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.