Virtuoso Ltd v Swotsmart Pty Ltd

[2022] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by Virtuoso Ltd to registration of trade mark application number 1904436 (class 9) – VIRTUOSO - in the name of Swotsmart Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Francesca Colubriale and Vivian Tran, Spruson & Ferguson Applicant: not in attendance
Decision:	2022 ATMO 159 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 44, 60 and 42 – no ground established – application to proceed to registration.

Background

1. This decision is in respect of an opposition by Virtuoso Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark detailed below, filed by Swotsmart Pty Ltd (‘Applicant’).

   Trade Mark:          VIRTUOSO (‘Trade Mark’)

   Trade Mark no.:     1904436

   Filing Date:             2 February 2018

   Goods:Class 9: Computer software for use in data processing, data analysing and data management; computer software to enable the transmission of management of data via global computer network; computer software for use in the education sector; computer software relating to the organisation, operation and supervision of educational services; computer software for the management of student data including personal data and educational records; computer software for use in student monitoring systems; licensed computer software for use in the education sector; educational software, including that which improves understanding and use of student data in the fields of education and business; computer software relating to the use of teaching and learning data in machine learning, artificial intelligence, data mining, statistical modelling, and data visualisation applications; computer software for use with virtual, augmented, and mixed reality technologies; computer software for the use of predicting educational outcomes; computer software for data-driven decision-making; computer software for recommending educational strategies, activities, and materials; none of the aforementioned relating to computer software for designing, testing, emulating, simulating and verifying electronic circuitry, electronic systems and electronic designs and user documentation sold as a unit therewith; none of the aforesaid being provided in relation to travel or travel agencies.[1]

   [1] I note that the final exclusion in the specification of goods, being ‘none of the aforesaid being provided in relation to travel or travel agencies’, was added after acceptance of the application, during the course of the opposition.

2. The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance for possible registration was advertised on 24 December 2018.

3. The Opponent filed a Notice of Intention to Oppose registration on 25 February 2019 and a Statement of Grounds and Particulars (‘SGP’) on 25 March 2021. The parties filed their evidence in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), discussed in more detail later in this decision, after which the parties requested a hearing.

4. I heard the matter, as a delegate of the Registrar of Trade Marks, on 14 June 2022. Francesca Colubriale and Vivian Tran made oral and written submissions on behalf of the Opponent. The Applicant elected not to appear or to file written submissions.

   Grounds, Onus and Relevant Date

5. The grounds of opposition particularised in the SGP are those under ss 44, 60, 42 and 58 of the Act, although the ground of opposition under s 58 was not pursued at the hearing and I treat it as abandoned.

6. The Opponent bears the onus of establishing a ground of opposition[2] and the standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should it succeed on one of its grounds it is not necessary that I consider any remaining grounds. Nevertheless the remaining grounds, or any grounds under the Act, are available to the Opponent in the event of an appeal.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

7. The relevant date at which the rights of the parties are determined is the filing date of the application,[4] which is usually, although not always, the priority date. Here the filing date and the priority date are the same, being 2 February 2018.

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

   Evidence

8. The evidence filed in this matter comprises declarations by the following persons:

   Evidence in support

   Mike McCown, Senior Vice President – Finance & Operations of the Opponent, with annexures 1 to 19 (including confidential annexures 16 and 17), dated 2 November 2020 (‘McCown’).

   Evidence in answer

   Greg Tolefe, Founder and Managing Director of the Applicant, with exhibits GT-1 and GT-2, dated 6 May 2021 (‘Tolefe’).

   Evidence in reply

   Rosanne Mannion, trade mark attorney and Principal at Spruson & Ferguson Pty Ltd, with annexure RM-1, dated 7 July 2021 (‘Mannion’).

   The Opponent’s evidence

9. The McCown declaration states:

   Virtuoso is a leading global agency specialising in luxury travel. It has more than 20,000 advisors located in over 50 countries through North America, Latin America, the Caribbean, Europe, Asia-Pacific, Africa and the Middle East…The advisors use their personal connections and first-hand expertise to craft bespoke trips for Virtuoso’s customers, including unique experiences, special values, complimentary perks, VIP treatment and rare access.[5]

   [5] McCown, [4].

10. The McCown declaration further states that the Opponent adopted the trade mark VIRTUOSO in 2000, and that it has been offering its travel goods and services in Australia since 2004.

11. The Opponent has used the trade mark VIRTUOSO or trade marks containing VIRTUOSO upon websites, in catalogues and brochures and as the name of magazines and publications published by the Opponent. It adduces examples of these in specimens of use provided to the US Patent and Trademarks Office, and declares that the trade marks have been used in Australia in the same way since the date of first use here.

12. It is declared that there are approximately 1050 advisors dedicated to Australia (of which the profiles of some have been exhibited) and that numerous hotels in Australia have partnered with the Opponent, displaying its VIRTUOSO trade mark prominently.

