Adme (Cy) Ltd v Seven Network (Operations) Limited

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Seven Network (Operations) Limited to extension of protection to international registration designating Australia No. 2259985 (International Registration No. 1652677) – – held by ADME (CY) LTD

Delegate: Bianca Irgang

Representation:
Opponent: Herbert Smith Freehills

Holder: IP Solved (ANZ) Pty Ltd

Decision: 2024 ATMO 117
Trade Mark Regulations 1995 - Opposition under regs 17A.33: sections 44, 58, 60 and 42(b) pressed– section 60 established–protection not to be extended to the IRDA.
Background

ADME (CY) LTD (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 2259985 in classes 35 and 41 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.
Trade mark:  (the ‘Trade Mark’)
IRDA:  2259985
International Registration: 1652677
Lodgement Date:                  1 December 2021
Convention Details:              4 June 2021 (‘Relevant Date’)
  Cypress
  91752
Specification:  Class 35: Advertising on the Internet for others; dissemination of advertising for others via an on-line communications network on the internet; promoting the goods and services of others; promoting the sale of the services [on behalf of others] by arranging advertisements; online advertising services; publicity publication services; publication of publicity materials; arranging subscriptions to publications for others; analysis of market research data and statistics; electronic data processing; advertising and marketing services provided via communications channels; advertising and marketing services provided by means of social media.
Class 41: Providing entertainment information via a website; providing entertainment in the nature of film clips via a website; film studios; film editing; film production; entertainment by film; film production, other than advertising films; providing films, not downloadable, via video-on-demand services; multimedia entertainment software publishing services; digital video, audio and multimedia entertainment publishing services; providing user ratings for entertainment or cultural purposes; publication of online reviews in the field of entertainment; entertainment information; entertainment; audio entertainment services; video entertainment services; television entertainment; television and radio entertainment; provision of entertainment facilities; fan club services (entertainment); arranging of visual entertainment; entertainment provided via the internet; provision of on-line entertainment; information services relating to entertainment; provision of entertainment via podcast; entertainment services featuring fictional characters; providing video entertainment via a website; providing video entertainment via the internet; arranging of presentations for entertainment purposes; organizing of shows for entertainment purposes; entertainment services provided by on-line streams; provision of entertainment information via the Internet; preparation of special effects for entertainment purposes; provision of entertainment information via television, broadband, wireless and on-line services; information relating to entertainment, provided on-line from a computer database or the internet; animation production services; production of animation; special effects animation services for film and video; online digital publishing services.
(the ‘holder’s services’)
The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 31 March 2022. Seven Network (Operations) Limited (‘the opponent’) filed a Notice of Intention to Oppose the extension of protection on 12 May 2022 followed by a Statement of Grounds and Particulars on 14 June 2022. These two documents, taken together, constitute a Notice of Opposition (‘the Notice’)[1]. The holder then filed its Notice of Intention to Defend the IRDA from the opposition. Thereafter, the opponent and holder filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).
[1] Trade Marks Regulations 1995 (Cth) reg 17A.32.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
I heard the matter by way of the written record on 3 May 2024 as a delegate of the Registrar of Trade Marks. The opponent provided written submissions for consideration by way of its legal representative Herbert Smith Freehills. The holder did not provide written submissions for consideration.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and those grounds of opposition under sections 42(b), 44, 58 and 60 were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.
[2] [2015] FCAFC 156, [133].
[3] [2006] FCA 1663, [26].
Evidence
The evidence in this matter consists of the following declarations:
Evidence in Support
·Declaration of Gervais Raymond Laird, Legal Counsel for the opponent, dated 31 October 2022 with Exhibits GRL-1 to GRL-87 (‘Laird’); and
·Declaration of Renee Elizabeth Burgess, Solicitor, dated 31 October 2022 with Exhibits REB-1 to REB-5.
Evidence in Answer
·Declaration of James Vernon Maxwell, Trade Marks Attorney, dated 9 February 2023 with Exhibits 1 to 5 (‘Maxwell’).
Evidence in Reply
·Declaration of Renee Elizabeth Burgess, dated 17 April 2023 with Exhibit REB-1.
Discussion
Section 60 - Reputation in Australia
Section 60 of the Act provides:
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.
In order to make out a ground of opposition under s 60, the Opponent must establish:
(a) there was ‘another trade mark’;
(b) which had acquired a reputation in Australia before the priority date; and
(c) because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
To establish the first point, the opponent is relying predominantly on its widespread use of its family of trade marks prominently featuring the word ‘SEVEN’ or number ‘7’ in order to establish the s 60 ground of opposition. The marks that have been used by the opponent (or one of its related entities) since before the Relevant Date include the following (the ‘Seven Marks’):
Reputation
Reputation in the context of s 60 refers to the ‘recognition of the trade mark by the public generally’.[4] It is not a factor that is assumed and must be established by the opponent as a matter of fact.[5]
