerocom Technology Pty Ltd
[2015] ATMO 102
•22 October 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Societe Internationale de Telecommunications Aeronautiques to registration of trade mark application 1446315 (9, 37, 38, 42) - AEROCOM - in the name of Aerocom Technology Pty Ltd.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Chris Doidge of Counsel instructed by Virginia Beniac-Brooks of Marks & Clerk Australia Applicant: Written submissions prepared by Forum Law Solicitors |
| Decision: | 2015 ATMO 102 Section 52 opposition – grounds pursued under ss 44, 60 and 58 – parties’ trade marks deceptively similar in respect of similar or closely related goods and services – honest concurrent use of applied-for trade mark not established – ground of opposition under s 44 established – registration refused. |
Background
This decision is pursuant to an opposition by Societe Internationale de Telecommunications Aeronautiques (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of application number 1446315, in the name of Aerocom Technology Pty Ltd (‘the Applicant’). Relevant details of the application as it currently stands are below:
Trade Mark: AEROCOM (‘the Trade Mark’)
Filing Date: 2 September 2011
Goods and Services:
Class 9: Computer design hardware; computer hardware; computer hardware for use in computer-assisted software engineering; computer programs for testing computer hardware; data communications hardware; monitors (computer hardware); computer software downloaded from the Internet; data recorded electronically from the Internet; digital music (downloadable) from the Internet; digital music (downloadable) provided from MP3 web sites on the Internet; application software; communication software; communications processing computer software; computer graphics software; computer programs (downloadable software); computer software; computer software (programs); computer software downloaded from the Internet; computer software for accounting systems; computer software for business purposes; computer software for communicating purposes between microcomputers; computer software packages; computer software products; computer software programs; data communications software; education software; installations for the remote loading of computer software; installations for the remote unloading of computer software; network management computer software; packaged software; broadband data interconnecting computer installations; none of the foregoing being telecommunications equipment for use in the transport industry or for use in relation to telecommunications between personnel in the transport industry.
Class 37: Computer support services (installation repair and maintenance of computer hardware and peripherals); installation and repair of computer hardware; installation of middleware (computer hardware); installation, maintenance and repair of computer hardware; installation, maintenance and repair of middleware (computer hardware); maintenance and repair of computer hardware; maintenance services relating to computer hardware.
Class 38: Internet cafe services being the provision of telecommunications access to the Internet; Internet portal services; Internet service provider (ISP) services; providing Internet chatrooms; provision of user access to the Internet; VOIP (voice over internet protocol) services; webcasting a television programme via the Internet; VOIP (voice over internet protocol) services; none of the foregoing being in relation to telecommunications between personnel in the transport industry.
Class 42: Advisory services relating to computer hardware; computer security services (design and development of secure computer hardware, software and systems); computer support services (computer hardware, software and peripherals advisory and information services); consultancy in the field of computer hardware; design and development of computer hardware (for others); design of computer hardware; information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); providing information, including online, about design and development of computer hardware and software; rental of computer hardware; Internet cafe services (computer rental); providing search engines for the Internet; advisory services relating to computer software; computer security services (design and development of secure computer hardware, software and systems); computer security services (programming and software installation repair and maintenance services); computer software advisory services; computer software consultancy; computer software design; computer software development; computer software engineering; computer software programming services; computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); consultancy in the field of computer software; design and development of computer software (for others); design of computer software; development of computer software; development of computer software application solutions; development of software; diagnosis of faults in computer software; hosting of software as a service (SaaS); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); installation and maintenance of computer software; installation of computer software; installation of middleware (software); installation, repair and maintenance of middleware (software); 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); rental of computer software; rental of games software; repair of computer software; software creation; software engineering; updating of computer software; upgrading of computer software; writing of computer software; hosting of software as a service (SaaS); none of the foregoing being in relation to telecommunications between personnel in the transport industry.
The application was examined as required by s 31 of the Act and accepted for possible registration. Acceptance was advertised in the Australian Official Journal of Trade Marks on 12 January 2012. The Opponent filed a Notice of Opposition on 12 April 2012 nominating most of the grounds available under the Act to oppose registration, and on 12 March 2013 filed its evidence in support of its opposition. Following this, opposition proceedings were suspended for a period of time pending negotiation between the parties.
