Vantage Systems Pty Ltd v IVision Pty Ltd

[2011] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by iVision Pty Ltd to registration of trade mark application 1261957(9, 38) - vNET - filed in the name of Vantage Systems Pty Ltd.

Delegate:	Iain Thompson
Representation:	Opponent: Ian Horak of Counsel instructed by Griffith Hack Patent & Trade Mark Attorneys Applicant: Mark Goldblatt of Counsel instructed by Batten Sacks Harvey Bruce Lawyers & Notaries
Decision:	2011 ATMO 90 s52 opposition - survey evidence not of substantial weight; s44 – trade marks not deceptively similar; ss60 and 42 – reputation of opponent’s trade mark, no evidence as to ordinary purchaser or marketplace. Grounds not established.

Background

1. This matter arises out of the filing of an application to register a trade mark under the Trade Marks Act 1995 (‘the Act’) by Vantage Systems Pty Ltd (‘the applicant’) of Melbourne.  Current details of this application are:

   Application No:           1261957
   Priority Date:               19 September 2008
   Goods/Services:          Class 9:  Telecommunications networks

   Class 38:  Video conference services (telecommunications services)

   Trade Mark:                vNET

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 22 January 2009.

3. On 17 April 2009 Integrated Vision Pty Ltd (now iVision Pty Ltd[1]) (‘the opponent’) of Richmond, Victoria, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark (‘the opposed trade mark’). The Notice includes the grounds under sections 44, 60 and 42 which were subsequently argued at a hearing.

   [1] See opponent’s history below.

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 18 July 2011.  Mr Ian Horak of Counsel instructed by Griffith Hack patent and trade mark attorneys represented the opponent.  Mr Mark Goldblatt of Counsel instructed by Batten Sacks Harvey Bruce lawyers and notaries represented the applicant.

   The Evidence

5. The evidence served and filed by the parties is constituted by the following statutory declarations:

   In Support

   Graham Spencer Williams dated 14 October 2009 with Annexures A and Exhibits GSW-1 to GSW-22

   Bruce Richard Packard dated 14 January 2010 with Exhibits BRP-1 to BRP-3

   In Answer

   Mark Buckley dated 15 October 2010 with Exhibits MB-1 to MB-7

6. It is helpful to discuss the evidence with the opponent’s submissions in mind.  It is the opponent’s argument that the evidence establishes that the relevant market (which involves provision of audiovisual telecommunications equipment and services to medium to large sized organizations) is small and that (in the context of this market) the opposed trade mark vNET is likely to deceive or cause confusion as it is apt to be apprehended as a short form for its trade mark VISIONNET.  It was posited by Mr Horak that the people within organisations who most commonly arrange video conferences are secretaries or personal assistants and that such persons are likely to confuse a request from their manager for a video conference via vNET as being a request for a video conference by VISIONNET or vice versa.

7. Mr Williams is the Managing Director and sole shareholder of the opponent. He declares:

   The Opponent was incorporated on 26 November 1984. The company was originally called Network Hire Adelaide Pty Ltd. On 11 September 1992 the company name was changed to Network Nomis Pty Ltd and then, on 1 May 1996, to Integrated Vision Pty Ltd. On 20 April 2009 the company name was changed to iVision Pty Ltd.

   When I started the Opponent’s business it initially employed 5 people in a single office based in Adelaide. The business started by providing the rental of audiovisual equipment. In approximately 1990 the business started providing the sale and installation of audiovisual and videoconferencing equipment.

   Over the past twenty five years the Opponent’s business has grown progressively and it now employs 96 employees based in 5 offices located in Melbourne (2), Sydney, Brisbane and Adelaide. One of the Opponent’s New South Wales employees also travels to ACT once or twice each month. The Opponent’s approximate annual turnover is contained in Confidential Annexure A.

8. Mr Williams explains that the opponent’s business includes “the provision of audio visual and information technology software and hardware, telecommunications, audio and video conferencing goods, unified communications products and services and digital signage and related services to Australian and international businesses ranging from small and medium enterprises through to large corporations.”  I note that while Mr Williams characterises some of his company’s customers as being ‘small’, I have viewed a list of clients included within an exhibit to his declaration and do not agree with this characterisation: the customer list is comprised of organisations of some substance.

9. The opponent owns the following trade marks which are registered in Australia as below:

   Registration No:           971795
   Priority Date:               25 September 2003

   Services:  Class 38:  Broadband video conferencing services

   Trade Mark:                VISIONNET

   Registration No:           862931
   Priority Date:               15 January 2001

   Services:Class 38:  Provision of rental services in relation to telecommunications systems and equipment

   Trade Mark:                eMeetings

10. The second trade mark, above, relates to a general allegation of bad faith on the part of the applicant (although this ground was not argued at the hearing). However, I will refer to this trade mark in my discussion of the ground under section 44 of the Act.

