CRYSTAL”-Application for removal of the trade mark “CRYSTAL” registered under No.1213531 in Class 23 under the provisions of the Trade Marks Act, 1999 (‘Act’ in short= application has been filed on 11.07.2003 claiming user since 16.03.1998. The respondents have not filed their counter statement denying the applicants use nor have they filed any evidence of their user at least since 1998. The respondent’s trade mark is neither distinctive nor capable of being distinguished and therefore is in contravention of the provisions of Section 9 of the Act. The respondent has obtained registration in bad faith. The respondent has not used the trade mark and the mark therefore deserves to be removed for non-use.The main ground of the rectification petition is that the respondents have not used the trade mark after registration. The respondents are aware of the proceedings and had in fact filed their reply to the Miscellaneous Petition No.61 of 2010 for substituted service. The respondents probably are not using the trade mark and that could be the reason for them not filing their counter statement as well for their non appearance. 14. The applicant’s trade mark “CRYSTAL” has been on the register since 1991 for identical goods even before the respondent adopted and used the trade mark. We therefore think that the impugned trade mark is wrongly remaining on the register. 15. Accordingly, ORA/204/2007/TM/AMD is allowed with a direction to the Registrar of Trade Marks to remove the trade mark “CRYSTAL” registered under No.1213531 in Class 23 from the register of Trade Marks. There shall be no order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

(CIRCUIT SITTING AT AHMEDABAD)

ORA/204/2007/TM/AMD

 MONDAY, THIS THE 25^th DAY OF JUNE, 2012

Hon’ble Ms.S. Usha                                            …  Vice Chairman

Hon’ble Shri V. Ravi                                           …  Technical Member

                                                                                                                                               

Crystal Knitters

4/688, Nochipalayam Road

Veerapandi

TIRUPUR-641605.                                                            …  Applicant

(By Advocate:  Shri Gurvinder Singh)

  

Vs

1.         Kejriwal Yarns (P) Ltd.

            3147, 3^rd Floor

            Abhishek Market

            Ring Road

            SURAT-395002.                                                    …  Respondent No.1

2.         Registrar of Trade Marks

            Ahmedabad.                                                          … Respondent No.2

                                   

                                                                                               

                 (By Advocate:  None for R1)

ORDER (No.168/2012)

Hon’ble Ms.S. Usha, Vice-Chairman:

            Application for removal of the trade mark “CRYSTAL” registered under No.1213531 in Class 23 under the provisions of the Trade Marks Act, 1999 (‘Act’ in short). 

2.         The applicants herein are engaged in the business of manufacture and sale of variety of textile articles including ready made garments, hosiery, knitted under wears, knitted garments, sports wear, swimming wear, athletic wear etc. The applicant’s predecessor adopted the trade mark “CRYSTAL” in the year 1971 in respect of the above mentioned goods. They have been using the same continuously and extensively since then.  The public and the trade identify the goods bearing the trade mark “CRYSTAL” as that of the applicant. The applicants have spent huge amount towards promotional expenses of their trade mark. The expenditure runs to several lakhs of rupees. The applicants are prior in adoption and by such long, continuous and extensive use their trade mark has acquired tremendous enviable and an unimpeachable reputation and goodwill amongst the public and trade.

3.         The applicants trade mark being highly publicized has acquired a well known reputation in the minds of the public. The trade mark itself has become well known and as such the reputation accrued to the said trade mark is not only confined to the goods for which the applicant have made use of the said trade mark but also extends and spills over to all other goods including those that are cognate or allied in nature. The applicant’s trade mark has thus become highly distinctive of their goods.

4          The applicants have acquired statutory rights to the exclusive use by virtue of registrations granted under the provisions of the Trade Marks Act, 1999 (‘Act’ in short). The applicants have registered the trade mark “CRYSTAL” in various classes. As such they have registered the trade mark “CRYSTAL” along with the logo and device. The said registrations have been renewed and are subsisting as on date. The applicants have not only obtained trade mark registrations but have also obtained registrations of the artistic work under the Copyrights Act.

5.         The applicants trade mark is a well known trade mark and the use by the respondent would amount to taking unfair advantage of or detrimental to the distinctive character of the applicant’s trade mark.  Any purchaser is likely to wonder as if threads and yarns bearing the trade mark “CRYSTAL” have originated from the applicant’s source of manufacture. The goods in which the applicant deals cannot be manufactured without yarns and threads. The impugned registration under No.1213531 in Class 23 has been obtained dishonestly, malafidely and in bad faith. The impugned registration is likely to cause confusion and deception. The impugned registration has been wrongly obtained and is wrongly remaining in the register without sufficient cause.  The registration is in violation of the principles of law, equity and good conscience. The impugned registration is in contravention of the provisions of Section 9,11 and 18 of the Act. The respondents have never used the trade mark and as such the registration has been wrongly obtained and wrongly remaining on the register.  The trade mark has not been used up to the date of three months prior to the date of the institution of the present proceedings. The registration has been obtained by playing fraud. The registration has been obtained by concealing the material facts and by making misrepresentation before the Registrar.

