Aoan International Pty Ltd

[2014] ATMO 118

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1610865(41) - MH370- in the name of Aoan International Pty Ltd.

Delegate:

Heath Wilson

Representation:

Applicant: Jonathan Hii (Director of the Applicant) and Lorenzo Mazzochetti of Grope Hamilton Lawyers.

Decision:

2014 ATMO 118

Section 33 - grounds for rejection under sections 41 and 42(a) of the Trade Marks Act 1995 – section 41 established – trade mark rejected.

Background

1. On 8 March 2014, Malaysian Airlines Flight 370 (or as it is more commonly known - ‘MH370’) disappeared while flying from Malaysia to China. The plane was carrying 12 Malaysian crew members and 227 passengers (including six Australians). The ensuing multinational search effort included Australia’s involvement on 17 March 2014 when the search for the missing aircraft extended to the southern part of the Indian Ocean, west of Australia. To date the search for flight MH370 continues and there has been extensive worldwide media coverage on the incident.

2. On 12 March 2014 (prior to Australia’s involvement and five days after the incident) Aoan International Pty Ltd (‘the Applicant’) applied to register MH370 (‘the Trade Mark’) for the following services:

   Class 41: Entertainment; Event management services (organisation of educational, entertainment, sporting or cultural events); Live entertainment; Management of entertainment events; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of entertainment services via an online forum; Provision of live entertainment; Production of television programs; Production of films, other than advertising films; Distribution (other than transportation) of films; Distribution (other than transportation) of television programmes; Publishing of printed matter; Publishing by electronic means; Education services; Arranging of conferences; Arranging of seminars; Arranging and conducting of workshops (training); Arranging and conducting of conferences; Charitable services, namely education and training; Coaching (training); Educational advisory services; Lifestyle counselling and consultancy (training); Personal development training; Providing online electronic publications (not downloadable); Electronic publication of information on a wide range of topics, including online and over a global computer network; Game services provided online (from a computer network); Online (electronic) publication of news; Providing online videos, not downloadable; Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Showing of films; Business training consultancy services; Publication of electronic books and journals online

3. On 30 April 2014, the Trade Mark was examined by a delegate of the Registrar of Trade Marks as required under section 31 of the Trade Marks Act 1995 (‘the Act’) which provides:

31Registrar to examine, and report on, application

The Registrar must, in accordance with the regulations, examine and report on:

(a)whether the application has been made in accordance with this Act; and

(b)whether there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

1. The delegate raised a ground for rejection under section 41 of the Act and stated:

   Your trade mark is MH370.

   The letter/numeral combination MH370 is associated with the Malaysian flight which disappeared recently. For this reason, anyone seeing this combination on the provided services is likely to believe the services are in relation to the missing flight MH370.

   Other traders should be able to use MH370 in connection with goods or services similar to yours.

2. The Applicant was given the opportunity to provide evidence of use under subsection 41(4) of the Act.

3. According to the official file, no response was received from the Applicant at this time.

4. On 25 July 2014, IP Australia issued a second examination report including a notice of intention to reject the Trade Mark. The second examination report indicated that the application had been reviewed and in addition to the ground for rejection under section 41, a new ground for rejection had been identified under section 42(a) of the Act. The report stated:

   Your trade mark is MH370 which is the letter/numeral combination associated with the Malaysian Airlines flight which disappeared in March 2014.

   It is likely that the use of this letter/numeral combination would offend a section of the community and is therefore scandalous. This is because of the sensitive nature of the tragedy to the Australian public and the associated loss of lives.

5. The Applicant was given a period of two months to request to be heard on the matter under section 33(4) of the Act.

6. The Applicant requested to be heard and the hearing was scheduled for 18 November 2014.

7. As a delegate of the Registrar of Trade Marks, I allowed the Applicant a month to provide any evidence or submissions to be relied on at the hearing. The Applicant subsequently provided written submissions indicating (amongst other things) that “My intention to register MH370 under a class 41 is a genuine attempt to locate flight MH370 through ‘impartial’ educational means and to restore public confidence in air travel”. The Applicant did not provide any evidence of use of the Trade Mark.

8. I responded to the Applicant on 13 November 2014, indicating my preliminary view that many of the comments in the submissions were directly relevant to the ground for rejection under section 41. At that stage I outlined the Applicant’s options in light of my preliminary views. The Applicant decided to proceed with the hearing.