[4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[5] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[6] or providing evidence of high volume of sales,[7] advertising expenditure or other promotion of goods or services to which the trade mark applies.[8] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[9]
[6] Ibid [118].
[7] McCormick (n 4) [86].
[8] Ibid.
[9] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J) ('Rodney Jane’).
Generally, the relevant reputation must be amongst a significant or substantial number of persons.[10] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[11]
[10] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ) (‘Renaud Cointreau’).
[11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
In support of its claim to a significant Australia-wide reputation in its Seven Marks, Laird states that the opponent and its predecessors and related companies have, since 1956, extensively used, promoted and supplied a variety of entertainment, media, broadcasting and related goods and services under and by reference to a family of trade marks comprising or including the word ‘SEVEN’ or number ‘7’ and it continues to do so nationally. Since 1956, the opponent has provided various services in Australia including telecommunications and electronic communications services and production of films relating to sports events and news broadcasts. Most of the advertising, marketing and publicity services, and information services prominently display one or more of the opponent’s Seven Marks. It is used on fashion, beauty and lifestyle magazines (e.g. Better Homes and Gardens magazine) and the opponent also owns internet platform Yahoo!7, Pacific Magazines (including major publications such as New Idea, Marie Claire, Instyle, Famous and Who).
The services and goods provided by the opponent under the Seven Marks include[12]:
[12] Laird [52].
·telecommunications and electronic communications services, including free-to-air broadcasting services, from 1956 in analogue mode and from 1 January 2001 also in digital mode, covering a wide range of television programmes including news, educational, entertainment, sporting, lifestyle, cooking and cultural activities;
·free-to-air television broadcasting services in digital format on the channels known as 7TWO (since November 2009), 7mate (since 2010) and 7flix (since 2016);
·pay television broadcasting (from approximately 1998 until May 2002);
·publication and information services in relation to entertainment, education, sporting and cultural activities (since about 1956);
·production of magazines;
·production of films relating to sporting events (since about 1956);
·production of films for news broadcasts (since about 1956);
·production of radio and television programs, mini-series, films and telemovies (since about 1956);
·sports production (since 1956);
·advertising, marketing and publicity services (since about 1956), including internet advertising and promotions;
·podcasts (since at least March 2017);
·retail and wholesale services including through websites;
·merchandise;
·streaming of audio and video material on the Internet and via downloadable mobile software applications, including television programs;
·travel agency and booking services; and
·development, ownership and management of major entertainment and sports venues and provision of ticketing services. (the ‘opponent’s services’)
Unlike s 44 of the Act, s 60 does not require that the opponent’s services be of a specified standard of similarity with the holder’s services, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I am satisfied that the opponent’s services are the same or similar to the holder’s services.
It is now for me to determine whether the opponent has established that before Relevant Date the opponent’s Seven Marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the holder of its Trade Mark would be likely to cause confusion.
Laird avers the opponent is a well-known corporate entity with a well-known brand featuring and centered around the number ‘7’. The press releases included in Exhibits GRL-01 and GRL-02 accompanying Laird attest to the prevalence of the opponent in the day-to-day lives of the Australian public. A number of those press releases demonstrate the number 1 status of the opponent in free-to-air television in key audiences and across digital BVOD (broadcast video on demand). According to Laird, the opponent’s coverage of major global and national events such as the Olympic Games, AFL and the Australian Open, and the opponent broadcasting the most watched programs such as the AFL Grand Final, 7NEWS, and The Voice all contribute to the opponent’s significant reputation in its Seven Marks.
According to Laird, the opponent has been the highest rated television network in Australia every year since 2006, except 2019 and 2020. Since 2010, the opponent’s television content has been available for streaming at its PLUS7 online catch-up TV website. In 2017, PLUS7 was replaced by 7plus, a premium BVOD service available online and via a mobile software application. During the 2020 Tokyo Summer Olympics, the opponent’s 7plus BVOD service broke Australian streaming records with 376 million minutes streamed on a single day. More than 4.74 billion minutes of content were watched on 7plus throughout the Olympics, making it the biggest digital event in Australian history. As at 10 July 2022, 7plus had 12.5 million registered and verified users which was more than any other commercial BVOD platform in Australia. A variety of television and video content has also been produced and distributed through Seven Studios (wholly owned by Seven West Media Limited and another of the opponent’s related entities), one of Australia’s largest production companies, which has managed the opponent’s content creation and distribution activities since at least April 2017.
The opponent has claimed confidentiality in a number of its exhibits which I will discuss in general terms only so far as is necessary in order to provide reasoning for my decision. Therefore, I turn to the revenue generated through sales of the opponent services under its Seven Marks for a number of years before the Relevant Date of the IRDA. This revenue is very considerable[13]. The same can be said for the substantial amounts the opponent has invested in advertising and marketing its services in Australia[14].
