15 Apr 2012

In a twitter over trade marks

Submitted by Troy Rollo

Twitter has recently won trade mark oppositions against two very different businesses who sought to use trade marks including the "twitter" name.

There can be only one

Late last year, in Twitter, Inc v HOL Holdings Pty Ltd [ 2011] ATMO 129, the applicant sought registration of the following trade mark:

(twitter REAL ESTATE logo)

As the logo suggests, the trademark was to be for real estate advisory services - which has very little to do with the business of Twitter, Inc.

The delegate found that:

Alexa Internet currently ranks the opponent’s website www.twitter.com as the 11th most trafficked website worldwide. The numbers of people in Australia using the opponent’s TWITTER services for personal or professional use is considerable and such use dated prior to the priority date of the opposed application. When taken together with the fact that a considerable number of real estate agencies were also advertising and using the opponent’s TWITTER services at that point, I am satisfied that that the opponent has established the existence of a significant reputation in Australia for its TWITTER trade mark before the priority date of the opposed trade mark...

Overall I consider that, given the impressive reputation evidenced by the opponent in its TWITTER trade mark, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s TWITTER REAL ESTATE trade mark if it were used to the extent of all of the services listed in the opposed application. I have noted previously that there are a number of similarities between the trade marks which will also add to the likelihood of confusion taking place in the marketplace.

I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s services...

The relevant section 60 ground is that because of the reputation of the earlier mark, the use of the later mark would be likely to deceive or cause confusion. The effect of this decision is that Twitter has such a reputation, that any use of that name in a trade mark by somebody else is likely to be rejected. That puts Twitter in the company of brands such as Coca-Cola.

And it is not this one

In Twitter Inc. v Jason Boyce [ 2012] ATMO 31, the applicant claimed to have been using the domain name "twitter.com.au" since before the Twitter we all know was named. However he did not apply to register it as a trade mark until 2009. Twitter registered their trade mark in 2007. The trade mark in this case was as follows:

twitter.com.au logo

In this case, the services of the applicant had some degree of clash with those of Twitter, as the application was for "advertising services provided over the internet".

Due to the claimed prior use, the delegate considered whether the honest concurrent use exception should be applied to allow the new trade mark, but unfortunately the applicant addressed only 1 of the 5 factors necessary to establish that. Accordingly the delegate refused to register the proposed mark.