Airsis Pty Ltd v the Hearst Corporation and King Features Syndicate

[1993] ATMO 8

trade marks act 1955

decision of a delegate of the registrar of trade marks

Re:Opposition by THE HEARST CORPORATION and KING FEATURES SYNDICATE, INC to Trade Mark Application No. 533126 in the name of AIRSIS PTY LTD

Application number 533126 was lodged on 24 April 1990 in the name of AIRSIS PTY LTD ("the applicant").  The application for the word mark MANDRAKE, subsequently represented in the form shown below, was advertised in the Official Journal of 31 January 1991 for the goods, "Men's women's and children's clothing," in Class 25.

Notice of opposition to the mark's registration was lodged on 30 April 1991 by THE HEARST CORPORATION and KING FEATURES SYNDICATE, INC (together, "the opponents").  The main grounds of the opposition, as stated in the notice and as later expounded at the hearing, are based on claims of proprietorship under s.40 of the Act, and under s.28 because of alleged deception and confusion owing to the reputation of the opponents' own mark, and that the present mark's use by the applicant was contrary to law and not entitled to protection in a Court of Justice.

The opponents' attorney advised that their evidence in support was served on the applicant on 22 July 1991.  The evidence was lodged at the Office on 1 August 1991.  Proper service was not disputed at the time but the applicant's attorney did refer to possible late service of the evidence in submissions made in writing to me as the Registrar's delegate at the hearing.  I will further discuss these allegations later in this decision.

The evidence in support comprised a Statutory Declaration by Joseph C. Hagan dated 30 April 1991 together with Exhibits JH1 to JH5.

The applicant did not lodge any evidence in answer.

The opponent requested a hearing and the matter was set down before me as the Registrar's delegate in Sydney on 22 October 1992.  Representing the opponent was Mr Richard Cobden of counsel and Ms Kathy Sidoti of Corrs Chambers Westgarth, solicitors.  The applicant was not represented at the hearing but relied instead on submissions in writing by its attorney, Mr Albert Terry of Bowdens, lawyers.

As the essential grounds of the opposition are based on sections 28 and 40 of the Act, claiming that use of the mark was likely to deceive or confuse, and that the applicant is not entitled to claim to be proprietor of the mark, I will deal with these grounds in turn.

Section 40

The provisions of this section, so far as is relevant here, are that:

A person who claims to be the proprietor of a trade mark may make application to the Register for registration of that trade mark in Part A or Part B of the Register

Mr Justice McGarvie, at first instance in Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 explained what is meant by proprietorship of a mark in the following way:

The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203; Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark.

...

In considering who, within s40(1) of the Act, was at the time of Settef's application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.

A successful claim to proprietorship in a mark (except where there has been no use at all of the mark) thus depends on the ability of the person to demonstrate first use in Australia.  Further, the use relied on must be shown to be for the purpose of indicating or so as to indicate a connection in the course of trade between the specified goods and that person: see section 6 of the Act and W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182 at 191; Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 at 271.

Mr Hagan, in his declaration tendered as evidence in support, detailed the history of the comic strip character and trade mark, MANDRAKE THE MAGICIAN, and that of the comic strip's widespread publication, both internationally and in Australia - the latter running from 1936 - evidence of overseas copyright and trade mark registrations.  He said that the mark had consequently achieved a valuable and substantial reputation both in Australia and overseas.  None of the registrations cover Class 25, the class of the application under opposition.

