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Australian Trade Marks Office=S52 opposition: 1. 1081907 – grounds under sections 58, 59 and60 not established. Application to proceed to registration. 2. 1082189 – grounds under sections 42(b), 44, 58, 58A, 59, 60and 62A pursued. Section 58 established. Application refused. 3. Costs awarded against Dot


 

Doteasy Technology Inc v Dot Easy Australia Pty. Ltd. [2011] ATMO 88 (6 September 2011)

Last Updated: 20 October 2011


TRADE MARKS ACT 1995

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

 

Re: Opposition by Dot Easy Australia Pty Ltd to registration of trade mark application 1081907(42) – DOTEASY – filed in the name of Doteasy Technology Inc.

and

Opposition by Doteasy Technology Inc. to registration of trade mark application 1082189(42) – DotEasyAustralia – filed in the name of Dot Easy Australia Pty Ltd.

 

DELEGATE:
Nicole Worth
REPRESENTATION:
Doteasy Technology Inc: Rohan Singh of Spruson & Ferguson attorneys.
Dot Easy Australia Pty Ltd: no appearance or submissions.
DECISION:
2011 ATMO 88
S52 opposition: 1. 1081907 – grounds under sections 5859 and60 not established. Application to proceed to registration.
2. 1082189 – grounds under sections 42(b)445858A5960and 62A pursued. Section 58 established. Application refused.
3. Costs awarded against Dot Easy Australia Pty Ltd.

Background

  1. This decision relates to cross oppositions between Doteasy Technology Inc. (“DTI”) and Dot Easy Australia Pty Ltd (“DEA”). It is convenient to issue a single decision relating to both applications, numbered 1081907 and 1082189, as the matters were argued before me during a single hearing.
  2. DTI has opposed the possible registration of DEA’s application 1082189 and DEA has opposed the possible registration of DTI’s application 1081907. Current details of the applications are shown in the following table:
TM Application No. 1081907
TM Application No. 1082189
DOTEASY
2011_8800.jpg
Priority Date: 22 Oct 2005.
Acceptance advertised: 3 August 2006.
Priority Date: 25 Oct 2005.
Accepted 24 January 2008 under the provisions of subsection 44(4).
Class: 42 Computer network address management services, namely providing services enabling entities to reserve and secure computer network addresses and to access, add, modify, or delete information relating to their computer network addresses; providing information about web site development; hosting the web sites of others on a computer server for a global computer network
Class: 42 Creating and designing web pages for others; creating and maintaining web sites for others; hosting computer sites (web sites); maintaining (creating and) web sites for others; on-line provision of web-based applications; on-line provision of web-based software; web portal services (designing or hosting)

 

  1. Following the advertisements of acceptance for the applications, the relevant opponents filed notices of opposition. DEA’s notice of opposition in respect of 1081907 cited grounds of opposition under sections 5859 and 60 of the Trade Marks Act 1995 (“the Act”). DTI’s notice of opposition in respect of 1082189 cited grounds of opposition under sections 39414243445858A596062 and 62A of the Act.

Evidence

  1. The evidence in relation to the opposition to 1081907 comprises:

Evidence in support: statutory declaration of Sean Emmet McGuire, solicitor for DEA, dated 15 June 2007 with exhibits 1 to 37 (‘McGuire’).

Evidence in answer: statutory declaration of Johnny Tam, Director of Corporate Affairs for DTI, dated 16 September 2008 with exhibits 1 to 33 (‘Tam 1’); and statutory declaration of David Woroch, Vice President of Tucows Inc. dated 18 September 2008.

Evidence in reply: statutory declaration of Michael Makras (‘Makras 1’), a Director of DEA, dated 2 July 2009 with exhibits MM-01 to MM-22.

  1. The evidence in relation to the opposition to 1082189 comprises:

Evidence in support: statutory declaration of Johnny Tam (‘Tam 2’) dated 7 November 2008 with exhibits 1 to 31.

