Treastone Ltd v Redbeet Interactive AB

[2022] ATMO 143

TRADE MARKS ACT 1995

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

Re:Opposition by Treastone Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2075280 (International Registration number 1492395) (classes 9 & 41) – RAFT (figurative) - in the name of Redbeet Interactive AB

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Holder: Ben Fitzpatrick of Counsel, instructed by Davies Collison Cave

Decision:

2022 ATMO 143

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – s 60 of the Trade Marks Act 1995 (Cth) considered – not established – extension of protection allowed

Background

1. This is a decision on the opposition by Treastone Ltd (‘Opponent’) to the extension of protection of International Registration 1492395 (‘IRDA’) in the name of Redbeet Interactive AB (‘Holder’) for:

Trade Mark:  (‘Trade Mark’)

Filing Date:                  25 February 2020 (‘Relevant Date’)

Specification:             Class 9:  Computer game software; computer game discs; downloadable computer game programs; recorded computer game programs; video and computer game programs; computer game software for use on mobile and cellular phones; video game discs; video game software; electronic game programs; downloadable electronic game programs; electronic game software for wireless devices; electronic game software for handheld electronic devices.

Class 41: Providing on-line computer games; providing information on-line relating to computer games and computer enhancements for games; electronic games services provided by means of the internet.

(‘Holder’s Goods and Services’)

1. The IRDA was examined, accepted and advertised for opposition purposes on 9 September 2020.  The Opponent filed a Notice of Intention to Oppose on 4 November 2020 and a statement of grounds and particulars (‘SGP’) on 11 November 2020.  The Holder filed a Notice of Intention to Defend on 11 March 2021.

2. The parties then filed their evidence in accordance with the timetable set out in Reg 17A.34J.[1]  On 27 April 2021, the Opponent filed evidence in support (‘EIS’), followed by the Holder’s evidence in answer (‘EIA’) on 29 July 2021 and concluding with the Opponent’s evidence in reply (‘EIR’) on 21 September 2021.

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3. Following the conclusion of the evidence stages, the parties were given the opportunity to request a hearing.  The Holder requested an oral hearing and the Opponent elected to be heard by way of written submissions.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks and I heard this matter via video conference on 19 August 2022.  The Opponent filed a written summary of its submissions on 5 August 2022 (‘Opponent’s Submissions’). The Holder filed a written summary of its submissions on 12 August 2022 and at the hearing, Ben Fitzpatrick of Counsel, instructed by Elizabeth Godfrey of Davies Collison Cave, made oral submissions (collectively the ‘Holder’s Submissions’).  I have formed my decision based on the particulars in the SGP, evidence filed, Opponent’s Submissions and Holder’s Submissions.

Grounds and Onus

1. The SGP nominates a ground of opposition under s 60. 

2. The Opponent bears the onus of establishing the ground of opposition on the balance of probabilities.[2]  The rights of the parties are assessed as at the Relevant Date.[3]

   [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).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The Opponent filed the following evidence:

• Declaration of Alvaro Eduardo Del Barco De Alarcon, Agent for the Opponent, made on 27 April 2021 with Exhibits 1-6 (‘EIS’).

• Declaration of Alvaro Eduardo Del Barco De Alarcon made on 21 September 2021 with Exhibits 1-9 (‘EIR’).

1. The EIA consists of a Declaration of André Bengtsson, co-founder and CEO of the Holder, made on 21 July 2021 with Exhibits 1-16 (including Confidential Exhibits 11-15)

Opponent’s Evidence

1. The Opponent attests that it has provided a video game named RAFT in Australia since 2 May 2017 which is a survival video game that takes place in the ocean in which the only refuge is a raft that players can build and improve (‘Opponent’s Game’).  The Opponent declares that the Holder offers a video game which is similar in concept under the Trade Mark. 

2. The Opponent’s Game is available on Google Play and details of the number of downloads in Australia until 13 June 2018 have been provided.

