Twitter, Inc v HOL Holdings Pty Ltd

[2011] ATMO 129

TRADE MARKS ACT 1995  

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

Re: Opposition by Twitter, Inc to registration of trade mark application 1307452

(36) - TWITTER REAL ESTATE - filed in the name of HOL Holdings Pty Ltd.

DELEGATE:         Bianca Irgang

REPRESENTATION:           Opponent: Mr Gerard Skelly of Spruson & Ferguson Applicant: Not represented at the hearing

DECISION:         2011 ATMO 129

s. 52 opposition: sections 42, 44 and 60 pressed – s 60 ground of opposition established for all services - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds - costs awarded against the applicant.

Background

1. HOL Holdings Pty Ltd (‘the applicant’) filed application number 1307452 on 1 July

2009 in class 36 of the International Classification of Goods and Services. Details of

the application are set out below.

Trade mark: Trade mark application: 1307452 Filing Date: 1 July 2009 Specification: Class 36: Advisory services relating to real estate

ownership; advisory services relating to real estate valuations; agency services for the leasing of real estate

property; appraisal of real estate; brokerage of real estate; commercial real estate agency services; evaluation of real estate; leasing of real estate; management of real estate; property leasing (real estate property only); providing information, including online, about insurance, financial and monetary affairs and real estate affairs; provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; real estate acquisition (for others); real estate administration; real estate advisory services; real estate agencies; real estate agency services; real estate agents services; real estate appraisal; real estate appraisals (valuations); real estate brokerage; real estate brokers; real estate broking; real estate consultancy; real estate investment; real estate lease renewal services; real estate lease surrender services; real estate leasing; real estate licensing; real estate management; real estate valuations; rental of offices (real estate); rental of real estate; rental of serviced offices (real estate); renting real estate; research services relating to real estate; stock and station agencies (real estate services); valuation of real estate

1           Twitter, Inc (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 2 February 2010. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2           I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 16 August 2011. Mr Gerard Skelly instructed by Spruson and Ferguson represented the opponent. The applicant did not attend the hearing. 

Grounds of Opposition

4.        The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.¹ His findings upon that issue, arrived at after a consideration of the

1

Pfizer Products Inc v Karam

[2006] FCA 1663; (2006) 70 IPR 599

relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks².

1           At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 42, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

2           Therefore, the grounds remaining for my consideration are those under sections 42, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for any of the other grounds of opposition to be considered. 

Evidence

7.        The evidence provided for this matter consists only of the following declaration:

Opponent’s Evidence

1           Mr Macgillivray states that the opponent’s social networking website TWITTER was founded by Jack Dorsey, Biz Stone and Evan Williams and was launched under the TWITTER trade mark in March 2006 in the USA. In August 2006, the opponent started a blog page under the TWITTER trade mark which contained information about news and events regarding the opponent and general topics for reviewing by the general public.

2           The services provided by the opponent under its TWITTER trade mark can be accessed by users through the Internet, broadband connections, video game consoles,

² [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

SMS on mobile phones, downloadable software, as well as through over 50,000 third-party Internet and mobile applications. The TWITTER services are utilized by a varied and broad cross section of society which includes businesses in all manner of trades, multi-nationals, large and small corporations including real-estate agents and businesses, well-known people such as politicians and celebrities as well as other individuals (Annexure TY-5).

10. Since commencing use of the TWITTER trade mark in the USA the popularity and reputation of the social networking services provided by the opponent have rapidly expanded. The opponent’s TWITTER services are asserted to be one of the leading social networking sites worldwide and accordingly Alexa Internet³ currently ranks the opponent’s website as the 11^th most trafficked website worldwide (Annexure TY-4). The opponent has provided documents showing the approximate number of user accounts worldwide and the numbers are very significant (Confidential annexure TY-7). Mr Macgillivray also states that the first Australian to use the opponent’s TWITTER services joined on the 12 July 2006. Since July 2006 the number of Australian users has significantly increased (Confidential annexure TY­9).

11. The opponent’s TWITTER services are a real-time information network to all users and are accessible by all people, organizations and businesses. The social networking facility available under the TWITTER trade mark allows users to quickly share information to any number of people. Users of the social networking facility are limited to 140 characters in any one message and these messages are referred to as “Tweets”.

12.       The opponent’s TWITTER services also provide an advertising opportunity to businesses throughout the world including Australia. Annexure TY-6 is a guide called “Twitter 101 for Businesses” which is available on the Twitter facility and is accessible by any corporation or business. A number of Australian real estate agencies are registered as users of the opponent’s TWITTER online facility and use the opponent’s TWITTER website to advertise their services (Annexure TY-10). 

