ZeroDensity Yazilim Anonim Sirketi v Apple Inc

[2022] ATMO 152

TRADE MARKS ACT 1995

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

Re:Oppositions by ZeroDensity Yazilim Anonim Sirketi to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark numbers 2044272, 2047868 and 2062975 (International Registration numbers 1493374, 1509007 and 1495633 respectively) (all in class 9) – REALITYKIT, REALITY COMPOSER and RealityKit, respectively - in the name of Apple Inc.

Delegate:	Nicole Worth
Representation:	Opponent: written submissions by Spruson & Ferguson Patent and Trade Mark Attorneys Holder: Gabriella Rubagotti, counsel, instructed by Baker McKenzie
Decision:	2022 ATMO 152 Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.29 – grounds of opposition under ss 44, 58, 60 and 42 – none established – extension of protection to Australia granted.

Background

1. This is a decision in respect of oppositions under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection to Australia of three trade marks. Apple Inc (‘the Holder’) applied to extend protection to Australia of the following trade marks:

   [1] In this decision any references to the Regulations a reference to the Trade Marks Regulations 1995 (Cth) and any reference to the Act is a reference to the Trade Marks Act 1995 (Cth), unless otherwise stated.

Trade Mark No.	2044272	2047868	2062975
Trade Mark	REALITYKIT	REALITY COMPOSER	RealityKit
Priority Date	7 March 2019	7 March 2019	3 June 2019
Filing Date	4 September 2019	6 September 2019	3 December 2019
International Registration No.	1493374	1495633	1509007
Goods	Class 9: Downloadable and recorded software used in developing other software applications; downloadable and recorded application	Class 9: Downloadable computer software used in developing other software applications; downloadable application development software; downloadable computer software providing a library of virtual objects for use in developing other software applications; downloadable computer software used in producing animation, audio, and three-dimensional effects for use in other software applications.	Class 9: Computer software used in developing other software applications; application development software.

(collectively ‘the Holder’s Trade Marks’)

1. The applications for extension of protection were accepted and advertised as such in the Official Journal of Trade Marks. ZeroDensity Yazilim Anonim Sirketi (‘the Opponent’) opposed the extension of protection to Australia of all three trade marks. It filed Notices of Intention to Oppose and corresponding Statements of Grounds and Particulars (‘SGPs’) within the time allowed for filing those documents.

2. Thereafter the parties filed evidence, discussed in more detail below. At the end of the evidence stages the Holder requested a joint hearing in respect of all three oppositions. The Opponent declined to appear at the hearing although it filed written submissions for the Registrar’s consideration.

3. I heard the matters, as a delegate of the Registrar of Trade Marks, by video conference on 7 June 2022. Ms Gabriella Rubagotti of counsel, instructed by Baker McKenzie, made verbal and written submissions on behalf of the Holder.

   Grounds, Onus and Relevant Dates

4. The SGPs nominated grounds of opposition under ss 44, 60, 42 and 58 of the Act in respect of each of the Holder’s applications. Regulation 17A.34 provides that International Registrations Designating Australia, such as the Holder’s applications are, may be opposed on any of the grounds under which they may have been rejected (being those under ss 39 to 44 of the Act) or under any of ss 58 to 61 and 62A of the Act.

5. The Opponent bears the onus of establishing a ground of opposition[2] in respect of each of the applications 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).

6. The relevant dates at which the rights of the parties are determined for the purposes of ss 58 and 42 are the filing dates of the application[4] being 4 September 2019 (in respect of REALITYKIT), 6 September 2019 (REALITY COMPOSER) and 3 December 2019 (RealityKit). The relevant dates at which the rights of the parties are determined for the purposes of ss 44 and 60 are the priority dates of the applications being 7 March 2019 (in respect of REALITYKIT and REALITY COMPOSER) and 3 June 2019 (RealityKit). In any event none of the grounds of opposition in respect of any of the applications turns on the differences between the filing dates and the priority dates.

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J); see also the discussion of the relevant date for assessing s 41(6) in Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [32]-[59] (Yates J), the rationale of which I have followed, particularly at [45], in respect of provisions which do not specify a ‘priority date’.