6.         We have heard the learned Counsel for the applicant.  In spite of service of the notice, the respondent was not present in the earlier occasion and for today’s hearing. The respondent was therefore set ex parte and we heard the applicant.

7.         The learned Counsel for the applicant submitted that the applicant adopted and used the trade mark “CRYSTAL” since the year 1971. The applicants are the registered proprietors of the trade mark both word mark and device mark. They are the proprietors of the artistic work. The applicants are engaged in the business of manufacturing and selling various textile articles.  The applicants have given their sales figures which runs to several lakhs of rupees.

8.         The Counsel further submitted that the impugned application has been filed on 11.07.2003 claiming user since 16.03.1998.  The respondents have not filed their counter statement denying the applicants use nor have they filed any evidence of their user at least since 1998. The respondent’s trade mark is neither distinctive nor capable of being distinguished and therefore is in contravention of the provisions of Section 9 of the Act. The respondent has obtained registration in bad faith. The respondent has not used the trade mark and the mark therefore deserves to be removed for non-use.

           

9.         The applicants being the prior user of the trade mark is aggrieved by the registration of an identical trade mark for identical goods.

10.       We have considered the arguments and gone through the pleadings and documents carefully.

11.       The Counsel relied on several judgments which we are not going into as we shall deal with the matter on the facts of the case.

12.       The application for registration of the impugned trade mark has been filed on 11.07.2003 claiming user since 16.03.1998. The respondent though is aware of this proceedings has not filed any counter statement nor has appeared before this Board to prove their case. The respondents have not produced any evidence in proof of their use since 1998 as claimed in their application for registration.

13.       The main ground of the rectification petition is that the respondents have not used the trade mark after registration. The respondents are aware of the proceedings and had in fact filed their reply to the Miscellaneous Petition No.61 of 2010 for substituted service. The respondents probably are not using the trade mark and that could be the reason for them not filing their counter statement as well for their non appearance.

14.       The applicant’s trade mark “CRYSTAL” has been on the register since 1991 for identical goods even before the respondent adopted and used the trade mark.  We therefore think that the impugned trade mark is wrongly remaining on the register.

           

15.       Accordingly, ORA/204/2007/TM/AMD is allowed with a direction to the Registrar of Trade Marks to remove the trade mark “CRYSTAL” registered under No.1213531 in Class 23 from the register of Trade Marks. There shall be no order as to costs. 

(V. Ravi)                                                                                        (S. Usha)                                                               

Technical Member                                                                       Vice-Chairman

(This order is being published for present information and should not be taken as a certified copy issued by the Board.)

“TRIX” as early as 29 July, 1910 - vs -“AMUL TRIX” since 1986-an advertisement on the internet in the DNA Daily News on 26.11.2007-.the mere fact that the party has not used the mark in India would be irrelevant if they were first in the world marketThe applicants have used the trade mark outside India and have proved their intention to use in India by filing an application for registration. The applicant’s use outside India is not in dispute. 29. Considering all the above, the application for rectification ORA/28/2008/TM/AMD is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.330224 in Class 30. There shall be no order as to costs..

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

CIRCUIT SITTING AT AHMEDABAD

M.P.No.297/2010 & M.P.No.76/2012

 in

ORA/28/2008/TM/AMD

AND

ORA/28/2008/TM/AMD

MONDAY, THIS THE 16^th DAY OF JULY, 2012

Hon’ble Ms.S. Usha                                                       …  Vice Chairman

Hon’ble Shri V. Ravi                                                      …  Technical Member

                                                                                             

General Mills Inc.

Number One General Mills Boulevard

Minneapolis

Minnesota 55426

USA                                                                          … Applicant

(By Advocate:  Shri N. Mahabir)

Vs.

1.         Kaira District Cooperative Milk

            Producers Union Ltd. Federation

            Amul Dairy Road

            Anand 388001

            Gujarat.                                                                … Respondent No.1

2.         The Registrar of Trade Marks

            Office of the Trade Marks Registry

            Baudhik Sampada Bhawan,

            Near Antop Hill Post Office, Antop Hill,

            MUMBAI-400037.                                                     Respondent No.2

                                               

                                               

          (By Advocate:  Shri Pranit K. Nanavati)

ORDER(No.181/2012)

Hon’ble Ms.S. Usha, Vice-Chairman:

            Application for removal of the trade mark “TRIX” registered under No.330224 in class 30 under Section 47/57/125 of the Trade Marks Act, 1999 (in short ‘the Act’). 

           

2.         The applicant is engaged in the business of manufacturing and marketing a wide range of food items like baking products, cereals,  organic foods, snacks, desserts, mixes etc. The applicant is a food products manufacturing company. They sell their products in more than 100 countries. The applicant traces its history to the year 1928 when James Ford Bell, President of Washburn Crosby led a mega-merger of milling companies across theUnited States to create General Mills. The new Company included some of the most respected names in flour and the applicant became the largest flour milling company in the world. The applicant’s international business accounts for more than $ 1.8 billion in annual sales including the food service segment.