9. On 18 November 2014, I heard the matter via teleconference in Canberra. Mr Lorenzo Mazzochetti of Grope Hamilton Lawyers assisted Mr Jonathan Hii (Managing Director of the Applicant) in making submissions on behalf of the Applicant.

The Law

1. Section 17 of the Act relevantly defines a trade mark as a sign used, or intended to be used, to distinguish services dealt with or provided in the course of trade by a person from services so dealt with or provided by any other person. In Aristoc Ltd v Rysta Ltd[1] Lord MacMillen said:

   If there is one thing that may be described as fundamental in this branch of the law it is that the function of a trade mark is to indicate the origin of the goods to which it has been applied.

   [1] (1944) 62 RPC 65.

2. Section 41 of the Act provides:[2]

   [2]The current section 41 of the Act was introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into force on 15 April 2013.

41Trade mark not distinguishing applicant’s goods or services

(1)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 (the 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.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)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; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

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:For goods of a person and services of a person see section 6.

Note 3: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 (5) and 7(3) and section 8).

(5)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).

1. Section 42(a) of the Act provides:

42Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a)         the trade mark contains or consists of scandalous matter

Discussion

The ground for rejection under section 41:

1. Under section 41 of the Act, the initial question in the consideration of the matter is whether the Trade Mark is, on its face, a sign capable of distinguishing the Applicant’s services from the services of other traders. If I am not satisfied that the Trade Mark is capable of distinguishing[3] because it is either not inherently adapted to distinguish, or it is not sufficiently inherently adapted to distinguish the Applicant’s services, there is no evidence of trade mark use or other circumstances which may be considered under ss41(3) and (4). In those circumstances, I must reject the application (see ss41(1)).

   [3] See the findings of Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440.

2. The legal precedent on the pre-amendment section 41 of the Act is equally applicable. In Clark Equipment Co v Registrar of Trade Marks[4] Kitto J said in relation to ‘adapted to distinguish’:

   It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use."[5] The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish 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…

   [4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513–14; [1965] ALR 344 at 345–6.

   [5] Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635.

3. As can be seen in the text of the Act, Note 1 under section 41(4) of the Act provides:

   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;

4. I also note that while the practice set out in the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) does not have the force of law, it nevertheless provides guidance on these types of cases: At part 22.21 of the Manual it states (emphasis in bold):

   Examiners should raise a ground for rejection under section 41 where a trade mark directly describes the potential subject matter of goods in class 9 and 16, or services in class 41.  This is because other traders may have a legitimate need to use the word/s as a description of the subject matter of their own goods or services.

5. As Kitto J found in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[6], the relevant date at which the rights are to be determined is the filing date of the application (in this instance 12 March 2014). However, in Chocolaterie Guylian N.V v Registrar of Trade Marks[7] Sundberg J made it clear that:

   In assessing as at the priority date the “likelihood” that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been “actuated only by proper motives”. In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [47]) required under s 41(3).[8]

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

   [7] Chocolaterie Guylian N.V v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [54].

   [8] As it stood prior to 15 April 2013.

6. In the present matter, given the events outlined at paragraph 1 of these reasons, at the filing date the Trade Mark conveyed a specific “meaning to ordinary Australians”[9] as the flight number of the aircraft missing since 8 March 2014. When used in relation to the Applicant’s services the Trade Mark indicates that the subject matter of those services is the missing aircraft MH370. It is not adapted to distinguish the Applicant’s services from the similar services of other traders.   

   [9] See Riv-oland Marble C (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 604.

7. It is my understanding that since the application was filed a number of documentaries have now been made with flight MH370 as the subject matter.[10] The Applicant also made an oblique reference to the existence of a documentary during the course of the hearing. It is obvious to me that none of the use of MH370 by other parties as the subject matter of a documentary[11] has been actuated by improper motive, but rather for the sake of the signification that MH370 ordinarily possesses. Such documentaries may have been made after the filing date of the application, but as in Conde Nast Publications Pty Ltd v Virginia Taylor[12]:

   [I]t is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

   [10] For the avoidance of doubt, I have exercised the discretion allowed under regulation 21.15(4) of the Trade Marks Regulations 1995.

   [11] For example, Wikipedia® mentions that “Several documentaries have been produced about the flight” including Malaysia 370: The Plane That Vanished; Flight 370: The Missing Links; Where is Flight MH370? and MH370: A Novella.

   [12] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509) per Burchett J.

