Take-Two Interactive Software Inc v ICC Business Corporation FZ LLC

[2023] ATMO 33

TRADE MARKS ACT 1995

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

ReOpposition by Take-Two Interactive Software Inc to registration of trade mark subject of application 1816259 (9, 16, 25, 28, 38,41) – T20 (figurative) – in the name of ICC Business Corporation FZ LLC

Delegate:                 Robert Wilson

Representation:       Opponent: Griffith Hack

Applicant: David Franklin

Decision:                   2023 ATMO 33

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58, 59 and 60 considered – no grounds established – specification amended before decision issued – trade mark may proceed to registration.

Background

1. This decision concerns an opposition to registration of the trade mark detailed below. The opposition was brought by Take-Two Interactive Software Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth). The application is in the name of ICC Business Corporation FZ LLC (‘Applicant’).

Application Number:

1816259

Filing Date:

15 December 2016

Specification:

Classes: 9, 16, 25, 28, 38 and 41

Specification of goods and services appears in the annexure to this decision.

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Applicant’s Trade Mark’)

Endorsements

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

2. Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3. Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration and a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under s 44, 42(b), 58, 59 and 60.

4. Following the filing of the SGP, the Opponent requested an initial cooling-off period, plus a later extension to the cooling-off period. Following the extension, the cooling‑off period ended on 17 October 2019. Immediately prior to the end of the cooling-off period the parties jointly requested that the opposition be suspended for six months for the purposes of negotiations. As a result of two later requests for extension of the suspension, the opposition was suspended until 22 April 2021. A request that the opposition be further suspended was filed on that date. The Registrar refused that request and set a revised date by which the Applicant should file any Notice of Intention to Defend the opposition (‘NID’). The Applicant filed its NID by the due date. The filing of the NID, as usual, triggered the start of the evidence stage of the opposition.

Evidence

5. The Opponent filed Evidence in Support of its opposition (‘EIS’), being:

·Declaration made on 16 September 2021 by David Harris, Counsel of the Opponent (together with its subsidiaries and predecessors-in-interest), with Annexures A to G (‘Harris declaration’).

6. The Applicant filed Evidence in Answer, being:

·Declaration made on 20 December 2021 by Jonathan Hall, the Company Secretary of the Applicant, with Annexures A to G (‘Hall declaration’).

7. The Opponent did not file Evidence in Reply.

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Applicant requested that the matter be decided without an oral hearing and paid the appropriate fee. Neither party filed written submissions.

9. As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter, which I have done, on the material discussed above.

The Opponent

10.     According to the Harris declaration:

[The Opponent], headquartered in New York City, was founded in 1993 and is a leading developer, marketer and publisher of interactive entertainment including video games and related products and services for customers around the globe. [The Opponent] develops, publishes, markets, and sells software, video games, entertainment content, and related products principally through its wholly-owned labels, including the well‑known labels Rockstar Games and 2K, as well as its new Private Division label, and Social Point and Nordeus, leading developers of mobile games. [The Opponent] is listed on the NASDAQ Global Select Market under the ticker symbol ‘TTWO’ and is the third largest publicly-traded game company in North America.

11.     The Opponent is the owner of the trade mark registrations detailed below (‘Opponent’s Registrations’):

Trade Mark Number:

1003523

Priority Date:

25 May 2004

Specification:

Class 9: Peripheral equipment for computer games; software namely computer games software; electronic games adapted for use with television receivers, monitors or some other form of display apparatus; electronic games, parts, fittings and accessories therefor

Class 35: Retail and wholesale services rendered in relation to peripheral equipment for computer games and software, including computer games software; retail and wholesale services rendered in relation to electronic games and their parts, fittings and accessories

(‘1003523 Goods and Services’)

Trade Mark:

(‘Opponent’s Trade Mark’)

Trade Mark Number:

1268734

Priority Date:

22 October 2008

Specification:

Class 41: Entertainment; provision of on-line entertainment; providing on-line computer games and/or on-line video games; providing information on entertainment in the field of computer games and video games; production of multimedia for entertainment purposes; production of computer games, video games and software for entertainment purposes

(‘1268734 Services’)

Trade Mark:

12.     In this decision, the 1003523 Goods and Services, and the 1268734 Services collectively, will be referred to as the ‘Opponent’s Goods and Services’.