The suspension of these proceedings ended on 15 July 2014. On 10 September 2014 the Applicant filed its evidence in answer. The following day the Applicant requested that amendments be made to its specification of goods and services by adding the following exclusions:
· Class 9: “none of the foregoing being telecommunications equipment for use in the transport industry or for use in relation to telecommunications between personnel in the transport industry”
· Class 38: “none of the foregoing being in relation to telecommunications between personnel in the transport industry”
· Class 42: “none of the foregoing being in relation to telecommunications between personnel in the transport industry”.
The specification was amended as requested.
The Opponent filed its evidence in reply on 16 December 2014 and requested a hearing on 12 March 2015.
The matter came before me, a delegate of the Registrar of Trade Marks, in Melbourne on 20 July 2015. The Opponent was represented by Chris Doidge of Counsel, instructed by Virginia Beniac-Brooks of Marks & Clerk Australia. The Applicant did not attend the hearing but filed written submissions for my consideration, prepared by Jackson Cain of Forum Law Solicitors.
Evidence
The evidence comprises the following declarations:
Evidence in support
·Statutory declaration of Damien McCormack, Portfolio Director of the Aircraft Solution Line of the Opponent, with Exhibits DM-1 to DM-7, dated 4 March 2013.
Evidence in answer
·Declaration of Darren Speer, Director and Secretary of the Applicant, with attachments A to I (attachment I incorporates attachments electronically bookmarked as I2 to I6), dated 9 September 2014;
·Declaration of Michael Flannery, Managing Director of Instigo, a customer of the Applicant, dated 10 September 2014;
·Declaration of John Loveridge, Managing Director of Rx Management, a customer of the Applicant, dated 8 September 2014;
·Declaration of Cary Mark Giezekamp, Managing Director of Callagher Estate Agents, a customer of the Applicant, dated 9 September 2014.
·The latter three declarations are referred to below collectively as ‘the supporting declarations’ and the declarants as ‘the supporting declarants’.
Evidence in reply
·Statutory declaration of Damien McCormack with Exhibits 8 and 11 and reference to Confidential Exhibits 9, 10 and 12 (although not the actual exhibits themselves), dated 15 December 2014;
·Declaration of Rebecca Dutkowski, employee of Marks & Clerk Australia, with Confidential Exhibits 1 to 3 containing Confidential Exhibits 9, 10 and 12 of the second McCormack declaration, dated 16 December 2014.
Briefly, the Opponent is a global provider of IT and telecommunication services to the air transport industry. Under the trade mark AIRCOM it provides services and infrastructure that allow for communications and the exchange of data between aircraft and the ground (including airports and air traffic control), receiving stations (including satellites and VHF stations), pilots/aircraft cockpits, data servers, airline operators and passengers.
The Opponent’s primary customers are airline operators. It claims to enjoy over 90% of total worldwide business in the air transport industry.
The Opponent first used the AIRCOM trade mark in Australia in 1984. Sales figures for the years 2007 to 2011 show that business in Australia has steadily, if somewhat modestly, increased. It owns Australian trade mark registrations 575655, 575658 and 575659 (‘the Opponent’s Trade Marks’), relevant details of which are shown in the table below.
| Registration 575655 AIRCOM Priority date: 1 April 1992 Class 9: Telecommunications apparatus and equipment including apparatus for telecommunications transmission; computer hardware and software; all other goods in this class. | Registration 575658 AIRCOM Priority date: 1 April 1992 Class 38: Telecommunication services in the transport industry; broadcasting radio beacons; broadcasting position-fixing signals for surveying and navigation; data-communications; computer controlled digital data transmission; computerised message transmissions; position-fixing by telecommunications; electronic message storage and forwarding; message switching networks; computerised message transmission; radio broadcasting of navigational signals; packet switching networks; radio position-fixing for land vehicles, ships and aircrafts; radio-paging and relaying of messages; satellite communication networks; satellite broadcasting of audio-entertainment or information; telecommunications; data exchange services in this class; digital communication services; communications with aircraft and vehicles for locomotion. | Registration 575659 AIRCOM Priority date: 1 April 1992 Class 42: Consultancy services in this class; engineering studies and services in this class; computer services in this class; maintenance and modification of computer software; general data processing; data storage and retrieval techniques. |
The Applicant is an Australian company that provides a range of IT and telecommunications services primarily to small and medium sized enterprises. It provides a suite of services such that entities can, in so many words, outsource their IT management: “With Aerocom as your external IT Manager, we take the daily burden of managing your computer and communications systems off your hands so you can concentrate on your core business”.[1] These services include installation, maintenance and operation of software, VOIP (voice over internet protovol phone and operating systems; backing up and storing data; project management; and design and architecture of systems.
