Amalagamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard
[1999] ATMO 103
•11 October 1999
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Amalgamated Television Services to registration of trade mark applications 631406 and 631407 in the names Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard
Background
Applications 631406 and 631407 were filed on 3 June 1994 by Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard (the applicants) for registration, respectively, of the trade marks SUMMER BAY and SUMMER BAY/SUMMER BAY SYDNEY AUSTRALIA (series) in Classes 21 and 25 for the goods:
Class: 21
China including cups, saucers, plates, mugs, vases ornaments
Class 25
T-shirts, caps, sweatshirts swimwear, sand shoes, clothing, dresses, pants
Acceptance of the applications was advertised on 26 October 1996 and, on 20 December 1996, Amalgamated Television Services Pty Limited, (the opponent), lodged notices of opposition to registration of the trade marks.
The opponent served its evidence in support of the oppositions, the applicant served its evidence in answer and the opponent then served its evidence in reply as allowed by the Act and regulations and the issues were heard before me, as delegate of the Registrar of Trade Marks, in Sydney. Geoff Davidson of Halford & Co represented the applicants and Kerry Moore Chrysiliou of Chrysiliou Moore Martin represented the opponents.
The evidence
The evidence in support, lodged on 29 February 1997 comprises a statutory declaration by Catherine Rothery, Legal Counsel of the opponent. Ms Rothery attests that the term SUMMER BAY has been used in Australia since January 1988 when the Seven Network first screened the television series Home and Away. The place SUMMER BAY is a fictitious Australian seaside town used as the beachside backdrop for the series. Ms Rothery says in her declaration that the television series has won Logie awards as the most popular television series eight times in the last nine years. It has been a best rating program in three time-slots, 6pm, 6.30pm and 7.00pm.
I will not go into further discussion of evidence of the reputation of the television series or the notoriety of the fictitious place SUMMER BAY. I think that the renown of both the series, and the mythical place containing the people whose drama-packed lives it captures, speak for themselves. It may be sufficient to observe that I have made it a habit never to watch the series Home and Away, yet am aware of the suppositious seaside town Summer Bay.
The 'place-name', Summer Bay, is, states Ms Rothery, used during the opening and closing credits and is used throughout the program to identify locations such as the Summer Bay Diner or the Summer Bay Surf Club.
The opponent states that it has used the trade mark on a range of merchandise including t-shirts, caps, umbrellas and key rings since 1993. Chambre shorts, polo shirts, sweat shirts, tops and shorts bearing the trade mark were added to the range in July 1996. Sales have occurred both in Australia and overseas. Appended to the declaration are advertisements showing the clothing, CDs and other merchandise sold by the opponent. I will note now, for the sake of brevity, that not all of the goods in the evidence carry the words SUMMER BAY. However, the different trade marks that the opponent has used which stem from the program Home and Away are appended to the declaration and, separately, pictures of those trade marks affixed to the goods. Again, for the sake of brevity, I replicate the two most relevant examples of these:
I note that these versions of the trade mark are, according to this declaration, those which are currently used on clothing. The evidence does not state that these trade marks were in use at the relevant date - 3 June 1994 - but states that the trade mark SUMMER BAY was. While this material is not precise in showing the trade mark in use in 1993, the evidence does, as a whole, paint a picture of the opponent's utilisation of some of the merchandising potential of its program Home and Away during 1993. Further, the claim appears to be consistent with the balance of the opponent's evidence.
The evidence in answer comprises a statutory declaration by one of the applicants, Linda Cameron Pickard. She states that prior to the filing of the application on 3 June 1994, she attended the Sydney State Office of AIPO (as IP Australia, of which this office is part, was then called) and conducted searches for the trade mark SUMMER BAY. The declarant states she did not find any registrations that would prevent her use or registration of the trade mark so she proceeded with the filing of the applications.
Ms Pickard goes on to state that she, and her daughters who are the joint applicants, have a genuine intention to use the trade marks and have obtained costings for manufacturing the goods on which the trade marks are proposed to be used but have postponed use until registration is finalised.