   Evidence

7. The declarations filed in respect of REALITYKIT (trade mark no. 2044272) are as follows:

   Evidence in support

   Mustafa Ulaş Kaçmaz, Founder and Vice President - Sales and Marketing of the Opponent, with exhibits A to K, dated 28 January 2021.

   Vivian Tran, solicitor with Spruson & Ferguson, with exhibits A to E, dated 29 October 2020.

   Evidence in answer

   Thomas R. La Perle, Senior Director of the Legal Department of the Holder, with exhibits TRL-1 to TRL-14, dated 5 May 2021.

   Anthony Pasquale Guerrieri, paralegal with Baker McKenzie, with exhibits APG-1 to APG-27, dated 5 May 2021.

   Judith King, trade mark attorney with Baker McKenzie, with exhibits JK-1 to JK-5, dated 5 May 2021.

   Evidence in reply

   Methmet Ӧzkan, Founder and CFO of the Opponent, with confidential exhibits A and B, dated 2 June 2021.

8. The declarations filed in respect of REALITY COMPOSER (trade mark no. 2047868) are as follows:

   Evidence in support

   Mustafa Ulaş Kaçmaz with exhibits A to K, dated 24 February 2021.

   Vivian Tran with exhibits A to E, dated 30 November 2020.

   Evidence in answer

   Thomas R. La Perle with exhibits TRL-1 to TRL-16, dated 16 June 2021.

   Anthony Pasquale Guerrieri with exhibits APG-1 to APG-27, dated 15 June 2021.

   Judith King with exhibits JK-1 to JK-5, dated 15 June 2021.

   Evidence in reply

   Methmet Ӧzkan with confidential exhibits A and B, dated 8 August 2021.

9. The declarations filed in respect of RealityKit (trade mark no. 2062975) are as follows:

   Evidence in support

   Vivian Tran with exhibits A to K, dated 24 December 2020.

   Evidence in answer

   Thomas R. La Perle with exhibits TRL-1 to TRL-14, dated 31 March 2021.

   Anthony Pasquale Guerrieri with exhibits APG-1 to APG-27, dated 31 March 2021.

   Judith King with exhibits JK-1 to JK-5, dated 1 April 2021.

   Evidence in reply

   Methmet Ӧzkan with confidential exhibits A and B, dated 2 June 2021.

   Vivian Tran with exhibit A, dated 4 June 2021.

10. The declarations filed in each opposition are substantially the same. I have not distinguished between the declarations filed in each opposition unless otherwise stated. A summary of the parties’ evidence is as follows.

    The Opponent’s Evidence

11. Mr Kaçmaz describes the Opponent as an international technology company, founded in 2014. He declares that ‘its primary product/service offering is a suite of technological solutions constituting a system for real-time broadcast compositing used in industries including broadcasting, live-events and e-sports’. The real-time broadcast compositing system appears to be a virtual, immersive background upon which a person, such as a presenter or commentator, is superimposed in real-time while broadcasting – a ‘photorealistic virtual studio’ (as stated, and illustrated below, in a brochure of the Opponent[5]). The backgrounds may be ordinary, such as that illustrated below, or fanciful, such as one that might be part of a video game.

    [5] Annexure A, Kaçmaz declaration.

12. This system has been provided by the Opponent since 2016, under trade marks declared to include REALITY, REALITY HUB, REALITY ENGINE, REALITY KEYER, REALITY CONTROL and REALITY EDITOR. The latter four trade marks have been registered in Australia, although it is only REALITY ENGINE which has a priority date earlier than that of the Holder’s Trade Marks. REALITY ENGINE is registered in respect of services in class 42, including computer system design and computer software design.

13. Archived web pages dating from 3 February 2016 from the website ‘ demonstrate use of the word ‘Reality’, at times with a device, in contexts such as:

    Reality

    Photorealistic virtual studio

    The future of virtual studio production

    Reality^TM is a complete suite of virtual reality tools made by broadcast production specialists, for broadcasters. From single stationary to multiple tracked camera setups, Reality^TM give you everything you need to stand out from the crowd.

    and

    Reality Virtual Studio

    Reality is the most photorealistic virtual studio solution in today’s broadcast industry, powered by Unreal Engine 4. Reality has powerful integrated toolset, that provides solutions for all types of virtual studio production workflows, including augmented and data driven graphics. Reality raises the bar in virtual studio production in terms of image quality, operation speed, keying technology and lots of other aspects.[6]

    [6] Annexure D, Kaçmaz declaration.

