TWITTER mark held to have ‘impressive’ reputation


In Twitter Inc v HOL Holdings Pty Ltd ([2011] ATMO 129, December 22 2011), the Australian Trademark Office (TMO) has confirmed that an opposition to an application for a trademark will likely succeed where a similar unregistered trademark has acquired a significant reputation in Australia, even though the unregistered mark has been used for goods or services that are dissimilar to those for which the application is seeking registration.

Twitter Inc opposed an application filed by HOL Holdings Pty Ltd on July 1 2009 seeking the registration of the following device incorporating the words 'twitter real estate':

Twitter relied upon Section 60 of the Trademarks Act 1995, which provides that an opposition will succeed where:

  • another trademark had, before the priority date for the registration of the first-mentioned trademark in respect of those goods or services, acquired a reputation in Australia; and
  • because of the reputation of that other trademark, the use of the first-mentioned trademark would be likely to deceive or cause confusion.

While the delegate of the registrar of trademarks accepted that, under Section 60, “there is no requirement that the trademarks be substantially identical or deceptively similar...”, she nevertheless proceeded to compare HOL’s mark to Twitter’s trademarks (including the mark depicted below), finding them to be substantially identical.

The delegate based this finding upon the visual and phonetic resemblance between the marks. However, in arriving at this finding, the delegate may be criticised for failing to have had sufficient regard for the graphical elements (house and leaf) in HOL’s mark and the descriptor 'real estate'.

Prior to 2006 amendments to the act, Section 60 required that the trademarks be “substantially identical” or “deceptively similar”. It is therefore important to identify that, notwithstanding the removal of this requirement, the Trademark Office seems to find the degree of similarity between the trademarks to be important for the purpose of assessing the likelihood of confusion under Section 60.

In order to establish its reputation, Twitter provided evidence showing a significant increase in the number of Australian users from 2006 to the priority date (July 1 2009). In finding that Twitter had a “significant reputation”, the delegate considered it relevant that “a considerable number of real estate agencies were also advertising and using [Twitter’s] services at [the priority date]”. It is noteworthy that Twitter’s reputation as a platform used by real estate agents was found to be relevant. The delegate was clearly concerned to address the argument that Twitter’s reputation was confined to online social networking services and show that it extended to the goods or services for which registration was being sought by HOL (without which it will be difficult to establish a “likelihood of confusion” under Section 60).

Finding that the ground of opposition had been established, the delegate held that:

“... given the impressive reputation evidenced by the opponent in its TWITTER trademark, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection...”

This decision:

  • suggests that a relatively low threshold may be applied to the 'likelihood of confusion' test under Section 60;
  • shows that, because social media platforms are used by businesses across a wide variety of industries (providing a range of goods and services), they may well be taken to have broad reputations (irrespective of whether this is correct in principle); and
  • indicates the Trademark Office’s acceptance that online businesses can establish extremely significant reputations relatively quickly.

David Fixler, Corrs Chambers Westgarth, Melbourne

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