Evidence in answer: statutory declaration of Michael Makras (‘Makras 2’) dated 24 September 2009 with exhibits MM-01 to MM-19.

Evidence in reply: statutory declaration of Johnny Tam (‘Tam 3’) dated 24 June 2010 with exhibits JT-32 to JT-38.

  1. The evidence from both parties is problematic because it contains significant portions of opinion and inference, rather than facts. For the most part it is not possible to give significant weight to this kind of evidence, however where further discussion is merited I have made comment. In particular, both parties rely to varying degrees upon archived material obtained from the Internet Archive Wayback Machine[1] (‘Wayback Machine’) in an attempt to show if, and in what form, each other’s websites existed at certain points in time. Although material obtained from the Wayback Machine may be accepted asprima facie (though rebuttable) evidence of the existence and form of a web page at a certain date, a lack of archived material does not necessarily mean a certain page did not exist at that time[2]. I am therefore not prepared to accept that the Wayback Machine evidence from either party establishes non-existence of the other’s website at particular points in time.
  2. In addition Mr. Singh, attorney for DTI, submits that I should give reduced weight to the McGuire declaration on the basis that it is hearsay. Under Regulation 21.15(8) of the Trade Mark Regulations 1995 the Registrar is not bound by the rules of evidence but may inform herself on any matter before her in any way she reasonably believes to be appropriate. As observed by Finkelstein J in Malibu Boats West Inc v Catanese[3]:

The only question that arises in relation to the rejection of evidence is whether the decision-maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.

Sean Emmett McGuire makes the declaration in his capacity as DEA’s solicitor on the basis of the records and information from DEA. A review of the case file reveals that DTI has made no objection to the McGuire declaration on hearsay grounds at any time until receipt of their written submissions for the hearing. For the reasons above, and in light of these circumstances, I have taken the declaration at face value in deciding the opposition.

  1. A brief chronology of the relevant events is:
    • DTI, located in Canada, began using their trade mark on their website http://www.doteasy.com on 1 May 2000 through which personal internet users could access their webhosting and domain name management services. The first Australian customer engaged their services on 4 June 2000, and the number of domain names with DTI that list an Australian contact address has grown to some 4,600 (as at September 2008).
    • Mr. Michael Makras and Mr. Elie Nahed, located in Australia, commenced a trading partnership under the name Dot Easy Australia in September 1999, and began using their trade mark on their website http://www.geocities.com/doteasyaustralia “as early as” 1 January 2000[4]. The nature of the services provided by Mr. Makras and Mr. Nahed at that time is not clear. A range of website and internet related services are declared to have been provided but many are unsupported by documentary evidence. In April 2003 they registered the domain name http://www.doteasy.com.au which then became the primary website for the business. As at November 2006 the number of domain names with DEA had grown to over 30,000.
    • The parties have had a number of dealings with each other. Mr. Nahed has at times engaged DTI’s services, beginning in August 2002. DTI also declares that he made a business proposal to them in April 2003 to redirect http://www.doteasy.com.au to http://www.doteasy.com. The Makras declarations declare these to be false allegations however DTI’s administrative records[5] and corroborating emails they submit in evidence, from Mr. Nahed[6], lead to me to believe on the balance of probabilities that this proposal was made. I do not, however, necessarily infer bad faith on Mr. Nahed’s part. It may well be that he believed, mistakenly or not, that his use of the name Dot Easy Australia gave him rights to the trade mark in Australia.
    • By 2005 DTI was receiving reports of customer confusion between http://www.doteasy.com and http://www.doteasy.com.au (the earliest email in evidence is dated 2 March 2004[7]). In October of that year both parties filed their trade applications: DTI on the 22nd and DEA on the 25th. DEA’s application was originally filed in the names of Mr. Nahed and Mr. Makras and then later assigned to DEA in 2007 following its incorporation.
    • In 2006 DTI lodged two complaints with the WIPO Arbitration and Mediation Centre[8] in relation to DEA’s registration of their domain nameshttp://www.doteasy.com.auhttp://www.doteasy.net.au and http://www.doteasyserver.com (the latter two being registered in 2006 and 2005 respectively). The panelist in relation to http://www.doteasyserver.com found that DEA had no bona fide use of the domain name and had registered it in bad faith[9], in particular because of their use of the ‘.com’ generic top level domain rather than a country code top level domain such as ‘.com.au’ which would have signified their Australian market and interest. The panelist in relation to http://www.doteasy.com.au and http://www.doteasy.net.au found that DEA had rights to and legitimate interests[10] in those domain names, and denied DTI’s complaint.
  2. Once the evidence of both parties had been filed and served, the parties requested to be heard and agreed prior to the hearing that both oppositions be dealt with in a single hearing. The matters came before me in my capacity as a delegate of the Registrar of Trade Marks in Canberra on 11 May 2011. At the hearing, DTI was represented by Rohan Singh of Spruson & Ferguson attorneys who attended by telephone. DEA did not attend the hearing nor provide any written submissions for it.