8. In terms of how other traders have come to behave in this industry the fact that MH370 has been used as the subject matter (and also in the title) of later documentaries and books is relevant in assessing the true position of the Trade Mark as at the filing date.  It is also relevant to consider the combined effect of the extensive media coverage in Australia, the Australian passengers on board the flight and Australia’s subsequent involvement in the search for the missing aircraft.

9. By way of analogy, in Museums Board of Victoria v Maryann Martinek[13], the trade marks under consideration consisted of, or contained, the expression SAM THE KOALA. Sam was the name given to a koala found during the Victorian Bushfires in February 2009. Due to extensive media reporting, most Australians became aware of the existence of Sam the Koala. Shortly after references to Sam the Koala appeared in the media, Ms Martinek (the applicant in that matter) applied to register a number of trade marks containing or comprising that expression. Ultimately the hearing officer decided that the trade marks lacked capacity to distinguish the goods and stated:

   The opponent has made a convincing case that, at the time Ms Martinek filed her trade mark applications featuring ‘Sam the Koala’ (in February and March 2009), that name already significantly lacked capacity to distinguish her goods from those of other traders. The tragic circumstances of Victoria’s Black Saturday wildfires, which led to the plight of ‘Sam the Koala’ being thrust into the media spotlight, meant that her fame arose almost instantaneously from the publication of that first striking photograph.

   …

   To conclude, I find that, despite Ms Martinek’s undoubtedly genuine intentions at the time she filed her applications to simply adopt as her trade mark an attractive name which was at that time enjoying what she interpreted as only the most fleeting and ephemeral of media attention, the reality of the situation has been proved to be otherwise. Under the circumstances, the opponent has made out its ground of opposition under section 41 against both the applicant’s trade marks.

   [13] [2011] ATMO 65.

10. A similar finding was made in Museums Board of Victoria v Maryann Martinek[14] by a different hearing officer who stated:

    Other traders were likely as at the Earliest Priority Date, in my view and on the evidence before me, to have wanted to use the words “Sam the Koala” in relation to their similar goods or services in Classes 9, 16, 39 or 41 for, (to adopt Kitto J’s words in Clark), “the sake of the signification which they ordinarily possess”.

    [14] [2011] ATMO 122.

11. In the matter before me, the Applicant has indicated in written submissions that “The proposed trademark of MH370 is under class 41. The dominant intended use within that class is educational”. However, this “dominant intended use” is not immediately evident from the classification of services which also includes a variety of entertainment services and publishing services. In any event, all services within the application’s specification must be considered as 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”[15].

    [15] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].

12. The Applicant also commented:

    We envisage the creation of a documentary (both screen and literary) on air travel safety with flight MH370 used as the dominant case study. Assistance from experts in relevant fields will be asked to contribute to the documentary.

    The documentary will be directed toward a public awareness on the safety of air travel from an unbiased independent perspective. The public can make up their own minds.

1. Rather than assist the Applicant’s position, these statements affirm that MH370 will be utilized as the subject matter of the services claimed and not as a sign used to distinguish the services of the Applicant from those of other traders. The oral submissions made at the hearing did not resolve the distinction between the use of MH370 as the subject matter of the services as opposed to use as a badge of origin of the services. 

2. I find that the Australian public will understand the Trade Mark as indicating the character or subject matter of the Applicant’s services. While the Trade Mark is not descriptive of educational and entertainment services per se, its reference to the subject matter of those services means it is not capable of distinguishing them from the similar services of other traders. It is to some extent inherently adapted to distinguish but, as previously noted, there is no evidence of trade mark use or other circumstances for me to take into account pursuant to subsection 41(4)(b).

3. As a consequence, I have found that there is a ground for rejecting the application under section 41. It is therefore not necessary for me to consider the ground for rejection under section 42(a) of the Act. I note that should this decision be appealed to a prescribed court the Registrar of Trade Marks will reserve the right to additionally pursue that ground for rejection.[16]

   [16] See the nature of an appeal under section 35 of the Act in Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [14].

Decision

33Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

1. Where the Registrar of Trade Marks is required to be ‘satisfied’ of any matter, she must be so satisfied on the ‘balance of probabilities’[17]. As a delegate of the Registrar, I am satisfied that there is ground under the Act for rejecting the Trade Mark.

   [17] Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 at [56].

2. I reject trade mark application no. 1610865.

Heath Wilson

Hearing Officer

Trade Marks Hearings & Oppositions

12 December 2014