[1] Speer declaration, Exhibit H.
It appears the Applicant first used the Trade Mark in 2008 when Mr Speer declares it first operated under the business name “Aerocom Technology” and from which time two of the supporting declarants declare they have known the Applicant as “Aerocom”. The remaining supporting declarant states that he has known the Applicant as “Aerocom” since 2009.
The supporting declarations consist of declarations from three customers of the Applicant, which in addition to the above declare that they are not aware of any other IT business with any similar name; they have never been confused by the names Aerocom and Aircom; and that they have always known the Applicant as AEROCOM. Two of declarations also declare that they associate the name Aerocom with “its yellow mark and branding as it appears on the stationery, business cards and emails and website of the Applicant”.
The Applicant is also the owner of trade mark registration 1249262 for the word AEROCOM, which has a filing date of 1 July 2008 and is in respect of the class 37 services: “Information technology (IT) services (computer and computer peripherals installation and maintenance)”.
Grounds and onus
The Opponent pressed grounds of opposition under ss 44, 60 and 58 of the Act. As will become apparent from my decision below, the Opponent has successfully established its ground of opposition pursuant to s 44 so it is unnecessary that I consider any other ground of opposition here.
The Opponent bears the onus of establishing at least one of its grounds of opposition. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities,[2] and that the relevant date at which the rights of the parties are to be determined is 2 September 2011, the filing date of the application.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599, [6]-[26].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
44.(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 (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) If the Registrar in either case is satisfied:
(a) that there has been concurrent use of the 2 trade marks; or
(b) that because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations include that the use of the trade mark is to be restricted to that particular area.
To establish the ground under s 44 the Opponent must establish that another trade mark exists which has an earlier priority date than the Trade Mark; which is substantially identical or deceptively similar to the Trade mark; and which is in respect of similar goods, similar services or goods or services closely related to those of the Trade Mark. For this purpose the Opponent relies upon the three registrations detailed at paragraph 9.
The priority dates of the Opponent’s registrations are clearly earlier than that of the Trade mark. I now turn to consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Marks.
In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’)[4] Windeyer J described the test for substantial identity as:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison…Judging by the eye alone, as I think is proper for the determination of substantial identity…
[4] (1963) 109 CLR 407; [1963] HCA 66, [12].
The Opponent submits that AEROCOM and AIRCOM are substantially identical on the basis that there is a strong degree of visual and aural similarity between the two marks and there are similar connotations between AERO and AIR, such that the overall impressions of the two trade marks is the same. The Opponent points out that both visual and aural aspects have been found to be relevant to the consideration[5] and that the totality of the characteristics of the marks should be taken into account,[6] including their meaning and connotation.[7] Additionally, strict identity is not required.[8] In terms of the meaning or connotation of the words the Opponent states that the Merriam-Webster dictionary defines “aero” as “of or relating to aircraft or aeronautics”, its Greek meaning is “air”, and there is an interchangeability of the prefixes “aero” and “air” for use with words such as “plane”. When considered in the context of the similarity of the letters contained therein and the identical suffix COM, both trade marks are submitted to invoke or suggest a meaning in association with “air”, and as such a connection between the two.
[5] Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318; [2003] FCA 901, [58].
[6] ibid, [60].
[7] Intercity Group (NZ) Ltd v Nakedbus NZ Ltd (2014) 108 IPR 112; [2014] NZHC 124 at [187].