13. Advertising and promotion of the Opponent’s trade marks takes place upon its website (Australian traffic to the website is moderate, although increasing); by signage and participation in trade events; by publication of VIRTUOSO TRAVELER and VIRTUOSO LIFE magazines (the latter of which is published specifically for Australia and New Zealand and which has been sent to a significant number of Australian consumers since 2010); and by way of social media (with varying degrees of followers/subscribers, some of which are significant). Examples of industry awards and events are also given.

14. Confidential sales revenue and advertising expenditure pertaining to the Australian market are provided, both of which are significant.

15. The Mannion declaration provides examples of the Opponent’s travel experiences which may include cooking and tasting classes, a tour with an indigenous elder to learn about indigenous culture and sacred sites, surfing lessons, or cocktail making lessons.

    The Applicant’s evidence

16. The Tolefe declaration states:

    The VIRTUOSO trade mark has been used as the name of a Student Information System known as the VIRTUOSO SIS, and a Holistic Education Learning Platform, known as the VIRTUOSO HELP. As such, the VIRTUOSO mark has been used across all of the Goods in the Application since 2010.

    The VIRTUOSO platform is licensed to clients in the education sector for use all across Australia and worldwide, including the USA and Sri Lanka.

17. The Applicant is the owner of an earlier registered trade mark, registration 1618736, which consists of the word VIRTUOSO and a device of a butterfly, in respect of a range of software used in respect of student data and educational services.

18. In respect of the Opponent the Telefe declaration states:

    I first became aware of the opponent, Virtuoso Ltd, when the Notice of Intention to Oppose was filed against my Application. I had not been previously made aware of, or come across, the opponent in the course of my business over the past 11 years.

    Legislation and Reasons

    Section 44

19. Section 44 relevantly provides:

    44  Identical etc. trade marks

    (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.

20. Subsections (3) and (4) of s 44 deal with acceptance of trade marks on the basis of honest concurrent use, prior continuous use or other circumstances making registration proper. None of these exceptions have explicitly been asserted here – the Applicant has adduced extracts from its website and social media channels (although I note the use of the Trade Mark in the extracts of social media are minimal). However it does not make any statements in relation to whether or how these extracts serve to satisfy any of the exceptions to s 44. As will be seen it is not necessary in any event to consider them.

21. The SGP identifies the Opponent’s registered trade marks shown in the table below as the basis for the ground of opposition under s 44. In order to succeed on this ground the Opponent must show that at least one of the identified trade marks has a priority date earlier than that of the Trade Mark; that the earlier trade mark(s) is registered in respect of goods that are similar to, or services that are closely related to, the goods of the Trade Mark; and that the earlier trade mark(s) is at least deceptively similar to the Trade Mark.

Trade Mark No.	Trade Mark	Goods and/or Services	Priority Date
963837	VIRTUOSO	Class 35: Business marketing consultation services for others in the field of travel, including marketing for travel agencies, cruise-lines, and packaged travel services. Class 39: Travel agency services, including making reservations and bookings for transportation; arranging travel tours; travel guide services; travel information services; providing information in the field of travel by means of a global computer network. Class 43: Travel agency services, including making reservations and bookings for temporary lodging, restaurants, and meals.	29 July 2003
1073378	VIRTUOSO LIFE	Class 16: Printed publications including travel magazines.	1 September 2005
1483622	VIRTUOSO TRAVELER	Class 9: Downloadable publications in the field of travel.	6 December 2011
1483624	VIRTUSOSO TRAVELER	Class 41: Providing online non-downloadable publications in the field of travel.	6 December 2011
1483627	VIRTUOSO TRAVELER	Class 44: Providing information over the Internet in the field of travel-related personal assessments; providing information over the Internet regarding travel-related personality types resulting from travel-related personal assessments.	6 December 2011
1508157	VIRTUOSO TRAVEL WEEK	Class 35: Organizing, arranging, and conducting trade exhibitions in the field of travel; promoting the goods and services of others through the distribution of printed materials and arranging networking meetings between travel suppliers and travel agencies.	28 March 2012
1508159	VIRTUOSO TRAVEL WEEK	Class 41: Entertainment services, namely, arranging and conducting award ceremonies for recognizing excellence in travel; educational services, namely, presentations, seminars and conferences in the field of travel.	28 March 2012

1. It is straightforward that the priority dates of the Opponent’s trade marks are earlier than that of the Trade Mark.

2. I acknowledge the potential for the trade marks of the parties to be deceptively similar or substantially identical on account of the presence of the word VIRTUOSO in each. However in my estimation the crux of the matter is whether any of the Opponent’s goods are similar to those of the Applicant, or whether any of the Opponent’s services are closely related to the goods of the Applicant. Accordingly I turn to those questions first.

