Sphaira Innovation AG

[2024] ATMO 20

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2289175 (9, 28, 35, 36, 41, 42) – PLANETPLAY - in the name of Sphaira Innovation AG

Delegate:	Bianca Irgang
Representation:	Applicant: Gestalt Law Pty Ltd
Decision:	2024 ATMO ** Ex parte - S33 – section 44 ground for rejection – Marks are deceptively similar for some goods and services– consideration of subsections 44(3)(a) and (b) – evidence insufficient for acceptance and no other circumstances made out – applicant offered an amendment - application accepted

Background

1.     Sphaira Innovation AG (the ‘Applicant’) filed application number 2289175 on 26 July 2022 in classes 9, 28, 35, 36, 41 and 42 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  PLANETPLAY (the ‘Trade Mark’)

Trade mark application:      2289175

Priority Date:  26 July 2022

Convention Details:              4 March 2022
  UK
  00003762051
  Classes 9, 35, 36, 41

Services Specification:         Class 9: video games (software), video gaming software, mobile apps; computer software and hardware

Class 28: hand held video games; hand held units for playing video games

Class 35: providing online marketplaces for sellers and buyers of goods and services relating to video gaming

Class 36:issuing of tokens of value, including non-fungible tokens (NFT`s), relating to video gaming; financial services relating to video gaming

Class 41: providing online video games; rental of video games; publishing services for video games

Class 42: development of video games

(‘the Goods and Services”)

2. At the examination stage an initial adverse report was issued to the Applicant on 9 August 2022. The following nine trade mark registration nos. 1142993 “Planet Audio” (Class 9), 1235208 “Planet Bingo” (Classes 9, 35), 1235214 “Planet Bingo” (Classes 9, 35), 1834935 “Planet Lotto” (Class 41), 1834937 “Planet Lotto” (Class 36), 1834938 “Planet Lotto” (Class 36), 2113963 “PlanetShop” (Class 35), 2187202 “Planet” (Class 9) and 2227737 “Planet Tech” (Class 9) were raised as a grounds for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis that they are deceptively similar to the Trade Mark. Trade Mark Registration no. 2227737 has since lapsed and I am satisfied that it is no longer a valid citation and ground for rejection against the Trade Mark.

3.     The details of the remaining eight Trade Mark registrations for my consideration are as follows:

Trade mark:  Planet Audio

Trade mark registration:     1142993

Owner:  Melody Audio International

Priority Date:  25 January 2006

Goods Specification:            Class 9: Vehicle audio components, namely, AM/FM stereo receivers, cassette tape decks, compact disc players, power amplifiers, equalizers, electronic cross overs and speakers; video and television monitors; DVD machines; car navigation computers; satellite navigational systems namely, global positioning systems (GPS); and parts thereof

Trade mark:  Planet Bingo

Trade mark registration:     1235208

Owner:  Planet Bingo, Inc

Priority Date:  16 April 2008

Convention Details:              10 April 2008
  77/445513 United States of America

Goods Specification:            Class 9:Computer game programs; computer game software; computer hardware; computer hardware and computer software programs for the integration of text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; computer operating systems; computer software and hardware for bingo slot machines, gaming machines, legal gambling devices, bingo electronics, casino slot machines, bingo hall and club servers and electronic bingo games

Class 35:Advertising and marketing; advertising, marketing and promotion services; marketing consultation in the field of bingo, casino and legal gambling, hall designs, giveaways, session planning, floor plan design player rewards, casino and bingo games and promotions and business-to-business sales, legal gambling promotions and legal online gaming and gambling promotions and marketing; marketing consulting; providing advertising, marketing and promotional services, namely, development of advertising campaigns for bingo gaming, legal gambling, online bingo, gaming and legal gambling, player rewards clubs, player points, daubers, bingo charms, and gambling and gaming charms; real estate marketing services in the field of gaming and legal gambling real estate development

Trade mark:  