[8] Daimer Industries Pty Ltd v Kabushiki Kaisha Daimaru (1993) 27 IPR 24; [1993] ATMO 43.
Despite these submissions I am not satisfied that AEROCOM and AIRCOM are substantially identical. In a side by side comparison, the differences in spelling and pronunciation are likely to be noted, albeit that the connotation arising from the words is similar. The former contains the additional syllable “oh”, and the connotation of AERO is somewhat confined to aeronautics or aerodynamics. On the other hand the latter does not contain the “oh” syllable, and the connotation of AIR is somewhat broader. It may include aeronautics or aerodynamics, or it could be a reference to the atmosphere or even a nebulous connotation of lightness. Additionally, the two are visually distinguishable in that the former contains the more unusual digraph “ae” whereas the latter contains the more familiar “air”, a common word in the English language.
Deceptive similarity, however, relies upon impression rather than a side-by-side comparison. The expression “deceptively similar” is defined in s 10 of the Act as “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. Windeyer J continued his discussion in Shell as follows:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [trade mark]. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, 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" (1937) 58 CLR, at p 658.
The considerations relevant to deceptive similarity were restated in Registrar of Trade Marks v Woolworths (‘Woolworths’).[9] In summary these are: a real tangible danger of deception or confusion must exist rather than a mere possibility of such; confusion is likely where some people will wonder or be left in doubt as to whether the goods or services of interest come from the same source; all the surrounding circumstances must be taken into account; the rights of the parties are to be determined as at the date of the application; and the assessment must be considered in respect of all the goods or services specified in the application. In respect of the last proposition it was observed in Berlei Hestia Industries Ltd v The Bali Company Inc[10] that the likelihood of deception or confusion is to be considered not by how the trade mark has been used in the past, but by how it may be used (should registration be granted).
[9] [1999] FCA 1020; (1999) 45 IPR 411, [50].
[10] [1973] HCA 43; (1973) 129 CLR 353, 362.
I consider that the trade marks are deceptively similar. Unlike the assessment of substantial identity, one does not have the benefit of both marks present in a side-by-side comparison. Rather it is the impression that is taken away and possibly imperfectly recalled that is to be considered.[11] Both parties’ trade marks are aurally similar, commencing with the sound “air”. I note that despite some differences in spelling, the trade marks SOLAHART and SOLARHUT[12], TIVO and VIVO[13], CRAZY RON’S and CRAZY JOHN’S[14], BERLEI and BALI BRA[15], and DIGITEK and DGTEC[16] have all been considered deceptively similar particularly due to aural similarity. Additionally there is a degree of visual similarity between the parties’ marks, in that both commence with the letter “A”, have identical suffixes, and are of similar length. They are also are constructed similarly, both commencing with prefixes which may be construed as carrying similar connotations (and which sound similar) and end in an identical suffix. The differences that exist between the trade marks, being the difference in spelling and the additional “oh” syllable in the Trade Mark, are of the type that may well be imperfectly recalled. Accordingly I consider the trade marks to be deceptively similar.
[11] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[12] Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165.
[13] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.
[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212.
[15] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353.
[16] Hills Industries Ltd v Bitek Pty Ltd (2011) 90 IPR 337.
The Applicant submits that the parties’ marks are not deceptively similar. It argues that it has provided evidence demonstrating that neither it nor its clientele have ever experienced confusion between the two trade marks, and submits that the Opponent has not provided any evidence of confusion arising from the Applicant’s use of the Trade Mark. It also argues that the parties’ marks are not deceptively similar because a person of ordinary intelligence, being the relevant person for the purposes of the comparison,[17] would not know when seeing the Trade Mark that “aero” is Greek for “air”.
[17] Shell, above n 4.
In terms of evidence of actual confusion from the Opponent, such evidence is not necessary[18] although its existence would likely strengthen a case for deceptive similarity. It is a notional assessment that is made. This means that while the actual use that the parties have made of their trade marks appears to have been largely in separate markets (such that it is not surprising there is no evidence of confusion), when I turn to consider the breadth of the parties’ respective claims appearing in their specifications of goods and services, notionally their markets overlap. As such, the absence of evidence of confusion resulting from the parties’ actual use is of limited assistance.
[18] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.