In his submission, Mr Cobden said that the opponents claimed proprietorship in a broad sense.  He said that the Australian public was accustomed to character merchandising and referred here to Pacific Dunlop Ltd v Hogan (1989) 14 IPR 398. He said that, on appeal in that case, Burchett J said that it need not follow that the owner of the character involved should be involved in the manufacture of the goods in question and the question was as to whether a "false message" was conveyed by the use of whatever aspects of the character which was allegedly infringed. Mr Cobden said that the public would relate use of the word MANDRAKE in a variety of contexts with the comic strip character owned by the opponents. He further referred to the decision in Conagra Inc v McCain Foods (1992) AIPC 90 - 892, where Lockhart J had held that it was now not necessary for a plaintiff, in order to maintain a passing off action, to actually carry on business or sell goods in Australia. This was providing that it had the necessary passing off type reputation earned outside this country and which had become known to Australian travellers or through international trade reputation generally. This decision applied to goods but the principle applied equally to merchandising.

In his written submission, Mr Terry pointed to the fact that the opponents had not produced evidence of any usage of the word MANDRAKE or MANDRAKE THE MAGICIAN in Australia or in any other country of the world with respect to items of clothing.  He said further that the opponents had produced no statutory claims in respect of clothing or publications in Australia and was therefore not appearing to dispute the applicant's claims to proprietorship of the mark for clothing in the present instance.

In considering this ground of the opposition, I am satisfied that the opponents have gained a considerable reputation in this country with respect to the words MANDRAKE THE MAGICIAN and, to a lesser extent, the word MANDRAKE for a comic strip character.  The question that remains is whether this reputation extends to the latter word with respect to "Men's, women's and children's clothing", the goods of the subject application.  I think it is significant that, in pursuing the argument of character merchandising, the opponents have not presented any evidence of such a practice for the character MANDRAKE THE MAGICIAN in Australia, or overseas, or its involvement with any manufacture or sale of clothing of any kind.  Thus the principle highlighted in the Conagra case, supra, of a reputation gained outside this country for the goods in question or, by implication, for character maerchandising does not apply here.  I think it would be unlikely, in the absence of any history of such merchandising, that the public would infer a connection in the course of trade between the present mark and the opponents.  This is more likely the case given that MANDRAKE THE MAGICIAN's star is (apparently) on the wane and he has been replaced in the public's imagination by other, increasingly less durable, heroes who have greater contemporary marketability, particularly to today's youth.

In summary, then, I find that the opponents have not displaced the applicant's claim to proprietorship in the subject mark for the specified goods.  This ground of the opposition is therefore dismissed.

Section 28

The provisions of this section of the Act reads as follows:

A mark -

(a) the use of which would be likely to deceive or cause confusion;
     (b) the use of which would be contrary to law;
     (c) which comprises or contains scandalous matter; or

(d) which would otherwise be not entitled to protection in a court of justice,

shall not be registered as a trade mark.

The test to be applied under paragraph (a) of these provisions, on which the opponent partly relies, has been well established by cases such as Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 608, where the High Court said:

Registration should be refused if it appears that there is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case the two products come from the same source.

Following the High Court decision in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Ltd 18 IPR 385 (the Moo case) the Registrar now follows the practice as laid out in the decision of Hearing Officer Homann in Titan Manufacturing Co v John Terrence Coyne 22 IPR 613 - that is that paras (a) and (d) of s.28 should be read together. This means that, should I find that the marks are likely to deceive or cause confusion, then it will also be necessary to find whether there has been blameworthy conduct on the part of the applicant to disentitle the mark to protection in a court of law.

At the hearing, Mr Cobden referred to an Office decision by Assistant Registrar Farquhar in the case of The Hearst Corporation v Pacific Dunlop 21 IPR 587 (the Phantom decision).  In that case where it referred to the s.28 matter, it was held that the Australian public was well aware of modern merchandising practices.  He said that the decision turned on two points.  Firstly, the word PHANTOM was a word of ordinary meaning whereas, in the present instance, the word MANDRAKE was not a common word.  Secondly, the word PHANTOM had other uses than its usual connotation, being the name of a model of Rolls Royce and also of a type of aircraft, while there was no evidence of a similar plurality of meanings for the word MANDRAKE.  Regarding possible blameworthy conduct on the part of the applicant, Mr Cobden said that there was some indication that such conduct had prima facie been committed in adopting the mark which was so closely identified with the opponent.  Additionally, the applicant had originally chosen to lodge the application in the art deco, or 1930's, typeface which was strong evidence of an intention to appropriate the good will and reputation of the opponents - the mark has subsequently been slightly modified.  This had not been refuted in any evidence from the applicant.  Mr Cobden said that registration of the mark was prohibited under s.28 as contrary to law as use of the mark would amount to passing off.