14. In relation to use in Australia the Opponent exhibits an article that it published on its website on 21 March 2018 titled RMIT University, Australia, Chooses Reality for Their New Production Facilities.[7] The article discusses the establishment by RMIT of a new virtual production studio in Melbourne, for which RMIT chose the Opponent’s ‘Reality Virtual Studio and Augmented Reality platform’. The Opponent also exhibits a post from 19 February 2019 upon its Facebook® page, declared to be from the Facebook® page of RMIT University, stating:

    RMIT University showcases UHD 4K video and Reality Virtual Studio in Australia!

    ‘To date we are the only institution in Australia running Zero Density’s virtual studio technology, placing us on the bleeding edge of contemporary video production’ Mr Beesley, Technical Services Manager of the School of Media and Communication. [8]

    [7] Annexure E, Kaçmaz declaration.

    [8] Annexure E, Kaçmaz declaration.

15. An article from RMIT University’s own website discussing the new ‘media precinct’ is exhibited, although it refers to Zero Density rather than Reality or other trade marks containing the word Reality.[9] Another article from RMIT University’s website, discussing a particular staff member, somewhat confusingly refers to ‘RMIT’s interactive virtual studio, Reality’ but goes on to state ‘Reality, developed by Zero Density in Turkey, is a photorealistic virtual space that enables visual effects to be adapted into 3D environments in real time through the Unreal gaming engine’. The article is undated, although the copyright notice of the web page is dated 2020.[10]

    [9] Annexure E, Tran declaration.

    [10] Annexure E, Tran declaration.

16. Lastly in respect of use specific to Australia, the Opponent exhibits a quote for services to ‘Deakin Motion Lab’, declared to be a media company affiliated with Deakin University, dated 23 January 2019.[11]

    [11] Annexure E, Kaçmaz declaration.

17. Other promotions under the various REALITY trade marks of the Opponent include articles in the industry publication Newscast Studio, social media posts, and references to industry awards upon the Opponent’s website.

    The Holder’s evidence

18. As a preliminary matter I note that Mr. La Perle does not appear to materially differentiate between REALITYKIT and RealityKit – his declaration in respect of 2044272 REALITYKIT refers primarily to RealityKit. I have likewise done so in my summary of the Holder’s evidence. Regardless, nothing here turns on the difference in the form of the word.

19. The La Perle declaration sets out a number of facts supporting the assertion that the Holder is one of the largest and most well known companies in the world, which I accept.

20. The Holder adopted RealityKit as ‘the name of a software framework comprising tools used by software developers to implement high-performance 3D simulation and rendering’. This framework seamlessly integrates virtual objects into the real world so that users can augment the real world with virtual 3D objects, scenes, animations and audio files. Access to the RealityKit framework is via the Holder’s ‘Xcode suite’, which includes iOS, macOS, watchOS and tvOS software development kits.

21. The ‘Reality Composer framework’ is available via an app developed for Apple iPhone and/or iPad devices. It ‘enables users easily to prototype and produce augmented reality scenes, including by way of a ‘drag and drop’ function’. The Holder’s website says of it ‘Reality Composer is a powerful tool that makes it easy for you to create interactive augmented reality experiences with no prior 3D experience’.[12]

    [12] TRL-10, La Perle declaration in respect of trade mark 2047868 REALITY COMPOSER.

22. Mr La Perle declares that the Holder has offered goods and services under trade marks incorporating the suffix KIT to ‘bring a common theme to its framework software’. Examples include WebKit, GameKit, MapKit, StoreKit, SceneKit, AVKit, CloudKit, ResearchKit and PhotoKit, some of which are registered trade marks in Australia.