13.     In the SGP, the Opponent also asserted common law ownership of the trade marks shown below (‘T2 Marks’). A list of the goods and services in which use of those trade marks is asserted is also provided below (‘T2 Goods & Services’).

Trade Marks	Goods and Services
T2	14.     Video games, electronic games, computer games, computer software, games, videos, animation, motion pictures, electronic publications, printed materials, entertainment, production and development of computer and video games and of entertainment, sale of such goods and services, online provision of such goods and services, and providing online information relating to such goods and services

The Applicant

15.     According to the Hall declaration:

[The Applicant] is the international governing body of cricket. …

[The Applicant] presently has 106 members and is responsible for the organisation and governance of cricket’s major international tournaments, most notably the ICC Cricket World Cup [and] the ICC T20 World Cup … Australia has been a full member of [the Applicant] since [its inception in] 1905.

[The Applicant] appoints the umpires and referees that officiate at all sanctioned Test matches, One Day Internationals and Twenty20 International matches. [The Applicant] sets and promulgates the professional standards of discipline for international cricket.

Grounds of Opposition, Onus and Standard of Proof

16.     As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 44, 42(b), 58, 59 and 60. The Opponent need only establish one of its nominated grounds of opposition to successfully opposed registration of the Applicant’s Trade Mark. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 15 December 2016, being the filing date of the application (‘Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Section 44

17.     Section 44 is reproduced below: 

Section 44 - Identical 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest 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 may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)            the similar goods or closely related services; or

(ii)           the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, 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.

18.     In the SGP the Opponent nominated the Opponent’s Registrations to support this ground of opposition. The Opponent’s Registrations both cover the Opponent’s Trade Mark. To successfully oppose registration of the Applicant’s Trade Mark pursuant to s 44 the Opponent must establish that:

·     the Relevant Date is not earlier than the priority dates of the Opponent’s Registrations (‘the first requirement’);

·     at least some of the Opponent’s Goods and Services are similar, or closely related, to at least some of the Applicant’s Goods and Services. (‘the second requirement’); and

·     the Opponent’s Trade Mark is substantially identical with, or deceptively similar to, the Applicant’s Trade Mark (‘the third requirement’).

The first requirement

19.     The Opponent’s Registrations have priority dates which are earlier than the Relevant Date. The first requirement is therefore satisfied.

The second requirement

20.     As indicated above, neither party filed submissions in this matter. Also, the Opponent provided no details in the SGP as to which particular of its goods and services it considers to be similar to which of those of the Applicant. I, therefore, made my assessment of the second requirement in the absence of those things. Further, I made a preliminary assessment of the second requirement in respect of the specification of goods and services in the application as it stood at the Relevant Date (‘Unamended Specification’). I determined that there were a number of the Opponent’s Goods and Services which were similar to a number of the goods and services in the Unamended Specification. As a courtesy, prior to this decision being issued the Applicant was given an opportunity to amend its application by deleting the conflicting goods and services. The Applicant availed itself of that opportunity and the specification was amended accordingly. The Applicant’s Goods and Services is the specification as amended. For the sake of completeness, included below is a discussion of second requirement prior to the amendment of the specification.

21.     The 1003523 Goods and Services include peripheral equipment for computer games; software namely computer games software; electronic games adapted for use with television receivers, monitors or some other form of display apparatus; electronic games, parts, fittings and accessories therefor in Class 9. Those goods are similar to the apparatus for recording, transmission or reproduction of sound or images; computer games and computer software; audio, video and data recordings; recordings on magnetic tape; recordings on optical disc; digital downloads which appeared in Class 9 of the Unamended Specification.

22.     The 1268734 Services include the broad claim of entertainment in Class 41. As sporting events are, in many instances, a form of entertainment, that service encompasses the organisation of sporting activities which appeared in Class 41 of the Unamended Specification. Also appearing in the 1268734 Services is providing information on entertainment in the field of computer games and video games in Class 41. Publicly held competitions between players of computer games, known as ‘esports’, is a well‑established and growing area of entertainment. The aforementioned services of the Opponent are therefore similar to provision of information relating to sporting activities which appeared in Class 41 of the Unamended Specification.

23.     The amendment of the specification removed all of the conflicting goods and services from the specification. Accordingly, the second requirement is not established in respect of the Applicant’s Goods and Services. This ground of opposition is, therefore, not established. While not strictly necessary, for the sake of completeness, the third requirement is considered below.