11. Mr Williams declares:

    The Opponent’s customers include some of the largest corporations in Australia. Those customers include, by way of example, banks, construction companies, legal service providers, information technology companies and manufacturing companies. The Opponent supplies its services to many of its customers in at least four States in Australia and, in many cases, across all States and Territories and internationally. Now produced and shown to me marked “Confidential GSW-4” is a table listing some of the Opponent’s customers. The second column of the table indicates the States in which the Opponent supplies its services to the listed customers. I have caused the identity of the sixth company to be redacted from this schedule in order to comply with the Opponent’s specific confidentiality obligations to that customer.

12. Concerning the opponent’s advertising or promotion of services under the VISIONNET trade mark, Mr Williams states:

    The Opponent has promoted the VISIONNET Trade Mark in a number of ways. Having conducted the business for many years, the means by which the Opponent’s business has been promoted has been refined over time such that its promotional activities have focussed on the most effective means. In that context, I have found that, since at least the mid-1990s, one of the most effective means of promoting the Opponent’s business has been through the presence of a website on the Internet. As a result of this, since the Opponent adopted the VISIONNET Trade Mark in 2003 much of the Opponent’s advertising activities (and its marketing expenditure) have concerned the promotion of the Visionnet website.

    In addition, the Opponent has advertised and marketed its goods and services through listings in the Yellow Pages telephone directory. For many years the Opponent’s listing in both the hard copy and on-line versions of the Yellow Pages have included the VISIONNET Trade Mark in conjunction with the Opponent’s telephone number and website address.

    Since approximately 2005 the Opponent has ceased listing in the hard copy of the Yellow Pages and has been listed only in the electronic and on-line. The Visionnet website prominently displays the VISIONNET Trade Mark.

    Now produced and shown to me and marked “GSW-6” are print-outs of the Opponent’s Visionnet website. Until late April 2009, the VISIONNET services were also prominently promoted on the pages of the Opponent’s ivision.com.au website. Now produced and shown to me and marked “GSW-7” are print-outs of the Visionnet page on the Opponent’s old ivision.com.au website, as it appeared from in or about 1997 to late April 2009. In late April 2009 the Opponent launched its new ivision.com.au website. The VISIONNET services appear on the new ivision.com.au website in the form of a link to the Visionnet website.

    As with any Internet website, many visitors to the Visionnet website can view the site merely by entering the domain name, which in the case of the Visionnet website is Based on my review of the Visionnet website visitor statistics that have been kept by the Opponent in the ordinary course of its business, I estimate that a large percentage of visits to the Visionnet website during the past 5 years have been made by people who have directly entered that domain name.

    In addition, many visits to the Visionnet website, and to the VISIONNET link on the ivision.com.au website, occur after Internet users search for the Opponent or its goods and services using one of the many search engines which are available on the Internet and find search results which provide a link to the Visionnet and ivision.com.au websites. Two of the most popular search engines are the Google and Yahoo search engines. By way of example, when Internet users enter into the Google or Yahoo search engines the search term “visionnet”, links to the Visionnet website and the ivision.com.au website will be listed amongst the search results. Now produced and shown to me and marked “GSW-8” are print-outs of the first 10 search results for the word VISIONNET on the Google and Yahoo search engines, limited to Australian websites and carried out on 6 October 2009. I note that there are several references to the Visionnet website and relevant pages of the ivision.com.au website in the search results. I believe that, over the past 5 years, there have been many thousands of visitors who accessed the Visionnet website and the relevant link on the ivision.com.au website having been directed to it through “organic”, non-paid search results in Internet search engines such as Google and Yahoo.

    When a search is conducted, in addition to presenting so-called “organic” search results, the Google and Yahoo search engines (amongst others) also present the Internet user with a small number of “sponsored links”. The sponsored links typically appear either to the side or above the “organic” search results and are identified as being sponsored links. Sponsored links are a form of advertising paid for by the owner or user of the domain name listed in the sponsored links. The search engine operators offer companies wishing to advertise through sponsored links the ability to specify the circumstances in which the advertiser’s sponsored link will appear on a page of search results. That is, advertisers nominate the particular search terms that must be entered in the search engine for their sponsored link to appear in the search results. In the case of the Google search engine, as the demand for the very limited space amongst the sponsored links can be extremely high, Google conducts a form of auction for that advertising space, such that the sponsored links which appear when search results are shown will be those for the advertisers who are the highest bidders wishing to place sponsored links on search results pages for their nominated search terms. Each instance in which a sponsored link is shown with Google search results is referred to an “impression”, being an opportunity for the Internet user to view the sponsored link. However, the advertiser pays Google the amount it has bid only if the Internet user who conducted the search selects the advertiser’s sponsored link, which causes the Internet user’s browser to access the advertiser’s web site. This is known as a “click through”. A similar system for allocating sponsored links is used for the Yahoo search engine results.