3.         The applicant carries on business by itself and through joint ventures. The applicant has formed a joint venture company called Cereal Partner worldwide which markets ready-to-eat cereal brands in more than 130 international markets. The applicant carries on its business General Mills India Private Limited which is a subsidiary of the applicant company. The Indian subsidiary was formed in the year 1995. Its emphasis is on global brands and technology and adopting these to local market requirements. The applicant’s Indian brand portfolio includes Pillsbury Chakki fresh atta, Pillsbury non-sticky semiya etc. and was introduced as early as 1998 in India.

4.         The applicant’s predecessor M/s. Trix Food Products Inc. adopted and used the trade mark “TRIX” as early as 29 July, 1910 which was assigned to the applicant company in 1953.  The applicant launched its first TRIX cereal under the brand in the year 1954.  The goods bearing the brand “TRIX” were an instant hit due to their superior quality. On 21^st November, 1989 the applicant and Societe des Produits Nestle, S.A. entered into a joint venture agreement for marketing of ready-to-eat breakfast cereal outside the United States, Canada and Iceland.  The joint venture company is called Cereal Partners Worldwide and uses several  applicant’s brands to market breakfast cereal including “TRIX” brand.

5.         In some countries for ease of management, if TRIX breakfast cereal is not sold in such countries the applicant retains all rights and registers the brand in its own name. Currently in India, Cereal Partners Worldwide is not selling breakfast cereal. So the present applicant currently for all purposes is pursuing registration and protection of the brand “TRIX” for its products. The applicant’s consolidated worldwide net sales of various products for the years 2002 to 2007 are US $ 1,400,0000,000.  The advertisement expenses of various products are US $ 244,000,000.  The mark was advertised in the year 1959. The applicant has constantly changed the packaging and given different prizes to popularize the brand.

6.         The applicant owns registrations in various countries. The mark had been used since 1910 in the USA and it launched its products in India under the brand name “TRIX” in the year 2005. The mark “TRIX” has been advertised through various media like newspapers, television etc. 

7.         In order to gain statutory protection, the applicant herein filed an application for registration of the mark “TRIX” for goods falling in classes 29 and 30.  The application was numbered as 1347981. The Registrar of Trade Marks rejected the said application on the ground that the trade mark “TRIX” was already on the register and that the applicant’s trade mark was “proposed to be used” against which an appeal has been preferred and the same is pending.

8.         The applicant through an advertisement on the internet in the DNA Daily News on 26.11.2007 became aware of the first respondent’s trade mark “TRIX” which was to be launched in December, 2007. The applicant immediately filed a Civil Suit in the High Court of Delhi restraining the respondent from launching its product under the trade mark and passing off of its goods as that of the applicant. The Hon’ble High Court of Delhi restrained the first respondent from launching the goods bearing the trade mark. 

           

9.         The applicant’s representative found that though the mark is registered in favour of the respondent it was not put to use.  Since no use was found no legal action was initiated till filing of the Civil Suit.  The impugned trade mark was filed as early as 28.10.1977 on “proposed to be used” basis. The respondent has till date not used the impugned trade mark. It was in November 2007 that the respondent was to launch its products in December, 2007.  The Delhi High Court had restrained the respondent from launching its products by order dated 12^th December 2007.  The impugned trade mark is liable to be removed for not using the mark continuously for a period of 5 years and 3 months and on the ground that the mark is registered without sufficient cause and is wrongly remaining on the register. The mark is registered without any bonafide intention to use.  The impugned trade mark has been wrongly registered as the respondent is not the proprietor of the impugned trade mark. The impugned trade mark is identical to the applicant’s trade mark. The registration has been obtained with malafide intention. It has been registered for the purpose of harassing the applicant and to prevent the applicant from registering the trade mark. Therefore, the applicant prays that the impugned trade mark be rectified. 

10.       The respondent herein filed their counter statement stating that they are carrying on business of marketing milk and milk products. The respondent is a cooperative society established with the object to carry out certain activities for the welfare and economic development of the dairy farmers in organizing and marketing milk and other dairy products.

11.       The respondent is involved in the business inter alia milk and milk products such as Amul Spray, Amul Butter, Amul Milk powder, chocolate etc. They are the registered proprietor of the reputed and well known trade mark and many of its variants. In the year 1977, the respondent coined the word from the dictionary word “TRICKS”. The application for registration of the mark “TRIX” was filed on 28.10.1977. The respondent had started using the trade mark in chocolate, Amul food.  The respondent started selling “AMUL TRIX” since 1986. It has also advertised its products through various media.  It is clear that the registered trade mark “TRIX” is openly in use in India.  The respondent further states that the applicant is doing business in India through its associates in the same line of business.  Therefore, it is submitted that under Section 33(1) of the Trade Marks Act, 1999 assuming the applicant claims to be the proprietor of the trade mark which is denied by the respondent and the applicant seems to have acquiesced for a continuous period of 5 years and is no longer entitled to apply for a declaration for the registration which is invalid.  This acquiescence is clear from the fact that the applicant through its associates and the respondent were doing business in the same line and in the same area.  In support of this, the respondent has filed two affidavits of wholesale dealers distributing the products of the respondent who reaffirm the fact that Nestle was aware of the respondent’s products and therefore under Section 33 of the Act, the application is not maintainable. The rest of the averments made in the application were denied by the respondent.