Trade mark registration:     1235214

Owner:  Planet Bingo, Inc

Priority Date:  16 April 2008

Convention Details:              10 April 2008 
77/445498 United States of America

Goods Specification:            Class 9: Computer game programs; computer game software; computer hardware; computer hardware and computer software programs for the integration of text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; computer operating systems; computer software and hardware for bingo slot machines, gaming machines, legal gambling devices, bingo electronics, casino slot machines, bingo hall and club servers and electronic bingo games

Class 35:Advertising and marketing; advertising, marketing and promotion services; marketing consultation in the field of bingo, casino and legal gambling, hall designs, giveaways, session planning, floor plan design player rewards, casino and bingo games and promotions and business-to-business sales, legal gambling promotions and legal online gaming and gambling promotions and marketing; marketing consulting; providing advertising, marketing and promotional services, namely, development of advertising campaigns for bingo gaming, legal gambling, online bingo, gaming and legal gambling, player rewards clubs, player points, daubers, bingo charms, and gambling and gaming charms; real estate marketing services in the field of gaming and legal gambling real estate development

Trade mark:  

Trade mark registration:     1834935

Owner:  Cardinal House Group Pty Ltd

Priority Date:  4 April 2017

Goods Specification:            Class 41: Lottery services; Betting information services; Betting services; Wagering services; Conducting lotteries; Operating lotteries; Prize draws (Lotteries); Casino services; Providing casino facilities (gambling); Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; Providing online electronic publications (not downloadable); Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of entertainment facilities; Provision of entertainment services via an online forum; Publication of electronic books and journals online; Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Gaming services; Betting on horses; Video game entertainment services; Sports consultancy

Trade mark:  

Trade mark registration:     1834937

Owner:  Cardinal House Group Pty Ltd

Priority Date:  4 April 2017

Goods Specification:            Class 36: Computerised financial services; Financial services; Provision of information relating to financial services; Brokerage; Brokerage of currency; Brokerage services relating to financial instruments; Exchange brokerage; Financial brokerage; Money brokerage; Debit card services; Processing of debit card payments; Credit card registration services; Credit card services; Issuance of credit cards; Issuing of credit cards; Processing of credit card statements; Provision of credit cards; Collection of fees, payments or tolls (for others); Collection of payments; Electronic payment services; Financial affairs; Financial management; Financial payment services; Payment administration services; Payment of bills and accounts for others; Payment transaction card services; Processing of payments for banks; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Monetary affairs; Monetary affairs consultancy; Monetary exchange; Monetary transaction services; Monetary transfer; Provision of credit; Provision of credit facilities; Online banking; Bonding (provision of financial guarantees); Provision of financial information; Provision of financial information via an online calculator; Provision of financial securities; Electronic funds transfer services

Trade mark:  PLANET LOTTO

Trade mark registration:     1834938

Owner:  Cardinal House Group Pty Ltd

Priority Date:  4 April 2017

Goods Specification:            Class 36: Computerised financial services; Financial services; Provision of information relating to financial services; Brokerage; Brokerage of currency; Brokerage services relating to financial instruments; Exchange brokerage; Financial brokerage; Money brokerage; Debit card services; Processing of debit card payments; Credit card registration services; Credit card services; Issuance of credit cards; Issuing of credit cards; Processing of credit card statements; Provision of credit cards; Collection of fees, payments or tolls (for others); Collection of payments; Electronic payment services; Financial affairs; Financial management; Financial payment services; Payment administration services; Payment of bills and accounts for others; Payment transaction card services; Processing of payments for banks; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Monetary affairs; Monetary affairs consultancy; Monetary exchange; Monetary transaction services; Monetary transfer; Provision of credit; Provision of credit facilities; Online banking; Bonding (provision of financial guarantees); Provision of financial information; Provision of financial information via an online calculator; Provision of financial securities; Electronic funds transfer services