The third requirement

Substantially identical

24.     I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J said:

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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

[4] [1963] HCA 66, [12].

25.     The relevant trade marks are juxtaposed below.

The Applicant’s Trade Mark The Opponent’s Trade Mark

It is apparent that there are significant visual and aural differences between the above trade marks. While ‘T2’ is an element common to both signs, the additional pictorial elements in the Applicant’s Trade Mark and the additional words in the Opponent’s trade mark create sufficient differences which mean that the trade marks are not substantially identical.

Deceptively Similar

26.     Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

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].[5]

[5] Ibid [13].

27.     Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[6]

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[7]

Third, allowance must be made for imperfect recollection.[8]

Fourth, the effect of the spoken description must be considered.[9]

Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[11] …

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[12]

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[13]

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[14] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[15] [16]

[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73] (Moore, Sackville and Emmett JJ); Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Dixon CJ, McTiernan, Kitto, Taylor and Owen JJ).

[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74] (Moore, Sackville and Emmett JJ).

[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75] (Moore, Sackville and Emmett JJ); Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658 (Dixon, Evatt and McTiernan JJ).

[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89] (Moore, Sackville and Emmett JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Dixon CJ, Kitto, McTiernan, Webb, Fullagar and Taylor JJ).

[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French, Branson and Tamberlin JJ); Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville and Emmett JJ).

[15] Ibid [100].

[16] [2012] FCA 1022, [37]–[46].

28.     As indicated in the consideration of substantial identity, above, both trade marks include ‘T2’ as an element. While it might be the intention of the designer of the Applicant’s Trade Mark, and indeed the Applicant, that the trade mark be read as ‘T20’, the ’0’ in ‘T20’ is sufficiently removed from ‘T2’, and its stylisation is sufficiently different to the ‘T2’ part of ‘T20’ that they are readily interpreted as separate elements. There is a high likelihood that ‘T2’ will be seen as a prominent, key, identifying feature of the Applicant’s Trade Mark. ‘T2’ is also a prominent feature of the Opponent’s Trade Mark and is likely to be seen as a key identifying feature of that trade mark. Given the prominence of ‘T2’ in both trade marks, I am of the view that the Applicant’s Trade Mark so nearly resembles the Opponent’s Trade Mark that it would have been likely to deceive or cause confusion if used in connection with the goods and services which were deleted from the Unamended Specification.

Conclusion on s 44

29.     Because of the amendment made to the Unamended Specification this ground of opposition is not established.

Section 58

30.     In the SGP the Opponent relied on the T2 Marks and the Opponent’s Trade Mark to support this ground of opposition.

31.     Section 58 is reproduced below:

Section 58. Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

32.     The owner of a trade mark for particular good/services is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors in respect of at least one of the trade marks relied upon. These are:

·     that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark relied upon by the Opponent;[17]

·     that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent were used;[18] and

·     that a person other than the Applicant has the earlier claim to ownership of the Applicant’s Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Applicant’s Trade Mark by the Applicant.[19]

[17] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

[18] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd, à Beckett and Hood JJ).

[19] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

33.     The Applicant’s Trade Mark, the T2 Marks, and the Opponent’s Trade Mark are shown below for ease of reference.

Applicant’s Trade Mark	T2 Marks		Opponent’s Trade Mark
T2

34.     The same test for substantial identity is adopted here as is discussed in the s 44 ground of opposition. On a side by side comparison, there are obvious and signification differences between the Applicant’s Trade Mark and the T2 Marks and the Opponent’s Trade Mark, not least of those is the distinctive graphic device present in the Applicant’s Trade Mark.  The differences are sufficient such that the Applicant’s Trade Mark is not substantially identical to any of the trade marks relied upon by the Opponent to support this ground of opposition. This ground of opposition has fallen at the first hurdle and is, therefore, not established. The remaining factors need not be considered.