12.       We have heard Shri N. Mahabir, Counsel for the applicant and Shri Pranit K. Nanavati, Counsel for the respondent.

13.       The learned Counsel for the applicant submitted that the application for registration of the impugned trade mark was filed on 28.10.1977 as “proposed to be used” by the respondent. The applicant adopted the trade mark “TRIX” as early as 29.07.1910 by its predecessor and in 1953 by the applicants. The first products was launched in 1954.

14.       The respondent had not used the trade mark on their goods even though they had applied for and obtained registration as early as 1977.  In December, 2007 when the respondent had advertised about their launch, the applicant filed the Civil Suit and obtained injunction. The mark is not put to use and therefore the mark is wrongly remaining on the register.

15.       The applicant adopted and used the trade mark since the year 1910 outside India and in India since 2005. The applicant therefore applied for registration of the trade mark “TRIX” on 30.03.2005 under No.1347981. On 26.11.2007, the applicant became aware of the respondent’s launch of the product bearing the trade mark “TRIX” through an advertisement on the internet in the DNA Daily News & Analysis. The Counsel submitted that a Civil Suit was thereafter filed. The Counsel then pointed out the averments made in the Counter Statement and submitted that the respondents themselves have admitted that they are selling their nougat bar since 1986. The respondents have also admitted that in 1986 they launched chocolate under the trade mark “AMUL TRIX” throughout India. In 2005-2006 after a market search and survey they launched chocolate wafer in May 2007.

16.       The Counsel further submitted that they had been using the trade mark “TRIX” extensively since adoption outside India. The respondents are not using the trade mark and therefore ought to be removed on the ground of non user. The Counsel then relied on a few judgments:

(i)                 2004 (28) PTC 585 (SC) – Milment Ortho Industries & Ors., Appellants Vs. Allergan Inc., Respondent was relied on to state that they were first in the world market and the respondent’s mark which was subsequent ought not to continue on the register.

(ii)               1996 PTC (16) 476 – N.R. Dongre, Petitioner Vs. Whirlpool Corp., Respondents - The magazine “Life” had circulation in India was observed in that judgment. The applicant’s mark was advertised in the said magazine “Life” as early as 1953 and so the magazine “life” had circulation in India can be relied on to prove their use in India.

(iii)             2006 (32) PTC 133 (Del) – Austin Nichols & Co. & Anr., Plaintiffs Vs. Arvind Behl & Anr., Defendants - Merely being first past the post in India is not enough.

(iv)              1998 (PTC) 18(DB) 288 – Centron Industrial Alliance Ltd., Petitioner vs. Gillette U.K. Ltd., Respondents - Foreign magazine advertisements which are circulated in India are freely imported and presumably read.

(v)                2001 PTC 889 (Del) DB – Veerumal Praveen Kumar, Petitioner Vs. Needle Industries (India) Ltd. & Anr., Respondents - If there is non user for a long period of time then mere registration will not entitle that person to obtain injunction.

(vi)              2005 (30) PTC 358 (Del-DB) – Fedders Lloyd Corporation Ltd. & Anr., Petitioners Vs. Fedders Corporation, Respondents - It is the duty of the respondent to show their intention to use the trade mark.

17.       The applicant prayed that the application be allowed and the trade mark be removed from the register.

18.       The learned Counsel for the respondent in reply contended that the applicant had not satisfied the provisions of Section 47 and as such no ground is made out for removal of the trade mark. The applicant is not a person aggrieved. The Counsel submitted that they had sale during the year 1985-86.  In the year 2005, they had sale for a different product.  For sale in the year 1986 they relied on few invoices filed along with the reply to the Miscellaneous Petition filed by the applicant to receive additional documents.

19.       The Counsel then relied on the judgment reported in MANU/SC/0932/2010 - Infosys Technologies Ltd., Appellants Vs. Jupiter Infosys Ltd. and Another, Respondents and submitted that the phrase “aggrieved person” is differently construed in the case of Section 47 and it not the same as in the case of removal under Section 57. The Counsel produced a computer generated search report and stated that there were several people using the trade mark “TRIX”.

20.       The other contention was that the applicants were aware of the respondent’s registration as early as 2005 when they received the examination report for their application for registration. Having been aware of this mark on the register, the applicant has acquiesced the respondent’s use. The Counsel then relied on the judgment – Madras High Court W.P.No.8681 of 2011 - Rhizome Distilleries Pvt. Ltd., Vs. Union of India decided by the Division Bench of the Madras High Court and submitted that this Board had no powers to decide the rectification under Sections 9 and 11 of the Act.

