SpaceIQ LLC v CyberOps Pty Ltd

[2022] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by SpaceIQ LLC to registration of trade mark application number 2135989 (classes 35 and 42) – SpaceIQ - in the name of CyberOps Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: King & Wood Mallesons

Applicant: Madderns Pty Ltd

Decision:

2022 ATMO 112

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 58, 59 and 60 considered – none established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by SpaceIQ LLC (‘Opponent’) to registration of Australian trade mark number 2135989 (‘Application’) filed in the name of CyberOps Pty Ltd (‘Applicant’) for:

Trade Mark:      SpaceIQ                             (‘Trade Mark’)

Filing Date:        23 November 2020         (“Relevant Date’)

Specification:   

Class 35:Data retrieval; Collection of data; Collation of data; Data compilation for others; Data handling; Data processing; Data processing verification; Consultancy relating to data processing; Advisory services relating to data processing; Compilation of information into computer databases; Updating and maintenance of data in computer databases; Computerised data processing; Business data analysis; Business data analysis services; all of the foregoing for the purpose of tracking satellites and other space objects

Class 42:Data mining services; Electronic data storage; Technical data analysis services; Research relating to data processing; Development of systems for the processing of data; Development of systems for the storage of data; Technological consultancy; Remote monitoring of computer systems; all of the foregoing for the purpose of tracking satellites and other space objects

(‘Services’)

1. As required by the Trade Marks Act 1995 (Cth)[1], the Application was examined, accepted for possible registration and subsequently advertised on 24 April 2021.  The Opponent filed a Notice of Intention to Oppose on 24 June 2021 and a Statement of Grounds and Particulars (‘SGP’) on 26 July 2021.  The Applicant filed a Notice of Intention to Defend the Application from opposition on 3 November 2021.

   [1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

2. Thereafter, the parties were given the opportunity to file evidence in accordance with the timetable set out in the Regulations. Neither party filed any evidence. Accordingly, the parties were given the opportunity to be heard. The parties did not request a hearing and the Applicant paid the fee for the matter to be decided based on the materials filed. This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the particulars in the SGP.

Grounds and Onus 

1. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 59 and 60.

2. The Opponent bears the burden of establishing a ground of opposition on the balance of probabilities[2].  The rights of the parties are to be assessed at the Relevant Date.

Discussion

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 44

1. To successfully oppose the Applicant’s Mark pursuant to s 44, the Opponent must establish that a trade mark registered or applied for by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Applicant’s Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Applicant’s Mark (‘the second requirement’); and

   ·     

   is in respect of similar services and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

   
   
   

2. In support of this ground, the Opponent relies on its Australian trade mark registration number 2110544 (‘Opponent’s Registration’) SPACEIQ (‘Opponent’s Mark’)  registered since 10 August 2020 for:

Class 9:        computer software for facility management and workplace management;

downloadable software for enterprise customers for facility management and workplace management

Class 42:      software as a service for enterprise customers for facility management and workplace management

(Opponent’s Goods and Services”).

1. The Opponent’s Registration meets the first requirement in that it has a priority date earlier than the Relevant Date of the Application.

2. The second requirement is also satisfied in that the Opponent’s Mark is essentially identical to the Trade Mark.

3. Therefore, the only question is whether the Services are similar to the Services of the Opponent’s Registration and/or closely related to the Opponent’s Goods.

4. The test for similar services is essentially the same as that applied for goods of the same description[3] in that I must consider the nature or characteristics of the services, whether the services are used for the same or similar purpose and the trade channels through which the services are provided.[4]  In considering, these factors, it is necessary to examine the essential characteristics of each of the services in question.[5]

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (Kitto J); Re J Lyons & Co Ltd’s Application [1959] RPC 120, [28] (CA UK).

   [4] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] 90 FCR 236 (Burchett, Sackville and Lehane JJ).

   [5] Accor Australia and New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205, [337] (Greenwood, Besanko and Katzmann JJ).

5. In terms of the test for closely related goods and services, in Kellogg Co v Exxon Corp,[6]  it was suggested that, given the presumption of registrability, goods and services should not be regarded as closely related “unless the contrary is established to the necessary degree”.[7]

   [6] (2001) 53 IPR 177.

   [7] Ibid, 183.

6. As French J noted in Registrar of Trade Marks v Woolworths:[8] 

   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”.

His Honour subsequently continued:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question ... Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.[9]

[8] [1999] FCA 1020, [37].

[9] Ibid, [40].