    Since April 2004 the Opponent has paid fees to Google for sponsored links, based on the number of “click throughs” from the Google search results to the ivision.com.au website. The search terms which the Opponent has nominated during this time have included not only the word “VISIONNET”, but also other terms describing the goods and services in which the Opponent trades. Exhibit GSW-8 shows such a sponsored link to ivision.com.au website for the word VISIONNET on the Google search results. By this means of advertising, the Opponent has been able to direct its advertising and marketing to customers and potential customers of the particular goods and services provided by the Opponent by directing them to the Opponent’s websites and also enhance the effectiveness of the organic search results displayed by Google.

    The Opponent’s marketing expenditure, which has been incurred substantially in relation to the marketing and promotional activities described above, has amounted to hundreds of thousands of dollars during the past 5 years. Now produced and shown to me marked “Confidential Exhibit GSW-9” is a table listing the Opponent’s marketing expenditure incurred for the period 1 July 2003 up to March 2009. As the Opponent’s marketing records do not differentiate its marketing expenditure on the basis of the trade marks covered, this exhibit relates to all marketing expenditure during the past 5 years.

13. Mr Packard is the National Customised Research Director of Roy Morgan Research Pty Ltd (‘Morgan’).[2]  He declares that Morgan undertook the organisation and performance of a survey on behalf of the opponent and states:

    The Survey included a national sample of 650 men and women aged 30 to 69 years, who had completed some tertiary studies. The sample was drawn from OZ Panel, Roy Morgan Research’s panel of online respondents. In order to maximise the representativeness of the sample in any particular WEBBUS round, the sample is drawn from the available pool in line with the age/sex/state pattern of the total population.

    The Survey respondents consisted of 254 (39%) males and 396 (61%) females.

    [2] Neither Mr Packard’s nor Morgan’s credentials and qualifications to perform the survey were questioned at the hearing.  Mr Packard’s CV is appended to his declaration and Morgan is a consumer and social research company of repute and long standing.

14. The survey included respondents in a spread of ages and geographic locations.  All respondents had completed tertiary studies to at least an extent.

15. The respondents were asked the following questions:

    “We have a few questions about conferencing facilities

    “If you saw electronic conferencing facilities offered under the brand ‘vNET’, would you think that ‘vNET’ was an abbreviation?”

    Respondents were given the option to click either “Yes” or “No”.

    Respondents were not able to proceed further with the Survey until they had clicked one of the two options above.

    Respondents were then asked the following question (see page 8 of Exhibit BRP-2):

    “Would you think that ‘vNET’ was an abbreviation of VISIONNET’?”

    Respondents were given the option to click either “Yes” or “No” and were provided with a free-text box to include any comments they may have.

    Again, respondents were not able to proceed further with the Survey until they had clicked one of the two options above.

    Upon answering this question, respondents were taken to a screen where they were thanked for their participation (see page 9 of Exhibit BRP-2).

16. After detailing sampling errors and confidence intervals inherent in the survey which make allowance for the fact that the survey was not of a perfect representation of the population, Mr Packard discusses the results of the survey:

    The responses to the Survey are discussed in more detail in the paragraphs below.

    Question 1

    The Survey found that 532 of the 650 respondents said that if they saw electronic conferencing facilities offered under the brand ‘vNET’, they would think that ‘vNET’ was an abbreviation. The identification numbers of these 532 respondents are extracted in Table 1 of Exhibit BRP-3.

    Question 2

    The survey found that 257 of the 650 respondents said that they would think that `vNET’ was an abbreviation of `VISIONNET’.

    However, on reviewing the verbatim responses to Question 2, it is appropriate to exclude the answers of 45 of the 257 respondents who answered ‘Yes’ when asked “Would you think that ‘vNET’ was an abbreviation of ‘VISIONNET’?” based on the responses that they included in the free-text box. These 45 verbatim responses (including the respondents’ identification numbers) are extracted in Table 3 of Exhibit BRP-3.

17. The result thus indicates that 222 people responded affirmatively to question 2 out of a sample of 650 respondents.

18. Mr Buckley is Chief Executive Officer of the applicant.  In his evidence in answer he states that the applicant:

    … was established in 1995 in response to a growing need for the use of collaborative technologies as a valuable business strategy. Vantage is a privately owned Australian company that merged with Global Videoconferencing Technologies Ltd Pty in 2002. In 2006, to address the increasing demand of global conferencing services, Vantage combined its business operations with Videocall Limited in the United Kingdom.

