A&E Television Networks, LLC v Storage Wars Pty Ltd

[2016] ATMO 12

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by A&E Television Networks, LLC to registration of trade mark application 1512465 (35) – Storage Wars - in the name of Storage wars Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: Chris Doidge of Counsel, instructed by Brands Hawker Applicant: not represented; no written submissions
Decision:	2016 ATMO 12 s52 opposition to registration: sections 43 and 60 pressed; section 60 established; opposition successful; registration refused.

Background

1. This is an opposition brought by A&E Television Networks, LLC (“the Opponent”) pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark the subject of an application by Storage wars Pty Ltd (“the Applicant”), details of which follow:

Application Number:    1512465

Priority Date:               6 September 2012

Services:Class 35: Auctioneering

Trade Mark:                Storage Wars            (“the Trade Mark”)

1. The Trade Mark was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 January 2013.

2. On 28 March 2013 the Opponent filed a Notice of Opposition to registration of the Trade Mark and later filed evidence in support of the opposition in accordance with the Trade Marks Regulations 1995 (“the Regulations”). The Applicant did not file any evidence in these proceedings.

3. The Opponent requested to be heard and a hearing was convened in Melbourne on 16 November 2015.  I took the hearing, acting as a delegate of the Registrar of Trade Marks.  The Opponent was represented by Chris Doidge of Counsel, instructed by John Hawker of Brands Hawker who was also in attendance.  The Applicant had not paid its hearing fee and was not represented but a Mr Rafic Kairouz was present for most of the proceedings as an observer for the Applicant.

Grounds of opposition

1. The Opponent relies on the following grounds of opposition listed in the Notice of Opposition:

Section 43 – because of a connotation of the Trade Mark it would be likely to deceive or cause confusion; and

Section 60 – because of the reputation of another trade mark in Australia at the Priority Date, the use of the Trade Mark would be likely to deceive or cause confusion.

1. Other grounds listed in the Notice of Opposition which were not pressed have not been established.

2. The Opponent bears the onus of establishing at least one of those two grounds of opposition on the balance of probabilities.[1]

   [1]Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132].

Evidence

1. The evidence in this matter is comprised of the following declaration:

   Evidence in Support

   Darci J. Bailey made on 16 December 2013 together with Exhibits 1 - 6 (“Bailey”);

   Evidence in Answer

   None filed;

   Evidence in Reply

   None filed.

Discussion and reasoning

Evidence in support

1. Darci Bailey is the Vice President and Associate General Counsel for the Opponent.  Bailey shows that on 1 December 2010 a serialized programme by the name of STORAGE WARS was first shown in the United States on the Opponent’s television network.

2. Bailey shows that the format of the STORAGE WARS series is based on the auction of the contents of abandoned storage lockers and garages.  Contestants compete to outbid each other for the contents which are largely unknown to them and then sell them at a profit.

3. Bailey shows that the STORAGE WARS series has been immensely popular and successful.  By December 2013, 104 episodes of the series had been produced and it has been aired in 25 countries round the world.

4. Bailey shows that the Opponent’s “A&E Channel” was launched on Foxtel in Australia in February 2012.

5. There is a claim to confidentiality in respect of all business figures given in Bailey but I can say that the advertising expenditure at the time of the launch of the “A&E Channel” in Australia is impressive.

6. Bailey shows, importantly, that from the time of that launch, the STORAGE WARS series was one of the Opponent’s flagship programmes and has featured since February 2012. 

7. The broadcast in Australia of the STORAGE WARS series since February 2012 has been accompanied by more than 50 promotional advertisements, broadcast numerous times daily, again at significant cost.

8. Further, since February 2012, promotion of the STORAGE WARS series has also been made on radio on TripleM in Sydney and promotional advertisements have been affixed to public buses.

9. Bailey shows that the audience reach for the first season was very impressive and there is evidence that this put the STORAGE WARS series among the highest rating non-sports shown on Australian pay television.

10. The STORAGE WARS series has received considerable media and third party attention and the Opponent has operated a website at which provides viewer information on the series, together with additional scenes, photo galleries, tips about the bidding and selling processes and the like.

The law

1. I am able to decide this matter under section 60, reproduced below:

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.

Note:  For priority date see section 12.

1. A reputation is essential to section 60.  In McCormick & Co Inc v McCormick[2] (‘McCormick’) Kenny J said at [81]:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   [2] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192.

2. As for the assessment of reputation, Kenny J went on to say at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

3. In my assessment the evidence I have discussed above shows that the trade mark upon which the Opponent relies, STORAGE WARS, had a reputation in Australia on 6 September 2012.  In other words, I find on the evidence that a significant portion of the Australian public would have been aware of the Opponent’s television series STORAGE WARS on that date and would have understood it to be the name of a programme broadcast by Foxtel.

4. The assessment of the likelihood of confusion depends on that reputation, but regard must also be paid to the level of similarity of the services and the degree of similarity of the trade marks.

5. In this case the trade marks are identical.  Nothing turns on the difference in the Opponent’s use of STORAGE WARS and the initial capitalization of the Trade Mark and, in any event, Bailey shows occasional use of the Trade Mark in that exact form.

6. I find that the Opponent’s reputation in the STORAGE WARS trade mark is confined to entertainment services, whilst the application in class 35 has been accepted in respect of “auctioneering”.  Nevertheless, in Registrar of Trade Marks v Woolworths[3] French J said at [50]:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   [3] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.

7. I am in agreement with the Opponent’s submission that:

   Because the heart of the action in STORAGE WARS is the auctioning of the contents of storage lockers and garages, persons who know that STORAGE WARS is the name of the Opponent’s television series and see the Opposed Mark used in relation to the Opposed Services, (“auctioneering”), are likely to be confused or deceived because they will be caused to wonder whether, or will believe that, the auctioneering services are being provided by a person or company that has the approbation, approval, sponsorship, endorsement or licence of the provider of the STORAGE WARS television series.

1. I am influenced by the facts that the phrase “storage wars” had no clear and obvious meaning prior to its adoption and use by the Opponent and by the lack of any evidence that the phrase was known or used by any third party.

2. In the result, I find that because of the Opponent’s reputation before the Priority Date in an identical trade mark, there is a real and tangible danger of deception or confusion, in that a person who knew the Opponent’s STORAGE WARS series and saw the Trade Mark used in a normal and fair manner in respect of auctioneering services would be caused to wonder whether the auctioneering services were being offered, sponsored, licensed by, or were otherwise associated with, the Opponent.

3. The Opponent has accordingly established its ground of opposition under section 60.

Decision

1. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in

   respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the

   application was opposed has been established.

   Note: For limitations see section 6.

2. The opposition has succeeded and so I refuse to register the Trade Mark.

Costs

1. Having been successful in these proceedings the Opponent is entitled to its costs which I award against the Applicant at the scale set out in Schedule 8 to the Regulations.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
9 February 2016