21.       As regards “aggrieved person” the respondent relied on these judgments –

(i)                 AIR 2003 SC 3377 – Hardie Trading Ltd., and another, Appellants Vs. Addisons Paint and Chemicals Ltd., Respondent

(ii)               AIR 1969 Cal 43 (V.56 C 9) – Aktiebolaget Jonkoping Vulcan, Appellant Vs. V.S.V. Palanichamy Nadar and others, Respondents

(iii)             ORA/89/2007/TM/CH(IPAB) – Elbaik Food Systems Co.S.A., Applicant Vs. Mr M Moideen Kutty, Respondent

(iv)            ORA/38/2007/TM/MUM (IPAB) – M/s. Mashreq International (L.L.C.), Applicant Vs. Tuff Stuff Watches Pvt. Ltd., Respondent

The advertisements in foreign magazines will not prove use unless it is openly available in the market – ORA/13/2004/TM/KOL (IPAB) – Nabisco Inc., Applicant Vs. Royal Snacks Food Products & Another, Respondents and TA/286/2004/TM/AMD (IPAB) – M/s.The Wellcome Foundation Limited, Appellant Vs. M/s. Reliance Formulations Private Ltd., & Another, Respondents  were relied on.

22.       In rejoinder the Counsel for the applicant submitted that the various trade marks which are pending before the Registrar (the list produced by the respondent) have been opposed by the applicant. The issue of acquiescence does not arise as the applicant had conducted a market survey and found that the goods bearing the trade mark “TRIX” was not available till the date of this rectification application.

23.       We have heard and considered the arguments of both the sides and have gone through the pleadings and documents.

24.       The application for rectification in this case is mainly based on the ground of non user.  As had been held in the Hardie’s case (supra) if the ground is merely of non user it is not on account of public interest.  It gives a right to a person whose interest is affected to apply for its removal whereas the non user does not by itself render the entry incorrect. The test here would be to see if the applicant is really a person aggrieved and has the right to file an application for rectification.

25.       The settled principle is that only an aggrieved person can file an application for rectification and not any person as provided under Section 21 of the Act.  Romer. J. held in Wright Crossley,Tm : (1898) 15 RPC 131 that –

“…in some possible way he may be damaged or injured if the Trade Mark is allowed to stand; and by “possible” I mean possible in a practical sense, and not merely in a fantastic view…..  All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent at any rate; and I think the applicants ought to show something approaching a sufficient or proper reason for applying to have the Trade Mark expunged.  It certainly is not sufficient reason that they are at loggerheads with the respondents or desire in someway to injure them.”

26.       In the case on hand, the applicants are injured in some way. The applicants have applied for registration and were not successful in their application as the impugned trade mark was already on the register. The impugned trade mark was not put to use and was therefore wrongly remaining on the register without sufficient cause. The applicant is therefore a person affected and can be said to be a person aggrieved.

27.       The other issue is regarding non user of the registered impugned trade mark. The documents produced by the respondents are only for the year 1986 only. There are few bills which is for the mark “AMUL TRIX”.  There is one advertisement of the year 1986. The other documents filed by the respondent are few invoices of the year 2007 which were filed along with the reply to the Miscellaneous Petition No.297/2010. The invoices of the year 2007 bear the trade mark “TRIX” mentioned. So there has been sporadic intermittent use of the trade mark which shall not be accepted. The mark on the register without use prevents others from using the mark who really have intention to use the trade mark. The other documents filed by the respondent are two affidavits. The deponents in those affidavits have stated that they have been assigned the wholesale dealership of “AMUL” from the year 1977. There is no proof for the same. They have stated about the advertisement cutting filed by the respondent. This is only of the year 1986. There is nothing on record to prove that the mark was in use extensively and continuously since 1986.

28.       The Apex Court has held in Milment Ortho Industries & Ors.,  (cited supra) that the mere fact that the party has not used the mark in India would be irrelevant if they were first in the world market. The applicants have used the trade mark outside India and have proved their intention to use in India by filing an application for registration. The applicant’s use outside India is not in dispute.

29.       Considering all the above, the application for rectification ORA/28/2008/TM/AMD is allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.330224 in Class 30.  There shall be no order as to costs.  M.P.No.297/2010 and M.P.No.76/2012 are disposed of.

(V. Ravi)                                                                                         (S. Usha)

Technical Member                                                                       Vice-Chairman

(This order is being published for present information and should not be taken as a certified copy issued by the Board.)