    Vantage has an IT focus on conferencing and audio visual integration. Vantage provides audio, video and web conferencing solutions to assist clients leverage time and Throughout its 15 year history Vantage has established strategic partnerships with companies like Polycom, Tandberg, Lifesize, Cisco, Adobe and Microsoft that help assist clients to create valuable business communications.

    The global video conferencing market is characterised by presence of major telecommunication companies as well as systems integrators and conferencing service providers including participants such as BT Conferencing, AT&T Inc., Avaya Inc., Nortel Networks, Cisco Systems, Inc., Verizon Business, Inc.

    In Australia the following organisations are regarded as the key players in the video conferencing arena: Telstra, Optus, ServicePoint Limited, Broadreach Services Pty Ltd, Vantage Systems and the Opponent, iVision Pty Ltd (or Integrated Vision as it was previously called).

    The Australian video conferencing market is small for industry analysts to follow and provide accurate market share analysis of the major players; however, from my own experience they include Telstra, iVision Pty Ltd, Didata and Vantage. iVision and Vantage are considered to be the most established in the industry.

19. Concerning the applicant’s trade marks and the services offered there under, Mr Buckley says:

    Vantage has over the course of the years developed a solutions portfolio known as vSUITE, integrating new technologies to ensure effective and efficient communication for our clients. Under this portfolio Vantage has developed the following goods and services:

    a.vMeeting — Conferencing services

    b.vMeeting.NET — Conferencing Business-to-Business Exchange

    c.vMeeting.ENT — Conferencing platform, based on in-house developed software (Enterprise)

    d.vCare — Maintenance service

    e.vShare — Knowledge base (internal)

    f.vDNA — Network Assessment

    g.vNET — Video conferencing network

    h.vNOC — Video Operation Centre

    i.vConceirge — Video concierge service

    j.vImmersive - Immersive video conferencing system

20. And concerning the opposed trade mark Mr Buckley states:

    vNET is a dedicated business to business network with access to national and global points of presence (PoP) which interconnects customers into the vMeeting.NET Business-to-Business Exchange. The network has been configured specifically to carry video (standard definition, high definition and telepresence solution) and to meet manufacturers’ requirements of packet loss, jitter and latency, ensuring quality of service. vNET also includes ISDN carriage to access legacy video conferencing endpoints which locations and/or usage does not allow for IP connectivity. vNET's infrastructure also includes specialised networking monitoring tools such as vDNA.

    As with all of Vantage’s trade marks in the vSUITE range of goods and services, Vantage has consistently chosen to use the letter “v” as its main identifying element with the suffix that best encapsulates the goods or service on offer to clients.

    vNET was first used by Vantage in 2007 and has been utilised by many large multinational clients. Now shown to me and marked CONFIDENTIAL Exhibit MB-1 is a list of Vantage's clients.

    Submissions

1. The parties were in agreement with the relevant principles which apply here which I will address in my decision. 

2. In essence, much of the parties’ submissions addressed the relevance and outcome of the survey by Morgan and its import in a situation where I am to assess the ‘likelihood’ of deception and confusion in terms of sections 44 and 60 and subsection 42(b) of the Act. The import of the survey also is of potential relevance in assisting the opponent to discharge the onus which is on it to establish its opposition to my satisfaction on the balance of probabilities: Pfizer Products Inc v Karam [2006] FCA 1663, Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26]. If I am to accord high weight to the survey evidence, and its results, it has the potential to affect any view I might form as to the likelihood of confusion arising from the use of the opposed trade mark.

3. Accordingly, it simplifies matters considerably to discuss the survey first, then the particular grounds under which the opposition was argued.

   The Survey

4. In my view the survey is problematical for the following reasons.

5. The survey admits only two relevantly affirmative answers and these are both at least hinted at within the questions.  The first question effectively suggests that the letter ‘v’ within the ‘brand’ vNET might be an abbreviation in asking whether it is.  And the second question contains the answer VISIONNET within it.  To me this seems somewhat akin to an identity parade with only one person present within it who is capable of selection as the offender.

6. If the letter ‘v’ within the trade mark vNET is to be understood as an abbreviation, it is not obvious within the context of the survey and video conferencing goods and services (and without the prompting within the question) why it might not be just as reasonably understood as being an abbreviation of the words ‘via’ or ‘video’ or ‘virtual’.