Onus and grounds of opposition pursued

  1. The onus in an opposition rests with the opponent, who is required to establish at least one of the grounds of opposition on the balance of probabilities[11].
  2. In respect of DEA’s application DTI pursued grounds of opposition under sections 42(b), 44, 58, 58A, 59, 60 and 62A. For completeness I consider that the grounds not pursued in respect of application 1082189 have not been established. As stated previously, DEA did not participate in the hearing but nominated sections 58, 59 and 60 as grounds for opposing DTI’s application.

Opposition by DEA to DTI’s trade mark application 1081907

Section 58: Applicant not the 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.

Note: For applicant see section 6.

  1. In order to succeed under this ground of opposition, the opponent must establish that:
    • the respective trade marks of the applicant and opponent are either identical or substantially identical[12];
    • the respective services of both parties are the ‘same kind of thing’[13]; and
    • the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the trade mark by the applicant[14].

Under common law the owner of a trade mark is the first person who uses it[15].

  1. Both parties claim use before the filing date of the application, being 22 October 2005. After business establishment activities in 1999 and early 2000, DTI officially launched their website http://www.doteasy.com on 1 May 2000 which they submit is their date of first use. The courts have recognized that use as a domain name can, in certain circumstances, be use as a trade mark. In relation to online retailing of sporting goods, Kenny J states[16]:

…whether or not a domain name is used as a trade mark will depend on the context in which the domain name is used. In this case, the domain name is more than an address for a website, the domain name is also a sign for the applicant’s online retaining [sic] service available at the website. In the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user.