23. The RealityKit and Reality Composer frameworks were announced in the keynote address at the 2019 Worldwide Developers Conference, declared to have been ‘avidly followed in real time by software developers and Apple enthusiasts around the world, including in Australia’ and streamed live on the Holder’s website as well as published on YouTube (declared to have had more than 3 million views as at the La Perle declaration). The RealityKit and Reality Composer frameworks were discussed in two dedicated sessions at the conference, as well as a number of other sessions relating to other software developments.

24. Mr La Perle declares that since the target audience is software developers, the RealityKit and Reality Composer frameworks are promoted primarily online, through word of mouth and at conferences (including the subsequent 2020 Worldwide Developers Conference).

25. Mr Guerrieri adduces dictionary definitions of ‘reality’, ‘augmented reality’ and ‘virtual reality’ as well as examples of use of ‘reality’ by third parties in the market place. The third party use includes use of ‘reality’, ‘augmented reality’, ‘mixed reality’ and ‘virtual reality’, most commonly by computer software entities.

26. Ms King provides examples of third party use of RealityKit and Reality Composer to refer to the Holder’s frameworks, including in various Australian media publications. She also provides examples of third party trade marks registered in Australia in respect of computer software incorporating the word ‘reality’, and examples of co-existence of the Opponent’s and Holder’s trade marks in other jurisdictions including China, the European Union, Japan, the Russian Federation and the United Kingdom.

    Section 44

27. Section 44 of the Act 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.

28. 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 which have been asserted here.

29. The Opponent identifies its registered trade mark REALITY ENGINE as the basis for the ground of opposition under s 44. In order to succeed on this ground the Opponent must show that its trade mark has a priority date earlier than that of the Holder’s Trade Marks, that its trade mark is registered in respect of goods that are similar to, or services that are closely related to, the goods of the Holder’s Trade Marks, and that its trade mark is at least deceptively similar to the Holder’s Trade Marks. The registration details of REALITY ENGINE are as follows. As can be seen it has an earlier priority date than any of the Holder’s Trade Marks:

    Trade Mark:          REALITY ENGINE

    Registration No.:    1997792 (International registration no. 1455671).

    Priority Date:         25 June 2018

    Services:Class 42: Scientific and industrial analysis and research services; engineering; engineering and architectural design services; testing services for the certification of quality and standards; computer services, namely, computer programming, computer virus protection services, computer system design, creating, maintaining and updating websites for others, computer software design, updating and rental of computer software, providing search engines for the internet, hosting websites, computer hardware consultancy, rental of computer hardware; industrial design services, other than engineering, computer and architectural design; graphic arts designing.

30. I turn then to the question of whether the Opponent’s trade mark is at least deceptively similar to any of the Holder’s Trade Marks. The principal authority for determining deceptive similarity is Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’):

    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 [trade mark].[13]

    [13] [1963] HCA 66, [13] (Windeyer J).

31. The Opponent lists a number of relevant principles in its submissions in respect of the assessment to be made under s 44.[14] I bear them in mind, and add in particular that the trade marks are to be judged as wholes;[15] that even though the first part of a word is often the most important for the purposes of comparison, [16] the courts have not applied this consistently and much depends on the particular circumstances of the case;[17] and that an important consideration is the ‘idea’ which the trade mark will naturally suggest to the mind of one who sees it.[18]

    [14] At [11] of the Opponent’s written submissions for the hearing.

    [15] Diamond T Motor Car Co [1921] 2 Ch 583, 588; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61]-[63] (Dodds-Streeton J).

    [16] Re London Lubricants (1920) Ltd (1925) 42 RPC 264 at 279 (CA UK) (Sargant LJ).

    [17] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (Dodds-Streeton J) (the finding regarding deceptive similarity was undisturbed on appeal); Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235, [39] (Nicholas, Yates and Burley JJ).

    [18] Jafferjee v Scarlett [1937] HCA 36 (Latham C.J., Dixon and McTiernan JJ).

