Twitter Inc. v Jason Boyce

[2012] ATMO 31

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 1290665 (35) – TWITTER.COM.AU - filed in the name of Jason Boyce.

Delegate:

Debrett Lyons

Representation:

Opponent:  Michael Hall of Counsel instructed by Spruson and Ferguson, Patent & Trade Mark Attorneys.

Applicant:   Blair Bevan and Brian Shortt, both from Jirsch Sutherland, Solicitors

Decision:

2012 ATMO 31

Section 52 opposition: Grounds pressed under sections 42, 44 and 60 of the Act – section 44 established – trade mark refused and costs awarded against Applicant.

Background

1. This is an opposition brought by Twitter Inc. (“the Opponent”) pursuant to section 52 of the TradeMarks Act 1995 (“the Act”) to registration of an application filed in the name of Jason Boyce (“the Applicant”) for the following trade mark:

App. No.	1290665
Priority Date	30 March 2009
Trade Mark
Services	Class 35: advertising services provided over the internet

1. The trade mark was examined, accepted, and advertised as ready for possible registration in the Australian Official Journal of Trade Marks but on 1 February  2010 the Opponent filed a Notice of Opposition.

2. Thereafter the parties served and filed their evidence in accordance with the Trade Mark Regulations.  The Evidence in Support is a declaration made by Alexander Macgillivray on 30 August 2010.  Evidence in Answer comprises two declarations – one by the Applicant, Mr Boyce, made 29 November 2010; the other by the Applicant’s trade mark attorney, Mr Beven, made 30 November 2010.  Evidence in Reply is a further declaration of Mr Macgillivray made 28 June 2011.

3. The matter was set down for hearing and as delegate of the Registrar of Trade Marks I heard submissions on 16 February 2012 in Sydney.  Michael Hall of counsel, instructed by Spruson and Ferguson, Patent & Trade Mark Attorneys, appeared for the Opponent.  Blair Bevin and Brian Shortt, both of Jirsch Sutherland, Solicitors, appeared for the Applicant.

Onus and Grounds of Opposition

1. The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities[1]. The Notice nominated most of the grounds of opposition available under the Act however prior to the hearing the Opponent filed and served on the Applicant its outline submissions indicating that it intended to press only those grounds under sections 42, 44 and 60 of the Act.

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

2. At the hearing only those grounds were argued and for the sake of completeness I find that the remaining grounds listed in the Notice have not been established.  I underscore that no argument was made that the Applicant is not the owner of the Trade Mark (section 58), nor was there any suggestion that the Applicant had applied for the trade mark in bad faith (section 62A).  Indeed, Mr Hall made it plain that the Opponent did not wish in any way to imply that the Applicant had in making the application been actuated by improper motives.  Further, I questioned the parties before the commencement of formal submissions as to whether there had been .auDRP proceedings in relation to the domain name <twitter.com.au> and was advised by both sides that there had been none.

Discussion

1. It is convenient for me to begin with the section 44 ground of opposition.

Section 44

1. Section 44(2) of the Act provides that:

   Identical etc. trade marks

   44(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.

2. In order to establish its opposition under this ground the Opponent must prove:

   va trade mark, either registered or pending registration, in the name of a person other than the Applicant, and in relation to which the applied-for trade mark is either substantially identical or deceptively similar;

   vthe trade mark in the name of that other person must be in respect of similar services or closely related goods; and

   vthe priority date of the trade mark of the other person be the earlier.