The evidence in reply from the opponent is a statutory declaration by Jack Lloyd. Mr Lloyd is a director of In Character Pty Ltd., a company that specialises in locating licensees for companies wishing to merchandise under trade marks in Australia. Mr Lloyd's experience includes developing and licensing the market for Cabbage Patch Kids® in Australia; his company represents Warner Bros, Universal Pictures, Columbia Pictures, Lorimar Telepictures, Fox 20th Century and other international movie producers.
Mr Lloyd avers that, in his experience, it is common to merchandise trade marks as a result of their use on television shows. He states that it is most common for merchandising flowing on from television programs to first occur on clothing (predominantly t-shirts) in Class 25 of the International (Nice) Classification of Goods and Services.
In general, Mr Lloyd says, the next most common category in which merchandising occurs is within Class 16 (which consists of paper and paper articles, etc) because of the use of the trade mark on various items of stationery, posters, books and so forth. The next most popular categories within which merchandising occurs are those of Classes 21 and 28.
For ease of reference, I replicate Mr Lloyd's observations in tabular form:
| Frequency | Class | Class description |
| 1st | 25 | Clothing including boots, shoes and slippers |
| 2nd | 16 | Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks. |
| 3rd equal | 21 | Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes |
| 3rd equal | 28 | Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees |
Mr Lloyd goes on to state that he is aware of the trade mark SUMMER BAY which is used in connection with the television series HOME AND AWAY, and that the series has been extremely popular in Australia. Mr Lloyd says that, to his mind, the trade mark SUMMER BAY is strongly linked to the series HOME AND AWAY and has been so since the inception of the series.
Mr Lloyd concludes that if he encountered use of the trade mark SUMMER BAY in relation to the goods for which registration is sought, he would assume that the owner of the trade marks SUMMER BAY and HOME AND AWAY had licensed use of the trade mark on those goods. Mr Lloyd states that he would assume this because of his knowledge of the connection between the trade marks and the series and his knowledge of licensing practice in Australia. Mr Lloyd then states his belief that the opponent would have legal remedy if the applicant did use the opposed trade marks on the nominated goods in Australia. Of course, this is only Mr Lloyd's opinion and I give it weight accordingly - as I do his comments about his assumption of a connection between use of the opposed trade marks on goods and the television series. Mr Lloyd is, after all, a practitioner in the area and because of this may well see a connection where a member of the public would not.
The submissions
The opponent's submissions centred on sections 43 (deception or confusion), 58 (ownership), 59 (lack of intention to use) and 60 (reputation). Kerry Moore Chrysiliou also argued under sections 41, 42, 43 and 55 of the Act; however, as my reasons fall under sections 43, 58 and 60 of the Act, I will focus on these submissions, both in my outline of the submissions made by both parties and in my reasons.
Ms Chrysiliou argued that both trade marks (SUMMER BAY and SUMMER BAY SYDNEY AUSTRALIA) fall within the ambit of the principles of ownership which are set out in Seteff SpA v Riv-oland Marble Co (Vic) Pty Ltd (1987) 10 IOR 402, in re Hicks' Trade Mark (1897) 22 VLR 636, and in Prestige v Potter Moore Ltd (1939) 9 AOJP 3311. She submitted that the opponent had first use of the trade mark in relation to its television program in 1988 and that the trade mark SUMMER BAY had been first used on merchandise such as t-shirts, caps, umbrellas and key-rings since 1993, and on further items since 1996.
The opponent's use of the trade marks on t-shirts, caps, umbrellas and key rings, says Ms Chrysiliou, is use of the trade mark on the same kind of thing as the goods nominated on the applications as per Hicks' Application, supra. Further, she argues, the trade mark of the opponent is the same as both of the applicant's trade marks: SUMMER BAY and SUMMER BAY SYDNEY AUSTRALIA. Further support for the opponent's contention that it is the owner of the trade mark was posited to lie in the well known practice of brand extension associated with licensing and merchandising within the sphere of the opponent's activities.