The INTEL trade mark has an undeniable reputation in respect of computer processors, and as stated previously is one which I consider extends at least as far as being in respect of information technology in general. This reputation in information technology lends itself to an association with the online nature of the Applicant’s financial services[6]. I consider that a significant number of Australian consumers would at the very least entertain a reasonable doubt[7] as to whether the Opponent had developed information technology products for use in the financial services industry and had associated its product with the Applicant in order to provide financial services. This is further supported by the Opponent’s evidence its technology is used in a wide range of industries. The Opponent’s evidence in respect of its financial services provided by way of ‘Intel Capital’, ‘Intel Solution Services’, and the ‘Financial Services Engineering Software and Solutions Group’ is not in itself determinative, in particular because there is little information regarding the provision of such services in Australia. However it does indicate that an assumption by the purchasing public in Australia that the Opponent provides financial services, or is associated with the provision of financial services, would not be entirely misplaced. I am satisfied that the potential user of the Applicant’s services would, at least, reasonably be caused to wonder whether use of the ‘bellintell’ trade mark indicated that the Opponent’s INTEL technology was used in the provision of those services. Therefore the Opponent has established a ground of opposition under the provisions of section 60. As the Opponent has established one of the grounds it is pressing, it is not necessary to consider the grounds pursuant to sections 43 and 44, although these grounds or any others in the Act may be relied upon in the event of an appeal from this decision. Decision and costs Section 55 of the Act relevantly provides: Decision 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. I find that the Opponent has met the onus upon it in terms of the ground of opposition under section 60. I refuse to register trade mark application 1315445. It is usual for costs to follow the event, and I see no reason to depart from the usual rule here. I award costs, in accordance with the official scale in Schedule 8 of the Trade Mark Regulations 1995, against the Applicant.

Intel Corporation v Third Party Platform Pty Ltd [2012] ATMO 57 (20 June 2012)

Last Updated: 9 July 2012

TRADE MARKS ACT 1995

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

Re: Opposition by Intel Corporation to registration of trade mark application 1315445(36) - BELLINTELL - filed in the name of Third Party Platform Pty Ltd.

DELEGATE:	Nicole Worth
REPRESENTATION:	Opponent: Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie law firm. Applicant: written subsmissions
DECISION:	2012 ATMO 57 Section 52 opposition – ss43, 44 and 60 pressed – s60established – application refused – costs awarded against Applicant.

Background

1. On 17 August 2009 Third Party Platform Pty Ltd (‘the Applicant’) filed an application to register a trade mark, the relevant details of which appear below:

Trademark: bellintell

Application No: 1315445

Services: Class 36: Stockbroking; economic financial research services; financial investment research services; financial research; investment research; research services relating to finance; research services relating to investment; advice relating to investments; investment advice; brokerage services relating to financial instruments; computerised financial services; financial information services; financial investment research services; financial transaction services; brokerage of shares; share brokerage services; share services; trading of shares

2. The application was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 December 2009.
3. On 16 March 2010 Intel Corporation (‘the Opponent’) filed a Notice of Opposition nominating most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’).
4. The parties duly served and filed evidence and the matter came for hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 18 April 2012. The Opponent was represented by Gabriella Rubagotti, of Counsel, instructed by Jane Woodhouse of Baker and McKenzie law firm. The Applicant did not attend the hearing but made written submissions prepared on its behalf by Griffith Hack Patent and Trade Mark Attorneys.

Grounds and Onus

5. At the hearing the Opponent pursued grounds of opposition in respect of sections 43, 44 and 60 of the Act. As a formality, and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition have been established.
6. The onus is on the Opponent to establish at least one ground of opposition on the balance of probabilities.[1] The time at which the ground of opposition must be established is the date of filing of the application[2], being 17 August 2009.

Evidence

7. The evidence served and filed in respect of this matter is as follows:

Declarant	Position	Date	Exhibits
Evidence in support
Philip Cronin ‘Cronin 1’	General Manager, Intel AustraliaPt Ltd, subsidiary of Intel Corporation.	8/9/2010	PC1-PC72
Evidence in answer
Anand Selvarajah	Chief Executive Officer, Third Party Platform Pty Ltd/Bell Direct.	17/2/2011	AS-1
Evidence in reply
Philip Cronin ‘Cronin 2’	As above	5/9/2011	PC73-PC92

