Allan Geoffrey McNeil v Fabric8 Technology Pty Ltd  ATMO 66 (11 July 2017)
McNeil was unsuccessful in his opposition to an application for registration of the trademark FABRIC8 filed by Fabric8 Technology . However, he did successfully defend his FABRIC8 trademark registration against a non-use removal application.
Fabric8 Technology filed, on 25 September 2015, an application for removal of McNeil’s trademark registration for FABRIC8 alleging non-use during the 3 year period ending on 28 August 2015 for all the registered goods, namely “internet based computer software for job scheduling” in class 9. McNeil opposed this removal application.
McNeil also opposed registration of an application filed on 6 October 2015 by Fabric8 Technology to register the trademark FABRIC8 for a broad range of business services in class 35.
Fabric8 Technology did not file any evidence in either matter, but both parties were represented at the hearing.
Opposition to non-use removal application
The hearing officer was satisfied McNeil had developed a ‘software as a service’ computer program under the FABRIC8 trademark in around 2003 and has, since then, spent some time elaborating and developing the program following his realisation that the program has potential application beyond the building industry and to any project requiring detailed planning, scheduling, ordering, and reporting. The hearing officer characterised McNeil’s services as ‘the provision of project management software as a service’.
It was noted that McNeil’s FABRIC8 trademark is wrongly registered in Class 9 because ‘software as a service’ is in Class 42. However, the relevant consideration is the registered specification, rather than the class of goods in which it appears.
Although McNeil’s evidence did not disclose any actual sales, it did show the FABRIC8 trademark on his website since 2003, a presentation on 1 April 2015 and invitations to exhibit at Expos in September 2015 and 2016. The hearing officer considered this activity was sufficient to prove use of this trademark in respect of project management software as a service (which was effectively covered by the registered specification) in the course of trade within Australia.
Significantly, there was evidence of a trade enquiry from New Zealand and the hearing officer also considered this would qualify as use of the FABRIC8 trademark for this service in export trade under s228.
Opposition to application for trademark registration
McNeil relied on his prior FABRIC8 trademark registration under s44, but that ground failed. Although the respective trademarks were identical, the class 35 services covered by Fabric8 Technology’s application were not closely related or similar to those effectively covered by McNeil’s registered specification. The hearing officer noted that the administrative services of the type contained within Fabric8 Technology’s specification are fundamentally different from the software as a service within McNeil’s registered specification. The former services are performed by people and the latter is rendered offsite by a computer program on a remote server.
The s58 ownership ground of opposition also failed because, although McNeil had earlier use of the FABRIC8 trademark, his project management software as a service could not be charactered as the same kind of thing as Fabric8Technology’s class 35 services. However, this class 35 specification was amended to remove reference to these services being provided via a global computer network.
The s60 ground of opposition failed because McNeil’s evidence was very weak in showing Australian reputation of his FABRIC8 trademark and the nexus between the services provided by the respective parties was not particularly strong. Hence, the hearing officer was not satisfied that the use of the opposed trademark by Fabric8 Technology would be likely to confuse or deceive because of the reputation of McNeil’s FABRIC8 trademark in Australia.