Turning now to Ms Chrysiliou's submissions in relation to the opposition under section 60, it is argued that the applicant's trade marks are both substantially identical and deceptively similar to that of the applicant. Ms Chrysiliou submits that the opponent's trade mark had been in use since 1988 in Australia and that the evidence shows that the trade mark had clearly acquired a reputation before the priority dates of the applications (3 June 1994). Because of the reputation and the public perceptions of the marketing practices of television networks and film makers, the opponent submits that deception or confusion would result from the use of the opposed trade marks. In these considerations, Ms Chrysiliou referred me to the decision of the Deputy Registrar in NBA Properties Inc v Gaunt (1998) 44 IPR 225, United Artists Corporation v Trevor Clarke Holdings Pty Ltd (1998) 41 IPR 425, Hogan and Others v Pacific Dunlop Ltd (1988) 12 IPR 225, Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196, to Twentieth Century Fox Film Corporation and Another v South Australian Brewing Co Ltd and Another (1996) 34 IPR 225, and to Radio Corp Pty Ltd v Disney (1937) 57 CLR 448.
Finally, in terms of section 43 of the Act, Ms Chrysiliou argued that because of the fame of the dramatic place SUMMER BAY, and the public awareness that it is a creation of the opponent, the words have a connotation of some sponsorship, approval or connection with the opponent that does not exist and this would be likely to deceive or cause confusion. Ms Chrysiliou submitted that, by extension, the public would be confused or deceived that the use of the trade marks was subjected to the high level of scrutiny and quality controls associated with licensed products.
In response for the applicants, Mr Davidson opened his submission by giving a brief history of the applications.
Mr Davidson observed that, as regards the opposition based on the ownership of the trade mark, what the opponent must establish is that it has used a substantially identical trade mark earlier than the priority date of these applications. Mr Davidson stressed that this must be trade mark use of the opposed indicia and must be on the same type of goods.
Turning to the section 60 grounds of opposition, based on the alleged reputation of the opponent's trade mark, Mr Davidson submitted that the test is that the opposed trade marks should be substantially identical with, or deceptively similar to, a trade mark which has acquired a reputation before the priority date of the opposed application in respect of those goods or services. Mr Davidson stated that the definition of a trade mark is contained in section 17 of the Act and that the use of the indicia by the opponent should meet this definition. He went on to submit that the reputation should be in respect of the particular goods or services in respect of which the current applications are made. The initial onus of proof of the reputation lies on the opponent in terms of the directives of Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 1A IPR 465 or Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR and the reputation should have arisen through trade mark use. Further, Mr Davidson said, there should be a real and tangible danger of deception and confusion.
Reasons
Section 58
This section of the Act allows:
Applicant not owner of trade mark
58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
For the purposes of the Trade Marks Act 1995, the meaning of the word 'owner' is identical to the meaning of the word 'proprietor' contained in the Trade Marks Act 1955. As observed in the submissions, the seminal decision concerning this is re Hicks' Case, supra, in which Holroyd J said:
A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.
…
For the reasons given by us in the course of the argument, we think this application to expunge Hicks’s name from the register of trade marks as the proprietor of the word “Empress” as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.
At issue here are thus the questions of whether the instant trade marks are substantially the same, whether the goods involved are the 'same king of thing' and whether there was any use of the trade marks by the opponent prior to the date that the application was lodged.
I consider the trade marks nominated on the application forms: SUMMER BAY and SUMMER BAY SYDNEY AUSTRALIA and the propounded trade mark on which the opponent relies - SUMMER BAY - share a substantial identity and are substantially the same trade mark. In so finding, I note that the words SYDNEY AUSTRALIA are inherently unadapted to distinguish goods, being merely a designation of origin, and add little identity to the words SUMMER BAY. I further note that the trade marks SUMMER BAY and SUMMER BAY SYDNEY AUSTRALIA were accepted as a series of trade marks under the provisions of section 51 of the Act and, as such, have been previously found to be substantially identical in their shared material particulars by a delegate of the Registrar of Trade Marks. There was some suggestion by the applicants' representative at the hearing that the words SUMMER BAY would be taken as a designation of origin. However, I believe that, for the Australian audience, the words function in a fanciful way in relation to goods - in much the same way as do the words NORTH POLE in respect of bananas.