1. I am not persuaded that the Holder’s Trade Marks are deceptively similar to the Opponent’s REALITY ENGINE trade mark. Firstly, although the word REALITY is common to all of the trade marks it not a distinctive word in relation to the Holder’s goods or services that would be closely related to them. It describes or implies software that is concerned with ‘the state or fact of being real’ or ‘resemblance to what is real’ (per the definitions of the word in the Macquarie Dictionary, adduced at APG-1 of the Guerrieri declaration). The Opponent submits that the parties’ goods and services are described by broad claims not specific to virtual reality goods. Nonetheless the Holder’s goods are various forms of software for use in creating other software applications, or for producing animation and effects in other software applications. I do not consider that in the context of those goods, REALITY takes on any distinctive character, despite them not being identified specifically as ‘virtual reality’ or ‘augmented reality’ software goods. It is most likely that the consuming public would assume such goods to be so, or to be concerned with REALITY or the appearance of realism more generally.

2. Secondly, although the first part of each trade mark is the same, they differ significantly in their suffixes. Each of ‘engine’, ‘kit’ and ‘composer’ are visually, aurally and conceptually distinct. The Opponent submits that ‘kit’ and ‘engine’ are conceptually closely related. I do not agree that this is so. A ‘kit’ refers to a set or collection of tools for a specific purpose (the meaning most likely to be attributed to ‘kit’ in the context of REALITYKIT) or a set or collection of parts to be assembled (such as in a model aircraft kit). An ‘engine’ refers primarily to a mechanism or machine that converts energy into mechanical work, or a driving force.[19] In my estimation they are, at best, only faintly connected. To my mind the ‘idea’ of the trade marks conveyed to those who might see them[20] rises no higher than an imprecise notion of goods or services that might in some way be used in the creation or production of ‘reality’ or realism. Additionally, leaving aside the ambiguity of the notion, the Opponent does not have a monopoly upon words conveying such a notion. The fact that two marks convey the same idea is not generally sufficient in itself to create a deceptive resemblance between them, although it could be taken into account in the assessment.[21]

   [19] Definitions from the Macquarie Dictionary, online edition, Macmillan Publishers 2022.

   [20] Per Jafferjee v Scarlett, referenced above.

   [21] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15, [3] (Dixon, Williams and Kitto JJ).

3. As already noted, the principle that the first part of a trade mark is the most important for the purposes of comparison is not universally applied and depends on the circumstances of the case. Here, the identicality of the first part of the trade marks does not outweigh the substantial differences in the second part of the trade marks.

4. Considered as wholes, I do not consider that any of the trade marks REALITYKIT, REALITY COMPOSER and RealityKit are deceptively similar to REALITY ENGINE. Given I am not satisfied that the Holder’s Trade Marks are deceptively similar to the Opponent’s trade mark, I need not consider whether the Opponent’s services are closely related to any of the Holder’s good. The ground under s 44 fails accordingly.

   Section 58

5. Section 58 of the Act provides:

   Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

6. The Opponent relies upon its use of the trade mark REALITY in connection with ‘a computer software suite’ to establish the ground. In order to succeed it must establish that:

   ·     The Holder’s Trade Marks are identical or substantially identical to its REALITY trade mark;[22]

   ·     The Holder’s goods are the ‘same kind of thing’ as the goods upon which the Opponent’s REALITY trade mark has been used;[23] and

   ·     The Opponent has the earlier claim to ownership based on use prior to either the application to extend protection to Australia or any actual use by the Holder, whichever is the earlier.[24]

   [22] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936 (Gummow J).

   [23] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).

   [24] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

7. The accepted test for substantial identity is that articulated by Windeyer J in Shell:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of theses assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[25]

   [25] Shell, [12].

8. In a side by side comparison, REALITY is clearly not identical to any of REALITYKIT, REALITY COMPOSER or RealityKit. Whether it is substantially identical is a question of the degree to which the additional words in the Holder’s Trade Marks affect their identity. It is possible that utterly descriptive words may be entirely discounted, such as CHOC in CHOC CHILL, wherein CHOC described a flavour and was subject to change depending on the flavour of the beverage.[26] In such circumstances consumers are unlikely to place any degree of trade mark significance upon the descriptive word, relying solely on CHILL to identify the product.

   [26] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, (Carr J).