1. The Opponent’s software is for facility management and workplace management. I am aware that facility management software is intended to enable organisations to effectively manage their facility assets (such as HVAC, lighting, plumbing) and plant assets (such as vehicles, office equipment and intangible assets) by recording the assets, scheduling maintenance, streamlining processes and increasing asset productivity. Workplace management software encompasses facility asset management but includes the management of other workplace resources such as employees’ service, a company’s real estate portfolio, space occupation within each premises, capital projects and sustainability practices etc. Implementation of facility and workplace management software involves the collection, input and analysis of data on the assets which are services falling within the Application but the Services are limited to those for tracking satellites and other space objects.

2. In my opinion, tracking of satellites and space objects is a distinct specialist industry from facility and workplace management.  The purpose of the Services in tracking satellites and space objects is different from that of the Opponent’s Goods and Services.  Perhaps it is possible that in the future, satellites and space objects will be a common asset of businesses that need to be managed by workplace software in the same manner as other assets but I do not believe that this is presently the case. A common sense business view should be adopted in determining whether consumers are likely to believe that the two sets of goods or services emanate from the one trade source.[10] In the present case, I consider that consumers would not expect services relating to the tracking of satellites and space objects to originate from the same trade source as software for facility and workplace management.  Accordingly, I am not satisfied that the Services are similar or closely related to the Opponent’s Goods and Services.

   [10] E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (No 2) [2009] 175 FCR 386, [71] (Moore, Edmonds, Gilmour JJ); Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227, 240 (Burchett J).

3. The s 44 ground of opposition is unsuccessful.

Section 59

1. Section 59 provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

2. Applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[11]   The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[12]  If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[13] 

   [11] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

   [12] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

   [13] Suyen Corp v Americana International Ltd (n 3), [190].

3. The Opponent states in its SGP that:

Now, and as at the Priority Date, based on desk research, and as will be substantiated in the evidence, the Applicant was not using the Applied-for Trade Mark in respect of any or all of the Applied-for Services in Australia and there are no obvious signs that it holds, or held at the Priority Date, any sufficiently definite intention to do so.

1. In my opinion, this statement is not sufficient to establish a prima facie case that the Applicant did not have the necessary intention to use the mark at the filing date.  The Opponent has not substantiated, with documentary evidence, its research or claims about the Applicant’s activities in order for me to be satisfied that it is more probable than not that the Applicant did not have a good faith intention to use the Trade Mark for the Services in Australia at the Relevant Date.  It is not uncommon for an applicant to delay commencing use of a trade mark until an application is filed or registration is obtained. 

2. The Opponent has not established a prima facie case that the Applicant lacked the requisite intention at the filing date and hence the evidentiary onus did not shift to the Applicant.  As a result, the s 59 ground of opposition is not established.

Section 58

1. Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is the earlier.

2. This ground is particularised in the SGP as follows:

The Opponent used its SPACEIQ Trade Marks in relation to the Opponent’s Goods and Services, prior to the Priority Date and prior to any use of the Applied-for Trade Mark by the Applicant in Australia in relation to the Applied-for Services (which is not admitted). The Opponent’s Goods and Services, or some of them, are “the same kind of thing” as the Applied-for Services. The Opponent’s SPACEIQ trade mark is substantially identical to the Applied-for Trade Mark. 

In light of the foregoing, the Applicant is not the owner of the Applied-for Trade Mark for the Applied-for Services.

1. The Opponent has not filed documentary evidence of its use of the mark SPACEIQ.  Further, as discussed under the s 44 ground, the Opponent’s Goods and Services are not the ‘same kind of thing’ as the Services.

2. The s 58 ground is unsuccessful.

Section 60 & Section 42(b)

1. Both ss 60 and 42(b) require the Opponent to establish a reputation in a trade mark in Australia at the Relevant Date and that as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion.

2. In the SGP, the Opponent alleges that since May 2020, it has extensively used the Opponent’s Mark and a stylised version:  in Australia for the Opponent’s Goods and Services such that the Opponent had acquired a reputation in Australia at the Relevant Date. 

3. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[14] 

   [14] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] 33 FCR 302, [1992] FCA 159, [77] (Lockhart J).

4. In the absence of any documentary evidence to support the Opponent’s assertion that it has used the Opponent’s Mark in Australia in any form or has otherwise acquired a reputation in that mark in Australia at the Relevant Date, I am not satisfied that this is the case.

5. Accordingly, the grounds of opposition under ss 60 and 42(b) are not established.

Decision

1. Section 55 relevantly provides:

55  Decision

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

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

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

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

Note:          For limitations see section 6.

1. The Opponent has not established a ground of opposition.  Accordingly, trade mark application number 2135989 may proceed to registration one month from the date of this decision.

2. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

3. The Applicant has requested an award of costs and hence I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

7 July 2002