The supporting declarants to whom the Applicant refers each state that they are unaware of the AIRCOM business and that they have never been confused by the two names. Two of the three declarants also state that they “always associate the name Aerocom with its yellow mark and branding…” The difficulty with this evidence is that (a) the supporting declarations are few in number, and (b) two of them refer to trade mark material other than the plain word AEROCOM (being the “yellow mark” and the “branding”, which may include a tag line, font and/or colour scheme).
Lastly, whether or not the person of ordinary intelligence knows that “aero” is Greek for “air” does not detract from the common knowledge that “aero” relates to aeronautics and/or aerodynamics, and that such a connotation may be similar to “air”. The connotation arising from “aero” does so not only from its precise definition, but also by virtue of its use in ordinary English words such as “aeroplane” (the American spelling of which is “airplane”), “aerodrome” and “aerodynamic”.
Having determined that the parties’ trade marks are deceptively similar, the next assessment is whether the goods or services of the parties are similar or closely related. “Similar goods” and “similar services” are defined in the Act as those which are the same or of the same description. “Of the same description” is a term of art describing the relationship between goods (or services) such that “if two different items are held not to fall within the same expression, their sale under the same mark by different companies is not likely to lead to confusion or deception”. [19]
[19] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (‘Polo Textile’) [1993] FCA 203.
Considerations relevant to determining whether goods are the same or of the same description include the nature and characteristics of the goods, their origin and purpose, whether they are usually produced by the same manufacturer or distributed through the same channels, whether they are sold in the same shops during the same seasons to the same classes of customers and whether they are regarded as belonging to the same trade by those engaged in their manufacture and distribution.[20] It was accepted in MID Sydney Pty Ltd v Australian Tourism Co Ltd[21] that these principles, subject to any necessary modification, also apply in relation to services.
[20] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) CLR 592.
[21] [1998] FCA 1616; (1998) 42 IPR 561.
“Closely related” is not defined in the Act, but refers to deception or confusion arising between a trader’s goods and another trader’s services (wherein goods cannot be similar to services – and vice versa – but may be closely related). French J observed in Woolworths that the relationship of services closely related to goods:
…may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them.[22]
[22] Woolworths, [38].
Before applying the above principles to the goods and services of the parties, I will address a preliminary matter first. The Applicant relies upon the exclusions identified in paragraph 3 of this decision to assert that s 44 cannot be established. Whilst the exclusions limit certain of the Applicant’s goods and services to those not relating to telecommunications equipment for use in the transport industry or not for telecommunications between personnel in the transport industry, the Opponent’s goods and services are not so limited - they include those for within and without the transport industry. Accordingly where the goods or services are similar the Opponent’s will encompass those of the Applicant, regardless of the Applicant’s exclusions. Additionally it must be borne in mind that the consideration under s 44 is a notional one, such that all of the goods and services falling within the parties’ specifications must be considered (not only those which the parties have been shown to provide).
I consider it uncontroversial that the following of the Applicant’s goods in class 9 are the same as, or of the same description as, the Opponent’s “computer hardware and software” in class 9 (specified in registration number 575655):
Computer design hardware; computer hardware; computer hardware for use in computer-assisted software engineering; computer programs for testing computer hardware; data communications hardware; monitors (computer hardware); computer software downloaded from the Internet; application software; communication software; communications processing computer software; computer graphics software; computer programs (downloadable software); computer software; computer software (programs); computer software downloaded from the Internet; computer software for accounting systems; computer software for business purposes; computer software for communicating purposes between microcomputers; computer software packages; computer software products; computer software programs; data communications software; education software; installations for the remote loading of computer software; installations for the remote unloading of computer software; network management computer software; packaged software; broadband data interconnecting computer installations; none of the foregoing being telecommunications equipment for use in the transport industry or for use in relation to telecommunications between personnel in the transport industry.
Each of the above descriptions specifies varying types of computer hardware or software, and as such fall within the ambit of the Opponent’s goods.
In respect of the Applicant’s remaining class 9 goods “data recorded electronically from the Internet; digital music (downloadable) from the Internet; digital music (downloadable) provided from MP3 web sites on the Internet” (qualified by the exclusion “none of the foregoing being telecommunications equipment for use in the transport industry or for use in relation to telecommunications between personnel in the transport industry”) the following applies.
