Aristocrat Technologies Australia Pty Ltd v Next Generation Entertainment (Aust) Pty Ltd

[2003] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Aristocrat Technologies Australia Pty Ltd to registration of trade mark application 876007(9) - PLATINUM PYRAMID - filed in the name of Next Generation Entertainment (Aust) Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Wayne Willis of F.B. Rice & Co, Attorneys

Applicant: John Walsh of Walsh & Associates, Attorneys

Decision:

1.  Section 52 Opposition. Opposition not established, application to be registered.
2.  Costs awarded against opponent.

Background

1. The applicant, Next Generation Entertainment (Aust) Pty Ltd, filed trade mark application 876007 on 17 May 2001.  The application was for the word trade mark platinum pyramid. The application covered the following goods in Class 9

   Class 9: Interactive games and gaming systems; interactive Internet and television games, including electronic games and games for slot machines.

2. Following examination, the Registrar advertised the trade mark as accepted for registration in the Australian Official Journal of Trade Marks on 6 June 2002.  The opponent, Aristocrat Technologies Australia Pty Ltd, filed notice of opposition to the trade mark's registration on 18 July 2002.  That notice listed six grounds of opposition provided in the Trade Marks Act 1995 ("the Act"). At the hearing only one ground was relied upon, that of identical etc trade marks.

3. The opponent duly served and filed evidence in support. The applicant duly served and filed evidence in answer.

4. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 25 July 2003.

5. Mr Wayne Willis, of F.B. Rice & Co Attorneys, represented the opponent. Mr John Walsh, of Walsh & Associates Attorneys, represented the applicant.

   Evidence

6. The evidence in support of the opposition was a declaration made by Frank Whittaker Edgell Bush, General Manager Legal & Compliance of the opponent.  The declaration explains how the gaming machines used by the opponent are signed and displayed.  It explains that gaming machines are cabinets containing certain devices with removable artwork panels and game-specific software.  Whilst machines in a gaming venue remain static, the games played on them, and associated artwork, might change quite often.  The declaration exhibited artwork associated with its trade mark registration 741894 golden pyramids that was registered from 20 August 1997. That registration is in class 9 for gaming machines, including poker machines, and parts and accessories therefor in this class.

7. The evidence in answer was a declaration by Keith Andrews, Managing Director of the applicant.  This declaration states that he is only aware of one trader in Australia using the word pyramid, alone, on electronic games or gaming machines (Siemans Pyramid Information Systems), and is only aware of golden pyramids and incan pyramid in connection with gaming in Australia. He expressed a belief that no one trader in the gaming industry had acquired a monopoly on the word pyramid used alone in respect of gaming machines.

   The Argued Ground: s44 Identical etc. trade marks

8. The only ground actively pursued by the opponent at the hearing was that under section 44 of the Act. The relevant parts of section 44 read:

   44.(1) Subject to subsections (3) and (4), 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).
   Note 3:  For priority date see section 12.

9. Therefore, the issues that I need to consider are:

   (a) the priority dates of the competing marks,

   (b) whether the goods are similar goods, and

   (c) whether the trade marks are substantially identical or deceptively similar.

10. It was common ground between the parties that the opponent’s registration has an earlier priority date than the applicant’s mark and that the respective marks are for similar goods. It was also common ground that the marks are not substantially identical.

11. The gist of the opponent’s argument was that considering notional fair user of the mark, regarding the possibility of imperfect recollection, and the idea or impression created by the marks, potential customers would be caused to think that relevant goods bearing the platinum pyramid mark come from the same source as goods bearing the golden pyramids mark.  The common use of platinum and gold as designations of superiority in goods (such as credit cards, record sales) would cause a customer to think that platinum pyramid games were a superior version of golden pyramids.

12. Referring to the same authorities as the opponent, the applicants submissions highlighted the onus being on the opponent to satisfy the Registrar that grounds of opposition were made out and that the evidence did not demonstrate that there was a real tangible danger that a significant number of people would be caused to wonder whether the goods of the respective parties had come from the same source.

13. There was little evidence adduced by either party.  However, the opponent’s evidence in support explains who the relevant market is likely to be.  The market comprises the operators of licensed establishments that obtains gaming machines and games for use in such establishments.  The market does not include the myriad gamblers seeking to enrich themselves by means of such goods.  Thus the decision making process is more likely to occur in the calm atmosphere of the boardroom rather than the bustling excitement of the gaming rooms.

14. The opponent’s evidence suggests that approximately 4.6 percent of the 129,900 gaming machines distributed by the opponent run the golden pyramids game.  The opponent was not aware of any other gaming machines bearing the word pyramid or pyramids.  The applicant’s evidence in answer exhibited a trade mark incan pyramid registered for similar goods by Konami Australia Pty.

15. The question of whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a `jury question' in which the tribunal is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion: Murray Goulburn Co-operative Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370 at 377.

16. I am not satisfied that there is real tangible danger that a significant number of purchasers of the goods are likely to be deceived or confused.  The likely purchasers would be discerning people of relevant training and experience.  Therefore I dismiss this ground of opposition.

17. I am not satisfied that the evidence supports the grounds of opposition not pressed at the hearing, and I dismiss them.

    Conclusion

18. Section 55 of the Act provides:

    55  Decision

    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a)       to refuse to register the trade mark; or

    (b)       to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note: For limitations see section 6.

19. The opponent has not established the single ground of opposition on which it relied.

20. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

21. Both parties sought their costs.  I see no reason why I should not take the usual course of awarding costs to follow the event.  I order that the opponent pay the applicant's costs in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    24 October 2003