Google, Inc v Dmitri Rytsk [2008] ATMO 40 (28 May 2008)

Last Updated: 8 July 2008

TRADE MARKS ACT 1995

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

Re: Opposition by GOOGLE, INC to registration of trade mark application 1118972(35) - GOOGLEBAY - filed in the name of DMITRI RYTSK.

DELEGATE:	Don Nancarrow
REPRESENTATION:	Decision on the written record
DECISION:	2008 ATMO 40 s. 52 opposition – grounds under both s. 44 and s. 60 established. Registration refused.

Background

1.	Trade mark application number 1118972 was filed by Dmitri Rytsk (‘the applicant’) on 16 June 2006 for the word googlebay in class 35 of the International Classification of Goods and Services (‘Nice’ classification). It was examined and then advertised as accepted for possible registration on 19 October 2006.
2.	Google, Inc (‘the opponent’) filed a Notice of Opposition to registration on 11 January 2007 in terms of virtually all grounds available under the Trade Marks Act 1995 (‘the Act’). The evidence served to support the opposition consists of a single declaration (with exhibits ‘RH-1’ to ‘RH-11’ inclusive) from Rose Hagan. Ms Hagan is the Senior Trade Mark Counsel of the opponent corporation. The applicant served a single declaration with one annexure as evidence in answer to this material.
3.	The parties did not request to be heard in the matter although the opponent provided written submissions to support its side of the issue. The file has now been directed to me under delegation from the Registrar of Trade Marks for decision based on the written material held in this Office.
4.	Details of the opposed application are as follows:

Trade mark number	Status	Priority date	Trade mark
1118972	Opposed	16 June 2006	googlebay
Services (class 35)
Consumer market information services

The Evidence

5.	The opponent’s evidence goes to show that the opponent has a group of ‘Google’ trade marks on the Australian Register. The details of four of these registrations are set out below:

Trade mark number	Status	Priority date	Trade mark
788234	Registered	16 September 1998	GOOGLE
Goods and Services (classes 9, 38 and 42)
Computer hardware; computer software including computer software for searching, compiling, indexing and organizing information within individual workstations, personal computers or computer networks; computer software for electronic mail and facilitating workgroup communications over computer networks; computer software for creating indexes of information, web sites or other resources
Providing electronic mail and workgroup communication services
Computer services in this class, including on-line personalized information services; information extraction and data mining; providing access to proprietary collections of information; creating indexes of information, web sites and other information sources; providing information concerning a wide range of text, electronic documents, databases, graphics and audiovisual information

Trade mark number	Status	Priority date	Trade mark
1049124	Registered	4 April 2005	GOOGLE
Goods and Services (classes 16, 25 and 35)
Books; manuals; notebooks; notepads; pens; greeting cards; stickers; decals; sticky notes
Clothing; footwear; headgear
Dissemination of advertising for others via the Internet

Trade mark number	Status	Priority date	Trade mark
1111537	Protected	12 January 2006
Goods and Services (classes 9, 38 and 42)
Computer software for searching, compiling, indexing and organizing information on computer networks; computer hardware, computer software for searching, compiling, indexing, and organizing information within individual workstations and personal computers; computer software for creating indexes of information, indexes of web sites and indexes of other information resources; mouse pads
Providing multiple user access to proprietary collections of information by means of global computer information networks
Computer services, namely, providing software interfaces available over a network in order to create personalized on-line information services; extraction and retrieval of information and data mining by means of global computer networks; creating indexes of information, indexes of web sites and indexes of other information sources in connection with global computer network; providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks

Trade mark number	Status	Priority date	Trade mark
1130283	Registered	2 March 2006	GOOGLE
Goods and services (classes 36 and 38)
Charitable fundraising; providing grants to charitable organizations; financial services; financial transaction processing services; payment and billing services
Telecommunication services; data transmission and reception services via telecommunication means; electronic exchange of voice, data, and graphics accessible via computer and telecommunication networks; local and long distance transmission of voice, data, graphics via computer and telecommunications networks; providing multiple-user access to a global computer information network; Internet café services, namely, providing telecommunications connections to the Internet in a cafe environment; online chatroom, bulletin board and discussion group services; electronic mail services; workgroup communications services over computer networks; instant messaging services; voice over ip services; video and audio conferencing services; computer communication services; wireless communication services; telephone communication services; mobile phone communication services; search engine services