  1. However when considering use of a trade mark upon a foreign website, offering goods or services to the world at large is not sufficient to establish use in Australia. Information contained within a website not specifically directed at the Australian market (of which DTI shows no evidence) will not constitute use in Australia[17]. It is not until a customer in Australia actually makes a purchase that use of a sign on a foreign website constitutes an offer for sale[18]. DTI establishes that the first Australian customer engaged their web hosting and domain name registration services on 4 June 2000[19]. In the context of DTI’s services I consider use of the domain name to be use of the trade mark DOTEASY, (I also note that DTI exhibits a copy of their web page as it existed on 15 August 2000 upon which the DOTEASY trade mark is clearly displayed). I consider therefore that the date prior to which DEA must show use, in order to establish that the applicant is not the owner of the trade mark, is 4 June 2000.
  2. DEA claims to have used both ‘Dot Easy’ and ‘Dot Easy Australia’ as unregistered trade marks since the formation of Mr. Makras and Mr. Nahed’s business partnership in September 1999. However, much of DEA’s evidence postdates DTI’s priority date or is undated, including the screen shot purportedly showing their website http://www.geocities.com/doteasyaustralia as it existed on 1 January 2000[20]. I cannot attribute significant weight to undated exhibits or claims unsupported by documentary evidence. Those exhibits which are dated and relate to the period prior to 4 June 2000 (being DTI’s date of first use in Australia) are:
Exhibit:
Date:
Description:
McGuire 14
From 8/1/00
A bank statement in the name of Mr. Makras showing payments made to that account which are described in the transaction details as “Doteasy inv[number]”, “Doteasy ref[number] audio” and “Doteasy deposit[number]” (a total of five transactions dating from 8 to 26 January 2000).
McGuire 23
5/2/00
A letter from Mr. Nahed, as manager and partner of Dot Easy Australia, to the Ambassador of Lebanon in Australia dated 5 February 2000 (to which the subsequent response has also been included). In the letter Mr. Nahed offers the Ambassador a redesigned website for the Consulate General of Lebanon, a service apparently initiated by Mr. Nahed and offered free of charge.
McGuire 24
14/3/00
A letter from Webmasters International to Mr. Makras and Mr. Nahed, dated 14 March 2000, accepting Dot Easy Australia as a qualified member the organization.
McGuire 26
1/3/00
An invoice for audio streaming services, dated 1 March 2000, from Dot Easy Australia to 2BLCR Community Radio.
McGuire 31
14/5/07
An email from the Managing Director of Radio 2ME Australia, confirming that he has dealt with Mr. Nahed regarding advertisement of Dot Easy Australia on Radio 2ME since 1999. In it, he states that his records do not go that far back, but he is happy to confirm it personally.
  1. These exhibits do give a reasonable indication that Mr. Nahed and Mr. Makras did conduct a business by the name of Dot Easy Australia in Australia before the date of first use by DTI. However they do not establish first use as a trade mark in the course of trade for ‘the same kind of thing’ as those services claimed by DTI. With the exception of the invoice at McGuire 26, it is difficult to ascertain the nature of the services provided and/or that the use was in relation to an actual dealing[21] or actual offer[22] of a service. The bank statement neither indicates use as a trade mark nor what services the payments were in relation to; the letter to the Ambassador is arguably not in the course of trade given the service was initiated by Mr. Nahed and provided for free, with no indication of an intention to establish future or ongoing trade in the relevant services; and the letter from Webmasters International merely indicates Dot Easy Australia is the name of a company and does not relate to trade at all. I have taken the email from Radio 2ME into consideration however the weight attributed to it is tempered by the fact that it is unsupported by any documentation[23].
  2. The invoice, at McGuire 26, provides clear evidence of an actual dealing in relation to ‘audio streaming’. The issue is whether a substantially identical trade mark to DOTEASY was used in relation to services that were ‘the same kind of thing’.
  3. Previously the Registrar’s practice was to regard ‘the same kind of thing’ as meaning goods or services ‘of the same description’ (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same trader). However current interpretation of the meaning of ‘the same kind of thing’ arises from Krone AG v Brook (T/A The Cannon Watch Company)[24]. In that decision, Hearing Officer Williams said that goods and services are not the same kind of thing merely because the use of the same trade mark on both lines would amount to deception and confusion in the market place, nor is ‘the same kind of thing’ equivalent to ‘of the same description’. In considering a claim to ownership, a narrower interpretation of ‘the same kind of thing’ applies, and the claim is only valid with respect to the goods or services upon which use has been demonstrated.
  4. The evidence shows that DEA used the trade mark first in relation to audio streaming services. DTI contends that these are significantly different, in particular due to infrastructure requirements and pricing. Although I believe DEA provides a reasonable explanation as to how they came to offer low-priced audio streaming to customers[25], I am not convinced that such services are the same kind of thing as domain name registration and web hosting. DTI’s services appear to be ‘self-serve’ services which customers access themselves by nominating their desired domain name/s for registration and uploading data files to appear on their web sites. DTI manages the domain name (for example, issuing the license for it) and provides the web server(s) upon which the customer’s website will appear. Audio streaming is for the purpose of casting media over the internet, more in the nature of telecommunications in class 38 rather than the internet and web site related services in class 42. It also does not appear to be of the same ‘self-serve’ genre as DTI’s services. I am inclined to agree that, particularly in the early days of the audio streaming, the provision of those services would have been relatively specialized (especially considering bandwidth constraints at the time), and typical customers were unlikely to have been the general public. This is supported by DEA’s own exhibits of the invoice to 2BLCR Community Radio[26] and a later audio streaming agreement with Radio Delta[27], both being radio stations rather than the average internet user.
  5. Therefore although DEA shows itself to be the first user of the trade mark in relation to audio streaming, I am not satisfied that those services are the same kind of thing as DTI’s specified services. Accordingly the 2nd limb of the test for ownership cannot be established and this ground of opposition fails.

Section 59: Applicant not intending to use trade mark

  1. To establish the ground under the provisions of section 59, the opponent must be able to satisfy the Registrar that the applicant had no intention to use, or authorize someone else to use, its trade mark in Australia in respect of the services claimed. There is a presumption of an intention to use the trade mark inherent in the act of filing an application[28]. Moreover the evidence provided by the applicant demonstrates use of the trade mark DOTEASY in relation to services claimed in the Australian market. The opponent has not provided any evidence to support the grounds that the applicant did not intend to use its trade mark, and as such the section 59 ground fails.

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

  1. Section 60 of the Act (as it stood at the date DTI’s application was filed[29]) is reproduced below:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.

Note 2: For priority date see section 12.

  1. The opponent bears the onus of establishing that the reputation in Australia of its trade mark on the priority date, 22 October 2005, was such that use of the applicant’s trade marks would be likely to deceive or cause confusion in the marketplace. It is not entirely clear which trade mark the opponent attempts to establish the reputation of. The McGuire declaration refers to “the Dot Easy and Dot Easy Australia trade marks” and DEA’s exhibits show two variations of device elements as well as the different website addresses geocities.com/doteasyaustralia and http://www.doteasy.com.au. In order to best assess reputation, I will assume the relevant trade mark is ‘Dot Easy Australia’. The assumption proceeds on the tentative basis that the additional elements present in the various adaptations of the mark do not remove it from being substantially identical or deceptively similar to the applicant’s mark. This assumption places the opponent’s case for reputation at its highest, and I will revisit this issue if necessary following the discussion of the reputation of the opponent’s mark.
  2. The relevant test for reputation is set out by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd[30] and quoted by Kenny J in McCormick & Co Inc v McCormick[31]:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum…

 

Kenny J goes on to state:

…In practice, 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.

  1. The opponent’s evidence is vague in many respects: only one overall figure has been provided representing sales for the entire history of the business; similarly only overall figures has been provided for the total number of domain names under management at the end of 2006 and when the McGuire declaration was made, in June 2007. An approximate yearly expenditure in relation to advertising has been provided together with examples of radio advertisements, a Trading Post® online advertisement and a copy of Google® advertising expenditure for the period December 2004 to October 2006. Insofar as such information relates to a ‘recognition component’[32] of a trade mark’s reputation (via quantum of sales, advertising and promotion), I consider the amounts declared to be modest and would not infer reputation from those factors alone. In considering an ‘esteem component’[33] of the reputation, I note that the opponent’s testimonials are either undated or have been written after the priority date. Similarly, although the opponent has once been ranked by a web hosting speed website, the information relates to 2006.
  2. The evidence provided does not establish the opponent’s relevant success, nor allow me to infer a reputation flowing from it. Accordingly I am not satisfied that the opponent has discharged the onus of establishing a sufficient reputation in its trade mark in Australia, before the priority date of the applicant’s trade mark, such that the registration of the applicant’s mark would be likely to deceive or cause confusion in the market place. The section 60 ground of opposition has not been established.

