LemonStone Group Pty Ltd applied for the trade marks FETCH A NATURAL RESOURCE, and FETCH SEARCH SOLUTIONS in relation to class 42 services, design and development of search engines and provision of internet search services.
The application was opposed under section 44 by FetchTV Pty Ltd, the owner of a subscription television service that operates through the networks of Internet Service Providers, a service known as Internet Protocol TV. FetchTV owns trade marks in classes 9, 38, and 41 for, among others, FETCH and FETCHTV in relation to the provision of entertainment services, broadcasting, and searchable and tailored viewing.
In determining whether the goods of the applicant and the opponent were similar, the Delegate applied the notion of convergence, by which different products, in this case televisions and computers, can be said to be in a related class where their purposes overlap due to the technology by which they operate.
“This can be achieved by putting personal computer (PC) components into a television, or by using laptop personal computers in the customisation of entertainment and information hardware.”
Due to the increasing use of computers and the internet for entertainment, and the evolution of traditional televisions to record or stream programmes, the Delegate concluded that there was a convergence of the two mediums. Consequently, a trade mark that applied to one of these traditional mediums would be seen to be in a similar class to a trade mark applied to the other medium.
In so far as the services were concerned, the same line of reasoning was applied by the Delegate. The technologies utilised by FetchTV and LemonStone both utilised interactive internet protocols to search for and access content, and so the trade marks for the services of the two were deemed to be in a similar class.
Following the characterisation of the goods and services as similar, the Delegate concluded that FETCH SEARCH SOLUTIONS was substantially identical to FETCH and FETCHTV, and that FETCH A NATURAL RESOURCE was deceptively similar as it was “unrealistic to conclude other than that the public would consider [the goods and services] to have a common trade origin”.
Registration was refused for both FETCH A NATURAL RESOURCE and FETCH SEARCH SOLUTIONS.