3. The Opponent relies on its registration 1206941 for the trade mark TWITTER covering the following services:

   Class: 38  Telecommunications; electronic mail services; instant messaging services, web messaging services, and text messaging services; electronic communication services; broadcasting services; webcasting services; transmission of messages, data and content via a global computer network and other computer and communications networks; transmission of updated messages, comments, information, and multimedia content by electronic mail, instant messaging, text messaging, and via a global computer network and other computer and communications networks; providing online chat rooms and forums for the transmission of messages, comments, information, blogs and multimedia content among users; enabling users to transmit messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; providing online community forums for users to post, watch, share, critique, rate, and comment on multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; broadcasting services via a global computer network and other computer and communications networks, namely, uploading, downloading, posting, showing, displaying, tagging, sharing and electronically transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing a video sharing portal; telecommunication services, namely, providing online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; enabling individuals to send and receive messages via email, instant messaging or a website on the Internet in the field of general interest; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing a website on the Internet for the purpose of social networking

   Class: 41 Providing online journals, namely blogs, featuring user-defined content

   Class: 42 Providing online forums for users to search multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; hosting and creating an online community for registered users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking

   Class: 45 Personal and social services rendered by others to meet the needs of individuals; online social networking services

4. Registration 1206941 was filed on 25 October 2007.  The registration carries a partial Convention priority claim of 26 April 2007 from US Trade Mark Application No. 77/166246 which does not influence the outcome of these proceedings since both priority dates are earlier than the priority date (30 March 2009) of the applied-for trade mark. 

5. Whether the trade marks of the parties are substantially identical is an objective test.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 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 …

6. The trade mark TWITTER and the stylised trade mark of the application for are not substantially identical.  Compared side by side, there are very obvious differences between the trade marks under consideration.  I found Mr Hall’s contrary submissions uncompelling.

7. Whether or not the trade marks are deceptively similar depends on section 10 of the Act, which states that:

   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;

and on section 14(2) of the Act, which states that services are similar to other services if they are the same as the other services or if they are of the same description as that of those other services.

1. In Registrar of Trade Marks v Woolworths [1999] FCA 1020, (‘Woolworths’) French J observed at paragraph 39:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

2. Similar logic applies to the consideration of the similarity of the services of the opposed Application and those of the registration on which the Opponent relies.

Similar Services

1. The Opponent’s submissions were that the services of the opposed Application (“advertising services provided over the Internet”) were of the same description as at least some of the services of registration 1206941.  Its written submissions included the statements that:

   Both are communication services provided over the Internet.  Internet advertising consists of the electronic communication of messages, usually in multimedia, via a global computer network.  The description “videos, movies, films, photos, audio content, animation, pictures, images, text, information and… other content” encompasses all types of advertisement.  The potential classes of user at which the services are directed are closely similar.  The evidence discloses that companies and businesses do indeed use the Opponent’s service for communicating with their customers – see TY- 6 (a list of advertisers) and TY-7 (also exhibited by Mr Beven) (the Opponent’s guide for businesses using its service).  Also at 2 Macgillivray [11] and in Annexure AM-1 there are statements from the Opponent that it has always planned to offer advertising services, although not of the traditional “banner” form.

2. I note, too, that registration 1206941 includes “electronic communication of messages” via “a global computer network”, together with “webcasting services”.

3. The Applicant made a number of submissions to which I turn.  First, within the context of the scope of the Opponent’s registration, it is said that “the description of goods or services is a statement by the owner of the mark of the field of protection that it seeks for its trade mark. It is to be understood in an objective sense, and determined from the perspective of a trader desiring to know the field covered.”  The Applicant then went on to submit that:

   “although none of the Opponent’s evidence directly addresses the nature of the services described in the Cited Mark, the evidence filed does demonstrate that the words ‘electronic communication of messages’, ‘webcasting’ and the like convey to readers the understanding that the services are in the nature of internet hosting, webcasting, micro-blogging or ‘SMS’ but not internet advertising.”

4. This is not the correct basis on which to proceed under section 44. The question is, rather, a comparison within the scope of the notional uses of trade marks to the extent of the services which are registered and applied for: as stated by French J in Woolworths at 88:

   The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

5. French J also noted at 50 that:

   … 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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...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.”