As to whether the opponent's goods and those of the applicant are the 'same kind of thing', Ms Rothery, in her declaration, states that the opponent has used the trade mark SUMMER BAY on t-shirts, caps, umbrellas and key rings since 1993 However, while I accept that the opponent had prior use of the trade mark SUMMER BAY on t-shirts and caps, I do not agree that that the opposed goods in Class 21 are 'the same kind of thing' as either clothing, or umbrellas or key-rings. I think that the expression 'the same kind of thing' calls for a much closer nexus than the ability to group the goods under the general headings 'souvenirs', 'fan club items' or 'character merchandise'.
For completeness sake, I note that the opponent's use of the trade mark on clothing was earlier than the priority date of opposed application 631407.
The opposition therefore succeeds on the section 58 ground of ownership in relation to application 631407(25) but I dismiss the opposition on this ground in relation to application 631406(21).
Section 60 - reputation
This section allows:
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) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
At the outset of my discussions of the issues under this heading, I observe that the bulk of Mr Davidson's submissions relating to this ground appear to be founded on a misreading on subparagraph 60(a). Effectively, the third and fourth commas within the relevant subparagraph operate as brackets. Accordingly, the interpretation that Mr Davidson would have me follow (that the reputation of the opponent must stem from the trade mark's use on goods the same as those particular goods nominated on the opposed application) is erroneous. In fact, the second use of the words "goods or services" is a recapitulation of the first use of the words "goods or services" and refers again to those of the applicant, the goods nominated on the application. All that is necessary to successfully found an opposition based on this section is demonstration that the opponent's trade mark had a reputation in Australia earlier than the priority date of the opposed application such that the applicant's use of the trade mark on the nominated goods would confuse or deceive.
The decision of the Full Bench of the Federal Court in Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) dictates that the test concerning confusion and deception has been strengthened. Thus, the test in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101, should now read, making appropriate adjustments for forum and trade mark:
… having regard to the reputation acquired by the name SUMMER BAY, is the hearing officer satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will result in a likelihood of deception and confusion among a substantial number of persons?
As observed by Mr Davidson, for the applicant, section 17 governs the meaning of the words 'trade mark' within sections 60. Section 17 allows:
17. A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Thus, the opponent's use of the sign in terms of section 60 does have to be trade mark use in relation to goods or services (and not merely words occurring within the television program Home and Away). And, since section 60 bases itself on reputation, the use has to be actual, rather than intended, use. However, as discussed above, the use does not have to be use in relation to the goods that are the subject of the opposed applications.
I have already decided that the opponent had use earlier than the priority date sufficient to displace the applicant's claims to ownership with regard to application 631407 which is for clothing. However, the use by an opponent to displace a claim to ownership does not have to be great in order to succeed - the use does not have to have given rise to any 'reputation'.
The opponent attests to a total use of the trade mark SUMMER BAY in relation to all merchandise sold under the trade mark (both in Australia and overseas) of about $4.5 million. During the period July 1996 to April 1997 approximately $450,000 was generated in relation to all sales of merchandise of which approximately $30,500 was the retail value of clothing. (Clothing being the only goods sold prior to the relevant date). My problem here is that I am being asked by the opponent to extrapolate from these figures to try and gauge its reputation in Australia prior to the relevant date. Even if it were possible for me to safely assume that sales have been constant through this time and arrive at a figure of $900,000 derived from all merchandising each year, of which about $61,000 may relate to clothing, I cannot safely assume that any set proportion of this actually consists of sales within Australia. Given that the world-wide audience is estimated by the opponent to be in excess of 40 million viewers, if I applied the same rationale to the likely Australian market for the opponent's merchandising as I have done to the annual sales figures, and allowing for an Australia-wide audience of approximately 1.6 million people for the program, I end up with possible annual merchandising of the trade mark SUMMER BAY in relation to clothing in Australia of some $2440. This, then, would be the extent of the sales in the year of merchandising prior to the lodgement of these applications. This figure seems remarkably low but results from the only figures that the opponent has given me.