The Macquarie Dictionary[23] defines “software” as “programs which enable a computer to perform a desired operation or series of operations (opposed to hardware)”, and in turn “program” (relevantly) as “a set of instructions written in an artificial language which a computer can interpret and execute”. Accordingly, I consider “data recorded electronically from the Internet; digital music (downloadable) from the Internet; digital music (downloadable) provided from MP3 web sites on the Internet” to be of the same description as, and therefore similar to, “computer software”.
[23] Online edition, © Macmillan Publishers Group Australia, 2015.
The Applicant’s class 37 services are all in the nature of installation, maintenance and repair of computer hardware and middleware. These services are not limited by any exclusions, and I note that some services are encompassed within the Applicant’s previous registration. On the face of it the Applicant’s services are those which provide for the installation, maintenance and repair of goods contained within the Opponent’s earlier registration, observed in Woolworths as being likely to be treated as closely related. Whilst it appears that since Woolworths a separate and specialist market has developed in respect of computer installation, maintenance and repair services, I consider it remains the case that the provision of the services and the goods under deceptively similar trade marks would likely lead to deception or confusion - particularly in relation to computer peripherals and/or specialised computer goods. It follows that I consider the Applicant’s class 37 services are closely related to the Opponent’s class 9 goods.
The Applicant’s services in class 38 are all encompassed within the Opponent’s services “data-communications”, “computer controlled digital data transmission”, “telecommunications”, “data exchange services in this class” and “digital communication services” (all specified in registration 575658). These descriptions of the Opponent’s services are very broad, encompassing almost all services that can fall within class 38. In line with my preliminary discussion on the comparison of the parties’ goods and services, it does not assist the Applicant that none of its services are in relation to telecommunications between personnel in the transport industry. Accordingly the parties’ class 38 services are the same or of the same description.
The Applicant’s services in class 42 relate to a broad range of computer and information technology services. The Opponent submits that they are all similar to its own services in class 42 (specified in registration 575659): “consultancy services in this class”, “computer services in this class; maintenance and modification of computer software; general data processing; data storage and retrieval techniques”. I note that some of the services that fall within class 42 have changed between 1992 (when the Opponent’s registration was filed) and present day, and I bear in mind that many of the computer related services that fall within class 42 nowadays were not conceived of in 1992. Nonetheless, the 6th edition of the Nice Classification (in effect from 1st January 1992) identified “computer rental; computer programming; computer software design; rental of computer software” as services falling within class 42. Accordingly, the Opponent’s “consultancy services in this class” and “computer services in this class” were in relation to at least those identified in the 6th edition of the Nice Classification. Bearing this in mind, in combination with the Opponent’s other class 42 services, I consider that all of the Applicant’s class 42 services are the same or of the same description as the Opponent’s. All of them involve advisory, design, programming, installation, maintenance, repair or modification, and rental of computer hardware, computer software and/or computer systems. Whilst specific terms used to describe the services have changed over time, their fundamental nature remains similar. For example “hosting software as a service (SaaS)” involves hosting software that is licensed to users (usually for payment), similar to “rental of computer software” which is incorporated within the Opponent’s “computer services in this class”. The provision of web-based software and online software is likewise similar to rental of computer software where it is for payment. Similarly, although the term “middleware” may not have been in common use (or in use at all) in 1992, it relates to a type of software. The Opponent’s services in relation to software are therefore similar to the Applicant’s services in relation to middleware.
In all, I do not consider any of the Applicant’s services in class 42 differ materially to the Opponent’s services in class 42. As already noted, the exclusion made to the Applicant’s services does not assist it because the Opponent’s services are not limited so and therefore encompass those of the Applicant.
Having established that the Trade Mark is deceptively similar to the Opponent’s Trade Marks, and is in respect of goods and services which are similar or closely related to those of the Opponent’s registrations, the onus shifts to the Applicant to demonstrate that the exception(s) provided for in sub-s 44(3) applies. In this regard the Applicant asserts that it has made honest concurrent use of the Trade Mark, such that sub-s 44(3)(a) applies.