Trade mark:  PlanetShop

Trade mark registration:     2113963

Owner:  PlanetShop World Pty Ltd

Priority Date:  23 August 2020

Goods Specification:            Class 35: Provision of an online marketplace for buyers and sellers of goods and services

Trade mark:  

Trade mark registration:     2187202

Owner:  Planet Technology Corporation

Priority Date:  15 March 2021

Goods Specification:            Class 9: Cable reels incorporating electric sockets [electric connections]; computer cables; video signal wires; electric wires with plugs; coaxial cables; optical fibers; optical fiber cables; parallel cables; extension cable reels; signal transceiver; signal converter; optical fiber signal receiver; optical fiber signal regenerator.

4.     I will refer to the totality of the above citations as the ‘cited trade marks’ throughout the decision for ease of reference. A total of two adverse examination reports were issued to the Applicant in relation to the present Trade Mark. In response, the Applicant provided submissions which the examiner did not consider sufficient to overcome the objection.

5.     The Applicant duly requested a hearing and I heard the matter on 8 December 2023. The Applicant was represented by Lance Scott of Gestalt Law Pty Ltd. Additionally, on 7 December 2023 the Applicant filed evidence for consideration being:

·Declaration of Rhea Loucas (‘Loucas’), Director of the Applicant, dated 4 December 2023 with Annexures A to H.

The Law

6. Section 33 of the Act provides:

33  Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

7. The presumption of registrability which arises under subsection 33(1) of the Act is a relevant starting point in this matter. I turn to the the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

[1] (1999) 45 IPR 411; (1999) AIPC 91-499 [34].

‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

8. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the Applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

9. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the Applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

Discussion

10. The Applicant requested a hearing in order to argue that the section 44 ground for rejection against its trade mark application since its Trade Mark was not deceptively similar to any of the cited trade marks. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

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

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

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

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

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

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

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

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

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

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

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

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

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

2. The cited trade marks all have earlier priority dates than the Trade Mark and the claims in classes 9, 35, 36, 41 and 42 are the same or similar to those claimed by the cited trade marks which I will outline below under a separate heading for each trade mark citation. The applicant has not argued these points. The key issue to be decided by me is whether the Trade Mark is substantially identical with or deceptively similar to the eight remaining cited trade marks raised as grounds for rejection.

Comparison of the trade marks

13.     It is obvious that the Trade Mark is not substantially identical with any of the eight cited trade marks (which is a total of seven different trade mark representations) according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[2].

[2] (1961) 109 CLR 407, (414)

Cited trade marks

Trade Mark

Planet Audio

Planet Bingo

PLANET LOTTO

PlanetShop

PLANETPLAY

1. While the respective trade marks may all contain the word PLANET, the Trade Mark contains the additional word PLAY which is different to the additional words and stylizations present in the cited trade marks. The different words and stylisations between the respective trade marks provide clear visual and aural differences. I find these differences are sufficient to preclude a finding of substantial identity between the Trade Mark and any of the cited trade marks.

   15.     It is therefore necessary to consider whether the Trade Mark is deceptively similar with any of the cited trade marks.

2. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade mark, to the impression they would get from the applicant’s trade mark.[3]  I must consider the look, sound, and idea conveyed[4] and all the surrounding circumstances.[5] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[6] The probability of deception must be finite and non-trivial.[7]

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, (415) (Windeyer J)

   [4] ibid.

   [5] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, (50) (French J).

   [6] Clark v Sharp (1898) 15 RPC 141, (146) (Byrne J).

   [7] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, [43] French J

   17.     The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415 where Windeyer J. stated:

   ‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]’

   18.     His Honour added at 416, that:

   ‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

   19.     The principles laid out in these tests have not been challenged.

   20.     The examiner raised the cited trade marks as a ground for rejection of the Trade Mark stating:

   Your trade mark closely resembles the earlier trade marks because they share a prominent and memorable element being PLANET. I have considered the additional material and different visual stylisation in all marks, however, these differences are not sufficient to prevent confusion in the marketplace. This is because PLANET remains the dominant and essential element of all marks. Consumers who are aware of the earlier trade mark are likely to confuse the trade marks and infer the goods and services originate from the same or related sources.