6. Accordingly, whatever the Opponent’s evidence may or may not show about its actual use of the trade mark is irrelevant to the comparison of services which must be made for the purposes of section 44. Equally irrelevant for the purposes of this comparison are statement by the Applicant about how it has used the trade mark to date and how it might plan to use it in the future.

7. Further, the Applicant is mistaken in its insistence that “there is no evidence that the services which would reasonably be expected to be provided by one trader under the same trade mark” and in the importance it places on the fact that “the classes of services differ.” Actual evidence of that kind is not required, nor is the classification scheme a sole indicator of whether services are similar or not for the purposes of section 44.

8. The issue of whether particular services are deceptively similar lies in consideration of the modified principles addressed and endorsed in Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 where the Court stated:

   The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

   "There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In Re Jellinek's Application [(1946) 63 RPC 59]. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: `In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade ...'. "

   Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

   "In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods ... . The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited ... lend some support to the view that the phrase ‘goods of the same description’ ought not to be given too restrictive a construction - not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other." [Stress added]

9. It is apparent that the services in respect of which the Applicant seeks registration are indivisible from many of those for which the Opponent’s trade mark is registered, particularly, to most of those included within Class 38 of the specification of services.  As was observed in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 (overturned in the High Court but not on this point):

   One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:

   In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

1. Viewed as a matter of common sense and business, in the manner suggested above, and from the point of view of the consumer of such services, the services are inextricably linked and in my judgement would be commonly viewed by the consumer as emanating from the same source.

2. In my assessment, the applied-for services (“advertising services provided over the internet”) are similar to at least some of the services covered by the Opponent’s registration.

3. On the question of deceptive similarity, the trade marks are not to be compared side by side. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that  marks  are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658

4. And the comparison is to occur within the context of the services under consideration  see In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, where Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. In the context of the particular services in particular, the additional integer of a domain name designation (namely, the ccTLD “.com.au”) within the applied-for trade mark is not one which aids in distinguishing the trade marks from each other.  The trade marks consist of substantially the same word, albeit rendered in a different manner.

6. The trade marks are deceptively similar.

7. The Applicant further submits that if, even if the trade marks are deceptively similar and the services were found to be similar, the application nonetheless satisfies section 44(3)(a) of the Act by reason of the concurrent use of the two trade marks.

8. In that respect, the Opponent did not challenge the Applicant’s assertion that the trade mark was honestly adopted by the Applicant however it was largely dismissive of the degree and scope of the use of the alleged concurrency of the Applicant’s usage.

9. I have reviewed the Applicant’s evidence of use of the trade mark in the light of the criteria adopted by Kenny J in McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38,192 at paragraph 30:

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1)      the honesty of the concurrent use;

   (2)      the extent of the use in terms of time, geographic area and volume of sales;

   (3)      the degree of confusion likely to ensue between the marks in question;

   (4)      whether any instances of confusion have been proved; and

   (5)      the relevant inconvenience that would ensue to the parties if registration were to be permitted.

10. Mr Boyce’s declaration does not significantly address criteria (2), (3), (4) or (5) above.  It appears that, before the relevant date (30 March 2009), Mr Boyce had a website at which was largely inactive or under development but did host some club services for the NSW V8 Holden Club and that in late 2008, the home page appeared under the banner ‘Page Under Construction’ without the opposed trade mark appearing on it.  There is no corroborative evidence that the opposed trade mark was used in relation to the Applicant’s services prior to 30 March 2009.  Moreover, there is some inconclusive evidence which suggests to me that members of the public were confused.

11. There is no need to say more than that the evidence from the Applicant falls very short of the type of evidence necessary to support registration under section 44(3).

12. The Opponent has established its section 44 ground of opposition.

Decision

Section 55(1) of the Act provides:

(1) 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.

Note:  For limitations see section 6.

1. The Opponent has established the grounds of opposition under the Act. I refuse to register the trade mark application.

Costs

1. The Opponent has been successful and is entitled to costs which I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

23 March 2012