Opposition by DTI to DEA’s trade mark application 1082189

  1. DTI, the opponent in this matter, has nominated several grounds of opposition, however I consider their evidence to be most pertinent to section 58 and therefore have discussed that matter first. Should it be necessary to investigate other grounds, I will do so after the discussion of section 58.

Section 58: applicant not the owner of trade mark

  1. The requirements for this section were noted previously at paragraph 12. The trade marks in question are reproduced below.
DOTEASY
2011_8801.jpg
  1. Substantial identity is assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[34]:

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

  1. The essential feature of both party’s marks are the words ‘Dot Easy’. These are the words by which the services of both trade mark owners will be identified in the relevant market. Whilst the word ‘Australia’ in DEA’s mark cannot be ignored, it arguably adds nothing and is in the same genus of minor additions to trade marks referred to by Carr J. in PB Foods Ltd v Malanda Dairy Foods Ltd[35]. The stripe extending from the letter ‘o’ is in the nature of the conventional embellishments described in Morny Ltd’s Trade Mark[36] which do not substantially affect a trade mark’s identity. It is my view that the similarities between the trade marks outweigh their differences, resulting in a ‘total impression of resemblance’. I find that whilst they are not identical, they are substantially so.
  2. As noted before, both parties have used their trade marks prior to the filing date of the applications. However in this opposition the specification of services in question differs from that which was under consideration in the previous opposition. The question to be answered then is whether DTI, the opponent in this opposition, establishes first use of DOTEASY for ‘the same kind of thing’ as the services specified in DEA’s application.
  3. DTI’s established first use in relation to domain name registration and web hosting is prior to almost all of DEA’s established use (with the exception of that in relation to audio streaming). DTI’s submissions describe the nature of the services as:

A domain name provides the underlying address from which internet users may then be able to access and view a website…As a domain name registrar, Doteasy is authorised to issue licenses to customers to use specified domain names for a period of time…[and]

In essence, web hosting means making a website accessible via the World Wide Web, and in its most basic form involves a customer uploading data files comprising a website to a computer server operated by a web hosting company…

  1. I can find no formal definitions of web site creation, design and the like, however Wikipedia® defines ‘web design’ as the process of designing web sites, being a collection of online content including documents and applications that reside on a web server or servers[37]. I consider that creating, designing and maintaining the data to appear on a web site, on the one hand, and providing the means by which the web site is made accessible, on the other, is the same kind of thing. Similarly on-line applications and software, such as web site templates, are commonly made available for consumers to utilize in the creation of their web sites. Such services are provided by the same traders and are for the purpose of creating an online presence of an individual, business or other organization. Moreover none of these are niche market services in the way that audio streaming is.
  2. In view of the above conclusions, I find that the opponent has established its opposition in terms of section 58 of the Act.

Other grounds

  1. I am satisfied that the opponent has established the section 58 ground of opposition in relation to the applicant’s services. Having found in favour of the opponent in terms of section 58 there is no need to explore further the other grounds set out in the notice of opposition. However those grounds would again be available to the opponent in the event of an appeal from this decision.

Decision

  1. Section 55 of the Act provides:

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

  1. I have found that DEA has not established any of the grounds in the opposition they pursued, and therefore trade mark application number 1081907 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 discontinued or, in the event of a decision from the Court, that the application be subject to that decision.
  2. I have also found that DTI has established grounds of opposition in terms of section 58. My decision is that I refuse registration of trade mark application 1082189.

Costs

  1. DTI has been successful in these matters and is entitled to costs. In determining costs, I have considered the decision made by the Registrar’s delegate inHume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd (2001 ATMO 78) in respect of amounts claimed when more than one opposition is heard at the same time. However I do not believe that decision applies here. Unlike Hume Industries the evidence in support of one matter has not necessarily constituted evidence in answer or reply to the other. Each of the declarations differs either slightly or entirely. For that reason I award costs against DEA in terms of Schedule 8 of the Trade Mark Regulations 1995 in relation to both oppositions, none being at reduced scale.

