Macquarie Telecom has been given the green light by the Australian Trade Marks Office to register the trademark 'Sigbox' in a decision against France-headquartered internet of things (IoT) service provider Sigfox, with best-selling children's book author Dr. Seuss playing a part.
The telco applied for the trademark in August 2015 under classes nine and 42, which cover software and advisory services-related purposes, respectively, for a document sharing facility that used a secure internet connection for government users named SIG.
Seven months later, in March 2016, Sigfox filed a notice of its intentions to oppose the registration. It wasn’t until 2020, however, that the hearing took place.
Sigfox, which holds the trademark for its brand in countries around the world, claimed the Sigbox trademark was too similar to its own in Australia, opposing it under section 52 in the Trade Marks Act 1995, with grounds of opposition falling under 42(b), 44, 58, 60 and 62A.
However, delegate of the Registrar of Trade Marks Adrian Richards decided that each of Sigfox’s claims did not establish any grounds of opposition, with Macquarie Telecom allowed to register its trademark in a month’s time barring any appeal, with costs awarded against Sigfox.
One element of that decision focused on the fact that the two trade marks shared five of the six letters, with Richards' decision claimed that the difference between the two focused on the second syllable of fox and box.
Richards' decision stated:
The immediate meanings of FOX and BOX are more concrete — the former an animal, the latter a receptacle.
This pair of words rhyme perfectly, as exemplified in a best seller of Dr. Seuss, and as such can twist a tongue:
Knox in Box
Fox in socks
Knox on fox in socks in box
But while some tongues may experience brief confusion no minds would. Conceptually FOX and BOX are as unlikely to be confused as CAT and HAT or HAM and SAM.
Moreover, FOX and BOX are reasonably distinctive, quite simple concepts and therefore are each perfectly memorable in relation to the goods and services in question. When each of these marks is taken as a whole, there does not appear to be any real, tangible likelihood of confusion of SIGBOX with SIGFOX.
Richards' decision also focused on Sigfox’s reputation in Australia, which claimed that the evidence — “small” website traffic data, “meaningless” Google searches and social media mentions posted after Macquarie Telecom’s application — was not strong enough.
Sigfox also pointed towards marketing material that indicated it planned to roll out its services in the future, as well as plans to expand its network specifically into Australia, but did not provide evidence if that expansion took place.