7. Additionally, in allowing only two answers, ‘Yes’ or ‘No’, the survey does not permit any gradation of answers which might be more relevant in a situation within which the decision-maker is to assess the likelihood of deception or confusion which is not a simple black or white question.  The decision-maker’s answer is ‘yes’ or ‘no’, but the assessment is within a milieu of varying shades of grey.[3]  In these circumstances a range of alternative answers within the survey ranging from ‘No’ through ‘Possibly’ to ‘Probably’ and hence to ‘Yes’ might be more appropriate.  

   [3] The word ‘confuse’ refers to a different state of mind than does the word ‘deceive.’  In Pioneer Hi-Bred  Corn  Co v Highline Chicks Pty Ltd [1979] RPC 410, at 423, Richardson J, in the New Zealand Court of Appeal, said: “'Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public”. In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 Rich J, at 454, said of the word ‘confusion’: “Confusion involves indefiniteness of ideas.”

8. And, it is impossible to gauge how many people might have answered ‘Yes’ only because they were not completely happy with the answer ‘No’ (or vice versa).  The remarks of many of the respondents in the ‘comments boxes’ appear to support this view.

9. The survey is of people who have had at least some study at a tertiary level.  However, in his submissions Mr Horak suggested that the likely people to order the services under the opposed trade mark are secretaries or personal assistants – or other support staff at a similar level.  It is not obvious to me that the sample population who were surveyed by Morgan match the suggested demographic of these postulated users or requesters of the goods and services sold or provided under the opposed trade mark.  And while (in my own supposition) secretaries and personal assistants are not so obviously the relevant purchasers of the goods and services, there is no evidence that the population who were surveyed has been matched (or is relevant) to the demographic of the people who in fact are the relevant purchasers.

10. There is a further problem with the survey which is peculiar to my considerations under section 44 which I will discuss under that heading below.

11. I note that I am according the survey low weight for the above reasons – not because the results were ‘only’ a 222 ‘Yes’ vote out of 650 respondents.  Such a result might be of weight if the structure and content of the survey were more appropriate to the grounds and couched in terms which do not so obviously contain within them the desired outcomes.

    Section 44

12. Section 44 of the Act relevantly provides:

    Identical etc. trade marks

    44.(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.

    (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.

13. The parties agree that the registration on which the opponent relies 971795(38) VISIONNET (‘the opponent’s registration’) has an earlier priority date than that of the opposed application and that the goods and services in respect of which registration of the opposed trade mark is sought are closely related goods or similar services to those nominated on the opponent’s registration.

14. The opponent has not argued that the trade marks are substantially identical – the sole question in terms of section 44 of the Act thus becomes whether the trade marks are deceptively similar.

15. 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

16. The comparison is to take place in the context of the relevant marketplace – that is to say, in the milieu of the ordinary people within the class of customers who will be purchasing the goods or services in respect of which the opposed trade mark is sought to be registered:  this contextual comparison was referred to in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, 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.

17. Further, section 10 of the Act provides:

    Definition of deceptively similar

    10. 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. The interrelationship between the expressions ‘deceive or cause confusion’ and ‘deceptively similar’ and the assessment of the likelihood of confusion was discussed in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (‘Woolworths’) at paragraph 50 by French J who said:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (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.

    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.”

19. And, relevantly in Australian Woollen Mills Ltd v F. S. Walton & Co Ltd, (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said:

    The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. [Stress added]

20. In respect of the stressed sentence of the above quote, there is no evidence served and filed by the opponent as to the usual operation of the marketplace and the nature of the actual purchasers of the relevant goods and services.  I have no person knowledge of the relevant marketplace or how it operates.  As the goods and services of the opposed application are of some complexity when considered together, I assume that the goods and services in respect of which registration of the opposed trade mark are sought are ‘high end’ and constitute or utilise video conference equipment installed in conference or meeting rooms, as opposed to ‘free’ services such as Skype® which operate within a laptop at a desk.[4] 

    [4] Although I note and bear in mind that the specifications of goods and services include both ‘low end’ and ‘high end’ products: Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97

21. I note that the parties’ customers for their goods and services are substantial organisations.  While, as I have previously mentioned, Mr Horak submitted at the hearing (and he might be correct) that secretaries, personal assistants and similarly placed people within organisations would arrange video conferences, I consider that this could be an incomplete picture as it appears to place the actual purchase of the goods and services into a contextual void: how are these people to arrange such video conferences without the equipment of (and service contract with) a supplier such as the applicant or opponent?  I consider that it might be more likely that a technical section (for example, an IT section) of an organisation would take responsibility for the assessment of both video conferencing equipment and related services offered by traders such as the applicant and opponent.  If the technical section believed that a particular ‘package’ of the goods and services met with the organisation’s particular requirements, it would recommend or arrange for the purchase of the package.  If this is the way the marketplace operates, it would be difficult to believe that such a purchase would be normally undertaken solely by a secretary or personal assistant.

