Abercrombie & Kent Group of Companies, S.A. v Carnival plc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Abercrombie & Kent Group of Companies, S.A. to registration of trade mark application 1289191(12, 39, 41) – Ampersand device - filed in the name of Carnival plc.

Delegate:

Debrett Lyons

Representation:

Opponent: Anthony Norris of Collison & Co, Patent & Trade Mark Attorneys, instructed by Digby Law

Applicant: Frances Drummond of Freehills Patent & Trade Mark Attorneys

Decision:

2011 ATMO 102

s52 opposition – ss 42(b), 58, 59, 60 and 62A pursued. Opposition partially successful. Applicant not the owner of the trade mark. Sec. 58 established in relation to class 39 services.

Costs awarded against Applicant.

Background

This matter arises out of the filing of an application to register a trade mark under the Trade Marks Act 1995 (‘the Act’) by Carnival plc (‘the Applicant’). Current details of this application are:
Application No: 1289191
Priority Date:  12 March 2009
Goods/Services:              Class: 12 Ships and marine vessels

Class: 39
Transportation services; travel tours and cruises; travel agency and travel reservation services; cruise ship services; information and advisory services in this class

Class: 41
Education and entertainment services; sporting and cultural activities; education and entertainment activities provided in connection with the arranging and conducting of cruises and tours; cruise ship entertainment services; information and advisory services in this class
Trade Mark:
The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 July 2009.
On 16 October 2009, Abercrombie & Kent Group of Companies, S.A. (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes, amongst others, the grounds under sections 42(b), 58, 59, 60 and 62A which were subsequently argued at a hearing. I treat the remaining grounds listed in the Notice as having not been established.
A hearing before me as a delegate of the Registrar of Trade Marks took place in Sydney on 7 June 2011. Mr. Anthony Norris of Collison & Co, Patent & Trade Mark Attorneys, instructed by Digby Law, represented the Opponent. Ms. Frances Drummond of Freehills Patent & Trade Mark Attorneys represented the Applicant.
The Evidence
The evidence served and filed by the parties constitutes the following statutory declarations:
·     Evidence-in-support : Sujata Raman made 1 April 2010;
·     Evidence-in-reply : Simon Cheng made 15 October 2010; and
·     Evidence-in-Answer : Sujata Raman made 5 January 2011.
The dispute
There was no serious disagreement between the parties as to the relevant principles of law which apply to my decision. Synoptically, the matter has arisen because both parties claim rights of a kind to the device of an ampersand. In the Applicant’s case, it would be the rights given by registration, were that granted, and in the Opponent’s case, the claimed rights are said to have accrued through use.
The Opponent has traded under the name “Abercrombie & Kent” but since the end of 2007 has used in its advertising and promotional material a stylized ampersand device in a way which it claims is trade mark use and asserts that registration of the application would because of that use offend specified provisions of the Act. The Applicant has since 1852 used the trade mark “P&O” in Australia and argues that it has prior rights in an ampersand device by reason of that use.
Opponent’s submissions
The Opponent claims, in particular, that its post-2007 use of an ampersand device renders it more likely than not that any use of the trade mark of the application would be misleading or deceptive for the purposes of section 60 of the Act and would be contrary to trade practices law for the purpose of section 42(b) of the Act.
The Opponent goes on to claim that it is the owner of a trade mark which is substantially identical to the applied-for trade mark for the purposes of section 58 of the Act.
The Opponent further submits that the application falls foul of section 59 of the Act because it is said that the Applicant’s evidence does not show any use of the applied-for trade mark solus, and so the Opponent posits that the Applicant had no intention to use the trade mark at the filing date.
Finally, the Opponent argues that the application was made in bad faith under section 62A of the Act because the parties are direct competitors in the same market for travel services and so would be aware of one another’s marketing strategies. Within that context it is said that since the Opponent used an ampersand device as a trade mark 15 months before the filing date of the application, bad faith should be imputed to the Applicant.
The Opponent also made it plain during the course of submissions that its opposition was directed only against the class 39 services. For that reason alone, the application will remain intact insofar as the class 12 and class 41 goods and services are concerned.
The Applicant broadly denies all of those claims in paragraphs 8 to 11 above.
Reasoning for Decision
I can deal with the grounds of opposition under sections 59 and 62A summarily. So far as section 59 is concerned, the fact alone that the Applicant has so far made no use of the applied-for trade mark is not enough to cast a negative inference about its intentions at the date of application. Nor is the fact that both companies operate in the same market and are likely to be conscious of each other’s marketing strategies enough on its own to support a conclusion that the application was made in bad faith. I do not find anything further in the evidence to support either of those grounds.
The success of the Opponent’s grounds of opposition under sections 42(b) and section 60 has a common requirement that the Opponent must prove a reputation in Australia in an ampersand device which renders it more likely than not that use of the applied-for in relation to the applied-for class 39 services would result in public confusion or deception.
What is clear from the evidence is that it is the Opponent which made first use of an ampersand device, solus. It will become important to characterize that use but what emerges from my assessment of the evidence as a whole is that the ground of opposition deserving attention ahead of either section 42(b) or 60 is section 58. Section 58 does not require an assay of the Opponent’s claim to a reputation before the filing date of the application, but an enquiry into the more specific question of first use.
Section 58 states simply that “[T]he registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.” Judicial gloss has come to define the owner of a trade mark as either the first person to make application for the trade mark in Australia or the first person to adopt and use the trade mark (as a trade mark) in Australia in relation to certain goods or services. If, as in this case, there are contested claims to ownership, then for the Opponent to prevail it must prove first use of a trade mark substantially identical to the applied-for trade mark in connection with the same kind of goods or services.