6.	The opponent’s evidence sets out details of the reputation of the opponent in its GOOGLE trade mark in Australia from the time of first use in 2003. The first use internationally was in September 1998. Part of the opponent’s reputation in the trade mark centres on the opponent’s ownership of the GOOGLE search engine – being, according to the opponent’s evidence, the largest internet search engine in the world. I note, at ‘RH-3’, that the Australian Google website highlights on its header page that the primary uses of the website are for ‘Advertising Programmes’ and ‘Business Solutions’. Exhibit ‘RH-5’ draws attention to the opponent’s brand being one of the five most identifiable in the world for the years 2001 to 2006 inclusive according to consumer voting survey through brandchannel.com.
7.	In addition to the internet search engine services the opponent also offers services via the internet in email, blogging and online social networking services (exhibit ‘RH-7’). Press releases in relation to online advertising from 2003 onwards and ‘Google News’ from 2005 and a host of other internet services are exhibited at ‘RH-9’.
8.	Ms. Hagan, at ¶16 and ¶17, provides figures for both revenue and advertising expenditure under the GOOGLE trade mark for the years 2002 to 2006. The figures, in USD$, are in the order of many billions and many millions respectively.

Discussion

9.	It is for the opponent to establish at least one ground of its opposition in order to succeed in the overall opposition.
(a)	Section 44
10.	In terms of this section it is for the opponent to demonstrate all of the following:
•	a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
•	the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and
•	the priority date(s) of the trade mark(s) of the other person is (are) the earlier.
11.	The opponent’s registered trade mark numbered 1049124 has a priority date of 4 April 2005. By comparison the opposed application has a later priority of 16 June 2006.
12.	The services claimed in the specification of the opposed trade mark are ‘Consumer market information services’ in class 35. I note that 1049124 also has class 35 services in its specification – being ‘Dissemination of advertising for others via the Internet’.
13.	The respective services here both provide information with regard to the purchasing of goods or the engagement of services. ‘Consumer market information services’ is a broad statement which may include items as diverse as various advertising services to comparisons of pricing for consumers on particular items and services beyond this range. The scope of the statement, however, could readily include advertising and thus is in respect of similar services to the class 35 services claimed by the opponent in 1049124.
14.	I also note that the applicant, in his written submissions, states under a heading of “refutation”: ‘1. googlebay is used to indicate intended purpose and other characteristics of services provided by but not limited to opponent’s.’ This statement would appear to support my finding that the respective services are similar.
15.	The remaining factor to be considered under this ground of opposition concerns the similarity or otherwise of the respective trade marks. The opposed mark is googlebay. The opponent’s trade mark is GOOGLE.
16.	The applicant has made the point in the evidence in answer that he has registered the name googlebay.com.au as a domain name in June 2006 and on that basis has trade mark rights in the word. However, the respective registrations of a domain name and a trade mark are achieved by means of different legislative requirements and one registration need not influence the other. In the present matter the assessment of deceptive similarity under trade mark law is not a consideration that needs to be assessed to gain registration of a domain name and so the applicant’s domain name registration is not a direct factor to influence my finding here.
17.	The standard test for substantial identity of competing trade marks is set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414.

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.

18.	There are clear differences between the respective trade marks here and I find that they are not substantially identical.
19.	The test for deceptively similar trade marks, however, is quite different, as discussed by Windeyer J. in that same case, Shell v Esso, at 415:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

20.	I note that Justice French discussed the expression ‘deceptively similar’ in dealing with a matter under section 44, in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411 at [50]:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

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

(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

21.

In considering whether in a visual or a verbal sense the respective trade marks are deceptively similar, it seems to me that prospective purchasers may realise that ‘GOOGLE’ and ‘googlebay’ are not the same trade mark. The obvious visual and verbal differences may mitigate against possible deception or confusion based purely on those issues. However, that is not the end of the matter. Justice French refers to two factors that need to be addressed in the present case – the issues raised are: (1) whether the opposed trade mark is such that ‘some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source’, and (2) ‘in considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration’.