3. Similar goods are defined in s 14 of the Act as goods that are the same or ‘of the same description’. The term ‘of the same description’ casts a wider net than ‘the same’: it is a term of art 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 deception or confusion’.[6]  Broadly, the authorities establish that the primary factors to consider in determining whether goods are of the same description are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.[7] Nonetheless relevant factors are not confined to these and no single factor is determinative.

   [6] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, [27], cited in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, discussing the ‘term of art’ at [275]-[286].

   [7] See for example Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) and Re Jellinek’s Application (1946) 63 RPC 59, 70 (Romer J).

4. Closely related goods and services are not defined in the Act. In Qantas Airways Limited v Edwards (‘Qantas’) Yates J considered the meanings of ‘closely related services’ in context of goods and ‘closely related goods’ in the context of services. In it his Honour recited the reasons given by the then Registrar of Trade Marks to introduce registration of trade marks in respect of services to the Trade Marks Act 1955:

   It is evident that in certain cases there is likely to be confusion if similar trade marks are used by different proprietors, one for services and the other for goods. So for example, the use of identical or deceptively similar marks in respect of prepared foods and in respect of a take-away food service would suggest that both the goods and the service might be attributed to the same source. Motor vehicles and vehicle hire service, cosmetics and beauty salon services, insecticides and pest eradication services are other examples. These are all likely to fall within the concept of ‘closely related goods and services’…[8]

   [8] [2016] FCA 729, [109], citing Mr F J Smith, writing in 1979 as the Registrar of Trade Marks.

5. Similarly, French J noted in Registrar of Trade Marks v Woolworths (‘Woolworths’):

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...[9]

   [9] [1999] FCA 1020, [37], cited in Qantas, [111].

6. In Woolworths his Honour also noted that the range of relationships referred to above will be limited by the requirement that the trade marks attaching to the respective goods and services will be deceptively similar or substantially identical. In that context he noted ‘The relationships may, and in most cases will, be defined by the function of the service with respect to the goods’.[10]

   [10] Woolworths, [38].

7. As to illustrations of what may be considered to be closely related, Yates J cited both Woolworths and Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co as follows:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...[11]

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.[12]

   [11] Woolworths, [38].

   [12] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143, [150] (Lockhart J).

8. In regard to goods and services of the parties the Opponent primarily submits there is:

   ·     an alleged close relationship between its services of ‘providing information in the field of travel by means of a global computer network’ (specified in registration 963867 VIRTUOSO) and ‘providing information over the internet in the field of travel-related personal assessments; providing information over the internet regarding travel-related personality types resulting from travel-related personal assessments’ (specified in registration 1483627 VIRTUOSO TRAVELER) with the Applicant’s goods ‘computer software for use in data processing’ and ‘computer software to enable the transmission of management data via a global computer network’ (both of which exclude such goods related to travel or travel services); and

   ·     an alleged close relationship between its services of ‘educational services, namely presentations, seminars and conferences in the field of travel’ (specified in registration 1508159 VIRTUOSO TRAVEL WEEK) and ‘the various claims for computer software for use in the education sector covered by the Opposed Application’ (which I take to be the balance of the Applicant’s goods not identified above).

9. I am not persuaded that any of these proposed relationships possess the characteristics of being ‘closely related’ in the terms articulated by the authorities above. Even assuming, as submitted, that the Applicant’s computer software goods may be provided for use in the arts and recreation industries (when they are not confined to those related to education), I consider that the connection is only tenuous.

10. The inherent characteristic of computer software for use in data processing or to enable transmission of management data via a global computer network is technological. It is not generally characterised by the various industries in which it may be used, rather it is ancillary to the provision of services in those industries. I am not persuaded that consumers would consider providers of such software to belong to the same industry as those in the arts, recreation or travel industries. For that reason I do not consider the identified services in the Opponent’s registrations 962867 and 1483627 are closely related to the Applicant’s goods.

1. The inherent characteristic of presentations, seminars and conferences in the field of travel is the presentation of travel information. The Opponent does not elaborate upon how the Applicant’s goods are closely related to these services. It may be, perhaps, that since the description of the Opponent’s services begins with the words ‘educational services, namely presentations, seminars and conferences in the field of travel’, the Opponent perceives a close relationship between those services and the Applicant’s various computer software goods for use in the education sector. However, in terms of the statement by French J in Woolworths, the function of the service with respect to the goods is largely independent. One is not required for the other, and where software may be utilised in the presentation of travel information it is an ancillary function only (bearing in mind also that goods in respect of travel and travel services have been excluded). I am not persuaded that consumers would be confused as to a connection between the software goods of the Applicant and the services of the Opponent. For that reason I do not consider that the services of registration 1508159 are closely related to the goods of the Applicant.