The services at issue are the class 39 services and use by the Opponent has been use in relation to those broad travel services. The remaining questions are whether the trade marks are substantially identical and whether the Opponent was the first to use its trade mark, as it is sometimes put, in a trade mark sense.
The Applicant strove to show that it was the senior user of an ampersand device by reason of its continuous use of its “P&O” trade mark in Australia since 1852. At the same time, it was critical of the Opponent’s claim to exclusivity in an ampersand device, which the Applicant said rested principally on what it called the natural grammatical usage of that sign, linking the words “Abercrombie” and “Kent”.
What is clear is that neither party made any use of an ampersand device by itself prior to the Opponent’s use in December 2007. Prior to the filing date of the application, the Applicant made no use of either the applied-for trade mark or any other stylization of an ampersand device, alone. In my assessment, the Applicant’s use of “P&O” does not entail use of the ampersand for the purposes of section 58. The addition of the letters P and O on either side of an ampersand device are alterations and additions which substantially affect it identity and any prior use of the trade mark “P&O” does not qualify as use of the ampersand solus.
The live question is whether there was the requisite trade mark use by the Opponent in the period from December 2007 to 12 March 2009 when the Applicant filed for registration. If so, then I must ask whether that use was of a trade mark substantially identical to the applied-for trade mark.
Sujata Raman is the Managing Director of Abercrombie & Kent Australia Pty Ltd, the local subsidiary of the Opponent. He is authorized by the Opponent to make his declaration based on his engagement in that capacity since 2003. He states that during 2007 his company undertook a review of its marketing strategy. What then follows is said to be confidential information however very little can be made of the Opponent’s case unless I am to selectively ignore that claim and repeat in this decision what are clearly matters of public record.
Mr Raman states that the first relevant use of the ampersand device by his company was in the “Christmas Indulgence” liftout from The Australian Financial Review dated 7-9 December 2007. A copy of the advertisement is exhibited to his declaration. It shows what is a quarter page advertisement by Abercrombie & Kent for 3 holiday cruise packages all departing in July 2008. The name Abercrombie & Kent appears at both the top and bottom of the advertisement and can not be ignored. Sitting like a banner across the top of the advertisement is the image of a large, luxury cruise ship set on the ocean against an open blue sky. Above and to the right of the image of the ship, set in the blue sky, are the words “Abercrombie & Kent”. Set to the left of the image of the ship and occupying the entire depth of the photograph, across sky and water, is the superimposed image of an ampersand device. The ampersand is presented as a reverse image in the sense that it appears in white against the blues of the sky and ocean. Physically, it occupies approximately 25% of the photograph, dwarfing both the image of the ship and the words Abercrombie & Kent which appear on the far right. The exhibits to the evidence-in-support do not readily lend themselves to reproduction here but later in this decision, at paragraph 27, different promotional images I have taken from the web exhibit the same style and proportions as the “Christmas Indulgence” advertisement of December 2007. They reproduce exactly the ampersand as it appears in the Opponent’s evidence.
The evidence in support shows continuous use of that same ampersand device across the broad range of class 39 services through 2008 and 2009.
I have no hesitation in finding that the use of the ampersand device by the Opponent during this time is trade mark use in Australia. The nature of the use is not grammatical. The device is invariably separated from the use of the Abercrombie & Kent name. It is given dominant physical placing in all the advertising material I have seen. Finally, the use is more than ornamental and has the capacity to be indicative of the services of a particular trader.
That then engages the final question before me for the purposes of section 58 – whether or not the applied-for trade mark and the trade mark used by the Opponent are substantially identical.
The parties were in accord that the test for substantial identity required a side-by-side comparison of the signs. What are shown below are advertisements for the Opponent’s services (not in evidence for the reason given) which faithfully show the style in which the Opponent has used the ampersand device since December 2007. The background imagery varies but what remains constant in my observation is (i) the font, (ii) the negative imagery, and (iii) the slight loss of the complete sign – top, side and bottom – as a result of its super-sizing.

The applied-for trade mark is now reproduced below:

Assessing both the similarities and differences, and making proper allowance for the fact that both trade marks are modeled on a known symbol, the parallels are more than striking – a marginal modification of font and a small rotational shift of the applied-for trade mark would result in a virtual duplication of the Opponent’s trade mark. I find that they are substantially identical.
For these reasons, the Opponent has established its ground of opposition under section 58 of the Act in relation to all the class 39 services. Since the opposition was contained to those services no further analysis of the case is required.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)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.
The Opponent has established a ground of opposition and so I refuse to register application 1289191 for the class 39 services. The application can proceed for classes 12 and 41.
Costs
Having been successful in this matter the Opponent is entitled to its costs which I award at the official scale against the Applicant. Although the Opponent might have more properly advised the Applicant prior to the hearing about the reduced scope of its opposition, I do not consider that the Applicant went to any greater lengths to support registration of its class 12 goods or class 41 services and so I do not think there is sufficient reason to adjust the award.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
15 October 2011

[2011] ATMO 102

15 October 2011

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Statutory Interpretation

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