Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd

[2003] ATMO 80

TRADE MARKS ACT 1995

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

Re:Opposition by Austereo Pty Ltd to registration of trade mark application 869884(38, 41) - SOUNDS DIFFERENT - filed in the name of DMG Radio (Australia) Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Mr David Yates SC instructed by Madderns Applicant: Messrs Bruce Caine SC and Ben Fitzpatrick instructed by Mallesons Stephen Jacques
Decision:	1. Section 52 Opposition: s55(b) registration allowed 2. Costs awarded against opponent

Background

1. DMG Radio (Australia) Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:

869884

Priority date:

20 March 2001

Services:

Class 38: Radio and television broadcasting (whether free to air or subscription)

Class 41: Radio entertainment and television entertainment; production of radio programmes; production of television programmes; arranging and conducting competitions, exhibitions, shows and balls; discotheque services; live performances

Trade Mark:

sounds different

Advertised:

13 September 2001

1. On 11 December 2001, Austereo Pty Ltd (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified nine grounds of opposition, essentially being the grounds allowed by the Act.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 24 September 2003.  The opponent was represented by Mr David Yates SC instructed by Madderns, Patent and Trade Mark Attorneys of Adelaide.  The applicant was represented by Mr Bruce Caine SC and his learned junior Mr Ben Fitzpatrick instructed by Mallesons Stephen Jacques, Solicitors of Melbourne.

3. Only one ground of opposition was relied on at the hearing, that being sub-section 41(2) of the Act.

   Evidence

4. The evidence filed in these proceedings consisted of the following:

Date		Declarant	Description	Annexes	Known As
Evidence	in Support
08.08.2002		Gay Michele WALLACE	Group General Manager Austereo	A to G	Wallace
09.08.2002		Richard Stuart CATT	Patent & Trade Mark Attorney	RSC1	Catt
Evidence		in Answer
03.02.2003		Dean Buchanan	Group Program Director DMG	A to L	Buchanan
03.02.2003		Fiona CAMERON	General Manager NOVA 100 FM radio station	A to H	Cameron

The Section 41 Ground

1. Subsection 41(2) of the Act provides that 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 from those of other traders. Subsection 41(3) provides that in deciding the question, the Registrar must first consider the extent to which the trade mark is inherently adapted to distinguish. If the Registrar finds the trade mark is to no extent inherently adapted to distinguish, then it is to be considered under the provisions of subsection 41(6). If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish, but it is not capable of distinguishing on that basis alone, then it is to be considered under the provisions of subsection 41(5). If, after consideration under the provisions of subsections 41(5) or 41(6), the Registrar is still not satisfied the trade mark is capable of distinguishing, or does in fact distinguish, then the application must be rejected.

2. In determining whether or not a trade mark may be regarded as being adapted to distinguish, Kitto J, in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511) said:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.

   and in Registrar of Trade Marks v W. & G. Du Cros Ltd, (1913) 30 RPC 660, Lord Parker of Waddington, said in relation to whether or not a proposed trade mark is adapted to distinguish:

   The applicant's chance of success in this respect must, I think, largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

3. The opponent asserted that the words “sounds different” were a direct reference to the nature or comparative quality of the applicant’s claimed broadcasting content.  As such, other broadcasters were likely in the ordinary course of business, and without improper motive, to desire to use the words or closely similar words to describe their own broadcasting content.

4. The opponent therefore submitted that the words were not inherently adapted to distinguish the designated services and the opposition stood to be determined on the basis of subsection 41(6) of the Act. In that case, the applicant had not adduced any evidence of use prior to the priority date, and therefore the opposition should succeed.

5. The opponent proffered an alternative argument that if the opposed mark were found to be to some extent inherently adapted to distinguish, the Registrar could not be satisfied that the mark will distinguish the applicant’s services.  It was argued that there was no evidence of trade mark use of the words, or at best only when part of a composite expression employing the word “Nova” or “Nova” in association with other distinctive symbols.

6. On the other hand, the applicant’s principal submission was that the Registrar should not disturb the examiner’s finding that the mark was of itself capable of distinguishing, and thus no other evidence was necessary to support the application.

7. The applicant submitted that although the mark was descriptive in some context, this did not strip it of capability to distinguish the applicant’s services.  The applicant pointed to its evidence of use of the slogan in advertising and advertising campaigns.

8. The applicant submitted that, as the opponent had not adduced evidence that any other trader was honestly using (or intended to use) the mark, effectively I could draw an inference to the contrary.

9. In my opinion, the word “sound” in the applicant’s mark is to some extent descriptive of the applied for services.  However, when combined with “different”, the descriptiveness is lessened and there is some adaptation to distinguish the services to those of others.  The phrase sounds different is not ordinarily used to describe characteristics of the applicant’s services as, for example, the different stout was found to be in respect of brown and dark ales and beers in Grand Brasserie Alcasienne D’Adelshoffen’s Appn (1996) 36 IPR 649. Therefore, I consider that the provisions of subsection 41(5) apply.

10. The opponent’s principal argument against the application of subsection 41(5) to the applicant’s mark was that there was no evidence of the use of sounds different as a trade mark. Alternatively, sounds different has only been used as a trade mark in conjunction with the words and symbols Nova 96.9 FM or Nova 100.3 FM or the word Nova.

11. I do not agree with the opponent’s conclusions regarding the trade mark use of sounds different.  As explained in the Buchanan declaration, the applicant has already registered a number of trade marks.  One (870901) is the “Nova Boy”, a cartoon-like character wearing earphones, and others consist of the word “Nova” followed by the relevant radio frequency on which the particular station transmits its programs (or “callsign”). 

12. It seems, from the evidence, that depending on the medium used, two or three of the various trade marks might be used in combination.  In visual media, such as billboards, web-sites and television, The “Nova Boy”, callsign and sounds different were typically use together.  In radio broadcasts, the callsign and sounds different were used.  sounds different was used as an “end-line” in television and radio promotions.

13. I am satisfied that each of the applicant’s registered and applied for marks are capable of standing alone to indicate the source of the services, either on a network basis or on an individual radio station basis.  Thus either the “Nova Boy” or sounds different, or both of them, indicate the Nova network generally, or each of the marks or all of them, can indicate a local Nova radio station.

14. I am satisfied that the evidence shows that the applicant’s sounds different mark is, by virtue of subsection 41(5) of the Act, capable of distinguishing the applicants services.

15. I note also, that the opponent has the onus of establishing its ground(s) of opposition.  I am not satisfied that, on the balance of probabilities, the opponent has met its onus.  Therefore, I dismiss this ground of opposition.

16. There was no evidence to support the other grounds specified in the opponent’s notice of opposition, and I dismiss those grounds.

    Decision & Costs

17. The trade mark application may proceed to registration one month from the date of this decision (subject to any period of vacation of the Federal Court registry).  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.

18. As to costs, I see no reason why costs should not follow the event. I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    17 December 2003