Section 60

35.     In the SGP, the Opponent relied on the Opponent’s Trade Mark and the T2 Marks (‘Section 60 Marks’) to support this ground of opposition. The T2 Marks will be referred to individually as indicated below:

T2 Plain Word Mark	T2 Coloured Mark
T2

36.     Particulars provided included:

The Opponent had, before the priority date … acquired a reputation in Australia in the [Section 60 Marks], including in relation to video games, electronic games, computer games, computer software, games, videos, animation, motion pictures, electronic publications, printed materials, entertainment, production and development of computer and video games and of entertainment, sale of such goods and services, online provision of such goods and services, and providing online information relating to such goods and services [(‘Opponent’s Goods and Services’)]

37.     Section 60 is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

38.     To establish this ground of opposition the Opponent must establish that at the Relevant Date at least one of the trade marks upon which it relies had acquired a reputation, in Australia, amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and, on the basis of the definition provided, decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[20] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[21]

[20] [2000] FCA 1335, [81] (Kenny J).

[21] [1992] FCA 159, [118] (Lockhart, Gummow and French JJ).

39.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[22]

[22] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

40.     The Harris declaration indicates that the Opponent is a major player in the area of interactive entertainment (see the background of the Opponent provided above). Further to that background, it is declared that the Opponent’s products

are designed for console gaming systems and hand-held gaming systems, such as Sony Computer Entertainment Inc’s PlayStation5, PlayStation4 and PlayStation3; Microsoft Corporation’s Xbox Series X|S, Xbox One, and Xbox 360; and the Nintendo Switch; as well as for personal computers, including smart phones and tablets. [The Opponent’s] products are delivered through physical retail stores, digital downloads, online gaming platforms, and cloud streaming services, and are available all over the world. … [The Opponent] develops and/or publishes some of the most iconic and top-selling game franchises in the world, including Grand Theft Auto, Midnight Club, Max Payne, Red Dead Redemption, Manhunt, Civilisation, and Mafia, as well as several famous sport related franchises, including NBA 2K, PGA Tour 2K, WWE 2K, and Top Eleven. Several of Take-Two’s products have received critical acclaim, such as the Grand Theft Auto series, which has sold over 350 million units and attained commercial success globally. …

[The Opponent] uses [the Section 60 Marks] in a number of ways, including on websites, on social media, in marketing materials, and applied to its goods.

41.     There are few examples of use of the Section 60 Marks in the EIS. Annexure B of the Harris declaration is declared to be ‘printouts from [the Opponent’s] website including its corporate page at The annexure is eight pages in total, five of which, together, show what appears to be a two pages of the Opponent’s website. The T2 Coloured Mark appears prominently at the top of the page. The Opponent’s Trade Mark (in a version coloured similarly to the T2 Coloured Mark appears towards the bottom of the page. The remaining three pages of the annexure appear to show the ‘corporate page’ referred to in the declaration. ‘T2’ appears in various forms on the page, including the T2 Coloured Mark which appears prominently at the top of the page. It is apparent that the pages in this annexure were retrieved on 28 June 2019.

42.     Insofar as it might assist the Opponent in establishing that any of the s 60 Trade Marks had acquired a reputation in Australia at the Relevant Date, Annexure B has some serious shortcomings. Firstly, the printouts were retrieved some two and a half years after the Relevant Date. Beyond the statement in the declaration that, ‘Materials such as this have appeared on [the Opponent’s] website for many years’, there is no evidence (for example, internet archive evidence) before me which establishes how those pages appeared prior to the Relevant Date. Further, there is nothing in the evidence which shows how many times those pages were visited by persons in Australia (or anywhere for that matter). Consequently, this evidence is of little assistance to the Opponent.

43.     Annexure C is declared to be the Opponent’s ‘2016 annual report (as published on its website)’. This annexure is some 58 pages long. While some of the Section 60 Marks appear in the report, in the absence of submissions, it is unclear how this document might assist the Opponent. There is no indication how many times (if at all) this document was accessed by persons in Australia. This annexure does not assist the Opponent.

44.     Annexure D is declared to be, ‘a sample of packaging for video games showing use of [the Opponent’s Trade Mark] on the packaging. This annexure is a mere three pages long and appears to show three views of the packaging for a video game called ‘Let’s Cheer!’ and which is intended to be used on Xbox 360 hardware. The Opponent’s Trade Mark appears only on the back of the packaging in the lower portion, relatively smally, and in conjunction with some five other trade marks. There is no declaration as to how many copies of this particular game were sold in Australia. While it is declared that there have been many titles sold in Australia, this single example of packaging does little to establish how, and what, trade marks appeared on packing prior to the Relevant Date.