[13] Laird [267].
[14] Laird [53]-[55], [252]-[257], [274]-[275] and exhibit GLR-87.
On my assessment of the opponent’s evidence, I am satisfied that the opponent had a reputation in the Seven Marks for the opponent’s services, and that reputation is substantial particularly for its entertainment and advertising services, at the Relevant Date amongst a significant section of the Australian public. I now turn to the question of whether, given that reputation, there is a real tangible danger of deception or confusion from use of the Trade Mark.[15]
[15] Monster Energy Company v Mixi Inc [2020] FCA 1398, [22] (Stewart J).
Likelihood of Deception or Confusion
The question of whether use of the Trade Mark is likely to cause confusion or deception is to be assessed by considering whether a notional consumer of the holder’s services having an awareness of the opponent’s Seven Marks and having never encountered the Trade Mark is caused to wonder whether the holder’s services are associated with the opponent. [16]
[16] Rodney Jane (n 9) [84(e)].
It was held in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd that: [17]
The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[17] [2010] ATMO 5, [39] (Hearing Officer D Lyons).
As I already discussed earlier at paragraph 15, the holder’s services are essentially the same as the opponent’s services. Both being entertainment and advertising services.
In considering the similarities between the Seven Marks (as seen at paragraph 9) and the Trade Mark it becomes clear that the respective trade marks share the prominent feature being the number ‘7’. While a number of the Seven Marks contain additional terms or graphic devices which differ from the Trade Mark, consumers are more likely to refer to the respective trade marks by the dominant cognitive cue, which in this case is the numeral ‘7’. It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products. The public is familiar with this practice and knows that, while the marks are not identical, they do denote related goods or services offered by the same trader.
The holder has asserted that it has not heard of any marketplace conflict or confusion with the opponent and the Trade Mark in Australia, or anywhere else in the world. The holder submitted via Maxwell:
The Services bearing the Trade Mark or very close variations thereof have been provided continuously throughout the world including Australia since 2018 with no instances of any confusion with other traders arising, including the Opponent.
Maxwell states the Trade Mark is predominately used in relation to the ‘7 Second Riddles’ YouTube Channel which has around 4 million subscribers and a total of 1.34 billion views. Mr Maxwell states the YouTube channel was created on 25 January 2018 and similar representations of the Trade Mark were used from that time. He asserts that the current form of the Trade Mark was created and first published on YouTube and all other social media platforms in July 2020 and that it has been consistently used since that time. While I accept that both the holder and the opponent are large and prominent corporations, I am not satisfied that this would preclude the opponent from establishing a s 60 ground of opposition.
I note that the majority of the examples in Exhibits 2 through 4 accompanying Maxwell demonstrate the holder using its Trade Mark in close proximity to the expression ‘7-Second Riddles’ which is often more prominently placed on the webpages than the Trade Mark. Additionally, the numbers of subscribers/followers of the holder’s social media accounts appear to be world-wide figures. There is no clarification of how many of those subscribers/followers are Australian customers, and therefore, no indication of how much of the holder’s reputation in its Trade Mark is in Australia.
Whilst there are differences between the Trade Mark and the Seven Marks, it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual.[18] I am satisfied that there are striking similarities between the trade marks which add to the potential for confusion. This is particularly so when the opponent has demonstrated extensive and pervasive reputation for its Seven Marks due to its use on the same entertainment and advertisings services over a long period of time. I am satisfied that as a result of the opponent’s reputation in the Seven Marks that there is a real tangible risk that a significant number of consumers would at the very least experience a reasonable doubt[19] as to the existence of some sort of connection between the Seven Marks and the Trade Mark, particularly when these trade marks are applied to the same entertainment and advertising services.
[18] Austin, Nichols & Co Inc. v Stichting Lodestar (2005) 11 TLCR 265 [13].
[19] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-5].

I am satisfied that the opponent has established the s 60 ground of opposition in relation to all the services of the IRDA. Having found in favour of the opponent in terms of s 60 there is no need for me to discuss the other grounds as set out in the Notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
Regulation 17A.34 provides:
17A.34Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2)The Registrar must tell the International Bureau of his or her decision.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to extend protection to IRDA 2259985 (IR 1652677). If the Registrar is served with a notice of appeal, I direct that the disposition of the IRDA should otherwise be in accordance with the court’s order or discretion.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the holder under section 221 of the Act in terms of Schedule 8 of the Regulations given that the opponent was successful in establishing a s 60 ground of opposition.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
28 June 2024

[2024] ATMO 117

28 June 2024

Key Legal Topics

Areas of Law

Intellectual Property

Statutory Interpretation

Legal Concepts

Appeal

Standing

Statutory Construction

Costs