22. In my personal observations, the services “Video conference services” are not booked through secretaries or personal assistants in the sense that these people phone a video conferencing provider and purchase the conferences and related equipment.  Rather, the organisations that these people work for have a pre-existing contract with (and possibly equipment provided by) traders such as the applicant and opponent.  The assistants, secretaries and the like book the room if necessary, turn on the apparatus, check that it is working, make sure that the other participants will attend, and so forth. 

23. If this is the case, I suppose that it is unlikely that the purchase of goods and services offered under the opposed trade mark would be other than through areas of organisations staffed by technically literate employees who are likely to have a degree of expertise and will consequently select the relevant goods and services after some detailed research and deliberation.

24. If I am correct, it is within this marketplace context that the comparison of the trade marks takes place.

25. The evidence of the survey by Morgan has a particular difficulty in its relevance to section 44 of the Act which (while I am affording the survey low weight in relation to my considerations in general) mandates that it is of lower weight here. In my considerations under section 44, I am to consider the ‘notional’ use of the trade marks. That is, I am to consider the fair and normal possible uses of the trade marks within the ambit of the respective specifications of goods or services. In the words of 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.

26. I have concerns that the stress on the opponent’s trade mark VISIONNET within the survey might go beyond what has an application to a consideration of a ‘fair and normal’ use of the trade mark.

27. Except in very limited circumstances I am not in my considerations under section 44 to take account of any reputation that the opponent’s trade mark might have: C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 per the Full Bench at paragraph 52:

    … in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark

28. The problem with the survey is that in putting stress on the trade mark VISIONNET within the question and planting it in the minds of the survey population, the survey effectively goes beyond what might be considered ‘fair and normal’ and imparts the insinuation of a reputation to the opponent’s trade mark. As it will be appreciated from the above, short of a notoriety it is not appropriate to consider the reputation of a trade mark under section 44 and then only as far as it might affect the imperfect recollection of the trade marks.

1. As regards the comparison of the trade marks in question, they both end with the suffix –NET.  In my experience, this suffix is widely used by traders who wish to indicate via their trade marks that they operate a network or via the Internet.  There are numerous Australian registered and pending trade marks on the Australian Trade Marks Office official data-base which include the suffix –NET and have apparently been coined in a similar manner.

2. The prefixes within the trade marks in question, ‘v’ and ‘VISION’ are quite different; however, the opponent submits that because of the size of the marketplace with only five or six ‘players’ of any size, purchasers of the goods or services will naturally and logically apprehend the letter ‘v’ within the opposed trade mark as an abbreviation for the word VISION within its own trade mark.

3. A difficulty I have with the opponent’s argument is that the inherent adaptation to distinguish within both of the trade marks in question is relatively low.  Inherent adaptation is gauged according to the test in, for example, FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 at 555, where Kitto J said:

   ... that the question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods.

4. Where a trader coins trade marks using elements which lack any inherent adaptation to distinguish, the trader must accept that other traders in the same field may coin trade marks using the same or similar elements in ways which may approach much closer in similarity (without becoming deceptive) to such trade marks than they could to trade marks with inherently distinctive elements.[5]  Thus a trader who arranges teleconference meetings and (as the applicant has done) coins the trade mark eMeetings might not be surprised that other traders of the same goods or services may coin similar trade marks to impart a similar obvious meaning.  Viewed in this light, the applicant’s evidenced coinage and use of the trade mark vMeeting might not appear to be sinister if the goods or services the trade mark is used in relation to is the arrangement or provision of virtual or video meetings.  Without commenting on whether they are deceptively similar or not, I observe that the trade marks eMeetings and vMeeting do barely any more work than state the exact nature of the services.

   [5] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (Rainmaster v Rain King).

5. The argument of deceptive similarity in the present case would be more convincing (because of an increased likelihood of deception or confusion) if the suffix within the trade mark on which the opponent relies had a greater inherent adaptation to distinguish – for example, if the registered trade mark was VisionWombat and the comparison was with the trade mark vWombat. 

6. Considered in the context of the trade marks under consideration, the letter ‘v’ is not (to my mind) an obvious short-form of the word VISION – particularly when it could be apprehended as being more obviously as a short-form of the words ‘video’ or ‘via’ or even ‘virtual’.

7. Accordingly, in view of nature of the trade marks, the specialized nature of the goods and services, the likelihood that the purchase of such goods and services will be made by technical experts after some deliberation, the fact that such goods and services are of some expense, and the overall differences between the trade marks compared as wholes, it is I consider unlikely that the use of the opposed trade mark would confuse or deceive.