Even allowing for the fact that character merchandising takes advantage of a pre-existing reputation to launch trade marks into, I find it impossible to conclude that, at the priority date of the opposed applications, enough of that reputation had attached itself to the trade marks to allow me to resolve that the trade marks had acquired sufficient reputation as trade marks in Australia such that the use of the trade marks by the applicants would be likely to confuse or deceive. If the sales of clothing under the aegis of the opponent had been demonstrated to be more significant, I may have been able to conclude that a notable proportion of the existing reputation of the indicium SUMMER BAY had attached itself to the trade mark. However, the sales by the opponent are either so slight, or so indefinitely stated, that this appears to be either unlikely or a most unsafe conclusion.
Accordingly, I dismiss the opposition in terms of section 60 of the Act in relation to both applications.
Section 43
Trade mark likely to deceive or cause confusion
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The relevant tests under section 43 as regards the words 'deceive or cause confusion' are those which I have stated under section 60. However, in terms of section 43, my inquiry is not limited to consideration of the reputation of the trade marks - I am to consider what the trade marks connote and whether because of that connotation, the use of the trade mark in relation to the nominated goods would be likely to deceive or cause confusion.
As the delegate of the Registrar observed in Down To Earth (Victoria) Co-Operative Society Ltd v Schmidt (1998) 41 IPR 632:
“Connotation” is a new term in trade mark legislation and as such has not yet been interpreted by the courts. The following are two dictionary definitions which define the ordinary meaning:
Macquarie Dictionary :
1. the act or fact of connoting. 2. that which is connoted; secondary implied or associated meanings (as distinguished from denotation): for example the word “bum” has connotations of vulgarity.Oxford English Dictionary :
1. The signifying in addition; inclusion of something in the meaning of a word besides what it primarily denotes; implication.Therefore it can be said that the word connotation refers to that which is implied in a trade mark — in addition to its essential or primary meaning. A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark. The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion. Considerations under s 43 concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public. For example, deception or confusion could arise in regard to the character of the services, or the implied endorsement or licence of services by a person or organisation.
The applicants did not argue that the words SUMMER BAY have any significance within Australia other than the invented geographical setting for the television series Home and Away. Mr Davidson did suggest at one stage that the indicium might have geographical significance; however, I do not think that this issue was being seriously raised as, if this were to be successfully argued, it would (in the absence of evidence of factual distinctiveness) effectively shoot his own client in the foot. I believe, therefore, that the primary signification of the words within Australia is as the notional seaside town or suburb that acts as a backdrop for the television series Home and Away. It follows from this that most Australians who are aware of the words would view the indicia as being creations of the opponent, or the scriptwriters employed by the opponent. Thus, the secondary meanings, or connotations, of the indicia is that they bespeak an association with the opponent's television program Home and Away. There is no doubt that the location SUMMER BAY is extremely well known - I have previously observed that I have never watched the program Home and Away, yet am aware of the invented place, SUMMER BAY. I believe that I am, in the context of this opposition, entitled to take notice of my own knowledge of the notoriety of such indicia: Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999)
Character merchandising, as I understand it, makes use of the existing or projected reputation of a media-based manifestation, often fictitious, by launching goods under trade marks which embody the name or appearance of that manifestation. In doing so, the marketers have an existing reputation which automatically attaches in the minds of the public to the trade marks, used in relation to the goods.