2. There are no specific submissions in relation to the goods and services listed in the remaining registrations identified as the basis for the ground of opposition under s 44. I say only briefly that in respect of similar goods, printed and downloadable publications in the field of travel are not similar to the software goods of the opponent – none of their nature, uses or trade channels converge. The remaining services listed in the identified registrations are characterised as being in respect of travel, a sphere of industry which has been excluded from the Applicant’s goods. I am not satisfied software unrelated to travel or travel services, primarily software for the education sector, falls within the scope of being closely related to any of the Opponent’s services.

3. Given I am not satisfied either that the Opponent’s goods are similar to the Applicant’s goods or the Opponent’s services are closely related to the Applicant’s goods, the ground of opposition under s 44 cannot succeed.

   Sections 60 and 42

4. It is convenient to address both ss 60 and 42 together as the Opponent’s case in respect of these grounds rests upon similar principles – the primary difference being that a higher threshold applies to its case under s 42, as will be discussed below. The particularisation of the ground under s 42 makes clear that it falls under s 42(b) (as opposed to s 42(a)).

5. The Opponent particularises its ground under s 42 as follows:

   Given the Opponent’s continuous and extensive use of trade marks consisting of or containing VIRTUOSO in Australia and around the world, use of the Applicant’s trade mark would constitute passing off and/or misleading or deceptive conduct in breach of the Australian Consumer Law, and/or trade mark infringement.

6. Section 60 provides:

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

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

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

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

   Note:    For priority date see section 12.

7. Section 42 of the Act provides:

   42 Trade 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.

8. Where the ground under s 42(b) relies upon infringement, I note firstly that delegates of the Registrar do not determine infringement. In accordance with s 125 of the Act it is a prescribed court or any court that has jurisdiction to hear the action which determines actions for infringement. In any event, I note that I have determined that there is no similarity or close relationship between the parties’ goods and services (per s 120(2)) and, as will be seen, I have determined confusion is unlikely on account of the degree to which the Opponent’s trade marks are known amongst the relevant sector of the public (per 120(3)).

9. Where the ground under s 42(b) is based upon a breach of ss 18 and 29 of the Australian Consumer Law due to a reputation in the Opponent’s trade marks, a finding that s 60 is not established will likewise result in s 42(b) not being established. The ground under s 60 requires only that consumers are likely to be confused, whereas the ground under s 42(b) requires that consumers would be misled or deceived (a higher threshold).[13] If the Opponent cannot establish its ground under s 60 then, where the case is framed as relying upon reputation, it likewise cannot establish its ground under s 42(b).[14]

   [13] See for example Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, at 423 (Richardson J) for an explanation of the difference between confusion and deception.

   [14] See for example the comments of the delegate in Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22 [57]-[58], regarding the relationship between a failure to establish s 60 and ss 18 and 29 of the Australian Consumer Law as well as the tort of passing off.

10. There is no requirement that the trade marks of the parties or their respective goods and/or services have any particular degree of similarity or close relationship, although it is a matter of logic that the more similar either or both of these are the greater the likelihood of confusion or deception. What must be shown is that the trade marks identified by the Opponent had a reputation in Australia at the filing date, and that because of that reputation consumers will be confused or deceived.

11. I consider that the evidence establishes the Opponent’s VIRTUOSO trade mark has a reputation sufficient for the purposes of s 60 in respect of travel related services, particularly the arrangement of unique or luxury travel. In particular its website garners a commercially significant amount of Australian traffic, its magazine is distributed to a substantial number of Australian consumers, and its revenue and advertising expenditure are significant.

12. Nonetheless, I am not satisfied that because of that reputation, use of the Trade Mark will cause confusion. In my estimation the inherent nature of the Opponent’s goods and services is too divergent from the inherent nature of the Applicant’s goods for there to be any real danger that consumers might wonder whether they originate from the same source. This is so even taking into account the learning experiences offered as part of the Opponent’s travel itineraries. It is common that various special interest classes, such as cooking, wine tasting, surfing or region-specific crafting, are offered as part of travel experiences. Such classes are incidental to the travel services engaged, they do not assume the character of educational services or any services which might be considered to originate from a provider such as the Applicant.

13. Despite the establishment of a reputation in the Opponent’s VIRTUOSO trade mark, I am not satisfied that there is a likelihood of confusion that will arise by use of the Trade Mark. The ground of opposition under s 60 therefore fails, as does the ground under s 42.

    Decision and costs

14. Section 55 of the Act relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, 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.

15. The Opponent has failed to establish a ground of opposition. Accordingly, application 1904436 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application be in accordance with the court’s orders.

16. The usual rule is that costs follow the event and I see no reason to depart from the usual rule. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in accordance with the amounts in Schedule 8 of the Regulations.

    Nicole Worth
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    12 September 2022