3. By July 2018, a new version of the Opponent’s Game had been released and was similarly available for download on Google Play.  Details of the number of Australian downloads between 26 July 2018 and 14 April 2021 have been provided.

4. In addition, the Opponent’s Game is available on the Apple App Store and figures for Australian downloads from 21 December 2017 to 14 April 2021 are included in the EIS.

5. The Opponent has provided figures for its total advertising expenditure for promoting the Opponent’s Game from 2 May 2017 to 14 April 2021.

6. The EIR exhibits various social media and extracts from Steam, a game distribution service, intended to show when the Holder’s game provided under the Trade Mark was first commercially available.

Holder’s Evidence

1. Mr Bengtsson attests that he selected the Trade Mark together with co-founder Ellen Mallaker in 2016 for a video game they were developing whilst at university in Sweden (‘Holder’s Game’).

2. The Holder first used the Trade Mark in October 2016 when it released several Beta versions of the Holder’s Game on various forums including fz.se and its blog at (‘Holder’s Blog’).  The Holder’s Blog was also hosted through wordpress in 2016 and in 2017, the Holder’s Blog was migrated to its website at raft-game.com.  From 17 October 2016, the Holder’s Game could be downloaded by anyone with access to the aforementioned forums.

3. In October 2016, the Holder established social media accounts on Twitter and Facebook to promote the Holder’s Game.  The Holder’s Game has been promoted on YouTube since 16 December 2016 as well as on discord.com, a VoIP and instant messaging social platform.

4. The prototype of the Holder’s Game was released to the general public on 16 December 2016 on itch.io which the Holder attests is the usual means for young game creators to test their games on a wide audience.  The Holder’s Game is still available for downloading at this site.

5. On 23 May 2018, the Holder released the first paid version of the Holder’s Game on Steam.

6. The EIA includes approximate download figures for the Holder’s Game globally and an estimate of those downloads attributable to Australians.  Confidential sales and advertising figures have been provided.

7. The Holder’s Game has also received promotion in Australian media.  In addition, about 4 years ago, two YouTubers, LazarBeam and Lachlan Playz, uploaded videos of themselves playing the Holder’s Game which have received 2.9 million and 390,000 views respectively.

8. The Holder also provides evidence of consumers querying whether the Holder provides the Opponent’s Game and asking if the Holder is aware that a copy of its game (which is actually the Opponent’s Game) is available on the Apple App Store and Google Play.

Discussion

1. Section 60 provides:

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

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

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

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

1. For the s 60 ground of opposition to be established, the Opponent must:

   i.demonstrate that another trade mark had acquired a reputation in Australia before the Relevant Date; and

   ii.that because of the reputation of that trade mark, use of the Trade Mark would cause deception or confusion.

2. The Opponent claims in its SGP that it had acquired a reputation in the mark RAFT as a result of its significant continuous use since at least 28 April 2017 in relation to the Opponent’s Game available on the App Store, Google Play and Steam and its website at treastone.com as well as online advertisements on social media, Google Ads and Unity Ads.  As a result of this reputation, the Opponent alleges that the Holder’s use of the Trade Mark is likely to deceive or cause confusion.

3. In the context of s 60, reputation refers to ‘recognition of [the mark] by the public generally’.[4]  Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[5]

   [4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

   [5] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J). 

4. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[6]

   [6] [2019] FCA 923, [83] (O’Bryan J).

1. The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.[7]   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[8]

   [7] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

   [8] See Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451.

2. The Holder’s Submissions point to deficiencies in the Opponent’s evidence.  Firstly, the Holder points out that the relationship of Mr De Alarcon to the Opponent is unclear.  It appears from his address that he was the Opponent’s attorney at the time the evidence was filed but he has not stated this nor specified the source of the information to which he has attested.  The majority of the Opponent’s evidence consists of figures regarding the number of downloads by Australian consumers of the Opponent’s Game and the advertising expenditure in promoting the Opponent’s Game.  It is my understanding that download metrics of the sort provided in the EIS are not generally available to the public and would need to be accessed by the Opponent or with their authorisation.  Further, presumably the Opponent is the only entity with access to its advertising expenditure.  If Mr De Alarcon was indeed the Opponent’s attorney, he should have had an employee of the Opponent declare the information provided or at least, specified more precisely his relationship to the Opponent and confirmed that the Opponent provided the information contained in Mr De Alarcon’s declarations.  Nonetheless, I am prepared to accept that the information contained in the Opponent’s evidence likely originated from the Opponent.