45.     Annexure E is declared to be ‘a copy of the home page for [the Opponent’s] online store, showing use of [the Opponent’s Trade Mark] at the bottom of the page’. This annexure is two pages long and shows a single web page. The Opponent’s Trade Mark appears at the bottom of the page, quite smally, next to the copyright notice. This annexure suffers from the same shortcomings as Annexure B and was retrieved on the same day. This annexure is of little assistance to the Opponent.

46.     Annexure F is declared to be ‘photos of signage featuring [the Opponent’s Trade Mark] at an E3 games convention’. This two page annexure shows the Opponent’s Trade Mark on a wall behind what appears to be a line of chef’s who are, perhaps, providing food. The trade mark appears alongside a number of other trade marks. It is not stated in the declaration when the photographs were taken, which year the E3 games convention was held, how many people attended the convention, or even where the convention was held. This evidenced does not assist the Opponent.

47.     Annexure G is declared to be, ‘printouts of recent articles discussing the ongoing growth and popularity of [the Opponent’s] games in recent years’. The annexure is some 17 pages long. None of the Section 60 Marks seem to appear in any of the articles. Further, as declared, the articles are ‘recent’, the earliest seeming to be from August 2020. Many of the Opponent’s games are mentioned in the articles, nevertheless, this does little to establish that any of the Section 60 Trade Marks had acquired a reputation as at the Relevant Date.

48.     The Harris declaration includes a table which is declared to be ‘a summary of the net revenue and gross profit of [the Opponent] from 2012–2016 (in US$)’. Taking the figures in the table at face value, it is clear that the Opponent is a highly successful, and hugely profitable business. It is apparent from looking at the evidence that the Opponent uses many trade marks (including the Section 60 Marks) in connection with its goods and services. However, an acceptance that the Opponent has enormous sales worldwide is not sufficient to establish that any particular trade mark has acquired a reputation in Australia. On balance, the evidence filed in this matter has too many shortcomings to establish that any of the Section 60 marks had, before the Relevant Date acquired a reputation in Australia. Consequently, the Opponent has, again, fallen at the first hurdle, and has failed to establish this ground of opposition.

Section 42(b)

49.     In the SGP, the Opponent indicated that it relied upon the Section 60 Marks to support this ground of opposition, including the asserted acquired reputation. In part, the particulars state:

The use of the similar [Applicant’s Trade Mark or T20 Coloured Marks] by the Applicant … for any of the [Applicant’s Goods and Services] related to the [Opponent’s Goods and Services], would amount to conduct that is misleading and deceptive or is likely to mislead or deceive in breach of sections 18 and 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010), including by falsely suggesting that the Applicant’s goods and services are those of the Opponent or that the Applicant or its goods or services are related to the Opponent or are sponsored, approved, affiliated or licensed by the Opponent.

50.     Section 42 is reproduced below:

42 Trade mark scandalous or its use contrary to law

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

(a) …

(b) its use would be contrary to law.

51.     The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[23] The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[24]

[23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

[24] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).

52. In the present matter the Opponent failed to establish a ground of opposition under s 60 as it failed to establish that the Section 60 Marks had acquired a reputation. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[25] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[25] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36] (Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

53. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[26] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[27]

[26] [2003] FCA 104, [107] (Beaumont J).

[27] [1989] FCA 506, [40] (Hill J) (citations omitted).

54.     For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law; therefore, this ground of opposition is not established.

Section 59 – Applicant not intending to use trade mark

55.     The ground based on s 59 was particularised, in part, in the SGP as follows:

The scope of [the Applicants Goods and Services] in the application is drafted so widely that it is unlikely that one entity would have the capacity or ability make, provide and/or supply all of the nominated goods and services. Therefore, at the priority date, the Applicant had no intention to use [the Applicant’s Trade Mark] for most or many of the nominated goods and services.

Further or in the alternative, as shown on the Applicant’s website … the Applicant’s only intended use of the trade mark was for organising Twenty20-rules cricket tournaments. At the priority date, the Applicant hand no intention to use [the Applicant’s Trade Mark] for any other goods or services ….

56.     Section 59 of the Act is reproduced below:

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)   to use, or authorise the use of, the trade mark in Australia, or

(b)   to assign the trade mark to a body corporate for use by the body Corporate in Australia;

in relation to the goods and/or services specified in the application.