22.

In this regard I note John Fitton & Co. Ltd’s Application, 66 RPC 110, at 113 where Mr. S. E. Chisholm, the Assistant-Comptroller, commented:

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

23.	Concerning the matter of contextual confusion I need to consider whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that ‘googlebay’ would be seen as a member of the ‘family’ of GOOGLE trade marks of the opponent because of a commonality that has been produced by a mutual feature (or features).
24.	Where is the link in the present matter that would allow me to suppose a commonality? The word GOOGLE according to The Macquarie Dictionary Online (2008) has meanings of: ‘to search for information on the internet’, ‘to search the internet for information about ..’ and ‘an instance of such a search [trademark Google an internet search engine]’.
25.	The word GOOGLE did not have a dictionary meaning prior to the existence of the internet. It is now seen as a trade mark with a meaning strongly associated with the internet as the name of a search engine. The coined ‘word’ EBAY[1] also has a strong internet association – as being a website that exists for parties to trade in goods and services on-line. Joining the words GOOGLE and EBAY to form the single entity ‘googlebay’ will provide the purchasing public with a link to these meanings (as no other is available) and an expectation that the applicant’s services form part of the opponent’s business.
26.	The ‘surrounding circumstances’ that ‘have to be taken into consideration’ may include the public perception that functions of the internet continue to expand rapidly. The general public could readily see ‘googlebay’ as some form of new internet business of the opponent. This is particularly so because of the highly distinctive nature of the word GOOGLE which produces a strong association with the opponent and the opponent’s services. This sort of expectation, in my view, if sufficient to reinforce the thinking that the trade marks GOOGLE and googlebay are part of a ‘family’ of marks owned by the opponent. Thus, I find that the opposed trade mark is deceptively similar to the opponent’s GOOGLE trade mark – based on the strength of the expectation that the respective services have the same source.
27.	From the foregoing I have found that the opponent has established its opposition under section 44 of the Act.

(b) Section 60

28.	In terms of this ground of opposition it is for the opponent to point to a trade mark, whether registered or in common law use, in comparison to which the opposed trade mark is:
•	either substantially identical or deceptively similar and
•	which, before the priority date, had acquired a reputation in Australia such that
•	use of the opposed trade mark would be likely to lead to deception or confusion.
29.	One important feature of the requirements for section 60 is that, unlike section 44, the respective services of applicant and opponent need bear no relationship.
30.	I have already found that the opposed trade mark, googlebay, and the opponent’s GOOGLE trade mark are deceptively similar in my above discussion under section 44.
31.	The priority date for the application is 16 June 2006. The reputation acquired in Australia by the opponent in the GOOGLE trade mark by that date must be assessed in terms of the test set out in the words of Justice Kenny in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[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.

32.	Justice Kenny continues at 129:

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: ...

33.	From the opponent’s evidence (particularly ¶16 and ¶17 of Hagan and exhibits ‘RH-1’, ‘RH-4’, ‘RH-5’, ‘RH-8’) and my own awareness of the opponent’s use of its trade mark I find that the opponent’s reputation had become vast in terms of both magnitude and coverage throughout Australia by 16 June 2006.
34.	I believe that use of the ‘googlebay’ trade mark by the applicant in respect of the services claimed would be likely to cause deception or confusion of the general purchasing public in the face of the strong Australian reputation acquired by the opponent (as at 16 June 2006) in its GOOGLE trade mark.
35.	Thus, I find that this ground of opposition is established.

Decision

36.

From the foregoing I find that the opponent has succeeded in establishing grounds of opposition under sections 44 and 60 of the Act. Thus, I refuse to register application 1118972 for the trade mark googlebay. If the Registrar has been served with a notice of appeal within one month of the date of this decision, I direct that refusal 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 order.

Don Nancarrow
Hearing Officer
Trade Marks Hearings
28 May 2008

---

^[1] There is no definition in The Macquarie Dictionary Online (2008) for ‘ebay’.