8. Another way of considering the section 44 ground is that Mr Horak might be correct in his submissions that the goods and services would be ordered or booked by secretaries or personal assistants who might be more readily confused by the alleged similarity between the trade marks but there is no evidence before me which supports this contention. The marketplace is small and specialised but there is no evidence as to how this marketplace operates and it is, as I have stressed, outside of my ken. I have accordingly attempted to make it obvious that my reasoning about the marketplace is largely supposition. But contrariwise, what I am asked to do by the opponent is to make or accept a series of assumptions about a highly specialised marketplace in the absence of any supporting evidence and in an environment in which the onus is on the opponent to establish its opposition to my satisfaction on the balance of probabilities. A decision based on the opponent’s set of assumptions would be speculative and contrary to my own understanding of how the marketplace is more likely to operate.

9. The opponent has not established its ground under section 44 of the Act.

   Sections 42(b) and section 60

10. Subparagraph 42(b) and section 60 of the Act respectively (and relevantly) provide:

    42Trade mark scandalous or its use contrary to law

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

    […]

    (b)its use would be contrary to law.

    60Trade 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.

    Note:For priority date see section 12.

11. The ground under subparagraph 42(b) of the Act invokes section 52(1) of the Trade Practices Act 1974[6] (‘the TPA’) which provides:

    A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    [6] Now the Consumer & Competion Act 2011.

12. In terms of the decision in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24; (2001) AIPC 91-724, I am to consider whether the use of the opposed trade mark by the applicant “would” not “could” be contrary to law.

13. Under section 60 of the Act, the opponent must establish to my satisfaction that the trade mark on which it relies has a reputation such that the use of the opposed trade mark on, or in relation to, the goods in respect of which registration is sought would be likely to deceive or cause confusion.

14. As regards of section 52 of the TPA, the opponent must establish to my satisfaction that the trade mark or name on which it relies has a reputation such that the use of the name or trade mark by the applicant on or in relation to the goods or services in respect of which registration is sought would mislead or deceive. As observed by Hill J in Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited [1989] FCA 506; 16 IPR 431 (‘Equity Access’) at paragraph 37:

    While it might be thought ironical that an Act to make trade and commerce more competitive might be used to protect the monopoly in a name (cf Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191) and that the same Act in Part V, designed to protect consumers, could provide a statutory cause of action by one trader against another (cf Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd [1978] HCA 11; (1977-8) 140 CLR 216), it is now well established that by the combined effect of s.52 and s.80 of the Act a trader having a distinctive reputation in a name may enjoin another from engaging in misleading and deceptive conduct by the use of that name.

15. I note that section 60 of the Act and section 52 of the TPA specify different kinds of bewilderment which are, respectively, ‘confuse or deceive’ and ‘mislead or deceive’ and that the concepts ‘confuse’ and ‘mislead’ are distinct. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited [1982] HCA 44; (1982) 42 A.L.R. 1 Gibbs C.J. said (at page 6):

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

    In the same case Mason J. said (p. 15):-

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

16. The expression ‘likely to mislead’ within section 52 of the TPA might be seen as going to the motives of the owner of the opposed name or trade mark. However, this is not so since the use of such a sign might be both literally true and ‘misleading or deceptive’ at the same time. In Hornsby Building Information Centre Pty. Limited v. Sydney Building Information Centre Limited [1978] HCA 11; (1978) 140 C.L.R. 216 Stephen J said at page 227:

    …. what the Hornsby Centre has done is, in a sense, no more than to use its own corporate name in association with its activities. No doubt the meaning of the statutory prohibition which s. 52 (1) enunciates must be gained from the terms of the sub-section itself; but nothing in those terms suggests that a statement made which is literally true, i.e. that the centre at Hornsby is conducted by Hornsby Building Information Centre Pty. Ltd. may not at the same time be misleading and deceptive. It clearly may be. To announce an opera as one in which a named and famous prima donna will appear and then to produce an unknown young lady bearing by chance that name will clearly be to mislead and deceive. The announcement would be literally true but none the less deceptive, and this because it conveyed to others something more than the literal meaning which the words spelled out. Thus, in passing off, a newly incorporated defendant company may not use, in its newly established business, its true corporate name if it be deceptively similar to that of a plaintiff with an established reputation (Fine Cotton Spinners and Doublers’ Association Ltd. v. Harwood Cash & Co. Ltd. (1907) 2 Ch. 184, at p. 190). What has been said of passing off actions applies equally in the present case; as Buckley L.J. remarked in John Brinsmead & Sons Ltd. v. Brinsmead (1913) 30 R.P.C. 493, at p. 506, a statement which is literally true and accurate may nevertheless carry with it a false representation. Lord Morris expressed much the same notion in Parker-Knoll Ltd. v. Knoll International Ltd. (1962) R.P.C. 265, at p. 279. The same will apply in relation to s. 52 (1).”