   21. Mr Lance Scott, the Applicant’s representative from Gestalt Law Pty Ltd, discussed at length in his submissions why the cited trade marks in question are not deceptively similar to the Trade Mark. He drew on the established authorities for the purpose of making the comparison. Despite that submission, whilst I accept that there are clearly differences between the respective trade marks I cannot agree that they are not deceptively similar. I will elaborate on my reasoning in the following paragraphs as well as clarifying what goods and/or services are the same or similar between the Trade Mark and the respective cited trade mark/s. I will now consider the respective trade marks for the purposes of section 44. There will be considerable repartition in the following discussion to maintain consistency in approach to the comparison of the Trade Mark to the respective cited trade mark/s.

   Trade Mark Registration Number 1142993

Trade Mark Registration Number 1142993

Planet Audio

22.     As foreshadowed in the preceding paragraphs, I turn firstly to the goods and services of interest to the respective trade marks. The Applicant’s claim for computer hardware in Class 9 is similar to the trade mark registration number 1142993 claim for video and television monitors in Class 9. This is because retailers of computer hardware often sell accompanying accessories such as monitors for use with computers.

23.     Secondly, in comparing the respective trade marks the word “PLANET” is the common element of the trade mark representations. While the cited “Planet Audio” trade mark does contain the differing word “AUDIO” and the Trade Mark contains the differing word “PLAY”, the common element of these trade marks is the word PLANET which is the distinctive element of the respective trade marks when applied to the goods in question. This is because the respective words AUDIO and PLAY are descriptive and generic when applied to video and television monitors that are often ‘played’ or contain ‘audio’ capabilities. But the word PLANET has no direct meaning at all when applied to monitors. This makes the word PLANET the most distinctive element of the respective trade marks.  

24.      As I have determined that the word PLANET has no descriptive or generic meaning when applied to computer hardware/video and television monitors, it is therefore distinctive and the dominant cognitive cue in the respective trade marks. I am satisfied that it is probably for this very reason, along with the fact that PLANET is located at the beginning of both trade marks and followed by descriptive/generic words, that consumers are likely to focus on the PLANET part of the respective trade marks. Given the structure of the Trade Mark I consider it probable that consumers who know of the cited trade mark upon seeing monitors bearing the Trade Mark are likely to believe that the goods come from the same trade source or are related to the goods bearing the cited trade mark.

25.     The Applicant has argued:

PLANETPLAY is not deceptively similar to Planet Audio.

As with PLANETPLAY , the combination of “Planet” and “Audio” is an incongruous coupling. Consequently, the component “Audio” cannot be discounted as it is an important component of the trade mark. Similarly, PLAY in PLANETPLAY cannot be discounted.

Further, the respective trade marks PLANETPLAY and Planet Audio are visually, phonetically and conceptually different. In Planet Audio, the component “Audio” connotes sound or frequency. Planet Audio may connote a celestial or heavenly place of sound or a spacey sound or frequency.

In contrast, in PLANETPLAY, the component PLAY connotes multiple ideas, given the various meanings of PLAY. These include fun, action, dramatic performance, activity or freedom of movement.

In addition, the strong alliteration in PLANETPLAY provides a very different sound from Planet Audio.

The way that the purchase will be made should also be taken into account. As the European Court of Justice has remarked (Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ETMR 690, paragraphs 26-27):

It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question. In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.

It is claimed that the conflicting Class 9 goods are “computer hardware” (the Applicant) and “video and television monitors” (the Cited Mark 1142993 Planet Audio).

Purchasers of the respective goods are likely to pay care and attention to the goods being purchased. They will consider issues such as function, size, technical specifications, fitness for purpose and brand. Consequently, there is no real tangible danger of consumer deception or confusion occurring in relation to consumers purchasing relevant goods under the trade marks PLANETPLAY and Planet Audio

26.     I do not believe that the differing word elements of the respective trade marks should be disregarded or minimized in the face of the distinctiveness of the word PLANET. But at the same time, I hold the view that consideration must be given as to whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in each of the respective trade marks may induce traders and the public to believe that the marks emanate from the same trade source.[8]

[8] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, (113) (Assistant-Comptroller Chisholm).

27.     The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[9] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

‘With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.’

[9] 66 RPC 113

28.     Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that PLANETPLAY would be seen as a member of the ‘family’ of PLANET trade marks because of a commonality that has been produced by a mutual feature.

29.     As already discussed, the word PLANET is the common and distinctive element in the trade mark representations. Although the conflicting trade marks contain differing common/generic words, consumers are more likely to refer to them by the dominant cognitive cue, which in this case is the word PLANET.  It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader. I am satisfied that the Trade Mark is deceptively similar to trade mark registration number 1142993 Planet Audio.

Trade Mark Registration Numbers 1235208 and 1235214

Trade Mark Registration Number 1235208	Trade Mark Registration Number 1235214
Planet Bingo

30.     Turning to the goods and services of the respective trade marks, the Applicant’s claim for various video game and computer software in Class 9 is similar to the cited trade mark numbers 1235208 and 1235214 claim for video game and computer software in Class 9. Additionally, the various claims for provision of video games in Class 41 and development of video games in Class 42 is closely related to the earlier trade marks' various claims for video and computer software in Class 9. This is because the goods and services are often both produced and provided in the gaming industry by the same traders. It is reasonable for consumers to assume a common trade source in this marketplace.

31.     In comparing the respective trade marks the word “PLANET” is the common element of the trade mark representations. While the cited “Planet Bingo” trade marks do contain the differing word “BINGO” and trade mark number 1235214 contains additional stylization involving graphic planet devices and the Trade Mark contains the differing word “PLAY”, the common element of these trade marks is the word PLANET. PLANET is the distinctive element of the respective trade marks when applied to the video game goods and services of interest to the respective parties. This is because the words BINGO and PLAY are descriptive when applied to video game goods and services. This is because BINGO is descriptive of a gambling game that is ‘played’ by those wanting to engage in gambling. But the word PLANET has no direct meaning at all when applied to video game goods and services. This makes the word PLANET the most distinctive element of the respective trade marks.  

32.     As I have determined that the word PLANET has no descriptive or generic meaning when applied to the video game goods and services, it is therefore distinctive and the dominant cognitive cue in the respective trade marks.

33.     I am satisfied that it is probably for this very reason, along with the fact that PLANET is located at the beginning of both trade marks and followed by descriptive/generic words, that consumers are likely to focus on the PLANET part of the respective trade marks. Given the structure of the Trade Mark I consider it probable that consumers who know of the cited trade marks upon seeing monitors bearing the Trade Mark are likely to believe that the goods come from the same trade source or are related to the goods bearing the cited trade mark. I am satisfied that the Trade Mark is deceptively similar to trade mark registration numbers 1235208 and 1235214.

Trade Mark Registration Numbers 1834935, 1834937 and 1834938

Trade Mark Registration Number 1834935	Trade Mark Registration Number 1834937	Trade Mark Registration Number 1834938
PLANET LOTTO

34.     The Applicant’s claims for various video game and computer software in Class 9 is closely related to trade mark registration number 1834935 claim for various gaming services in Class 41. Additionally, the Applicant’s claim for providing online video games; rental of video games; publishing services for video game in Class 41 and development of video games in Class 42 is similar to the various claims for gaming services in Class 41.

35.     Regarding trade mark registration numbers 1834937 and 1834938, the Applicant’s claim for issuing of tokens of value, including non-fungible tokens (NFT`s), relating to video gaming; financial services relating to video gaming in Class 36 is similar to the earlier trade marks' broad claims for financial services in Class 36

36.     In considering whether the Trade Mark is deceptively similar with any of the trade mark registrations numbers 1834935, 1834937 and 1834938 rather than repeating my earlier discussion surrounding the Trade Mark, I reiterate the prominent and memorable feature of the Trade Mark is the word PLANET. I also state that the respective trade marks are likely to be referred to by the word elements in place of any stylisations by Australian customers.

37.     In relation to the Applicant’s submissions about the stylized PLANET LOTTO trade mark and the plain text PLANET LOTTO trade mark, I do not agree with the Applicant’s assessment that the net impressions are sufficiently different such that there is no real or tangible danger of confusion. PLANET LOTTO very clearly not identical to, or the exact same words as, PLANETPLAY. I agree that both LOTTO and PLAY are well-known and understood words. However, this does not mean that the earlier cited trade marks are not deceptively similar to the Trade Mark.

38.     While I acknowledge that in the stylised PLANET LOTTO trade marks the word LOTTO is presented in larger text, the word PLANET is in position along the top of the trade marks and remains an essential and distinctive element. Particularly when these trade marks are applied to gambling gaming goods and services. PLANET remains the distinctive and shared element and the dominant cognitive cue in the respective trade marks when applied to gambling gaming goods or services.  I am satisfied that the Trade Mark is deceptively similar to the trade mark registrations numbers 1834935, 1834937 and 1834938.

Trade Mark Registration Number 2113963

Trade Mark Registration Number 2113963

PlanetShop

39.     The Applicant’s claim for providing online marketplaces for sellers and buyers of goods and services relating to video gaming in Class 35 is similar to the broad claims made by Trade Mark Registration Number 2113963 for providing online marketplaces for sellers and buyers of goods and services in Class 35.

40.     In comparing the respective trade marks it becomes apparent that PlanetShop is similar to the Trade Mark in that they have PLANET as their first word element. The word PLANET is distinctive for the services. In issues of imperfect recollection the fact that trade marks have a common first element may be of significance[10]. While the respective trade marks contain the additional words/suffix ‘PLAY’ and ‘SHOP’, ultimately:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[11]

[10] In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279.

[11] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

41.     The suffix ‘SHOP’ is completely descriptive of the services in class 35 and the most distinctive element of the respective trade marks is the prominent first word being PLANET. I am satisfied that it is probably for this very reason, along with the fact that PLANET is located at the beginning of respective trade marks, that consumers are likely to focus on the PLANET part of the respective trade marks. Given the structure of the Trade Mark I consider it probable that consumers who know of the cited trade mark upon encountering services bearing the Trade Mark are likely to believe that the online marketplace gaming services come from the same trade source or are related to the online marketplace services bearing the cited trade mark. I am satisfied that the Trade Mark is deceptively similar to trade mark registration number 2113963.

Trade Mark Registration Number 2187202

Trade Mark Registration Number 2187202

42.     The Applicant’s claim for computer hardware in Class 9 is similar to the claim made by trade mark number 2187202 for cables in Class 9. The examiner explained this in the first adverse report and I reiterate that this is because retailers of computer hardware often sell accompanying accessories and products such as cables for use with computers.

43.     As already discussed numerous times previously in this decision, the word PLANET is the common and distinctive element in the trade mark representations. Although the Trade Mark contains the additional word PLAY and the conflicting cited trade mark contains a graphic device, consumers are more likely to refer to, and remember, both trade marks by the dominant cognitive cue, which in this case is the word PLANET.  It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products.  The public is familiar with this practice and knows that, while the marks are not identical, they do denote related products offered by the same trader. I am satisfied that the Trade Mark is deceptively similar to trade mark registration number 2187202.