Judicial notice of the public awareness of character merchandising was taken in the Duff Beer Case, Twentieth Century Fox Film Corporation And Another v South Australian Brewing Co Ltd And Another (1996) 34 IPR 225 (a 'character merchandising' passing off case) where Tamberlin J said:
The name or word under consideration does not have to be associated with goods manufactured by the trader. In Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 (the Mickey Mouse case) at 453, Latham CJ in relation to the names “Mickey Mouse” and “Minnie Mouse” considered that these were:
“… so closely associated in the public mind, with … Walter E Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are “in some way or other” connected with … Disney.”
So that, a name without an image may be sufficient to suggest an “association”.
In the same case, Rich J at 454 said:
“In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.”
Dixon J, referring to the words “Mickey Mouse”, said at 457:
“I find it hard to believe that the use of the words on or in connection with a radio receiving set would produce any other impression than in the case of most of the other almost innumerable classes of articles to which the name or representation of Mickey Mouse has been applied. That impression does not, I think, primarily relate to the origin, selection or treatment of the goods. The reason for using the names is to attract the attention of members of a public that has found pleasure and amusement in the grotesque forms and absurd antics of Disney’s creatures, and at the same time to give to the goods a name or means of description at once familiar and pleasing or interesting to the possible buyer. No doubt this means that the trader makes use of elements which belong to the reputation and fame of Disney’s creations and it may be that in some vague way the buyer supposes that Disney must have sanctioned it. [Emphasis added.]”
That decision was given over 6 decades ago and it is important to bear in mind the great developments in broadcasting, advertising and merchandising during those decades. Nowadays, the public must be considered to be more sophisticated and aware with respect to character and personality merchandising than 60 years ago. Today there is clearly greater familiarity with licensing of products so that public awareness of the nature of the “sanction” to which Dixon J adverts is significantly more focused than in 1937.
Of course, these comments beg the observation that where there is any existing public knowledge of an opponent's demonstrated merchandising, Taberlin J's statement must apply with a greater force.
The unchallenged declaration of Mr Lloyd that goods in Class 21, including those of application 631406, are the third most frequently licensed as character merchandising spun off from television programs is very persuasive. Whatever Mr Lloyd's own views, undoubtedly coloured by being an expert in the area, the frequency with which merchandising of these goods does occur necessitates the conclusion that the purchasing public is likely to view the goods, both in Classes 21 and 25, as being character merchandise, sold under the aegis of the opponent.
For the sake of completeness, I observe that 'character merchandising' has gone well beyond the merchandising of characters such as Mickey Mouse or Minnie Mouse. The quote, above, from Duff Beer is one which concerned an imaginary beer drunk by a cartoon character. I see no reason why the same principle should not extend to the name of an illusory place, peopled by fictitious characters, made notorious on television and exploited via a merchandising program which is evidenced via the use of the trade mark by the opponent apparently sourcing the goods to that putative place, prior to lodgement.
I conclude, therefore, that the opponent has discharged the onus on it to show that the applicant's use of the trade marks would be likely to result in deception or confusion because of the connotation of the trade mark SUMMER BAY, as at the priority date, that goods sold under the trade mark are dealt with under the aegis or sanction of the opponent.
The onus thus shifts to the applicants now to show that their use of the trade marks would not be likely to confuse or deceive: Southern Cross, supra. However, the applicants have been silent as to their reasons for wishing to adopt the trade marks, whether they believe that the trade marks might have any other connotation which would 'drown out' the public perceptions that goods sold under the trade marks are character merchandise which are sold with the 'sanction' of the opponent, or any other issue apart from the fact that Linda Cameron Pickard had searched for conflicting registrations and has an intention to use the trade marks.
Accordingly, I must conclude that the opposition to registration of applications 631406 and 631407 succeeds under section 43.
Decision
Subject to any appeal from my decisions, I find that the opposition succeeds under section 58 in relation to application 631407 and further succeeds under section 43 in relation to both applications 631406 and 631407 and I refuse to register these applications.
Costs
Costs may follow the event and I award the opponent its costs at the official scale.
Ian Thompson
A/Hearing Officer
11 October 1999
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