8. In brief, the Opponent’s evidence shows that it is the owner of a number of standard trade mark registrations in Australia containing or comprising the word INTEL, including in class 36 (registration number 764081), and a defensive registration in which class 36 is specified (registration number 1310603). The INTEL name and trade marks are extremely well known in relation to information technology, and the Opponent is the world leader in computer microprocessors.
9. The Opponent’s evidence is voluminous, however a summary of the information provided is:
   • Intel Corporation was founded in 1968 by Bob Noyce (one of the inventors of the integrated circuit) and Gordon Moore in the United States of America. The name Intel was coined from the words ‘integrated’ and ‘electronics’.
   • By 1971 the Opponent was producing the world’s largest selling semiconductor device. By 1992 it was the world’s largest semiconductor manufacturer and remained so til present (at least until the time when Cronin 1 was declared).
   • The Opponent established numerous corporate entities outside of the USA including the establishment of Intel Australia Pty Ltd in 1979.
   • In 1991 the INTEL INSIDE logo licensing program was developed. It is declared that it was a novel program for its time. It allowed the Opponent to raise the level of consciousness of the INTEL brand in the mind of the ordinary public by having its trade mark displayed upon finished computers, indicating the source of the component microprocessor. The licensing program continues today.
   • Global revenue and advertising figures, and fees related to the INTEL INSIDE program, are in the order of billions of dollars. In Australia these are in the order of millions of dollars.
   • The use of the Opponent’s technology has diversified and it is used for a range of purposes including inter alia entertainment, healthcare, communications, e-commerce and internet security. See for example exhibits PC-74 of Cronin 2 relating to health care in Australia, PC-75 of Cronin 2 relating to communications, media and entertainment, and PC-76 outlining the ‘Intel Brand Advantage’ program, the Opponent’s co-branding program which applies to a wide range of eligible devices. I do take into account that the last two exhibits appear to be global and are not specific to Australia.
   • In 1991 the Opponent began offering financial services through ‘Intel Capital’. ‘Intel Capital’ makes investments in technology ‘start-ups’ and companies across a range of industries. It is declared that several billion US dollars have been invested since then in companies in 47 countries, although specific detail relating to Australia is not provided.
   • It is also declared that the Opponent provides ‘Intel Solution Services’, a global consulting and research organisation that specialises in e-commerce solutions and related web services. However there is no specific information regarding these services as they relate to the Australian market. Similarly the declaration states that Intel has a worldwide ‘Financial Services Engineering Software and Solutions Group’, which specialises in financial services solutions and provides associated information on a ‘Financial Services Industry Community’ website. Again there is no information relating to Australia.
   • Numerous examples of third party recognition of the brand are provided. Fortune magazine named Intel a ‘Blue Ribbon’ company in the years 2002, 2004, 2006, 2007 and 2008: a title which requires a company to appear in at least four of Fortune’s lists including ‘Fortune 500’, ‘Global 500’ and ‘Best Companies’. Numerous Business Week articles are referred to or exhibited, all of which relate to top ranking brands which include INTEL. Several ‘Interbrand World’s Most Valuable Brands Surveys’ are also included in which INTEL is placed in the top ten.
   • Decisions in a number of jurisdictions around the world have found the INTEL trade mark to be well known or famous, including in Australia.
10. As for the Applicant, the relationship between Third Party Platform Pty Ltd and the Bell group of companies or Bell Direct (to whom most of the Applicant’s evidence relates) is not clear. It appears from the evidence that Mr. Selvarajah’s references to ‘the Applicant’ are references to ‘Bell Direct’. In considering this matter I have attributed the use of the trade mark to the Applicant on the presumption that either Bell Direct is the trading name of Third Party Platform Pty Ltd or that such use was under the authority of, or on behalf of, that company. A summary of the information provided by the Applicant is:
    • The Bell group of companies is “a diversified national broking business”. The name ‘Bell’ originates from the founder Colin Bell, who started the business in Melbourne in 1970 as an options broker.
    • In 1988 one of the group’s companies became a member of the Australian Stock Exchange and offered “a modest” share broking service to clients, which grew substantially.
    • The Bell group is now one of the largest full service stockbrokers in Australia with significant business in corporate finance, portfolio administration, margin lending, cash management and superannuation. It employs over 600 people in 15 offices, providing services to over 125,000 clients.
    • In 2006, in partnership with a Perth based technology team, the Bell group built an online broking platform. That business, trading as Bell Direct, was launched in 2007 allowing online trades of Australian securities with low brokerage[3]. Since then the Applicant/Bell Direct has grown substantially and has been recognised by the ASX as Australia’s fastest growing online broker in terms of market share. There are now 35 Bell Direct staff in Sydney, Perth and Malaysia.
    • A range of ‘trading tools’ are available on the Bell Direct website under the name ‘bellintell’. The ‘trading tools’ provide a “dashboard of intelligence” including, broadly, historical data, sector analysis, research and recommendations in respect of securities. The name ‘bellintell’ was adopted because it signified both Bell Direct and made reference to the ‘intelligence’ provided by these tools. It has been in use since August 2009 (although it is not stated whether it was used before the priority date of 17 August 2009).
    • I note that the Applicant’s evidence shows the trade mark in black and white. However the Opponent points out that it is displayed on its website in colours which separate ‘bell’ from ‘intell’, as below:

bellintell

• The trade mark is promoted mainly by the Applicant/Bell Direct encouraging its clients to use the ‘trading tools’ on the website, communicated by way of the website, online banners and emails and advertisements in newspapers and magazines (although I note that none of the emails or advertisements are in evidence).

Section 60

11. Section 60 of the Act provides:

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.

12. Therefore to establish the ground of opposition under section 60 the Opponent must demonstrate that its INTEL trade mark(s) had, by 17 August 2009 (being the priority date of the opposed application), acquired a reputation in Australia and that because of that reputation the use of the Applicant’s ‘bellintell’ trade mark would be likely to deceive or cause confusion.
13. It is not a requirement of section 60 that the respective services of the parties be of any specified standard of similarity, nor is it a requirement that the respective trade marks are substantially identical or deceptively similar. In broad terms the comparison is not between trade mark and trade mark but rather the effect of reputation and trade mark.
14. The relevant tests for reputation were described by Kenny J in McCormick & Company Inc v McCormick[4] as:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

Reputation ... 1. the estimation in which a person or thing is held, esp. by the community or public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 [the priority date] the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

