Trading Reference Australia Pty Limited applied to register the below logo in relation to a range of goods and services in Classes 9, 35, 36 and 38. All of the goods and services related to the applicant’s software based business and real estate operations.
NetApp Inc opposed the registration of the applicant’s trade mark on the grounds outlined in sections 44, 60 and 42. The opponent’s section 44 and 60 arguments relied on use of the trade mark NETAPP and the below stylised version, as well as its DATA ONTAP registration.
Primarily, the opponent argued that the common ‘tApp’ elements in the respective trade marks at issue was sufficient to cause consumer deception or confusion. However, the Hearing Officer was not convinced that consumers would naturally view the trade marks in such an ‘artificial’ way, concluding:
“[T]he general effect of the respective trade marks, considered as wholes is that it is most unlikely that persons would mistakenly see the word tApp (which is the sole word in the Trade Mark) within any of the NetApp Registrations…”
Moving to section 60, the Hearing Officer agreed that the opponent had a strong reputation amongst IT professionals, but that such professionals were not likely to be deceived or confused as a result of the use of the applicant’s mark in light of the prior reputation of the opponent's marks.
Unders section 42, the opponent pressed that use of the applicant’s mark would be conrtary to sections 18 and 29 of the Australian Consumer Law. However, having found that no deception or confusion was likely (under sections 44 and 60), the Hearing Officer concluded that no such deception or confusion would occur under the Australian Consumer Law.
Accordingly, the opposition failed on all three grounds.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team