Class 9: Computer software packages; cloud computing software; encryption software; computer software; application software for cloud computing services; computer software for encryption.

Class 42: Computer software design; cloud computing services; software as a service [SaaS]; computer software technical support services; rental of computer software; design, development and programming of computer software; cloud computing; design and development of operating software for cloud computing networks; providing virtual computer environments through cloud computing; data encryption services; programming of operating software for accessing and using a cloud computing network; software design; encryption, decryption and authentication of information, messages and data; software creation; design, development and implementation of software; software engineering; consulting services in the field of cloud computing; providing virtual computer systems through cloud computing; updating of computer software; creation, maintenance and adaptation of software.

1. The Opponent launched its Virtual Private Network ('VPN') software and related services under the mark NordVPN ('NordVPN Services') in Australia in 2013. Initially some services under the Nord VPN mark were provided by Tefincom SA. Since November 2020, the NordVPN Services have been provided to individuals in Australia by nordvpn sa (a related company to the Opponent) and to businesses by Nord Security Inc. By 2016, the NordVPN Services could be downloaded on Apple, Android and Windows devices in over 50 countries including Australia. Extracts from the NordVPN Website from 2012 to 2022 showing the history of expansion of the NordVPN Services are exhibited to RG as well as copies of invoices for NordVPN services provided in Australia before the Relevant Date.
2. RG exhibits the results of a VPN and Nord Brand awareness survey in various countries including Australia from August 2020 to May 2023 ('Opponent's Survey'). The survey results for the year 2020 show:

(a) 23% of the survey participants in Australia identified NordVPN as the top of mind brand spontaneously without any prompting;

(b) 33% of the survey participants in Australia identified NordVPN as a brand of which they were aware, spontaneously without any prompting; and

(c) 55% of the survey participants in Australia identified NordVPN as a brand of which they were aware when it was contained within a list of brands.

1. The NordVPN Services are promoted on the NordVPN Website, as well as on social media including the YouTube channels Ozzie Man Reviews with 5.66 million subscribers and Philip DeFranco with 6.5 million subscribers.
2. Since November 2019, the mark NordPass has been used in Australia and overseas for software and a subscription service for management of passwords for businesses and individuals ('NordPass Goods and Services') used on consumers' computers, phones, tablets and other smart devices. Historical screenshots of the website at https://NordPass.com ('NordPass Website') are exhibited to RG. The NordPass Services are promoted on the NordPass Website and have received publicity in third party media articles.[6] Sample invoices for the provision of the NordPass Services in Australia are also exhibited to RG. In addition, the Opponent promotes the NordPass Goods and Services on the YouTube channels of social media influencers.
3. Since 26 November 2020, the NordPass Goods and Services have also been available in Australia from Amazon Australia.
4. From April 2019, the mark NordLocker has been used in Australia in relation to software and subscription services for encrypting and securing personal and business data ('NordLocker Goods and Services') on consumers' computers, phones, tablets and other smart devices. The NordLocker Goods and Services are promoted on the website at https://nordlocker.com/ ('NordLocker Website') and in third party media articles. The NordLocker Goods and Services are also promoted on YouTube by social media influencers including on the PC Security Channel which has over 400,000 subscribers.
5. RG provides a table with the total number of Australian users of NordVPN, NordPass and NordLocker Goods and Services since each product was launched and the number of users of NordVPN Services from 31 December 2017 to 31 December 2021. These figures show growth year on year but the number of users is not substantial. RG also exhibits a table of the total marketing expenditure from 2016 to 2021 for NordVPN Services, from 2019 to 2021 for NordPass Goods and Services as well as for NordLocker Goods and Services from 2019 to 2021. Substantial money was spent promoting NordVPN in 2018 to 2020 but significantly declined in 2021 and expenditure on promoting the Opponent's other products is minimal.
6. The remainder of RG mostly amounts to submissions about the Holder and the Trade Mark. In particular, RG exhibits a screenshot of the Holder's website at https://www.oneplus.com/au/nord illustrating use of the Trade Mark for smartphones and accessories. RG declares that the market for the parties' goods and services is the same and consumers will consider goods offered under the Trade Mark to be a brand extension of the Opponent's Marks or a collaboration with the Opponent.

