SITECORE CORPORATION A/S V SALESFORCE.COM, INC [2014] ATMO 37

Salesforce.com, Inc., applied to register its trade mark SITEFORCE in Australia (through the International Registration system) in relation to the provision of temporary use of a web-based software application for users to create websites and portals.

The applicant was opposed by Sitecore Corporation A/S, pressing grounds pursuant to sections 44, 60 and 42(b).

The opponent relied on four of its prior trade mark registrations in Australia for ‘sitecore’, ‘SITECORE’, ‘SITECORE’ and:

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A number of these prior marks covered goods the Hearing Officer found to be ‘closely related’ to the applicant’s services. The question to be determined was, therefore, whether the respective trade marks are deceptively similar.

On deceptive similarity, the Hearing Officer noted that ‘SITE’ ‘is understandably common for website related products and services’ and these element of the respective marks should be accorded appropriate weight in light of this.  On the basis that the English words ‘CORE’ and ‘FORCE’ have differing meanings, and that the goods/services at issue are technical in nature, the Hearing Officer found that there was not the required level of likely deception or confusion for the marks to be considered deceptively similar.

Similarly, section 60 failed as the opponent was not able to convince the Hearing Officer of a likelihood of deception or confusion, despite being able to demonstrate ‘a certain reputation in its trade mark(s) in Australia’. The opponent also pressed section 42(b) on the basis that the use of the applicant’s trade mark would be contrary to law. However, the Hearing Officer again restated his view that there was not sufficient likelihood of deception or confusion arising.

The opposition failed and the applicant’s trade mark ordered to proceed to registration.

To view the Office decision, click here.