    Reputation of Opponent’s Trade Mark

17. As concerns ‘reputation’ of a trade mark, in McCormick & Company Inc v McCormick [2000] FCA 1335, (‘McCormick’) Kenny J said, at 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?

18. It will be recalled that the goods McCormick & Co in McCormick were the general retail goods ‘herbs and spices’ and thus the assessment of the reputation of the McCormick trade mark was amongst the public generally.  Here, the relevant marketplace within which the reputation of the opponent’s trade mark might exist is amongst the purchasers of video conferencing equipment and services which is much smaller with fewer potential purchasers.

19. In this context, I consider that the opponent’s VISIONNET trade mark is shown by the evidence to have a reputation in the relevant market sufficient to underpin these grounds. 

    The tests

20. I adapt the words of French J which I have quoted already from Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499, at paragraph 50 applied here only to the issue of confusion or deception (ie, with references to ‘deceptive similarity’ of trade marks redacted):

    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.

    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.

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

    The issue 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.”

21. And, in considering the application of section 52 of the TPA, Hill J set out a number of propositions in Equity Access at paragraph 41:

    1.      For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[7] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

    2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[8] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.

    3.      Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

    4.      Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges [1984] FCA 391; (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

    5.      In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

    6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.

    [7] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177

    [8] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191)

1. I am to consider the likelihood that an ordinary purchaser of the goods or services within the relevant market would be confused or deceived or misled or deceived.  In the words of the Court in Nike (with footnotes omitted):

   It is in these cases of representations to the public, of which the first appeal is one, that there enter the “ordinary” or “reasonable” members of the class of prospective purchasers. Although a class of consumers may be expected to include a wide range of persons, in isolating the “ordinary” or “reasonable” members of that class, there is an objective attribution of certain characteristics. Thus, in Puxu, Gibbs CJ determined that the legislation did not impose burdens which operated for the benefit of persons “who fail[ed] to take reasonable care of their own interests”. In the same case, Mason J concluded that, whilst it was unlikely that an ordinary purchaser would notice the very slight differences in the appearance of the two items of furniture in question, nevertheless such a prospective purchaser reasonably could be expected to attempt to ascertain the brand name of the particular type of furniture on offer.

   Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted. In formulating this inquiry, the courts have had regard to what appears to be the outer limits of the purpose and scope of the statutory norm of conduct fixed by s 52. Thus, in Puxu, Gibbs CJ observed that conduct not intended to mislead or deceive and which was engaged in “honestly and reasonably” might nevertheless contravene s 52. Having regard to these “heavy burdens” which the statute created, his Honour concluded that, where the effect of conduct on a class of persons, such as consumers, was in issue, the section must be “regarded as contemplating the effect of the conduct on reasonable members of the class”.

2. It is here that the evidence of the opponent is lacking in information about both the marketplace and the class of purchaser of the goods and services in question in order that I may frame or consider the question from the viewpoint of an ordinary purchaser. If I make the same set of assumptions concerning the likely purchaser of the goods and services as I did in terms of my considerations under the section 44 ground, I am led to a similar conclusion for similar reasons:[9] that within the relevant marketplace and after considering the ordinary purchaser, it is unlikely because of the dissimilarities of the trade marks and the nature of the goods and services that the use of the opposed trade mark would confuse, misled or deceive.  The ordinary purchaser is likely in my estimation to be a well-informed and probably technically trained employee of a medium to large sized organisation who will be responsible for the selection and recommendation or purchase of the video conferencing equipment and services from a range on offer.  The goods and services are of some expense both to purchase and for provision of the services on an ongoing basis and consequently a matter of some deliberation.  It is not likely in my estimation, on the balance of probabilities, that under these circumstances a person would confuse (or be mislead or deceived by) the trade marks vNET and VISIONNET, even if that person notes a similarity between them.  However, as I have noted, my suppositions as to the marketplace and the ordinary person within it are possibly as great as are the suppositions that the opponent wishes me to make.

   [9] Albeit that there is no requirement here that the trade marks be deceptively similar

3. Accordingly, the opponent has not established its grounds under sections 42(b) and 60 to my satisfaction.

   Decision

4. Section 55 of the Act relevantly provides:

   55Decision

   (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.

5. The opponent has not established its opposition under any of the grounds on which it was argued.

6. I direct that trade mark application 1261957 may proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

   Costs

7. Having been successful in this matter the applicant is entitled to its costs which I award at the official scale against the opponent.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   14 September 2011