Before turning to the criteria for honest concurrent use, I will address submissions made by the Applicant in respect of the circumstances surrounding the exclusions made to its goods and services. The Applicant makes a number of assertions relating to who proposed the amendments during negotiations between the parties. Such assertions are not supported by any documentary evidence, and in any event negotiations between parties are commonly conducted on a without prejudice basis. I therefore do not attach weight to the assertions surrounding the circumstances of the amendments, and consider only that amendments (in the form of the previously identified exclusions) were made.
In McCormick & Company Inc v McCormick[24] Kenny J described the principle criteria for the consideration of honest concurrent use, established by the authorities, as follows:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) RPC 795; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
[24] [2000] FCA 1335; (2000) 51 IPR 102.
There is nothing before me which raises doubt as to the honesty of the use. The Applicant states in the Speer declaration that it made the application in good faith and that when it adopted the trade mark in 2008 it was not aware of the Opponent’s trade mark. Additionally, the element COM is frequently used in respect of computer and IT related services (for example as part of domain names or to refer to computers or communications) and therefore the identical suffix is not unusual. Whilst AERO and AIR are similar, neither is so unusual that their presence in different marks implies an attempt to associate one with the other (as might be the case for highly unusual invented words).
In respect of the extent of use of the Trade Mark, the Applicant has used the word AEROCOM as part of its branding since 2008, three years before the filing date and seven years before these proceedings. Its volume of trade, judged from sales figures, is somewhat modest although not insignificant, and its geographical extent covers NSW (particularly Sydney), Melbourne, and a small amount of trade in other states of Australia as well as in three other countries. The difficulty faced by the Applicant is that it has consistently used AEROCOM in a particular font upon a yellow background with a grey or silver boarder, usually in combination with the word TECHNOLOGY and often (although not always) with the tag line LAUNCHING YOUR I.T. – as shown below.
There is very little use of the plain word AEROCOM as applied for. Whilst on their own each of the particular font used, the background yellow colour and the grey or silver border would not substantially affect the identity of the mark, in combination and with consistent use over time they too contribute to the Applicant’s badge of identity. This is reflected in two of the supporting declarations which state “I always associate the name Aerocom with the staff and with its yellow mark and branding as it appears on the stationery, business cards and emails and website of the Applicant”.
The likely degree of confusion relates to the Trade Mark as applied for. Accordingly, whilst the degree of confusion between the above images and AIRCOM may be less than that between the plain words AEROCOM and AIRCOM, it is the Trade Mark as applied for that must be compared. As already indicated, I consider that based upon an imperfect recollection the marks are likely to confuse, although this likely degree of confusion would not extend to circumstances wherein the marks may be compared side-by-side.
No confusion has been shown to have occurred. As stated previously, this is likely to be because in reality the parties operate largely in different markets – the Opponent’s customers being largely within the airline industry and the Applicant’s being small to medium sized businesses in Australia. However, as also stated previously the consideration under s 44 is a notional one, such that the Opponent’s registration covers all the computer goods and telecommunications services that fall within the scope of its registrations (and not only those directed to the airline industry). As long as it maintains registration for these broad services, the Registrar is obliged to protect the Opponent’s monopoly.
Both parties are likely to suffer a degree of inconvenience in the face of an adverse decision. The Applicant has been trading for approximately seven years and is likely to have built a degree of goodwill in branding that incorporates the Trade Mark. At the same time, its evidence shows that it mostly uses a trade mark which incorporates other elements as well. On the other hand the Opponent is a long standing entity and its trade mark has been in use for many years. The scope of its monopoly, notionally at least, would be eroded should the Applicant be afforded registration in the face of it.
Bearing all of the above in mind, I am not satisfied that the Applicant has met the onus upon it to show honest concurrent use of the Trade Mark (as applied for). Accordingly, the Opponent has established the ground of opposition under s 44.
Decision
Section 55 relevantly provides that:
…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.
The Opponent has established a ground of opposition. Accordingly, I refuse to register trade mark application 1446315.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Applicant per Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicole Worth
Hearings Officer
Trade Marks Hearings
22 October 2015
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