1. QW declares that the Holder was established in December 2013 to commercialise smartphones under the mark OnePlus to compete with Apple, Samsung and other smartphone manufacturers. Since 2014, the Holder has released smartphones and audio devices such as headphones and buds under the marks ONEPLUS, ONEPLUS X, ONEPLUS through ONEPLUS 11 as well as the logo . Various articles about the accolades the Holder's products have received are annexed to QW as well as third party media articles about the Holder's OnePlus products published or accessible in Australia.
2. The Opponent is the owner of a number of Australian trade mark registrations which are exhibited to QW including registration 1588978 Oneplus in class 9 with a priority date of 31 October 2013.
3. According to QW, since 2018, the Holder has operated a website directed to Australian consumers at www.oneplus.com/au and extracts of this site are annexed including extracts from November 2020 and March 2021 featuring smartphones under the Trade Mark. The Holder also has a website at community.oneplus.com for its customer community and Red Cable Club which had 20 million members globally by December 2021.
4. In 2021, the Holder integrated with OPPO, a leading smartphone brand with 10% global market share for smartphones. The Holder and OPPO collaborate on developing operating software, improving camera functionality and other projects. QW attests that the Holder is the 10th leading smartphone brand globally.
5. QW declares that on 4 August 2020 it released a smartphone under the Trade Mark in Europe and India which was then rolled out to other international markets. An article about the success of the OnePlus Nord product in North Europe and Scandinavia is annexed.
6. QW attests that the Trade Mark was chosen as an extension to its OnePlus brand and because 'NORD' may be translated as North. Extracts from Google Translate and Collins Dictionary are annexed.
7. RHB also annexes a translation of the word NORD and extracts of the Opponent's registrations 1893857 NORDVPN which has an endorsement that NORD may be translated as 'Northern' and 2246525 NORDPASS which has an endorsement that 'The Holder has advised that the words in the Mark have no meaning in English'.

(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. In its SGP, the Opponent bases this ground of opposition on the Opponent's Registrations. Two of the Opponent's Marks are Protected International Trade Marks, which fall under regulation 4.15A, while section 44 applies to registration 1893857. Since regulation 4.15A and section 44 operate identically, I have referred only to section 44 in this decision, but any reference to section 44 also includes regulation 4.15A.
2. To succeed on this ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark(s) with an earlier priority date, in the name of person other than the Holder, in respect of goods or services that are similar, or closely related to the Holder's Goods.
3. Each of the Opponent's Marks is in the name of a person other than the Holder and has an earlier priority date.

1. Section 14 provides that two sets of goods are similar if they are the same or of the same description. Whether goods are of the same description depends on whether the goods belong to the same or different trades, as determined through consideration of the following factors:[7]

(iii) the trade channels through which the goods are respectively bought and sold.[8]

1. The test for determining whether goods are closely related to services, or vice versa, requires a different analysis. The words 'closely related' are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related" ... it is a term of wider import than "similar" and can apply to the relationships between competing services as well as between goods and services.

1. The Opponent's registrations for NordPass and NordLocker cover computer software which encompasses the Holder's goods being downloadable smartphone software applications. In my view, none of the Opponent's other goods are similar to the Holder's Goods as they are different in nature, purpose and trade channels.
2. In relation to the Holder's other goods as compared to the Opponent's Services, I consider that the Opponent's data processing apparatus, smartphones and tablet computers are similar goods to the Opponent's NORDVPN services 'providing telecommunication connections to computer networks; providing user access to computer networks; computer network services'. Companies who provide telecommunications apparatus such as the smartphones and tablet computers of the Holder, often provide telecommunication services that relate to them such as providing telecommunication connections to computer networks. These goods and services are often sold together and consumers are likely to expect that these goods and services share a common trade source. However, I do not regard any of the Holder's other goods as closely related to the services of the Opponent's Marks.
3. Hence I find that the Holder's 'data processing apparatus; smartphone software applications, downloadable; smartphones and tablet computers' are goods that are similar to the goods of the Opponent's Registrations or closely related to the Opponent's registered services.

1. Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emerges from the comparison.[9] In the present case, the comparison is between:

1. Although the Opponent's Marks and the Trade Mark share the common element 'NORD', this element appears as a prefix in the Opponent's Marks and as the second word in the Trade Mark. Additionally, each mark includes other distinct elements. These differences make the Trade Mark easily distinguishable from the Opponent's Marks. The visual and aural distinctions are immediately noticeable when compared side by side. Therefore, I am satisfied that there is no overall impression of resemblance, and the Trade Mark is not substantially identical to any of the Opponent's Marks.
2. I must now determine whether the Trade Mark is deceptively similar to any of the Opponent's Marks. Section 10 provides that a trade mark is deceptively similar to another mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
3. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[10]

1. The respective trade marks must be compared as wholes,[11] having regard to the essential or distinguishing features,[12] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[13] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[14] Accordingly, an allowance is made for imperfect recollection of the trade marks.[15]
2. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[16]

1. Deceived implies the creation of an incorrect belief or mental impression whereas 'causing confusion' may merely involve 'perplexing or mixing up the minds' of potential customers.[17]
2. In my opinion, the Trade Mark is not deceptively similar to any of the Opponent's Marks. Visually and aurally, the Trade Mark differs from the Opponent's Marks. The first and dominant part of the Trade Mark is the distinctive word ONEPLUS, which makes up two of its three syllables. This element is entirely different from any feature of the Opponent's Marks. Although the shared element NORD means 'North' in several European languages, it is not a term that describes either the Holder's Goods or the Opponent's Goods and Services. Some Australian consumers may be aware of the translation of NORD but even those who are not are unlikely to be confused between the marks. The Trade Mark is not deceptively similar merely to the Opponent's Marks merely because they contain the same word. Considering the Trade Mark as a whole, the overall differences lead me to believe it is not deceptively similar to any of the Opponent's Marks.
3. RG opined that '[I]t is likely that "NORD" will be perceived as a house brand and "ONE PLUS" indicative of a sub-brand, in the same way as for NordVPN, NordPass and NordLocker, "NORD" will be perceived as a house brand and "VPN", "Pass" and "Locker" perceived as sub-brands. Thus, causing confusion as to the source origin of those goods.' I disagree with the Opponent's contention. In each of the Opponent's Marks, NORD is the prefix whereas ONEPLUS is the first element of the Trade Mark. The different placement of the word 'NORD' in the Trade Mark is significant and in my view, makes it unlikely that consumers would expect the Holder's Goods offered under the Trade Mark to emanate from the same source as the Opponent's Goods and Services.
4. Considering the overall differences between the Trade Mark and the Opponent's Marks when viewed as wholes, I am not convinced there is a real risk of deception or confusion. Even accounting for the imperfect recollection of a notional buyer, I do not believe the Trade Mark would be remembered in a way that could be confused with any of the Opponent's Marks, nor would consumers assume any connection between the Holder's Goods and the Opponent's Goods and Services. Therefore, the section 44 ground of opposition is unsuccessful.

60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. To establish this ground of opposition, the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia at the Relevant Date. If a reputation is established in a mark, the Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.
2. The Opponent must establish that a reputation and a likelihood of confusion exists amongst a substantial number of consumers[18] but this is tempered by the nature of the relevant market.
3. The reputation must be established as a matter of fact by the Opponent.[19] Reputation can be demonstrated in a number of ways. For instance, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[20]
4. Section 60 does not require the reputation in the other mark to exist in respect of the Holder's Goods,[21] nor that the parties operate in the same industry or field of business.[22]
5. In its SGP, the Opponent claims that a reputation existed in each of the Opponent's Marks at the Relevant Date and due to that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