57.     As observed by Jacobson J, s 59 is a ‘difficult’ ground for an Opponent to establish because of

the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent.[28]

[28] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161].

58.     The onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Applicant’s lack of intention, at which stage the onus moves to the Applicant for rebuttal.[29] The intention to use a trade mark must exist at the date of application,[30] consequently, it is incumbent upon the Opponent to establish that the Applicant did not intend to use the trade mark at the Relevant Date.

[29] Ibid [163].

[30] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).

59.     As indicated, there are no submissions from either party in this matter; however, Mr Harris stated in his declaration:

I understand that [the Applicant] may use or intend to use its trade mark in respect of the organisation and operation of Twenty20 cricket tournaments. I note that [the Applicant’s Goods and Services] are not limited to goods and services relating to cricket, for instance, class 9 covers the description ‘computer games and computer software’, which overlaps with [the Opponent’s] goods and commercial interests. I consider that it would have been very unlikely that the applicant intended to use its trade mark for non-cricket related goods and services, or for non-cricket computer games and computer software, at the time the trade mark application was filed.

60.     Beyond what was stated by Mr Harris in his declaration there is no evidence to support this ground of opposition. Indeed, Mr Harris’ statements amount to little more than his opinion on the issue. Further, the goods and/or services in respect of which the Applicant was using its trade mark at the time Mr Harris made his declaration, or which the Applicant had used its trade mark following the making of its application does not necessarily reflect its intention at the time it filed its application. I am not satisfied that the Opponent has displaced the assumption of intention to use which arises from the Applicant’s filing of its application to register its trade mark. This ground is therefore not established.

Decision

61.     Section 55 relevantly provides:

55Decision

(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.

62.     None of the nominated grounds of opposition were established by the Opponent; accordingly, trade mark 1816259 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks

7 March 2023

Annexure

The Applicant’s Goods and Services

Class 9: Magnetic data carriers, recording discs; CDs, CD-ROMs, DVDs, DVD-ROMs

Class 16: Printed matter; books, programmes, score cards, magazines, comics, activity books, pop-up books, posters, banners, flags, wrapping paper, gift tags, photographs, stationery, notepaper, envelopes, pens, pencils, pencil cases, writing cases, paper napkins and table cloths, promotional materials, tickets, programme flyers, packaging material, instructional and teaching materials, coasters, table mats, stickers, transfers, calendars, diaries, notebooks, tissues, paper handkerchiefs, folders, erasers, pencil tops, pencil sharpeners, crayons, felt-tip pens, greeting cards, plastic bags, carrier bags, parts, fittings and accessories for all the aforesaid goods

Class 25: Clothing; footwear; headwear

Class 28: Sporting articles; toys and playthings; party hats, playing cards, parts, fittings and accessories for all the aforementioned goods

Class 38: Telecommunications services; communications services; communications by mobile telephones; communications by electronic computer terminals, databases and Internet related telecommunications networks and wireless electronic communication devices; communications by telephone; communications by radio; communications by teleconferencing; broadcasting services including through radio, television, cable, satellite, terrestrial; press and information agency services; broadcasting of a commercial site on the Internet or on wireless electronic communication device; radio, television and related programming and broadcasting services provided via the Internet or on wireless electronic communication devices; data transmission and data broadcasting; broadcasting and transmission of text, messages, information, sound and images; transmission of television programmes, text, messages, information, sound and images via communication and computer networks; computer aided transmission of information, messages, text, sound, images, data and television programmes; transmission of information online, providing access to online information services; electronic messaging; providing access and leasing of access time to computer bulletin boards and real-time chat forums via a global computer network; providing online chat rooms and electronic bulletin boards for registered users for transmission of messages, photo management and photo sharing including uploading, editing, organising and sharing the photos with other users; providing online chat rooms and electronic bulletin boards for registered users for social networking; providing access to chat rooms for the transmission of information through computers and the Internet; provision of access to home and office shopping and ordering services via computer and/or the Internet; telecommunication of information (including web pages), computer programs and any other data; electronic mail services; providing access time to the Internet or wireless electronic communication; providing telecommunications connections to the Internet or databases; streaming of video and audio material from the Internet and by mobile phones; providing access to search engines for retrieving data and information via global networks

Class 41: Organisation and provision of education, training and development in relation to sports