9. I do not consider that ‘kit’ or ‘composer’ falls within the category of words that may be entirely discounted. Whilst they imply goods that may comprise a useful set of tools (kit) or that help arrange or unite elements (composer), they are not utterly descriptive of computer software. Rather, consumers would rely upon the whole of REALITYKIT, REALITY COMPOSER and RealityKit, to identify the Holder’s goods and would not discount the words subsequent to REALITY.

10. Given the Holder’s Trade Marks are not substantially identical to the Opponent’s REALITY trade mark, the ground under s 58 cannot succeed.

    Sections 60 and 42

11. 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)).

12. 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.

13. 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.

14. The laws asserted to be contravened by use of the Holder’s Trade Marks are ss 18 and 29 of the Australian Consumer Law (in that use would mislead or deceive consumers) and passing off at common law.

15. Both of these grounds of opposition rely upon consumer confusion and/or deception because of the reputation of another trade mark: 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).[27] 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).[28]

    [27] 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.

    [28] 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.

16. There is no requirement that the trade marks of the parties or their respective goods and 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.

17. In its SGPs the Opponent identifies its trade marks REALITY ENGINE, REALITY KEYER and REALITY as the basis for the ground of opposition under s 60.

18. It is commonplace to infer reputation from a high volume of sales together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[29] Other activities, including awards, are also relevant but they must demonstrate reputation in Australia.

    [29] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

19. As at the priority date it appears the Opponent had only one Australian customer, RMIT University. The Facebook® post cited at paragraph 15 of this decision, wherein an RMIT spokesperson says they are the only institution in Australia using the Opponent’s technology, is dated 16 days before the earliest priority date. It is not stated whether Deakin Motion Lab engaged the Opponent’s services subsequent to the quote provided to them.

20. Confidential exhibits A and B of the Ӧzkan declaration provide revenue and advertising expenditure of the Opponent. The revenue is substantial, however it is a single figure generated since 2016, in US dollars, and that which is attributable to Australia is not identified. The advertising expenditure is also substantial, however whilst it is broken into annual amounts since 2016, it is also in US dollars and the amounts attributable to the Australian market are not identified.

21. As already noted there is no information regarding Australian traffic to the Opponent’s website or Australian engagement with the Opponent’s social media channels. Similarly it is not stated to whom either the product brief or the informational material has been disseminated.

22. Only one of the customers identified upon the Opponent’s website is Australian (RMIT University).[30] There are a number of awards identified upon the Opponent’s website, although there is no information as to how prominent the awards are and/or whether customers in Australia would likely have noted them.

    [30] Annexure J, Kaçmaz declaration.

23. I bear in mind that the relevant market is likely to be somewhat specialised, being primarily software developers and broadcasters. However even amongst this more specialised market I cannot be satisfied on the basis of the evidence before me that the Opponent’s trade marks had a reputation in Australia at the priority dates of the Holder’s Trade Marks.

24. The ground under s 60 accordingly fails, and as a corollary the ground under s 42 fails also.

    Decision and costs

25. Regulation 17A.34N of the Regulations provides the following:

    17A.34N Decision on opposition

    (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations),

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

    (2) The Registrar must notify the International Bureau of the Registrar’s decision.

26. The Opponent has not established any of the grounds of opposition it nominated in its SGPs. Given this, I extend protection to Australia of the Holder’s Trade Marks for all of the goods specified in them one month from the date of this decision.

27. However if the Registrar is served with a notice of appeal to this decision before protection is extended, protection of the Holder’s Trade Mark(s) subject to the appeal shall not occur until that appeal has been withdrawn or discontinued. Otherwise protection of the Holder’s Trade Marks would be subject to any orders of the court.

28. The International Bureau will be notified of this decision.

29. Both parties asked for an award of costs. The general rule is that costs follow the event, and I see no reason to depart from that here. Accordingly, in respect of trade mark no. 2044272 I award costs against the Opponent under s 221 of the Act in accordance with the amounts specified in Schedule 8 of the Regulations. For trade mark no. 2047868 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[31] Likewise for trade mark no. 2062975 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.

    [31] [2001] ATMO 78.

    Nicole Worth
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 September 2022