Nicole Worth
Hearing Officer
Trade Marks Hearings
30 August 2011


[1] http://www.archive.org/
[2] CSL Limited v Capital Securitisation (Holdings) Pty. Limited [2010] ATMO 42, paragraphs 12-15.
[3] Malibu Boats West Inc v Catanese [2000] FCA 1141(2000) 51 IPR 134 at [24].
[4] The exhibit relating to this use is discussed further in paragraph 15.
[5] Tam 1, exhibits 15 and 16.
[6] Tam 1, exhibit 19 and Tam 2, exhibits JT-33, JT-35, JT-36.
[7] Tam 3, exhibit JT-38.
[8] WIPO Arbitration and Mediation Center Administrative Panel Decision Case No.’s DAU2006-0011 and D2006-0683.
[9] As per paragraphs 4(b) and 4(c) of the Uniform Domain Name Dispute Resolution Policy (‘the Policy’).
[10] As per paragraph 4(c) of the Policy.
[11] Pfizer Products v Karam [2006] FCA 1663(2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks[2009] FCA 891, 22-27.
[12] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495.
[13] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75.
[14] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.
[15] Shell Company of Australia Ltd v Rohm and Hass and Anor [1948] HCA 27; (1949) 78 CLR 601.
[16] Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664, Kenny J at [153].
[17] Ward Group Pty Limited v Brodie & Stone PLC [2005] FCA 47164 IPR 1; [12].
[18] Fresh Intellectual Properties Inc v Goldman [2006] ATMO 24; (2006) IPR 337.
[19] Tam 1, exhibit 10.
[20] Exhibit 13 of the McGuire declaration, undated. I note further that DTI implies it is unlikely the website at that address existed until some years later. They state that a ‘geocities’ page can be created and manipulated at any time, and show that the only material available from the Wayback Machine is from 2007. Whilst I am unable to ascertain the precise date from which the website existed, I would point out that the website address geocities.com/doteasyaustralia is shown both in the contact details of Mr. Nahed’s letter to the Ambassador of Lebanon (Exhibit 23 of the McGuire declaration, dated 5 February 2000), and upon DEA’s business stationery (of which undated photographs are shown in Exhibit 22 of the McGuire declaration, declared to be used from 1999 and 2000).
[21] As in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592.
[22] As in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1961) CLR 407.
[23] In a separate exhibit DEA has provided four audio files of radio advertisements, declared to have been played on Australian radio since 2000. However all are undated, and three of them refer to ‘www.doteasy.com.au’ which was not registered until 2003, indicating that those particular advertisements could not have been played on Australian radio until after then.
[24] Krone AG v Brook (t/a Cannon Watch Co) (1996) 34 IPR 340.
[25] By utilising a 3rd party, ‘Radio Destiny’, who specialised in providing free and paid audio streaming.
[26] McGuire, exhibit 26.
[27] McGuire, exhibit 27.
[28] See section 27 of the Act and Aston v Harlee Manufacturing Company [1960] 103 CLR 391.
[29] Apple Computer v TodayTech Group Pty Ltd [2007] ATMO 40.
[30] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) IPR 193.
[31] McCormick & Co Inc v McCormick (2000) IPR 102 at 128-129.
[32] Hearing Officer Thompson in Hugo Boss v Jackson International Trading Company Kurt D. Bruh/GmbH & Co. KG (1999) 47 IPR 423 at 426; quoted with approval by Kenny J in McCormick & Company Inc. v McCormick [2000] FCA 1335; (2000) IPR 102.
[33] As above.

[34] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 48; (1963) CLR 407.
[35] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.
[36] Morny Ltd’s Trade Mark (1951) 68 RPC 55; (1951) 68 RPC 131.
[37] See Wikipedia, Web Design, http://en.wikipedia.org/wiki/Web_design (as of 29 August 2011).

 



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