15. The Applicant acknowledged in its written submissions that the material adduced by the Opponent supported the proposition that it had acquired a reputation in the INTEL trade mark at the priority date of the application. I find from the material before me that the INTEL mark had, by 17 August 2009, acquired a reputation in relation to computer products, which to my mind extends at least to information technology in general – given ubiquitous presence of INTEL in relation to computer components, I consider that use of the INTEL trade mark in respect of most other technology products would be connected with the Opponent in the mind of the public.
16. What remains to be determined then is whether, given this reputation in Australia, the use of the Applicant’s trade mark in respect of its specified services would be likely to deceive or cause confusion. The relevant principles were set out by French J in Registrar of Trade Marks v Woolworths[5]. Whilst his comments were made in the context of section 44 those principles apply to the assessment of deception of confusion under section 60, as below (with references to ‘deceptive similarity’ redacted):

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

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

17. The Applicant contends that deception or confusion is unlikely both because of the difference between each parties’ trade marks and the nature of the INTEL reputation.
18. With regard to the difference between each party’s trade marks, the effect of the reputation of INTEL has some bearing. The greater the reputation, the greater the likelihood of deception or confusion even where differences in trade marks are evident. I note that in use the Applicant uses the ‘bellintell’ mark in colours that separate ‘bell’ from ‘intell’ so that the presence of the element ‘intell’ cannot be overlooked. In this context then the assessment is made where ‘intell’ is a separately distinguishable feature in the Applicant’s trade mark.
19. The Applicant contends that the names ‘belldirect’ and ‘bellintell’ incorporate the name Bell with a second component reflecting the nature of the services, and that consumers of the designated services would recall the ‘intell’ part of ‘bellintell’ as referring to market intelligence. I do not entirely agree with this. Neither ‘direct’ nor ‘intell’ by themselves indicate what the Applicant’s services are, they merely make indirect references to them (such as being available direct to the consumer, or drawing a parallel with the gathering of intel, albeit in respect of financial matters rather than the more usual definition of military information).
20. To my mind the ‘intell’ element within the trade mark ‘bellintell’ is a separately distinguishable feature which, given the reputation in the INTEL trade mark and its similarity to ‘intell’, is unlikely to be discounted as merely descriptive material but rather call to mind Opponent’s trade mark.
21. The INTEL trade mark has an undeniable reputation in respect of computer processors, and as stated previously is one which I consider extends at least as far as being in respect of information technology in general. This reputation in information technology lends itself to an association with the online nature of the Applicant’s financial services[6]. I consider that a significant number of Australian consumers would at the very least entertain a reasonable doubt[7] as to whether the Opponent had developed information technology products for use in the financial services industry and had associated its product with the Applicant in order to provide financial services. This is further supported by the Opponent’s evidence its technology is used in a wide range of industries.
22. The Opponent’s evidence in respect of its financial services provided by way of ‘Intel Capital’, ‘Intel Solution Services’, and the ‘Financial Services Engineering Software and Solutions Group’ is not in itself determinative, in particular because there is little information regarding the provision of such services in Australia. However it does indicate that an assumption by the purchasing public in Australia that the Opponent provides financial services, or is associated with the provision of financial services, would not be entirely misplaced.
23. I am satisfied that the potential user of the Applicant’s services would, at least, reasonably be caused to wonder whether use of the ‘bellintell’ trade mark indicated that the Opponent’s INTEL technology was used in the provision of those services. Therefore the Opponent has established a ground of opposition under the provisions of section 60.
24. As the Opponent has established one of the grounds it is pressing, it is not necessary to consider the grounds pursuant to sections 43 and 44, although these grounds or any others in the Act may be relied upon in the event of an appeal from this decision.

Decision and costs

25. Section 55 of the Act relevantly provides:

Decision

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.

26. I find that the Opponent has met the onus upon it in terms of the ground of opposition under section 60. I refuse to register trade mark application 1315445.
27. It is usual for costs to follow the event, and I see no reason to depart from the usual rule here. I award costs, in accordance with the official scale in Schedule 8 of the Trade Mark Regulations 1995, against the Applicant.

Nicole Worth
Hearing Officer
Trade Marks Hearings
20 June 2012

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[1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 per Sundberg J at [22] to [27], and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas [2002] FCA 696; (2002) 56 IPR 243;Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839.
[3] It is declared at this point, in paragraph 8 of Mr. Selvaraah’s declaration, that the Bell Group owns approximately 40% of “the Applicant” with an option to acquire all the shares it does not own. It is not clear whether the “Applicant” referred to here is Third Party Platform Pty Ltd or Bell Direct – I have presumed the reference to be to Bell Direct given its context.
[4] [2000] FCA 1335; (2000) 51 IPR 102.
[5] [1999] FCA 1020; (1999) 93 FCR 365.
[6] The Applicant’s services are assessed on a notional basis, and as such may include services offered online and by other means. The online nature is highlighted because I consider the greatest degree of association exists in that environment.
[7] It is sufficient, for the purpose of deception or confusion, if use of the mark will result in the ordinary person entertaining a reasonable doubt about whether to products come from the same source: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.