1. The Opponent's evidence establishes that it has used its mark NORDVPN in Australia since 2013. The total number of users who have/had NordVPN accounts is relatively low and it seems that whilst Australian consumers are aware of VPN services, it is not that common to use such services. Despite the fairly low number of users of VPN services, the Opponent's Survey indicates that there is reasonably strong recognition amongst Australian consumers of VPN services and that of those consumers of VPN services, the Opponent's NordVPN is the most popular brand of those surveyed. Further, the Opponent has spent a considerable amount of money in promoting its product offerings in Australia since 2017. Accordingly, I am satisfied that there was a reputation in the Opponent's mark NordVPN at the Relevant Date for the provision of VPN services.
2. However, I am not satisfied that a reputation existed in the marks NordPass or Nord Locker at the Relevant Date for any goods or services. The number of users of the NordPass and NordLocker Goods and Services in Australia is minimal, there has been little promotion of goods and services under these marks and there is no evidence of any brand recognition of these trade marks.

1. The distinction between the concepts of 'deceived' and 'confusion' was considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J stated:

"Deceived" implies the creation of an incorrect belief or mental impression and causing "confusion" may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[23]

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi, the Registrar's delegate observed:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent's trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark's reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[24]

1. I have found that there was a reputation in the NordVPN mark for VPN services but this reputation is not particularly strong. Further, there is a limited degree of similarity between the mark NordVPN and the Trade Mark which is confined to the common element Nord. The marks are otherwise visually and phonetically distinct. There are also marked differences between most of the Holder's Goods and VPN services. With the exception of downloadable software applications, there is no nexus between the Holder's Goods and the services in which the Opponent has a reputation. Although the Holder's software applications could include software relating to VPN Services, many other types of software fall within this item. In the circumstances, I am not satisfied that there is a likelihood of deception or confusion. Accordingly, the s 60 ground of opposition is unsuccessful.

1. Pursuant to s 42(b), an application for registration of a trade mark must be rejected if its use would be contrary to law.
2. The Opponent contends in its SGP that use of the Trade Mark would be likely to mislead or deceive in breach of ss 18 and 29 of the ACL because, as a result of the Opponent's reputation in the Opponent's Marks and the similarity of the Trade Mark to the Opponent's Marks, it would misrepresent the Holder's Goods as being those of, or associated with, the Opponent. In addition, the Opponent claims that use of the Trade Mark will constitute passing off.
3. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[25] The question is ultimately whether consumers are likely to be misled or deceived by the Holder's conduct into believing there is an association between the Trade Mark and the Opponent. In relation to the s 60 ground of opposition, I have found that the Holder's use of the Trade Mark is not likely to cause confusion or deception and hence it follows that the Holder's use will not contravene s 18 of the ACL.
4. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL.[26] Section 29 of the ACL prohibits a corporation from making false representations in the course of trade. This is a narrower test than that contained in s 18 and there is nothing in the Trade Mark, nor in the way the evidence shows the Holder promoting its goods to satisfy me any such misrepresentation has been made.
5. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[27] Justice Hill noted in Re Equity Access Pty Ltd v Westpac Banking Corporation that_:_

The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[28]

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
2. For the reasons outlined above, the s 42(b) ground of opposition fails.

1. The Opponent has not established any of the nominated grounds of opposition. Accordingly, protection may be extended to trade mark 2192861 one month from the date of this decision.
2. Should the Registrar be served with a notice of appeal before the extension of protection of the Trade Mark, I direct that the extension of protection of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the IRDA be in accordance with the Court's orders or direction.
3. The Applicant sought an award of costs in its Notice of Intention to Defend the opposition enlivening the issue of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

[1] The opposition was initially filed in the name of NordSec Ltd, the parent company of the Opponent, but was amended to NordSec BV on 5 September 2023 after all rights in trade mark registrations 1893857, 2058539 and 2065451 relied on in the opposition were assigned to the Opponent. Any references to the Opponent include a reference to NordSec Ltd.

[2] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) ('Act') or Trade Marks Regulations 1995 (Cth) ('Regulations').

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot