Ainsworth Game Technology Limited v IGT, a Nevada Corporation

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Ainsworth Game Technology Limited to registration of trade mark applications 1102287 (9 & 28) and 1112392 (28 & 41) - MULTIWAY - filed in the name of IGT
-and-

Opposition by IGT to registration of trade mark application 1213785 (9 & 28) - - filed in the name of Ainsworth Game Technology Limited

Delegate: Michael Kirov

Representation: Ainsworth: Michelle Cooper and Sean McManis of Shelston IP
IGT: Julian Cooke of Counsel, instructed by Amy Reynolds of Blake Dawson

Decision: 2011 ATMO 53
1102287 & 1112392: s52 oppositions – sections 41 and 62(b) pressed – trade mark capable of distinguishing IGT’s goods and services; acceptance not based on false evidence or representations. Oppositions not established.
1213785: s52 opposition – sections 41, 44 and 60 pressed – trade mark capable of distinguishing Ainsworth’s goods; trade marks not deceptively similar; insufficient reputation to invoke s 60. Opposition not established.
Background

This matter involves “cross oppositions” to the trade marks and MULTIWAY under s 52 of the Trade Marks Act 1995 (“the Act”).
Opposed applications 1102287 & 1112392 are owned by IGT, a Nevada corporation (“IGT”), and are detailed below:
Application No:         1102287
Priority Date:             7 March 2006
Goods:Class 9: Components for gaming machines, including devices which accept a wager, namely, controllers, displays, button panels, bolsters, electrical wiring, and computer hardware and software and computer networked systems for linking such together, associated therewith
Class 28: Gaming machines including devices which accept a wager
Trade Mark:               MULTIWAY
Endorsements:           Provisions of subsection 41(5) applied.
Application No:         1112392
Priority Date:             5 May 2006
Goods and Services:    Class 28: Token operated slot machines and video game machines
Class 41: Entertainment services in respect of gaming machines; entertainment services being the conduct of games of chance via gaming machines; entertainment services derived from the provision of games for gaming being games for computers, gaming and slot machines; entertainment services being the conduct of games of chance simultaneously at multiple, independent gaming establishments via gaming machines; providing casino and gambling facilities
Trade Mark:               MULTIWAY
Endorsements:           Provisions of subsection 41(5) applied.
IGT’s applications were accepted for possible registration pursuant to section 41(5) of the Act following the filing of evidence of use and were advertised as such in the Australian Official Journal of Trade Marks of 14 May 2009 and 25 June 2009 respectively. For convenience I refer hereafter to the MULTIWAY trade mark subject of the two applications collectively as “the IGT Trade Mark”.
Registration of the IGT Trade Mark is opposed by Ainsworth Game Technology Limited (“Ainsworth”). While Ainsworth’s Notices of Opposition each specified several grounds corresponding to various provisions of the Act, Ainsworth only pressed the grounds in the Notices based on ss 41 and 62(b) of the Act. These grounds are discussed below. I treat the remaining grounds listed in the Notices as abandoned.
Ainsworth is itself the owner of application 1213785, which is detailed below:
Application No:         1213785
Priority Date:             5 December 2007
Goods:Class 9: Parts and accessories in this class for electronic gaming machines including poker machines; operating software for electronic gaming machines including poker machines; electric and electronic equipment in this class for use in or with gaming machines including poker machines, including jackpot controllers, microprocessors, meters, illuminated signs, electronic systems and associated software for directly or indirectly linking gaming machines including poker machines, electronic systems and associated software for linking interconnected gaming machines including poker machines, and audio/visual apparatus, equipment and systems
Class 28: Gaming machines including poker machines; gaming machines including poker machines incorporating operating software; parts and accessories in this class for the aforesaid goods
Trade Mark:
(“the Ainsworth Trade Mark”)
Following examination, the Ainsworth Trade Mark was advertised for possible registration in the Australian Official Journal of Trade Marks of 10 April 2008 and is now opposed by IGT. IGT’s Notice of Opposition, too, specified several grounds corresponding to various provisions of the Act, but at the hearing IGT only pressed those grounds in the Notice based on ss 41, 44 and 60. These grounds are discussed below and, again, I treat the remaining grounds listed in the Notice as abandoned.
I heard both parties’ oppositions as delegate of the Registrar of Trade Marks in Sydney on 4 April 2011. Julian Cooke of Counsel, instructed by Amy Reynolds of Blake Dawson, represented IGT. Michelle Cooper of Shelston IP, assisted by Sean McManis of the same firm, represented Ainsworth. The parties’ oral submissions before me were also supplemented by written submissions.
Onus
I proceed on the basis that the respective opponents need only establish one (or more) of the grounds of opposition pressed at the hearing on the balance of probabilities[1] and that the relevant date for assessing the rights of the parties in each opposition is the filing date of the opposed application in question.
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [26] and Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [26] to [39].
Matters common to both parties’ oppositions
While Ainsworth’s and IGT’s oppositions are to some extent inter-related, they rely on different evidence (as detailed in paragraphs 19 and 57 below) and, as indicated above, on somewhat different grounds. It is accordingly convenient to discuss them separately and I will commence with Ainsworth’s oppositions to the IGT Trade Mark since IGT relies on its opposed applications 1102287 and 1112392 as the basis for its objection that Ainsworth’s application offends against s 44 of the Act. That said, the parties’ oppositions share a number of matters in common and these are firstly mentioned below.
From the totality of the evidence before me it is apparent that both parties are principally developers of, manufacturers of, and dealers in “gaming machines”[2], their associated parts, accessories and software, and related services such as installation, service and support. The evidence indicates the parties’ gaming machines bear a number of trade marks, or claimed trade marks, including:
·     the parties’ “house marks”, being stylized representations of the names IGT or AINSWORTH, as the case may be, which appear on all of the parties’ machines;
·     trade marks which identify machines which share certain general capabilities and which, depending on the software installed in them, can be programmed to operate a number of different games bearing a particular “feature” or range of features. Ainsworth’s evidence indicates its AMBASSADOR SL branded machine, for example, “can be used with more than 100 different games and associated features” and “bears the AMBASSADOR SL mark together with trade marks relating to the particular games and features that are installed on the machine”;
·     trade marks which identify the particular game, or the “theme” of the particular game, which is programmed into the machine. These include trade marks such as WHEEL OF FORTUNE, TIBETAN PRINCESS, CANNONBALL EXPRESS, SAHARA SANDS and the like; and
·     arguably descriptive words or phrases, usually stylised to some degree, which obviously refer to “features” particular machines have. This last category includes words or phrases such as EXTRA CHANCE, MAJOR JACKPOTS and the claimed trade marks subject of the current oppositions, MULTIWAY and .
[2] Also known as “poker machines” in Australia and variously referred to as, inter alia, “pokies”, “slot machines”, “slots” or “fruit machines” in Australia and other jurisdictions. Trade in, and use of, “gaming machines” is strictly regulated in Australia by State and Territory legislation; see for example the Gaming Machines Act 2000 (NSW). Tamberlin J provides a convenient and detailed description of gaming machines in Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd (2000) 50 IPR 29 at [15] to [25].
Of critical relevance to my decisions in both parties’ oppositions is the question of who constitutes the relevant market for the parties’ goods and services. Mr Cooke argued that this included the actual user of the machines, who was likely to pay less attention to the trade marks on the machines given[3]:
·     “the large number and choice of gaming machines in each venue;
·     “the fact that end users of these machines cite ‘atmosphere/excitement’ as a major motivation of using them; and
·     “the fact that the machines are generally available for use in venues where alcohol is consumed.”
[3] The following quote, highlighted by Mr Cooke in his submissions, is from Anthea Gilmore’s Statutory Declaration of 6 November 2010, which formed IGT’s Evidence-in-Reply to its opposition to the Ainsworth application.
As Mr Cooke put it in his written submissions:
[Ainsworth’s evidence] appears to suggest that the consumers of the competing marks are restricted to manufacturers and distributors of gaming machines and does not include users of the gaming machines. This is an artificial distinction and is contrary to McCormick & Co Inc v McCormick[4] -where the relevant public was the “public generally”.
[4] McCormick & Co Inc v McCormick (2000) 51 IPR 102, per Kenny J at [81].
Ainsworth’s attorney, Ms Cooper, argued otherwise. She noted that the evidence indicated that the parties’ gaming machines were sold directly to licensed hotels, clubs or casinos following negotiations and the signing of written contracts, that they were expensive items costing around $20,000 per machine, that the machines were advertised through industry magazines and trade shows (from which the general public were excluded) and that accordingly their purchase was “an informed, considered decision”. She submitted:
…that reference to the end users’ impression of the respective trade marks is irrelevant as once a gaming machine is sold to a venue it is no longer in the course of trade. End users are not the purchasers of these goods, and are not a party to the transaction for a sale of these goods. The sale of a gaming machine is completed before an end user will access the gaming machine.
I have no hesitation in accepting Ms Cooper’s submission on this critical issue. Mr Cooke’s reliance on McCormick & Co Inc v McCormick appears to misunderstand the context in which Kenny J referred to the words “public generally”. Her Honour was merely seeking guidance as to the meaning of the word “reputation” as it appears in s 60 of the Act and was happy to adopt a definition of that word found in the Macquarie Dictionary which referred to recognition by the “public generally”. She was not by any means suggesting that the relevant market for any goods or services, be they tubs of butter or submarines, was the “public generally”. Moreover, Kenny J was happy to adopt this definition in the matter before her because the goods with which she was concerned and whose reputation she needed to assess for s 60 purposes were relatively cheap herbs, spices and condiments such as might be found in any person’s kitchen, not sophisticated pieces of machinery costing around $20,000 each.
Further, both the sale and indeed the very possession of gaming machines are strictly regulated by legislation in each State and Territory of Australia. In New South Wales, for example, the Gaming Machines Act 2001 and the Unlawful Gambling Act 1998 prohibit the sale of “gaming machines” and their parts, accessories and related software to the general public (specifically, to any person who does not hold a relevant gaming licence). The legislation further prohibits their possession by unlicensed persons if used for gambling purposes and even prohibits the provision of information concerning the machines to unlicensed persons. The parties’ gaming machines thus undoubtedly in my view cease to be in the course of trade once sold to a licensed venue.
The relevant State and Territory legislation also restricts “providing casino and gambling facilities” and “entertainment services” in respect of gaming and gaming machines (as covered by IGT’s opposed application 1112392) to persons holding the appropriate licence. However in this case I accept that the relevant market for the services in question would in principle be any potential users of the services amongst the (adult) public generally.
To summarise, I confirm that in considering the oppositions I am doing so on the understanding that the relevant market for the parties’ goods consists of businesses such as hotels, clubs and casinos which hold the necessary gaming machine licence (hereafter “Gaming Venues”). On the other hand I consider the relevant market for IGT’s services of interest is essentially that segment of the adult population at large which makes use of Gaming Venues.
Discussion
Oppositions to the IGT Trade Mark
As mentioned above, Ainsworth pressed grounds based on ss 41 and 62(b) of the Act.
The parties served and filed evidence in relation to the oppositions to IGT’s applications as follows:
Evidence in Support
▪ Statutory Declaration by Tom William Hamilton Davidson made 11 August 2010
▪ Statutory Declaration by Michelle Allison Anita Cooper made 11 August 2010, with Exhibit MAAC-1
Evidence in Answer
▪ Statutory Declaration by Amy Denise Reynolds made 11 November 2010, with Annexures A and B (these Annexures being copies of Statutory Declarations made by IGT’s “Legal and Compliance Counsel”, Anthea Gilmore).
I mention that Ainsworth’s attorney, Ms Cooper, objected to Ms Reynolds’ evidence, submitting:
As any substantive content of the Reynolds Declaration comes from information initially attested to by Ms Gilmore, we note that the contents of this declaration in so far as they purport to show that MULTIWAY in plain script has acquired distinctiveness through use is hearsay and should be given no probative weight as to this issue. Its relevance is limited only to showing what representations were made to the Registrar resulting in the applications for MULTIWAY in plain script being accepted.
It is true that Ms Reynold’s declaration does not contain any direct information as such, but is merely a vehicle for putting into evidence copies of two Statutory Declarations by Ms Gilmore, the respective originals of which had been filed with IP Australia in support of acceptance of IGT’s applications for registration during examination and in support of IGT’s opposition to the Ainsworth Trade Mark. (Ms Gilmore made these declarations on 16 December 2008 and 19 March 2009 and they are referred to hereafter as “Gilmore 1” and “Gilmore 2” respectively.) Nevertheless, in response to Ms Cooper’s objection Mr Cooke noted:
·     “Gilmore 1 and Gilmore 2 themselves give direct evidence” and “have merely been annexed to Reynolds to indicate that IGT relies upon [them] in these opposition proceedings”;
·     “In any event, Regulation 21.15(8) [of the Trade Marks Regulations 1995] provides that the Registrar is not bound by the rules of evidence”[5]; and
·     “As observed by Finkelstein J in Malibu Boats West Inc v Catanese (2000) 51 IPR 134[6]:
The only question that arises in relation to the rejection of evidence is whether the decision-maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.”
[5] Reg. 21.15(8) of the Trade Mark Regulations 1995 states, “The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate.”
[6] At [24].
As I indicated at the hearing and essentially for the reasons put forward by Mr Cooke, I do not agree with Ms Cooper’s submission as to the “probative weight” I might properly give to Gilmore 1 and Gilmore 2 and I confirm I have taken the contents of these declarations at face value in deciding the oppositions.
Section 41
The grounds based on s 41 of the Act relating to each of IGT’s applications are indicated in Ainsworth’s Notices of Opposition in essentially identical terms, as follows:
The [IGT Trade Mark] is not a sign which is capable of distinguishing the goods/services specified in the application from the goods/services of other persons.
Section 41 itself is set out below:
Trade mark not distinguishing applicant's goods or services
41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

The application of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 as follows (at 504):
Subsections (3)–(6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the registrar first to ``take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons'’. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
Ms Cooper conceded at the hearing that the IGT Trade Mark was to some extent inherently adapted to distinguish IGT’s goods and services. Both Ms Cooper and Mr Cooke accordingly agreed that the first issue I must consider was whether it was sufficiently inherently adapted to distinguish IGT’s goods and services as to fall within paragraph (a) of Branson J’s above-quoted analysis (and was thus capable of distinguishing them on that basis alone), or whether it fell within paragraph (c).
Both advocates noted the well known words of Kitto J[7] in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (at 514) in this regard, that:
[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[7] In effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.
Ms Cooper submitted that “if [the IGT Trade Mark] has any capacity to distinguish the designated goods and services it is minimal” because:
·     It “describes a gaming machine product that provides users with multiple ways of winning” and “is clearly a descriptive term that other traders might reasonably wish to use, without improper motive, to describe their own multiway functioning gaming machines”;
·     It “is an obvious contraction of ‘multiple ways’ and is descriptive of [the designated goods and services]”; and
·     It “is used generically by third parties to describe gaming machines that provide multiple way (sic) of winning through a multiway function”.
Ms Cooper based the above submissions on (a) a GOOGLE® search mentioned in her own declaration which she apparently conducted in August 2010 in relation to the words “multiway gaming machines” and (b) statements made by Tom Davidson, the “Intellectual Property Manager for [Ainsworth’s] Marketing division”, in his declaration. I do not however find this evidence, such that it is, necessarily supports Ms Cooper’s above submissions at all.
In particular, the results of Ms Cooper’s GOOGLE® search are not in evidence, save for “an extract from the website ranked highest in the results returned for this search” which is annexed to her declaration. The extract in question is effectively undated and is of unknown authorship, being from the website <en.wikipedia.org>. The word “multiway” (underlined below for ease of reference) appears four times in a single paragraph of the 19 page extract in the following context:
In Australia “poker machines” or “pokies” are officially termed Gaming Machines. Australian-style gaming machines frequently use video displays to simulate physical reels, usually five. These machines have additional bonusing and second-screen features such as free games and bonus levels. They also allow for multiple lines (up to 200) or multiple ways (up to 3,125) to be played.
On multiway games, players play the entire position of each reel instead of fixed lines or patterns. [Further details of these games are then given.] Other multiway games give you even more ways by using a 4x5 or 5x5 pattern, where there are up to 5 symbols in each reel, allowing for up to 1,024 and 3,125 ways to win respectively. Aristocrat calls these games Xtra Reel Power and Super Reel Power respectively. These games typically cost more than their 243 way Reel Power counterparts. Recently, IGT has also started to manufacture multiway games. Gaming machine manufacturer Konami Australia also made an alternative way of gaming by using patterns, where symbols pay adjacent to one another. Most of these games have a hexagonal reel formation, and much like multiway games, any patterns not played are darkened out of use. On both systems, scatter symbols still pay in the darkened areas just like standard machines where scatters don’t have to appear on a payline.
Taken at face value, all the unknown author of the above-quoted paragraphs is saying is that in addition to IGT one other manufacturer, Aristocrat, is manufacturing gaming machines capable of delivering one or more varieties of what the author terms “multiway games”. The author specifically says, however, that “Aristocrat calls these games Xtra Reel Power and Super Reel Power respectively”, not that Aristocrat itself calls them “multiway games”. The author does not say what IGT “calls” these games and it is not unreasonable, in my view, to speculate that IGT might be the only manufacturer using the actual word “multiway” in relation to those machines it makes which have the function the author describes. Indeed, IGT’s evidence is that it is the only gaming machine manufacturer using the word, whereas Ainsworth has not served any evidence indicating that Aristocrat, or any other manufacturer of gaming machines, is doing so.
Moreover, the Wikipedia® extract in question states that it “was last modified on 1 August 2010 at 17.21”. I am thus unable to say whether the above-quoted paragraphs were written before the 2006 priority dates of IGT’s opposed applications, or were perhaps written some time after the word “multiplay” had become known to the author because of IGT’s adoption and use of it.
Mr Davidson’s evidence does not take the matter any further. Mr Davidson, an employee of Ainsworth, has six years experience in the gaming industry and makes the following three statements regarding the word “multiway”:
·     “Based on my experience and involvement in the gaming industry, I am aware that many traders and purchasers of gaming machines understand ‘multiway’ as describing a type of gaming machine that offers multiple ways of winning. While they may also know that IGT sells products bearing IGT’s stylized logo (depicted below)[8], I believe that they understand the word ‘multiway’ as describing a type of gaming machine.”

(“the MULTIWAY Logo”)
·     “Gaming machines with a multiway function are a particular game type that use scattered arrays of symbols as opposed to line based arrays for winning combinations”; and
·     “Gaming machines with a multiway function are currently provided by both IGT and another trader in the gaming industry, Aristocrat Technologies Australia Pty Limited”.
[8] I mention this stylised trade mark is subject of IGT’s registration 1112391 in Classes 9, 28 and 41.
What traders or purchasers of gaming machines might understand to be the significance of the word “multiway” in relation to gaming machines does not of itself mean that the word lacks sufficient inherent adaptation to distinguish a particular manufacturer’s machines. Perhaps their understanding springs from the fact that IGT has promoted the word to traders or purchasers of gaming machines, as indeed IGT’s evidence shows it has done. Mr Davidson himself concedes these traders and purchasers “may also know that IGT sells products bearing [the MULTIWAY Logo]”.
It has been long accepted, of course, that a trade mark need not be entirely unsuggestive of the goods or services for which registration is sought. Indeed, whereas under the now repealed Trade Marks Act 1955 a mark was considered prima facie distinctive if it contained no “direct reference” to the goods or services it covered, even then it was said in the often quoted case of American Screw Co.’s Appn [1959] RPC 344 (at 346) that “direct reference corresponds in effect to aptness for normal description”. As for the lesser standard of being capable of distinguishing introduced with the Trade Marks Act 1995, current guidelines for Trade Mark Examiners published by IP Australia[9] indicate that “trade marks that are considered to be sufficiently inherently adapted to distinguish and are therefore acceptable without evidence of use” (original emphasis) include:
MOST COINED WORDS such as Surelock (Class 12), Clickfast (Class 6), Trakgrip (Class 12); and
EXPRESSIONS not in local common use in respect of the goods and/or services: …Muscle Machine (Class 28), Porky Bits (Class 29).
[9] Australian Trade Marks Office Manual of Practice and Procedure, Part 22, paragraph 4.1.
Further, the mere “understanding” of a trade mark’s descriptive implications does not in any event mean traders other than IGT are using, or would want or need to use, the unusual word “multiway” in relation to their own similar goods or services. I note in this regard that Anthea Gilmore, IGT’s Legal and Compliance Counsel since 2005, was able to say in March 2009 (in Gilmore 2) that:
I am not aware of other goods such as those being sold by [IGT], being marketed or described as MULTIWAY, and I believe that [IGT] has developed an exclusive reputation in respect of the MULTIWAY trade mark, which identifies and distinguishes the gaming machines sold by [IGT].
Nor is the fact that in August 2010 Mr Davidson himself uses the word “multiway” in an apparently generic manner in the phrase “Gaming machines with a multiway function” evidence that others in the trade are doing so. As was said by the Hearing Officer in Rimmington v Zen Do Kai Pty Ltd (2002) 57 IPR 127 (at 134):
This evidence, taken as a whole, does not convince me that the expression “Zen Do Kai” is in widespread use as a generic, descriptive term or that other traders would wish to use it in good faith. The mere fact that a person or entity may use a trade mark in a generic, descriptive manner, whether inadvertent or otherwise, does not mean that it has become publico juris or that it is automatically transformed from private property to a publicly available expression. In particular, I do not believe that persons who had a mutually beneficial association or relationship with a trade mark owner are entitled to apply the trade mark for their own exclusive benefit and then, without more, argue that the expression has become generic or descriptive. Something more is needed. It may be widespread use (in any event, wider than a few schools in a particular jurisdiction) or use over an extended period of time.
For IGT, Mr Cooke firstly submitted that the word “multiway” contained sufficient inherent adaptation to distinguish the relevant goods and services to qualify for registration on that basis alone. While valiantly maintaining throughout the hearing that the word had no descriptive significance whatsoever, (something which I do not accept and which, indeed, is contradicted by IGT’s own evidence), he supported his submission by noting it was an invented word and that it did not appear in the Macquarie Dictionary (4th edition). My own research does confirm the word is not listed in the (online) Macquarie Dictionary. However, I do note the word appears in the (online) Oxford English Dictionary with the following definition, albeit “chiefly” with reference to electric currents:
Chiefly Electr.
Having or involving more than two ways, routes, or channels; (of an electrical adaptor) capable of accommodating more than two plugs at once; (of a light switch) permitting a current to be switched on or off at any of three or more points.
On balance I find, as did the original examiner of IGT’s applications, that I am left in some doubt as to whether the IGT Trade Mark contains sufficient inherent adaptation to distinguish IGT’s goods and services from the goods and services of other traders as to be capable, on that basis alone, of so distinguishing them. Section 41(5) is accordingly applicable in this case. Bearing in mind the matters discussed above as to the extent of the mark’s inherent adaptation, I thus turn now to the considerations required by ss 41(5)(a)(ii) and (iii) of the Act.
As regards s 41(5)(a)(ii), that is use or intended use, Mr Cooke referred to the evidence in Gilmore 1 and Gilmore 2 indicating that IGT has already used its mark in Australia in relation to five versions of its gaming machines since filing the opposed applications in 2006. In particular, Ms Gilmore says that as at January 2009 IGT had “sold [a certain number of][10] gaming machines bearing the MULTIWAY trade mark” in Australia and had in addition “converted [a certain number of] gaming machine units under the MULTIWAY trade mark”. Mr Cooke’s repeated claims that the word “multiway” had no meaning at all in relation to the machines notwithstanding, I understand “converted” in this context to mean IGT replaced or altered the software within older machines already sold to Gaming Venues so that the machines were equipped with the MULTIWAY branded “feature”. This “feature” is described in numerous places in the supporting publicity materials annexed to the Gilmore declarations as, for example, “offering wins outside the traditional pay lines” (from a brochure promoting its TIBETAN PRINCESS branded machine) and “Features the exciting Multiway™ play style to give your players more chances to win” (from a brochure promoting its DIAMOND EXPRESS branded machine).
[10] Ms Gilmore has claimed this and other similar figures provided in her declarations “are sensitive economic data, dissemination of which would do harm to [IGT] and related companies” and I have accordingly avoided referring to them explicitly in this decision.
Although Ms Gilmore’s evidence thus indicates that in total [a certain number of] machines bearing the IGT Trade Mark were owned by Gaming Venues in Australia as of January 2009, this number is on the face of it relatively small if the Wikipedia® extract annexed to the Cooper declaration is accurate in stating that, “In 1999 the Australian Productivity Commission reported that Australia had nearly 180,000 poker machines…”. Nevertheless, Ms Gilmore says that, “The revenue received from the sales and conversions up to 14 January 2009 is [a certain amount]” and she provides a breakdown of this figure for the five named machines IGT had sold or converted. It is apparent from this breakdown that new machines were sold for an average of around $20,000. I accept that this figure is not insubstantial. By way of contrast, the cost of each conversion appears to have varied greatly, but the figures provided by Ms Gilmore indicate the cost of conversion was not particularly high.
Gilmore 1 confirms that “The MULTIWAY gaming machines are usually sold to gaming venues, such as clubs, hotels and casinos” (as mandated by Australian legislation) and annexed to the Gilmore declarations are examples of publicity materials in which the IGT Trade Mark is used and which have apparently been distributed or exposed to such venues through industry magazines, trade shows and “Buyer’s Guide[s]”.
Ms Cooper objected that these publicity materials more often than not show use of the MULTIWAY Logo rather than the IGT Trade Mark per se and, moreover, that use of both these marks is in any event always in conjunction with other IGT marks whose distinctiveness is not in issue. While these objections may have some merit as far as s 41(5)(a)(ii) of the Act is concerned, I nevertheless still consider the use shown to be significant in terms of s 41(5)(a)(iii), particularly given the relatively small and specialized market for IGT’s goods and their relatively high unit cost.
I do however note in passing that I reject Mr Cooke’s submission, which relied principally on the judgment of Jenkins LJ of the English Court of Appeal in Re Morny Ltd’s Trade Marks (1951) 68 R.P.C. 131 (“the Morny case”), that:
A fundamental error permuates (sic) Ainsworth’s submissions. That error is that Ainsworth has wrongly assumed that IGT’s applications are for MULTIWAY “in plain script”. To the contrary, IGT’s applications are for the word MULTIWAY, that is, for all methods of writing that word. In a trade mark application the use of block capitals is the conventional way of conveying that the mark is claimed for all methods of writing the word; it is not a way of conveying that only a word in “plain script” is claimed. (Original emphasis)
This submission overstates, in my view, the import of the Morny case. The case concerned expungement of a trade mark for non-use (as Mr Cooke noted) and Jenkins LJ was merely making the point that the owner of a mark registered in block capitals might rely on use of the mark in another, essentially similar, form to protect the registration. This is really no more than what s 7(1) of the Act[11] says in any event. I do not accept Mr Cooke’s contention that the Australian cases to which he referred[12] are authorities for any “broader application” of Jenkins CJ’s reasoning of the kind reflected in Mr Cooke’s above-quoted submission.
[11] Section 7(1) states: If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
[12] These were George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145 (at 150), Sassaby Inc v Janet Cosmetics Pty Ltd (2001) 54 IPR 425 (at 430) and ABB Asea Brown Boveri Ltd v ABB Grain Ltd [2001] ATMO 123 (at page 5), all of which concerned s 44 of the Act and where the issue was whether the applicants’ marks were substantially identical with, or deceptively similar to, the opponents’ registered marks despite being rendered in different scripts from the registered marks.
Be that as it may, taking into account the extent to which the IGT Trade Mark is inherently adapted to distinguish IGT’s goods, the relatively specialized market for, and cost of, those goods, the extent and manner of use the mark had enjoyed as of March 2009 and the absence of any cogent evidence that other traders in similar goods are using or would need to use the word “multiway”, I find on balance the IGT Trade Mark does qualify for registration under s 41(5) of the Act for all the goods in Classes 9 and 28 covered by IGT’s opposed applications.
I turn now to IGT’s services of interest in Class 41 as covered by its application 1112392. I note there is no evidence before me that IGT has ever used, or indeed has any intention to use, its mark for “entertainment services” involving gaming which are provided to the public generally. On the other hand, Ms Cooper’s submissions concentrated on IGT’s goods in particular and on the face of it the IGT Trade Mark might be considered less overtly descriptive in relation to IGT’s services than I consider it to be in relation to IGT’s goods. There being no convincing evidence before me suggesting I should find otherwise, therefore, I have decided the issue in IGT’s favour. In doing so I have also taken into account that in the absence of a successful appeal from this decision the IGT Trade Mark will most likely become registered shortly for IGT’s goods, that IGT has commenced use of its mark in relation to those goods and the fact that IGT has already registered the MULTIWAY Logo for, inter alia, the identical services.

In summary, I find that Ainsworth has not established its s 41 grounds of opposition.
Section 62(b)
The grounds based on s 62(b) of the Act relating to each of IGT’s applications are indicated in Ainsworth’s Notices of Opposition in essentially identical terms, as follows:
The Registrar accepted the application on the basis of evidence or representations that were false in material particulars.
Section 62(b) itself is set out below:
Application etc. defective etc.
62. The registration of a trade mark may be opposed on any of the following grounds:
(a) …
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
The essence of Ms Cooper’s submission under this ground was that, whereas the IGT Trade Mark is rendered in plain script, “much of the evidence filed in support of withdrawing the distinctiveness objection[13]…related only to the MULTIWAY Logo” and the distinction between these two marks “appears to have been overlooked in the presentation of the evidence”. As I indicated at the hearing, I do not accept this submission.
[13] That is, the evidence filed with the Examiner of IGT’s applications, namely the Gilmore 1 and Gilmore 2 declarations.
While I also reject Mr Cooke’s submission that the decision in the Morny case is relevant to this issue, I do agree with him that the Gilmore declarations show numerous examples of IGT’s use of the word “multiway” written in different scripts (including block capitals), in addition to the MULTIWAY Logo format. I also agree with Mr Cooke’s submission that “by annexing many different examples of IGT’s use of MULTIWAY written in different ways it can hardly be said that that fact was overlooked”. As indicated previously, even if it could be said that IGT’s use of the word “multiway” in forms other than in plain capitals, (such as the MULTIWAY Logo), was of no relevance at all with respect to s 41(5)(a)(ii) of the Act, it would in any event still be a relevant “other circumstance” in terms of s 41(5)(a)(iii) in my view.
Moreover, as highlighted by Mr Cooke[14], even if I were to accept that the evidence IGT filed in support of its applications was inadvertently misleading in some way, (which I do not), this would not necessarily mean the evidence was “false in material particulars” in any event.
[14] Relying on Time Warner Entertainment Company, LP v Stepsam Investments Pty Ltd [2002] ATMO 93 (at p.11) and distinguishing Shawky & Yehia El Hgar v Sam Ashry [2002] ATMO 103 (at pp.5-9) and Link Recruitment Pty Ltd v Link Employment and Training Inc (2006) 69 IPR 614 (at [12] to [32]).
I thus find that Ainsworth has not established its s 62(b) grounds of opposition.
In summary, I find that neither of the opposition grounds Ainsworth pressed at the hearing has been established.
Opposition to the Ainsworth Trade Mark
As mentioned above, IGT pressed grounds based on ss 41, 44 and 60 of the Act.
The parties served and filed evidence in relation to the opposition to Ainsworth’s application as follows:
Evidence in Support
▪ Statutory Declaration by Melissa Louise Preston made 7 January 2009, with Annexure A (see paragraph 58 below)
▪ Statutory Declaration by Anthea Gilmore made 19 March 2009, with Annexures A to M
Evidence in Answer
▪ Statutory Declaration by Michelle Allison Anita Cooper made 20 January 2010, with Exhibits MAAC-1 and MAAC-2
▪ Statutory Declaration by Tom William Hamilton Davidson made 6 April 2010, with Exhibits TWHD-1 and TWHD-2
Evidence in Reply
▪ Statutory Declaration by Anthea Gilmore made 5 November 2011, with Annexure A
Opponent’s supplementary evidence
▪ Statutory Declaration by Amy Denise Reynolds made 31 March 2010, with Annexures A to G
Annexure A to Ms Preston’s declaration consists of a copy of the same Statutory Declaration by Anthea Gilmore made on 16 December 2008 that I referred to earlier in this decision as “Gilmore 1”. I confirm that I will continue to refer to it hereafter as Gilmore 1. Ms Preston is an employee of the firm acting for IGT and her declaration, apart from annexing Gilmore 1, contains no direct evidence per se. For this reason Ainsworth’s attorney, Ms Cooper, again submitted that the evidence was hearsay and should be given no probative weight. However, for the reasons discussed in paragraphs 20 to 22 above I confirm that I do not accept this submission and that I have taken the contents of Gilmore 1 at face value in deciding the opposition.
I confirm, too, that the Statutory Declaration made by Ms Gilmore on 19 March 2009 is the original of the declaration I referred to earlier as “Gilmore 2”. Again, I will continue to refer to this declaration hereafter as Gilmore 2. Finally, I will refer as necessary hereafter to the Statutory Declaration made by Ms Gilmore on 5 November 2010 as “Gilmore 3”.
The Statutory Declaration by Amy Reynolds made on 31 March 2010 was, I understand, served on Ainsworth’s attorneys by email that day, that is two working days before the hearing itself and more than four months after the formal evidence stage of the proceedings had been completed. It does not address any of the matters raised in Ainsworth’s evidence, but rather purports to contain evidence in support of IGT’s s 41 ground of opposition, which ground was not addressed at all in any of IGT’s previously served evidence. Unsurprisingly, Ms Cooper objected to this “supplementary” evidence being admitted.
Rather than postpone hearing of the substantive opposition, I agreed to firstly hear the parties’ submissions on the evidence’s admissibility and to reserve my decision on the issue whilst then going on to hear the parties’ submissions in relation to the opposition itself. In doing so I indicated that, if my decision was to allow the Reynolds declaration into evidence and its contents appeared likely to be critical to the success of IGT’s s 41 ground, I would inform Ainsworth’s attorneys accordingly and allow Ainsworth the opportunity to serve evidence in response and to make further written submissions on the s 41 ground.
As discussed below, I have not found the Reynolds declaration critical to the success or otherwise of IGT’s opposition. Without now canvassing in detail the arguments the parties put to me as to its admissibility, therefore, I have decided to allow the evidence in so that it cannot be said I have not considered IGT’s case at its highest. I do nevertheless note that, quite apart from the low probative value of the evidence itself, no satisfactory reason was given as to why the evidence in question could not have been collected earlier and was not served along with the rest of IGT’s evidence in support in early 2009.
Section 41
The ground(s) based on s 41 of the Act is/are indicated in IGT’s Notice of Opposition as follows:
The [Ainsworth] Trade Mark is not capable of distinguishing [Ainsworth’s] goods and services (sic) from those of other persons and, therefore, the [Ainsworth] Trade Mark is not a registrable trade mark within the meaning of Section 41 of the Act.
…
The [Ainsworth] Trade Mark is not inherently adapted to distinguish the goods and services (sic) of the Applicant from those of other persons and, therefore, the [Ainsworth] Trade Mark is not a registrable trade mark within the meaning of Section 41 of the Act.
Section 41 itself is set out in paragraph 24 above and I proceed according to Branson J’s discussion of its operation as set out in paragraph 25 above. The first issue I must consider is accordingly the extent (if any) to which the Ainsworth Trade Mark is inherently adapted to distinguish Ainsworth’s goods and to assess whether it falls within paragraphs (a), (b) or (c) of her Honour’s above-quoted analysis.
Mr Cooke began by arguing that the Ainsworth Trade Mark did not contain any inherent adaptation to distinguish Ainsworth’s goods and thus fell within paragraph (b) of Branson J’s analysis. I mention that in the below quotes from Mr Cooke’s written submissions I understand his references to “MULTI PLAY” (sometimes with, and sometimes without, inverted commas) to mean “the words ‘multi play’” and his references to “the MULTI PLAY logo” to mean the Ainsworth Trade Mark:
“MULTI PLAY” is entirely descriptive of gaming machines that offer multiple plays (or hands), or multiple options or methods for playing. This is plainly evident from the ordinary meaning of the words in the context of the designated goods. [References to Macquarie Dictionary entries for the prefix “multi” and the word “play” are then made.]
[The Reynolds declaration] further demonstrates the descriptive nature of MULTI PLAY. [References to GOOGLE® searches conducted by Ms Reynolds are then made.] This evidence demonstrates that MULTI PLAY is a descriptive phrase that is required for use and has been used by other traders in the gaming industry.
IGT submits that because MULTI PLAY is entirely descriptive and has no inherent adaptation to distinguish gaming machines including poker machines, the “get-up” in the MULTI PLAY logo is not sufficient to warrant this mark being considered under s 41(5) of the TM Act. Rather, Ainsworth’s Application should be rejected under s 41(2) of the TM Act.
If the delegate is unable to decide the question then s 41(5) and s 41(6) apply. If this is the case, then IGT submits that the delegate ought to reject Ainsworth’s Application under s 41(6) on the basis that the MULTI WAY logo is not to any extent inherently adapted to distinguish the designated goods and having regard to the lack of evidence of use of the mark before the priority date…
I note this submission is on the face of it somewhat at odds with Branson J’s analysis. The proper course for me to take if I were of the view that the plain words “multi play” alone contained no inherent adaptation to distinguish Ainsworth’s goods would be to consider whether the mark as applied for, that is the combination of the words “multi play” and their get up, contained any inherent adaptation, and not to simply omit this consideration based on my assessment of the words alone. If I were then to conclude the mark as applied for contained some inherent adaptation to distinguish Ainsworth’s goods but was left in doubt whether, on that basis alone, the trade mark was actually capable of so distinguishing them I would need to consider the matters mentioned in s 41(5)(a). If, on the other hand, I was sure the mark as applied for was “not to any extent inherently adapted to distinguish” Ainsworth’s goods, s 41(6) would apply.
I confirm that I do consider the Ainsworth Trade Mark to have at least some inherent adaptation to distinguish Ainsworth’s goods. I must now therefore decide whether it is sufficiently inherently adapted as to fall within paragraph (a) of Branson J’s above-quoted analysis (and is thus capable of distinguishing them on that basis alone), or whether it falls within paragraph (c) (and thus that the matters mentioned in s 41(5)(a) need be considered).
On the assumption that I considered the words “multi play” alone contained no inherent adaptation to distinguish Ainsworth’s goods but that the get up gave the mark as a whole some inherent adaptation, Mr Cooke continued:
Alternatively, if the delegate is of the view that the “get up” in the [Ainsworth Trade Mark] is sufficient to give the mark a low level of inherent adaptation to distinguish Ainsworth’s designated goods…then, for the reasons discussed below, Ainsworth’s Application should nonetheless be rejected.
The reasons Mr Cooke proffered were that:
·     The mark as a whole “is at the very low end of the scale of inherent adaptation to distinguish”;
·     “Ainsworth has not filed any evidence of use or any intention to use the MULTI WAY logo before the filing date of Ainsworth’s Application. The evidence of Ainsworth’s use in Australia…appears to be restricted to two industry trade fairs that post-date the filing date…”; and
·     “That evidence is that the MULTI WAY logo was used on the Ambasador SL machine with other trade marks” and “…there is no evidence of the extent of Ainsworth’s use, or intended use, of the MULTI WAY logo.”
In passing I would make two comments in relation to these reasons. Firstly, for s 41(5) purposes it is the capacity of a mark to distinguish, possibly at some future time, that is in issue and it is well accepted that use after the mark’s filing date is relevant to this enquiry[15].
[15] See for example Austereo Pty Ltd v DMG Radio (Aust) Pty Ltd (2004) 61 IPR 257, per Finn J at [30] to [33].
Secondly, the Ainsworth Trade Mark was accepted for registration by the Examiner at first instance on a prima facie basis and, at the time Ainsworth prepared and served its evidence, IGT had not served any evidence in support of its s 41 ground. IGT only attempted to do so with the Reynolds declaration, which was served on Ainsworth’s representatives just two days before the hearing itself. Until then Ainsworth was entitled to assume that IGT would not be pressing the s 41 ground mentioned in its Notice of Opposition, just as has transpired with the grounds under ss 39, 42, 43, 58, 58A, 59, 61, 62 and 62A listed in the Notice. In this regard it is worth noting the words of the Hearing Officer in Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430 (at 433):
[T]he mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application.
Or, as it was put by another Hearing Officer in similar circumstances in Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 (at 181):
If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established (notwithstanding the fact that a notice has been served and filed).
Moreover, as discussed in paragraphs 60 and 61 above, were it the case that the contents of the Reynolds declaration were likely to prove critical to my decision in IGT’s opposition Ainsworth would have been given the opportunity to lodge further relevant evidence and make further submissions accordingly.
That said, I do not believe it is necessary in this instance to embark upon the enquiries indicated by s 41(5)(a) in any case. In particular, I do not find the evidence contained in the Reynolds declaration sufficiently cogent as to upset the Examiner’s conclusion that the Ainsworth Trade Mark is sufficiently inherently adapted to distinguish Ainsworth’s goods to qualify for registration on that basis alone.
Ms Reynolds is a lawyer employed by the firm representing IGT and attests to internet searches she conducted on 25 and 30 March 2011 using the GOOGLE® search engine on the words “multi play”, “multi play gaming machine” and “multi play poker”. Printouts of the first 40 results, the first 10 results and the first 20 results respectively of these searches are annexed to her declaration. Although it is impossible to glean any meaningful information from the annexed brief summaries of the results of the searches, I do note that the great majority of websites identified appear to me to have no relevance to gaming machines or to any of the other goods covered by Ainsworth’s application.
Extracts from four websites located by Ms Reynold’s searches are also annexed to her declaration. None however shows to my satisfaction usage of the words “multi way” by manufacturers of, traders in, or purchasers of Ainsworth’s goods.
The first extract is of the “Terminology and Definitions” pages of the website < which commences with the words, “Below are some common terms used in relation to gaming and wagering…” By whom, in what contexts and for how long these “common terms” may have been used is not said. Nor is it apparent when the website pages were written, although it appears to have been after the 5 December 2007 filing date of Ainsworth’s application since the pages end with “©2010 Tatts Group Limited”. The single reference to the words “multi-play” in the three page extract is in the sentence “Today [gaming machine] technology encompasses…Multi-play games…”
The second extract annexed to the Reynold’s declaration is from the website <en.wikipedia.org> and is an entry from the Wikipedia® on-line encyclopedia titled “Video Poker”. The word “multi-play” appears twice in a single paragraph of the 7 page entry, which is of unstated authorship. The entry itself ends with the words, “This page was last modified on 16 March 2011 at 18:02”. For the reasons canvassed in paragraphs 30 to 32 above I am unable to attribute any significant probative weight to this usage.
The third extract is an article titled “How To Play A Multi Play Video Poker Machine” from the website < The two page article is undated and, once again, of unstated authorship. It includes the word(s) “multi-play” or “Multi-play” some five times, commencing with the sentences “Multi-play video poker machines are becoming increasingly popular” and “One kind of game that you may notice [in a casino] is the Multi-way video poker machine”. For the reasons previously indicated I am again unable to attribute any significant probative weight to this usage.
The fourth and final extract is a one page article titled “Single Vs Multi-hand Video Poker” from the website < in which the words “multi play” is used five times, apparently with the same meaning as the words “multi-hand”. This extract suffers from the same deficiencies as the other three extracts discussed above and, like them, does not satisfy me that other traders in gaming machines are using the words “multi play” or, to paraphrase the words of Kitto J in the Clark Equipment case quoted in paragraph 27 above, would “think of the word[s] and want to use [them] in connexion with similar goods in any manner which would infringe [a registration to mature from Ainsworth’s application]”.
IGT has accordingly not established its s 41 ground of opposition.
Section 44
The ground based on s 44 of the Act is indicated in the Notice as follows:
The [Ainsworth] Trade Mark is deceptively similar to or substantially identical with one or more earlier-filed trade mark applications or registrations that cover similar, or closely related, goods and/or services. Therefore, registration of the [Ainsworth] Trade Mark would be contrary to Section 44 of the Act.
IGT relies in particular on s 44(1) of the Act, which is set out below:
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4)[16], an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
[16] Subsections (3) and (4) are not relevant in this case because Ainsworth does not claim honest concurrent use or prior continuous use or that other circumstances are relevant to IGT’s s 44(1) ground.
Note 3: For priority date see section 12.
As the basis for its s 44(1) ground IGT relies on its pending applications 1102287 in Classes 9 and 28 and 1112392 in Classes 28 and 41, both of which are for the trade mark MULTIWAY and details of which are set out in paragraph 2 above. Both of these applications have priority dates earlier than the 5 December 2007 of Ainsworth’s application 1213785.

Ainsworth does not dispute the fact that its application covers “similar goods”[17] to those covered by IGT’s applications.
[17] As defined in s 14(1) of the Act, that is the same goods or goods of the same description.
IGT does not claim that the Ainsworth Trade Mark is “substantially identical” with the IGT Trade Mark. The sole question for determination, accordingly, is whether the parties’ marks are “deceptively similar”. In this regard s 10 of the Act states:
Definition of deceptively similar
10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
It is well established that in assessing any resemblance the trade marks should not be compared side by side[18]. Rather, they are to be considered according to the impression that persons of ordinary intelligence would have based on recollection of the earlier mark (with due allowance for imperfect recollection) and the impression such persons would get from the later mark. As Dixon and McTiernan JJ put it[19]:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought…The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or aural description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
[18] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407; 1b IPR 523 (at CLR 415; IPR 529)
[19] Australian Woollen Mills Ltd v F.S. Walton & Co (op. cit. at 658)
In Registrar of Trade Marks v Woolworths Limited[20] (“the Woolworths Metro case”) French J (as he then was) said of deceptive similarity:
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.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
[20] Registrar of Trade Marks v WoolworthsLimited (1999) 45 IPR 411 (at 428)
After setting out a number of general principles in the comparison of trade marks that emerge from these and other cases, Mr Cooke submitted:
Applying the principles set out above, a number of observations favour a finding of deceptive similarity between the MULTI PLAY logo and the MULTIWAY trade marks. Taking into account the imperfect recollection a person may have of the competing marks:
(a) the essential feature of both marks are (sic) words;
(b) the emphasis in both marks, both visually and aurally, is in respect of the first syllable (sic) “Multi”;
(c) both trade marks are very similar aurally.
In addition, the environment in which the goods bearing the competing trade marks are used, being casinos, pubs and the like where alcohol is consumed by the users, supports a finding of deceptive similarity: Gilmore 3, Annexure A.
For these reasons it is submitted that the delegate ought to refuse Ainsworth’s Application under s 44 of the Act.
For Ainsworth, Ms Cooper submitted, inter alia, that:
·Visually
The Ainsworth Trade Mark was more likely to be recalled as a two word mark, whereas the IGT Trade Mark was more likely to be recalled as one, continuous word;
The overall shape of the Ainsworth Trade Mark, being square and squat, was also a memorable feature and was a significant point of differentiation from the IGT Trade Mark;
The graphics in the Ainsworth Mark were a further point of differentiation from the plain word mark subject of Ainsworth’s applications.
·Aurally
Visual impression was more important than aural impression in the context of gaming machines and this was reflected in the evidence of both parties, which indicated both parties’ machines were predominately promoted via visual means such as through advertising in trade magazines, on the parties’ websites, in brochures and in displays at trade shows;
The prefix “multi” was relatively common and, as searches exhibited with the Cooper declaration conducted on 19 January 2011 illustrated, then appeared some 175 times in pending or registered marks in Classes 9 and 28. Moreover, the MULTIWAY Logo of IGT was already registered alongside marks including MULTISTAR, MULTISUIT, MultiPower, Multi King, Multi Magic and MULTILINK registered in the names of two other parties, notwithstanding all covered gaming machines and none relied upon use or other special circumstances to achieve coexistence;
While the elements “Play” and “WAY” rhymed, in the context of the marks as wholes “the former is an additional word, whereas the latter is the suffix to one, continuous word. Furthermore, both are well recognized words with very different meanings.”
·The “idea” of the Marks
While the “idea” of the marks might be an important consideration, this was only where the marks actually looked and sounded alike. Here the marks did not and, in any event, the common words “way” and “play” did not have a similar meaning.
·The Nature of the Goods
The parties’ evidence confirmed gaming machines were sophisticated and expensive goods, costing in the order of $20,000 each. Care might therefore be expected in their purchase.
·The Trade Channels for the Goods
The parties’ evidence indicated gaming machines were promoted via materials and means aimed specifically at Gaming Venues and sold to those venues through direct dealings with an Ainsworth (or IGT) sales representative. Negotiations were entered into and written agreements signed. The purchase was therefore an informed, considered decision.
After considering both Mr Cooke’s and Ms Cooper’s submissions in the light of the matters highlighted with approval by French J in the Woolworths Metro case[21], I find that I am not satisfied there is “a real tangible danger of deception or confusion occurring” in the relevant market if the parties’ respective marks are allowed to coexist. Taking into account “the circumstances in which the marks will be used, the circumstances in which the goods…will be bought and sold and the character of the probable acquirers of the goods” I do not on balance believe there is “a real likelihood that [probable acquirers of Ainsworth’s goods] will wonder or be left in doubt about whether the two sets of products…in question come from the same source”.
[21] See paragraph 88 above.
IGT has accordingly not established its s 44 ground of opposition.
Section 60
The ground based on s 60 of the Act is indicated in IGT’s Notice of Opposition as follows:
The [Ainsworth] Trade Mark is substantially identical with, or deceptively similar to, one or more of [IGT’s] trade marks which have acquired a reputation in Australia, as a result of which use of the [Ainsworth] Trade Mark is likely to deceive or cause confusion contrary to Section 60 of the Act.
As acknowledged by Mr Cooke at the hearing, Ainsworth’s application was filed after s 60 was amended by the Trade Marks Amendment Act 2006 (“the Amending Act”) to remove any threshold requirement that the trade marks under consideration firstly be found to be “substantially identical” or “deceptively similar”. Insofar as IGT’s s 60 ground as set out in its Notice of Opposition refers to this former requirement it is accordingly misconceived. Mr Cooke therefore sought to argue this ground based on s 60 as amended.
Ms Cooper objected that I should not allow IGT to amend its s 60 ground to reflect the changes introduced by the Amending Act because, as she put it:
Once the Opposition period has expired, it is not possible to expand the grounds of Opposition as stated. Accordingly, we submit that in order for this ground to be made out, [IGT] must establish as a threshold issue that [Ainsworth’s] MULTI Play & Device mark is substantially identical with, or deceptively similar to, a relevant mark of [IGT].
As nothing turns on the issue in this case, however, I do not believe it is necessary to formally address it in this decision and I proceed on the basis that IGT need only establish use of the Ainsworth Trade Mark would offend against s 60 as amended.
That said, section 60 as amended is set out below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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 and 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.
Mr Cooke submitted that IGT’s “MULTIWAY trade mark” had, through use, acquired the requisite reputation in Australia as at the 5 December 2007 priority date of Ainsworth’s application. I confirm I understand the term “MULTIWAY trade mark” in this context to mean use of the word “multiway” as a trade mark in any form, whether as plain block letters, by way of the MULTIWAY Logo, or otherwise and, like Mr Cooke, I will hereafter refer to these various usages collectively as use of “the MULTIWAY trade mark”.
As with IGT’s s 44 ground discussed above, what needs to be considered in the case of s 60 is the notional use that might be made of the Ainsworth Trade Mark rather than the actual manner in which it may have been used in the past. The issue is whether such use would be likely to deceive or cause confusion in the relevant trade in light of the reputation of the MULTIWAY trade mark as at 5 December 2007.
Evidence concerning the use and reputation of the MULTIWAY trade mark, such that it is, is contained in Gilmore 1 and Gilmore 2. Specific matters attested to by Ms Gilmore which occurred before 5 December 2007 and which might be considered relevant to the mark’s claimed reputation are summarised below:
·Two types of gaming machines “branded with the MULTIWAY trade mark” were “released into the Australian marketplace”, a machine named DIAMOND EXPRESS on 23 August 2007 and a machine named ORIENTAL TREASURES on 15 September 2007;
·A third such machine (named TIBETAN PRINCESS) “was released into the New South Wales marketplace” on 17 September 2007;
·As at 16 December 2008 (when Gilmore 1 was declared), [a certain number] of the three above-named gaming machines had “been sold by reference to the MULTIWAY brand and [were] presently operative in the Australian marketplace”. (No information is given as to the number as at 5 December 2007);
·“The revenue received from the sales and conversions [of the three above-named gaming machines] up to 14 January 2009 [was a certain amount]”. (Again, no information is given as to the revenue as at 5 December 2007);
·6,000 Buyer’s Guides produced in 2006 and 7,500 Buyer’s Guides produced in 2007 apparently contained the MULTIWAY trade mark on one of their 24 pages;
·As at 19 March 2009 (when Gilmore 2 was declared), advertisements for the DIAMOND EXPRESS machine, in which the MULTIWAY trade mark apparently featured incidentally, had been placed in Australian Hotelier Magazine. (No information is given as to whether any were placed prior to 5 December 2007);
·As at 19 March 2009, 6,000 flyers for the three above-named gaming machines had been produced, in which, again, the MULTIWAY trade mark apparently featured incidentally. (Again, no information is given as to the number as at 5 December 2007);

101. In support of the above matters Ms Gilmore has annexed to her declarations:
·copies of a small number of flyers or advertisements printed or published in the period August to November 2007 featuring various gaming machines and in which the MULTIWAY trade mark appears incidentally;
·copies of single page extracts from the “2006 Buyer’s Guide Edition 1”, “2007 Buyer’s Guide Edition 2”, “2007 Club Managers’ Association Buyer’s Guide”, and “2006, 2007 and 2008 Australasian Gaming Expo Buyer’s Guides” (being pages featuring various gaming machines and in which the MULTIWAY trade mark appears incidentally);
·copies of images, photographs and screenshots of various gaming machines, (in which, it must be said, the MULTIWAY trade mark can barely be made out amidst a profusion of other words, numbers and symbols. That said, to the extent this material is intended, as Ms Gilmore puts it, to “exemplify the strong use of the mark in the context of in-venue advertising”, it is not relevant since the “in-venue advertising” takes place after the machines have ceased to be in the course of trade.); and
·copies of photographs taken at the Australasian Gaming Expo in 2007 and “Club Managers’ Association event in 2007” showing IGT’s stands and displays, which apparently include advertisements for IGT’s DIAMOND EXPRESS and ORIENTAL TREASURES gaming machines and, (incidentally, as I understand it), the MULTIWAY trade mark. (I mention I am unable to identify either the MULTIWAY trade mark or the DIAMOND EXPRESS trade mark in these photographs.)

I am unable to ascertain from the information and materials in Gilmore 1 and Gilmore 2 when IGT claims to have first used the MULTIWAY trade mark in Australia. What is clear, nevertheless, is that the first gaming machine “branded with the MULTIWAY trade mark”, as Ms Gilmore puts it, was the machine named DIAMOND EXPRESS and this machine was “released into the Australian marketplace” on 23 August 2007, this being just under 15 weeks before the 5 December 2007 priority date of Ainsworth’s application.

103. I cannot assume that all of the three above-named gaming machines which had been “released into the Australian marketplace” as at 16 December 2008 when Gilmore 1 was declared (and which were equipped with the feature designated by the MULTIWAY trade mark) had in fact been “released” as at the 5 December 2007 priority date of Ainsworth’s application. Even if I could, this would still constitute a very small number in the context of the market as a whole in my estimation[22]. I likewise have no information before me as to how and in what numbers any of IGT’s relevant advertising and promotional materials may have been distributed before the priority date. It is also the case, of course, that essentially all of these advertising and promotional materials are for particular gaming machines and only feature the MULTIWAY trade mark incidentally thereto.
[22] Cf paragraph 41 above, wherein it is mentioned the Australian Productivity Commission apparently reported that Australia had nearly 180,000 poker machines in 1999.
104. I am thus unable to say whether the MULTIWAY trade mark in fact enjoyed the kind of reputation in the trade contemplated by s 60 as at the relevant date (or at all). Nor am I able to speculate on the issue. As was noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd[23]:
[23] (2003) 59 IPR 619 (at 624)
The reputation in Australia cannot be assumed — it must still be established as a question of fact — per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 ; 106 ALR 465 ; 23 IPR 193.

105. I accordingly find that IGT has not established its s 60 ground.
106. In summary, I find that none of the opposition grounds IGT pressed at the hearing has been established.
Decision
107. I have found that none of the opposition grounds pressed by Ainsworth or IGT has been established. I have accordingly decided that both parties’ opposed trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice (or notices) of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued.
Costs
108. Both parties made a claim for costs and in this regard both Mr Cooke and Ms Cooper agreed it was reasonable in this case to treat IGT’s two opposed applications as if they were a single application, since no additional evidence needed to be prepared or considered. That said, since neither party has been successful in its opposition(s) I have decided not to award costs on this occasion.
Michael Kirov
Hearing Officer
Trade Marks Hearings
24 June 2011

[2011] ATMO 53

24 June 2011

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Statutory Interpretation

Legal Concepts

Procedural Fairness

Statutory Construction

Judicial Review

Delegate:	Michael Kirov
Representation:	Ainsworth: Michelle Cooper and Sean McManis of Shelston IP IGT: Julian Cooke of Counsel, instructed by Amy Reynolds of Blake Dawson
Decision:	2011 ATMO 53 1102287 & 1112392: s52 oppositions – sections 41 and 62(b) pressed – trade mark capable of distinguishing IGT’s goods and services; acceptance not based on false evidence or representations. Oppositions not established. 1213785: s52 opposition – sections 41, 44 and 60 pressed – trade mark capable of distinguishing Ainsworth’s goods; trade marks not deceptively similar; insufficient reputation to invoke s 60. Opposition not established.