Verisign Inc v Vericorp Pty Ltd

[2008] ATMO 30

TRADE MARKS ACT 1995

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

IN THE MATTER of Australian Trade Mark Application Nos. 1077114, 1077117, 1077119 and 1077122 in the name of VERICORP PTY LTD and Opposition thereto by VERISIGN, INC.

Delegate:

Debrett Lyons

Representation:

Decision on the Written Record

Decision:

2008 ATMO 30

s. 52 opposition: s. 44 established since all four applied for trade marks are deceptively similar to opponent’s prior registration.  Opposition succeeds.

Background

1. Vericorp Pty Ltd (‘the applicant’) filed four applications to register trade marks, the current details of which appear below:

Application No.	Class	Goods	Trade Mark
1077114	9	FingerID activated time and attendance terminals
1077117	9	Fingerprint capture terminals
1077119	9	FingerID biometric activated door, drawer and cabinet locks
1077122	9	FingerID activated access control terminals

1. The trade marks were accepted for possible registration and advertised for opposition purposes, whereafter Verisign, Inc.(‘the opponent’) filed  Notices of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade marks.

2. As a delegate of the Registrar of Trade Marks, I have been asked to make a decision on the written record.

   Grounds of Opposition

3. The Notices of Opposition are in virtually identical terms.  They make no reference to section numbers but can be readily interpreted as relying on all grounds of opposition available under the Trade Marks Act 1995.  The opponent’s written submissions only press sections 42(b), 44 and 60.  The applicant did not file evidence nor make any submissions.

4. The evidence in support of the opposition comprised a Statutory Declaration by Emma Keen dated 27 February 2007 and a Statutory Declaration by Paul Hudson dated 23 March 2007.

   Submissions and Reasoning

   Onus

5. The opponent bears the onus of establishing its grounds of opposition.  The opposition will succeed if one of those grounds is established.  The standard of proof is the balance of probabilities[1].

   [1] Blount v Registrar of Trade Mark (1998) 83 FCR 50; Rejfek v McElroy (1965) 112 CLR 517 at 521

   Section 44

6. Section 44 of the Act relevantly provides:

   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.

7. The opponent is the owner of a number of registrations with earlier priority dates than the applications, but it is Registration Number 928610 which I regard as most important.  The trade mark is:

8. The registration is in classes 9, 16, 35, 36, 38, 40, 41 and 42.  The class 9 specification of goods is:

   Computer software in the field of cryptographic network security and data security functions; computer software for integration of information logic and data between computer networks; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications, or authentication of a digital signature in an electronic transaction or communication, over the Internet and other computer networks; computer software, namely encryption software to enable secure transmission of digital information, namely, confidential, financial and credit card information over the Internet as well as over other modes of communication between computing devices; computer software to integrate managed security services, namely public key infrastructure (PKI) services, digital certificate issuance, verification, and management, and enterprise software integration, with existing communications networks, software, and services.

9. The class 42 services include “computer services, namely, providing authentication of identity”.

10. It is quite clear that all the goods claimed by the applications are either the same or similar to the class 9 goods of the registration.  It is also plain to me that all those claimed goods are closely related to the opponent’s class 42 services described above[2].

    [2] See Re: Aussat Pty Limited, 27 IPR 309

11. The opponent submitted that the applicant’s trade marks were substantially identical or at least deceptively similar to its registered trade mark.  The trade marks are so from being substantially identical that no further comment is required.  The definition of “deceptively similar” in section 10 of the Act is:

    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.

12. In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 French J said of deceptive similarity:

    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) 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."

13. In the assessment of deceptive similarity, the trade marks should not be compared side by side.[3]  Rather, they are to be considered by their look and sound, with due allowance for imperfect recollection.  The applicant’s trade marks are all prefixed with the element VERI, a distinctive element of the registered mark.  In London Lubricant Ltd's Appn (1925) 42 RPC 264 Sargent L.J. said "the first syllable of a word is, as a rule, far the most important for the purpose of distinction." Moreover, the applicant’s trade marks each mimic the logo element of the registered mark - the “tick” is within the letter V, whilst in the registration the tick constitutes the letter V[4].

    [3] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)

    [4] The opponent submitted (for the purposes of its section 60 argument) that the applied for trade marks all contain a red tick and black text on a white background, being the same colour scheme that is used by the opponent to represent its marks.  Nevertheless, that is not a factor to be taken into account in the section 44 analysis since Registration No. 928610 is in black and white.

14. The applied for trade marks each has a suffix which is descriptive of the goods in question: -TIME (1077114) in relation to time and attendance terminals; -SCAN (1077117) in relation to fingerprint capture or scanning terminals; -LOCK (1077119) in relation to locks and -GUARD (1077122) in relation to access control or guarding terminals.  The suffixes add nothing, conceptually, to dissociate the trade marks from the registered trade mark and in fact incorporate all of the elements (the correction symbol forming the alphabetical letter ‘V’, the ‘prefix’ VERI-, and a short descriptive word as a suffix) of the trade mark on which the opponent relies.  Additionally, the suffix SCAN contextually looks similar to SIGN and the suffix TIME rhymes with SIGN.

15. Applying the criteria set out above from the Woolworths case, I have no doubt that the trade marks are likely to cause confusion since in my view their use would result in a number of persons wondering whether the two products come from the same source or the products are related to the services.  The opponent has established its section 44 ground of opposition to my satisfaction in relation to all four trade mark applications.

    Decision

16. The opposition succeeds since at least one ground of opposition has been established.  I refuse to register the applications.

    Costs

17. I order that the applicant pay the opponent’s costs according to the official scale.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    30 April 2008