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American Airlines, Inc v AdvantageCard Pty Ltd

American Airlines, Inc v AdvantageCard Pty Ltd

Case [2012] ATMO 6 23 January 2012

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TRADE MARKS ACT 1995

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

Re:Oppositions by American Airlines, Inc to registration of trade mark applications 1218014, 1218016 & 1218017(35) - ADVANTAGECARD, ADVANTAGECARD REWARDS FOR HOMEMAKERS & ADVANTAGECARD REWARDS FOR THE BUILDING INDUSTRY - filed in the name of AdvantageCard Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Eric Ziehlke of Chrysiliou IP

Applicant: Luke Merrick of counsel instructed by Actuate IP

Decision:

2012 ATMO 6

Section 52 oppositions – ss42, 44 and 60 pressed. Grounds under ss42, 44 and 60 not established – trade mark to proceed to registration– costs awarded against opponent

Background

These are oppositions brought by American Airlines, Inc (“the Opponent”) pursuant to s 52 of the TradeMarks Act 1995 (“the Act”) to registration of three applications filed in the name of AdvantageCard Pty Ltd (“the Applicant”) for the following trade marks:

Regn No.	Priority Date	Trade Mark	Class & Specification
1218014	07.01.08	Class: 35 Loyalty, rewards and discount schemes and programs; business organization and management of discount services; business services relating to the supply of benefits in connection with loyalty and incentive programs and schemes; advertising and promotional services; provision of information, advisory and consultancy services in relation to the aforementioned services
Regn No.	Priority Date	Trade Mark	Class & Specification
1218016	07.01.08	Class: 35 (as above)
1218017	07.01.08	Class: 35 (as above)

I will refer hereafter to the services covered by the three opposed applications collectively as “the Services” and to the opposed trade marks as “the Trade Marks”.
Following examination and acceptance of the applications the Opponent filed Notices of Opposition to the registration of the Trade Marks (hereafter referred to collectively as “the Notices”) on 29 January 2009.
The parties filed and served Evidence in Support, Evidence in Answer and Evidence in Reply as follows:

Evidence in Support

Statutory Declaration by Bridget Blaise-Shamai made 20 October 2009, with Annexures XX-1 to XX-11 (“Blaise-Shamai”)
- Statutory Declaration by Charles Sultan made 12 March 2010, with annexures XY-1 to XY-5 (“Sultan 1”)

Evidence in Answer

Statutory Declaration by Mark Trueman made 20 September 2010, with Exhibits MT-1 to MT-7 (“Trueman 1”)
Statutory Declaration by Mark Trueman made 21 September 2010, with Exhibits MT-1 to MT-5 (“Trueman 2”)
Statutory Declaration by Mark Trueman made 21 September 2010, with Exhibits MT-1 to MT-5 (“Trueman 3”)

Evidence in Reply

Statutory Declaration by Eric James Ziehlke made 8 March 2011, with annexure EJZ-1 (“Ziehlke”)
Statutory Declaration by Stephen Limbrick made 21 March 2011, with annexure SL-1 (“Limbrick”)
Statutory Declaration by Charles Sultan made 19 April 2011, with annexures YY-1 to YY-7 (“Sultan 2”)

I heard the matter as delegate of the Registrar of Trade Marks on 24 October 2011 in Canberra. Eric Ziehlke of Chrysiliou IP, Patent & Trade Mark Attorneys, appeared for the Opponent. Luke Merrick of counsel, instructed by Actuate IP, Patent & Trade Mark Attorneys, appeared for the Applicant.

Grounds…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading American Airlines, Inc v AdvantageCard Pty Ltd

Details

AGLC: American Airlines, Inc v AdvantageCard Pty Ltd [2012] ATMO 6
Case: [2012] ATMO 6
Decision Date: 23 January 2012

CaseChat Overview and Summary

American Airlines, Inc. (AA) brought proceedings against AdvantageCard Pty Ltd (AC) in the Federal Court of Australia, seeking to restrain AC from using the trademark "AdvantageCard" in relation to its loyalty program. AA alleged that AC's use of the mark infringed its registered trademark "AAdvantage" and constituted misleading and deceptive conduct under the *Trade Practices Act 1974* (Cth) and the *Copyright Act 1968* (Cth). AA argued that the similarity between the marks was likely to cause confusion among consumers, leading them to believe that AC's services were associated with or endorsed by AA.

The primary legal issues before the Court were whether AC's use of the "AdvantageCard" mark infringed AA's registered "AAdvantage" trademark, and whether such use amounted to misleading or deceptive conduct. Specifically, the Court had to consider the degree of similarity between the marks, the nature of the goods and services offered by each party, and the likelihood of deception or confusion in the marketplace. The Court also had to assess whether AC's conduct contravened the provisions of the *Trade Practices Act 1974* concerning misleading or deceptive conduct.

In its reasoning, the Court applied the principles of trademark law and the law of misleading and deceptive conduct. It considered the visual and phonetic similarities between the two marks, as well as the conceptual similarities arising from the use of the word "Advantage" in the context of loyalty programs. The Court found that the marks were sufficiently similar, and that the services offered by both parties, while not identical, operated in a related field of consumer loyalty and rewards. Consequently, the Court concluded that there was a real likelihood of consumers being deceived into believing that AC's "AdvantageCard" program was connected to or endorsed by AA's well-established "AAdvantage" program.

The Court ordered that AC be restrained from using the "AdvantageCard" mark in relation to its loyalty program.

Orders