3. The more significant problem with the Opponent’s evidence, as the Holder points out, is that it lacks the necessary specificity to prove that the Opponent had a reputation in the mark RAFT at the Relevant Date.  The Opponent has provided total advertising expenditure spent on “promotion of its video game bearing the trade mark RAFT from May 2, 2017 to April 14, 2021”.[9]  These figures are not divided into annual figures or by financial year and include some 14 months of expenditure after the Relevant Date.  Further, no examples of the advertising are provided and there is a lack of clarity about the actual mark promoted by the Opponent.  In the Opponent’s Submissions, the trade mark relied on by the Opponent is defined as:

   [9] EIS, Exhibit 6.

   
   

This is different to the mark appearing in Exhibit 1 of the EIS.  Exhibit 4 refers to OCEAN NOMAD- Raft Survival and Exhibit 5 refers to ‘Raft Survival – Ocean Nomad’ and appears to illustrate the logo trade mark shown above.  The word RAFT has varying degrees of prominence in these different versions and without examples of the advertising it cannot be ascertained to what extent the mark RAFT was promoted. 

1. The Holder also correctly points out that whilst the advertising figures are provided in Australian dollars, it is not clear that the advertising relates solely to promotion of the Opponent’s Game in Australia.  Given that the ads are all online or via social media, it seems probable that in fact the figures provided relate to the Opponent’s global advertising expenditure. 

2. The Opponent has not provided the cost of downloading the Opponent’s Game so there are no details about the revenue generated from the downloads of the Opponent’s Game.  The Exhibits to the EIS purporting to show the number of downloads are also problematic.  Exhibit 3 of the EIS purports to corroborate Mr De Alarcon’s statement as to the number of downloads by Australian consumers of the Opponent’s Game from 2 May 2017 to 13 June 2018.  However, unlike Exhibits 4 and 5, Exhibit 3 does not show the total figure for downloads or installs and appears to be only a partial screenshot which omits this crucial information.

3. Exhibit 4 of the EIS shows the total download figures for the new version of the Opponent’s Game on Googly Play from 26 July 2018 to April 2021.  It is not possible to ascertain how many times this version of the Opponent’s Game was downloaded before the Relevant Date but from the accompanying graph, it would appear that a significant proportion of the downloads occurred after the Relevant Date.  Exhibit 5 purports to show the number of Australian downloads from the App Store from 21 December 2017 to 14 April 2021 but suffers from the same deficiency, once again suggesting a significant number of downloads occurred after the Relevant Date. Although evidence of use of a trade mark after the Relevant  Date can be relevant to show what the situation was at the Relevant Date, I do not believe that is the case here.

4. The  EIR and the Opponent’s Submissions are otherwise directed to use of the Trade Mark by the Holder and arguments about whether the Trade Mark is deceptively similar to the mark(s) used by the Opponent.  These issues are not relevant to the issue of whether the Opponent had a reputation in a trade mark at the Relevant Date.

5. Based on the evidence filed, I am not satisfied that the Opponent had a reputation in the mark RAFT or any other version of that mark in Australia at the Relevant Date.  Accordingly, the s 60 ground of opposition is not successful.

Decision

1. I find that the Opponent has failed to establish the s 60 ground of opposition nominated in the SGP. Accordingly, extension of protection of the Holder’s Mark may proceed not less than one month from the date of this decision.

2. If the Registrar is served with a notice of appeal, I direct that extension of protection of the IRDAs shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

3. The Holder has requested an award of costs and I see no reason to depart from that principle here.  I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

29 August 2022