In his submission in relation to s.28 on behalf of the applicant, Mr Terry said that there was no evidence that the opponent's reputation in Australia was sufficient to satisfy the test stated by the Privy Council in the Solavoid Trade Mark (1977) RPC 1. This was with regard to whether use of the mark in a normal and fair manner would be reasonably likely to deceive or cause confusion to a substantial number of persons. He said, with respect to any alleged wrongful conduct on behalf of the applicant, that the opponent had not produced evidence of any such conduct to support an opposition under s.28.

I have considered the points raised by Mr Cobden regarding the Phantom decision, supra, viz. that the word MANDRAKE is not a common word and that it has no other uses than its primary and comic strip meanings.  I think it is a matter of opinion whether the word PHANTOM is "better known" than the word MANDRAKE.  The latter word is defined in the Macquarie Dictionary as "a narcotic short-stemmed European herb...", and would be well known to botanists, gardeners and the public in general.  On Mr Cobden's second point of a lack of alternative meanings for the word, I would say that this is not fatal to the word qualifying as a distinctive mark for clothing.  I think it is important to note here that most of the evidence, including the overseas trade mark registrations, refers to the opponents' establishment of a reputation in the full title, MANDRAKE THE MAGICIAN not the word MANDRAKE, simpliciter.

I am satisfied that MANDRAKE THE MAGICIAN is well known in Australia as a character in a comic strip which has been read by generations of readers of various publications, most notably The Australian Women's Weekly.  I am not at all satisfied that the public's awareness of the character extends beyond those pages.  I have studied the evidence in support lodged by the opponent and the submissions by Mr Cobden.  There does not appear to be any evidence of use of the word MANDRAKE or MANDRAKE THE MAGICIAN by the opponents in Australia or overseas other than in the comic strip.  Despite the public's exposure to the merchandising of popular characters on a variety of goods there is no evidence before me of this practice taking place using the character in question.  The mark applied for is MANDRAKE, not MANDRAKE THE MAGICIAN or a depiction of the character resplendent in top hat and tails.

Given the above, I cannot agree that the opponents' reputation in the character extends to the goods of this application and that any use by the applicant of the subject mark would lead a substantial number of people to believe that the applicant's goods came from the same source as the comic strip.  It follows that I cannot find that the opponents' claim that use of the mark by the applicant would cause deception or confusion has been made out.  The first leg of the s.28 objection therefore fails.

Although it us now not necessary to do so I note, for the record, on the question of any alleged blameworthy conduct, that I do not believe that the opponents have shown that there has been any such action on the part of the applicant in the adoption of its mark or in its subsequent use.  There is no evidence of any intention by the applicant in its adoption of the mark to appropriate the goodwill and reputation of the opponents.  It is certainly drawing a long bow to imply improper conduct in the choice of an art deco style type face.  In relation to the opponents' claims of possible passing off or breaches of copyright, I can only say that these issues are beyond the limits of competence of this tribunal and so cannot be decided here.

As a further result of my findings, there is now no necessity to pursue the matter of any alleged shortcomings in the service of the evidence in support on the applicant.

In summary then, I find that the opposition has failed on all grounds and that the applicant has discharged the onus on it to justify registration of its mark.  I consequently dismiss the opposition and direct, subject to any appeal from this decision, that the application proceed to registration.  I can see no reason why costs should not follow the event and I therefore award them to the applicant.

Ian Forno
Hearing Officer

28 January 1993