³ A company which provides information on traffic to websites

Discussion

Section 60 - Reputation in Australia

13. Section 60 of the Act 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.

14. To establish the ground of opposition under section 60, the opponent must demonstrate:

¾ That, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

¾ That because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

15. Unlike sections 44 or 58 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that a comparison of the opponent’s TWITTER trade mark with the applicant’s TWITTER REAL ESTATE trade mark reveals that the marks are substantially identical. When comparing the two trade marks I draw particular guidance from Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 where Windeyer J said at paragraph 12:

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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

16. A consideration of the applicant’s trade mark shows that it consists of the words

TWITTER REAL ESTATE with a device of a house and leaf. The opponent has used

its TWITTER trade mark solus and also has other trade marks including a bird device. 

17. In comparing the opponent’s TWITTER trade mark with the opposed TWITTER

REAL ESTATE trade mark the common element of both marks is the word

TWITTER. 

18. I note the addition of the descriptive words REAL ESTATE (given the services claimed in class 36) and the graphic devices to the applicant’s trade mark but these elements are a minor , do not affect the words by which the trade mark will be identified, and are not sufficient to distinguish the trade marks from each other. In particular I note that the applicant’s leaf device may add to the similarities between the trade marks due to the opponent’s use the following bird device both solus and in conjunction with its TWITTER trade mark. 

19. I must consider both the visual and verbal uses of the respective trade marks and in

doing so I note that in a verbal sense both may be used as simply TWITTER. I

consider the applicant’s TWITTER REAL ESTATE trade mark to be substantially

identical to the opponent’s TWITTER trade mark. It is now for me to determine if the

opponent has acquired a reputation in Australia for its TWITTER trade mark which is

sufficient to establish that use of the opposed trade mark would be likely to deceive or

cause confusion.

20. The relevant principles to the assessment of the likelihood of confusion, etc, are set

out by French J in Registrar of Trade Marks v Woolworths ⁴:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. 

(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source. 

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services. 

(iv) The rights of the parties are to be determined as at the date of the application.

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

⁴ [1999] FCA 1020 at paragraph 50

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc⁵:

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.” 

21. Reputation is to be assessed according to the test set out in McCormick & Company

Inc v McCormick⁶ by Kenny J at paragraph 81:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary  McCormick  of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

22. The evidence provided by the opponent does demonstrate that it has a very significant

reputation for its TWITTER services in Australia and internationally and that this

reputation is long-standing and has been growing with each subsequent year.

Considering this evidence, there is little doubt that the opponent enjoys a very

extensive reputation for its TWITTER services in Australia and internationally. As

⁵ [1973] HCA 43; (1973) 129 CLR 353 at 362 ⁶ [2000] FCA 1335

noted earlier (at paragraph 10 and 12 above), Alexa Internet currently ranks the opponent’s website as the 11^th most trafficked website worldwide. The numbers of people in Australia using the opponent’s TWITTER services for personal or professional use is considerable and such use dated prior to the priority date of the opposed application. When taken together with the fact that a considerable number of real estate agencies were also advertising and using the opponent’s TWITTER services at that point, I am satisfied that that the opponent has established the existence of a significant reputation in Australia for its TWITTER trade mark before the priority date of the opposed trade mark. 

23. It now needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”⁷.

24. In my consideration of the likelihood of confusion or deception, I am not to be influenced by the evidence that the applicant uses its trade mark on services which may be different from the opponent’s goods. I am to consider any of the uses of the opposed trade mark that would be within the scope of the registration which is sought, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion⁸, based on the proper allowance for the possibility of confusion of one trade mark for the other at a time when only the other and competing trade mark is present. 

25. Overall I consider that, given the impressive reputation evidenced by the opponent in its TWITTER trade mark, a significant number of consumers would at the very least experience a reasonable doubt⁹ as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s TWITTER REAL ESTATE trade mark if it were used to the extent of all of the services listed in the opposed application. I have noted previously that there are a number of similarities between the trade marks which will also add to the likelihood of confusion taking place in the marketplace. 

⁷ Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211 ⁸ Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)⁹ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

26. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

27. Section 55 of the Act provides: 

Decision

Unless the proceedings are discontinued or dismissed, 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.

28. I find that the opponent has met the onus upon it, in terms      of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1307452. 

Costs

29. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer Trade Marks Hearings 22 December 2011