Consideration of acceptance under section 44(3)(b) of the Act – Other Circumstances

44. The Applicant has argued that if I do find the Trade Mark to be deceptively similar to the cited trade marks that I should accept the Trade Mark under the provisions of section 44(3)(b) of the Act. In assessing whether there are other circumstances that would permit my accepting the Trade Mark, I turn to the evidence put forward by the Applicant.

45.     The Loucas declaration states that the Applicant was founded in November 2021 in Switzerland. According to Loucas the Applicant is a software developer that provides a climate conscious games marketplace, as well as a not-for-profit digital platform that allows everyone around the world to contribute to climate action through in game purchases and gameplay with affiliated game studios.

46.     According to Loucas, the Applicant’s PLANETPLAY online games marketplace platform has continuously operated as a global online platform at planetplay.com since December 2022[12]. Since its launch at the end of 2022, Loucas states the Applicant has produced in-game campaigns, not only with the game industry, but also tapped into the music industry to create cross pop-culture events. The most recent campaigns are collaborations with Sybo x J Balvin, and Avakin Life x Fat Joe.

[12] Annexure B accompanying Loucas

47.     Mr Loucas avers that Australian users are welcomed and specifically targeted on the marketplace. For example, Australian visitors to the Store on the website planetplay.com will be presented with games and specials in AUD currency[13]. In December of 2023 the Applicant had over 150 thousand users of its platform of which more than 250 are registered as being Australian. According to Loucas, the Applicant attracted 120 thousand users to its platform within six months. The Applicant has engaged in social media to promote its marketplace through Facebook[14], Instagram[15], YouTube[16], Linkedin[17] and Discord[18].

[13] Annexure B accompanying Loucas

[14] Annexure D accompanying Loucas

[15] Annexure C accompanying Loucas

[16] Annexure E accompanying Loucas

[17] Annexure F accompanying Loucas

[18] Annexure G accompanying Loucas

48.     Loucas states the Applicant has grown international awareness in the Trade Mark through numerous marketing initiatives and participation in trade/industry events and climate-related events and projects. The Applicant has been covered in many top media, including Forbes, CityAM, YahooFinance, Venture Beat, BeyondGames and PocketGamers. The Applicant has more than 300 million media coverage on its single campaign with Avakin Life and Fat Joe, another 200 million media coverage with Subway Surfers and J Balvin[19].

[19] Annexure H accompanying Loucas

49. While I accept that the Applicant has commenced using the Trade Mark and is developing an international following, is this sufficient to accept the Trade Mark under the provisions of section 44(3)(b)? I am not satisfied it is. While the Applicant has claimed a number of goods and services, the evidence only satisfies me that the Applicant runs an online marketplace platform for the use of customers to buy games. This does not demonstrate such a wide range of use that would include all those Goods and Services in the specification of the Trade Mark. Additionally, the Applicant has promoted its platform to an international audience rather than having a direct focus on the Australian marketplace and I note that only a little over 250 Australian players are registered on the platform as of December 2023.

50. Taking into account all of the above, I am not satisfied that the current circumstances make it proper to apply the provisions of section 44(3)(b). Nor has the applicant been able to provide any evidence of use before the filing date so the provisions of section 44(3)(a) are not applicable.

Decision

1. A valid ground for rejection of the application exists under subsection 44 in relation to classes 9, 35, 36, 41 and 42. However, there is no objection against the Trade Mark proceeding to acceptable for possible registration in class 28. Therefore I wrote to the Applicant on ** February 2024 advising of the amendment and that the Trade Mark with the amended specification would be able to proceed to acceptance for possible registration. I also advised that if the Applicant did not amend the specification to delete those goods and services in conflict that I would be issuing a decision whereby the Trade Mark would be refused in its entirety. The Applicant has responded and requested an amendment that deletes the goods and services in conflict.

1. Accordingly I accept for possible registration trade mark application number 2289175 in respect of the amended specification.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   ** February 2024